BADIA SPICE, INC., a Florida corporation, Plaintiff/Counter-Defendant, v. GEL SPICE COMPANY, INC., a New Jersey corporation, Defendant/Counter-Plaintiff CASE NO. 15-Civ-24391-COOKE/TORRES United States District Court, S.D. Florida Signed October 24, 2016 Counsel John Cyril Malloy, III, Malloy & Malloy, Oliver Alan Ruiz, W. John Eagan, Meredith Frank Mendez, Malloy & Malloy, P.A., Miami, FL, for Plaintiff/Counter-Defendant. Joel G. MacMull, Ronald D. Coleman, Archer & Greiner PC, Hackensack, NJ, Kate A. Sozio, Archer & Greiner PC, Haddonfield, NJ, Mark Evan Stein, Mark Stein Law, Aventura, FL, for Defendant/Counter-Plaintiff. Torres, Edwin G., United States Magistrate Judge ORDER ON PLAINTIFF'S MOTIONS TO COMPEL *1 This matter is before the Court on two pending discovery motions to compel that are ripe for disposition. Having reviewed the motions, responses, replies, related authorities submitted by the parties, and the record in this case, the Court's rulings on each motion follow. I. BACKGROUND Badia Spice, Inc.'s (“Plaintiff”) began this trademark infringement case on November 30, 2016, alleging Gel Spice Company, Inc.'s (“Defendant”) violated the Federal Trademark Act, 15 U.S.C. § 1051, also known as the Lanham Act. [D.E. 1 at 1, ¶ 1]. Specifically, Plaintiff claims it is entitled to relief under the Lanham Act for trademark infringement, false designation of origin, false description or representative, and unfair competition. Id.Included in Plaintiff's claims are claims for trademark infringement and unfair competition under Fla. Stat. § 495.161. Id. Plaintiff's signature product at the focus of this suit is its “Sazon Completa” brand of seasoning. [D.E. 1 at 4, ¶ 9]. “Sazon Completa” translates from Spanish to English as “Complete Seasoning.” Plaintiff holds the registration for the trademarks for both phrases, with respect to spices and seasonings, under U.S. Registrations 2,896,679 and 2,885,777. [D.E. 1 at 5, ¶ 12]. Plaintiff packages the “Sazon Completa” in a cylindrical bottle with a green screw-on top. [D.E. 1 at 8, ¶ 21]. Underneath the product name, “Sazon Completa,” in the center of the front-facing label, Plaintiff prints “Complete Seasoning.” Id. Below the two trademark phrases, Plaintiff has printed images of an assortment of raw vegetables. Id. Plaintiff claims that Defendant unfairly copies their brand and product label. Defendant's similar product is styled “Sazon Complete Mix Seasoning” and placed in the center of the front-facing label. Id. Defendant markets this brand with a green screw-on top, similar to Plaintiff's and even includes the images of the raw vegetables below the product-name in the center of the label. Id. Defendant responded to Plaintiff's Complaint putting forward three affirmative defenses and asserting a two-count Counterclaim. [D.E. 12 at 5]. Defendant's affirmative defenses in its original Answer essentially claims the product name, “Sazon Completa” and “Complete Seasoning” are not valid trademarks because the phrases are generic. [D.E. 12 at 4-5]. Defendant's Counterclaims seek to cancel the Registrations Plaintiff maintains to its product, “Sazon Completa” and “Complete Seasoning.” [D.E. 12 at 6, ¶¶ 6-15]. II. APPLICABLE PRINCIPLES AND LAW Under the Federal Rules, a party may pose interrogatories related to any matter into which Rule 26(b) allows inquiry, FED. R. CIV. P. 33(a)(2), request the production of any documents that fall within the scope of Rule 26(b), FED. R. CIV. P. 34(a), and serve requests to admit certain matters within the scope of Rule 26(b)(1), FED. R. CIV. P. 36(a)(1). Rule 26(b) also allows discovery “through increased reliance on the commonsense concept of proportionality.” In re: Takata Airbag Prod. Liab. Litig., 2016 WL 1460143, at *2 (S.D. Fla. Mar. 1, 2016) (quoting Chief Justice John Roberts, 2015 Year–End Report on the Federal Judiciary 6 (2015)). “Proportionality requires counsel and the court to consider whether relevant information is discoverable in view of the needs of the case.” Tiger v. Dynamic Sports Nutrition, LLC, 2016 WL 1408098, at *2 (M.D. Fla. Apr. 11, 2016). If the opposing party objects to interrogatories or requests, the requesting party may then file a motion to compel production pursuant