Uncommon, LLC v. Spigen, Inc. (305 F. Supp. 3d 825, 2018)

John Robert Blakey, United States District Judge

Plaintiff Uncommon, LLC sued Defendant Spigen, Inc. for using the trademarked term "Capsule" in the names of its cell phone cases, the same product that Plaintiff sells under the Capsule mark. Plaintiff brings claims for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and unfair competition under Illinois common law. [1]. Defendant asserts counterclaims seeking cancellation of Plaintiff's Capsule mark for genericness and descriptiveness. [47]. Before this Court are Plaintiff's motion to strike Defendant's expert report [104]; Defendant's motion to strike Plaintiff's expert report [107]; Plaintiff's motion to strike an affidavit from Defendant's nontestifying expert [177]; Defendant's motion to withdraw answers to Plaintiff's requests for admission [180]; and the parties' cross-motions for summary judgment [123, 147].

As explained below, this Court denies the parties' motions to strike; partially grants and partially denies Defendant's motion to withdraw answers; and partially grants and partially denies the parties' motions for summary judgment.

I. Background

A. Disputed Facts

The facts in this section come primarily from Defendant's Local Rule 56.1 statement of facts [124] and Plaintiff's Local Rule 56.1 statement of facts [149].

The parties disagree over many of the circumstances of this case and each filed extensive responses to the other's statement of facts, [152, 157], and statement of additional facts, [169, 171]. Simply denying a fact that has evidentiary support "does not transform it into a disputed issue of fact sufficient to survive a motion for summary judgment." Roberts v. Advocate Health Care , 119 F.Supp.3d 852, 854 (N.D. Ill. 2015). Denials "must cite specific evidentiary materials justifying the denial" or be disregarded. Malec v. Sanford , 191 F.R.D. 581, 584 (N.D. Ill. 2000). Further, responses to the opposing party's statement of facts are not the place for "purely argumentative details," id. , or legal conclusions, Cady v. Sheahan , 467 F.3d 1057, 1060 (7th Cir. 2006). District courts may disregard any improper denials. See id. ; Ammons v. Aramark Unif. Servs. , 368 F.3d 809, 817 (7th Cir. 2004).

Plaintiff argues in its reply brief on its motion for summary judgment that many of Defendant's responses to Plaintiff's statement of facts should be disregarded. [168] at 7. But Plaintiff waived this argument by failing to raise it before the reply brief. See, e.g. , Padula v. Leimbach , 656 F.3d 595, 605 (7th Cir. 2011). Even so, this Court retains discretion to enforce Local Rule 56.1. See Ammons , 368 F.3d at 817. To the extent that Defendant's responses fail to cite specific evidence in the record, this Court will disregard them and deem Plaintiff's statement of fact to be admitted. See Malec , 191 F.R.D. at 583-84.

The majority of responses that Plaintiff challenges sufficiently conform to Local Rule 56.1 to remain in the record. In most responses Defendant admits the statement in part and disputes the remainder either by citing to the record or re-citing the portion of the record relied upon by Plaintiff. In some responses, Defendant limited its reply because it objected to the form of Plaintiff's statement as containing improper legal argument or as unsupported by the evidence. This Court considers this to be the case with respect to Defendant's responses to paragraphs 1-3, 5, 7-10, 15, 16-18, 20, 21, 26, 29-37, and 39-42, and declines to strike those responses. In a few instances, however, Defendant failed to cite to any record evidence: this is true of its responses to paragraphs 6, 14, 23, 25, 28, and 38 of Plaintiff's statement of facts. This Court disregards those denials and considers Plaintiff's corresponding statements admitted. Malec , 191 F.R.D. at 583-84.

B. This Case

The parties make and sell cell phone cases. PSOF ¶¶ 5, 6. Plaintiff sells a number of case models that consumers can customize with their own images, as well as "ready-made" varieties available with mass-produced designs or licensed artwork. DSOF ¶ 42; R. DSOF ¶ 40.

In September 2012, Plaintiff applied to register the name "Capsule" as a trademark for one of its lines of cases. PSOF ¶ 4. The Capsule mark issued in May 2013 as Trademark Registration No. 4,338,254, for "cases specifically adapted for protection and storage of consumer electronics, namely, cellular phones and mobile media players." Id. ; [149-3]. The mark's registration lists its "first use" and "in commerce" dates as December 16, 2009. [149-3]. Its registration date is May 21, 2013. Id. Plaintiff sold its first Capsule case in July 2010, and has continuously sold cell phone cases with the mark since that date. DSOF ¶ 32; PSOF ¶ 5.

When Plaintiff registered its mark, it appears that another company, Vatra, Inc., had registered "Capsule" as a trademark for "bags and cases" for "holding or carrying" cell phones, cameras, glasses, and other accessories. [124-8] at 6. Vatra, however, never followed up on its initial registration by providing a certificate of "continued use or excusable non-use," which must be submitted to the U.S. Patent and Trademark Office (USPTO) between the fifth and sixth year after registration to maintain a valid trademark. See id. at 5. In any event, the USPTO cancelled Vatra's Capsule mark in February 2015 for lack of that certificate, id. at 3, and it did not flag Vatra's mark as a potential source of confusion when Plaintiff applied for its Capsule mark, DSOF ¶ 13; [149-3].

There are, however, additional third-party suppliers that sell cases whose names contain the term "Capsule," including Accez, iPhone TPU, Jammylizard, Catalyst, and others. See [124-10]. Plaintiff's own exhibit of online search results for "capsule," submitted with its Complaint, shows that case producers (other than the parties here) use the term. [1-6]; [124-9] at 8. Such third-party use of Capsule, even in relation to cell phone cases, did not affect Plaintiff's registration of its mark with the USPTO.

Around 2010, Defendant also began selling cell phone cases with the name "Capsule." PSOF ¶ 6. These cases sometimes, but not always, used capsule with other modifiers; for example, Defendant's products include "Air Capsule," "Capsule Solid," and "Capsule Capella." Id. ¶¶ 6, 9; DSOF ¶¶ 53, 54. By November 2014, Defendant had submitted registration applications to the USPTO to trademark these "Capsule family" product names. PSOF ¶¶ 6, 12. At least one of these marks-Capsule Capella-was approved and registered with the USPTO in May 2017. [124-4] at 4; CAPSULE CAPELLA, Registration No. 5,297,564. Although the Capsule Capella mark was originally rejected by the USPTO for likelihood of confusion, the objection was withdrawn upon review. [124-4] at 6. The registration for Capsule Capella includes the disclaimer that Defendant makes no claim to the "exclusive right to use 'Capsule' apart from" its appearance in the mark as shown. CAPSULE CAPELLA, Registration No. 5,297,564. Defendant's "Rugged Capsule" mark was also initially rejected, both for likelihood of confusion and because the USPTO determined that the mark was "merely descriptive" of an attribute of the Defendant's case. [124-6] at 16-17. Defendant still sells its "Capsule family" cases, on its website and through online retailers such as Amazon and eBay. PSOF ¶ 11.

