I. SUMMARY

*1 On August 18, 2020, plaintiff/counter-defendant Vitality Group International, Inc. (“VGI”) filed a Motion to Compel Production of Documents, Supplemental Interrogatory Answers, Amended Rule 26(a)(1) Disclosures, Witnesses for Deposition and Other Relief (“VGI's Motion”) with accompanying documents, including a Joint Stipulation (alternatively, “JS”), a declaration of Lamis G. Eli (“Eli Decl.”) with exhibits (“Eli Ex.”), and a declaration of Mary B. Aversano (“Aversano Decl.”) with exhibits (“Aversano Ex.”). (Docket No. 72). On August 25, 2020, VGI and defendant/counter-claimant Vitality Health Plan of California, Inc. (“VHP”) each filed a supplemental memorandum. (Docket Nos. 73, 74). VGI's Motion seeks an order compelling VHP to (1) supplement its answers to Interrogatory Nos. 19-25 to identify additional witnesses or alternatively, to verify that its answers to such interrogatories are complete; (2) supplement it production responsive to Request for Production of Document (“RFP” or “Document Request”) No. 30 to include materials on which its witnesses would rely to support VHP's affirmative defenses and counterclaims; (3) provide dates for the depositions of any and all witnesses under its control; (4) identify witness(es) pursuant to VGI's Rule 30(b)(6) deposition notice and the date(s) when such witness(es) will be available for deposition; (5) furnish a privilege log for all documents withheld due to privilege or withdraw its privilege objections for requests as to which no documents were withheld on account of privilege; (6) amend its response to RFP Nos. 47 and 48 where VHP claimed the requests were moot; and (8) amend its responses to RFP Nos. 52, 53, 55, and 57-59 to either indicate what documents VHP has to support its counterclaims or alternatively to indicate that no responsive documents exist. (Docket No. 71 [Notice of Motion] ). VGI's Motion was noticed for hearing before this Court on September 8, 2020 at 9:30 a.m. On September 4, 2020, this Court submitted VGI's Motion for decision.

For the reasons explained below and as detailed below, the Court grants in part and denies in part VGI's Motion.

II. PERTINENT BACKGROUND

A. Pleadings

On April 2, 2019, VGI filed the Complaint against VHP for: (1) Federal Trademark Infringement (Section 32 of the Lanham Act, 15 U.S.C. § 1114(1)(a)); (2) Federal Unfair Competition/ False Designation of Origin (Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)A)); (3) Violation of the California Unfair Competition Law (Cal. Bus. & Prof. Code §§ 17200, et seq.); (4) Common Law Trademark Infringement; (5) Common Law Unfair Competition; and (6) Violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). (Docket No. 1). On March 17, 2020, VHP filed its operative Second Amended Answer and Counterclaims, responding to the Complaint and asserting multiple affirmative defenses and five Counterclaims against VGI for: (1) Declaratory Judgment of Non-Infringement and Non-Violation of §§ 32 or 43(a) of the Lanham Act, California Common Law of Unfair Competition or California Business and Professions Code §§ 17200, et seq.; (2) Invalidity of VGI's Alleged Marks; (3) Unenforceability of VGI's Alleged Marks; (4) Abandonment 15 U.S.C. § 1064(3); and (5) Genericness 15 U.S.C. § 1064(3). (Docket No. 51). On March 31, 2020, VGI filed an Answer, responding to the Counterclaims and asserting multiple affirmative defenses. (Docket No. 59).

*2 VGI – an entity which assertedly provides health-related insurance and wellness goods and services and owns and has registered with the United States Patent and Trademark Office multiple trademarks which include the word “Vitality” – essentially claims that VHP – an entity that assertedly provides and administers health insurance and wellness information to California residents – has infringed upon VGI's trademarks and has engaged in unfair business practices relative thereto. VHP essentially denies VGI's allegations, claims that its health insurance services – Medicare Advantage Plan Services – are identified and distinguished with its own trademark – Vitality Health Plan of California – and clearly sourced from VHP such that there is no likelihood of confusion, and that the word “Vitality” is not a valid or protectable trademark in connection with health and wellness as it lacks distinctiveness as used in connection therewith, and indeed is ubiquitous in the health and wellness market, and is functional and generic, or at least merely descriptive.

