Coryn Group II, LLC v. O.C. Seacrets, Inc.

265 F.R.D. 235, 2010 U.S. Dist. LEXIS 8753, 2010 WL 437072
CourtDistrict Court, D. Maryland
DecidedFebruary 1, 2010
DocketCivil No. WDQ-08-2764
StatusPublished
Cited by18 cases

This text of 265 F.R.D. 235 (Coryn Group II, LLC v. O.C. Seacrets, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Maryland primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Coryn Group II, LLC v. O.C. Seacrets, Inc., 265 F.R.D. 235, 2010 U.S. Dist. LEXIS 8753, 2010 WL 437072 (D. Md. 2010).

Opinion

MEMORANDUM OPINION

SUSAN K. GAUVEY, United States Magistrate Judge.

Before the Court are DefendanVCounter-Claim Plaintiff O.C. Seacrets, Inc.’s Motion to Compel Responses to Notice of 30(b)(6) Deposition (Paper No. 67) and Defendant/Counter-Claim Plaintiff O.C. Seacrets, Inc.’s Third Motion to Compel Production of Documents Used to Prepare Witness for 30(b)(6) Deposition Directed to AMResorts, LLC (Paper No. 68). Both motions have been fully briefed. The Court held a motions hearing on October 30, 2009, after which the parties made supplemental filings. For the following reasons, the Court GRANTS in part and DENIES in part O.C. Seacrets’ Motion to Compel Responses to Notice of 30(b)(6) Deposition (Paper No. 67), and GRANTS in part and DENIES in part O.C. Seacrets, Inc.’s Third Motion to Compel Production of Documents Used to Prepare Witness for 30(b)(6) Deposition Directed to AM-Resorts, LLC (Paper No. 68).

I. BACKGROUND

This is a trademark infringement case that arises from the United States Trademark Trial and Appeal Board’s (hereafter “TTAB”) grant of O.C. Seacrets, Inc.’s petition to cancel Coryn Group’s trademark registration for the mark “SECRETS.” (Paper No. 67-2, 2). Coryn Group, II, LLC, successor in interest to Coryn Group, appealed to this Court, arguing that O.C. Seacrets’ “SEACRETS” trademark, used in connection with restaurant and bar services, was confusingly similar to Coryn Group’s trademark “SECRETS,” used in the resort hotel industry. (Paper No. 1, 1-2; Paper No. 67-2, 2). O.C. Seacrets, Inc. counterclaimed on the basis of “reverse confusion,” claiming that Coryn Group II, LLC, a junior user, overwhelmed the market with its use of a confusingly similar mark that effectively devalued O.C. Seacrets’s mark. (Paper No. 68-2, 2). AM-Resorts, LLC, a company that appears to manage and develop resort hotels that are licensees of Coryn Group’s “SECRETS” mark, is a third-party defendant. (Paper No. 67-2, 8). Coryn Group, Coryn Group II, and AMResorts are all part of a complex organization of on- and off-shore businesses that are owned by various members of the Mullen family. (Paper No. 67-2, 3).

A1 claims and counterclaims in this case hinge on whether the two marks are likely to be confused, which depends on several factors including: (1) the strength or distinctiveness of the marks; (2) the similarity of the marks; (3) the similarity of the goods and services the marks identify; (4) the similarity of the facilities the parties use in their businesses; (5) the similarity of advertising used by the parties; (6) the parties’ intent; and (7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). Should the Court determine that any party’s registered trademark rights were violated, disgorgement of profits received as a result of that violation, among other damages, are appropriate. 15 U.S.C. § 1117.

