INTELLECTUAL PROPERTY SURVEYS: 2007
Gerald L. Ford
Ford Bubala & Associates
Copyright © 2008 Gerald L. Ford
All Rights Reserved
No Claim to Orig. US Gov. Works
The author sincerely thanks Sherry J. Laufenburger,
a Research Associate at Ford Bubala & Associates.
Without her diligent research and assistance, this paper
and the prior eight papers would not have been possible.
TABLE OF CONTENTS
I.
INTRODUCTION
II.
THE YEAR IN REVIEW: 2007
III.
IV.
V.
3
A. GENERICNESS SURVEYS
4
B. SECONDARY MEANING SURVEYS
7
C. LIKELIHOOD OF CONFUSION SURVEYS
10
D. FALSE ADVERTISING SURVEYS
14
E. FAME/DILUTION SURVEYS
16
F. DAUBERT/ADMISSIBLITY ISSUES
18
BIBLIOGRAPHY—INTELLECTUAL PROPERTY
SURVEYS: 2007—BY CIRCUIT
24
BIBLIOGRAPHY—INTELLECTUAL PROPERTY
SURVEYS: 2007—BY ISSUE
28
BIOGRAPHICAL INFORMATION
34
2
I. INTRODUCTION
This paper is the annual follow-up to eight previous papers: 1 (1) “Lanham Act Related
Surveys: The Year In Review & Emerging Issues” published in the 1999 Practising Law
Institute handbook Litigating Copyright, Trademark & Unfair Competition Cases for the
Experienced Practitioner, (2) “Lanham Act Surveys: 2000” published in the 2000 Practising Law
Institute handbook Litigating Copyright, Trademark & Unfair Competition Cases for the
Experienced Practitioner, (3) “Lanham Act Surveys: 2001” published in the 2001 Practising Law
Institute handbook Strategies for Litigating Copyright, Trademark & Unfair Competition Cases,
(4) “Lanham Act Surveys: 2002” published in the 2002 Practising Law Institute handbook
Strategies for Litigating Copyright, Trademark & Unfair Competition Cases, (5) “Lanham Act
Surveys: 2003” published in American Intellectual Property Law Association annual
proceedings, 2003, (6) “Lanham Act Surveys: 2004” published in the Law Education Institute
National CLE Conference proceedings, 2005, (7) “Lanham Act Surveys: 2005” presented at a
meeting of the Intellectual Property Law Section of the State Bar of Georgia, reprinted in the
NAD Annual Conference proceedings, 2006, and in the Law Education Institute National CLE
Conference proceedings, 2007, and (8) “Intellectual Property Surveys: 2006” published on the
INTA web site.
The following provides short excerpts of a number of selected opinions referencing
survey evidence published in opinions from February 2007 through mid-2008, 2 which might be
of interest to the Lanham Act litigator. 3 The bibliographies to this paper provide citations, by
circuit and by survey issue, for all identified opinions published during this time period in which
survey evidence was referenced. 4
1
Copies of the previous papers published by the Practising Law Institute (PLI) are available from the PLI or Westlaw. The
previous paper published in the Proceedings of the American Intellectual Property Law Association (AIPLA) is available from
the AIPLA. A compilation of all these papers is available at INTA.org. Copies of these papers are also available from the
author.
2
The primary focus of this paper and prior annual reviews of survey evidence is on surveys related to Lanham Act claims.
Notwithstanding this focus, this paper, as well as previous papers, includes reference to surveys in other matters as they are
identified.
3
The time periods covered in the previous papers were January 1998 through mid-1999, mid-1999 through mid-2000, mid-2000
through mid-2001, mid-2001 through mid-2002, mid-2002 through mid-2003, mid-2003 through mid-2004, mid-2004 through
January 2006, and February 2006 through mid-2007, respectively.
4
The reader may also be interested in “Survey Evidence—Successful Challenges Since Daubert,” published in the 2003
International Trademark Association 125th Annual Meeting proceedings and also available from the author.
3
II. THE YEAR IN REVIEW: 2007
A. GENERICNESS SURVEYS 5
Hasbro, Inc. v. MGA Entertainment, Inc., 497 F. Supp. 2d 337, 341-345 (D. R.I. 2007)
Notwithstanding the protection to which registered (or unregistered) marks
may be entitled, a finding of genericness will render the term unprotectable…
For a term to be generic, its “primary significance…to the relevant public
must be to identify the nature of a good, rather than its source.”…This can occur
in one of two ways. First, an invented name may become “genericized,”…that is,
the term “began life as a ‘coined term’” but became generic through common
usage…Second, a term may be generic if it was commonly used prior to its
association with the specific products at issue…
Under either approach, evidence of the relevant public’s understanding of
a term can be used to prove genericness…This evidence may include competitors’
use (use of the term by competitors which has not been contested by plaintiff),
plaintiff’s use (use of the term as a generic name by the plaintiff), dictionary
definitions, media usage, testimony of persons in the trade, and consumer
surveys…
*
…[Defendant] submitted compelling evidence that the term “Memory”
has been used to describe a generic card game since before [Plaintiff] obtained its
first trademark in 1967…
[Defendant] also submitted dictionary use as evidence establishing the
genericness of the term…
*
[Defendant] has additionally adduced evidence of [Plaintiff’s] own generic
use of the term…
*
The substantial volume of evidence of competitors’ use of the term
“Memory” to describe a memory matching game is particularly significant, and
probative, for the question of genericness because “the more members of the
public see a term used by competitors in the field, the less likely they will be to
identify the term with one particular producer.”…
It is true that [Defendant] failed to offer any consumer surveys in support
of its genericness claim, and that, additionally, [Plaintiff] offered its own brand
penetration surveys, which, it claims, demonstrate that consumers associate
[Plaintiff’s] specific game with the term “Memory.”…But, it has been made clear
that such evidence is not dispositive on the question of genericness; rather, it is
merely one of several factors that may be considered…This is also true of relative
sales volume. Although [Plaintiff] argues that its dominant market position rebuts
any claim that the relevant public would view the term “Memory” as generic, in
the absence of actual evidence proving this, the Court cannot draw such a
conclusion…There has been no presentation of evidence suggesting that
5
Opinions in this and following sections are ordered by circuit, then chronologically from oldest to newest.
4
consumers associate the term “Memory” with [Plaintiff’s] game, just that
[Plaintiff’s] game occupies a large market share…
In sum, at this juncture, [Defendant] has carried its burden of proving by a
preponderance of the evidence that the term “Memory” is and has been a generic
term not entitled to trademark protection.
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *17-*20
(3rd Cir. 2008)
“The primary significance test…inquires whether the primary significance
of a term in the minds of the consuming public is the product or the
producer.”…We therefore inquire whether the consuming public understands
“Cocoa Butter Formula” to refer to a product genus or to a producer…
Plaintiffs seeking to establish the descriptiveness of a mark often use one
of two types of survey evidence. J. Thomas McCarthy…describes a “Teflon
survey” as “essentially a mini-course in the generic versus trademark distinction,
followed by a test.”…That survey runs a participant through a number of terms
(such as “washing machine” and “Chevrolet”), asking whether they are common
names or brand names. After the participant grasps the distinction, the survey asks
the participant to categorize a number of terms, including the term at issue…
A “Thermos survey,” on the other hand, asks the respondent how he or she
would ask for the product at issue. If, to use the term under dispute in the case
from which the survey gets its name, the respondents largely say the brand name
(“Thermos”) rather than the initial product category name (“Vacuum Bottle”), the
survey provides evidence that the brand name (“Thermos”) has become a generic
term for the product category…To put this in the terms of the primary
significance test, the term would be generic because the consumers would be
using it to refer to the product category rather than a producer who makes
products within that product category.