to Fed. R. Civ. P. 37, but only after its counsel, in good faith, confers with opposing counsel to resolve discovery disputes without court intervention. See FED. R. CIV. P.37(a)(1). *2 The Federal Rules afford the Court broad authority to control the scope of discovery, Josendis v. Wall to Wall Residence Repairs, Inc., 662 F.3d 1292, 1307 (11th Cir. 2011), but “strongly favor full discovery whenever possible.” Farnsworth v. Procter & Gamble Co., 758 F.3d 1545, 1547 (11th Cir. 1985). Courts must consequently employ a liberal and broad scope of discovery in keeping with the spirit and purpose of these rules. SeeRosenbaum v. Becker & Poliakoff, P.A., 708 F. Supp. 2d 1304, 1306 (S.D. Fla. 2010) (collecting cases). The “overall purpose of discovery under the Federal Rules is to require the disclosure of all relevant information, so that the ultimate resolution of disputed issues in any civil action may be based on a full and accurate understanding of the true facts, and therefore embody a fair and just result.” State Nat'l Ins. Co. v. City of Destin, 2015 WL 11109379, at *1 (N.D. Fla. Sept. 1, 2015). However, while the scope of discovery is broad, it is not without limits. SeeWashington v. Brown & Williamson Tobacco, 959 F. 2d 1566, 1570 (11th Cir. 1992); Rossbach v. Rundle, 128 F. Supp. 2d 1348 (S.D. Fla. 2000) (citing Oppenheimer Fund v. Sanders, 437 U.S. 340 (1978)). To show that the requested discovery is otherwise objectionable, the onus is on the objecting party to demonstrate with specificity how the objected-to request is unreasonable or otherwise unduly burdensome. See Rossbach, 128 F. Supp. 3d at 1354 (citing in part Panola Land Buyers Ass'n v. Shuman, 762 F.2d 1550, 1559 (11th Cir. 1985)). Boilerplate objections and generalized responses are improper. SeeAlhassid v. Bank of America, 2015 WL 1120273, at *2 (S.D. Fla. March 12, 2015). This District has frequently held that objections which fail to sufficiently specify the grounds on which they are based are improper and without merit. See, e.g., Taylor v. Bradshaw, 2014 WL 6459978 (S.D. Fla. Nov. 14, 2014); Abdin v. Am. Sec. Ins. Co., 2010 WL 1257702 (S.D. Fla. March 29, 2010). More specifically, objections simply stating that a request is “overly broad, or unduly burdensome” are meaningless and without merit. Abdin, 2010 WL 1257702 at *1 (quoting Guzman v. Irmadan, Inc., 249 F.R.D. 399, 400 (S.D. Fla. 2008)). In addition to the Federal Rules, Southern District Local Rule 26.1 controls the necessary procedure a party must follow when objecting to a request for production or asserting a claim of privilege. It requires that: All motions related to discovery, including ... motions to compel discovery ... shall be filed within thirty (30) days of the occurrence of grounds for the motion. Failure to file a discovery motion within thirty (30) days, absent a showing of reasonable cause for a later filing, may constitute a waiver of the relief. S.D. Fla. L.R. 26.1(i)(1) (emphasis added). On its face, Rule 26.1(i) is therefore plainly discretionary. While the “occurrence” of grounds for a motion tends to be the moment at which responses are filed, this is not always necessarily the case. See, e.g., Socas v. Northwestern Mut. Life Ins., 2008 WL 619322 (S.D. Fla. March 4, 2008) (finding that the “occurrence” triggering the motion to compel was when the requesting party examined certain documents months after their initial requests had been answered); United States v. Polo Pointe Way, Delray Beach, Fl., 444 F. Supp. 2d 1258, 1261 (S.D. Fla. 2006) (finding that the “occurrence” at issue was a deposition that took place after responses were filed). In pertinent part, the Local Rules also provide that where a claim of privilege is asserted, the objecting party must prepare “a privilege log with respect to all documents, electronically stored information, things and oral communications withheld on the basis of a claim of privilege or work product protection” except for “written and oral communications between a party and its counsel after commencement of the action and work product material created after commencement of the action.” S.D. Fla. L.R. 26.1(g)(3)(C) (emphasis added). Furthermore, “[w]here a claim of privilege is asserted