CMT USA, Inc. v. Apex Tool Group LLC

CourtDistrict Court, W.D. North Carolina
DecidedAugust 9, 2024
Docket3:24-cv-00137
StatusUnknown

This text of CMT USA, Inc. v. Apex Tool Group LLC (CMT USA, Inc. v. Apex Tool Group LLC) is published on Counsel Stack Legal Research, covering District Court, W.D. North Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
CMT USA, Inc. v. Apex Tool Group LLC, (W.D.N.C. 2024).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA CHARLOTTE DIVISION CASE NO. 3:24-CV-137-RJC-DCK CMT USA, INC., and ) CMT UTENSILI S.P.A., ) ) ORDER Plaintiffs, ) ) v. ) ) APEX TOOL GROUP LLC, and ) APEX BRANDS, INC., ) ) Defendants. ) )

THIS MATTER IS BEFORE THE COURT on “Defendants’ Motion To Compel Plaintiffs To Supplement Responses To Defendants’ First Set Of Interrogatories” (Document No. 73). This motion has been referred to the undersigned Magistrate Judge pursuant to 28 U.S.C. § 636(b), and immediate review is appropriate. Having carefully considered the motion and the record, the undersigned will grant the motion in part and deny the motion in part. BACKGROUND CMT USA, Inc., and CMT Utensili S.p.A. (together “Plaintiffs” or “CMT”) initiated this action with the filing of a “Complaint” (Document No. 1) in the United States District Court for the Southern District Of New York (“S.D.N.Y.”) on August 24, 2023. Plaintiff then filed an “Amended Complaint” (Document No. 10) on August 29, 2023. The S.D.N.Y. issued a “Civil Case Management Plan And Scheduling Order” (Document No. 33) on November 30, 2023. The “...Scheduling Order” included the following deadlines: initial disclosures – November 21, 2023; fact discovery completion – March 29, 2024; and all discovery completion – May 13, 2024. (Document No. 33) (emphasis added). Plaintiffs filed a “Second Amended Complaint” (Document No. 37) (the “Complaint”) on December 20, 2023. The Complaint alleges that Apex Tool Group LLC (“Apex Tool Group”) and Apex Brands, Inc. (“Apex Brands”) (together “Defendants”) are liable for “infringement of CMT’s registered mark for the color orange in connection with woodworking circular blades (U.S. Registration No. 3,038,625).” (Document No. 37, p. 1); see also (Document No. 37-1, p. 2).

Plaintiffs allege that Defendants “have commenced the sale of woodworking saw blades bearing an orange color that is identical and/or confusingly similar to CMT’s Orange Color Marks (the ‘Infringing Orange Circular Saws’) . . . under its ‘Crescent’ brand of woodworking tools.” (Document No. 37, pp. 6-7). “CMT sent cease and desist letters to Defendants Apex Tool Group and Apex Brands on November 5, 2021, November 19, 2021, and December 22, 2021.” (Document No. 37, p. 8). Plaintiffs contend that Defendants “refused to cease any of their infringing activities” and “ have elected to continue marketing Infringing Orange Circular Saws in a deliberate attempt to create confusion amongst consumers who will assume that Defendants’ infringing products are affiliated with, authorized by, or endorsed by CMT, when they are not.”

Id. The Complaint specifically asserts claims for: (1) Infringement of Registered Trademarks Under 15 U.S.C. § 1114); (2) Trademark Infringement Under Common Law; (3) Trademark Infringement Under 15 U.S.C. § 1125(a); (4) Unfair Competition Under 15 U.S.C. § 1125(a); (5) Unfair Competition Under New York Common Law; (6) Trademark Dilution Under 15 U.S.C. § 1125(c); and (7) Trademark Dilution Under N.Y. Gen. Bus. L. § 360-1. (Document No. 37, pp. 12-18). All of Plaintiffs’ claims and requests for relief are directly related to the alleged infringement of Plaintiffs’ trademark rights in “the color orange on circular woodworking blades.” (Document No. 37). “Defendants’ Answer And Counterclaims” (Document No. 38) was filed on January 3, 2024. Defendants contend that Plaintiffs’ claims “are based on a fraudulently obtained, invalid trademark” and that “CMT’s attempt to monopolize the use of orange is unsupported by law, defies common sense and would unduly restrict the design options available to competitors in this market.” (Document No. 38, p. 11). Defendants’ counterclaims seek the cancellation of Plaintiffs’

trademark under 15 U.S.C. §§ 119, 1064(3) due to functionality, fraud on the USPTO, genericness, and abandonment. (Document No. 38, pp. 21-24). Also on January 3, 2024, Defendants filed a “...Motion To Transfer...” this case to the Western District of North Carolina. (Document No. 39). The S.D.N.Y. granted Defendants’ “...Motion To Transfer...” on January 30, 2024. The case was then transferred to this Court on February 6, 2024, and assigned to the Honorable Robert J. Conrad, Jr. and the undersigned Magistrate Judge. (Document No. 46). On April 9, 2024, this Court issued a “Pretrial Order And Case Management Plan” (Document No. 68) that included the following deadlines: fact discovery completion – June 21, 2024; expert discovery completion – September 6, 2024; dispositive

motions – September 27, 2024; and trial – March 3, 2025. (Emphasis added). The pending “Defendants’ Motion To Compel Plaintiffs To Supplement Responses To Defendants’ First Set Of Interrogatories” (Document No. 73) was filed on June 10, 2024. Defendants state that their motion raises two issues: “(1) whether CMT can refuse to respond to properly served interrogatories that it claims are ‘contention interrogatories,’ and (2) whether CMT can refuse to provide information and documents related to saw blades and other power tool accessories that Apex believes are relevant to its claims and defenses but are not expressly covered by the precise language within CMT’s trademark registration.” (Document No. 73, p. 1). Defendants seek an order compelling Plaintiffs to supplement the following discovery responses: “Interrogatories 1, 2, 4, 6, 10, 11, 12, 15, and 21; and RFP Nos. 1, 2, 3, 4, 6, 7, 8, 9, 10, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 30, 31, 32, 33, and 35.” Id. At the parties’ joint request, the case deadlines have been recently further revised as follows: fact discovery completion – September 13, 2024; opening expert reports – October 4, 2024; rebuttal expert reports – November 1, 2024; dispositive motions – November 26, 2024;

and trial – May 5, 2025. See (Document Nos. 79 and 80). The pending motion to compel is now ripe for review and disposition. STANDARD OF REVIEW Rule 26 of the Federal Rules of Civil Procedure provides that: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed.R.Civ.P. 26(b)(1). The rules of discovery are to be accorded broad and liberal construction. See Herbert v. Lando, 441 U.S. 153, 177 (1979); and Hickman v. Taylor, 329 U.S. 495, 507 (1945).

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Bluebook (online)
CMT USA, Inc. v. Apex Tool Group LLC, Counsel Stack Legal Research, https://law.counselstack.com/opinion/cmt-usa-inc-v-apex-tool-group-llc-ncwd-2024.