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495, *8-*9, *11 (E.D. Tex. 2008)
[Defendant] relies in part on the survey of [its expert] to demonstrate that
the term is merely generic. In [the] Teflon survey, [Defendant’s expert] notes that
77% of those surveyed had an opinion that Brooklyn style pizza was a common
generic name...[Defendant] points out that even a survey showing of 60% is
enough to hold that the name is merely generic. E.I. Dupont de Nemours & Co. v.
Yoshida Int'l, Inc., 393 F.Supp. 502 (E.D.N.Y. 1975). [Defendant] also cites a
number of articles from newspaper advertisements which mention a Brooklyn
style pizza. For example, “The demand for Pucci’s Brooklyn style pizza would
seem to be greater than the supply.” “The soul of a genuinely scrumptious
Brooklyn - style pizza doesn’t reside in fancy gimmicks or a host of bizarre
toppings”...Even in the [Dallas-Fort Worth] metroplex, Pastazio’s Pizza cuisine is
highlighted as the Brooklyn style pizza...
5
As [Defendant] points out, it has submitted 28 media articles referring to
the generic use of the term. Advertising use of a word in its generic sense can be
compelling evidence of the general public’s perception that the term is generic…
[Defendant] also points out that it is not alone in the use of the term
Brooklyn style pizza and claims over a hundred restaurants around the country
use the moniker. [Defendant] also argues that even the Patent and Trademark
office recognizes Brooklyn style pizza as a generic term not entitled to
protection…
*
Whether [Brooklyn style pizza] is viewed as a generic term, or whether it
is descriptive, the result is the same. There is no trademark violation…
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565, *2*4, *26-*27 (N.D. Ga. 2007)
…[Defendant] commissioned…a survey…designed to determine whether
the term NITE LITES is or is not a generic designation for systems that provide
low-voltage nighttime illumination of the exteriors of upscale
residences…[Defendant’s expert] designed the survey based on the “Thermos
Survey” model, a product category survey that generally describes the product
and asks respondents how they would ask for the product in a store…
[Defendant’s] survey consisted of interviewing a random sample of 200
homeowners…
*
The interview consisted of two sets of questions - screening questions and
main questions. The screening questions were designed to identify individuals
within the relevant consuming public for outside low-voltage home
illumination,…termed the “relevant universe” or “survey universe,” and asked:
1. Do you own your own home?…
2. Is it a detached home, a town home, an attached house, a mobile house,
or some other?…
3. When you bought the home, did it cost less than $ 300,000 or $ 300,000
or more?…
4. Are you familiar with the practice of homeowners illuminating their
trees and the outside of their houses with a low voltage system?…
5. Have you ever illuminated your trees and the outside of your house with
a low voltage system?…
6. In the next 12 months, how likely would you be to consider illuminating
your trees and house with a low voltage system: Very likely, somewhat
likely, or not likely?…
The main questions were designed to identify what terms the relevant
universe used to describe a system of outside low-voltage home illumination, and
asked:
6
1. What do you call such a system of outside illumination?…
2. Do you know the names of manufacturers of such illuminating
systems?…
3. Who are those manufacturers?
4. Can you name any trademarks or brand names of such outside
illumination systems?…
5. What are those brand names?
*
…The court finds that [Defendant’s expert’s] survey meets the criteria of
helpfulness to the trier of fact given the specific allegations and contentions of
this case.
B. SECONDARY MEANING SURVEYS
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008)
…[Plaintiff] relies on a survey…to support its contention that [its color
mark] has acquired secondary meaning. It asserts that 54.6% of consumers in the
study named NEOSPORIN (R) as a source of the product sold in a box bearing
only [its color mark]. But only 34% of consumers in the study named
NEOSPORIN (R) as the only ointment sold in a package like the one they were
shown. This percentage fell to 32% when the results from the control group were
considered…Taken as a whole, while [Plaintiff’s] evidence of secondary meaning
is sufficient for a jury to conclude that [its color mark] has acquired
distinctiveness in the marketplace, it is insufficient to establish secondary
meaning as a matter of law.
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478, *29-*30, *34
(E.D.N.Y. 2008)
…A court considering secondary meaning should take into account six
factors that bear on the extent to which the “consuming public for a particular
product” associates that product with its source on the basis of its trade dress:
“(1) advertising expenditures, (2) consumer studies linking the mark to a source,
(3) unsolicited media coverage of the product, (4) sales success, (5) attempts to
plagiarize the mark, and (6) length and exclusivity of the mark’s use.”…This is an
“essentially factual determination, proof of which entails vigorous evidentiary
requirements.”…
In seeking to establish secondary meaning, [Defendant] focused its efforts
almost exclusively on the second factor listed above. Such consumer surveys are a
probative source of evidence as to secondary meaning, but they are not
conclusive…
*
[The survey results] persuasively demonstrate that some people reliably
recognize two dominant features and attribute them to [Defendant]. But the data
do not go further to persuade me…that the combination of six features for which
7
[Defendant] seeks protection has acquired a secondary meaning. The latter
proposition may be more difficult to establish by means of a consumer survey, but
such difficulty does not relieve [Defendant] of its burden of persuasion…Nor
does it do anything to undermine the availability of other sources of proof -including such things as advertising expenditures, and unsolicited media coverage
of the product -- that [Defendant] could have sought to adduce but did not.
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *29, *32-*33,
*36 (3rd Cir. 2008)
…Even assuming that [Plaintiff] prevailed and proved “Cocoa Butter
Formula” to be descriptive, it also would need to show that the term had acquired
secondary meaning which associates it with [Plaintiff].
[Defendant] moved for summary judgment on the basis that Browne had
not produced evidence creating a genuine issue of material fact on the secondary
meaning question…
*
The evidence’s core deficiency is that while it shows [Plaintiff] used the
term “Cocoa Butter Formula” on many occasions over a long period of time, it
does not show [Plaintiff] succeeded in creating secondary meaning in the minds
of consumers. Although the evidence leaves no doubt that [Plaintiff] hoped the
term would acquire secondary meaning, nothing shows that it achieved this goal.
Jurors would have to make a leap of faith to conclude that the term gained
secondary meaning because the record fails to provide meaningful support. A
jury could evaluate the quality of the advertising or consider this rise in product
sales, but it would have to guess what lasting impression the advertising left in the
mind of consumers or what portion of [Plaintiff’s] revenue growth it caused.
*
[Plaintiff] could have overcome these deficiencies in its evidence by
conducting a secondary meaning survey…It could have used survey evidence to
show that “Cocoa Butter Formula” had acquired secondary meaning in the minds
of consumers, thus creating a genuine issue of material fact on that issue…We
never have held, and do not hold today, that a party seeking to establish secondary
meaning must submit a survey on that point. However, [Plaintiff’s] failure to
conduct a secondary meaning survey leaves it without evidence of any sort in this
case of the secondary meaning of the term “Cocoa Butter Formula.”
Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS 36800,
*10-*11, *12 & n.1, *13-*14, (E.D. Mich. 2008)
Plaintiff cites its duration using the term in Michigan, the amount of
money spent on advertising, as well as the results of a secondary meaning study
conducted by its expert witness…Plaintiff concludes that it has established
secondary meaning, and that its mark therefore deserves strong protection. The
Court disagrees.
*
8
…[Plaintiff’s expert’s] studies [do not] establish secondary meaning. The
studies investigated whether respondents associated the word “Citizens” in the
banking industry with one or more companies, or no company at all.