B. Pertinent Discovery Proceedings and Scheduling Orders

On June 18, 2019, VGI propounded its First Set of Interrogatories and First Set of Requests for Production. (Eli Decl. ¶ 4).[1]

The parties held the requisite Fed. R. Civ. P 26(f) meeting on June 27, 2019, and filed their Joint Report of Parties' Rule 26(f) Conference on July 5, 2019. (Docket No. 30). They exchanged their Rule 26(a)(1) initial disclosures on July 11, 2019. (Eli Decl. ¶ 3). VHP's initial disclosures identify four witnesses: Brian Barry, Liza Arias, Michael Rowan and Scott Howell. (Eli Decl. ¶ 3; Eli Ex. B).

On July 18, 2019, the District Judge issued a Scheduling and Case Management Order (“Scheduling Order”) which, among other things, set March 17, 2020 as the “Non-Expert Discovery Cut-Off (includes hearing of discovery motions).” (Docket Nos. 31, 31-1; Eli Decl. ¶ 2; Eli Ex. A). The Scheduling Order provides in pertinent part: “All non-expert discovery shall be completed by the non-expert discovery cut-off date. THIS IS NOT THE DATE BY WHICH DISCOVERY REQUESTS OR DISCOVERY MOTIONS MUST BE FILED AND SERVED; IT IS THE DATE BY WHICH ALL DISCOVERY, INCLUDING ALL HEARINGS ON ANY RELATED MOTIONS, IS TO BE COMPLETED... Any motion challenging the adequacy of responses to discovery must be filed, served and calendared sufficiently in advance of the discovery cut-off date to permit the responses to be obtained before that date, if the motion is granted.” (Docket No. 31 at 2-3, ¶¶ II.A & II.A.3; Eli Ex. A) (emphasis original).

On January 10, 2020, the District Judge, based on the parties' stipulation, amended the Scheduling Order to, among other things, extend the “Non-Expert Discovery Cut-Off (includes hearing of discovery motions)” to June 15, 2020. (Docket Nos. 50, 50-1; Eli Decl. ¶ 2; Eli Ex. A).

Beginning in March 2020, VGI's counsel was put on a travel restriction through counsel's employer and was directed to cease any non-essential travel. (Eli Decl. ¶ 9).

On March 6, 2020, VGI served VHP with deposition notices for the four witnesses identified in VHP's initial disclosures. (Eli Decl. ¶ 8; Eli Ex. C; Aversano Ex. C). Such deposition notices did not specify dates and times for the depositions, and instead asked that VHP contact VGI's counsel to coordinate the same. (Eli Decl. ¶ 8; Eli Exs. C, D).

On March 31, 2020, VGI propounded its Second Set of Interrogatories and Second Set of Requests for Production. (Eli Decl. ¶ 6).[2]

As VHP had not provided dates or times for the aforementioned depositions, on April 2, 2020, VGI followed up, again requesting dates and times so as to determine the safest feasible means of proceeding. (Eli Decl. ¶ 8; Aversano Ex. C). Also on April 2, 2020, VGI sent VHP a Rule 30(b)(6) deposition notice with 31 topics for examination. (Eli Decl. ¶ 8; Eli Ex. E). VGI requested that VHP's attorneys contact VGI to coordinate dates and times, indicated that VGI would like to move forward with the depositions if feasible, and indicated that if VHP was able to provide dates and times, VGI could work on its end to determine how to proceed in the safest manner. (Eli Decl. ¶ 9; Eli Ex. F).