Defendant also claims that it sold a "Capsule" cell phone accessory in June 2009, predating Plaintiff's first use of the Capsule mark. See R. DSOF ¶ 22; [124-11]. This product was the "SGP Metal Advance Light," which came in a variety of styles, including "Capsule Nickel" and "Capsule Gold." See PSOF ¶ 25; [124-11]. The SGP Metal Advance, however, was a cell phone "skin," a decorative sticker for the front of a phone. PSOF ¶¶ 26-28; [150-5]. It was not a cell phone case. In any event, this use of "capsule" merely described one of the designs in which the sticker was available-specifically, the option to have the sticker in a gold or nickel color with a pattern of repeating medicine capsules. See [124-11, 149-26]. Thus, "capsule" as Defendant used it in 2009 described a decorative pattern by naming the objects in the pattern, and was not a product identifier. It has little relevance here.

Thus, the disputed products consist of Plaintiff's Capsule cell phone cases and Defendant's "Capsule family" cases. Both parties sell their Capsule cases online, through their websites and online retailers. PSOF ¶ 14; [1-6]; [124-28]; [124-34]. Both have a national market. PSOF ¶¶ 13, 14. Both parties use the trademarked term alone and in conjunction with the word "case." [149-11]; [149-19]; [124-12]; [124-28]; R. DSOF ¶ 20; DSAF ¶ 4. Defendant, as noted, also uses the term with other descriptors, and has trademarked at least one of the resulting phrases. See [124-4]; DSAF ¶ 6. The Capsule marks for which Defendant has sought or is seeking registration have first-use dates no earlier than February 2015. DSAF ¶ 6. Defendant briefly ceased selling its Capsule family cases during the pendency of this litigation but has resumed its sales. PSOF ¶ 38.

Although both parties currently sell Capsule cases, Plaintiff does not sell its Capsule models for iPhones after the 5/5s generation, with the exception of the iPhone SE. PSOF ¶ 5; R. DSOF ¶¶ 43, 44. The trademarked Capsule models are limited to cases for the iPhone 5/5s, iPhone SE, iPhone 4/4s, and the fourth generation iPod Touch. R. DSOF ¶ 43. Plaintiff's cases for these goods can be customized by consumers or bought with ready-made prints. Id. Plaintiff did not produce Capsule cases for later generations because it was more difficult to print customized designs-generally supplied by consumers-on the cases that fit those generations. R. DSOF ¶ 44. Defendant's challenged cases, by contrast, are not customizable, and appear to be sold primarily in solid colors. DSOF ¶ 50; see also [149-19] (Capsule products on Defendant's website). Also, Defendant sells Capsule family cases for phones other than the iPhone, such as the Samsung Galaxy, see [149-19], while Plaintiff's Capsule models only fit iPhones, see PSOF ¶ 5; R. DSOF ¶¶ 43, 44; [124-2, 124-12, 124-23]. Plaintiff admits that it has no evidence of actual confusion between its Capsule cases and Defendant's cases. R. DSOF ¶ 52.

In December 2015, Plaintiff sued Defendant for federal trademark infringement under 15 U.S.C. § 1114(a) ; unfair competition and false designation of origin under 15 U.S.C. § 1125(a) ; and Illinois common law unfair competition. [1]. Defendant asserted a counterclaim and numerous affirmative defenses. [31, 47]. Defendant later voluntarily dismissed Counts I and VI of its counterclaim, and this Court dismissed Counts II and V. [54, 61]. Thus, Defendant's remaining counterclaims are Counts III and IV, seeking cancellation of Plaintiff's mark for genericness and descriptiveness, respectively. [47].

The parties engaged in extensive discovery in the course of this litigation, and each consulted experts. In December 2016, Defendant disclosed its experts to Plaintiff. [183-2, 183-5]. It listed Doug Bania as an expert who "may be called to testify regarding the lack of consumer confusion" as to the parties' marks; whether Plaintiff's mark "is descriptive and has acquired distinctiveness"; and damages calculations. [183-5]. Defendant noted that Bania would provide a formal report. Id. Defendant's designation of experts also listed Kirk Martensen as a "non-testifying expert who will conduct a consumer survey" to provide evidence of consumer perspectives on the Capsule mark and the parties. Id. Defendant noted Martensen's association with Goldmarks-his survey firm-and said that although no "formal report" was forthcoming, Martensen might "be called to testify on the methodology of the survey if needed." Id. Upon Plaintiff's request, Defendant provided a two-page summary of Martensen's credentials that same month. [157-18, 157-20]. Defendant sent Plaintiff a copy of the survey report, including information about its methodology and findings, with Defendant's expert disclosures. See [124-19] at 3-5, 15-24; [180-1] ¶ 2. Although Plaintiff never sought to depose Martensen, it asked Bania about Martensen and his methodology in a January 2017 deposition. [180-1] ¶ 9; [180-6]. In response, Bania admitted that he is not a survey expert but said that he accepted the reliability of the survey report, in part because it aligned with his own research. See [183-6] at 2.

In January 2017, this Court extended the initial expert discovery cut-off from February 2017 to March 14, 2017. [102]. On March 13, after Plaintiff's expert rebuttal report had been submitted and a day before the close of expert discovery, Bania submitted a "Supplemental Expert Report." [104-3]. Ultimately, this Court again extended expert discovery until June 1, 2017. [114].

The parties cross-filed for summary judgment in June 2017. [123, 147]. Defendant included Bania's expert report and Martensen's consumer survey as exhibits in support of its motion. [124-9, 124-19]. In response, Plaintiff challenged the admissibility of the consumer survey. See R. DSOF ¶ 28; [158] at 8. As a result, Defendant submitted a sworn declaration from Martensen in support of the consumer survey with its responses to Plaintiff's statement of additional facts. [171-8]. The affidavit described the work that Martensen and his firm Goldmarks conducted to produce the survey, and attested to the truth and validity of the consumer survey report previously disclosed to Plaintiff and submitted with Defendant's motion for summary judgment. Id.

II. Legal Standard

Under Federal Rule of Civil Procedure 12(f), courts may strike a party's "insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Accordingly, courts grant motions to strike only in rare circumstances; they are generally disfavored for their dilatory effect and frequent use as a vehicle to make arguments beyond the page limits of the merits briefs. See Custom Vehicles, Inc. v. Forest River, Inc. , 464 F.3d 725, 726-27 (7th Cir. 2006). A motion to strike should succeed when it removes "unnecessary clutter from the case," and thus expedites rather than delays resolution on the merits. Heller Fin., Inc. v. Midwhey Powder Co., Inc. , 883 F.2d 1286, 1294 (7th Cir. 1989).