In his first study of twelve counties in Michigan, fifty-two percent (240
out of 473) of respondents indicated they associated “one company” with the
term. The study followed up with “unaided recall” questions, which asked the
“one company” respondents for addresses, logos, or other advertising cues to
determine which company they associated with “Citizens.” At most eight per cent
answered in a manner that suggested the Plaintiff was the one company…[n.1
Defendants challenge [Plaintiff’s expert’s] total number of “un-aided recall”
respondents who identified Plaintiff as the single source. [Plaintiff’s expert]
apologized on the stand for “missed verifications” of banks outside the counties at
issue, some of which referred to banks even outside Michigan, but acknowledged
he did not correct those entries in a subsequent supplemental report.]
[Plaintiff’s expert] did a second analysis of the data, of respondents from
the nine-county area where Plaintiff is the only “Citizens”-named bank. The
percentage responding that they associated one company was statistically the
same. The second study did not seek to determine which companies were in
respondents’ minds as the “single source.” Plaintiff argues that because it is the
only “Citizens”-named bank in that nine county area, one must logically conclude
that it was the “single source” in respondents’ minds…
The Court is not persuaded, because the data is simply inconclusive…
*
In addition, the [second] study followed a time period in which Plaintiff
had invested significant funds and efforts to become established, especially in
Oakland County, whose inhabitants represented one-third of the second analysis’s
respondents. The fact that the numbers were statistically the same between the
two analyses indicates that awareness of Plaintiff’s mark is weak.
…the eight percent attribution to Plaintiff is insufficient to demonstrate
secondary meaning…
Saint-Gobain Corporation v. 3M Company, 2007 T.T.A.B. LEXIS 82, *45-*46, *50, *52
(T.T.A.B. 2007) (This opinion is a precedent of the T.T.A.B.)
Opposer also introduced a survey to support its position that applicant's
mark had not acquired distinctiveness…
[Opposer’s expert] conducted a survey that involved telephonically
contacting users of abrasives. The survey also involved a control. A control is “a
twin product attribute, service or stimuli that has the same characteristics
generally as the test stimuli, but does not have the characteristic that is at issue... it
would have all of the characteristics of purple sandpaper but not be purple.”…
As a result of the survey, [Opposer’s expert] concluded that “when one
measures how many people would identify [Applicant] or one company, even if
an unknown company, as a single source of purple sandpaper, and you then
subtract the similar proportion among people who are asked about orange
sandpaper in the control, you end up with six percent…
9
*
Regarding the objection that a telephone survey should be virtually
meaningless, we ultimately agree with opposer that, despite our initial misgivings,
a telephone survey involving a color, at least under the facts of this case, is not
inherently unreliable. To the extent that opposer’s survey is subject to criticism, it
could also be criticized as erring on the side of over-inclusion, because any
customer who saw any shade of the color purple as indicating a single source for
coated abrasives would have responded affirmatively…
*
Overall, we find that the survey, despite some unusual features, is
probative and we will accord it some weight on the question of acquired
distinctiveness…
C. LIKELIHOOD OF CONFUSION SURVEYS
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220, 227-228 (E.D.N.Y. 2007)
…Plaintiff has neither conducted nor submitted the results of any
consumer survey. While not bearing any burden on this issue, Defendant
commissioned and submits the results of a consumer survey…
*
Plaintiff has not conducted a consumer survey. Instead, Plaintiff submits
an expert report explaining to the court the problems with the Defendant’s survey
and asking that the court reject its findings…
In consideration of the evidence submitted, the court concludes that there
is little evidence of actual confusion. The court reaches this conclusion even if it
were to accept each and every one of Plaintiff’s quarrels with the reliability of
[Defendant’s] survey…the court notes that Defendant was not required to submit
a consumer survey. While Plaintiff commissioned an expert to criticize that
survey, it did not conduct a survey of its own. This weighs against Plaintiff’s
argument of consumer confusion…
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320,
*9, *17-*18 n.8, *24-*25 (S.D.N.Y. 2007)
Here, because [Plaintiff] is claiming that “reverse” confusion exists, the
relevant survey for purposes of demonstrating actual consumer confusion is that
of [Plaintiff’s] universe of prospective purchasers…
*
In addition to failing to approximate actual marketplace conditions, the
survey’s back-to-back design was impermissibly leading. After viewing the
seriatim display of non-competing products that few if any respondents actually
would have encountered in close physical or temporal proximity in real life, the
respondents were given multiple choice questions in which they were asked
whether they believed a connection, as to source, business relationship, or
sponsorship, existed between the companies whose marks the respondents had
10
just seen. Rather than measure any actual confusion, however, these questions
were far more likely to generate “demand effects” by suggesting the existence of
a connection between the products that the respondents would not have made on
their own…(“Demand effect results when the interviewer’s question or other
elements of the survey design influence participants’ responses by suggesting
what the “correct” answers might be or by implying associations that might not
otherwise occur to participants.”) In other words, the mere putting of a question
creates the impression of a relationship.
*
n. 8 The percentage of confusion occurring among participants in the
control group is subtracted from the percentage of confused participants in the test
group, pursuant to standard protocol, as “noise” that should be discarded. “In an
experiment or statistical study, the ‘noise’ is the variation in the data being
collected that is not believed to be caused by the variables being tested.”…
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052, *26-*28,
(S.D.N.Y. 2008)
Although “actual confusion need not be shown to prevail under the
Lanham Act,”…“there can be no more positive or substantial proof of the
likelihood of confusion than proof of actual confusion”…Despite the obvious
importance of this Polaroid factor…[Plaintiff] has done nothing to fill this
evidentiary gap. Defendants, in contrast, commissioned a survey of 200 potential
purchasers of their…products, which “documented a total absence of consumer
confusion.”…Although [Plaintiff] argues that the survey contains several
methodological flaws, its objections are convincingly refuted in a reply affidavit
filed by defendants’ expert…In particular, [Defendants’ expert] explains that his
survey utilized the “Eveready” procedure…which has been approved by courts
and described by a leading commentator as “a now-standard survey format…The
lack of any consumer confusion reported in [Defendants’] survey, coupled with
[Plaintiff’s] failure to perform its own consumer survey…or adduce any other
evidence of actual confusion, clearly tip this Polaroid factor in defendants’ favor.
Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS 36800,
*26-*28, (E.D. Mich. 2008)
Plaintiff's expert…executed four surveys, and analyzed 22 reported
incidents of actual confusion…
In general, the appropriate resolution for a flawed survey is to address its
weight and credibility, and not to exclude it…
The most significant error was the choice of control variable. Described by
[Plaintiff’s expert] as a “naturally occur[r]ing control variable” the term
“CHASE” bears very little resemblance to the marks at issue, in contrast to the
guidance on which [Plaintiff’s expert] said he relied…“In designing a control
group study, the expert should select a stimulus for the control group that shares
11
as many characteristics with the [test] group as possible, with the key exception
of the characteristic whose influence is being assessed.”…
[Plaintiff’s expert] admitted on the stand at trial that a bad control
selection could invalidate a survey...
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755, 758, 762 (7th Cir. 2007)
…A consumer survey conducted by [Plaintiff’s] expert suggests that
twenty-seven percent of motorcycle riders who view [Defendant’s] promotional
materials believe that [Plaintiff] promotes or approves of [Defendant’s] cruises.
The same survey suggests that much of this confusion stems from [Defendant’s]
use of the word “hog” and the word’s association with the Harley Owners Group.