*3 On the same date – April 2, 2020 – VHP replied, indicating that VHP did not agree that it would be feasible to conduct depositions at this time, and accordingly would not be providing VGI with dates. (Aversano Ex. C). VHP further noted that the matter could be revisited once the stay at home restrictions had been lifted so that document production and witness preparation could be handled in a manner that did not endanger the wellbeing of witnesses and attorneys. (Aversano Ex. C). On April 3, 2020, VGI responded, thanking VHP for its quick response, agreeing that the matter could be revisited once they had a better sense of when stay at home restrictions would be lifted or guidelines on how best to proceed, and noted that they would have to keep an eye on the deadlines that had already been set in light of the widespread social distancing measures. (Aversano Ex. C).

On May 13, 2020, VGI propounded its Third Set of Requests for Production. (Eli Decl. ¶ 7).[3]

On May 14, 2020, VGI advised VHP that it understood and appreciated VHP's desire to wait until after the pandemic to conduct depositions, but noted that neither party had any idea when the applicable government entities would lift stay-at-home orders, indicated that it wanted to begin working with VHP to come up with a solution, pointed out that no orders had issued precluding depositions from being conducted and that conducting depositions via video conference was not unreasonable, and requested that VHP let VGI know when it was available to discuss the matter. (Aversano Ex. B). On May 15, 2020, VHP responded, indicated that it shared VGI's concerns about the scheduling of future events and suggested that the parties work on such matters. (Aversano Ex. B).

On May 21, 2020, VGI served VHP with new deposition notices for the four witnesses identified in VHP's initial disclosures and for a Rule 30(b)(6) deposition, indicating that such depositions would take place remotely, with parties in different locations, and again requesting that VHP provide dates and times for the depositions to begin as early as June 15, 2020, noting that the depositions could be conducted successfully via electronic attendance of the witnesses and counsel. (Eli Decl. ¶ 10; Eli Exs. G, H). On the same date, VHP replied, advising that Liza Arias – one of the individuals identified in its initial disclosures who was the subject of a deposition notice – no longer worked at VHP and had not for some time. VHP further indicated, that given ongoing negotiations relative to a draft joint stipulation (presumably to extend the schedule), the June 15th deadline may be premature, and suggested the depositions be scheduled in August when it was more likely that the stay at home order had been lifted/modified, which would allow time to schedule and prepare for the depositions. (Eli Decl. ¶ 11; Eli Ex. I).[4]

On May 25, 2020, VGI responded, requesting, among other things, that VHP provide dates later in June or in July for depositions. (Eli Ex. J; Aversano Ex. B). VGI further noted that it would like to work with VHP to ensure the depositions proceed timely and safely for all counsel and witnesses and that it was willing to take the depositions electronically, but needed definite dates “now” and requested that VHP provide its proposed dates. (Eli Ex. J; Aversano Ex. B). As to Liza Arias, VGI requested that VHP supplement its initial disclosures and provide Arias's last known address and telephone number. (Eli Decl. ¶ 13; Eli Ex. J; Aversano Ex. B).

*4 On May 28, 2020, the parties again exchanged email communications. (Aversano Ex. B). VHP essentially took the position that it was inappropriate to proceed with depositions because VGI had not produced/provided a date certain to produce certain documents to VHP. (Aversano Ex. B). VGI essentially responded that the stay at home order was impacting its ability to produce documents/provide a date certain for their production, but that the stay at home order did not similarly impact taking depositions or preparing witnesses for depositions as the parties could do the latter electronically. (Aversano Ex. B). VHP replied that VGI's response made no sense, and that since VGI could not provide a date certain for production of documents VHP could not move forward with depositions of VHP's people and would not agree to a “premature, one-sided deposition schedule.” (Aversano Ex. B).

On June 2, 2020, VGI again requested that VHP provide deposition dates for the end of June and the beginning of July for depositions to be conducted remotely, and that VHP supplement its initial disclosures to update VGI with, among other things, Arias's last known address to facilitate VGI's ability to notice her deposition. ( (Eli Decl. ¶ 13; Eli Ex. J).

