*1 Presently before the Court in this trademark infringement action is Defendant-Counterclaim Plaintiff Med Way US, Inc.’s (“Med Way” or “Defendant”) Motion to Compel Plaintiff-Counterclaim Defendant Medical Depot, Inc. d/b/a Drive Devilbiss Healthcare (“Drive” or “Plaintiff”) to compel production of certain documents and information. See Defendant's Motion to Compel Further Discovery (“Defendant's Motion” or “Def. Mot.”), Docket Entry (“DE”) [40]. Specifically, Defendant seeks documents and information pertaining to, among other things, advertising, marketing, promotion, and customer complaints concerning the mark at issue. See id. For the reasons set forth herein, Defendant's Motion is granted in part and denied in part.

I. BACKGROUND

A. Factual and Procedural History

By way of Complaint dated March 8, 2022, Plaintiff brought this action alleging federal trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1125(a) and unfair competition under New York common law. See Complaint (“Compl.”), DE [1]. Drive claims that Med Way's use of its MEDAIR mark infringes upon Plaintiff's MED-AIRE mark. See generally id. By way of its Answer and Counterclaims dated May 5, 2022, later modified by its Amended Answer and Counterclaims dated May 26, 2022, Defendant asserts federal and state claims for trademark infringement, unfair competition, and trademark dilution against Plaintiff. See Answer and Counterclaims, DE [13]; Amended Answer and Counterclaims (“Counterclaims”), DE [15]. On July 25, 2022, the Court so-ordered a stipulation whereby the parties agreed to limit discovery to: (1) priority in their respective marks, (2) use of the parties’ respective marks in commerce, (3) damages, and (4) willfulness/intent in adopting the mark. See Scheduling Order, DE [19], at 3.

On October 27, 2022, Drive sought a protective order that would relieve it from responding to the 372 Requests for Admission (“RFA”) served by Med Way. See Letter Motion for Protective Order, DE [34]. That same day, Defendant moved to compel Plaintiff to respond to certain of its Requests for Production (“RFPs”) and Interrogatories, as well as its RFAs. See Motion to Compel, DE [35]. On November 2, 2022, the Court held oral argument on both motions, during which it ruled on some, but not all, of the requests at issue. See Minute Order, DE [38]. With respect to the remaining requests (the “Disputed Requests”), the Court ordered the parties to more fully brief the issues as to why the information sought was discoverable. See id. Defendant's Motion was filed on January 18, 2022, which Plaintiff opposes in its entirety. See generally Def. Mot.; Plaintiff's Memorandum of Law in Opposition to Defendant's Motion to Compel (“Plaintiff's Opposition” or “Opp.”), DE [40-2].

B. The Requests at Issue

The Disputed Requests break down into the following categories:

See Defendant's Memorandum of Law in Support of Med Way's Motion to Compel (“Def. Mem.”), DE [40-1], at 4; Opp. at 5.

II. LEGAL STANDARD

Federal Rule of Civil Procedure 26(b)(1) provides for discovery of matters that are nonprivileged, and that are relevant and proportional to the needs of the case considering the importance of the issues, the amount in controversy, relative access to information, the parties’ resources, the importance of the discovery to resolving the issues, and the relative burden of the expense involved versus the likely benefit. See Fed. R. Civ. P. 26(b)(1). Information “is relevant if: ‘(a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Vaigasi v. Solow Mgmt. Corp., No. 11 Civ. 5088, 2016 WL 616386, at *11 (S.D.N.Y. Feb. 16, 2016) (quoting Fed. R. Evid. 401). “Proportionality and relevance are ‘conjoined’ concepts; the greater the relevance of the information in issue, the less likely its discovery will be found to be disproportionate.” Id. at *14. Further, “[t]he party seeking the discovery must make a prima facie showing, that the discovery sought is more than merely a fishing expedition.” Evans v. Calise, No. 92 Civ. 8430, 1994 WL 185696, at *1 (S.D.N.Y. May 12, 1994); see Mandell v. The Maxon Co., Inc., No. 06 Civ. 460, 2007 WL 3022552, at *1 (S.D.N.Y. Oct. 16, 2007) (“[T]he party seeking discovery bears the burden of initially showing relevance.”). It is well-established that “[m]otions to compel are left to the court's sound discretion.” Mirra v. Jordan, No. 13-cv-5519, 2016 WL 889683, at *2 (S.D.N.Y. Feb. 23, 2016); see Liberty Mut. Ins. Co. v. Kohler Co., No. 08-CV-867, 2010 WL 1930270, at *2 (E.D.N.Y. May 11, 2010) (“[A] motion to compel is entrusted to the sound discretion of the district court.”).

