UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 06-1131
RENAISSANCE GREETING CARDS, INCORPORATED,
Plaintiff - Appellant,
versus
DOLLAR TREE STORES, INCORPORATED,
Defendant - Appellee.
Appeal from the United States District Court for the Eastern
District of Virginia, at Alexandria. T. S. Ellis, III, District
Judge. (1:05-cv-00341-TSE)
Argued: November 30, 2006 Decided: March 30, 2007
Before WIDENER and WILKINSON, Circuit Judges, and David A. FABER,
Chief United States District Judge for the Southern District of
West Virginia, sitting by designation.
Affirmed by unpublished opinion. Judge Faber wrote the opinion, in
which Judge Widener and Judge Wilkinson joined.
ARGUED: Michael Steven Culver, MILLEN, WHITE, ZELANO & BRANIGAN,
P.C., Arlington, Virginia, for Appellant. Beth Hirsch Berman,
WILLIAMS, MULLEN, HOFHEIMER & NUSBAUM, P.C., Norfolk, Virginia, for
Appellee. ON BRIEF: Adam Casagrande, WILLIAMS, MULLEN, HOFHEIMER
& NUSBAUM, P.C., Norfolk, Virginia, for Appellee.
Unpublished opinions are not binding precedent in this circuit.
FABER, Chief District Judge:
Renaissance Greeting Cards, Inc., appeals the district court’s
grant of summary judgment to Dollar Tree Stores, Inc., and the
court’s determination of an evidentiary issue under Federal Rule of
Evidence 408. For the following reasons, we affirm with regard to
both issues.
I.
In connection with its greeting cards business, appellant
Renaissance Greeting Cards, Inc. (“RGC”), owns three registered
trademarks containing the words “Renaissance” and “Renaissance
Greeting Cards.” Although the marks were registered in 1992, 1996,
and 2003, respectively, at least one of these marks has been in
continuous use by RGC or its predecessors since 1977. The parties
do not dispute that RGC’s “Renaissance” mark is incontestible
pursuant to 15 U.S.C. §§ 1065 and 1115(b).
Although RGC operates one retail outlet store in Maine, the
vast majority of RGC’s sales are made on a wholesale basis to
assorted retailers and to florists affiliated with RGC’s parent
company, Florists’ Transworld Delivery, Inc. (“FTD”). Not
surprisingly, RGC’s advertising expenditures, which have averaged
$358,000.00 in recent years, are targeted mostly at these wholesale
customers. With recent annual sales averaging twelve million
dollars, RGC claims approximately 0.2% of the greeting cards
2
market. Although RGC’s products at one time included a line of
gift bags, gift wrap, bows, and ribbon, RGC abandoned this line in
1990, and has since confined itself to the sale of greeting cards.
Appellee Dollar Tree Stores, Inc. (“DTS”), owns and operates
approximately 2,800 discount retail stores nationwide, with recent
annual sales totaling in excess of $3 billion. Since 1993, DTS has
sold a line of gift bags bearing a “Renaissance” or “Renaissance
Gift Bags” mark. In 2002, it expanded this line to include gift
wrap, boxes, bows, ribbon, and tissue paper. DTS estimates that it
has sold somewhere between 250 million and 500 million units of
these products since 1995. DTS also sells a line of greeting
cards, but these cards, which are produced by American Greetings
Corporation, are sold under the trademark “Tender Thoughts.”
At the time it selected its “Renaissance” marks, DTS was
unaware of RGC’s trademarks. Indeed, DTS did not conduct a
trademark search or consult counsel with regard to its use of the
mark until 2003, when it discovered that the “Renaissance” mark was
widely used by many companies. As a result of this discovery, DTS
eventually began marketing its line of gift products under the mark
“Voila.” The older “Renaissance” gift bags, however, remained
available for purchase in some of DTS’s stores as late as July
2005.
When RGC discovered DTS’s use of the mark in 2003, it sent a
letter to Betta Products, Inc., the company it believed to have
3
produced the bags. Betta Products directed RGC to DTS, and in
December 2003, counsel for RGC sent a letter to DTS seeking to
discuss the issue. When this and two subsequent letters produced
no response, RGC filed suit on March 29, 2005, alleging (I)
infringement of a federally registered trademark under 15 U.S.C. §
1114(1); (ii) trademark infringement and a false designation of
origin under 15 U.S.C. § 1125(a); and (iii) common law infringement
and unfair competition under Virginia state law. On December 19,
2005, the district court granted summary judgment in favor of DTS,
the parties having previously agreed to a bench trial.