On June 12, 2020, VHP provided its responses to the Third Set of Requests for Production. (Eli Ex. J). See supra note 3.

On June 15, 2020, VGI again requested that VHP supplement its initial disclosures to update VGI with Arias's last known address. (Eli Decl. ¶ 13; Eli Ex. J). On July 10, 2020, VGI again requested that VHP provide deposition dates and that VHP supplement its initial disclosures with Arias's last known address. (Eli Decl. ¶ 13; Eli Ex. J).

On June 18, 2020, the District Judge, based on the parties' stipulation, amended the Scheduling Order to, among other things, extend the “Non-Expert Discovery Cut-Off (includes hearing of discovery motions)” to September 14, 2020 – the current discovery cut-off. (Docket No. 70; Eli Decl. ¶ 2; Eli Ex. A).

As VGI viewed VHP's positions relative to depositions and the updating of VHP's initial disclosures to be unacceptable and as VGI viewed certain of VHP's responses to the foregoing written discovery to be deficient, on July 29, 2020, VGI sent VHP a Local Rule 37-1 letter relating to the same and requesting that the parties meet and confer. (Eli Decl. ¶ 16; Eli Ex. K). During the parties' August 7, 2020 telephonic meet and confer VHP took the position that it had no duty to supplement its initial disclosures to provide Arias's last known address and that it would not provide deposition dates for VHP's witnesses. (Eli Decl. ¶¶ 17, 18). VHP ultimately supplied Arias's contact information on August 10, 2020. (JS at 11). As the parties were unable to resolve their other differences, VGI's Motion followed.

III. PERTINENT LAW

Pursuant to Rule 26(b)(1) of the Federal Rules of Civil Procedure, “[p]arties 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.” Fed. R. Civ. P. 26(b)(1). Information within the foregoing scope of discovery need not be admissible in evidence to be discoverable. Fed. R. Civ. P. 26(b)(1).

Pursuant to Rule 33 of the Federal Rules of Civil Procedure, any party may serve upon any other party written interrogatories within the scope of Rule 26(b). Fed. R. Civ. P. 33(a)(2). A party must respond to interrogatories by answer or objection; the ground for the objection must be stated with specificity. See Fed. R. Civ. P. 33(b)(3)-(4). General or boilerplate objections are improper – especially when a party fails to submit any evidentiary declarations supporting such objections. A. Farber & Partners, Inc. v. Garber, 234 F.R.D. 186, 188 (C.D. Cal. 2006). “Each interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath.” Fed. R. Civ. P. 33(b)(3).

*5 Pursuant to Rule 34, any party may serve on any other party a request for the production or inspection of documents within the scope of Rule 26(b) which are in the responding party's possession, custody or control. Fed. R. Civ. P. 34(a). Documents are deemed to be within a party's possession, custody or control if the party has actual possession, custody or control thereof or the legal right to obtain the property on demand. In re Bankers Trust Co., 61 F.3d 465, 469 (6th Cir. 1995), cert. dismissed, 517 U.S. 1205 (1996). Accordingly, a party has an obligation to conduct a reasonable inquiry into the factual basis of its responses to discovery, and based on that inquiry, a party responding to a Rule 34 production request is under an affirmative duty to seek that information reasonably available to it from its employees, agents, or others subject to its control. A. Farber and Partners, Inc., 234 F.R.D. at 189 (citations and internal quotation marks omitted). For each item or category of document sought by a request for production, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. Fed. R. Civ. P. 34(b)(2)(B). An objection must state whether any responsive materials are being withheld on the basis of that objection. Fed. R. Civ. P. 34(b)(2)(C).

IV. DISCUSSION AND ORDERS

The Joint Stipulation frames the parties disputes into seven “issues in dispute.” The Court addresses the parties' disputes in what it views to be the most efficient manner below.

