Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 5 of 9 PagelD #: 2873

response.
EEWCT Interrogatory 14: This has been supplemented.

USA Football asserted that numerous trademarks were infringed by Defendants (see 4] 15 (Exh. B)
and 441 44-46; 4] 15 (Exhs. A and B) and 4]4] 66-69) and it is USA Football’s burden to support such
assertions.

Claiming that the interrogatory is overbroad or the like does not hold water because USA Football
asserted the marks it asserted. Defendants are entitled to know the basis of USA Football’s
infringement claim against them as to each one of the asserted marks. Refusing to respond to this
interrogatory is not acceptable.

Again, an objection that this interrogatory is duplicative with one or more document requests is a
specious objection particularly where USA Football did not invoke Rule 33(d).

Similarly, the assertion that this is a premature contention interrogatory is not a valid objection given
that we are nearing the end of fact discovery and we are simply asking USA Football the basis for its
claims.

If USA Football cannot answer an interrogatory about what it alleged, we may need to bring this to
the Court’s attention via a motion to compel further responses or another type of motion (e.g.,
motion to exclude evidence, motion for summary judgment, and/or a Rule 11 motion).

Burnett Interrogatory 1: This has been supplemented.

USA Football’s response makes reference to “work product.” What “work product”? USA Football's
response fails to provide any information concerning the details (even who, what, where, when) of
such “work product.” There is no reference concerning any work product related to USA FLAG and
USA FLAG FOOTBALL as brands.

Please supplement your response accordingly or we will likely move the Court to compel a further
response.

Burnett Interrogatory 3: This has been supplemented.

Again, USA Football’s response fails to identify any pertinent information, if any, that was obtained
by Burnett. There are no details as to the who, what, where, when, why, and how of any such
pertinent information that Burnett allegedly acquired, in particular, as the USA FLAG and USA FLAG
FOOTBALL as brands.

Please supplement your response accordingly or we will likely move the Court to compel a further
response.

Burnett Rog 14: This has been supplemented.


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 8 of 9 PagelD #: 2876

SA Flag Rog 21: This limitation is accepted.

USA Football refused to answer this interrogatory, which specified both a limited time frame and a
specific subject matter. The objection to this interrogatory to the extent it seeks documents or
communications outside of USA Football’s possession, custody, or control hints at obfuscation
inasmuch as this is not only an interrogatory, but Instruction No. 9 to the set limits the responses to
documents and information within the responding party’s possession, custody, or control. None of
the objections raised provide a basis to not respond. Defendants will be willing to limit this
interrogatory to flag football in connection with any mention of any branding or trademark that
includes USA FLAG or USA FLAG FOOTBALL.

Please let us know if this is acceptable. If not, we will likely move the Court to compel a response.

FFWCT Requests for Admission 7, 8, 14-18, 45, 46/ USA Flag Request for Admission 38 / Burnett
Requests for Admission 14, 17-21, 48, 49: Confirmed.

In Request for Admission No. 1, Defendants requested, for any responses to a request for admission
that was not an unqualified admission, that USA Football provide documents supporting such
responses.

Here, USA Football’s responses to these requests were not unqualified admissions. Therefore, USA
Football much produce documents supporting its responses. Please confirm that you have done so.

For example, the response to FFWCT’s Request for Admission No. 8 asserts that Defendants’
trademark use was not a legitimate use. Please produce the documents supporting your response
(which was not an unqualified admission).

As to Request for Admission No. 38 propounded by USA Flag, please note that “commercial
impression” is not a legal conclusion. So, a response must be provide to the Request for Admission
and/or Request for Production No. 1.

We appreciate your attention to these matters and look forward to a productive conversation next
week. It may make sense to work through our discovery issues on both sides in one call. Please let
us know your availability.

Thank you.

Regards,

Mark D. Nielsen, Ph.D., J.D.

Scheef & Stone, LLP Partner

www,solidcounsel.com | 214.472.2112

Office: 214.472.2100 | Fax: 214.472.2150 | Direct: 214.472.2112
2600 Network Boulevard, Suite 400, Frisco, TX 75034


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 4 of 9 PagelD #: 2872

EEWCT Interrogatories 8 and 9: No. 8 has been supplemented.

The cryptic statement “any actual use of USA FLAG” requires supplementation, if any can even be
provided in light of USA Football’s other discovery responses indicating that it has no documents to
show any use of the USA FLAG mark in commerce. Furthermore, the interrogatory asked for the
basis for any common law rights, not simply a conclusory assertion that they somehow exist.

