Especias Montero, Inc. v. Best Seasonings Grp.

ESPECIAS MONTERO, INC. Plaintiff, v. BEST SEASONINGS GROUP, INC. D/B/A SOFRITO MONTERO, Defendant.

Civil No. 20-1740 (GLS)

United States District Court, D. Puerto Rico

August 13, 2021

ORDER

GISELLE LOPEZ-SOLER United States Magistrate Judge.

The Verified Complaint was filed on December 23, 2020. Docket No 6. In summary, Plaintiff and Counter-Defendant Especias Montero, Inc. (“Plaintiff”) alleges that Defendant and Counter-Plaintiff Best Seasonings Group Inc.'s (“Best Seasonings”) use of attributes and elements of Plaintiff's registered mark (ESPECIAS MONTERO DESDE 1959), such as its color schemes, typography cook's hat, green leaves, and words “Especias” and “Montero”, in promoting its products on displays at points of sale and social media, is likely to cause confusion among consumers. Id. at ¶¶ 38-50. Plaintiff requests permanent injunctive relief under the Lanham Act.^[1]On February 17, 2021, Best Seasoning answered the complaint and filed a counterclaim alleging that it has been using the combination of the ESPECIAS NATURALES, SOFRITO MONTERO, and MONTERO marks before Plaintiff. Best Seasonings seeks declaration that its use of the marks predates the use by Plaintiff and cancellation of Plaintiff's registered mark in the United States Patent and Trademark Office. Docket No. 32.

Discovery ensued and was set to conclude on August 16, 2021. See Docket Nos. 50 &51. Nonetheless, Best Seasonings requests intervention from the Court to compel Plaintiff to fully answer written discovery and conclude the deposition of Ms. Mabel Pola Montero. Docket No. 56. Best Seasonings requests that the Court compel Plaintiff to properly answer Interrogatory No. 14, Requests for Production of Documents Nos. 36, 38, 48, 49, 51, 53, 54, 56, 58, 40, 45, 46 and 25, and to compel Plaintiff's witness, Ms. Pola Montero, to answer deposition questions as to whether the use of Best Seasonings' marks constitutes false and misleading advertising and regarding her communications with counsel for Plaintiff. Id. Plaintiff opposed arguing that it supplemented its answers to interrogatories and requests for documents on July 2, 2021, and that Best Seasonings failed to comply with meet and confer requirements of Local Rule 26(b) after that date, that the information requested through written discovery was either produced or provided during depositions, that some of the documents requested by Best Seasonings are subject to attorneyclient privilege and others are to be protected because Best Seasonings is Plaintiff's direct competitor, and that Ms. Pola Montero answered all relevant questions during her deposition. Docket No. 60. For the reasons discussed below, the Motion to Compel is GRANTED in part and DENIED in part.

I. DISCUSSION

Under Rule 26(b)(1) of the Federal Rules of Civil Procedure parties may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action. Fed.R.Civ.P. 26)(b)(1). “This provision has been interpreted to entitle parties to discovery of any matter that bears on any issue in the case in the absence of privilege.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978). This includes those that relate to any claims or defenses of the party seeking discovery or to the claims or defenses of any other party. Id. at 350-351 (citing Hickman v. Taylor, 329 U.S. 495, 501 (1947)). Therefore, “any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case” is subject to discovery. Id.

Pursuant to Rule 37(a) of the Federal Rules of Civil Procedure, any party seeking discovery may move the Court for an order to compel discovery from the other party. Fed.R.Civ.P. 37(a). However, prior to racing to Court, the moving party is required to certify that it made a good faith effort to confer or attempt to confer to obtain the sought discovery. Id. Likewise, this District Court's Local Rule 26(b) requires a “certification that the moving party has made a reasonable and good-faith effort to reach an agreement with opposing counsel” prior to seeking relief from the Court on a discovery dispute. Best Seasonings has made such a certification in its motion to compel. Docket No. 56. Plaintiff argues, however, that no such meet and confer efforts were made after July 2, 2021, when Plaintiff served its supplemented answers to interrogatories and requests for production of documents. Nonetheless, having examined Plaintiff's supplemented answers to interrogatories and requests for production of documents, the Court concludes that further meet and confer efforts were unnecessary as none of the matters raised in Best Seasonings' motion to compel, which had been the subject of Best Seasonings' objection letter on May 26, 2021 (Docket No. 56-3), were addressed in Plaintiff's supplemented answers at Docket No. 56-10. See Plaintiff's Amended Answer to First Set of Interrogatories and Request for Production of Documents.