*
Having determined that [Plantiff’s] “HOG” and “H.O.G.” marks are
protectable, we need not discuss at length the issue of likelihood of confusion, for
[Plaintiff] has offered evidence of actual confusion in the form of a survey and
questions asked by [Defendant’s] customers…And evidence of actual confusion
(so long as it is not de minimis) ordinarily is sufficient to create a genuine issue of
material fact on the issue of likelihood of confusion…
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376, *20-*26
(D. Minn. 2008)
In addition, [Plaintiff] advances the related argument that should laches
otherwise be applicable, laches should not bar injunctive relief because the public
maintains an interest in being free from confusion in instances of trademark
infringement…Courts considering this factor typically will decline to apply laches
to bar injunctive relief only when some elevated likelihood of confusion is
demonstrated…
In this case, the evidence of likelihood of confusion consists of the
similarity between the product’s names, the fact that both Cristal and Cristalino
are sparkling wines that are sold nationwide…In addition, [Plaintiff] submitted
the results of a survey indicating some confusion among potential
consumers…The results indicated that 6.9% of respondents believed the bottle of
Cristalino was the same brand as the bottle of Cristal, 9.2% believed Cristal and
Cristalino were produced by the same company, 4.6% believed the Cristal and
Cristalino were produced by affiliated companies, and 2.3% believed that
permission from the maker of Cristal was required in order to produce Cristalino.
On this record, the Court concludes that confusion between Cristalino and
Cristal is not inevitable and the likelihood of confusion is not so high as to
prevent application of laches to [Plaintiff’s] request for injunctive relief and that,
on that issue, no genuine issue of material fact remains…While [Plaintiff’s]
survey is probative of a possibility of confusion, the Court concludes that, in light
of the other available evidence, a higher confusion rate on this survey would be
required to establish an issue of material fact as to the existence of “inevitable
confusion.”
12
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635, *26-*27 (C.D. Cal. 2007)
A significant number of respondents explained their confusion with
answers, such as “design” or “style,” that could refer to the checkerboard design.
However, the study’s poor choice of control precludes any inference that they
were referring to the checkerboard design. Instead of using a control shoe that
resembled the Smooth Rider in every respect except its use of a checkerboard
design, the study employed a control shoe that differs from the Smooth Rider in a
number of significant respects…The Smooth Rider is a slip-on shoe with a flat
heel, whose profile significantly resembles Vans’ “classic slip-on shoe.”…The
Urbantrack Tao is a lace-up shoe resembling a running sneaker, with a curved
heel and a grooved tread…There are a number of elements of “style” or “design”
shared between the Smooth Rider and the “classic slip-on” that are not
incorporated in the control, and that could explain respondents’ confusion…The
control was thus useless in eliminating explanations for respondents’ confusion
other than the checkerboard design.
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1226 - 1227
(D. Or. 2007)
[Defendant] seeks an Order striking both…Rule 26 expert report[s] of
[Plaintiff’s expert]. [Defendant] also seeks an order barring [Plaintiff’s expert]
from testifying at trial. [Defendant] argues [Plaintiff’s expert’s] likelihood of
confusion surveys, which focused on [Plaintiff’s] Superstar Trade Dress
infringement claims, cannot be used to support [Plaintiff’s] Three-Stripe
trademark infringement claims…[and] that [Plaintiff’s expert] improperly relied
on likelihood of confusion surveys he conducted for [Plaintiff] in other cases
involving potentially infringing third-party uses of two and four-stripe designs. In
essence, [Defendant] argues that because [Plaintiff’s expert] did not conduct a
likelihood of confusion survey for each of the accused shoe lots at issue, his
expert reports must be stricken with respect to all of the unreviewed shoes…
Where actually surveyed products and subsequently accused products
share common and prominent features, a trademark infringement plaintiff need
not create new likelihood of confusion surveys for each newly accused product…
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16,
*41-*46 (T.T.A.B. 2008)
…the likelihood of confusion survey conducted on behalf of
petitioner…was based on the mark in petitioner’s registration. [Petitioner’s
expert] conducted a mall intercept survey in 15 cities among 396 people aged 18
or older who had purchased fishing, hunting, camping, or other outdoor gear in
the past 12 months…Respondents were first shown the “Bass Pro Shops
Sportsman’s Warehouse” logo. Then, respondents were exposed to an array of six
logos that they would be likely to encounter in shopping for outdoor
13
gear…Among these six logos was the logo put out by Sportsman’s Warehouse,
Inc. To assess potential confusion between the petitioner’s and the registrant’s
marks, all survey respondents were asked whether any of the six logos in front of
them either (1) is put out, (2) needed permission or approval, or (3) is affiliated
with the company that puts out the logo that they had seen earlier (“Bass Pro
Shops Sportsman’s Warehouse” logo). Adjusting for the control cell, over 35% of
the outdoor gear purchasers felt that the Sportsman’s Warehouse, Inc.’s logo was
put out by the same company that put out the “Bass Pro Shops Sportsman’s
Warehouse” logo. In addition, adjusting for the control cell, 30% of outdoor gear
purchasers either felt that the Sportsman’s Warehouse, Inc.’s logo (1) is put out,
(2) needed permission or approval, or (3) is affiliated with the same company that
puts out the “Bass Pro Shops Sportsman’s Warehouse” logo. In addition,
respondents were asked their reasons for selecting the Sportsman’s Warehouse,
Inc. logo from the array. [An] analysis revealed that 22% of the respondents who
had indicated that the Sportsman’s Warehouse, Inc. logo and the “Bass Pro Shops
[Sportsman’s] Warehouse” logo had a common source or were somehow
connected mentioned that similarity of the names [was] the reason…
It was not surprising that a significant segment of the survey respondents
believed that there was some affiliation between petitioner and respondent.
Because the only similarity between any of the 7 marks in the survey was that
petitioner’s mark and respondent’s mark both feature the term “Sportsman’s
Warehouse,” this would suggest to some survey respondents that they should find
an affiliation between those two marks. For this reason, we find the survey results
to be of little probative value.
*
To the extent that petitioner has established actual confusion, it is
confusion resulting from the common use of this merely descriptive term for
which petitioner has not acquired distinctiveness. Thus, petitioner assumed this
risk in using a descriptive term as part of its mark.
D. FALSE ADVERTISING SURVEYS
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139, 1144-1146 (C.D. Cal. 2007)
Here, Plaintiffs provide the Court with a pilot survey as preliminary
evidence of consumer deception. The survey questionnaire asked consumers from
four different cities to answer various questions after viewing both of Defendant’s
challenged commercials. The survey involved answering questions “based only
on what the consumer saw in the commercials, and not based on any independent
knowledge the consumer might have.”…The survey asked, “Based on the
commercials, does Angus beef refer to where on the cow the meat comes from, a
type of cattle, neither statement is true, both statements are true, or you don't
know?”…The survey generally asked consumers to select one of four potential
answers to the questions posed about what the commercials said…
Plaintiffs state that “a statistically significant number of participants were
misled by the commercials into believing that Angus is a cut of meat rather than a
14
breed of cattle, that Angus beef is an inferior type of meat, and that Angus beef
emanates from the rear-end and/or anus of beef cattle.”…Defendant argues that
the survey is unreliable, and these conclusions are therefore baseless…The Court
agrees with Defendant that the survey should be given very little weight.
The Ninth Circuit has stated that “surveys in trademark cases are to be
admitted as long as they are conducted according to accepted
principles.”…“Technical unreliability goes to the weight accorded a survey, not
its admissibility.”…The weight and “evidentiary value of a survey’s results rest
upon the underlying objectivity of the survey itself…
Plaintiffs’ survey uses leading and suggestive questions, and consumers
were not permitted to articulate their own impressions of the commercials.
Typically, consumer perception surveys begin with open-ended questions that
permit consumers to identify the primary message of a commercial and any
source of deception…In Plaintiffs’ survey, the questions were unfairly framed as
to beg the results that Plaintiffs ultimately received. Consumers were given
responses that suggested the answers that Plaintiffs wanted. By providing the
consumers with the suggested response, Plaintiffs increased the likelihood of
biased results. Further, Plaintiffs’ survey is worded in such a way as to obscure
whether any inference suggested by the commercial was negated because the
consumer understood the joke. These deficiencies in the survey’s design weaken
the relevance and credibility of the survey evidence to the point where it sheds
little if any light on the issue of likelihood of deceiving consumers.
