The opinion of the court was delivered by: James Orenstein, Magistrate Judge
Plaintiff Hand Picked Selections, Inc. ("Selections") seeks sanctions against defaulting defendant AM Advertising Design Pty Ltd ("AM") pursuant to Fed. R. Civ. P. 37(d). In particular, Selections asks that I deem certain facts admitted based on AM's failure to produce discovery. For the reasons set forth below, I deny Selections' motion in its entirety.
Selections is a Virginia-based independent wine merchant that sells and distributes wine products throughout the United States. Docket Entry ("DE") 1 ("Complaint") ¶¶ 1,6. Defendants Handpicked Wines International Pty Ltd ("Wines") and AM are Australian companies that coown United States Trademark Registration No. 2,694,440 (the "440 Registration"). Selections accuses the defendants of trademark infringement, unfair competition, and misappropriation with respect to their application for and use of the 440 Registration and seeks damages and equitable relief including cancellation of the 440 Registration. See Complaint.
Prior to bringing the instant suit, Selections commenced an administrative proceeding in the United States Patent and Trademark Office ("PTO") seeking to cancel the 440 Registration.
Selections cited its own prior use of the registered mark and the likelihood of confusion that would result from the defendants' use of it. See DE 14 (Memorandum in Support of Plaintiff's Motion) ("Memo.") at 8. Wines and AM, represented by the same attorney, each served an answer to Selections' administrative petition. Id. at 9.
Thereafter, Selections learned that the defendants had made actual use of the challenged mark. On that basis, Selections filed suit in this court seeking damages. Although both defendants had answered the administrative petition, they did not both act similarly in this court. Instead, Wines served an answer to Selections' complaint and moved to stay the administrative proceedings in the PTO, see id. at 10; DE 4, but AM simply ignored the new action. As a result, on March 20, 2006, the Clerk of this court, acting at the request of Selections, noted AM's default on the record. See DE 5; DE 6. Two days later, the PTO stayed the administrative proceeding pending the outcome of this case. Memo. at 10.
AM's default did not deter Selections from seeking discovery from it. To the contrary, Selections sought to employ discovery procedures quickly and, as discussed below, prematurely. On March 30, 2006, I issued an order requiring the parties to appear for an initial conference to discuss discovery on May 9, 2006. DE 7. Not content to wait for that conference to address the orderly conduct of discovery, on April 6, 2006, Selections served AM's statutory agent with a subpoena that commanded AM to produce a witness with knowledge of certain matters to appear for a deposition and to produce documents responsive to some 23 separate requests. Selections purported to require AM to produce documents on April 21, 2006, and to produce its witness on April 27, 2006 -- all before the date of the discovery planning conference that I had already scheduled. See DE 13, Ex. 9 (subpoena dated April 6, 2006). After AM failed to comply with the subpoena, Selections submitted a letter requesting a pre-motion conference in anticipation of the instant motion for sanctions. DE 8. I addressed the matter at the conference on May 9, 2006 (which Wines attended through counsel but AM did not), and granted Selections permission to file the motion now before me. DE 10.
Selections claims that AM's failure to respond to the subpoena constitutes sufficiently willful and absolute noncompliance with discovery to warrant a rather extreme form of sanctions pursuant to Rule 37. In particular, it asks that I deem the following three facts admitted for purposes of this action:
(1) On January 4, 2001, AM did not succeed to any existing and ongoing business of Mills;
(2) On January 4, 2001, AM did not have the "bona fide intention to use the mark in commerce" that was then claimed in the '313 Application; and
(3) At no time prior to March 11, 2003, did AM ever file or support the '313 Application with any sworn declaration of "bona fide intention to use the mark in commerce" as was claimed in the '313 Application.
Memo. 15-16. Selections claims that such relief is necessary since the actions of both defendants have contributed to its inability to obtain the information it needs to challenge the 440 Registration. In brief, Selections notes that AM's co-defendant Wines has claimed that it does not have any documents concerning these facts despite the two entities' close relationship and intimates that the defendants have engaged in a concerted effort to withhold information and documents to obstruct Selections' ability to challenge the 440 Registration. Memo. at 16-20.*fn1
Consistent with its previous lack of participation in this case, AM did not respond to Selections' motion. Wines, however, did: it submitted a spirited opposition strenuously opposing the requested relief. See DE 20 (Memorandum in Opposition to Plaintiff's Motion) ("Opp."). Wines first argues that Rule 37 is not applicable with respect to AM because AM ceased to be a "party" to this action once the clerk noted its default. Id. at 4-6. Wines avers that Selections' remedy for AM's purported noncompliance is to attempt to secure the information and documents it seeks from AM through non-party discovery. Id. at 6. Wines further counsels that even if sanctions are warranted, the specific relief Selections ...