A motion for summary judgment can be granted only when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A genuine dispute of material fact exists where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party seeking summary judgment has the burden of establishing that there is no genuine dispute as to any material fact. See Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The motion will be granted only if, viewing the record in the light most favorable to the nonmoving party, no jury could reasonably find in the nonmoving party's favor. McDonald v. Hardy , 821 F.3d 882, 888 (7th Cir. 2016). "The mere existence of a factual dispute," however, does not bar summary judgment unless "the disputed fact is outcome determinative under governing law." Howland v. Kilquist , 833 F.2d 639, 642 (7th Cir. 1987). Summary judgment is also appropriate if the nonmoving party fails to establish an essential element for which it bears the burden of proof at trial. Massey v. Johnson , 457 F.3d 711, 716 (7th Cir. 2006).

III. Analysis

A. Evidentiary Disputes

Both parties bring numerous evidentiary challenges. These include Plaintiff's motion to strike Defendant's expert report [104]; Defendant's motion to strike Plaintiff's expert report [107]; Plaintiff's motion to strike Kirk Martensen's affidavit [177]; and Defendant's motion to withdraw four answers to Plaintiff's requests for admission [180]. Plaintiff also includes several related evidentiary arguments in its summary judgment briefing (and to the extent those arguments overlap with the listed motions, this Court addresses them with the related motion). This Court also addresses two of Plaintiff's arguments separately: Plaintiff's objections to Defendant's consumer survey, [158] at 8, and to the affidavits submitted by defense counsel and one of Defendant's employees, id. at 12-14.

Because parties "may rely only on admissible evidence" at summary judgment, Lewis v. CITGO Petroleum Corp. , 561 F.3d 698, 704 (7th Cir. 2009), this Court considers the evidentiary disputes before turning to the merits of the case.

1. Motions to Strike the Expert Reports

Both parties move to strike their opponent's expert report and exclude the expert's opinions. Plaintiff moves to strike Doug Bania's supplemental expert report as untimely and improper, and to exclude his full report and testimony because he does not address issues in dispute and because he is not a qualified expert. [104] at 4, 6. Defendant seeks to exclude Chad Porter's report and opinions because they are unreliable and conclusory. [107] at 3, 6, 8. Defendant's motion is denied as moot, as explained below. This Court considers Plaintiff's motion next.

The admissibility of expert testimony is governed by Federal Rule of Evidence (FRE) 702 and the Supreme Court's decision in Daubert v. Merrell Dow Pharm., Inc. , 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Expert testimony is admissible under FRE 702 if technical or specialized knowledge "will assist the trier of fact to understand the evidence or to determine a fact in issue." Essentially, district courts act as gatekeepers and must ensure that expert testimony "is not only relevant, but reliable." Kumho Tire Co. v. Carmichael , 526 U.S. 137, 147, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999) (internal quotation marks omitted). Relevant factors in this determination include testing, peer review, error rates, and acceptance by the relevant expert community. See Daubert , 509 U.S. at 593-94, 113 S.Ct. 2786. The reliability inquiry is flexible, however, and not all of these factors will apply in every case. See Kumho , 526 U.S. at 141, 119 S.Ct. 1167.

In assessing the admissibility of expert opinions, courts do not focus on "the ultimate correctness of the expert's conclusions," Schultz v. Akzo Nobel Paints, LLC , 721 F.3d 426, 431 (7th Cir. 2013), but "solely on principles and methodology," Daubert , 509 U.S. at 595, 113 S.Ct. 2786. The "soundness of the factual underpinnings" and "correctness of the expert's conclusions" may affect any ultimate determination on the merits, but do not govern admissibility. See Smith v. Ford Motor Co. , 215 F.3d 713, 718-19 (7th Cir. 2000). The expert must explain his or her methodology and cannot "simply assert a bottom line." Metavante Corp. v. Emigrant Sav. Bank , 619 F.3d 748, 761 (7th Cir. 2010). Finally, the expert "may be qualified by knowledge, skill, experience, training, or education." See Smith , 215 F.3d at 718 (internal quotation marks omitted). District courts have "great latitude in determining not only how to measure the reliability of the proposed expert testimony but also whether the testimony is, in fact, reliable." United States v. Pansier , 576 F.3d 726, 737 (7th Cir. 2009).

(i) Bania's Supplemental Report

Defendant engaged Bania to provide information and expert opinions on the parties' use of the Capsule trademark; the purpose and functionality of trademarks; and potential damages. [124-8] at 3. In addition to his initial expert report from December 2016, [124-8], Bania submitted a "Supplemental Expert Report" in March 2017, [104-3]. Plaintiff objects to the primary expert report as unreliable and irrelevant, and to the supplemental report for failure to comply with Federal Rule of Civil Procedure (FRCP) 26. This Court addresses the supplemental report first.

Under FRCP 26(e), parties must timely supplement their expert disclosures to remedy an incomplete or incorrect disclosure. See Fed. R. Civ. P. 26(e)(1-2) ; Vill. of Sauk Vill. v. Roadway Express , No. 15-cv-9183, 2017 WL 378424, at *2 (N.D. Ill. Jan. 25, 2017). Supplementary reports cannot offer "entirely new expert opinions"; rather, they should clarify or expand upon information in the expert's original report or "information given during the expert's deposition." Id. (internal quotation marks omitted); see also Fed. R. Civ. P. 26(e)(2). The supplementary report may be intended in part to rebut an opposing party's expert. Sauk Vill. , 2017 WL 378424, at *2 ; Bone Care Int'l, LLC v. Pentech Pharm., Inc. , No. 08-cv-1083, 2010 WL 3894444, at *15 (N.D. Ill. Sept. 30, 2010). If offered in rebuttal, certain new arguments may be made "to repel testimony" of the opposing party's experts, as long as they do not differ so substantially from the opening report that they introduce entirely new theories or angles. Bone Care , 2010 WL 3894444, at *16. Finally, failure to comply with FRCP 26 may be excused under FRCP 37(c) if that failure is "substantially justified" or harmless.

For purposes of summary judgment, this Court finds that Bania's supplemental report sufficiently adheres to the scope of his initial report and to permissible rebuttal that it need not be stricken. The first half of the supplemental report corrects the scope of Bania's previous damages calculations but does not alter his underlying methodology. See [104-3] at 2-4. The second half rebuts Plaintiff's expert, but similarly confines itself to the calculation of damages, focusing on the issue of Spigen's costs as they relate to damages. See id. at 5-6. Bania previously addressed Spigen's costs in his initial report, [124-8] at 14-15, and here merely applies his analysis to Plaintiff's expert report. Such limited rebuttal does not open up new areas of the case or prejudice Plaintiff's ability to prepare for trial. Cf. Stuhlmacher v. Home Depot USA, Inc. , No. 2:10-cv-467, 2012 WL 5866297, at *3 (N.D. Ind. Nov. 19, 2012). Rather, it supplements Bania's original report, partly in response to Plaintiff's expert material. See Sauk Vill. , 2017 WL 378424, at *2.

