Proving or Defending Against Infringement Addressing Forward, - - PowerPoint PPT Presentation

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Trademark Confusion: Proving or Defending Against Infringement

Addressing Forward, Reverse, Initial Interest, Post-Sale and Affiliation Confusion Challenges

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, MARCH 29, 2016

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta Robert D. Litowitz, Partner, Kelly IP, Washington, D.C. Diane J. Mason, Shareholder, LeClairRyan, San Francisco

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Trademark Confusion: Forward, Reverse, Initial-Interest, Post-Sale and Affiliation

Ted Davis Kilpatrick Townsend & Stockton LLP tdavis@kilpatricktownsend.com

PROVING LIKELY CONFUSION

• the protection against confusion in the

marketplace; and

• the protection of mark owners’ goodwill.

They are:

The Twin Purposes of Trademark Law

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PROVING LIKELY CONFUSION

• Section 2(d) of the Lanham Act, 15 U.S.C.

§ 1052(d);

• Section 32 of the Lanham Act, id. §

1114(1);

• Section 43(a) of the Lanham Act, id. §

1125(a);

• Section 42 of the Lanham Act, id. § 1124;
• the common law; and
• most state statutory unfair competition

causes of action.

They include:

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

Any person who shall, without the consent

• f the registrant ... use in commerce any

reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant. 15 U.S.C. § 1114(1).

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

Any person who … uses in commerce any word, term, name, symbol, or device, or any combination thereof, … which …is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person … shall be liable in a civil action …. 15 U.S.C. § 1125(a).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• source or origin of the parties’ goods or

services;

• sponsorship; and
• affiliation.

Types of actionable likely confusion:

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

A consumer need not believe that the

• wner of the mark actually produced the

item and placed it on the market in order to satisfy § 43(a)’s confusion requirement. The public’s belief that the mark’s owner sponsored or otherwise approved the use

• f the trademark satisfies the confusion

requirement. Famous Horse Inc. v. 5th Ave. Photo Inc., 624 F.3d 106, 109 (2d Cir. 2010) (internal quotation marks omitted).

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

• Univ. of Ga. Athletic Ass’n v. Laite, 756

F.2d 1535 (11th Cir. 1985)

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

D.C. Comics Inc. v. Unlimited Monkey Bus., Inc., 598 F. Supp. 110 (N.D. Ga. 1984)

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PROVING LIKELY CONFUSION

• point-of-sale;

The timing of actionable likely confusion:

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• end consumers who are:

– prudent and not gullible; but also – not necessarily sophisticated;

• upstream consumers in the trade;

Possible victims of likely confusion:

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

[A]ctual trade confusion is highly probative

• n the question of whether a likelihood of

confusion exists, generally, in the marketplace, since [retailers] may be deemed more sophisticated about the

• rigins and sources of product lines than

average consumers. Berkshire Fashions, Inc. v. Sara Lee Corp., 725

• F. Supp. 790, 796-97 (S.D.N.Y. 1989), aff’d, 904

F.2d 33 (2d Cir. 1990).

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

[A plaintiff] need not prove confusion on the part of actual consumers. Prior to 1962, § 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1), required confusion, mistake, or deception by “purchasers as to the source or

• rigin of such goods or services.” In 1962, the

quoted words were deleted, specifically to allow any kind of confusion in support of a trademark infringement action. Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 221 (5th Cir. 1985) (citation omitted).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• end lay consumers who are:

– prudent and not gullible; but also – not necessarily sophisticated;

• upstream consumers in the trade; and,

possibly,

• anyone.