A. Depositions (JS at 10-12)

VGI requests that the Court compel VHP to provide dates for the depositions of Brian Barry, Michael Rowan and Scott Howell and to identify VHP's Rule 30(b)(6) witness(es) and their availability for deposition. VGI's Motion is denied without prejudice as to this request because the Court views it to be untimely. As noted above, the discovery cut-off is currently September 14, 2020. VGI's Motion was noticed to be heard less than a week before the expiration of such deadline. The Scheduling Order requires that any depositions be completed by not later than the discovery deadline. This Court does not view it to be appropriate to order four depositions to be crammed into the few remaining days left before the discovery cut-off.

B. Interrogatory Nos. 19-25 and RFP No. 30 (JS at 7-10)

Interrogatory Nos. 19-25 call for VHP to identify all witnesses with personal knowledge to support VHP's affirmative defenses: (1) that VGI lacks standing to assert any claims of its Complaint (RFP No. 19); (2) that any claims of the Complaint are barred by the doctrine of fair use (RFP No. 20); (3) that any of VGI's Marks are functional (RFP No. 21); (4) that any of VGI's Marks are generic (RFP No. 22); (5) of unclean hands (RFP No. 23); (6) of trademark misuse (RFP No. 24); and (7) that VGI lacks standing to bring its Complaint (RFP No. 25). (JS at 7-8).

As to each such interrogatory, VHP responded: “Brian Barry, CEO, however, VHP expressly reserves the right to supplement, clarify, revise, or correct any or all responses to this request, and to assert additional objections or privileges, in one or more subsequent supplemental responses.” (JS at 8).

RFP No. 30 calls for VHP to produce “[a]ny and all documents referred to in responding to Plaintiff's Second Set of Interrogatories to Defendant not otherwise produced.” (JS at 8).

VHP assertedly responded to RFP No. 30 as follows: “VHP objects to this request as overly broad and burdensome and not proportionate to the needs of this case ... Regarding Interrogatories 19-25, persons named in the Initial Disclosures are provided ... ” (JS at 8).[5]

VGI contends that the only logical reading of the foregoing interrogatory responses is that Brian Barry is the only witness who has personal knowledge to support VHP's affirmative defenses but points out that such conclusion does not align with VHP's response to RFP No. 30, which suggests that the witnesses identified in VHP's initial disclosures were referred to in responding to the Interrogatory Nos. 19-25 and therefore that they must have personal knowledge to support VHP's affirmative defenses, such that they should be included in VHP's responses to the interrogatories. (JS at 8-9). Based on the foregoing, VGI requests that the Court compel VHP to supplement its answers to Interrogatory Nos. 19-25 to identify additional witnesses, or alternatively, to verify that its answers to such interrogatories are complete. (JS at 9). VHP responds that Brian Barry is the person most knowledgeable about the naming of the company and trademark issues in the affirmative defenses and Counterclaims, that a “[q]uantity of witnesses with lesser knowledge will not necessarily enhance the information provided,” but that VHP is still investigating whether there are other people that can provide additional information to enhance Mr. Barry's answers.” (JS at 10).

*6 The Court grants VGI's Motion as to Interrogatory Nos. 19-25. As noted above, such interrogatories do not distinguish between witnesses who have the most personal knowledge and witnesses who have the least personal knowledge of the referenced matters – they call for VHP to identify all witnesses with personal knowledge. Accordingly, by not later than September 14, 2020, VHP shall provide verified supplemental responses to Interrogatory Nos. 19-25 identifying all responsive witnesses.

VGI also requests that the Court compel VHP to provide a complete response to RFP No. 30 identifying and requiring VHP to produce the documents on which Brian Barry will rely to provide testimony regarding the affirmative defenses or requiring VHP to confirm that Barry's knowledge is in fact not based on any documents. VGI's Motion is denied as to RFP No. 30 (except as discussed below relative to the privilege log issue). It does not appear to the Court that RFP No. 30 calls for the provision of the foregoing information and documents or, at a minimum, VGI has failed to provide the Court with sufficient information to so establish.