Given that this interrogatory is focused on the basis for all of USA Football’s claims against
Defendants, a supplemental response, especially as to the USA FLAG mark, but both marks, is
required.

VV a a a Q
of the USA FLAG or USA FLAG FOOTBALL marks: These have been supplemented.

Again, USA Football’s responses are incomplete inasmuch as they do not provide any factual basis
that Defendants had any actual knowledge of USA Football’s prior use of the USA FLAG or USA FLAG
FOOTBALL marks before Defendants adopted the USA FLAG mark.

Communications and work performed are mentioned. What communications? What work? Who?
What? Where? When?

Alleged plans by USA Football to use the USA FLAG and USA FLAG FOOTBALL marks is mentioned?
What plans? When? What is the basis for this assertion.

The responses are conclusory assertions and nothing more.

Please supplement your responses accordingly or we will likely move the Court to compel further
responses.

FFWCT Interrogatory 12: This has been supplemented.

Again, USA Football’s response is superficial. There are no details on any “prior use.” There are no
details on the alleged timing.

Please supplement your response accordingly or we will likely move the Court to compel a further
response.

EFWCT Interrogatory 13: This has been supplemented.

USA Football’s “response” is non-responsive. If USA Football had customers and lost them, USA
Football knows the customers it lost. The response needs to identify lost customers. USA Football
asserted this in 4 74 of its complaint (loss of business), so the burden is on USA Football to identify
any lost business and lost customers.

Please supplement your response accordingly or we will likely move the Court to compel a further


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 6 of 9 PagelD #: 2874

USA Football’s response to this interrogatory is again conclusory and superficial in that no details are
to the who, what, where, when, why and how Burnett was allegedly advised at the time regarding
the USA FLAG mark USA Football claims to own (but cannot show any use of).

FEWCT Interrogatories 18, 21 / USA Flag Interrogatories 17, 18, 19, 22 / Burnett Interrogatories 19
22: These will be supplemented.

USA Football’s reliance on Fed.R.Civ.P. 33(d) does not comply with the Rules and associate case law,
nor Instruction No. 10 in the discovery requests.

More specifically, pursuant to Rule 33(d), if documents are going to be referenced in a response to
an interrogatory, the response has to indicate exactly where the responsive information is to be
found. Walt Disney Co. v. DeFabiis, 168 F.R.D. 281, 284 (C.D. Cal. 1999). Furthermore, any issue USA
Football attempts to raise regarding the relative burdens of finding the information sought by the
interrogatories is irrelevant because Defendants do not know what facts USA Football is relying on
for its answers. Thus, a supplemental response to these interrogatories is required.

Also, to ascertain information based on multiple pages of documents will be difficult and
burdensome for Defendants, particularly where Defendants do not know what facts USA Football
intends to rely upon for its response. Therefore, it is USA Football’s burden to justify its exercising
the option to produce documents (perhaps not even business records) in lieu of providing a
narrative answer by showing that:

a review of the documents will actually reveal answers to the
interrogatories. In other words, the producing party must show that
the named documents contain all of the information requested by
the interrogatories. Oleson v. Kmart Corp., 175 F.R.D. 560, 564 (D.
Kan. 1997). Crucial to this inquiry is that the producing party have
adequately and precisely specified for each interrogatory, the actual
documents where information will be found. Document dumps or
vague references to documents do not suffice.

SEC v. Elfindepan, 206 F.R.D. 574, 576 (M.D.N.C. 2002).

A second burden imposed on the producing party is to justify the
actual shifting of the perusal burden from it to the requesting party.
Rule 33(d) by its nature, of course, contemplates shifting the burden,
but its text also explicitly establishes the minimum threshold to be
that ‘the burden of deriving or ascertaining the answer [must be]
substantially the same for the party serving the interrogatory as for
the party served . ...’ Fed. R. Civ. P. 33(d).

SEC v. Elfindepan, 206 F.R.D. 574, 577 (M.D.N.C. 2002).


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 9 of 9 PagelD #: 2877

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Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 1 of 9 PagelD #: 2869

From: ‘Anne Ricchiuto
To: ‘Mark Nielsen
Cc: Amie Peele; PLG File Management; Louis T, Perry (louls.perry@faearedrinker.com); Gomez, David F.
Subject: Flag litigation supplemental discovery responses
Date: Friday, December 15, 2023 3:00:10 PM
Attachments: image001.pna_
image002.pna

121523 USA FB First Supp Rog Responses to FFWCT.pdf
121523 USAFB First Rog Supp Responses to Burnett.pdf
121523 USA Football Supp Response to USA Flag Second Set of ROG .pdf

CAUTION: EXTERNAL EMAIL,
Mark,

Consistent with our agreement at our Nov. 30 meet and confer, attached are supplemental
discovery responses to three sets of interrogatories. | have also made notes in red below as to each
of the listed items.

