Outdoor Pro Shop, Inc. v. Monster Energy Company

Background

Outdoor Pro Shop, Inc. (OPS) asserted claims against Monster Energy Company for trademark infringement, false designation of origin, and unfair competition. Monster denied liability and asserted its own claims for trademark infringement, false designation of origin, and unfair competition against OPS. The parties disputed, among other things, the strength and use of their marks, the similarity of their goods and services, likelihood of confusion, and damages.

This order addressed several discovery disputes under Federal Rule of Civil Procedure 26(b)(1), which permits discovery of relevant information that is proportional to the needs of the case.

Advertising and promotional materials

The court required OPS to produce documents in its possession, custody, or control sufficient to show all advertising and promotion since 2000 that included an OPS Mark or the word “Monster.” Monster defined the OPS Marks as “MONSTER FISHING,” “MONSTER FISHING TACKLE,” “MONSTERFISHING.COM,” and variations of those marks. The court explained that advertising and promotion could bear on whether the marks acquired secondary meaning and on the timing of OPS’s use in commerce. OPS did not have to produce advertising and promotion that included neither an OPS Mark nor the word “Monster,” and it could not satisfy its obligation by merely directing Monster to third-party publications if OPS had responsive documents.

Internal documents and trademark-development records

OPS had to conduct a diligent search of email, other electronically stored information, and physical files for documents referring to an OPS Mark. Responsive documents had to be produced unless protected by privilege or another protection; protected documents had to be identified in a privilege log. OPS did not have to search sources outside its possession, custody, or control, such as third-party websites. The court also required OPS to ask its prior trademark attorney for responsive, nonprivileged documents held in the attorney-client relationship.

The court found that OPS had not shown a diligent search for documents concerning the origin, conception, creation, development, selection, adoption, or acquisition of the OPS Marks. OPS had to conduct that search. An interrogatory answer describing how the idea for “Monster Fishing Tackle” came to Mr. Elie, OPS’s President, was not enough to answer a document request. If a diligent search found no responsive documents, OPS had to say so.

First use, financial information, and electronic systems

OPS had to provide a complete written response to Monster’s interrogatory about the first use in commerce of the OPS Marks for each product category. The response had to include the requested product names and model numbers, the marks used, how each mark was used, the period each product was offered for sale, and the date of first sale. If OPS lacked some requested information, it had to identify what it did not have. The court rejected OPS’s proposal to rely solely on its point-of-sale system or previously produced documents as a substitute for the required written response.

OPS represented that it was prepared to produce an electronic spreadsheet responsive to Monster’s request for advertising, marketing, and promotional expenditures, and the court ordered OPS to produce it promptly. For other financial information and documents, OPS could satisfy its obligations by making its electronic systems available for inspection by Monster and, if necessary, Monster’s expert or consultant, consistent with the protective order. OPS had to facilitate access, including by making someone available to answer questions about operating the systems and locating responsive information. The court said it would consider shifting reasonable extraction costs from Monster to OPS if Monster applied for that relief.

Actual confusion and secondary meaning

OPS had to supplement its response concerning instances of actual confusion and identify all responsive instances. If OPS knew of none, it had to say so.

OPS also had to supplement its response about which OPS Marks had acquired secondary meaning. It had to identify the facts and supporting documents for each mark and state if it did not contend that a particular mark had acquired secondary meaning.

Disposition

OPS had to supplement its interrogatory answers and document production as directed by March 22, 2022. The court reminded OPS and its counsel that discovery responses must be certified after a reasonable inquiry under Federal Rule of Civil Procedure 26(g). This was a discovery order; the opinion did not decide which party would prevail on the trademark, false-designation, unfair-competition, or damages claims.