III. DISCUSSION

Applying the standards set forth above, Defendant's Motion is granted in part and denied in part. The Court considers each of the categories of Disputed Requests in turn.

A. Customer Complaints

Defendant's RFP 14 seeks documents “concerning complaints Drive has received concerning Drive's product(s), including without limitation, from consumers and retailers.” Ex. B. to Def. Mem. Med Way argues that such complaints are relevant to whether Plaintiff's mark is entitled to protection as a trademark, which is part of a two-prong test used to analyze trademark infringement under the Lanham Act. See Thoip v. Walt Disney Co., 736 F. Supp. 2d 689, 702-03 (S.D.N.Y. Aug. 13, 2010) (citing Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003)). Indeed, courts have considered consumer testimonials to evaluate whether a mark was used as a trademark[1] and is therefore entitled to protection. See, e.g., Jaymo's Sauces LLC v. Wendy's Co., No. 1:19-CV-01026, 2021 WL 4712685, at *8 (C.D. Ill. Oct. 8, 2021) (considering lack of appearance of “S'Awesome” mark in customer testimonials and reviews as relevant to whether the mark was used as a trademark). Customer complaints, a subset of customer testimonials, are therefore relevant to Defendant's trademark infringement claim. Moreover, Plaintiff has not adequately articulated why production of such materials would be overly burdensome or disproportional to the needs of the case. Accordingly, Defendant's Motion is granted with respect to RFP 14.

B. Advertising, Marketing, and Promotion Efforts

*3 RFPs 32, 33, 36, and 37, as well as Interrogatory 19, seek documents and information relating to advertisement and promotional efforts undertaken by Drive with respect to the MED-AIRE mark. See Ex. B. to Def. Mem. These include advertisements, social media posts, websites and paid search engine efforts concerning the MED-AIRE mark. See id. Med Way argues that these documents are relevant to Plaintiff's use of the MED-AIRE mark in commerce, which is one of the topics of discovery enumerated in the parties’ Scheduling Order. Def. Mem. at 12-15. Courts have considered similar types of advertising and promotion to analyze use in commerce. See Gameologist Grp., LLC v. Sci. Games Int'l, Inc., 838 F. Supp. 2d 141, 155 (S.D.N.Y. 2011), aff'd, 508 F. App'x 31 (2d Cir. 2013) (considering attendance at trade shows, email advertisements, press releases and print advertisements to evaluate use in commerce); see also Lopez v. Gap, Inc., 883 F. Supp. 2d 400, 419 (S.D.N.Y. 2012) (noting that courts assess advertising to analyze use in commerce). As such, the information sought in the above requests is relevant to the issues in this action. Moreover, Drive has failed to identify why this discovery is disproportional to the needs of the case, or how its production would be significantly burdensome. Accordingly, Defendant's Motion is granted as to RFPs 32, 33, 36, and 37 and Interrogatory 19.