Even if the supplementary report failed to strictly comply with Rule 26, this Court also finds any such failure harmless and thus excused under Rule 37. Not only was the supplementary report provided to Plaintiff before the initial close of expert discovery (albeit on the last day) [102], this Court then extended the close of expert discovery another two and a half months, [144], largely to give Plaintiff time to address the supplementary report, as stated in open court. Finally, Defendant's production of the supplement does not venture into new territory, minimizing any potential prejudice to Plaintiff. See Bone Care , 2010 WL 3894444, at *16. This Court denies Plaintiff's motion to strike Bania's supplementary report.

(ii) Bania's Initial Report

Plaintiff challenges Bania's qualifications and the relevance and reliability of his expert opinion overall, and seeks exclusion of his initial report and testimony at trial. [104] at 6; [148] at 25; [158] at 11. Plaintiff also challenges the reliability and admissibility of the consumer survey on which Bania relied for some of his opinions. See [148] at 14; [158] at 8-10. This Court first considers Plaintiff's primary challenges to Bania's report before turning to the consumer survey.

Plaintiff's objections to Bania's report rest solely upon a challenge to Bania's qualifications and methodology with respect to calculating damages. See [104] at 8-16; [148] at 25. For the reasons explained below, this Court does not reach the question of damages because it finds that Defendant did not infringe on Plaintiff's mark. Plaintiff's motion to strike Bania's report is, therefore, denied as moot.

As noted above, however, Bania's opinions extend beyond the issue of damages. His report also addresses the interaction of the parties' products in the marketplace. See [124-8] at 3, 13. Among other conclusions, Bania states that: (1) the parties'

products are dissimilar; (2) a number of cell phone case suppliers use the term "Capsule" in the names of their cases; (3) consumers do not identify the Capsule mark with Uncommon; and (4) Defendant's use of "Capsule" likely did not interfere with Plaintiff's business. Id. at 7-12, 13. These opinions relate to Plaintiff's infringement claims and Defendant's counterclaim for cancellation of Plaintiff's mark for descriptiveness. Thus, the admissibility of his report remains relevant.

Considering the "principles and methodology" that Bania used, Daubert , 509 U.S. at 595, 113 S.Ct. 2786, and his "knowledge, skill, experience, training," and education, Smith , 215 F.3d at 718 (internal quotation marks omitted), this Court finds Bania's expert opinion admissible. Bania's qualifications include his professional experience as the founder of a consulting firm "specializing in the management, valuation and monetization" of intellectual property (IP); over a decade of work in IP management; his certification as a licensing professional in 2011; his membership in various trademark and licensing associations, as well as the American Bar Association's IP Law section; and a decade's worth of publications on copyright use, brand valuation, infringement claims, and other IP topics. See [124-9] at 25-30.

The methodology underpinning Bania's assessment of the parties' products and marks is not terribly complicated, but the questions he was asked to answer do not necessarily call for complexity. Because this case turns primarily on consumer perception of the parties' products and marks, Bania conducted a variety of internet searches to examine how the products and marks appear to consumers. Id. at 4-12. Bania then applied his knowledge and expertise to the results of those searches- which he conducted after wiping his internet search history to remove bias-and to Martensen's consumer survey report to arrive at his conclusions. Id. at 13, 18. This is a reasonable method for determining consumer perceptions. See Ty, Inc. v. Publ'ns Int'l, Ltd. , No. 99-c-5565, 2004 WL 5634301, at *7 (N.D. Ill. Oct. 21, 2004) (finding that an expert's reliance upon his experience and relevant studies offered a "rational basis" for his conclusions on consumer motivations) (citing Sheldon v. Metro-Goldwyn Pictures Corp. , 309 U.S. 390, 408, 60 S.Ct. 681, 84 L.Ed. 825 (1940) ); see also Sands, Taylor & Wood Co. v. Quaker Oats Co. , 978 F.2d 947, 952 n.6 (7th Cir. 1992) (qualified expert's opinion on consumer understanding of trademarked term created genuine issue of material fact as to the mark's descriptiveness).

For the foregoing reasons, this Court will not strike Bania's expert report or exclude his opinions. But to the extent that some of those opinions rely upon the consumer survey, those portions of his report and opinions are only admissible if the survey itself is reliable and admissible, as discussed next.

2. Martensen's Declaration

To determine the admissibility of the consumer survey-independently and as support for Bania's conclusions-this Court must first determine the admissibility of Martensen's declaration. For the reasons explained in this section, the consumer survey cannot be admitted unless it is introduced by the expert who conducted it. Although experts like Bania may generally rely upon studies conducted by other experts in forming their opinions, see Fed. R. Evid. 703, this is not the case when such studies involve discretionary expertise that the testifying expert lacks, see Dura Auto. Sys. of Ind. v. CTS Corp. , 285 F.3d 609, 614 (7th Cir. 2002). As explained below, because Bania admits that he is not a survey expert, and because the consumer survey offered here involves discretion, the survey requires Martensen's testimony to be admissible at trial and his sworn support to be considered at summary judgment. Thus, this Court next considers Plaintiff's motion to strike Martensen's affidavit. [177].

Defendant submitted Martensen's affidavit with its responses to Plaintiff's statement of additional facts; it attests to the validity of the consumer survey conducted by Martensen's firm. [171-8]. Plaintiff objects to Martensen's declaration on three grounds: (1) Martensen cannot submit a testimonial affidavit because Defendant designated him as a nontestifying expert; (2) if Martensen is a testifying expert, Defendant failed to provide the expert report required by Rule 26 ; and (3) Plaintiff suffered harm from this undisclosed use of Martensen's testimony. [177] at 2, 5. Plaintiff therefore seeks to strike Martensen's affidavit and bar his opinions and testimony from consideration now and at trial. Id. at 1.

Because this Court finds no basis to exclude Martensen's declaration, and because Defendant's failure to adhere precisely to the letter of Rule 26 was harmless, the motion to strike Martensen's declaration is denied. Since Martensen's declaration constitutes the requisite support for the admission of Defendant's consumer survey, this Court sets out in detail the reason for this ruling.

Plaintiff's first argues that as a designated nontestifying expert, Martensen cannot offer any testimonial evidence, including a sworn declaration. [177] at 2. Plaintiff's sole support for this exclusionary rule is Dura , 285 F.3d 609. But Dura requires no such thing.

In Dura , the plaintiffs' sole named expert admitted in depositions that his analysis relied upon mathematical models that he lacked the expertise to evaluate. Id. at 611-12. The defendants used that admission to challenge the inclusion of the expert's testimony, and the plaintiffs responded with affidavits from the employees at the expert's firm who created the models, attesting to their validity. Id. at 612. Defendants moved to strike those affidavits as untimely, arguing that the employees constituted new expert witnesses that the plaintiffs failed to disclose before the court's deadline. Id. The district court granted the motion to strike, and, because the original expert's testimony lacked sufficient reliability absent those affidavits, the court barred him from testifying as well. Id.