in objecting to any ... production demand ... and an answer is not provided on the basis of such assertion ... [t]he attorney asserting the privilege shall ... identify the nature of the privilege ... being claimed.” S.D. Fla. L.R. 26.1(g)(3)(B)(I). III. ANALYSIS A. Plaintiff's Motion to Compel Privileged Documents [D.E. 46] *3 Relevant to this motion, Plaintiff alleges that Defendant voluntarily disclosed attorney-client communications to a non-party distributor and thereby waived any associated privilege with respect to those communications. Specifically, the Defendant's sales manager, Harry Blumenfeld, purportedly disclosed the substance of attorney communications received from Defendant's trademark counsel, Bernard Malina, to a non-party distributor, Romulo Rincon, President of Forte Distribution, Inc. (“Forte”). Forte is Defendant's distributor who allegedly requested that Defendant develop the infringing product at issue. Because Mr. Blumenfeld allegedly disclosed the substance of the communications between Defendant and its trademark counsel with a non-party, Plaintiff moves to compel production of all similar and related communications. During discovery, Forte produced a May 25, 2012 email from Harry Blumenfeld to Mr. Rincon which includes the mark that appears on Defendant's label. In the produced email, Mr. Blumenfeld requested that Mr. Rincon call Mr. Blumenfeld so that he could “explain” the label. On August 30, 2016, Plaintiff's counsel took the deposition of Mr. Rincon, in his individual capacity and as Forte's 30(b) representative. With respect to the above reference email on May 25, 2012, Mr. Rincon testified that he and Mr. Blumenfeld discussed the change in the label and that Mr. Blumenfeld advised him that “the lawyer said this is the safe way to put it on [the label], Complete Mix.” [D.E. 46-3]. This voluntarily disclosure on behalf of the Defendant purportedly waived the attorney client privilege. Accordingly, Plaintiff seeks the substance of any communications between Defendant and its counsel, Mr. Malina, because they are no longer protected from discovery, including any communications that pertain to revisions to the mark reference in the email. The general rule on the waiver of privilege to a third party is that “[w]hen otherwise privileged communications are disclosed to a third party, the disclosure destroys the confidentiality upon which the privilege is premised.” In re Keeper of Records (Grand Jury Subpoena Addressed to XYZ Corp.), 348 F.3d 16, 22 (1st Cir. 2003). On this basis, Defendant moves to compel thirteen (13) emails in May and June of 2012 because Mr. Blumenfeld shared with a third party the “heart” of an attorney's conclusion. But, as Defendant points out, there is no suggestion that Mr. Rincon—the third party—was the recipient of any documents between Defendant and its trademark counsel. Rather, the record shows that there was a narrow oral disclosure between Mr. Blumenfeld and the third party.[1] Notwithstanding this meager disclosure, Plaintiff argues that the conclusionof the lawyer's advice is enough to waive privilege. Plaintiff relies on Am. Family Life Assur. Co. of Columbus v. Intervoice, Inc., 2010 WL 3000238, at *3 (M.D. Ga. July 28, 2010), but the case does not fit. In Intervoice, the court found that the defendant waived the attorney client privilege when it disclosed the conclusion of six attorney opinions in public SEC forms and letters. The court found that this was deemed a waiver of the privilege because “it let the cat out of the bag by disclosing a portion of the privileged opinions to third parties.” Id. (emphasis added). This inadvertent disclosure “was significant because the heart of the communication, the conclusion, was disclosed.” Id. Plaintiff focuses heavily on the fact that the disclosure of the conclusion of an attorney opinion waived privileged in Intervoice. While the facts in Intervoice do not provide a plethora of detail on the substantive content of the attorney opinions that were at issue, there is a significant difference when compared to the facts presented. In Intervoice, there was an actual portion of an attorney opinion disclosed—albeit the conclusion—as opposed to the oral statement that