RGC filed a timely notice of appeal with regard to two issues:
(1) the district court’s determination that no likelihood of
confusion existed between RGC’s and DTS’s marks; and (2) the
district court’s decision to strike portions of the complaint and
to preclude certain discovery pursuant to Federal Rule of Evidence
408. We have jurisdiction pursuant to 15 U.S.C. § 1121(a) and 28
U.S.C. § 1291.
II.
We review de novo the legal determinations made by a district
court in granting summary judgment. See Lone Star Steakhouse &
Saloon v. Alpha of Va., Inc., 43 F.3d 922, 928 (4th Cir. 1995). A
district court’s likelihood of confusion inquiry, however,
necessarily involves factual determinations. Int’l Bancorp, LLC v.
4
Societe Des Bains De Mer Et Du Cercle Des Etrangers a Monaco, 329
F.3d 359, 362 (4th Cir. 2003). Where, as here, the court is to be
the ultimate finder of fact, the entire record is before the court
at the summary judgment stage,1 and only the inferences to be drawn
from the underlying facts – as opposed to the facts, themselves –
are in dispute, a court may properly proceed to final judgment.
See id.
It makes little sense to forbid the judge from drawing
inferences from the evidence submitted on summary
judgment when that same judge will act as the trier of
fact, unless those inferences involve issues of witness
credibility or disputed material facts. If a trial on
the merits will not enhance the court’s ability to draw
inferences and conclusions, then a district judge
properly should draw his inferences without resort to the
expense of trial.
Id. at 362 (quoting Matter of Placid Oil Co., 932 F.2d 394, 398
(5th Cir. 1991)(internal quotations and citations omitted)). In
such circumstances, we review the district court’s findings for
clear error. Int’l Bancorp, 329 F.3d at 362; see also Petro
Stopping Centers, L.P. v. James River Petroleum, Inc., 130 F.3d 88,
91-92 (4th Cir. 1997)(“This circuit reviews district court
determinations regarding likelihood of confusion under a clearly
erroneous standard.”). Under this standard, the district court’s
findings may not be disturbed unless there is no evidence in the
1
“The Court: ‘All right. I don’t need anything more. After
that, the case is ready for disposition, isn’t it, Mr. Hanes
[Attorney for Dollar Tree], Mr. Culver [Attorney for RGC].’
Attorney for Dollar Tree: ‘Yes.’ Attorney for RGC: ‘Yes.’” (J.A.
at 355.)
5
record to support them, or when, having reviewed the record
ourselves, “we are left with a definite and firm conviction that a
mistake has been committed.” Petro Stopping, 130 F.3d at 92. In
no case, however, will this standard permit a district court’s
decision to stand where the court incorrectly applied the law.
Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1526 (4th Cir. 1984).
A.
Actions for trademark infringement require proof of two
elements: (1) that the plaintiff has a valid mark, and (2) that the
similarity of the defendant’s mark to the plaintiff’s creates a
“likelihood of confusion” in the marketplace. See Perini Corp. v.
Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir. 1990); 15 U.S.C.
§ 1114(1). Because the parties do not dispute that RGC’s
“Renaissance” mark is incontestible pursuant to 15 U.S.C. §§ 1065
and 1115(b), the district court properly limited its inquiry to the
“likelihood of confusion” element.2
Courts consider seven factors in evaluating whether a
competing mark creates a likelihood of confusion:
1) The strength or distinctiveness of the mark;
2) The similarity of the two marks;
2
Because the “likelihood of confusion” test governs not only
suits under the Lanham Act, but also Virginia common law actions
for infringement and unfair competition, we analyze appellant’s
causes of action simultaneously. Lamparello v. Falwell, 420 F.3d
309, 312 n.1 (4th Cir. 2005).
6
3) The similarity of the goods or services the marks
identify;
4) The similarity of the facilities the two parties
use in their businesses;
5) The similarity of the advertising used by the two
parties;
6) The defendant’s intent;
7) Actual confusion.
Pizzeria Uno, 747 F.2d at 1527. These factors will not be of equal
relevance in every case. Lone Star, 43 F.3d at 933. Indeed,
“[c]ertain factors may not be germane to every situation,” and
certain factors other than those listed above may be relevant to
the “likelihood of confusion” analysis in certain cases. Sara Lee
Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463 (4th Cir. 1996). RGC
contends that the district court misapplied these factors in
certain respects to such an extent that it committed legal error.
We will consider each element in turn.
1.
