Daniel Def., Inc. v. Remington Arms Co.

• Decision Date: 19 October 2015
• Docket Number: Case No. CV414-131
• Parties: DANIEL DEFENSE, INC., Plaintiff, v. REMINGTON ARMS COMPANY, LLC, Defendants.
• Court: U.S. District Court — Southern District of Georgia

DANIEL DEFENSE, INC., Plaintiff, v. REMINGTON ARMS COMPANY, LLC, Defendants.

Case No. CV414-131

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF GEORGIA SAVANNAH DIVISION

October 19, 2015

ORDER

"Consumers who purchase a particular product expect to receive the same special characteristics every time. The Lanham Act protects these expectations by excluding others from using a particular mark and making consumers confident that they can purchase brands without being confused or misled." Davidoff & CIE, S.A. v. PLD Intern. Corp., 263 F.3d 1297, 1301 (11th Cir. 2001) (citation omitted). The Act likewise "protects trademark owners. . . . [It] prevents another vendor from acquiring a product that has a different set of characteristics and passing it off as the trademark owner's product." Id. (cites omitted). It also drives the core of this trademark infringement action, brought by one gun-maker against another, and generating a passel of pretrial motions.¹

I. BACKGROUND

Plaintiff Daniel Defense, Inc. ("DD") sued Remington Outdoor Company, Inc. and Remington Arms, Company, LLC ("Remington"). Doc. 1, as amended, doc. 14.² Remington Outdoor has since been dropped, doc. 89 at 2, so only Remington. DD "is a manufacturer, distributor and seller of firearms and firearms accessories in the United States with product distribution throughout the world." Doc. 46 at 3. It accuses Remington, a competitor, of copying and misusing its "LIGHTER, STRONGER, BETTER... ®" and ">> ®" registered trademarks, thus violating 15 U.S.C. § 1114(1) (the Lanham Act) and state law, O.C.G.A. § 10-1-370 et seq. Doc. 14 at 4; id. at 15 ¶ 30; id. at 16 ¶ 34.³ DD also raisesan unfair competition claim. Id. at 16-17. It seeks damages.⁴ Despite a claimed discovery snag (hence, Remington's motion to compel, doc. 62), Remington has filed a summary judgement motion (doc. 74), which, if granted, would be case-dispositive of all DD claims. That motion is pending before the district judge.⁵

I. ANALYSIS

A. Governing Standards

Motions to compel are governed by the rules of discovery, which

"require the disclosure of all relevant information so that ultimate resolution of disputed issues in any civil action may be based on a full and accurate understanding of the true facts. . . ." Gonzalez v. ETourandTravel, Inc., 2014 WL 1250034 at * 2 (M.D. Fla. Mar. 26, 2014) (quotes and cite omitted). Hence, "[t]he scope of discovery under [Fed. R. Civ. P. 26(b)(1)] is broad and includes 'discovery regarding any matter, not privileged, which is relevant to the claims or defense of any party involved in the pending action.' Hickman v. Taylor, 329 U.S. 495, 507-08, 67 S.Ct. 385, 91 L.Ed. 451 (1947)." Id. Those resisting discovery must "show specifically how the objected-to request is unreasonable or otherwise unduly burdensome." Id.

Claims and defenses determine discovery's scope. Chudasama v. Mazda Motor Corp., 123 F.3d 1353, 1368 (11th Cir. 1997). "'Evidence is relevant if it has any tendency to make the existence of any fact or consequence more or less probable than it would be without the evidence.' United States v. Capers, 708 F.3d 1286, 1308 (11th Cir. 2013)." Gonzalez, 2014 WL 1250034 at * 2.

Brannies v. Internet ROI, Inc., 67 F. Supp. 3d 1360, 1362 (S.D. Ga. 2014) (emphasis added). "Rule 26 . . . sets forth a very low threshold for relevancy, and thus, the court is inclined to err in favor of discovery rather than against it." McCleod v. Nat'l R.R. Passenger Corp., 2014 WL 1616414 at * 3 (S.D. Ga. Apr. 22, 2014) (quotes and citation omitted).

B. Trademark Standards

Remington's Motion to Compel turns on claims and defenses that principally revolve around the Lanham Act's protection of trademarks (a/k/a "marks"). The parties' chief factual dispute is over the "similarity of marks, similarity of goods, similarity of channels of commerce, similarity of care of consumers, similarity of associated goods and trademark priority." Doc. 46 at 6. Their chief legal dispute is "about the validity and infringement of the [DD] marks." Id. It is thus worth reviewing the Lanham Act principles that inform their arguments. Under it:

a defendant is liable for infringement if, without consent, he uses "in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark" which is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(l)(a). To prevail on a federal trademark infringement claim, a plaintiff must demonstrate (1) that its mark has priority, and (2) that the defendant's mark is likely to cause consumer confusion, Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999).

Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., ___ F. Supp. 3d ___, 2015 WL 1208047 at *3 (S.D. Fla. Mar. 4, 2015) (emphasis added).⁶

The confusion factor figures into plenty of discovery disputes, including a big bone of contention here:

Courts in the Eleventh Circuit consider seven factors when determining whether or not a likelihood of consumer confusion exists: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties' trade channels and customers; (5) similarity of advertising media; (6) the defendant's intent; and (7) actual confusion. Frehling, 192 F.3d at 1335. Of these factors, the type of mark and evidence of actual confusion are considered the most important. Id. (citing Dieter v. B & Hindus. of Sw. Fla., Inc., 880 F.2d 322, 326 (11th Cir.1989)).

Florida International, 2015 WL 1208047 at * 3 (emphasis added); see also Sovereign Military Hospitaller (Etc.) v. The Florida Priory of the Knights Hospitallers (Etc.), ___ F.3d ___, 2015 WL 6000633 at * 7-16 (11th Cir. Oct. 15, 2015) (comprehensive exploration of these factors); TracFone Wireless, Inc. v. Clear Choice Connections, Inc., 2015 WL 1954075 at * 4 (S.D. Fla. Apr. 27, 2015). Discovery quests and, ultimately, the evidence presentation a plaintiff must make, necessarily delve into considerable nuances because courts not only balance those seven factors, but do "not have to consider all of [them] in every case and in some cases, new factors may merit consideration."

Sovereign Military Hospitaller, 2015 WL 6000633 at * 8 (quotes and cite omitted). Too,

the likelihood of confusion should not be determined "by merely analyzing whether a majority of the subsidiary factors indicates that such a likelihood exists ... [r]ather, a court must evaluate the weight to be accorded the individual factors and then make its ultimate decision." Suntree Tech., Inc. v. Ecosense Int'l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012) (quoting AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d 822 (1987)); see also Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir. 2007) ("Because the bottom line is the likelihood of confusion, application of the Frehling factors entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the 'overall balance.'").

Florida International, 2015 WL 1208047 at * 3 (emphasis added). Such weighing enables the:

determination of whether Plaintiff's mark is strong or weak. Frehling, 192 F.3d at 1335. The stronger the mark, the greater the scope of protection afforded to it. Id. [To that end, a] mark may fall into one of four categories of distinctiveness, in increasing levels of protection: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary. Id. These categories are based on the relationship between the name and the service or good it describes. Id. Generic marks refer to a particular genus or class of goods or service providers . . . ; these marks are not entitled to protection. Id. (citing Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1182 n. 5 (11th Cir. 1985)). Descriptive marks describe a characteristic or quality of an article or service. Id. Suggestive marks "subtly connote something about the service so that a customer could use his or her imagination and determine the nature of the service." Freedom Savings, 757 F.2d at 1182 n. 5.

An arbitrary mark is a "word or phrase that bears no relationship to the product." Frehling, 192 F.3d at 1335. Arbitrary marks are the strongest of the four categories. Id. at 1335-36.

Id. In many case the analysis (hence, discovery) extends to third party use (or not) of the disputed trademark. "The strength of a mark may also be affected by the degree to which third parties make use of the mark; the less that third parties use the mark, the stronger it is, and the more protection it deserves." Id. at * 4. Finally, "trademark rights are not static and . . . the strength of a mark may change over time." Sovereign Military Hospitaller, 2015 WL 6000633 at * 10 (quotes and cite omitted).

The public-university plaintiff in Florida International, which had trademarked "Florida International University"/FIU," sued a for-profit university, Florida National University ("FNU") for infringement. Id. at * 1. The court agreed that the two names "do sound similar," id. at * 6, but "examined in totality this factor does not weigh in favor of a finding of a likelihood of confusion." Id. Also, while the schools' degree programs overlapped, id. at * 7-9, there was "little evidence of an overlap in the audience of the schools' advertising," id. at 9 (emphasis original), and the difference in their applications standards and degrees that they issued suggested that there were two vastly different consumer groups.Considering the students' presumed sophistication and their time and financial investment involved, they were unlikely to suffer trademark confusion, so the Court ruled against FIU. Id. at * 12.

The above standards evince a compendium of factors, which themselves are gauged at different intensity levels (e.g., just how often and at what level of focus and retention do consumers associate a slogan or phrase with a particular...