The Seventh Circuit affirmed, holding that the district court did not abuse its discretion in excluding the plaintiffs' expert. Id. at 616. The mathematical modeling involved such specialized, discretionary expertise that it could not be summarily relied upon by someone lacking that expertise, and required its own expert support. Id. at 615. In so ruling, the Seventh Circuit did not reject the clear meaning of FRE 703, which allows "an expert to base an opinion in part on what a different expert believes on the basis of expert knowledge not possessed by the first expert," without imposing any "general requirement that the other expert testify as well." Id. at 613. The Seventh Circuit was concerned, however, with a situation in which the "soundness of the underlying expert judgment is in issue," and held that where an underlying study is "not cut and dried" but involves "professional discretion," the person who produced the study must testify to its adequacy, id. at 613-14.

The models at issue in Dura were sufficiently discretionary to require testimony from their creators. Id. Since the employees who wrote them were not previously identified, but were necessary to establish the validity of the study, the district court reasonably treated them as previously undisclosed experts, whose new reports as to their models were untimely.

Id. at 612, 615. Had the mathematical models not required adaptations involving "a host of discretionary expert judgments," but instead been a matter of "routine," the outcome would have been different. Id. at 615.

Finally, the Seventh Circuit held that the district court reasonably found that the plaintiffs' untimely filing of additional expert reports was harmful and unjustified, so their failure to comply with Rule 26's disclosure requirements did not fall into Rule 37's safe harbor for "substantially justified" or "harmless" failures to disclose. Id. at 616 ; Fed. R. Civ. P. 37(c)(1). The plaintiffs should have known that the modeling was beyond their original expert's expertise; discovery had closed by the time the employees were finally named in the suit; and the withholding of the employees' names may have been strategic. Dura , 285 F.3d at 616.

As should be clear from this discussion, Dura affects Bania's ability to offer opinions based upon the consumer survey absent supporting testimony from Martensen, who created the survey. Dura does not, however, demand that Martensen's declaration be excluded. The Seventh Circuit affirmed the district court's exclusion of the supplementary affidavits because: (1) the district court reasonably treated the newly revealed employees' affidavits as untimely "experts' reports"; and (2) the district court reasonably found the late disclosure harmful. Id. at 612-13, 616. Thus, this Court must determine whether Martensen's declaration constitutes an expert report, and if so, whether its untimely production was harmful or unjustified.

On the first point, consumer surveys involve sufficiently discretionary expertise that they require the testimonial support of someone with expertise in that field. See Spraying Sys. Co. v. Delavan, Inc. , 975 F.2d 387, 394 (7th Cir. 1992) (discussing potential bias and discretionary choices in conducting consumer surveys); Simon Property Grp. L.P. v. mySimon, Inc. , 104 F.Supp.2d 1033, 1039 (S.D. Ind. 2000) ("Consumer survey results must be presented through expert witnesses."). Bania has admitted that he is not a survey expert and has not conducted "a lot of surveys." [183-6] at 2. Thus, the survey requires Martensen's testimony to support its admission. But the need for Martensen's testimony does not necessarily mean that his affidavit constitutes an untimely expert report.

Defendant's situation is similar to that of the plaintiffs in Dura in one key respect: both erroneously assumed that their experts could permissibly rely upon another's expertise, according to the general rule of FRE 703. Here, as in Dura , Defendant should have planned to have the original expert testify, and that expert should have provided a formal report as required by FRCP 26(a)(2)(B). But Defendant never provided such a report and it seems that Martensen's affidavit was not intended to be one: in large part it merely restates the summary of findings disclosed to Plaintiff in December 2016. Compare [171-8] ¶¶ 1, 3, 4, 5-8, 10, 11, with [124-19] at 3-5, 15-24. Unlike the affidavits in Dura , Martensen's affidavit bolsters previously provided information by including it in a sworn statement rather than merely offering it as an unsworn attachment; it does not significantly expand the record on the survey's methodology. Indeed, Defendant continues to argue that Martensen need not provide an expert report because of his designation as a nontestifying expert. [183] at 2.

In these circumstances, the affidavit does not constitute an expert report. It is, however, a testimonial statement from a witness who was (erroneously) designated a nontestifying expert. Contrary to Plaintiff's contention, there is no rule barring such statements from nontestifying experts. Dura did not address this issue, and the few cases to do so have not held that the statement is barred, but rather that the privilege normally accorded to nontestifying experts under FRCP 26(b)(4)(D) is waived. See Positive Techs., Inc. v. Sony Elecs., Inc. , No. 11-CV-2226 SI (KAW), 2013 WL 1402337, at *2 (N.D. Cal. Apr. 5, 2013) ; W. Res., Inc. v. Union Pac. R.R. Co. , No. 00-2043-CM, 2002 WL 181494, at *8, 10 (D. Kan. Jan. 31, 2002) ; Douglas v. Univ. Hosp. , 150 F.R.D. 165, 168 (E.D. Mo. 1993). Thus, were Martensen properly considered a nontestifying expert, he would have opened himself up to discovery by submitting the affidavit. But the parties do not address the rescission of Martensen's privilege; the question they pose is whether any rule bars Martensen's affidavit, and this Court finds none.

Instead, the situation is this: Defendant erroneously designated Martensen as a nontestifying expert when, in fact, it needs his testimony to introduce the consumer survey report. Because Martensen must testify, but Defendant never provided an expert report regarding his testimony, Defendant failed to comply with FRCP 26. Thus, the final question is whether Rule 37 excuses that failure.

Rule 37(c)(1) provides that where a party fails to provide information about a witness as required by Rule 26, courts should exclude that information and witness from consideration "unless the failure was substantially justified or is harmless." Whether a failure to comply with Rule 26(a) may be excused under Rule 37 is "left to the broad discretion of the district court," Dynegy Mktg. & Trade v. Multiut Corp. , 648 F.3d 506, 514 (7th Cir. 2011), which may tailor any sanctions to the omission, see Salgado by Salgado v. Gen. Motors Corp. , 150 F.3d 735, 741 n.6 (7th Cir. 1998). When applying Rule 37, courts consider: "(1) the prejudice or surprise to the party against whom the evidence is offered; (2) the ability of the party to cure the prejudice; (3) the likelihood of disruption to the trial; and (4) the bad faith or willfulness involved in not disclosing the evidence at an earlier date." David v. Caterpillar, Inc. , 324 F.3d 851, 857 (7th Cir. 2003).