RGC contends that the district court improperly weighed the
strength of the “Renaissance” mark, and that it placed too much
emphasis on the “strength of the mark” element in analyzing the
likelihood of confusion. The district court began its evaluation
of the mark’s strength by noting our statement in Pizzeria Uno that
the “first and paramount factor under this set of factors is the
distinctiveness or strength of the two marks.” Pizzeria Uno, 747
F.2d at 1527. It then proceeded to apply the two-factor test set
forth in CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263
(4th Cir. 2006). Under that test, the court considers (1) the
7
conceptual strength of the mark, and (2) the commercial strength of
the mark. Id. at 269.
A mark’s conceptual strength is determined in part by its
placement into one of four categories of distinctiveness: (1)
generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. Pizzeria Uno, 747 F.2d at 1527. Suggestive and
arbitrary marks are deemed strong and presumptively valid, whereas
generic and descriptive marks are deemed weak, and require proof of
secondary meaning within the market in order to receive trademark
protection. Id. After considerable analysis, the district court
concluded that RGC’s “Renaissance” mark is suggestive, because it
“does not describe any particular characteristic of RGC’s greeting
cards, but “requires some imagination to connect it with the
goods.’” (J.A. at 353 (quoting Retail Servs., Inc. v. Freebies
Publ’g, 364 F.3d 535, 539 (4th Cir. 2004).)
This categorization does not end a court’s evaluation of a
mark’s conceptual strength, however. A court must also consider
other registrations of the mark, because “the strength of a
commonly-used mark decreases as the number of third-party
registrations increases. Pizzeria Uno, 747 F.2d at 1531. The
district court therefore considered evidence of 465 federal and 203
state trademark registrations or pending applications, all for
marks using the word “Renaissance.” (J.A. at 358.) It then
specifically considered evidence that twenty-three of these
8
registrations, including RGC’s, are for marks that fall in the same
class of paper products as RGC’s, PTO International Class 16.3
(Id. at 358, 344.) As a result, the court concluded that this
widespread usage of the word “Renaissance” in other trademarks
significantly diminished any distinctiveness inherent in RGC’s
marks.
Citing CareFirst, RGC asserts that the district court erred in
considering evidence that “Renaissance” is used in products outside
RGC’s class of paper goods. CareFirst does not support such an
argument. In that case, we explained that “the frequency of prior
use of [a mark’s text] in other marks, particularly in the same
field of merchandise or service,’ illustrates the mark’s lack of
conceptual strength.” CareFirst, 434 F.3d at 270 (quoting Pizzeria
Uno, 747 F.2d at 1530-31). Because in that case there was ample
use of “CareFirst” and similar marks in the health care industry
alone, it was unnecessary to consider use of the mark in unrelated
3
Under the regulations of the Patent and Trademark Office,
Class 16 includes the following:
Paper, cardboard and goods made from these materials, not
included in other classes; printed matter; bookbinding
material; photographs; stationery; adhesives for
stationery or household purposes; artists’ materials;
paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except
apparatus); plastic materials for packaging (not included
in other classes); playing cards; printers’ type;
printing blocks.
International Schedule of Classes of Goods and Services, 37 C.F.R.
§ 6.1(16).
9
industries. As the above passage makes clear, however, evidence of
third-party use of a mark in unrelated markets – although not as
persuasive as use within the same product class – indicates a
mark’s lack of conceptual strength.4
The second step in the “strength of the mark” analysis is to
consider the mark’s commercial strength, a concept similar to the
“secondary meaning” inquiry considered in evaluating a mark’s
validity. CareFirst, 434 F.3d at 269 n.3. While third-party use
of the mark is relevant at this stage, as well, the court also
considers a number of other factors, such as advertising
expenditures, consumer awareness of the source of the mark, market
share, and unsolicited media coverage. See Perini, 915 F.2d at
125. The district court faithfully considered these and other
factors, noting RGC’s market share of less than one percent of the
greeting cards market, its average annual advertising expenditures
of less than $360,000.00, and the lack of both independent media
coverage of the business and survey evidence indicating an
association between RGC’s mark and its product. (J.A. at 361.)
Because of the ample evidence supporting the district court’s
decision on this point, we find no error in the court’s conclusion
4
RGC further argues that the district court ought not to have
discounted its attempts to police the use of its mark by third-
parties. The district court’s opinion makes evident that it gave
due consideration to RGC’s efforts in this regard, but was
unimpressed with the “mixed results” RGC achieved. (J.A. at 359
n.15.)