C. RFP Nos. 47-48 (JS at 17-19)

VHP has asserted the following affirmative defense: “The claims in the Complaint are barred, in whole or in part, because infringement (which VHP does not concede), if any, was innocent.” (Docket No. 57 at 7, ¶ 102).

RFP No. 47 calls for VHP to produce “[a]ny and all documents in support of [VHP's] Affirmative Defense that [VHP's] infringement of [VGI's] Marks was innocent.” VHP responded: “The Affirmative Defense is misstated. It reads, ‘[t]he claims in the Complaint are barred, in whole or in part, because infringement (which VHP does not concede), if any, was innocent.’ It is VHP's contention that no infringement exists and, therefore, this request is moot. No such documents exist.”

RFP No. 48 calls for VHP to produce “[a]ny and all documents that evidence that [VHP's] infringement of [VGI's] Marks, even if innocent, has ceased.” VHP responded: “It is VHP's contention that no infringement exists and, therefore, this request is moot. No such documents exist.”

VGI contends that VHP cannot both make the assertion that “infringement (which VHP does not concede), if any, was innocent” and assert that no documents or evidence exist to provide a factual basis,” and suggests that it is unclear what VHP means by asserting that RFP Nos. 47 and 48 are moot and that no such documents exist. (JS at 17-18). VGI claims that its requests can be moot only if VHP's contention (presumably its innocent infringement affirmative defense) is also moot and asks the Court to compel VHP to amend these responses and remove the reference to the requests being moot and, if no such documents exist, require VHP to “amend its pleadings to remove these statements and its Affirmative Defense.” (JS at 18).

The Court denies VGI's Motion as to RFP Nos. 47 to 48. First, the Court views VGI's reframing of VHP's affirmative defenses in such requests to be argumentative, but notes that VHP corrects such matter in its responses. Second, although VHP's responses contain arguably superfluous references to the requests being “moot,” the Court views VHP's responses – that no documents exist – to be clear enough. The Court further disagrees with VGI's contention that VHP's assertion regarding the non-existence of responsive documents necessarily equates to an assertion of lack of evidence, as evidence need not take a documentary form. Finally, a discovery motion is not an appropriate vehicle through which to seek an order compelling a litigant to amend/remove statements/affirmative defenses.

D. RFP Nos. 50-51 (JS at 19-21)

*7 VHP has alleged in Counterclaim I: “VGI lacks standing to assert violations of the Lanham Act or California law against VHP, at a minimum, because VHP's allegedly infringing use has not caused VGI any injury-in-fact... VHP has not used VGI's alleged marks.” (Docket No. 51 at 15-16, ¶¶ 43, 44).

RFP No. 50 calls for VHP to produce “[a]ny and all documents relating to [VHP's] allegation in Counterclaim I that [VHP's] use of [VGI's] Marks has not caused [VGI] any injury-in-fact.” (JS at 19). VHP responded: “VHP objects to this request as it has not used any of VGI's marks, and, therefore, this request is moot. VHP cannot prove a negative and therefore [VGI's] request is a logical fallacy. Moreover, it is VHP's contention that VGI's marks in connection with insurance plans are invalid. It is not possible to infringe invalid marks. VHP further objects to this Request on the basis of and to the extent that it seeks documents and information protected by the attorney-client privilege, attorney work product doctrine, or any other applicable privilege or protection from disclosure [citation].” (JS at 19).

RFP No. 51 calls for VHP to produce “[a]ny and all documents relating to [VHP's] allegation in Counterclaim I that [VHP] [has] not used [VGI's] Marks. (JS at 19). VHP responded: “VHP objects to this request as it has not used any of VGI's marks, and, therefore, this request is moot. VHP cannot prove a negative and therefore [VGI's] request is a logical fallacy. VHP further objects to this Request on the basis of and to the extent that it seeks documents and information protected by the attorney-client privilege, attorney work product doctrine, or any other applicable privilege or protection from disclosure [citation].” (JS at 19-20) (citation omitted).

