United States District Court, D. New Jersey
ORDER ACCEPTING AND MODIFYING REPORTS AND
RECOMMENDATIONS OF SPECIAL MASTER
H. GOODMAN UNITED STATES MAGISTRATE JUDGE
matter has been opened to the Court upon Plaintiffs'
Objections dated November 8, 2017 (“Objections”)
[Docket Entry No. 254], with regard to certain Reports and
Recommendations, as well as the implementing Orders, entered
on the docket by Special Master Marc E. Wolin, Esq.
(“Special Master”). Also before the Court is
Plaintiffs' Motion for Extension of time. [Docket Entry
No. 248]. Both the Objections and the Motion have been
opposed by Defendants.
Order dated August 11, 2016, this Court appointed the Special
Master to address discovery disputes as they arise in this
case. [Docket Entry No. 205]. Pursuant to the Order
Appointing Special Master, a party wishing to object to the
Special Master's recommendation must file a motion with
the Court within 21 days of filing of the Report and
Recommendation. [Docket Entry No. 205 at ¶6].
October 30, 2017, the Special Master issued a Report and
Recommendation and implementing Order No. 15, which,
inter alia, granted Defendants' application to
compel testimony from Plaintiffs' Rule 30(b)(6) designee
with regard to the timing of acquisition of secondary meaning
for Plaintiffs' marks at issue in the case, and also
denied Plaintiffs' application to compel Defendants to
identify when their marks were first used. [Docket Entry No.
245 (Report and Recommendation No. 15) and Docket Entry No.
November 1, 2017, the Special Master issued another Report
and Recommendation, accompanied by Order No. 16, which,
inter alia, granted in part and denied in part
Defendants' motion to quash certain notices of
deposition. [Docket Entry No. 249 (Report and Recommendation
No. 16) and Docket Entry No. 250 (Order)].
November 8, 2017, Plaintiffs timely filed objections in
response to the Reports and Recommendations and accompanying
Orders Nos. 15 and 16 entered by the Special Master. [Docket
Entry No. 254]. Defendants responded to Plaintiffs'
objections on November 10, 2017, advising the Court that they
would rely upon their submissions to the Special Master
rather than rebriefing the issues. See November 10,
2017 Letter (“Defendants' Letter”) at 1
[Docket Entry No. 257].
regard to Report and Recommendation No. 15, Plaintiffs argue
that the date of acquisition of secondary meaning is
irrelevant. According to Plaintiffs, only the date of
Defendants' first alleged infringing use matters.
See Plaintiffs' brief in support of Objections
at 1, 14 (“Plaintiffs' Brief”)
(“…the only applicable date for determining
secondary meaning is the date on which the defendant began
its use of the allegedly infringing name.”) [Docket
Entry No. 254-1 (redacted); Docket Entry No. 255-1
(unredacted, under seal)]. Plaintiffs do not object to the
denial of their request that Defendants be compelled to list
Defendants' dates of first use in commerce for certain
trademarks at issue. Plaintiffs' Brief n.3.
objections to Report and Recommendation No. 16 arise from the
grant of Defendants' application to quash Plaintiffs'
deposition notice to the person in charge of Defendants'
website, whose deposition Plaintiffs seek with regard to
alleged false specimens in part and denied in part
Defendants' application to quash Plaintiffs' amended
deposition notice to Michael Hennessey. With regard to the
Hennessey deposition, although the Special Master allowed the
deposition to go forward, he limited it to two hours and
outlined the scope; it is the time limitation and limited
scope that are the subject of Plaintiffs' objection.
[Docket Entry Nos. 249, 254]. Also, in Report and
Recommendation No. 16, the Special Master required Defendants
to provide Plaintiffs with a certification as to the dates
that the trademarks identified in Plaintiffs' October 26,
2017 email were first inserted into Defendants' website.
No objections were filed with respect to this requirement.
Court has reviewed the submissions by both parties, as well
as the Reports and Recommendations at issue. The Court is
satisfied that the Special Master appropriately ruled on the
two discovery issues presently before this Court with regard
to Report and Recommendation No. 16. This Report and
Recommendation addressed Defendants' motion to quash
certain deposition notices; the Court finds that the Special
Master appropriately considered and analyzed the
circumstances and timing of the notices and finds no abuse of
regard to Report and Recommendation No. 15, the Court
believes a modification is necessary. Specifically, whereas
the Court agrees with the Special Master that
“Plaintiffs have the affirmative duty to demonstrate
that their marks were entitled to protection at the time that
Defendants were using the allegedly infringing marks.”
(Report and Recommendation No. 15 at 6), this Court is not
satisfied that Plaintiffs should be required to provide the
exact date that their marks acquired secondary meaning.
Defendants even acknowledge in their October 23, 2017 letter
to the Special Master that “secondary meaning must be
established as of the date of any alleged infringement,
Scott Paper Co. v. Scott's Liquid Gold,
Inc., 589 F.2d 1225, 1232 (3d Cir. 1978). . . .”
Exhibit 1 to Defendants' Letter at 1 [Docket Entry No.
257-1]. Accordingly, to the extent Report and Recommendation
No. 15 requires Plaintiffs to provide testimony as to when
Plaintiffs' marks first acquired secondary meaning, this
shall be modified such that Plaintiffs' Rule 30(b)(6)
designee shall be prepared to answer questions as to whether
Plaintiffs assert that their marks had acquired secondary
meaning as of the time of Defendants' first actual use,
and the bases for that assertion. For the reasons stated in
Report and Recommendation Nos. 15 and 16, and as modified
above, this Court adopts Report and Recommendation Nos. 15
order for the parties to complete the additional discovery as
set forth in Report and Recommendation Nos. 15 and 16, the
Court will grant in part Plaintiffs' Motion for Extension
of Time to Complete Discovery [Docket Entry No. 248], such
that fact discovery will be extended until January 12, 2018
for the limited purpose of completing the discovery allowed
in this Order. Dispositive motions shall be filed on or
before February 9, 2018, to be made returnable March 5, 2018.
Defendants have advised that no expert reports have been
served and Plaintiffs have not provided any indication to the
contrary. Accordingly, the dates for expert deposition will
not be extended.
IS on this 21st
day December, 2017,
ORDERED that the Court
ACCEPTS and ADOPTS the
Special Master's Reports and Recommendations and affirms
Order Nos. 15 and 16, as modified above [Docket Entry Nos.
245 and 249]; and it is further
that Plaintiffs' Motion for Extension of Time to Complete
Discovery [Docket Entry No. 248] is GRANTED IN PART
and DENIED IN PART as follows:
remaining fact discovery, consistent with this Order, shall
be completed by no ...