II. DISCUSSION

1. Motion to Compel Responses to Notice of 30(b)(6) Deposition (Paper No. 67)

On October 8, 2009, O.C. Seacrets filed a Motion to Compel Responses to Notice of 30(b)(6) Deposition directed to AMResorts in response to AMResorts’ objections to the topics listed by O.C. Seacrets for a Rule 30(b)(6) deposition. (Paper No. 67). AMRe-sorts opposed the motion on the grounds that it was prematurely filed and that, in any event, the deposition had already taken place and “the concerns anticipated by O.C. in its motion to compel did not occur.” (Paper No. 75). O.C. Seacrets responded that, while the deposition did proceed, AMResorts’ Rule 30(b)(6) designee was not adequately prepared to testify on most of the topics listed in the Rule 30(b)(6) notice—particularly those involving AMResorts’ ownership structure and related entities. (Paper No. 80). The Court held a motions hearing on October 30, 2009 and ordered the parties to make supplemental filings following the hearing which, [238]*238after numerous extensions of times, they have now made.

The disputed topics noted for deposition include the ownership and organizational structure of AMResorts and its affiliates and the “sales, revenues, and profits of AMRe-sorts for all products and services offered in connection with the SECRETS mark,” any fees or revenues received or expenditures incurred by AMResorts or any of the hotel properties it formerly or currently managed related to use of the SECRETS mark, as well as the ownership structure of hotels currently managed by AMResorts (Secrets Capri Riviera Cancún, Secrets Silversands Riviera Cancún, Secrets Maroma Beach Riviera Maya), that were in the past managed by AMResorts (Secrets Excellence Riviera Cancun, Secrets Excellence Punta Cana), and that will in the future be managed by AMRe-sorts (Secrets St. James Montego Bay, Secrets Wild Orchid Montego Bay, Secrets Punta Cana Resort & Spa). (Paper No. 80-2, 1-7). O.C. Seacrets also sought to depose AMResorts on any person or entity “working or participating in active concert with AMRe-sorts and the SECRETS mark” and asked for AMResorts’ consolidated financial statements and its profit and loss statements as well as any commissions, revenue sharing, fees, advertising and marketing agreements and arrangements between AMResorts and any other entity that has operated or now operates under the SECRETS mark. (Id.).

To the extent information sought in a Rule 30(b)(6) deposition is relevant to the claims or defenses in the case and is known or reasonably available to the corporation, it must provide a corporate designee or multiple designees prepared to provide that information. Fed. R. Crv. P. 30(b)(6); Fed. R. Civ. P. 26(b)(1). Indeed, the corporation “is expected to create a witness or witnesses with responsive knowledge,” and in doing so must make a good faith effort to “find out the relevant facts—to collect information, review documents, and interview employees with personal knowledge.” Wilson v. Lakner, 228 F.R.D. 524, 528-29 (D.Md.2005) (emphasis added). Information about a Rule 30(b)(6) deponent’s corporate affiliates and subsidiaries is no different. AMResorts encourages this Court to find that the financial information involving AMResorts’ affiliates is irrelevant by following the Eastern District of Pennsylvania’s decision in a related case, which denied discovery of financial information from non-parties to the extent it was not directly tied to the SECRETS mark on relevancy grounds. (Paper No. 75 (citing Order Granting in Part and Denying in Part Motion to Quash, 3 n.1, Coryn Group II, LLC v. O.C. Seacrets, Inc., No. 09-mc-161 (E.D.Pa. Oct. 14, 2009))). However, the decision of the District Court for the Eastern District of Pennsylvania permitted discovery where the scope of information requested was limited to matters related to the SECRETS mark, and denied discovery only as to broad requests for “monthly detailed profit and loss statements” with no limiting language. (Id.). Instead, the court modified these broad requests to include only “profit and loss information as it relates to the Secrets mark, including the percentage of Petitioners’ profits or losses attributable to the Secrets mark.” (Id.).

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265 F.R.D. 235, 2010 U.S. Dist. LEXIS 8753, 2010 WL 437072, Counsel Stack Legal Research, https://law.counselstack.com/opinion/coryn-group-ii-llc-v-oc-seacrets-inc-mdd-2010.