10
that RGC possesses a weak mark “such that its ability to identify
the source of products does not extend beyond the greeting card
market.” (Id. at 361-62.) See Arrow Fastener Co., Inc. v. Stanley
Works, 59 F.3d 384, 394 (2d Cir. 1995).5
2.
The second factor to be considered in the “likelihood of
confusion” analysis is the similarity of the marks in question. In
order for this factor to weigh in favor of the plaintiff, the marks
need not be identical; rather, they must only be “sufficiently
similar in appearance, with greater weight given to the dominant or
salient portions of the marks.” Lone Star, 43 F.3d at 936. For
purposes of summary judgment, the district court assumed the marks
to be similar in appearance. This factor thus weighs in favor of
a finding of likelihood of confusion.
5
On November 30, 2006, the day this matter was argued, this
court issued its opinion in another trademark dispute, Synergistic
Int’l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006). Although RGC
argues that Synergistic supports its position with regard to
consideration of third-party registrations of a mark in unrelated
industries, we must conclude otherwise. In Synergistic, we
concluded that the appellant’s mark was conceptually strong based
in part on the fact that the mark’s dominant word, although
commonly used in other industries, was not commonly used in the
appellant’s industry or related industries. Id. at 174. By
contrast, “Renaissance” is used not only by hundreds of businesses
in industries unrelated to RGC’s, but also by numerous businesses
within RGC’s PTO class of products. Furthermore, the appellant’s
mark in Synergistic was found to be commercially strong. As
described above, that is not the case here.
11
3.
Next, the court considers the similarity of the goods or
services identified by the marks. With regard to this element, the
products in question need not be identical or in direct competition
with each other. Because confusion may arise even where products
are merely “related,” the court is to consider “whether the public
is likely to attribute the products and services to a single
source.” CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 679
(4th Cir. 2001). An important function of this “related goods”
concept is to protect trademark owners’ ability to expand into
associated markets in the future. Id. at 680-81.
After considering the manner in which greeting cards and gift
products are marketed in the industry, and the fact that RGC at one
time marketed its own line of gift products, the district court
concluded that the parties’ products constituted related goods.
The court then properly observed that, although the fact that goods
are related weighs in favor of a finding of infringement, the
similarity of the goods, alone, is not dispositive as to the
likelihood of confusion. (J.A. at 364-65 (citing Arrow
Distilleries, Inc. v. Globe Brewing Co., 117 F.2d 347, 351 (4th
Cir. 1941); Petro Stopping, 130 F.3d at 95; 4 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 24:62 (4th ed.
2006).)
12
4.
The fourth factor to be considered in the “likelihood of
confusion” analysis is the similarity of the facilities used by the
parties in their businesses. As McCarthy explains, the court is to
consider the class of consumers purchasing the products, and the
context in which they make their purchases. McCarthy, supra, §
24:51. Although noting that DTS’s products were most likely to be
purchased by “value-conscious consumers,” the district court
concluded that the placement of the products within the stores and
their general retail availability were sufficient to tilt this
factor “very modestly” in favor of a finding of infringement.
(J.A. at 365-66.) We see no error in this determination.
5.
We next consider the similarity of the advertising employed by
the parties. It is undisputed that DTS does not advertise its
greeting cards line in any way. Moreover, although RGC does engage
in some limited advertising, its efforts are targeted almost
entirely at its wholesale customer base. RGC contends that the
district court erred in interpreting this factor as militating
against infringement, rather than assigning it neutral effect.
(Brief of Appellant at 54 (citing Carnival Brand Seafood Co. v.
Carnival Brands, Inc., 187 F.3d 1307, 1314 (11th Cir. 1999).) The
district court’s holding on this point was supported by sound
authority, however, and we find no error. See IDV N. Am., Inc. v.
13
S&M Brands, Inc., 26 F. Supp. 2d 815, 828-29 (E.D. Va. 1998)(citing
Pizzeria Uno, 747 F.2d at 1527; Petro Stopping, 130 F.3d at 95).
6.
The sixth factor to be considered is the defendant’s intent in
adopting its mark.6 As we explained in Pizzeria Uno, “[i]f there
is intent to confuse the buying public, this is strong evidence
establishing likelihood of confusion, since one intending to profit
from another’s reputation generally attempts to make his signs,
advertisements, etc., to resemble the other’s so as deliberately to
induce confusion.” Pizzeria Uno, 747 F.2d at 1535.
