INTA Educational Track: Trademark Surveys in U.S. Litigation – Strategy and Recent Developments

Trademark Surveys in U.S. Litigation – Strategy For Plaintiffs & Defendants in Trademark Litigation.

A practical guide on trademark surveys: what works, what does not and
difficulties to avoid. The panel will discuss required preparation
before you contact an expert; how to find the best expert; and once you
have retained him or her, the care and handling of your expert. Other
topics to be discussed are how to evaluate survey methodology; the
control quandary; choosing the survey population; selecting the
question format; and evaluating the survey results, weaknesses and
strengths. The discussion will include a review of recent case law
developments.

Moderator:

• Julia Anne Matheson, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (United States)

Speakers:

• The Honorable Robert S. Lasnik, Judge, United States District Court, Western District of Washington (United States)
• Robert D. Litowitz, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (United States)
• Hal Poret, Guideline (United States)

Here are my notes from this excellent presentation:  Trademark surveys are a tricky topic for trademark litigators and their clients. They are not required in every case. However, it is hard to predict when judge’s might require a survey and when they won’t. The approach to the survey is very dependent on the products or service related to the product.  Defects in the universe of survey respondents is very important.   Some surveys need to be done in person.  However, on-line surveys are getting more common and accepted.

When hiring a survey expert, find one with litigation experience.  Admissible surveys are tricky to design. Is the issue secondary meaning, blurring, dilution, infringement, genericness?  A trademark survey expert who specializes in litigation will  know not only how to conduct the survey but which legal elements are the ones to focus on. Depose the other side and have them commit to who should be included in the survey universe.  You survey expert may have insights about whether your survey will turn out like you think.

The answers which are available to survey participants should not include elements of bias, should allow for real world realistic way, Be careful what you ask and what you show the survey participants.

Eveready Format:  Works well with famous marks.  Questions can be shown the infringing use only, not Plaintiff’s mark.  Knowledge of Plaintiffs’ marks can only come from the consumer. 

Squirt Format:  Both Plaintiff’s mark and infringing mark are shown, along with thrid party marks.  Use with less known marks.  What if a consumer came across both marks?

Secondary Meaning: Do consumers relate a mark with one company and just one company, etc. What is the name of that company (open ended)?  These are tougher to deign so they are objective. One versus more than one is key.

Generics – Teflon Survey:  Consumers are shown the trademarks with a list of trademark and generic words.  Consumer is asked if each word is a brand name, generic name or both. 

Generics – Thermos Survey:  Show consumer a picture of good and ask what they woudl call it.  Or descrive the product and see what consumer woudl call it.

Dilution:  Show the Defendants product, ask what brand it is, what comany owns the brand or what service is provided. If they respond with Plaintiff’s brand, there is possible dilution. Must also show harm.

Survey Control:  You need a control in many instances.  A survey control ensures that extraneous factors are the the cause of the positive results.Need to control for the shape of the product, the word and other factors. Are people just guess at the most dominant name or brand?  

Survey Outcomes: 20% or higher returns of confusion is a good target.  Over 50% on secondary meaning are solid.  75% results are good for genericness.

Expert Depositions:  You should prepare your expert for deposition since many cases will settle prior to trial.  Settlement leverage will be gained or lost as a result of these deposition outcomes.  Be careful of your email trail with your expert.  It will be discoverable. Cross-examination of the other party’s expert is key.  use your expert to prepare for cross.  Attack the lack of control, bias in questions, universe of survey participants, prior writings, etc.  If you can bring your expert to the opponents’ expert deposition, do so. Beware the special master appointed by the Judge.  This is typically a bad sign since it creates another variable outside your control.

Presentation of Survey Evidence To Judges & Jurors:  Visuals continue to be very important to jurors. Keep it simple. Know your judge.  If the Judge has statistics background, your presentation will be different. 

Common Errors: 

1. Presentation of the trademark to consumer survey participants is very important.  Display the mark exactly as it would appear in commerce. 
2. Make sure the consumers surveyed are the ones that would encounter the brand in commerce. 
3. Watch the parody element. This can be a solid defense and affects the survey that must be conducted.

It is a small world after all.  The presentaiton used the Leelanau Cellers case as an example of a bad survey.  As you know, Traverse Legal is located about 20 miles fromt eh winderies involved in this case. The survey conducted in that case surveyed people generally even though the windery only sold wine at its lotion.  We posted abou this case at:  Chateau Grand Traverse Sues Grand Traverse Distillery Over Name –  Leelanau Cellars Loses Case on Appeal .  Of course, they all pronounced “Leelanau” incorrectly.

Judges often do not deal with survey evidence in tramark cases.  There is varaiability in how Judges deal with these issues.  There is a high risk of an erroneaous decision.