Mr. Blumenfeld revealed to Mr. Rincon. Plaintiff's motion overlooks this important distinction when it comes to the attorney-client privilege because “[t]he privilege attaches not to the information but to the communication of the information. In other words, a client does not waive his attorney client privilege merely by disclosing a subject which he had discussed with his attorney.” United States v. O'Malley, 786 F.2d 786, 794 (7th Cir. 1986) (quoting United States v. Cunningham, 672 F.2d 1064, 1073 (2d Cir. 1982) (quotation marks omitted)); see also In re Fed. Grand Jury Proceedings, 89-10 (MIA), 938 F.2d 1578, 1582 (11th Cir. 1991)(same). *4 Here, Mr. Blumfeld did not disclose the attorney communication itself; he merely discussed the subject of the communication—i.e. the attorney's conclusion of whether a label would infringe or not. In order for Mr. Blumfeld to have waived the Defendant's privilege, he must have revealed the attorney's communication. Numerous courts across the country have reached the same conclusion when articulating this well established principle. See O'Malley, 786 F.2d at 794 (“In order to waive the privilege, the client must disclose the communication with the attorney itself.”) (emphasis added); K-Tech, Inc. v. Vita-Mix Corp., 2009 WL 2436694, at *1 (D. Utah Aug. 7, 2009) (“While there are portions of the sales memorandum and the deposition testimony that describe actions taken or to be taken by [defendant] and its sales force, those portions do not contain language indicating that [defendant's] counsel specifically advised those actions or reveal the substance of any communications between [the defendant] and its counsel.”); Makula v. Sanwa Bus. Credit Corp., 1997 WL 460935, at *3 (N.D. Ill. Aug. 8, 1997) (“[A] party's voluntary disclosure of a communication with his attorney waives the attorney-client privilege, as long as the party discloses more than just the mere subject matter of the communication.”); United States v. Falzone, 766 F. Supp. 1265, 1273 (W.D.N.Y. 1991) (finding that there was no waiver of the attorney-client privilege because a government witness “did not disclose the actual communications”) (emphasis added). As both parties agree, Mr. Blumfeld did not reveal any portion of the trademark counsel's communication. He merely revealed the subject matter of the conclusion orally and did not reveal any additional information to the third party. Accordingly, Mr. Blumfeld's conduct did not waive Defendant's attorney client privilege and Plaintiff's motion to compel is DENIED. B. Plaintiff's Motion to Compel Updated Sales Information [D.E. 48] As part of Plaintiff's claim—under 15 U.S. C. § 117(a) of the Lanham Act—that Defendant violated Plaintiff's registered trademarks, Plaintiff is required to calculate its damages on the basis of Defendant's profits. See 15 U.S.C. § 1117 (“In assessing profits the plaintiff shall be required to prove defendant's sales only”). On March 15, 2016, Plaintiff served a request for production for “any and all documents sufficient to establish and verify” Defendant's “monthly and total profits to date and from which a calculation of those profits can be derived.” [D.E. 48-1]. Defendant responded to the discovery request and produced an excel spreadsheet with invoice dates, customer names, product descriptions, quantities sold, amounts for which the products were sold, total costs, and profits from June 30, 2012 through April 30, 2016. Defendant later supplemented the response—in August 2016—and produced sales information through August 11th but Defendant has refused to produce anything further. On September 2, 2016, Plaintiff inquired as to whether updated sales records would be produced and Defendant clarified that they would not. Defendant stated to Plaintiff that the request to supplement sales records was untimely as it occurred only a few days before the end of fact discovery. Because Defendant has refused to produce updated sales records, Plaintiff moves to compel Defendant to provide updated sales records on a periodic basis through at least January 31, 2017—the close of the month prior to trial. This information is purportedly critical to Plaintiff in order to properly calculate Defendant's profits as a basis for Plaintiff's damage claims. It is undisputed that fact discovery closed in this action on September 6, 2016 and Plaintiff's demand occurred on September 2, 2016—days away from the close of fact discovery. While both parties raise valid arguments as to why a supplemental production should or should not be compelled, the root of this disagreement involves a lack of communication and good faith cooperation. Defendant claims that Plaintiff's late request was improper because it left Defendant scrambling before the Labor Day weekend to satisfy Plaintiff's demand for supplementation. On the flip side, Plaintiff asserts that Defendant did not ask for additional time to produce the updated sales information but definitively told Plaintiff that it would not produce the requested information. Plaintiff supports this contention with the argument that if Defendant needed additional time to comply with the request, Plaintiff would have submitted an agreed order rather than filing the present motion. Because some—if not all—of the issues in dispute in this motion could have been resolved amicably between the parties, the Court reminds both parties to act in a cooperative manner to streamline future disputes that do not require Court intervention.[2] *5 As for Plaintiff's request to compel Defendant to produce updated sales records from August 12, 2016 through January 31, 2017, the Court finds Plaintiff's request impermissible. Plaintiff repeatedly asserts that a periodic production of sales records is required in order for Plaintiff to properly assess its damages under the Lanham Act. But, Plaintiff's request seeks to contravene the Court's pretrial deadlines. [D.E. 16] On March 22, 2016, the Court directed that fact discovery would close on September 6, 2016 and reasserted that position on August 8, 2016 [D.E. 40] when the Court denied Defendant's unopposed motion to extend the discovery period. Rather than adhere to this deadline, Plaintiff's motion would—in effect—extend discovery to the eve of trial.[3] Accordingly, as to Plaintiff's motion to compel Defendant to produce sales information through January 31, 2017, Plaintiff's motion is DENIED. Notwithstanding Plaintiff's request to extend discovery beyond the fact discovery deadline, Plaintiff is entitled to updated sales information to properly calculate its damages. However, Plaintiff may only receive updated sales figures in accordance with this Court's pretrial deadlines. Accordingly, as to Plaintiff's motion to compel Defendant to produce updated sales information, Plaintiff's motion is GRANTED but only in so far as Defendant is compelled to update its sales records until the date fact discovery closed—September 6, 2016. IV. CONCLUSION For the foregoing reasons, it is hereby ORDERED AND ADJUDGED: A. Plaintiff's Motion to Compel [D.E. 46] is DENIED. B. Plaintiff's Motion to Compel [D.E. 48] is GRANTED in part and DENIED in part. Plaintiff's motion to compel Defendant to produce updated sales records from August 12, 2016 through January 31, 2017 is DENIED. Plaintiff's motion to compel Defendant to produce updated sales records from August 12, 2016 to September 6, 2016 is GRANTED. Defendant is ordered to produce to Plaintiff the aforementioned documents within fourteen (14) days of the entry of this Order. Defendant's request for attorney fees is DENIED at this time subject to reconsideration if appropriate, including any failure to comply with this Order. DONE AND ORDERED in Chambers at Miami, Florida, this 24th day of October, 2016. Footnotes [1] When Plaintiff's counsel asked a follow-up question to ascertain what Mr. Blumenfeld said about the Defendant's lawyer communications, Mr. Rincon responded “nothing else.” [D.E. 46-2]. [2] Under Rule 37(a)(5) the Court finds that the payment of Defendant's attorneys' fees incurred in connection with the motion is denied as premature and without prejudice to later reconsideration if appropriate, including any failure to comply with this Order. [3] Noticeably, Plaintiff's motion cites no authority that allows a party filing suit under the Lanham Act to receive updated damage figures all the way until the eve of trial—particularly when it contravenes a Court's pretrial deadline.