United States District Court, D. Connecticut
RULING ON DEFENDANT'S RENEWED MOTION FOR
Charles S. Haight, Jr. Senior United States District Judge.
Midsun Group Inc. ("Midsun") moves pursuant to
Fed.R.Civ.P. 26(c)(1)(g),  for this Court to enter an order
protecting it against any disclosure as to certain of
Plaintiff's discovery requests. Doc. 60. It does so
mostly on the ground that the information contains purported
confidential trade secrets. Defendant earlier filed a nearly
identical motion for a protective order. Doc. 40. However, on
the same date that Plaintiff filed its opposition to that
motion, the parties filed to the docket a jointly-filed
Stipulated Protective Order (the "SPO"). Doc. 50.
On January 8, 2016, the Court held a hearing on the motions
pending before it in this case, including Defendant's
earlier motion for a protective order. In the Court's
ultimate ruling, it held as follows as to that motion:
As to the protective order, the parties filed to the docket a
stipulated protective order that may seem to obviate the need
for a ruling by the Court, [Doc. 50], although the issue was
not so clear given counsels' statements at the hearing.
The parties are directed to confer regarding the status of
[this] motion. In the meantime, the Court finds it
administratively prudent to DENY [THE] MOTION WITHOUT
PREJUDICE to refiling following the parties' conference
on these issues.
CSL Silicones Inc. v. Midsun Grp. Inc., 2016 WL
1060189, at *12 (D. Conn. Mar. 15, 2016). Evidently, the
parties have now conferred, to no avail, leading Defendant to
file its renewed motion for a protective order on March 25,
2016. This Ruling resolves Defendant's renewed motion.
Federal Rules envision a broad scope of discovery in civil
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.
Civ. P. 26(b)(1). Clearly, however, discovery is far from
absolute. Relevant here are two such avenues for withholding
material from discovery. First, grounded in Rule
26(b)(1) itself, a party need not produce material that is
not "relevant to any party's claim or defense."
Second, Rule 26(c)(1)(G) allows a party to move for
a protective order "requiring that a trade secret or
other confidential research, development, or commercial
information not be revealed or be revealed only in a
to assessing Defendant's specific arguments, the Court
must make a preliminary note as to Defendant's
submissions. A continuing feature of its papers submitted to
this Court, Defendant's papers on the instant motion are
far from a model of clarity. For example, under the heading
"TRADE SECRETS: Interrogatory 7, 13; Request for
Production 36, 37, 39 and 40, " Defendant makes
arguments as to the relevance of Interrogatory #8. Doc. 60,
at 7. Note that its heading makes no indication that what
follows will contain an objection as to relevance, rather
than trade secrets, and makes no mention of Interrogatory #8.
This is just one instance of the conflation within
Defendant's motion of its arguments as to relevance and
as to trade secret protection. See, e.g.,
Doc. 60, at 7 ("The foregoing is a trade secret. None of
these queries relate to the Polaroid
factors."). The relevance of the requested documents,
and whether they are protected trade secrets, are entirely
independent and separate avenues of inquiry.
light of the sloppiness of its papers, it is simply unclear
the exact relief Defendant requested. As another notable
example, Defendant expressly summarizes on page one of its
memorandum of law that "[t]his motion addresses"
Plaintiff's interrogatories 7, 8, 12, and 13, and
Plaintiff's "requests for product [sic] 36,
37, 39, 40." Doc. 60, at 1. However, the motion then
goes on to raise issues as to other discovery requests,
specifically, Plaintiff's interrogatories 6, 7, 9, 12,
13, and 14 and requests for production 27, 28, and 32. Then,
Defendant somehow claims in its reply brief that "had
Plaintiff carefully read Defendant's renewed motion it
does not extend to Interrogatory 6, "
"does not extend to Interrogatory 14, "
and "does not extend to Request for Production
32." Doc. 69, at 6. This is non-sensical. For example,
its memorandum expressly states: "Requests 28 and 32
seek 'the classes or types of purchasers to whom
Defendant's goods or services' under Defendant's
marks. These are confusing and speculative, and together with
Interrogatories 6, 7, 12, 13 and 14 are not limited in scope
or time." Doc. 60, at 9 (emphases added).
light of the above, the Court will take Defendant at its word
and presume the motion only seeks a protective order as to
Plaintiff's interrogatories 7, 8, 12, and 13, and
Plaintiff's requests for production 36, 37, 39, and 40.
challenged discovery requests seek information and documents
as to the composition, formulation, design, development,
sourcing, and testing of Defendant's products alleged to
have been sold under Plaintiff's mark. Defendant argues
any such information is irrelevant because "[n]o issue
in the current cases depends, for its resolution, on
knowledge ascertainable from the disputed [discovery
requests]." Doc. 60, at 2. Plaintiff responds that
because such documents relate to the relative quality of the
two products, they are relevant. Doc. 68, at 6. It is true
that a central factor of the "likelihood of consumer
confusion" test arising out of Polaroid Corp. v.
Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961) is the
"respective quality of the products." Int'l
Info. Sys. Sec. Cert. Consortium, Inc. v. Security Univ.,
LLC, ___ F.3d ___, 2016 WL 2893172, at *5 (2d Cir. May
18, 2016). Plaintiff also points out that if Midsun's
product is of inferior quality, there is an increased
likelihood that it faces actual damages upon confusion. The
Second Circuit has spoken specifically to these twin
relevancies of the quality of a product in a trademark
Essentially, there are two issues with regard to quality, but
only one has relevance to determining the likelihood of
confusion. If the quality of the junior user's product is
low relative to the senior user's, then this increases
the chance of actual injury where there is confusion, i.e.,
through dilution of the senior user's brand. . . .
[S]ee, e.g., Lois Sportswear, 799 F.2d at 875. A
marked difference in quality, however, actually tends to
reduce the likelihood of confusion in the first instance,
because buyers will be less likely to assume that the senior
user whose product is high-quality will have produced the
lesser-quality products of the junior user. Conversely, where
the junior user's products are of approximately the ...