A. Interrogatory No. 14

Best Seasonings requested an explanation of the factual basis and evidence to sustain the allegations in paragraph 38 of the Verified Complaint, a list of the witnesses intended to testify as to such allegations, and a summary of their intended testimony. In response, Plaintiff referenced the allegations in the complaint and its social media accounts and named its proposed witnesses. In its opposition to the motion to compel, Plaintiff posits that the answer is complete, that the witnesses were identified, and that, during their depositions, the witnesses already testified under oath on the questions posed in the interrogatory. Clearly, Plaintiff's answer to Interrogatory No. 14 is lacking. Plaintiff did not provide an explanation of the factual basis of the allegations and did not provide a summary of the intended testimony for each of the witnesses. See Autoridad de Carreteras y Transportation v. Transcore Atl., Inc., 319 F.R.D. 422, 431 (D.P.R. 2016) (referring to allegations in the complaint or to other discovery materials is an insufficient answer to an interrogatory); Vazquez-Fernandez v. Cambridge Coll., Inc., 269 F.R.D. 150, 156 (D.P.R. 2010) (answering an interrogatory by referring to pleadings or other discovery is insufficient); Atlanta Coca-Cola Bottling Co. v. Transamerica, Ins. Co., 61 F.R.D. 115, 120 (N.D.Ga. 1972) (incorporation by reference of the allegations of a pleading is not a responsive and sufficient answer to an interrogatory) (citations omitted); Mulero-Abreu v. Puerto Rico Police Department, 675 F.3d 88, 93 (1^st Cir. 2012) (“answering interrogatories simply by directing the proponent to rummage through other discovery materials falls short of the obligations imposed by Rule 33.”). Best Seasonings' request as to Interrogatory No. 14 is GRANTED and Plaintiff is ORDERED to respond with the factual basis for the allegations in paragraph 38 and to provide a summary of the intended testimony of each one of the witnesses listed in its answer within the next ten (10) days, on or before August 23, 2021.

B. Requests for Production of Documents Nos. 36, 38, 48, 49, 51, 53, 54, 56, and 58

Best Seasonings posits that Plaintiff's answers to the above referenced requests for production of documents are also lacking as these either simply reference answers to interrogatories, generally state that the documents were provided, or reference the allegations of the complaint. Plaintiff raises no real arguments in opposition other than to repeat that its answers to interrogatories are responsive and that a document was produced, and to accuse Best Seasoning of the same practice. Whatever was the practice employed by Best Seasoning in answering discovery is not before the Court. For the same reasons discussed in paragraph A above, Best Seasonings' request as to Requests for Production of Documents Nos. 36, 38, 48, 49, 51, 53, 54, 56, and 58 is GRANTED. Plaintiff is ORDERED to provide specific and concrete answers to the requests for production of documents within the next ten (10) days, on or before August 23, 2021. See Mulero-Abreu v. Puerto Rico Police Department, 675 F.3d at 93 (defendant entitled to responses or objections addressed to “each item or category of items”)(citing Fed.R.Civ.P. 34(b)(2)(B)).

C. Request for Production of Documents Nos. 40, 45 and 46

Best Seasonings argues that Plaintiff's responses to the above referenced requests were insufficient because these generally assert an objection based on attorney-client privilege, but Plaintiff has not specifically identified any documents that may be insulated from discovery due to privilege and has not produced a privilege log. Plaintiff counters by arguing that responses to the requests were provided by Mr. Montero during his deposition and by identifying certain documents that allegedly contain attorney-client communications. But a deposition testimony or an opposition to a motion to compel is not the proper mechanism to answer a request for documents or to assert privilege. See Id. (general reference to other discovery material is not a proper response to request for documents); Fed.R.Civ.P. 26(b)(5)(A) (when party withholds information based on privilege the party is required to expressly make the claim and describe nature of the documents withheld with specificity so that the other party can assess the claim); Adrian v. Mesirow Financial Structured Settlements, LLC, 647 F.Supp.2d 126, 131 (D.P.R. 2009) (party who invokes the privilege has the burden of establishing the application of the privilege to the contested communication and the burden of showing that such a privilege has not been waived); In re Grand Jury Subpoena (Mr. S), 662 F.3d 65, 71 (1^st Cir. 2011) (same). Best Seasonings' request as to Requests for Production of...