United States District Court, D. New Mexico
MEMORANDUM OPINION AND ORDER
H. RITTER UNITED STATES MAGISTRATE JUDGE
matter comes before the Court on Defendant Henry Lackey's
et al. Motion to Reopen Discovery (Doc. 67), filed
December 20, 2017. Having reviewed the parties' briefs
and all pertinent authority, the Court will deny the Motion.
Route 66, also known as the “Main Street of
America” or the “Mother Road, ” is one of
the most famous and iconic highways in the United States.
upon U.S. Route 66's popularity, Plaintiff registered a
series of trademarks with the United States Patent and
Trademark office related to the sale of beers, among other
beverages, under what it calls its “Route 66
Marks.” See Doc. 17 (Amended Complaint) at
3-4. These trademarks have registration dates ranging from
2008-2012. Id. Under these marks, Plaintiff
manufactures and distributes an India pale ale/lager blend of
beer. Id. at 4. Plaintiff contends that Defendant
Lackey began infringing on the use of the Route 66 Marks when
he opened Defendant “Route 66 Junkyard Brewery”
in 2016 and began serving craft beer, including an India pale
ale, under a similar mark. Id. at 4. Claiming that
these acts constitute trademark infringement and unfair
competition under the Lanham Act, Plaintiff seeks a permanent
injunction against Defendants as well as damages including
the disgorgement of profits Defendants enjoyed as a result of
the use of the Marks. Id. at 5-7.
brief background on the Lanham Act provides context to the
parties' current dispute. The central inquiry under the
Lanham Act is “whether the junior user's mark is
likely to cause confusion with the senior user's
mark.” Hornady Mfg. Co., Inc. v. Doubletap,
Inc., 746 F.3d 995, 1001 (10th Cir. 2014) (quoting
Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136,
1143 (10th Cir. 2013)). Likelihood of confusion is ordinarily
a question of fact, but the Tenth Circuit has approved
summary judgment on the issue “in appropriate
circumstances.” Id. Six nonexhaustive factors
guide the likelihood of confusion analysis:
(1) the degree of similarity between the competing marks; (2)
the intent of the alleged infringer in adopting the contested
mark; (3) evidence of actual confusion; (4) the similarity of
the parties' products and the manner in which the parties
market them; (5) the degree of care that consumers are likely
to exercise in purchasing the parties' products; and (6)
the strength of the contesting mark.
Id. “At all times ‘the key inquiry is
whether the consumer is likely to be deceived or confused by
the similarity of the marks.'” Id.
(quoting Team Tiers Plus, Ltd. v. Tires Plus, Inc.,
394 F.3d 931, 833 (10th Cir. 2005)).
closed on October 16, 2017, and the parties were directed to
submit dispositive motions by October 30, 2017. Doc.
27. Plaintiff filed a Motion for Partial Summary
Judgment well in advance of this deadline, on September 19,
2017. Doc. 47. In its Motion, Plaintiff asserted
(among other things) that “Lodestar currently offers
for sale and sells beer in New Mexico under the ROUTE 66 mark
through a distributor, Admiral.” Id. at 3;
see also Doc. 49 at 10 (Affidavit of Andre Levy,
Plaintiff's trademark advisor). Defendants did not
dispute this fact in their Response. See Doc. 52.
Instead, Defendants filed their own Motion for Summary
Judgment on October 23, 2017. Doc. 56. In it,
Defendants argued that “[t]he uncontroverted facts show
that Defendants are entitled to summary judgment because
there is no likelihood of confusion between Lodestar's
‘Route 66 marks' and Defendant's logo[.]”
Id. at 1. Plaintiff filed a Response to
Defendants' Motion on November 6, 2017, reiterating the
fact that “Lodestar currently offers for sale and sells
beer in New Mexico under the ROUTE 66 mark through a
distributor, Admiral.” Doc. 58 at 3 (again
relying on the Affidavit of Mr. Levy).
Reply finally addressed this fact, asserting that it is
“not true.” Doc. 61 at 2. In support,
Defendants attached the affidavit of Kevin Lente, who works
for Admiral Beverage Distributors as a Craft Brand Manager.
See Doc. 61-1 at 2. In his affidavit, Mr. Lente
stated that Admiral started selling Plaintiff's Route 66
beer in July, 2017, but that it did not perform well and
Admiral did not order more. Id. Defendants thus
argue that there can be no likelihood of confusion because
Plaintiff does not sell beer in New Mexico (or, in fact, the
United States). Doc. 61 at 3. Plaintiff, however,
filed a surreply contesting the “major factual premise
of Defendants' reply brief, that Route 66 beer is no
longer sold in the United States[, ]” by attaching the
affidavit of Greg Brown, Mr. Lente's superior at Admiral,
and a new affidavit authored by Mr. Levy. See Doc.