*
Plaintiffs lack any evidence that establishes actual injury and causation.
Plaintiffs’ survey does not address whether Plaintiffs will experience any
particular harm. Rather, the survey questions ask consumers to give their general
feelings about purchasing Angus burgers and do not explore consumers’
impressions on whether Plaintiffs, rather than any other competitors, would be
damaged. Based on this evidence, the Court cannot conclude that Plaintiffs are
harmed specifically by any potentially false or misleading representations in the
commercial rather than just the mere advertisement of a competing product that
attempts to use effective marketing techniques. Thus, this evidence is not
sufficient to make Plaintiffs’ necessary showing of actual injury and causation.
The Procter & Gamble Company v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *10, *12
& n.19, *13 (D. Utah 2008)
In the First Circuit case Cashmere & Camel Hair Mfrs. Institute v. Saks
Fifth Ave,…the court held that because a defendant does not dispute that the
statement is a literal falsity claim, the presumption of consumer deception in
plaintiff’s favor and the defendant’s failure to present evidence to rebut the
presumption satisfied the plaintiff’s burden of demonstrating consumer deception
on its claim. Similarly, in the present case the presumption of consumer confusion
arising from the literally false statement was unrebutted. Defendants argued that
[Plaintiff’s expert’s] survey evidence, the only evidence on the issue, was not
sufficient, but presented no evidence of their own to rebut either the presumption
15
or the [Plaintiff’s expert’s] testimony. Therefore, the presumption by itself is
sufficient for Plaintiff to meet its burden of demonstrating consumer
deception…Thus,…in order to recover damages or obtain equitable relief under
the Lanham Act, a plaintiff must also show that either: (1) the challenged
advertisement is literally false, or (2) while the advertisement is literally true it is
nevertheless likely to mislead or confuse consumers."…
…the unrebutted presumption of consumer confusion arising from the
literal falsity of the Amvox Message was sufficient to establish consumer
confusion, the Court will address Defendants’ arguments on the survey
evidence…[n.19 Some courts also apply a presumption of materiality upon a
finding of literal falsity. See, e.g., Richard J. Leighton, Literal Falsity by
Necessary Implication: Presuming Deception Without Evidence in Lanham Act
False Advertising Cases, 97 Trademark Rep. 1286, 1291 n.19 (2007)(citing
cases).]…Defendants argue that [Plaintiff’s expert’s] testimony is insufficient
because he surveyed persons other than those who were known to actually have
heard the Amvox message. As this Court noted in its Order denying Defendants’
Daubert challenge to the admissibility of [Plaintiff’s expert’s] testimony, such
challenges to the survey are credibility challenges for the jury to resolve…
Having reviewed the record, the Court finds that there was no need for
evidence on consumer confusion or deception because the unrebutted
presumption arising from the literally false Amvox Message satisfied Plaintiff’s
burden to show consumer confusion or deception…
E. FAME/DILUTION SURVEYS
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 569 (S.D.N.Y. 2007)
…Moreover, with respect to the trademark dilution component of the
[Plaintiff’s] Survey, the Special Masters [Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 2007 U.S. Dist. LEXIS 92167, *62-*66 (S.D.N.Y. 2007)] found that
[Plaintiff’s expert’s] analysis was plagued by the same methodological flaws
present in the confusion component, and also “proceeds from a fundamental
misunderstanding of the theory of dilution by blurring,”…improperly conflating it
with consumer confusion…
The Board of Regents, The University of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d
657, 675 & n.14, 676 & n.15 (W.D. Tex. 2008)
[Defendant’s] primary argument goes to the third issue, the actual
recognition of the mark, and contends that [Plaintiff’s] mark is not sufficiently
recognized on a national level to be famous. They base this argument on their
expert…who conducted a national survey he contends demonstrates that only
5.8% of respondents in the United States “associated the UT registered longhorn
logo with UT alone” and that “only 21.1% of respondents in Texas associated the
UT registered longhorn logo with UT alone.”…As an initial matter, it simply does
not matter, for purposes of a federal dilution cause of action, what the results are
16
of a survey conducted of people in the Austin metropolitan area or the State of
Texas. As noted above, the TDRA specifically requires that the mark be “widely
recognized by the general consuming public of the United States.”…
…[Defendant’s expert] conducted his survey using a test group and a
control group…For the test group he used the UT LSL that is registered with the
Federal Register (however he showed it to participants in white with a white
background, rather than the burnt orange color it almost invariably appears in, or
against). For the control group he used the longhorn or “the cow's head” from the
Longhorn World Championship Rodeo logo…[n.14 Note that in his survey
[Defendant’s expert] only used the longhorn portion of this graphic (i.e., not the
entire logo.)] [Defendant’s expert] contends that he used this alternative longhorn
depiction because “[r]espondents who associate the ‘control’ symbol with UT are
either guessing or indicating that any depiction of a longhorn steer will be
associated with UT.”…
…The evidence shows that [Defendant’s expert] did not test the LSL in
the burnt orange color in which it almost invariably appears (apparently survey
respondents were shown a “whited out” version of the LSL)…When confronted
with this fact -- that the mark he was ostensibly attempting to test was not being
shown to the general consuming public in the manner in which they would be
exposed to in the marketplace – [Defendant’s expert] stated UT’s mark, the LSL,
is used in a wide variety of contexts, and picking any one of them would be to
bias the results…It is difficult to understand how it would bias the results to show
the general consuming public the mark in the typical circumstance in which the
public would confront that mark in the marketplace, rather than showing them it
in a manner in which they would likely not confront it. [n.15 The Court’s view is
supported by the leading treatise. In a slightly different context – likelihood of
confusion – McCarthy notes that while survey evidence “is sometimes said to be
evidence of ‘actual’ confusion, it is so only to the extent that the survey mirrors
the real world setting which can create an instance of actual confusion.”…The
same overarching principle applies to a the [sic] dilution cause of action. See 15
U.S.C. § 1125 ©(2)(A) (the TDRA specially requires that the mark be “widely
recognized by the general consuming public of the United States as a designation
of source of the goods or services of the mark’s owner”; see also adidas America,
[529 F. Supp. 2d 1215 @ 1244.])
Nike, Inc. v. Nikepal International, Inc., 2007 U.S. Dist. LEXIS 66686, *12-*13 (E.D. Cal. 2007)
…[Plaintiff] retained [an expert] to design a survey to measure, inter alia,
the likelihood of dilution of the NIKE brand as a result of [Defendant’s] use of the
NIKEPAL mark…
In designing his study, [Plaintiff’s expert] used a universe of survey
participants randomly selected from lists of companies that [Defendant’s]
deposition testimony identified as the sources for Nikepal’s current and
prospective customers…[Plaintiff’s expert] conducted the survey by phone and
asked respondents about their perception of a website called nikepal.com…
17
Once survey respondents were screened to confirm that they were the
persons most responsible for ordering laboratory equipment at their business, they
were asked: “What if anything, came to your mind when I first said the word
Nikepal?” Many survey respondents…
identified Nike. [Plaintiff’s expert] testified that his survey revealed that the vast
majority of respondents, 87%, associated Nikepal with Nike; that is, when they
encounter the mark NIKEPAL, they think of Nike and/or its offerings…
Visa International Service Association v. JSL Corporation, 533 F. Supp. 2d 1089, 1097
(D. Nev. 2007)
The sixth consideration in determining whether the VISA mark is famous
is the degree of recognition of the mark in the trading areas and channels of trade
used by the owner of the mark and the person against whom the injunction is
sought. A survey authored by Plaintiff’s expert…found that 99% of respondents,
who were sampled from households with telephones in the United States, were
aware of the VISA brand of payment cards…[Plaintiff’s expert] also found that
85% of respondents identified VISA when asked what kinds of payment cards
they could think of…Accordingly, this factor weighs greatly in favor of a finding
that the VISA mark is famous.