Here, Defendant's failure to provide an expert report was harmless, mainly because Defendant made substantial, timely disclosures about both Martensen and the survey. Defendant included Martensen in its expert disclosure to Plaintiff in December 2016, stating that he would conduct a consumer survey that would inform Bania's opinions, and noting that although Martensen was considered a nontestifying expert, he might "be called to testify on the methodology of the survey if needed." See [183-5] at 2-3; [183-2]. Although this statement should have signaled to Defendant that Martensen needed to produce an expert report, it still gave Plaintiff clear notice of Martensen's potential testimony well before the close of expert discovery, let alone trial. See [114]. Moreover, Defendant included substantial detail about the survey's design and methodology in the findings report disclosed to Plaintiff in December 2016. See [124-19] at 3-5, 15-24. Finally, although Defendant did not provide as detailed a resume for Martensen as for Bania, Defendant gave Plaintiff a two-page summary of his credentials at that time. See [157-18] (indicating receipt by December 7, 2016); [157-20].

In light of these disclosures, this Court finds no likelihood of surprise to Plaintiff as to the nature or substance of Martensen's testimony, or of the consumer survey. This minimizes the prejudice to Plaintiff, who, in any event, had ample opportunity to depose Martensen and did not do so. Designating Martensen a nontestifying expert did not shield him from discovery: where a nontestifying expert's report forms the basis for an expert's opinion, the nontestifying expert may be deposed. See Fed. R. Civ. P. 26(a)(2)(B)(ii), (b)(4)(A) ; Estate of Manship v. United States , 240 F.R.D. 229, 238 (M.D. La. 2006) ; Herman v. Marine Midland Bank , 207 F.R.D. 26, 30-32 (W.D.N.Y. 2002) ; Derrickson v. Circuit City Stores, Inc. , No. DKC 95-3296, 1999 WL 1456538, at *7 (D. Md. Mar. 19, 1999), aff'd on other grounds sub nom. Johnson et al. v. Circuit City Stores , 203 F.3d 821 (4th Cir. 2000) ; Hartford Fire Ins. Co. v. Pure Air on the Lake Ltd. , 154 F.R.D. 202, 208 (N.D. Ind. 1993) ; Eliasen v. Hamilton , 111 F.R.D. 396, 401 (N.D. Ill. 1986) (discovery into nontestifying experts permissible where the party seeking discovery is unable to obtain equivalent information from other sources). Ample warning and failure to seek additional information supports the application of Rule 37's safe harbor. See David , 324 F.3d at 857.

Finally, this Court cannot conclude that Defendant acted in bad faith given the spectrum of discretionary expertise that Dura and FRE 703 create-on one end, "routine" studies and surveys may be relied upon by testifying experts; on the other, "discretionary" surveys must be supported by testimony from their creators. Dura , 285 F.3d at 615. Defendant misread the spectrum, but still provided sufficient information so that no "tactic of surprise" could have affected "the outcome of the case." Sherrod v. Lingle , 223 F.3d 605, 613 (7th Cir. 2000).

Under such circumstances, Defendant's failure to strictly comply with Rule 26(a)'s expert report requirement as to Martensen was harmless. Moreover, submitting Martensen's affidavit did not harm Plaintiff because the affidavit primarily restated information that Defendant had previously disclosed. This Court declines to strike Martensen's affidavit, or exclude his statements and testimony.

Because Martensen's affidavit and testimony are admissible, this Court will also admit the consumer survey Martensen produced, provided it is sufficiently reliable and complies "with the principles of professional survey research." Evory v. RJM Acquisitions Funding LLC , 505 F.3d 769, 776 (7th Cir. 2007).

3. The Consumer Survey

Plaintiff seeks to exclude the consumer survey that Martensen produced and Bania relied upon because "no expert has opined regarding the methodology employed." [148] at 14. As discussed above, however, the survey findings disclosed to Plaintiff in December 2016 contained significant information on the methodology of the survey. [124-19]. Martensen's affidavit, which this Court has admitted, provides sworn support for that information. [171-8]. No categorical bar prevents admitting the consumer survey under these circumstances, nor does Plaintiff point to any. Rather, the admissibility of the survey turns on its reliability, which this Court will now consider.

The Seventh Circuit has said that for a consumer survey to be admissible, it "must comply with the principles of professional survey research," Evory , 505 F.3d at 776, and should not rely upon "leading or suggestive" questions, Muha v. Encore Receivable Mgmt., Inc. , 558 F.3d 623, 625-26 (7th Cir. 2009). A reliable survey must "replicate market conditions" and remain free of bias. Spraying Sys. , 975 F.2d at 396. Courts in this district have supplemented those general principles by considering factors drawn from cases cited with approval by the Seventh Circuit, including: "whether (1) the 'universe' was properly defined, (2) a representative sample of that universe was selected, (3) the questions to be asked of interviewees were framed in a clear, precise and nonleading manner, (4) sound interview procedures were followed by competent interviewers who had no knowledge of the litigation or the purpose for which the survey was conducted, (5) the data gathered was accurately reported, (6) the data was analyzed in accordance with accepted statistical principles and (7) the objectivity of the entire process was ensured." Dyson, Inc. v. Bissell Homecare, Inc. , 951 F.Supp.2d 1009, 1017 (N.D. Ill. 2013). Courts rarely exclude consumer surveys from evidence, since most "shortcomings" go to "the proper weight of the survey" rather than admissibility. AHP Subsidiary Holding Co. v. Stuart Hale, Co. , 1 F.3d 611, 618 (7th Cir. 1993).

(i) The Universe and Sampled Population

Selecting the right universe of respondents significantly affects the probative value of a consumer survey. See Spraying Sys. , 975 F.2d at 394 n.5. An "erroneous or undefined" universe diminishes the survey's reliability. Competitive Edge, Inc. v. Staples, Inc. , 763 F.Supp.2d 997, 1008 (N.D. Ill. 2010). Once the universe is defined, a sample population must be selected "that accurately represents the universe." Id.

Here, the survey report identifies its universe as consumers of cell phones and cell phone cases who do not work for a cell phone or cell phone accessory business, or a "marketing agency, research or media company." [124-19] at 3. This is a relevant universe to this case, which turns on the perceptions of consumers of cell phone cases. The report notes that the sample was selected by Precision Sample, LLC, "a leading provider of respondents for consumer surveys." Id. While this does not give the Court much information to independently evaluate the sampling, the use of a qualified third-party sampler could increase the impartiality of the survey. Moreover, in the context of the consumer universe for this case, any random sampling of cell phone case consumers is likely to be as reliable as any other, since cell phone cases have a broad, national market that crosses most demographic boundaries. Cf. Competitive Edge , 763 F.Supp.2d at 1008 (considering only college students in consumer survey of calculator consumers was underinclusive); see also Bobak Sausage Co. v. A & J Seven Bridges, Inc. , No. 07-C-4718, 2010 WL 1687883, at *6 (N.D. Ill. Apr. 26, 2010) (questions narrowing respondents to likely consumers helped create an appropriate universe). The universe of respondents is therefore sufficiently reliable.

