The Cookie Department, Inc. v. The Hershey Company

Background

The Cookie Department, Inc. brought a trademark-infringement case against The Hershey Company and One Brands, LLC. The plaintiff alleges that the defendants infringed its “Tough Cookie” mark by using “Tough Cookies Only” on packaging and advertising. The court addressed seven discovery letters filed between May 6 and May 18, 2022, and decided them without a hearing.

Discovery Letter No. 1: Kara Zioba’s deposition

The plaintiff asked to compel the deposition of Kara Zioba, a Hershey intellectual-property employee who had previously worked as a trademark paralegal and senior intellectual-property paralegal. The plaintiff argued that Zioba was the first person at Hershey to learn of the plaintiff’s trademark application and that she was consulted about the defendants’ use of the “Tough Cookies Only” tagline.

The court applied the three-part test commonly used for depositions of opposing counsel or members of a litigation team: the requesting party must show that no other means can provide the information, that the information is relevant and not privileged, and that the information is crucial to preparing the case. The court found that the information about Zioba’s awareness of the trademark application and her communications about the tagline involved legal work performed at the direction of Hershey’s attorneys. The court also found that Zioba relayed communications for legal advice rather than giving independent legal advice.

The plaintiff also sought information about a trademark seminar Zioba led. The court found that the plaintiff had not shown that the seminar was crucial to preparing the case or that the information could not be obtained by other means. The court therefore DENIED the plaintiff’s request to compel Zioba’s deposition.

Discovery Letter No. 2: Privilege log

The plaintiff challenged three categories of documents on the defendants’ privilege log.

First, the plaintiff sought documents it believed might be trademark search reports. After reviewing the documents privately, the court found that they were attorney-client emails and were not relevant to the “tough cookies” logo. The court found them protected by attorney-client privilege.

Second, the plaintiff challenged communications between Hershey’s legal team and attorney Jonathan Hyman. Hyman declared that he and his firm represented One Brands from October 2018 until about May 2020. The court found that this representation had not ended when the disputed communications occurred, so the communications were properly treated as privileged.

Third, the plaintiff challenged communications between Zioba and non-attorneys Erin Costa and Jannelle Knaus. The court found that the communications included attachments describing confidential attorney-client communications and that Zioba worked under the direction of attorneys. The court found these communications protected by attorney-client privilege. It DENIED the plaintiff’s request to require production of all three categories of documents.

Discovery Letter No. 3: David Ziegert’s deposition

During the deposition of David Ziegert, the defendants objected to questions about who decided to continue using the “Tough Cookies Only” flavor line. Ziegert testified that he did not make the decision and had sought advice from counsel after learning about the lawsuit.

The court explained that attorney-client privilege protects communications, but not underlying facts that can be established without relying on those communications. Here, however, the court found that the decision appeared to have been made during privileged communications with attorneys. The court therefore DENIED the plaintiff’s request to require Ziegert to answer the questions.

Discovery Letter No. 4: Jannelle Knaus’s deposition

The defendants objected to questions asking Jannelle Knaus whether she had been instructed to determine whether the flavor line could be replaced and about her communications with Zioba. Knaus testified that, after the lawsuit was filed, she did not remember speaking with anyone about the flavor line except counsel and that the relevant instructions would have occurred during privileged communications.

The court also found that Zioba acted as a conduit between Knaus and counsel rather than providing her own advice. The court found both subjects protected by attorney-client privilege and DENIED the plaintiff’s requests to require Knaus to answer those questions.

Discovery Letter No. 5: Interrogatories

The plaintiff sought further responses identifying the first person at One Brands who became aware of the plaintiff’s trademark application, how that person learned of it, related nonprivileged communications, and actions taken in response. The court interpreted the interrogatories as asking for the first person who learned of Hershey’s discovery of the application.

After reviewing the defendants’ response privately, the court found that the requested information was protected by attorney-client privilege. It DENIED the plaintiff’s request for a further response.

Discovery Letter No. 6: Investor agreements

The defendants sought investor agreements, arguing that the agreements were relevant to the plaintiff’s financial condition and its motivation for bringing the trademark case. The plaintiff responded that information about the investors and investment amounts was publicly available and that the agreements were unnecessary to evaluate its finances.

The court found that the defendants had not shown how the investor agreements related to the merits of the case or the plaintiff’s damages. It also found that the defendants had not explained how the plaintiff’s motivation affected the validity of its trademark-infringement claim. The court DENIED the defendants’ request for the investor agreements.

Discovery Letter No. 7: Requests for admissions

The defendants asked the plaintiff to admit or deny statements and arguments that the plaintiff’s former counsel, Bruno Tarabichi, made to the United States Patent and Trademark Office in 2012. The plaintiff offered to admit that its former counsel made the referenced argument but objected to admitting that he made the statement on the plaintiff’s behalf.

The court stated that clients are generally bound by acts and omissions of their lawyers acting as agents. It ordered the plaintiff to admit that Tarabichi made the statement on the plaintiff’s behalf.

Disposition

The order disposed of Docket Nos. 64–66, 74–77, and 81. Judge Kandis Westmore DENIED the plaintiff’s request to compel Zioba’s deposition; DENIED the plaintiff’s request to obtain the three challenged categories of privilege-log documents; DENIED the plaintiff’s requests concerning Ziegert’s and Knaus’s deposition questions; DENIED the plaintiff’s request for further interrogatory responses; DENIED the defendants’ request for the investor agreements; and ordered the plaintiff to admit that Tarabichi made the specified statement on the plaintiff’s behalf.