VGI argues that VHP's responses to these requests do not comport with the governing requirements and requests that the Court compel VHP to provide supplemental responses that do. VGI's Motion is granted as to RFP Nos. 50-51. VHP's responses are deficient at least because they fail to state whether VHP has possession, custody or control of any responsive documents and whether any responsive materials are being withheld on the basis of the stated objections. See Fed. R. Civ. P. 34(b)(2)(C). Accordingly, by not later than September 14, 2020, VHP shall provide supplemental response to RFP Nos. 50-51 which so reflect and which otherwise comport with the governing rules. Moreover, as discussed below, to the extent VHP is withholding responsive documents based upon an assertion of privilege, it must also produce a privilege log by not later than September 14, 2020.

E. RFP Nos. 52, 53, 55 (JS at 21-23)

VHP has alleged in Counterclaim I: “While VHP denies using VGI's alleged marks, VHP alleges in the alternative that such use was done in good faith, without intent to trade upon any existing rights of VGI ...VHP's alleged use of VGI's alleged marks is fair use under 15 U.S.C. § 1115(b)(4)... [and] VHP's alleged use of VGI's alleged marks does not constitute unfair competition under California law, and does not violate Business & Professions Code § 17200.” (Docket No. 51 at 16, ¶¶ 45, 47, 49).

RFP Nos. 52, 53 and 55 call for VHP to produce “[a]ny and all documents relating to [VHP's] allegation[s] in Counterclaim I that [VHP's] use of [VGI's] Marks is fair use under 15 U.S.C. § 1115(b)(4) [RFP No. 52] ... was done in good faith without intent to trade upon any of [VGI's] rights [RFP No. 53] ... [and] does not constitute unfair competition under California law, and does not violate Business & Professions Code § 17200 [RFP No. 55].” (JS at 21-22).

*8 As to all three such requests, VHP identically responded: “VHP objects to this request as it has not used any of VGI's marks and, therefore, this request is moot. Moreover, it is our contention that VGI's marks in connection with insurance plans are invalid. It is not possible to infringe invalid marks. VHP further objects to this Request on the basis of and to the extent that it seeks documents and information protected by the attorney-client privilege, attorney work product doctrine, or any other applicable privilege or protection from disclosure. [citation].” (JS at 21, 22).

VGI's Motion is granted as to RFP Nos. 52, 53 and 55. VHP's responses are deficient at least because they fail to state whether VHP has possession, custody or control of any responsive documents and whether any responsive materials are being withheld on the basis of the stated objections. See Fed. R. Civ. P. 34(b)(2)(C). Accordingly, by not later than September 14, 2020, VHP shall provide supplemental response to RFP Nos. 52, 53 and 55 which so reflect and which otherwise comport with the governing rules. Moreover, as discussed below, to the extent VHP is withholding responsive documents based upon an assertion of privilege, it must also produce a privilege log by not later than September 14, 2020.

F. RFP Nos. 57-59 (JS at 24-26)

VHP has alleged in Counterclaim II: “VGI's alleged marks ... including those sought, in Registration Application Serial Nos. 88/185,411; 87/267,400; 87/267,398; and 87/392,410 are invalid ... [and] have been fraudulently pursued ....” (Docket No. 51 at 16-17, ¶¶ 52-53).

VHP has alleged in Counterclaims III and IV: “VGI's alleged marks are unenforceable against VHP....VGI has abandoned its registered marks in connection with certain ‘health insurance services’ by discontinuing use for a period of three (3) years or more with no intent to resume such use in commerce.” (Docket No. 51 at 17, ¶¶ 55, 58).

RFP Nos. 57-59 call for VHP to produce “[a]ny and all documents relating to [VHP's] allegation in Counterclaim II, that [VGI] pursued Application Serial Nos. 88/185,411; 87/2267400; 87/267,398; and 87/392,410, knowing that [VGI] no longer offered health plan services [RFP No. 57] ... in Counterclaim III, that [VGI's] Marks are unenforceable because of non-use in connection with health insurance plans [RFP No. 58] ... [and] in Counterclaim IV, that [VGI] abandoned its [specified] registered marks ... in connection with ‘health insurance services’ by discontinued use for a period of three years or more with no intent to resume such use in commerce [RFP No. 59].” (JS at 24-25).