We will follow up with supplements addressing the Rule 33(d) issue — | believe we both owe each
other lists of produced documents that correspond to interrogatories for which that Rule was
invoked.

From: Mark Nielsen <mark.nielsen @solidcounsel.com>

Sent: Monday, November 20, 2023 3:52 PM

To: Anne Ricchiuto <aricchiuto @peelelawgroup.com>

Cc: Amie Peele <apeele@peelelawgroup.com>; PLG File Management
<plgfilemanagement@peelelawgroup.com>; Louis T. Perry (louis.perry@faegredrinker.com)
<louis.perry@faegredrinker.com>; Gomez, David F. <david.gomez@faegredrinker.com>; Inman, Sara
E. <sara.inman @faegredrinker.com>

Subject: USA Football cases

Dear Anne,

We write regarding USA Football’s responses to Defendants’ First and Second Sets of Discovery
Requests. We reserve the right to raise other issues with USA Football’s responses; but, for now, the
deficiencies of interest are set forth below.

Regarding USA Football’s General Objections, we simply ask that you all confirm that you are not
withholding any documents and/or information based on those general objections. If you are,
please let us know what you are withholding so that we may consider whether or not further
discussion about the objections is warranted.

Responses to Interrogatories (and, to the extent the same interr ry was asked re than
n i if it ii

Please initially note that a party responding to interrogatories is under a duty to make a reasonable


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 7 of 9 PagelD #: 2875

In other words, USA Football must show that the documents it intends to produce contain the
requested information, that USA Football has specified the precise documents that contain the
information responsive to this interrogatory, and that the burden for Defendants to ascertain the
information requested is the same as that for USA Football to ascertain the information requested.
Until USA Football accomplishes these requirements, Defendants object to USA Football’s attempt to
exercise the option provided under Rule 33(d), and demands a narrative answer to these
interrogatories.

Furthermore, merely “[d]irecting the opposing party to an undifferentiated mass of records is not a
suitable response to a legitimate request for discovery.” American Rockwool v. Owens-Corning
Fiberglas Corp., 109 F.R.D. 263, 266 (E.D.N.C. 1985). Along these lines, a response to an
interrogatory “‘should be complete in itself and should not refer to the pleadings, or to depositions
or other documents, or to other interrogatories, at least where such references make it impossible
to determine whether an adequate answer has been given without an elaborate comparison of
answers.” Dana Corp, v. American Standard, 1994 WL 228537 at *1 (N.D. Ind., April 15, 1994)
(quoting, 4A Moore’s Federal Practice at § 33.25[1] (2d ed. 1991). In other words, to the extent that
Medit refers to pleadings, depositions, or other documents in its response to this interrogatory, such
references, at a minimum, must be specific as to the precise documents that contain the requested
information, and the location therein of the requested information.

For these reasons, Defendants request that USA Football either: (a) answer these interrogatories in a
narrative manner, or (b) satisfy its burden to rely upon Rule 33(d) and specify the precise documents
and the location(s) in each where the responsive information can be ascertained. Anything short of
one of these will force Defendants to bring this matter up with the Court.

EFWCT Interrogatory 20: Confirmed.

This interrogatory clearly contained a typographical error in light of the same interrogatories from
the other Defendants. If USA Football confirms that its answer to FFWCT’s interrogatory will be no
different than for the other defendants, we can agree that no formal supplemental response is
needed. Otherwise, please provide a supplemental response.

USA Flag Interrogatories 15, 16: These have been supplemented.

USA Football’s response is not entirely responsive not entirely clear. These interrogatories very
specifically asked for USA Football to “Set forth ALL FACTS CONCERNING YOUR use in commerce of
the USA FLAG mark prior to December 20, 2022” and to “Set forth ALL FACTS CONCERNING YOUR
use in commerce of the USA FLAG FOOTBALL mark prior to December 20, 2022.” USA Football’s
response merely answered “prior to 2022,” which was not only not the question asked — the
question had an exact date — but, it is unclear what “prior to 2022” means. Does it mean prior to
January 1, 2022, prior to December 20, 2022, or prior to some other date in 2022?

Please supplement your responses accordingly or we will likely move the Court to compel further
responses that answer the interrogatory as asked.