(ii) The Questions

The next factor asks whether the questions given to survey respondents were clear, precise, and nonleading. Dyson , 951 F.Supp.2d at 1017. The questions used in this survey satisfied these conditions. See [124-19] at 15-23. The phrasing is unambiguous, see, e.g. , id. at 16 ("Can you recall the brand name of the case of your primary cell phone?"), and the questions allow consumers a range of response options where appropriate, rather than forcing "yes" or "no" answers, see id. at 18; Competitive Edge , 763 F.Supp.2d at 1008-09. Nor are the questions biased or leading: the survey randomized answers in multiple choice questions and did not unduly emphasize either party's brand name, mark, or product. See [124-19] at 19-20; cf. Bobak Sausage , 2010 WL 1687883, at *6 (survey improperly suggested answers by emphasizing certain choices).

Finally, the questions are reasonably designed to identify consumer perceptions of the term "Capsule" in relation to cell phone cases, which is relevant to the strength and protectability of Plaintiff's mark, as discussed below. The fact that the survey does not appear to have included images of the products somewhat weakens its value, given the relevance of the mark's appearance to consumer confusion, but does not seriously undermine it since the "Capsule" mark has no particular visual content. Rather, both parties merely use similar, sans-serif fonts. See [149-11]; [149-18]; [149-19]; [124-12]. And, since the survey provides evidence as to whether "Capsule" achieved a "secondary meaning" with consumers-which requires that consumers identify the trademark "as the name of the product," Packman v. Chi. Tribune Co. , 267 F.3d 628, 639 (7th Cir. 2001) -presenting "Capsule" with minimal context is a valuable measure of its stature in the market.

Thus, the questions are sufficiently reliable to support admission of the survey. See McGraw-Edison Co. v. Walt Disney Prods. , 787 F.2d 1163, 1172 (7th Cir. 1986) (The "manner of presentation to the interviewee goes to the weight to be accorded to the survey results rather than providing a reason to ignore the survey evidence altogether.").

(iii) Interview Procedures

This factor addresses whether the interviewers followed professionally "sound" procedures so as to minimize the potential for procedural bias. See Dyson , 951 F.Supp.2d at 1017. This Court has little information on this point, other than the fact that Goldmarks conducted the survey online through the third-party platform SurveyMonkey, [124-19] at 4, and "complied with the general principles of professional survey research," per Martensen's sworn statement, [171-8] ¶ 5. Despite the meagerness of the record on this point, it is difficult to see how an online survey suffers the risk of bias presented by human interviewers, which is what this factor seeks to identify. Here, this Court will not exclude the survey for lack of further information when the available information offers no reason to doubt the survey's impartiality. See Bobak Sausage , 2010 WL 1687883, at *8 (admitting consumer survey even though sparse record raised some doubts as to its design).

(iv) Accurate and Objective Data

The record shows the same flaws in this factor as in the previous one. Little information exists about the survey's method of calculating and reporting data, other than that the information collected through SurveyMonkey was converted into percentages, see [124-19] at 4, 6-13, and was "accurately gathered and reported," according to Martensen, [171-8] at 6. Again, however, the format and approach of the survey is relatively simple and this Court has no reason to doubt the effectiveness of this "no-frills" approach, which does not appear to have required sophisticated algorithms or data coding. See Bobak Sausage , 2010 WL 1687883, at *8 ; cf. Dyson , 951 F.Supp.2d at 1020 (scrutinizing coding undertaken by human coders subject to bias).

(v) Summary

In sum, this Court finds that Defendant's consumer survey is not "so flawed as to be completely unhelpful to the trier of fact and therefore inadmissible." Stuart Hale, Co. , 1 F.3d at 618. Rather, its shortcomings go "to the weight to be accorded to the survey results rather than providing a reason to ignore the survey altogether." Id. (quoting McGraw-Edison Co. , 787 F.2d at 1171-73 ).

4. Defendant's Additional Affidavits

Plaintiff next challenges affidavits submitted by defense counsel [124-57], and Defendant's manager Sang Jun [124-59], for lack of personal knowledge, [158] at 12-14. FRCP 56(c)(4) requires that affidavits made in support of a motion for summary judgment "be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant" is "competent to testify on the matters stated." Personal knowledge includes inferences and opinions, but these "must be grounded in observation or other first-hand personal experience." Visser v. Packer Eng'g Assoc., Inc. , 924 F.2d 655, 659 (7th Cir. 1991) ; see also EEOC v. Admiral Maint. Serv., L.P. , 174 F.R.D. 643, 647 (N.D. Ill. 1997). Mere speculation about "matters remote from that experience" fails to conform to the rule. Visser , 924 F.2d at 659.

With respect to the affidavit from defense counsel [124-57], Plaintiff specifically challenges paragraphs 9 and 55, describing defense counsel's web search for the parties' Capsule products and Plaintiff's failure to use the ® designation with its mark on certain of those products. [158] at 13. There is no paragraph 55 in this affidavit, but this Court understands Plaintiff to object to paragraph 4, which addresses Plaintiff's use of the ® designation. See [124-57] ¶ 4. Paragraph four relates to counsel's observation of an image of Plaintiff's product, contained in the record, which is a permissible inference based upon personal observation. See Admiral Maint. , 174 F.R.D. at 648. Paragraph nine describes counsel's search for Plaintiff's products on Amazon.com in May 2017, and attests that the search results included as Exhibit 22 [124-23] are "true and correct copies" of his search results. [124-57] ¶ 9. This is the definition of personal knowledge, since counsel himself conducted the search. This Court declines to strike paragraphs four and nine of defense counsel's affidavit.

With respect to Sang Jun's affidavit, this Court finds that one of Jun's statements is not clearly the result of personal knowledge, and Defendant has therefore failed to that Jun is "competent to testify on the matters stated." Fed. R. Civ. P. 56(c)(4). Although it may sometimes be inferred that the affiant had knowledge of certain events based upon his position within an organization and involvement in relevant circumstances, Ladenberger v. Gen. Signal Pump Grp./Aurora Pump , No. 00-c-4054, 2001 WL 586497, at *1 (N.D. Ill. May 31, 2001) (citing Barthelemy v. Air Lines Pilots Ass'n , 897 F.2d 999, 1018 (9th Cir. 1990) ), this is not the case with paragraph eight of Jun's affidavit. Although Jun is Defendant's "Manager of General Affairs" and oversees "day to day operations," [124-59] ¶ 1, this does not explain how he knows that Spigen "has developed a reputation" for "high quality and minimalist design," id. ¶ 5. Although this statement cites Defendant's expert report, it must more clearly point to the source of this knowledge or at least indicate that Jun examined the report.