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1245 n. 11
(D. Or. 2007)
n.11 Given the extensive evidence [Plaintiff] submitted as to each of the
statutory “fame” factors, its failure to conduct a fame survey is not dispositive…
F. DAUBERT/ADMISSIBILITY ISSUES 6
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320, *20,
*24-*25, *31-*33 (S.D.N.Y. 2007)
The [Plaintiff’s expert’s] Survey is so flawed that its probative value is
substantially outweighed by its potential for unfair prejudice and the likelihood
that it will confuse or mislead the jury. Two major defects strip the [Plaintiff’s
expert’s] Survey of probative value. Specifically, the survey (1) employed a
format that failed to approximate real world conditions and was impermissibly
leading, and (2) used improper stimuli.
*
6
For a review of cases in which successful Daubert/Admissibility issues were raised see Gerald L. Ford, “Survey Evidence –
Successful Challenges Since Daubert,” and for a review of unsuccessful Daubert/Admissibility challenges see Dale M. Cendali
and Laura E. Golub, “The Admissibility of Survey Evidence After Daubert,” both published in 2003 in the International
Trademark Association 125th Annual Meeting proceedings. Also see G. Kip Edwards, “Lanham Act Surveys After Daubert:
Lessons Learned So Far” published in the 2001 Practising Law Institute handbook Litigating Copyright, Trademark & Unfair
Competition Cases; G. Kip Edwards, “Making and Defending Daubert Motions—Maximizing Your Chances of Success”
published in the 2002 Practising Law Institute handbook Litigating Copyright, Trademark & Unfair Competition Cases; and
Richard J. Leighton, “Using Daubert-Kumho Gatekeeping to Admit and Exclude Surveys in Lanham Act Advertising and
Trademark Cases,” 92 TMR 743 (2002).
18
In addition to failing to approximate actual marketplace conditions, the
survey’s back-to-back design was impermissibly leading. After viewing the
seriatim display of non-competing products that few if any respondents actually
would have encountered in close physical or temporal proximity in real life, the
respondents were given multiple choice questions in which they were asked
whether they believed a connection, as to source, business relationship, or
sponsorship, existed between the companies whose marks the respondents had
just seen. Rather than measure any actual confusion, however, these questions
were far more likely to generate “demand effects” by suggesting the existence of
a connection between the products that the respondents would not have made on
their own…
*
Here, the [Plaintiff’s expert’s] Survey displayed to respondents a
purported “ad” for [Plaintiff], in the form of a blown-up photo of a Blackberry
cellphone that prominently featured the [Plaintiff’s] logo. That “ad”, however,
was not an actual advertisement that a prospective user of [Plaintiff’s] products
would ever encounter but rather was a page prepared by [Plaintiff] as promotional
material, designed for viewing by [Plaintiff’s] direct business-to-business
customers…Thus, because [Plaintiff’s] mark was not shown as it is used in
commerce,”…its use in the survey was improper and further detracts from the
survey’s probative value.
In addition, the pages of Cargo magazine were not sufficiently
representative of [Defendant’s] product…Although the pages were taken from an
actual issue of Cargo, a respondent, viewing the Cargo cover and interior page,
would be highly likely to believe that Cargo was involved in the same line of
business as the company that produced the [Plaintiff’s] “ads”, namely, providing
wirelss or web-related products and services, when in fact Cargo devoted only a
small percentage of its overall content to such products and services.
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 561-563 (S.D.N.Y.
2007)
District courts are tasked with the “special obligation”…of serving as the
“gatekeepers” of expert evidence, and must therefore decide which experts may
testify and present evidence before the jury…Recognizing that a purported
expert’s opinion often carries special weight with the jury even when
unwarranted,…the Supreme Court has directed district courts to “ensure that any
and all scientific testimony or evidence admitted is not only relevant, but
reliable.”…Courts are given “broad latitude” in deciding “how to determine
reliability” and in making the “ultimate reliability determination.”…In doing so,
however, courts are reminded that the Federal Rules of Evidence favor the
admissibility of expert testimony,…and their “role as gatekeeper is not intended
to serve as a replacement for the adversary system.”…Indeed, “where the expert’s
conclusion is drawn from a reliable methodology…the correctness of that
conclusion is still an issue for the finder of fact.”…As a result, excluding expert
testimony is the exception rather than the rule,…particularly since “vigorous
19
cross-examination, presentation of contrary evidence, and careful instruction on
the burden of proof” can serve as the means to “attack shaky but admissible
evidence.”…[Footnotes omitted.]
*
As evident from the Report and Recommendation…issued by…[the
Special Masters, Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2007 U.S.
Dist. LEXIS 92167 (S.D.N.Y. 2007)], much of the expert testimony proffered by
the parties here warrants exclusion. The Special Masters acknowledged that their
recommendation to exclude the majority of the expert testimony may seem
“drastic.”…They justify their conclusions, inter alia, on the ground that while
methodological flaws in a survey generally raise questions of weight rather than
admissibility, “questions of weight, when sufficiently accumulated, become so
serious as to require exclusion.”…
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347, 367-368
(W.D.N.Y. 2008)
In the instant case, [Defendant] has presented evidence regarding actual
instances of consumer confusion, as well as survey evidence. With regard to the
survey evidence, [Defendant] states that its “professional market survey”
“confirms that there is a significant tendency for consumers to be
confused…However, the Court declines to consider the pilot survey, since
[Defendant] did not produce it in discovery…Even if [Defendant] had produced
the survey summary during discovery, the Court would exclude it in any event,
since it does not satisfy the criteria for admissibility…
Here, [Defendant’s] “survey” is a two-page summary of a pilot survey
involving 52 consumers…[n.18 [Defendant] did not submit an affidavit from the
individuals(s) who conducted the pilot survey.]…The summary does not include
photographs of the actual bottles used. Moreover, although the summary states
that the consumers “were asked a series of questions designed to assess confusion
as to source, confusion as to association or connection, and confusion as to
sponsorship or authorization, and the reasons for their confusion,” it does not
provide the actual questions asked or answers given…Consequently, the Court
cannot determine if the summary evidence is reliable…
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495, *11-*12 (E.D. Tex. 2008)
The Court also agrees that [Plaintiff] cannot prove that [Defendant’s]
actions create a likelihood of confusion…[Defendant] has attached as an exhibit
the results of a survey performed by its expert…the challenges to which this
Court has addressed in a separate order. [Defendant’s expert] finds no likelihood
of confusion. The Court has also previously excluded the report of [Plaintiff’s]
expert…finding such survey to be too flawed to be reliable. As [Defendant]
correctly points out, only [its expert’s] survey addresses the issue of source
confusion.