As to all three such requests, VHP identically responded: “VHP objects to this Request on the basis of and to the extent that it seeks documents and information protected by the attorney-client privilege, attorney work product doctrine, or any other applicable privilege or protection from disclosure. [citation]. VHP also objects on the grounds that the documents requested are readily available or more accessible to [VGI] from [VGI's] own files.” (JS at 24-25) (citation omitted).

VGI's Motion is granted as to RFP Nos. 57-59. Again, VHP's responses are deficient at least because they fail to state whether VHP has possession, custody or control of any responsive documents and whether any responsive materials are being withheld on the basis of the stated objections. See Fed. R. Civ. P. 34(b)(2)(C). Accordingly, by not later than September 14, 2020, VHP shall provide supplemental response to RFP Nos. 57-59 which so reflect and which otherwise comport with the governing rules. Moreover, as discussed below, to the extent VHP is withholding responsive documents based upon an assertion of privilege, it must also produce a privilege log by not later than September 14, 2020.

G. Privilege/Work Product Objections – Lack of Privilege Log (RFP Nos. 30, 40-46, 49-66) (JS at 12-16)

*9 VGI contends that VHP has asserted boilerplate privilege objections in its responses to RFP Nos. 30, 40-46, and 49-66, but that (1) VHP's responses do not – contrary to Fed. R. Civ. 34(b)(2)(C) – reflect whether any responsive materials are being withheld on the basis of such objections; and (2) VHP has not produced a privilege log. VGI requests that (1) if responsive documents have been withheld based upon a privilege objection, the Court order VHP to produce a privilege log; or (2) if VHP has not withheld any responsive documents based on a privilege objection, the Court order VHP to (a) amend each response to remove the privilege objection; and (b) produce documents responsive to each request or indicate that no documents exist in its possession that are responsive to the request. VGI's Motion is granted in part and denied in part as to these requests.

First, the Court agrees with VGI that VHP's responses to RFP Nos. 30, 40-46, and 49-66 are deficient because they do not reflect whether any responsive materials are being withheld on the basis of the privilege objections (or other objections) asserted as required by Fed. R. Civ. P. 34(b)(2)(C). VHP is ordered to provide supplemental responses to the foregoing Document Requests which comport with Rule 34(b)(2)(C) and affirmatively reflect whether any responsive documents are being withheld based upon VHP's privilege objections (or other objections) by not later than September 14, 2020. Further, to the extent VHP has no documents in its possession, custody or control responsive to the foregoing requests, its responses must also indicate that fact.

Second, the Court agrees with VGI that to the extent responsive documents have been withheld based upon the privilege objections, VHP must produce a privilege log. VHP does not disagree and has indicated that it is working on such a log. To the extent VHP has not already done so, VHP is ordered to produce, by not later than September 14, 2020, a privilege log corresponding to any documents responsive to VGI's document requests which are within VHP's possession, custody or control and have been withheld based upon a privilege objection.

Third, the Court otherwise denies VGI's Motion relative to this topic. While, as noted above, it is appropriate to require VHP to specify whether it is withholding any responsive documents based upon its privilege objections, VGI cites no authority for the proposition that it is appropriate to require VHP to withdraw its privilege objections or to amend its responses to omit the same. Further, as VHP may well have asserted non-privilege, as well as privilege objections to RFP Nos. 30, 40-46, and 49-66, and as VGI's Motion, except as otherwise discussed above, does not address the viability of, or even supply the Court with the substance of any such other objections, it would be inappropriate to order VHP to produce documents responsive to each request based merely on a representation that no documents have been withheld based upon the privilege objections as doing so would effectively overrule VHP's other objections without consideration of the merits thereof.

IT IS SO ORDERED.