With respect to paragraph 10 of Jun's affidavit, it is clear that Jun concluded that the term "capsule" is used by other cell phone case manufacturers based upon his review of Defense Exhibit 9 [124-10], showing capsule-labeled cell phone cases sold by third parties. As noted, inferences from matters in the record are permissible under Rule 56. See Admiral Maint. , 174 F.R.D. at 648. The remainder of Jun's statements relate to Spigen's ordinary business practices and this Court infers that they draw upon his personal knowledge as Spigen's manager. See Ladenberger , 2001 WL 586497, at *1. This Court therefore strikes paragraph eight of Jun's affidavit, but admits the remaining statements.

5. Defendant's Motion to Withdraw Answers

Defendant seeks to withdraw its answers to numbers 18, 23, 24, and 47 of Plaintiff's requests for admission (RFAs). [180]. FRCP 36(b) gives district courts discretion to "permit withdrawal or amendment if it would promote the presentation of the merits of the action and if the court is not persuaded that it would prejudice the requesting party." The party seeking to withdraw its admissions must show good cause. Howard v. Sheahan , 546 F.Supp.2d 566, 568 (N.D. Ill. 2008). Even if these prerequisites are met, courts may refuse to permit withdrawal. See United States v. Kasuboski , 834 F.2d 1345, 1350 n.7 (7th Cir. 1987) (Admissions may be withdrawn under Rule 36(b)"if certain conditions are met and the district court, in its discretion, permits the withdrawal.").

This Court grants Defendant's request to withdraw its response to RFA 18. RFA 18 asked Defendant to admit that the "term 'CAPSULE' as used by Spigen and Uncommon's CAPSULE mark are identical in appearance." [149-8] at 6. This Court first notes that this RFA is problematic because it essentially aims "to establish the ultimate legal question." McNary v. Hamer , No. 14-cv-01897-WTL-TAB, 2016 WL 4140945, at *2 (S.D. Ind. Aug. 4, 2016). More importantly, Defendant's response contains an erroneous denial, controverted by the evidence, that it used the trademarked term "Capsule" alone. See [149-8] at 7; R. PSOF ¶ 9; [149-11] at 2. Thus, the merits of the case are aided by the withdrawal of this denial. The withdrawal cannot prejudice Plaintiff, since Defendant's use of "capsule" alone more closely resembles Plaintiff's mark, and thus favors Plaintiff's infringement claim.

This Court denies, however, Defendant's request to withdraw its responses to RFAs 23, 24, and 47. In response to RFAs 23 and 24, Defendant admitted that its products were similar and/or identical to Plaintiff's. [149-8] at 10. Defendant now seeks to withdraw both admissions on the grounds that the distinct coloration and designs on the parties' cell phone cases render the products distinct. [180] at 5-6. This is contrary to the law governing product similarity, which asks whether consumers are likely believe that "a single source could produce both" products, McGraw-Edison Co. , 787 F.2d at 1169, and if the products are competitive, see Knaack Mfg. Co. v. Rally Accessories, Inc. , 955 F.Supp. 991, 1000 (N.D. Ill. 1997). The decorative aspect of these cases affects neither inquiry. The parties' cases could replace one another and are thus competitive, id. , and a single company could produce more than one kind of cell phone case. Thus, Defendant's request for withdrawal relies upon a distinction unsupported by law.

In Defendant's response to RFA 47, Defendant admitted that "it does not appear SPIGEN used the term 'CAPSULE' prior to" Plaintiff's first use of the mark in December 16, 2009. [149-8] at 15. Now Defendant argues that its earlier use of "capsule" to describe a decorative pattern of medicine capsules on a cell phone sticker proves this admission false. [180] at 7. This Court has already discussed why the use of the cell phone sticker is largely irrelevant to the merits of this case. To the extent that it is relevant, Plaintiff would be prejudiced by its withdrawal at this late hour. Plaintiff cited this admission in its briefing, see, e.g. , [148] at 19, which represents "detrimental reliance" upon the admission, see Matthews v. Homecoming Fin. Network , No. 03-c-3115, 2006 WL 2088194, at *3 (N.D. Ill. July 20, 2006) (internal quotation marks omitted). Moreover, the fact that Defendant waited to amend its answer for over a year after it submitted its supplemental responses to Plaintiff's RFAs, see [180-2] at 19, and after the parties' motions for summary judgment were fully briefed, strongly indicates unfair prejudice to Plaintiff, see Matthews , 2006 WL 2088194, at *3 ; Tidwell v. Daley , No. 00-c-1646, 2001 WL 1414229, at *1 (N.D. Ill. Nov. 8, 2001). If Defendant was able to supplement its responses to Plaintiff's interrogatories on this issue in 2016, [180-6], it could and should have moved to amend this answer at that time.

Having shown no cause for this delay, Defendant's motion is denied as to RFA 47. See Howard , 546 F.Supp.2d at 568 ; Matthews , 2006 WL 2088194, at *3.

B. Validity of Plaintiff's Mark

Defendant's two extant counterclaims seek the cancellation of Plaintiff's mark for genericness and descriptiveness, respectively. [47]. "Courts classify marks into five categories of increasing distinctiveness: (i) generic; (ii) descriptive; (iii) suggestive; (iv) arbitrary; and (v) fanciful." Box Acquisitions, LLC v. Box Packaging Prods., LLC , 32 F.Supp.3d 927, 934 (N.D. Ill. 2014) (citing Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc. , 149 F.3d 722, 727 (7th Cir. 1998) ). Generic terms receive no trademark protection, while a descriptive mark only receives trademark protection "if it acquires secondary meaning in the collective consciousness of the relevant community." Platinum , 149 F.3d at 727 (internal quotation marks omitted). Terms in the other three categories receive protection "automatically" because "they are inherently distinctive." Id. A district court's determination as to where a mark falls "on the continuum between generic and arbitrary" is "often made on an intuitive basis rather than as the result of a logical analysis susceptible of articulation." Money Store v. Harriscorp Fin., Inc. , 689 F.2d 666, 674 (7th Cir. 1982).

Here, Defendant contends that Plaintiff's mark is either generic or descriptive, and should be canceled in either case because the mark lacks secondary meaning. [125] at 9-13. Plaintiff argues that it is entitled to the presumption that its mark is at least suggestive because the USPTO approved its registration. [148] at 8. Plaintiff is correct that registration entitles its mark to a presumption of validity. 15 U.S.C. § 115(a). But Defendant may overcome that presumption "with evidence that the mark is generic or descriptive, or that it lacks secondary meaning." Packman , 267 F.3d at 639. Thus, Defendant bears the burden of demonstrating that the mark is either generic or descriptive, and, if descriptive, that it lacks secondary meaning. Id. ; see also Custom Vehicles, Inc. v. Forest River, Inc. , 476 F.3d 481, 485 (7th Cir. 2007) (registered mark presumed to have secondary meaning); Scandaglia v. Transunion Interactive, Inc. , No. 09-c-2121, 2010 WL 3526653, at *6 n.1 (N.D. Ill. Sept. 1, 2010) (party contesting the mark must show that the mark lacks secondary meaning).

Courts h