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 2 of 9 PagelD #: 2870

inquiry to gather the necessary facts, and a party's failure to describe his efforts to obtain the
information sought renders his responses insufficient. See, Fed.R.Civ.P. 26(g)(1); Continental Illinois
Nat'l Bank & Trust Co. v. Caton, 136 F.R.D. 682, 684 (D. Kan. 1991); Miller v. Doctor's Gen. Hosp., 76
F.R.D. 136, 140 (W.D. Okla. 1977); International Fertilizer & Chem. Corp. v. Brasileiro, 21 F.R.D. 193,
194 (S.D.N.Y. 1957); 8A Charles Alan Wright, et al., Federal Practice & Procedure § 2177 at 323 (2d
ed, 1994) (interrogatory answers sufficient “when the answers as a whole disclose a conscientious
endeavor to understand the questions and to answer fully those questions as are proper....”); 7
Moore’s Federal Practice 44] 33.100, 33.102[3] (3d ed.1996).

FEWCT Interrogatories 1 and 2: These have been supplemented.
USA Football’s responses are superficial and incomplete.

Aclaim of acquired distinctiveness may be based on an applicant’s ownership of one or more active
prior registrations of the same mark on the Principal Register. 37 C.F.R. §2.41(a)(1); TMEP
§1212.04. An applied-for mark is considered the same mark if it is the legal equivalent of the
previously registered mark. In re Highlights for Children, Inc., 118 USPQ2d 1268, 1273-74 (TTAB
2016) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812
(Fed. Cir. 2001)); TMEP § 1212.04(b); see also TMEP 1212.01.

To be legal equivalents, the applied-for mark must be indistinguishable from the previously
registered mark or create the same, continuing commercial impression such that the consumer
would consider them both to be the same mark. In re Highlights for Children, Inc., 118 USPQ2d at
1274, 1275 n.18 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347, 57 USPQ2d at
1812)); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); TMEP §1212.04(b).

And, per TMEP 1212.01, in determining whether a mark has acquired distinctiveness, the evidence
must be considered as a whole guided by the following factors: (1) association of the applied-for
mark with a particular source by actual purchasers (typically measured by customer surveys); (2)
length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and
number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product
embodying the mark. Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir.
2018); City of London Distillery, Ltd., 2020 USPQ2d 11487, at *16 (quoting In re Snowizard, Inc., 129
USPQ2d 1001, 1005 (TTAB 2018)); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *2-3. “[NJo
single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424.
Rather, all factors are weighed together in light of all the circumstances to determine whether the
mark has acquired distinctiveness. Id.

USA Football’s responses are superficial and incomplete in that it merely asserts in each response
that the marks are the same, but provides no basis for the sameness.

In addition, USA Football’s responses do not provide any details as to the basis for the acquired
distinctiveness.

Please supplement your responses accordingly or we will likely move the Court to compel further


Case 4:23-cv-00465-ALM Document 76-2 Filed 06/28/24 Page 3 of 9 PagelD #: 2871

responses.

EFWCT Interrogatories 5 and 6: These have been supplemented.
Again, USA Football’s responses are incomplete.

The responses do not provide a detailed basis for any goodwill in the USA FLAG and USA FLAG
FOOTBALL marks.

The responses do not provide a detailed basis for how any alleged goodwill in the USA FLAG and USA
FLAG FOOTBALL marks has been damaged by Defendants.

Please supplement your responses accordingly or we will likely move the Court to compel further
responses.

EEWCT Interrogatory 7: This has been supplemented.

This interrogatory, in significant part, asks essentially what is required by Fed.R.Civ.P. 26(a)(1)(A)(iii).
So, in addition to, or in conjunction with, supplementing USA Football’s response to this
interrogatory, request is made that USA Football also supplement its Rule 26(a)(1)(A)(iii) disclosure.

To refresh your recollection, USA Football’s Rule 26(a)(1)(A)(iii) disclosure from 8.3.2023 states:

USA Football is seeking recovery of all gains, profits, savings and
advantages realized by Defendants from the use of USA FLAG or any
name, word, mark, or designation confusingly similar thereto. Such
information is in Defendants’ custody and control at this time and
will be ascertained during discovery.

USA Football is seeking damages, including costs, disbursements,
and attorney's fees owed to them by reason of Defendants’ willful
infringement of its marks.

This does not include any computation of any sort and requires supplementation.
As to USA Football’s duplicative objection to the interrogatory, which is not a basis to withhold
information anyways, a document request cannot ask for a calculation, so the duplicative objection

is specious,

Furthermore, the interrogatory response is deficient because Defendants did not merely ask about
the types or categories of damages, but also damages calculations.

Please supplement your response and your Rule 26(a)(1)(A)(iii) disclosures accordingly or we will
likely move the Court to compel a further response/disclosure.