C. Advertising Expenditures

Interrogatory 20 seeks information concerning Drive's advertising budget and expenditures relating to the MED-AIRE mark. See Ex. B. to Def. Mem. Defendant argues that this information is relevant to use in commerce, as well as whether Plaintiff abandoned[2] its use of the MED-AIRE mark. Def. Mem. at 12-16. Med Way, however, fails to cite any examples of a court specifically evaluating or ordering the production of advertising expenditures, rather than advertisements themselves, such as those discussed in Section B above.[3] Similarly, courts have held that “brochures, advertisements, marketing materials, [and] catalogs” are relevant to abandonment, without opining on the discoverability of advertising expenditures. See e.g., Asch/Grossbardt Inc. v. Asher Jewelry Co., No. 02-cv-5914, 2003 WL 660833, at *4 (S.D.N.Y. Feb. 28, 2003). Defendant has therefore failed to demonstrate the relevance of advertising expenditures to the issues in this action.

With respect to Interrogatory 22, Med Way seeks “gross and net profits generated by Drive through its purported use of ‘Med-Aire.’ ” Def. Mem. at 9. During a hearing before this Court on November 2, 2022, Counsel for Defendant represented that Interrogatory 22 would be answered if Plaintiff could provide further information relating to advertising expenditures. See November 2, 2022 Tr. at 103:25-104:4. As such, the Court construes this Interrogatory as seeking advertising expenditures and determines that, like Interrogatory 20, Med Way has failed to establish its relevance. In any event, Defendant has not explained how Drive's gross and net profits, without limitation, are relevant to its claims and defenses. Accordingly, the Motion is denied with respect to Interrogatories 20 and 22.

D. Internal Advertising Plans and Metrics

*4 RFPs 30, 31, 34, 35, 43, and 45, as well as Interrogatory 17, seek documents and information regarding Plaintiff's internal marketing plans, tools, and metrics as they relate to the MED-AIRE mark. See Ex. B to Def. Mem. With respect to this category of requests, Defendant has failed to show how the information is relevant to the claims or defenses in this action. Med Way cites a single case in which a court considered “marketing plans” to be relevant in a trademark infringement litigation. See PAJ, Inc. v. Barons Gold Mfg. Corp., No. 02-cv-1465, 2002 WL 1792069, at *1-2 (S.D.N.Y. Aug. 2, 2002). These documents, however, were deemed relevant to the “strength of the mark” at issue, which is one of several factors considered in determining the likelihood of confusion between two marks. Id. at *1 (citing Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999)). “Strength of the mark” is not one of the four limited topics of discovery in the parties’ scheduling order. See DE [19].

Moreover, Defendant has not explained how the specific types of information sought in this category of Disputed Requests are relevant to this action. For example, RFP 43 seeks documents and things relating to “plans Drive has to expand its scope of frequency of advertising, promotion, marketing, or sales in connection with the ‘MED-AIRE’ mark.” Ex. B to Def. Mem. Med Way fails to articulate how such future marketing plans are relevant to the alleged infringement. Other requests in this category seek documents concerning “promotional methods utilized by Drive to brand, market or promote Drive's website” and “tools and applications used to implement, measure, track, analyze and optimize” the same. Id. Defendant's arguments regarding relevance refer broadly to “advertising,” “promotion,” or “marketing plans” but fail to address the relevance of the specific types of information requested. Accordingly, Defendant's Motion is denied with respect to RFPs 30, 31, 34, 35, 43, and 45 and Interrogatory 17.

E. Drive's Document Retention Policy

Lastly, RFP 39 seeks the production of Drive's internal policies regarding “maintenance, destruction, or archiving of Drive's written documents.” Ex. B to Def. Mem. Med Way failed to articulate how this information in particular is relevant to the issues in this action. Accordingly, Defendant's Motion is denied as to RFP 39.

IV. CONCLUSION

For the reasons set forth above, Defendant's Motion is granted in part and denied in part. Plaintiff is ordered to produce documents and information responsive to RFPs 14, 32, 33, 36, and 37, as well as Interrogatory 19, no later than March 15, 2023. The Motion is denied in all other respects.

SO ORDERED: