Mission 1st Group, Inc, Plaintiff, v. Mission First Solutions, LLC, Defendan Case No. 1:23-cv-01682-DJN United States District Court, E.D. Virginia Filed: October 31, 2024 Counsel Jillian Taylor, Pro Hac Vice, Matthew Homyk, Pro Hac Vice, Blank Rome LLP, Philadelphia, PA, Russell Taft Wong, Pro Hac Vice, Blank & Rome LLP, Houston, TX, Victoria Ortega, Blank Rome LLP, Washington, DC, for Plaintiff. Anthony NMN Tacconi, Goodman Allen Donnelly, Glen Allen, VA, Andrew David Bochner, Pro Hac Vice, Ariel Reinitz, Serge Krimnus, Pro Hac Vice, Bochner PLLC, New York, NY, for Defendant. Merritt, Craig T., Special Master FIRST REPORT AND RECOMMENDATIONS OF THE SPECIAL MASTER *1 As directed in Special Master's Scheduling Order No. 1 (ECF No. 43), the parties appeared by counsel on October 25, 2024, to present on the record their respective positions on unresolved discovery disputes. Having considered the pre-hearing and post-hearing submissions of the parties and the argument presented at the October 25 hearing, the Special Master submits this Report and Recommendation, proposing (1) the resolution of the discovery disputes underlying their Joint Motion to Compel Document Production (ECF No. 32), and (2) a plan and schedule for the completion of discovery. See Order (Appointing Special Master for Discovery) (ECF No. 40) at A. 1. The Disputed Matters and Special Master's Assignment Mission 1st Group, Inc., the Plaintiff, filed this civil action on January 8, 2023. The case was assigned to the Hon. David J. Novak on January 18, 2024. The Complaint (ECF No. 1) seeks monetary, injunctive, and other relief based on four claims that arise out of a largely common factual matrix: (1) federal trademark infringement in violation of 15 U.S.C. § 1114(1) (Count I); (2) federal unfair competition in violation of 15 U.S.C. § 1125(a) (Count II); (3) common law trademark infringement (Count IV); and (4) common law unfair competition (Count V). The fifth claim (Count III) is a claim under federal law for cybersquatting arising under 15 U.S.C. § 1125(d). Defendant, Mission First Solutions, LLC, filed its Answer and Counterclaim (ECF No. 10) (“Answer”) on February 20, 2024. While admitting some facts, the Answer denies that Defendant is liable to Plaintiff under any of the five asserted claims. The Answer also presents eight Affirmative Defenses, three of which appear to be actual affirmative defenses as contemplated in federal practice. The remainder are essentially assertions that the Plaintiff cannot prove some element of its claims. The three affirmative defenses are (1) unclean hands, Answer ¶ 77; (2) estoppel, Answer ¶ 79; and (3) fraud on the USPTO, Answer ¶ 81. When questioned at the October 25 hearing about the nature of the estoppel defense, counsel for Defendant could not articulate a plausible scenario where estoppel might apply and conceded that it is fair to assume the estoppel defense will not be asserted at trial. October 25, 2024, Hearing Transcript (“Hrg. Tr.”) at 13:6-21. Defendant's two-count counterclaim seeks: (1) a declaration of non-infringement on the ground that the Accused Marks (“Mission First” and “Mission First Solutions”) are not confusingly similar to and not dilutive of Plaintiff's claimed Mark (“Mission 1st”), and (2) cancellation of Plaintiff's Mark on the ground of fraud at the USPTO. The Court entered its Scheduling and Pretrial Order (“Sched. Order”) (ECF No. 14) on March 3, 2024. A jury will be selected on Friday, January 24, 2025, and trial will commence on Monday, January 27, 2025. The Scheduling Order established deadlines and cutoff dates for discovery and pretrial events, with the final discovery cutoff set for seven months later, on October 7, 2024. The Scheduling Order apprised the parties of the Court's procedures for the resolution of discovery disputes. See Sched. Order ¶ 6(b). *2 Plaintiff initiated written discovery on May 14, 2024, by serving interrogatories and requests for production of documents on the Defendant. This was followed by two additional waves of discovery in late August and early September. Defendant served a single group of interrogatories, requests for production, and requests for admissions on June 26, 2024. The parties submitted a stipulation and proposed protective order (ECF No. 26) on June 28, 2024. The Stipulated Protective Order (ECF No. 28) was entered on July 1, 2024. No further activity appears on the docket until October 2, 2024, five days before the discovery cutoff announced in the Scheduling Order. On that day, the parties moved jointly to amend the pretrial schedule in the case. See Joint Motion to Amend the Scheduling Order (ECF No. 29). While citing the “good cause” requirement for amendment of a Rule 16 scheduling order, the parties presented no good cause for relief, essentially acknowledging that they had not completed their work and that both wanted more time than the Scheduling Order deadlines provided. The Court denied the joint motion by Order dated October 3, 2024 (ECF No. 31). On October 7, 2024, the day of the discovery cutoff, the parties jointly filed a discovery motion of the type described in Paragraph 6(b) of the Scheduling Order. See Joint Motion Regarding Parties' Motion to Compel Document Production and Memorandum in Support (“Joint Motion to Compel”) (ECF No. 32). Each party sought to compel the production of additional documents from the other. The motion was untimely, as the Scheduling Order states in connection with such motions that “[t]he parties must file any motions with sufficient time for the Court to resolve the dispute before the completion of discovery.” Sched. Order ¶ 6(b). The next day, on October 8, 2024, the Court denied the Joint Motion to Compel, stating, “both parties have failed to make a good faith effort to comply with their discovery obligations and ... neither party has taken these obligations seriously.” Order (Denying Parties' Joint Motion to Compel Document Production) (ECF No. 37) at 1. The Court's Order offered the parties the options to (a) resolve the issues raised in their motion by agreement, or (b) suffer the appointment of a Special Master to resolve their disputes. The parties did not resolve their disputes. Consequently, the Special Master was given two tasks: “to resolve the discovery dispute underlying their Joint Motion to Compel Document Production (ECF No. 32) and to develop a discovery plan and schedule, even over any party's objection.” Appointment Order at 2, Subpart A. 1. This Report and Recommendation (“Report”) sets forth a resolution of the discovery disputes presented by the parties in the Joint Motion to Compel and proposes a discovery plan and schedule to facilitate the timely completion of all discovery tasks. Recommended Resolution of Discovery Disputes I. Plaintiff Mission 1st Group, Inc. Motion to Compel Production of Documents The Special Master asked each party to identify, in advance of the October 25 hearing, all requests for production of documents that it believed its adversary had failed to answer completely and to explain why the identified requests met the criteria of Rule 26(b)(1). Plaintiff identified fourteen (14) Requests for Production of Documents (“RFPs”) that the Defendant had either failed to answer or failed to affirm that production of documents was complete. All fourteen were included in the Plaintiff's First Request for Production of Documents served on May 14, 2024. All were met with general and boilerplate objections from the Defendant. A. Requests to Which the Defendant States the Response is Complete *3 Nine of the requests for production no longer present a live dispute. They are Plaintiff's Requests for Production Nos. 5, 6, 8, 9, 10, 11, 30, 31, and 32. As to each, the colloquy between the Special Master and counsel for the Defendant identified no objections that were being interposed, and elicited an unconditional representation by counsel for the Defendant that his firm made inquiry of its client as required by the Federal Rules of Civil Procedure and that all responsive documents, if any, in the possession, custody, or control of the Defendant had been located and produced. See, e.g., Hrg. Tr. at 19:5-21:2 (discussion with counsel concerning absence of internal documents responsive to Plaintiff's RFP No. 5 assessing facts supporting the asserted fraud defense); Id. at 54:15-56:9 (discussion with counsel concerning RFP No. 30); see also Id. at 18:18-19:4 (counsel for Defendant asserting that in response to all plaintiff RFPs “we have no additional documents to produce.”) The Special Master accepts the representations offered by counsel for the Defendant relating to the completeness of the responses to each of these nine requests for production. The Plaintiff is also entitled to rely on the Defendant's representations. The Special Master's determination that the motion of the Plaintiff is moot as to these nine requests is based on the unconditional assertion that document production is complete as to these categories. This does not relieve Defendant of its ongoing supplementation obligations under Federal Rule of Civil Procedure 26(e). However, should Defendant hereafter produce or later proffer any document that is responsive to one of these nine categories, the Plaintiff may bring the matter to the attention of the Court, and if the circumstances warrant seek the imposition of sanctions. B. Documents Relating to Defendant's Costs Plaintiff's RFP Nos. 38, 39, and 40 touch on the issue of damages. The parties appear to be in general agreement concerning the legal principles underlying Plaintiff's proof of its damages, which it essentially describes as the disgorgement of the Defendant's profits. Notably, Plaintiff verified during the October 25 hearing that it is not seeking to quantify or to recover any of its own lost or anticipated profits as a measure of damages. Hrg. Tr. at 116:3-23. Instead, it only seeks to prove the gains of the Defendant associated with the alleged misuse of the Accused Marks, and to obtain restitution or disgorgement of the Defendant's profits. Id. at 116: 11-17. Stated broadly, the Plaintiff will seek to prove the amount of the Defendant's gross revenues obtained from the sale of goods and services associated with the Accused Marks. The burden will then shift to the Defendant to offer evidence of the costs it incurred in connection with those sales to offset the gross figure offered by Plaintiff, thereby determining the profitability of the infringing activity. To state the obvious, each party is incentivized to put the largest provable number before the finder of fact, and to mount a cross examination that reduces the calculation provided by its adversary. Plaintiff's RFP No. 38 seeks the production of documents sufficient to show defendant's projected sales of goods and services. At the October 25 hearing it became clear that evidence of Defendant's projected future sales is not material, as Plaintiff asserted that it is only seeking a restitutionary or disgorgement measure of damages. Hrg. Tr. at 63:8 - 67:15. Counsel for Plaintiff conceded that Plaintiff does not really need to obtain projections of future sales. Rather, it needs financial information concerning Defendant's contracts that are currently in force, the anticipated total revenues generated by those contracts, and the amount of revenue received to date for each contract that has been partially performed. Id. at 65:17-66:6. As a consequence, Plaintiff does not need the documents identified in RFP No. 38 and is entitled to no relief on its demand for compliance with that request. *4 The same cannot be said of RFP Nos. 39 and 40, which are core requests falling squarely within the scope of permissible discovery. The two requests are logically yoked. RFP No. 40 seeks cost and expense information for goods and services marketed or sold under or in connection with the Accused Marks. And, with gross revenue data in hand, the parties can use the cost and expense data to analyze the profitability of the allegedly infringing sales, which is the target of RFP No. 39. Defendant has a strong incentive to provide proof of its costs in a manner that is credible and complete. Offering conclusory or summary records that are not backed up with verifiable accounting entries generated in the regular course of business may expose the Defendant to a loss on the damages issue under Federal Rule of Civil Procedure 50(a), to cross-examination that undresses the paucity of its proof, or to the exclusion of gauzy cost evidence offered to offset the claimed gross revenues. The question is whether the Defendant has produced accounting documents at a sufficiently granular level of detail to not only credibly support its own case but to permit the Plaintiff to meaningfully analyze its cost figures. Defendant has produced some profit and loss (“P&L”) records that purport to show its costs. Defendant's P&L documents bear four different dates, all after this civil action was initiated. The parties disagree over the sufficiency of these documents and Plaintiff criticizes them as inconsistent. When asked about the content of these records, counsel for Defendant claimed a lack of accounting expertise. Hrg. Tr. at 75: 18-20. Nor did he respond convincingly to questions about the depth of inquiry that defense counsel had made with the Defendant to understand its accounting system and unearth responsive accounting records. See Hrg. Tr. at 76:9 - 78:4. The parties were asked to provide the P&L materials produced to date to the Special Master for post-hearing examination. The Plaintiff's request for relief is relatively narrow. It asks that the Defendant be required to (1) identify the final, definitive version of its P&L document from the documents it has produced, and (2) produce underlying documents that support the costs and expenses reported in the identified P&L statement. Therefore, the Special Master will recommend that counsel for the Defendant identify the iteration of the P&L documents on which it will rely at trial, make further inquiry with the Defendant to determine precisely what cost information is maintained in the Defendant's accounting system, and produce from that system documents sufficient to verify the cost information for relevant contracts. C. The Document Catchall Rule 34 (b)(1)(A) requires that a request “describe with reasonable particularity each item or category of items to be inspected.” Plaintiff's RFP No. 44 seeks the production of documents concerning any goods or services sold by Plaintiff in connection with Plaintiff's Mark that are not responsive to any other request that was served. Perhaps a narrower meaning was intended, but a fair reading of this request is that Defendant is assigned the task of using its own judgment to locate and produce records about the Plaintiff that Plaintiff has not been thorough enough to identify with reasonable particularity in its other requests. RFP No. 44 is vague and not a reasonable demand to place on an adversary and its counsel, and the Plaintiff is therefore entitled to no relief in connection with the request. II. Defendant Mission First Solutions' Motion to Compel the Production of Documents *5 In its pre-hearing submission, Defendant sought further responses to five requests for production of documents divided into two groups. A. Documents Relating to Federal Investigation of Plaintiff Defendant served Requests for Production Nos. 62, 63, and 64 in pursuit of its argument that any claimed injury to the reputation and goodwill of the Plaintiff flowed not from any infringing activity or unfair competition, but from Plaintiff's own alleged misconduct that tarnished its reputation in the marketplace. As the parties acknowledge, the relevant “marketplace” is not made up of consumers buying fungible products. Instead, the parties compete for sales to government military agencies and non-military private entities that require specialty goods and services. See Complaint, ¶ 6; Answer ¶ 6 (“MFS admits that it is a competitor of Plaintiff.”). Thus, the controlling inquiry is whether Plaintiff possesses documents that provide insight into the choices a prospective buyer might make in evaluating the quality of its goods and services, and the degree to which information about the government investigation into and settlement with the Plaintiff might influence that assessment. An agency or a private purchaser can only rely on information that it can acquire, so there is a dividing line between (a) all of the detailed information and communication that is generated during an investigation, and (b) information about the investigation that becomes available to interested outsiders. Defendant cannot explain how a prospective agency or private entity purchaser would conduct, or be able to conduct, a deep dive into the details of a federal investigation of employment and financial practices that concluded with a settlement. By seeking “all documents and communications relating to the 2022 investigation against Plaintiff regarding payroll fraud” (RFP No. 62), the Defendant has overreached. The broadly described documents are not meaningfully tethered to a claim or defense in this action as required by Rule 26(b)(1).[1] This is without regard to the burden of producing documents responsive to this collateral inquiry, which was not quantified by the Plaintiff, but is presumably significant. Similarly, it is not established that the claims and defenses presented in this action require the production of all communications between Plaintiff and the procurement fraud unit of the U.S. Army (RFP No. 63), or the production of all communications between the Plaintiff and the Department of Defense Contract Audit Agency (RFP No. 64). The Defendant candidly acknowledges that an agency vetting a prospective vendor would rely on a much more limited data set. Hrg. Tr. at 110: 7-16 (prospective customer would likely consult CPARS data and the public press release and settlement). There is no credible assertion that a prospective purchaser would have access to, much less review or analyze, any of the detailed information demanded in these three requests when assessing the quality of the Plaintiff's goods or services. *6 Counsel explained at the October 25 hearing that government agency purchasers have access to a database of government contractors maintained by the General Services Administration known as CPARS that includes information assessing the performance of those contractors. Hrg. Tr. 106:1-20 (counsel explaining the CPARS record). Moreover, the Plaintiff may have internal documents evaluating the effects of the settlement with the government on its own brand, goodwill, and reputation. Finally, the parties have an equal ability to go online or to industry publications and locate the settlement agreement and any commentary on the settlement or its effect on the perception of the Plaintiff and its Mark. If the Plaintiff maintained an internal file for collecting or monitoring such public information, that is plainly relevant. The Special Master recommends that the Defendant be denied the relief it seeks on its requests for the production of documents in response to RFP Nos. 62, 63, and 64. However, those requests, though overbroad and off-target, do touch on a relevant inquiry. Therefore, the Plaintiff should be required to produce all documents relating to (1) its monitoring or assessment of public reporting about its settlement with the United States, (2) its internal discussions or external communications addressing the effects of the investigation on its reputation or goodwill, and (3) its monitoring or assessment of any information about itself or the Defendant that is tracked on a government purchaser website or portal, including but not limited to its own CPARS record. Because the comparison of vendor information is relevant to government purchasers, Defendant should also be required to produce its own CPARS record. B. Documents Regarding Bids and Proposals Defendant's RFP Nos. 23 and 66 are addressed to Plaintiff's actual use of its registered trademark in connection with the acquisition of business. RFP No. 23 seeks documents related to the Plaintiff's actual and target purchasers. RFP No. 66 seeks all proposals and bids for any contract award by any third party. These requests were discussed at length at the October 25 hearing. The bottom line is that the Defendant is trying to confirm where and how Plaintiff uses its registered trademark with customers. Ultimately, counsel for the Defendant explained that the real objective is to determine the degree to which the parties use their respective marks to compete for business. It was never explained why this required the production of entire bids or proposals for contracts. The Special Master asked, “So what you would really need, rather than a complete production of all bids, is just something sufficient to identify the contracts on which they bid and the agencies to which they bid?” Counsel for defendant responded, “Sure.” Hrg. Tr. at 128:19-24. Plaintiff responded that it had produced a list of every bid made to every customer and whether it was successful from 2017 to date. Hrg. Tr. at 134:7-12; 137: 1-6. Plaintiff's counsel conceded that the nature of the goods and services offered or provided was not identified with regard to any specific customers on the list. Id. at 136:8-20. Given the Plaintiff's theory of damages and its abandonment of any claim to its own lost profits, the production of financial materials relating to the Plaintiff's performance of its own contracts is not particularly relevant or proportional to the needs of the case. However, as Plaintiff appropriately acknowledges, the Defendant is entitled to know where and how Plaintiff uses its Mark, with what customers, and for what lines of business. Thus, Plaintiff will be required to supplement its list of sixty-three (63) bids and proposals to prospective customers by associating with each entry a succinct summary of the nature and categories of goods or services offered. This summary may be a sentence or two but must be sufficient to completely and accurately apprise Defendant of the scope of work that was being offered in each instance. To confirm that Plaintiff has consistently used its Mark in connection with its commercial activities, Plaintiff must extract from each bid or proposal a portion of the document sufficient to confirm that it used its registered mark in connection with that bid or proposal and provide that material to the Defendant. This will allow Defendant to evaluate the ongoing use of the asserted trademark in the real world without requiring the production of all bid files in their entirety. III. Taking of 30(b)(6) Depositions *7 Each party complains that it timely served a notice to take the deposition of its adversary's designee under Federal Rule of Civil Procedure 30(b)(6), and that its efforts to schedule and conduct such a deposition were thwarted. Plaintiff initially served notice on August 21, 2024, of its intention to take the 30(b)(6) deposition of the Defendant in Washington, D.C. on September 20, 2024. Defendant confirmed its availability to appear at the noticed time and location. Thereafter, Plaintiff advised Defendant that the Defendant's production of a tranche of additional documents would require the rescheduling of the deposition and the amendment of the list of topics on which testimony would be sought. Email exchanges followed, the details of which need not be rehearsed here. The upshot was that no amendment to the list of topics was delivered, the parties dispute whether the initial notice was withdrawn, and each accuses the other of being unreasonable in its efforts to reschedule the date. Defendant served its Rule 30(b)(6) notice on September 20, 2024, commanding the Plaintiff to appear remotely via Zoom on October 7, 2024 (the discovery cutoff date). The notice of topics for witness examination included items known to be objectionable to Plaintiff. Plaintiff responded that it could not appear on October 7 and offered alternate dates before and after the discovery cutoff. Again, fruitless email exchanges between counsel ensued, the details of which do not warrant further discussion. Both parties intended to obtain a Rule 30(b)(6) deposition. Both served their notices relatively late (in the case of Plaintiff) or very late (in the case of Defendant) in the discovery period established by the Scheduling Order. Unable to reach the kind of routine scheduling agreement that the Court expects from counsel, neither presented its grievances “with sufficient time for the Court to resolve the dispute before the completion of discovery.” Sched. Order ¶ 6(b). Plainly, it was unwise and improper for Plaintiff not to appear at all on October 7, 2024, at least by its counsel to object to the scheduling of a deposition on a date that Defendant had been repeatedly told was not available. However, the totality of the circumstances suggests that Defendant, by not showing flexibility on scheduling, was not entirely unmindful that it was laying a trap for the Plaintiff. The options are (1) to reward neither party for its lack of diligence and cooperation by denying both requested depositions, or (2) to set a schedule that permits a focused deposition of each party's designee under Rule 30(b)(6). The Special Master recommends the latter course simply because the January jury trial will hopefully be more organized and focused if the parties have the opportunity to make a record of the other's responses under oath to questions on material topics. That would include, for example, inquiry into the meaning of financial or other documents that were subjects of discussion at the October 25 hearing. Depositions may also streamline proof and unearth undisputed factual matters or party admissions, as Rule 32(a)(3) has implications for the testimony of Rule 30(b)(6) designees, as well as the officers, directors, or managing agents of a party. *8 The Special Master recommends that, on dates subsequent to the completion of the production of documents recommended above, each party be permitted to conduct the Rule 30(b)(6) deposition of the other, under the terms and conditions detailed in the recommended discovery plan and scheduling order below. The topics identified in the Rule 30(b)(6) notices should be adjusted to conform to the recommendations stated above in this Report concerning the scope of permissible discovery. IV. Defendant's Subpoenas for Third Party Materials and FOIA requests Defendant has served non-party Rule 45 subpoenas to one government agency and three private entities, as well as public record requests to one or more government agencies under the Freedom of Information Act. The FOIA requests, according to counsel for the Defendant, were related to Defendant's theory of “fraud of the federal government.” Hrg. Tr. at 98:13-22. For the reasons explained above, the fruits of those requests would be largely immaterial to any claim or defense in the case and would be cumulative over the relevant documents the Plaintiff should be required to produce. However, for the sake of complete disclosure, Defendant should be required to produce to Plaintiff a copy of all FOIA requests it has served and produce all materials received in response to each FOIA request, identifying the materials received to the specific request that generated them. The same holds true for all subpoenas served on non-parties by the Defendant and the documents produced in response to those subpoenas. Notwithstanding the immateriality of much if not all of this material to the claims and defenses in the case, Plaintiff should be able to review these documents and be in a position to object, should it see fit, to their evidentiary use. One subpoena was identified and discussed at the October 25 hearing. It was issued by the Defendant to the General Services Administration less than one week prior to the discovery cutoff date of October 7, 2024, with a return date after the discovery cutoff. It was objected to by the Plaintiff for being untimely. Hrg. Tr. at 95:13-20. It was issued in plain violation of the Scheduling Order deadline. Moreover, Defendant issued the GSA subpoena in pursuit of its inquiry into the details of the federal fraud investigation and the resulting settlement with the Plaintiff. Hrg. Tr. at 98:16-20. For reasons discussed above, it is highly unlikely that the materials would meaningfully inform the finder of fact on any claim or defense in the action. If documents responsive to this subpoena are received from the GSA prior to trial, they must be produced promptly to the Plaintiff. To the extent the subpoena seeks CPARS records from the GSA, that objective is met by the recommendation that both parties produce those records from their own files. Summary of Recommendations In accordance with Appointment Order, ¶ A. at 3, the Special Master summarizes his proposed rulings on disputed discovery matters and apprises the Court of the proposed discovery plan and schedule, beginning on the following page. Resolution of Motions to Compel and Proposed Discovery Plan and Schedule Motions to Compel Having conferred informally with counsel for the parties and conducted an on the record hearing on October 25, 2024, the Special Master proposes the following resolution of outstanding discovery disputes: Plaintiff's motion to compel responses to Requests for Production of Documents Nos. 5, 6, 8, 9, 10, 11, 30, 31, and 32 should be denied as moot. The determination of mootness is made in reliance on the representations of counsel for the Defendant as fully discussed in the First Report and Recommendations of the Special Master. Plaintiff's motion to compel responses to Request for Production No. 38 should be denied as the material sought is beyond the purview of discovery as set forth in Rule 26(b)(1) of the Federal Rules of Civil Procedure, in light of the representations of counsel for the Plaintiff that the damages remedy being sought does not require future projections. Plaintiff's motion to compel responses to Requests for Production 39 and 40 should be granted as the documents sought are squarely within the scope of permissible discovery under Rule 26(b)(1). Counsel for Defendant shall immediately make inquiry of the Defendant to (1) identify the profit and loss statement Defendant will rely on at trial to present its proof of the revenues, costs, and expenses associated with its use of the Accused Marks; and (2) as to the identified profit and loss statement, identify the sub-accounts and accounting ledgers that record the transactions that are summarized in the cost of goods sold portion of the P&L statement, on a contract-by-contract basis if such information exists. Defendant should provide the information and documents identified in items (1) and (2) to counsel for the Plaintiff no later than November 8, 2024. Plaintiff's motion to compel responses to Request for Production No. 44 should be denied, as the request does not meet the requirements of reasonable particularity set forth in Rule 34(b)(1)(a). Defendant's motion to compel responses to Requests for Production 62, 63, and 64 should be denied in part and granted in part. Except as specified below in this paragraph, Plaintiff should not be required to produce information responsive to these requests, as there is no plausible basis to conclude that a prospective purchaser or other person evaluating the quality of the goods and services offered by Plaintiff would have access to any, much less all, of the internal documents and internal or external communications relating to the identified federal payroll fraud investigation. Plaintiff should be required to produce documents relating to the investigation and settlement that a prospective purchaser might use to evaluate the goods and services offered by the Plaintiff, and its own internal assessment of the effects, if any, of the investigation and settlement on its reputation and goodwill. Thus, Plaintiff should be required to locate and produce: (1) all documents relating to its monitoring of public information reporting the fraud investigation and the Plaintiff's settlement with the United States of America; (2) all documents relating to internal or external communications concerning the effects of the investigation and settlement on Plaintiff's reputation or goodwill; and (3) all documents relating to the content of information about Plaintiff that is maintained on CPARS or any other portal that prospective purchasers rely on to assess vendors. Given that counsel for Defendant highlighted the significance of CPARS, the Defendant should also be required to produce all documents relating to data about itself that falls into category (3). The parties should complete the production of these materials no later than November 8, 2024. Defendant's motion to compel responses to Requests for Production Nos. 23 and 66 should be denied in part and granted in part. The motion should be denied, except as specified in this paragraph below. The Plaintiff should be required to produce an updated summary of all bids and proposals submitted to prospective purchasers, showing the date of submission, whether the bid was won or lost, the complete name of the party issuing the invitation to submit the bid or proposal, the complete name of the contracting party if the bid or proposal was awarded, the contract number or other identifier, and a description of the goods and services that were offered under the bid or proposal. To permit the Defendant to verify that the Plaintiff's Mark was used in connection with its offers of goods and services, the Plaintiff should extract from each identified bid or proposal a portion of the submitted documents sufficient to show that the Plaintiff's Mark was in fact used in the presentation of the bid or proposal. The Plaintiff should complete the production of these materials no later than November 8, 2024. Discovery Plan and Schedule *10 The Special Master recommends the following plan and schedule for the completion of discovery: No later than November 8, 2024, the parties shall complete all document production obligations set forth in this First Report and Recommendations of the Special Master. No later than November 6, 2024, the Defendant shall produce to Plaintiff, to the extent not already produced, copies of all subpoenas and FOIA requests issued in connection with this civil action, and produce all documents obtained in response to such subpoenas and FOIA requests. Such production shall not indicate any view or finding by the Special Master that such documents are material to the claims or defenses in this action and shall not prejudice or waive any right of the Plaintiff to challenge the admissibility of such material on any ground. Plaintiff shall conduct the Rule 30(b)(6) deposition of the Defendant at the offices of Blank Rome LLP, 1825 Eye Street, N.W., Washington, D.C. on a date no later than November 20, 2024. The date will be set in coordination with and approved by the Special Master. The deposition will not exceed a duration of seven (7) hours, excluding reasonable breaks, and the court reporter will be instructed to keep time strictly in compliance with this requirement. The topics of examination shall be limited to items listed in the notice served by Plaintiff on August 21, 2024. Defendant shall conduct the Rule 30(b)(6) deposition of the Plaintiff at the offices of Blank Rome LLP, 1825 Eye Street, N.W., Washington, D.C. on a date no later than November 20, 2024. The date will be set in coordination with and approved by the Special Master. The deposition will not exceed a duration of seven (7) hours, excluding reasonable breaks, and the court reporter will be instructed to keep time strictly in compliance with this requirement. The topics of examination shall be limited to items listed in the notice served by Defendant on September 20, 2024, except that no examination will be conducted on Topic 32. Examination on Topic 42 shall be limited to questions about the Plaintiff's monitoring of public information reporting the fraud investigation and the Plaintiff's settlement with the United States of America; internal evaluations or external communications concerning the effects of the investigation and settlement on Plaintiff's reputation or goodwill; and information about Plaintiff that is maintained on CPARS or any other portal that prospective purchasers rely on to assess vendors. Topic 42 shall not be used to inquire into any details of the government investigation, consistent with the views stated in the Report and Recommendations of the Special Master. Respectfully submitted, Craig T. Merritt Special Master Richmond, Virginia Footnotes [1] For the sake of clarity, the documents requested in RFP Nos. 62, 63, and 64 have nothing to do with the claim of fraud on the USPTO raised defensively in the Answer and as Count Two of Defendant's Counterclaim.