20
Hogdon Powder Company, Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178,
1181-1182 (D. Kan. 2007)
Defendant does not contest [Plaintiff’s expert’s] qualifications or analysis
of the survey data. Instead, defendant argues that the survey is unreliable, and
thus, [Plaintiff’s expert’s] expert opinion does not rest on a reliable foundation
and is irrelevant to the task at hand. Generally, public recognition surveys may be
used to establish a likelihood of confusion…Technical and methodological
deficiencies in a survey usually relate to the weight to be given to the survey, not
its admissibility…But, when the “deficiencies are so substantial as to render the
survey’s conclusions untrustworthy, a court should exclude the survey from
evidence.”…Daubert underscores the trial court’s responsibility to ensure that
survey evidence is both reliable and relevant…
*
For the following reasons, the court finds that the survey was not
conducted according to generally accepted survey principles. First, the survey
universe is underinclusive. The survey participants are people who visited
plaintiff’s promotional booth at one shooting tournament--the 2006 Grand
American. Only people who attended the tournament and were already familiar
with plaintiff or were interested in learning more about plaintiff’s products were
surveyed. Second, the survey participants are not representative of the universe of
prospective buyers because they were all familiar with plaintiff or in close
proximity to plaintiff’s promotional material. Other members of the relevant
universe are unrepresented. Third, the survey question is not clear or precise. The
survey question, “Who makes these gunpowders?,” is confusing. It implies that
the survey is asking about gunpowder manufacturers, but the “correct” answers
include companies that only sell, not manufacture, gunpowder. The phrasing of
the question could have skewed the results.
Finally, the survey process was not objective. The survey was designed by
plaintiff’s counsel. Nothing in the record suggests that plaintiff’s counsel has any
experience with designing or conducting market surveys. Plaintiff’s employees
conducted the survey while they were wearing shirts and hats with plaintiff’s
logo. The survey was taken at plaintiff’s promotional booth, which had large signs
with plaintiff’s logo and other promotional material on display. The participants
were given free samples of plaintiff’s gunpowder and a chance to win eight
pounds of gunpowder. Additionally, a biased method was used for the selection of
participants--only people familiar with plaintiff were surveyed…
After reviewing the record, the court finds that the…Survey is
untrustworthy and inadmissible. Because [Plaintiff’s expert’s] expert opinions and
report rely on the untrustworthy survey, they do not meet the standards of Federal
Rule of Evidence 702 or Daubert and are inadmissible.
21
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 864 n.8 (10th Cir. 2008)
n.8 That brings us to the question of [Plaintiff’s] survey evidence.
Evidence of actual confusion is often introduced through the use of surveys,
“although their evidentiary value depends on the methodology and question
asked.”…Following a Daubert hearing, the district court concluded flaws in
methodology made [Plaintiff’s] survey data and supporting expert testimony
unreliable “as a basis for drawing conclusions about confusion or the likelihood of
confusion in the relevant market of potential purchasers of the type of services
offered by [Plaintiff]…A careful review of the record in light of the applicable
law makes clear the district court most assuredly did not abuse its discretion in
excluding from trial [Plaintiff’s] survey evidence…The survey suffered from
question bias, interviewer bias, location bias, participant bias, and timing bias…
University of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763, *3-*6, *8 (D. Kan. 2008)
The Court has broad discretion in deciding whether to admit expert
testimony…Fed. R. Evid. 702 provides that a witness who is qualified by
knowledge, skill, experience, training or education may testify in the form of
opinion or otherwise as to scientific, technical or other specialized knowledge if
such testimony will assist the trier of fact to understand the evidence or to
determine a fact in issue, “if (1) the testimony is based upon sufficient facts or
data, (2) the testimony is the product of reliable principles and methods, and (3)
the witness has applied the principles and methods reliably to the facts of the
case.”…
The proponent of expert testimony must show “a grounding in the
methods and procedures of science which must be based on actual knowledge and
not subjective belief or unaccepted speculation.”…In order to determine whether
an expert opinion is admissible, the Court performs a two-step analysis. “[A]
district court must [first] determine if the expert’s proffered testimony . . . has ‘a
reliable basis in the knowledge and experience of his discipline.’” …Second, the
district court must further inquire into whether the proposed testimony is
sufficiently “relevant to the task at hand.”…An expert opinion “must be based on
facts which enable [him] to express a reasonably accurate conclusion as opposed
to conjecture or speculation . . . absolute certainty is not required.”…And it is not
necessary to prove that the expert is “indisputably correct,” but only that the
“method employed by the expert in reaching the conclusion is scientifically sound
and that the opinion is based on facts which satisfy Rule 702’s reliability
requirements.”…
Daubert sets forth a non-exhaustive list of four factors that the trial court
may consider when conducting its inquiry under Rule 702: (1) whether the theory
used can be and has been tested; (2) whether it has been subjected to peer review
and publication; (3) the known or potential rate of error; and (4) general
acceptance in the scientific community…But “the gatekeeping inquiry must be
tied to the facts of a particular case.”…
22
It is within the discretion of the trail court to determine how to perform its
gatekeeping function under Daubert….The most common method for fulfilling
this function is a Daubert hearing, although such a process is not specifically
mandated…
*
As a general rule, “public recognition surveys may be used to establish a
likelihood of confusion."…And “[t]echnical and methodological deficiencies in a
survey usually relate to the weight to be given to the survey, not its
admissibility.”…However, “when the deficiencies are so substantial as to render
the survey’s conclusions untrustworthy, a court should exclude the survey from
evidence.”…To determine if a survey is reliable and trustworthy, the Court
considers a variety of factors…
The Procter & Gamble Company v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *12 (D.
Utah 2008)
…Defendants argue that [Plaintiff’s expert’s] testimony is insufficient
because he surveyed persons other than those who were known to actually have
heard the Amvox message. As this Court noted in its Order denying Defendants’
Daubert challenge to the admissibility of [Plaintiff’s expert’s] testimony, such
challenges to the survey are credibility challenges for the jury to resolve…
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565,
*13, *16, *26-*27 (N.D. Ga. 2007)
The plaintiffs object to the admissibility of [Defendant’s] survey on the
basis that, inter alia, the “Thermos Survey” was the wrong survey methodology to
use in concluding that the term “nite lights” was not generic…The plaintiffs’
contention is while it may be true that high usage of a term may show
“genericness,” it does not follow that the lack of usage shows that the term is not
generic…Because of this, the plaintiffs contend that the “Thermos Survey” is
irrelevant to show non- genericness of the mark NITE LITES. The plaintiffs
contend that [Defendant] should have employed a “Teflon Survey” model instead
of the “Thermos Survey.”
*
…The “Thermos Survey” has been repeatedly tested, and a potential error
rate has been identified…
The court is not persuaded that the use by [Defendant] of a “Thermos
Survey” to conclude that a term is not generic is sufficiently beyond the standards
practiced in the field of surveying so as to deem the survey unreliable…
*
…The court finds that [Defendant’s] survey meets the criteria of
helpfulness to the trier of fact given the specific allegations and contentions of
this case.
23
III. BIBLIOGRAPHY
INTELLECTUAL PROPERTY SURVEYS: 2007
BY CIRCUIT
This appendix contains citations, by circuit, for all identified opinions published from February
2007 through mid-2008, in which survey evidence was referenced.
First Circuit
Hasbro, Inc. v. MGA Entertainment, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness)
Second Circuit
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008)
(Likelihood of Confusion)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478 (E.D.N.Y.
2008) (Secondary Meaning)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary
Meaning) (Likelihood of Confusion)
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Pilot Corporation of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007)
(Likelihood of Confusion)
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood of
Confusion)
Starbucks Corporation v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008)
(Dilution)
Third Circuit
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008)
(Genericness) (Secondary Meaning)
24
Fourth Circuit
Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C. 2007)
(Likelihood of Confusion)
Fifth Circuit
The Board of Regents, The University of Texas System v. KST Electric, Ltd., 2007 U.S. Dist.
LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues)
The Board of Regents, The University of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657
(W.D. Tex. 2008) (Fame)
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D. Miss.
2007) (Secondary Meaning)
Sixth Circuit
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325 (E.D.
Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D. Mich.
2008) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800 (E.D.
Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
General Conference Corporation of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist.
LEXIS 45526 (W.D. Tenn. 2008) (Genericness)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (Likelihood of
Confusion)
Seventh Circuit
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (Likelihood of
Confusion)
Sunstar, Inc. v. Alberto-Culver Company, Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007)
(Likelihood of Confusion)
25
Eighth Circuit
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D. Minn.
2008) (Likelihood of Confusion)
Ninth Circuit
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or. 2008)
(Likelihood of Confusion)
California Board Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal. 2007)
(Secondary Meaning)
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False
Advertising)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007)
(Secondary Meaning) (Likelihood of Confusion)
Instant Media, Inc. v. Microsoft Corporation, 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007)
(Likelihood of Confusion)
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution)
Lanard Toys Limited v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
Nike, Inc. v. Nikepal International, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007)
(Dilution)
Nissan Motor Co., Ltd. v. Nissan Computer Corporation, 2007 U.S. Dist. LEXIS 90487
(C.D. Cal. 2007) (Dilution)
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion)
(Dilution)
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007) (Likelihood
of Confusion)
Visa International Service Association v. JSL Corporation, 533 F. Supp. 2d 1089 (D. Nev. 2007)
(Dilution)
26
Tenth Circuit
Hogdon Powder Company, Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
The Procter & Gamble Company v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
University of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Eleventh Circuit
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565
(N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
Charles Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
District of Columbia Circuit
There were no citations from the District of Columbia Circuit during the time period of this
article.
Federal Circuit
There were no citations from the Federal Circuit during the time period of this article.
Trademark Trial & Appeal Board
7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of
Confusion) This opinion is not a precedent of the T.T.A.B.
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
(T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion)
Saint-Gobain Corporation v. 3M Company, 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007)
(Secondary Meaning) This opinion is a precedent of the T.T.A.B.
In re Spirits International N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively
Misdescriptive
27
IV. BIBLIOGRAPHY
INTELLECTUAL PROPERTY SURVEYS: 2007
BY ISSUE
This appendix contains citations, by issue, for all identified opinions published from February
2007 through mid-2008, in which survey evidence was referenced.
Genericness Surveys
Hasbro, Inc. v. MGA Entertainment, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness)
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008)
(Genericness) (Secondary Meaning)
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
General Conference Corporation of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist.
LEXIS 45526 (W.D. Tenn. 2008) (Genericness)
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565
(N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
Secondary Meaning Surveys
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary
Meaning) (Likelihood of Confusion)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478 (E.D.N.Y.
2008) (Secondary Meaning)
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008)
(Genericness) (Secondary Meaning)
Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D. Miss.
2007) (Secondary Meaning)
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
28
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800
(E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
Lanard Toys Limited v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
California Board Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal. 2007)
(Secondary Meaning)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007)
(Secondary Meaning) (Likelihood of Confusion)
Saint-Gobain Corporation v. 3M Company, 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007)
(Secondary Meaning) This opinion is a precedent of the T.T.A.B.
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
(T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion)
Likelihood of Confusion Surveys
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood of
Confusion)
Pilot Corporation of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007)
(Likelihood of Confusion)
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary
Meaning) (Likelihood of Confusion)
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008)
(Likelihood of Confusion)
Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C. 2007)
(Likelihood of Confusion)
29
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (Likelihood of
Confusion)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325
(E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D. Mich.
2008) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800
(E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (Likelihood of
Confusion)
Sunstar, Inc. v. Alberto-Culver Company, Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007)
(Likelihood of Confusion)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D. Minn.
2008) (Likelihood of Confusion)
Lanard Toys Limited v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
Instant Media, Inc. v. Microsoft Corporation, 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007)
(Likelihood of Confusion)
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion)
(Dilution)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007)
(Secondary Meaning) (Likelihood of Confusion)
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007) (Likelihood
of Confusion)
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or. 2008)
(Likelihood of Confusion)
30
Hogdon Powder Company, Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
University of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Charles Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
T.T.A.B.) (Secondary Meaning) (Likelihood of Confusion)
7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of
Confusion) This opinion is not a precedent of the T.T.A.B.
False Advertising Surveys
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False
Advertising)
The Procter & Gamble Company v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
Fame/Dilution Surveys
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Starbucks Corporation v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008)
(Dilution)
The Board of Regents, The University of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657
(W.D. Tex. 2008) (Fame)
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution)
Nike, Inc. v. Nikepal International, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007)
(Dilution)
Nissan Motor Co., Ltd. v. Nissan Computer Corporation, 2007 U.S. Dist. LEXIS 90487
(C.D. Cal. 2007) (Fame)
31
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion)
(Dilution)
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
Visa International Service Association v. JSL Corporation, 533 F. Supp. 2d 1089 (D. Nev. 2007)
(Fame)
Charles Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution)
Geographically Deceptively Misdescriptive
In re Spirits International N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively
Misdescriptive
Daubert/Admissibility Issues
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
The Board of Regents, The University of Texas System v. KST Electric, Ltd., 2007 U.S. Dist.
LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues)
The Great American Restaurant Company v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325
(E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hogdon Powder Company, Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
32
University of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
The Procter & Gamble Company v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565
(N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
Charles Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
33
V. BIOGRAPHICAL INFORMATION
DR. GERALD L. FORD
Ford Bubala & Associates
Dr. Ford is a partner in the marketing research and consulting firm of Ford Bubala &
Associates, located in Huntington Beach, California. As a partner in Ford Bubala & Associates,
he has been engaged in commercial marketing research and consulting for the past thirty-three
years. He is also an emeritus faculty member of the School of Business Administration,
California State University, Long Beach, where he held a full-time teaching position for twentyfive years.
He holds a Bachelor's Degree in Advertising (B.A.) from San Jose State University, a
Master's Degree in Business Administration (M.B.A.) from the University of Southern
California, and a Doctoral Degree in Business Administration (D.B.A.) from the University of
Southern California.
He has spoken at meetings of the Marketing Research Association, the American
Marketing Association, the American Intellectual Property Law Association, the American Bar
Association, the Practising Law Institute, the Intellectual Property Institute of Canada, the NAD,
and the International Trademark Association.
Dr. Ford's papers include “Trademark Surveys: Universe, Questions, and Future
Approaches,” “Responding to Trademark Surveys,” “Dilution Surveys, New Challenges,”
“Dilution Surveys, Update 1998,” “Lanham Act Related Surveys: The Year in Review &
Emerging Issues,” “Lanham Act Surveys: Two Years in Review,” “Lanham Act Surveys:
2000,” “Lanham Act Surveys: 2001,” “Lanham Act Surveys: 2002,” “Lanham Act Surveys:
2003,” “Lanham Act Surveys: 2004,” “Lanham Act Surveys: 2005,” “Intellectual Property
Surveys: 2006,” and “Survey Evidence – Successful Challenges Since Daubert.”
Dr. Ford is also a member of the Editorial Board of The Trademark Reporter®.
As a partner with Ford Bubala & Associates, Dr. Ford has been retained by a variety of
firms engaged in the consumer product, industrial product, and service sectors of the economy to
provide marketing consulting and research services. Approximately one-half of the
consultancies in which Dr. Ford has participated have involved the design and execution of
marketing research surveys.
During the past thirty-three years, Dr. Ford has been retained in a number of litigationrelated consultancies involving intellectual property matters, including matters before U.S.
federal and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark
Office, and the International Trade Commission. Dr. Ford has also been retained in litigationrelated consultancies in intellectual property matters before courts and administrative agencies in
Canada, England, France, Germany, and Norway. Dr. Ford has designed and executed surveys
relating to intellectual property matters, including trademark, false advertising, patent, copyright,
and other related matters.
34