65 at 1; Docs. 65-1, 65-2. In
his affidavit, Mr. Brown states that “Mr.
Lente did not have authority to make the statements contained
in his … affidavit submitted to this Court, and Mr.
Lente was not making statements on behalf of Admiral.”
Doc. 65-1 at 1. Mr. Levy further clarifies that
“[t]o date, Admiral has distributed Lodestar's
Route 66 beer to at least three locations in Albuquerque, all
of which currently offer the product for sale.”
Doc. 65-2 at 1. Mr. Levy further avers that
“Route 66 remains available for sale outside of New
Mexico. For example, I understand that it is for retail sale
at the Minhas Brewery in Monroe, Wisconsin where it is
brewed.” Id. at 2.
now move the Court to reopen discovery to permit them to take
the depositions of Messrs. Lente and Brown, and to re-depose
Mr. Levy. Doc. 67 at 3. Defendants argue that there
are two material factual disputes that can be resolved by
these depositions: (1) whether the “Route 66
Marks” have weak commercial strength; and (2) whether
consumers come across Plaintiff's and Defendants'
products in the same market. Doc. 67 at 2. Prior to
Plaintiff's submission of the affidavit of Mr. Brown,
“Defendants planned to use Mr. Lente at trial to rebut
Plaintiff's claims that the beers were in the same market
and any claims that ‘Route 66 beer' was doing well
in the New Mexico market and that the marks were commercially
strong.” Doc. 69 at 4. Thus, now that Mr.
Brown has contradicted Mr. Lente, they seek to depose both.
See Id. However, neither was identified by the
parties as potential witnesses in this case. As to Mr. Levy,
Defendants assert that it is necessary to re-depose him
because he “testified that all of the beer produced
between April 2016 and February 2017 was for export and none
for sale in the USA.” Doc. 69 at 2. Thus,
Defendants contend that Mr. Levy's affidavit, which
states that Plaintiff's Route 66 beer is available for
retail sale in Monroe, Wisconsin at the Minhas brewery,
contradicts his former testimony. Id. at 3.
response, Plaintiff argues that Defendants have “failed
to meet their high burden to show good cause to modify the
scheduling order and re-open discovery.” Doc.
68 at 1. Plaintiff points out that “Mr. Levy
testified that ‘[t]here are sales now' of Route 66
beer in New Mexico. He further testified that Route 66 beer
was currently being distributed in New Mexico through
‘Admiral and then on to Jubilation and obviously to
other Admiral customers as well.'” Doc. 68
at 2. Plaintiff also notes that “Mr. Levy also
previously testified that Route 66 beer is brewed by Minhas
Brewery, owned by Rhinelander, and that Lodestar
‘contract[s] the production of the beer and the sale of
the beer to Rhinelander.'” Id. Plaintiff
argues that Defendants “asked no follow-up questions
regarding Minhas Brewery's sale of Route 66 beer, ”
and did not follow up with the brewery via third party
discovery. Id. Thus, Plaintiff does not argue that
the information gleaned from these depositions would be
irrelevant, but instead, posits that Defendants had plenty of
time and notice to conduct discovery as to Admiral, and could
have asked follow-up questions of Mr. Levy at his original
deposition. See Doc. 68 at 5-6. In the event that
Defendants' Motion is denied, Plaintiff seeks costs and
fees associated with responding to it under Rule 37 and 28
U.S.C. § 1927. Doc. 68 at 6-9.
court may modify a scheduling order upon a showing of
‘good cause.'” Trujillo v. Romero,
CIV 14-0370 MV/KK, 2015 WL 13662725 at *2 (D. N.M. 2015)
(citing Fed.R.Civ.P. 16(b)(4); D.N.M.LR-Civ. 16.1).
Ultimately, whether to reopen discovery is within this
Court's “wide” discretion. SIL-FLO, Inc.
v. SFHC, Inc., 917 F.2d 1507, 1514 (10th Cir. 1990)
(citation omitted). In Smith v. United States, 834
F.2d 166, 170 (10th Cir. 1987), the Tenth Circuit
“identified several relevant factors” to be
applied by a Court when exercising this discretion:
(1) whether trial is imminent, (2) whether the request is
opposed, (3) whether the non-moving party would be
prejudiced, (4) whether the moving party was diligent in
obtaining discovery within the guidelines established by the
court, (5) the foreseeability of the need for additional
discovery in light of the time allowed for discovery by the