RGC contends that DTS exhibited bad faith by failing to
conduct a trademark search or to obtain advice of counsel before
adopting the “Renaissance” mark for use on its gift products, and
by continuing to use the mark after being contacted by RGC. RGC’s
first argument necessarily fails, because, as the district court
reasoned, “[a]t most, the failure to conduct a search is probative
of Dollar Tree’s carelessness, which even if true, has little
bearing on the likelihood that its allegedly infringing mark will
confuse the public.” (J.A. at 367 (citing McCarthy, supra, §
23:109).) Moreover, DTS was justified in continuing its use of the
“Renaissance” mark if, as the district court concluded, DTS
6
To the extent appellant argues that the district court’s
decision to strike portions of the complaint and to preclude
certain discovery are relevant to this factor, the court notes that
the district court’s ruling on those points is affirmed in Section
III below.
14
believed RGC’s mark to be too weak to prevent DTS’s use of the mark
on its gift products. See McCarthy, supra, § 23:120. Accordingly,
the district court committed no error in concluding that the intent
factor militated against a finding of infringement.
7.
Finally, the “likelihood of confusion” analysis requires
consideration of instances of actual confusion among consumers.
RGC produced evidence of four instances of confusion, one involving
a shop owner, two involving shop managers, and one involving an
independent sales representative. The district court found that
this small number of cases, none of which demonstrated confusion
among the actual consumer public, weighed against RGC’s position,
rather than in favor. In so holding, the district court took into
account the large volume of sales from which RGC’s instances of
confusion were taken, as well as RGC’s unsuccessful efforts to
uncover additional examples of actual confusion.
The court also appropriately considered our statement in Petro
Stopping that, “[a]t worst, [a] company’s failure to uncover more
than a few instances of actual confusion creates a ‘presumption
against likelihood of confusion in the future.’” Petro Stopping,
130 F.3d at 95 (quoting Amstar Corp. v. Domino’s Pizza, Inc., 615
F.2d 252, 263 (5th Cir. 1980)). In Petro Stopping, we determined
that the appellant’s evidence of actual confusion, consisting of
only a few instances out of more than $2 billion in sales, was “at
15
best de minimis.” Petro Stopping, 130 F.3d at 95. We see no error
in the district court reaching the same conclusion in the instant
case.
B.
Having determined that the district court committed no clear
error in assessing each of the Pizzeria Uno factors, we turn to
RGC’s contention that the court erred in weighing these factors
against each other. Specifically, appellant argues that the court
placed excessive significance on the strength of the mark. This
argument is similarly unavailing. As previously noted, these
factors will be of varying relevance in every case. Lone Star, 43
F.3d at 933. Nonetheless, where only three of the seven Pizzeria
Uno factors weighed in favor of a finding of likelihood of
confusion, we are unable to conclude that the district court
committed clear error in finding no infringement. Ample evidence
supported the court’s decision, and we will not disturb it.
III.
The second issue RGC raises on appeal is the district court’s
exclusion, pursuant to Federal Rule of Evidence 408, of evidence
relating the parties’ settlement negotiations.7 Specifically, the
7
After a review of the record, we believe RGC made clear to
the district court that it wished to introduce the disputed
evidence to show DTS’s intent for purposes of the “likelihood of
16
district court ordered such content stricken from two paragraphs of
RGC’s original complaint, and subsequently upheld a protective
order entered by the magistrate judge precluding witness testimony
on the issue. We review both decisions for an abuse of discretion.
See Seay v. TVA, 339 F.3d 454, 480 (6th Cir. 2003)(“We review the
decision to grant or deny a motion to strike for an abuse of
discretion, and decisions that are reasonable, that is, not
arbitrary, will not be overturned.”); Neighbors of Cuddy Mountain
v. Alexander, 303 F.3d 1059, 1070 (9th Cir. 2002)(reviewing ruling
on motion to strike under Fed. R. Civ. P. 12(f) for abuse of
discretion); Stanbury Law Firm, P.A. v. IRS, 221 F.3d 1059, 1063
(8th Cir. 2000)(same); M & M Med. Supplies & Serv., Inc. v.
Pleasant Valley Hosp., Inc., 981 F.2d 160, 163 (4th Cir.
1992)(protective order entered under Fed. R. Civ. P. 26(c)
reviewable for abuse of discretion).
Paragraphs 16 and 17 of RGC’s original complaint detailed
certain communications between the parties’ attorneys made during
settlement negotiations. (J.A. at 14.) In its answer to the
complaint, DTS moved to strike these paragraphs pursuant to Federal
Rule of Evidence 408, which provides as follows:
Evidence of (1) furnishing or offering or promising to
furnish, or (2) accepting or offering or promising to
accept, a valuable consideration in compromising or
confusion” analysis. We are thus unpersuaded by DTS’s argument
that RGC waived this issue below. (See Brief of Appellee at 32-
34.)
17
attempting to compromise a claim which was disputed as to
either validity or amount, is not admissible to prove
liability for or invalidity of the claim or its amount.
Evidence of conduct or statements made in compromise
negotiations is likewise not admissible. This rule does
not require the exclusion of any evidence otherwise
discoverable merely because it is presented in the course
of compromise negotiations. This rule also does not
require exclusion when the evidence is offered for
another purpose, such as proving bias or prejudice of a
witness, negativing a contention of undue delay, or
proving an effort to obstruct a criminal investigation or
prosecution.
Fed. R. Evid. 408. RGC contended that the passages, which included
statements by counsel for DTS as to how many units of the
“Renaissance” gift products remained in stock, were admissible as
an exception to Rule 408 to show bad faith or willfulness.
The court took up the issue at a motions hearing on June 3,
2005, discussing the matter at length. The transcript of that
hearing makes evident that the court was aware of the law governing
motions to strike under Rule 12(f), and that such motions are to be
granted infrequently. (J.A. at 92.) See Stanbury, 221 F.3d at
1063. It is equally clear that the court felt RGC’s proffered
exceptions to Rule 408 were impermissible under the rule, and that
it did not consider the disputed information to be probative. As
a result, the district court granted the motion to strike in part
and directed RGC to file an amended complaint. In doing so,
however, the court narrowly tailored the portions of Paragraphs 16
and 17 to be excluded, and assured counsel for RGC that it would
18
reconsider the matter if an exception to Rule 408 were later
revealed.
RGC made its argument on the basis of rather weak authority.
It was able to cite no cases from this circuit in support of its
position. Furthermore, one of its chief cases, Itron, Inc. v.
Benghiat, No. 99-501, 2003 U.S. Dist. LEXIS 15039 (D. Minn. Aug.
29, 2003), is an unpublished district court opinion from the
District of Minnesota, and is therefore of questionable
precedential value. Another case on which it relies actually
militates against admission of the disputed paragraphs. Stern’s
Miracle-Gro Prods., Inc. v. Shark Prods., Inc., 823 F. Supp. 1077
(S.D.N.Y. 1993). In Stern’s, the court considered statements made
during settlement negotiations for purposes of showing the
defendant’s intent. The Stern’s court only considered statements
made by the plaintiff, however, and only to the extent they proved
notice of the plaintiff’s objection to the defendant’s mark. Id.
at 1088 n.6 (adding that statements made during settlement
negotiations are clearly inadmissible under Rule 408 where they may
be considered admissions as to the merits of the action).
Similarly, the district court here informed RGC that it would
consider statements made by RGC to DTS. (J.A. at 94-96.) Because
the district court’s ruling on this point was reasonable and not
overreaching, we find no abuse of discretion.
19
The protective order arose from a notice of deposition issued
by RGC that included a demand for the production of a witness to
testify to “all factual representations made to plaintiff’s counsel
during negotiations with defendant’s counsel in 2004 involving the
mark RENAISSANCE . . . .” (J.A. at 189.) Upon motion by DTS, the
magistrate judge to whom the motion was referred concluded that,
although evidence of settlement negotiations may be discoverable
under some circumstances, RGC had not shown why the settlement
negotiations were relevant to its “claims or defenses.” (J.A. at
184.) Moreover, the magistrate judge observed that RGC did not say
what fact it wished to discover through inquiry about the
negotiations. (Id.) When RGC objected to the magistrate judge’s
order, the district court considered the issue at a subsequent
motions hearing. Concluding, as it had at the prior hearing on
DTS’s motion to strike, that the disputed information was not
probative and did not meet an exception to Rule 408, the district
court overruled RGC’s objections to the order. The district
court’s decision in this regard was supported by sound policy
considerations. See Fiberglass Insulators, Inc. v. Dupuy, 856 F.2d
652, 654 (4th Cir. 1988)(“The public policy of favoring and
encouraging settlement makes necessary the inadmissibility of
settlement negotiations in order to foster frank discussions.”).
Accordingly, we find no abuse of discretion.
20
IV.
For the foregoing reasons, we affirm the district court’s
rulings with regard to Federal Rule of Evidence 408, and its grant
of summary judgment to Dollar Tree Stores.
AFFIRMED
21