Possible victims of likely confusion can include:

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• point-of-sale;
• pre-sale;

The timing of actionable likely confusion:

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

Initial interest confusion, which is actionable under the Lanham Act, occurs when a customer is lured to a product by the similarity

• f the mark, even if the customer realizes the

true source of the goods before the sale is consummated. Promatek Indus. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987)

PEGASUS PETROLEUM

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PROVING LIKELY CONFUSION

*

• Dr. Seuss Enters. v. Penguin Books USA, Inc.,

109 F.3d 1394 (9th Cir. 1997)

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

In the Internet context, in particular, entering a web site takes little effort – usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership. Brookfield W. Commc’ns Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th Cir. 1999).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

[T]he default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace .... Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1152 (9th Cir. 2011).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

[I]nitial interest confusion is of greatest concern when products are in competition with each other—in those instances, customers may be drawn to a product and identify it with a particular source without realizing until later that it came from elsewhere. Chatam Int’l, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549, 558 (E.D. Pa. 2001), aff’d, 40 Fed. Appx. 685 (3d Cir. 2002).

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• point-of-sale;
• pre-sale; and
• post-sale.

The timing of actionable likely confusion:

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Chrysler Corp. v. Silva, 118 F.3d 56 (1st Cir. 1997)

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Au-Tomotive Gold Inc. v. Volkswagen of Am., 603 F.3d 1133 (9th Cir. 2010)

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PROVING LIKELY CONFUSION

We believe that, in the context of [an] industrial machine, the typical consumer will not assume that the two manufacturers are associated in some way. Rather, where product configurations are at issue, consumers are generally more likely to think that a competitor has entered the market with a similar product. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382-83 (7th Cir. 1996).

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

[A]ny relevant consumer confusion will likely

• ccur prior to sale, if at all .... The inherently

concealed nature of worn underwear diminishes the concern for post-sale confusion…. Munsingwear Inc. v. Jockey Int’l, Inc., 31 U.S.P.Q.2d 1146, 1150 (D. Minn.), aff’d, 39 F.3d 1184 (8th Cir. 1994).

*

Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

• forward confusion; and
• reverse confusion.

The two “directions” of likely confusion:

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Bases of the Likelihood-of-Confusion Test

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)

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PROVING LIKELY CONFUSION

*

Bases of the Likelihood-of-Confusion Test

Masters Software, Inc. v. Discovery Commc’ns, Inc., 725 F. Supp. 2d 1294 (W.D.

• Wash. 2010)

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DEFENSES TO LIKELIHOOD OF CONFUSION

Diane Mason LeClairRyan San Francisco, CA

Defenses - 15 U.S.C. §1115

• Registration not valid
• Abandonment, Genericide, Fraud
• Fair Use
• Prior Use
• Use of mark in violation of anti-trust laws
• Mark is functional
• Equitable defenses
• Laches, Estoppel, Acquiescence

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Challenge Registration

• Abandonment

– 15 U.S.C. §1064 provides that “[a] petition to cancel a registration of a mark… may… be filed… (3) At any time if the registered mark… has been abandoned.” – Use is discontinued with an intent not to resume. 15 U.S.C. §1127. – Intent can be inferred from the circumstances.

• non-use for three consecutive years is prima facie evidence of

abandonment. – For registrations issued under Section 44(e) and Section 66(a), relevant period of non-use begins to run from date of registration. Dragon Bleu (SARL) v. Venm LLC, 112 U.S.P.Q.2D 1925 (T.T.A.B. 2014).

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Challenge Registration

• Improper Licensing
• License without adequate quality control or

supervision by the trademark owner;

– Freecyclesunnyvale v. The Freecycle Network, 626 F. 3d 509 (9th Cir. 2010), court looked at following factors:

• whether The Freecycle Network retained express contractual control
• ver Freecyclesunnyvale’s activities under the trademarks;
• whether The Freecycle Network provided sufficient evidence of

actual control over Freecyclesunnyvale’s activities; and

• whether The Freecycle Network reasonably relied on

Freecyclesunnyvale’s own quality control measures to satisfy the quality control requirement.

• Assignment of rights to a trademark in gross,

without the corresponding sale of any assets.

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Challenge Registration

• Genericide
• Form of abandonment

– (1) what is the genus of the goods or services at issue? – (2) is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001).

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Challenge Registration

• Fraud in obtaining registration
• Registration obtained fraudulently by knowingly making a

false, material representation of fact with the intent to deceive the United States Patent and Trademark Office. See In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). – False statement regarding use of mark;

• Nationstar Mortgage LLC v. Ahmad, 112 U.S.P.Q.2d 1361

(T.T.A.B. 2014).

– Failure to disclose use by others

• But, there is no duty to investigate and report to the PTO all
• ther possible users of the same or similar mark. eCash

Technologies, Inc. v. Guagliardo, 127 F. Supp. 1069, 1079 (C.D. Cal. 2000).

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Classic Fair Use

• Defendant uses mark to describe its goods or services, or

geographic origin, or to name the person involved in running the business, and not as a trademark. 15 USC §1115(b)(4).

• Elements of fair use:

(1) the use of the mark is not a trademark use; (2) the use is fair and in good faith; and (3) the use is only descriptive. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).

• Some confusion is compatible with fair use. KP Permanent

Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).

• Plaintiff that chooses a descriptive term as a mark must live with fact

that others may use the term in its descriptive sense.

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Nominative Fair Use

• Defendant uses plaintiff’s trademark to identify the plaintiff's

goods or services.

• In New Kids on the Block v. News America Publishing Inc, 971 F.

2d 302 (9th Cir. 1992), the Ninth Circuit found defendants can use following three factor test of instead of traditional likelihood of confusion test:

• The product or service must be one not readily identifiable without

use of the trademark;

• Only so much of the mark or marks may be used as is reasonably

necessary to identify the product or service; and

• The user must do nothing that would, in conjunction with the mark,

suggest sponsorship or endorsement by the trademark holder.

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Nominative Fair Use

• In the Third Circuit, Nominative Fair Use is an affirmative defense.

Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211(3d Cir. 2005).

• If plaintiff able to prove a likelihood of confusion under shortened

version of 10-part Lapp factors, then defendant has the

• pportunity to assert nominative fair use as an affirmative
• defense. Three questions must be answered in the affirmative for

the affirmative nominative fair use defense to operate:

1. Is the use of plaintiff's mark necessary to describe both the plaintiff's product and the defendant's product? 2. Is only so much of the plaintiff's mark used as is necessary to describe plaintiff's product? 3. Does the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products?

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SENIORITY/PRIOR USE

• Priority established by use in commerce.
• To assert ownership, a party must be first to have used the mark

in the sale of goods or services

• The first to use the mark is deemed the “senior” user and is able

to enjoin “junior” users from using confusingly similar marks in the same industry and market or within the senior user's natural zone

• f expansion.
• Asserting seniority by a party—or lack thereof by a potential

plaintiff--may be helpful in defending an infringement claim.

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FUNCTIONALITY

• A functional product does not enjoy

trademark protection.

• A feature is functional if it is “essential to

the use or purpose of the article or affects its cost or quality Au-motive Gold, Inc. v. Volkswagon of America, Inc., 457 F.3d 1062 (9th Cir. 2006)

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LACHES

• Affirmative Defense
• Requirements For Establishing Laches
• Undue or unreasonable delay in asserting rights
• Prejudice to the defendant resulting from delay
• For laches to exist, the party asserting laches must show the
• ther party had actual or constructive notice of the mark at

issue

– If ACTUAL knowledge is shown, the effective notice date is the publication date of the application sought to be cancelled. – If NO prior actual knowledge is shown, notice is presumed to be the date

the mark was registered.

• Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., Cancellation Nos. 92056067,

92056080

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ESTOPPEL

• ESTOPPEL
• Affirmative Defense
• Defendant claiming estoppel must show: (1) plaintiff knew defendant

selling potentially infringing products; (2) plaintiff's actions or failure to act led the defendant to reasonably believe that the plaintiff did not intend to enforce its trademark right against defendant; (3) that defendant did not know the plaintiff actually objected to the sale of its potentially infringing product; and (4) due to its reliance on plaintiff's actions, defendant will be materially prejudiced if the plaintiff “is allowed to proceed with its claim.”

• Where any one element is absent, the claim must fail.

AirWair International Ltd. v. Schultz, 84 F.Supp.3d 943 (ND. CA 2015)

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ACQUIESCENCE

• Affirmative Defense
• Defendant must prove following elements:
• Assurances by the plaintiff that the defendant could use the mark
• Assurances from either affirmative consent or implied conduct
• Reliance by the defendant on those representations;
• Undue prejudice
• Involves some kind of “business building.” Pennzoil-Quaker State Co. v.

Miller Oil & Gas Operations, 779 F.3d 290 (5th Cir. 2015).

• Distinguishing feature of the acquiescence defense is the element
• f active or explicit consent to the use of an allegedly infringing
• mark. AirWair International Ltd. v. Schultz, 84 F.Supp.3d 943 (ND. CA

2015)

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PARODY

• Not an affirmative defense.
• Way of arguing no likelihood of confusion.
• The ordinary consumer will not be deceived or confused

because she will see that the defendant's use is a joke.

• Plaintiff's intellectual property must be target of the defendant's

parody.

• Not a parody if defendant appropriates a trademark as a way

to satirize something else in society. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

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PARODY

• Parody not a defense to dilution claim
• Fair Use exemption under the dilution statute

expressly applies to use of a famous mark other than as a designation of source for person’s goods and service. New York Yankees Partnership v. IET Products & Serivces, Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015).

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Thank You

DIANE J. MASON

diane.mason@leclairryan.com 415-913-4911

Proving a Likelihood of Confusion

March 29, 2016

Presented by Robert D. Litowitz

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Proving a Likelihood of Confusion

• “[A] question of law based on underlying facts.”

In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003)

• Trademark owner has burden of proof

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Theme and Story

• Trademark litigation is not unique
• A good theme and story spell success

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Theme

• Theme should be like the opening line of a good

movie trailer

• “Where owning a radio was strictly forbidden, one man found a

way to bring good news to his people.“

• Trailer from “Jakob the Liar”
• Example: There’s no mystery behind why Quality Inns chose

McSleep as the name for the budget motels it planned to build next to McDonald’s restaurants.

• Quality Inns v. McDonald’s, 695 F.Supp. 198 (D. Md. 1988

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• Exposition
• Characters
• Conflict
• Resolution
• Trial story should have a compelling narrative arc and

appeal to fact-finder’s emotions and sense of justice

• Example:
• Now that the search engine Yahoo! is worth billions, Mrs. King

and her Original Texas Yahoo fruitcake company want a piece

• f the pie. Trouble is, the only one who sees a trademark

problem is Mrs. King, who has a billion reasons to think so.

Story

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Theme: Case Study

• Swatch AG v. Beehive Wholesale, LLC, 739 F.3d

150 (4th Cir. 2014)

– Issue: Does SWAP for watches conflict with SWATCH watch mark?

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Swatch’s Theme

• SWA + watches = SWATCH

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Beehive’s Theme

• No one is confused by our very different mark and

product

• POTENZA and TURANZA are secondary to

BRIDGESTONE/lack fame

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Stories

• Swatch

– We spent $ millions, sold $ millions to make SWATCH a well-known name, now SWAP is riding on our coattails

• Beehive

– SWAP watches have been sold since 2003 and there’s been no actual confusion. That’s because everything about our name and product is unique and ties into our products that let you swap out one style for another

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Outcome

• The differences in packaging and overall

appearance of both the marks and the goods are unlikely to lead to consumer confusion

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Case Study: Fuel Clothing v. Nike (D. S.C. 2014)

• Fuel Clothing Co., Inc. v. Nike, Inc., 2014 WL 1155402

(D.S.C. Mar. 20, 2014)

• Fuel Clothing makes athletic gear for action sports,

including snowboarding, and skateboarding

̶ The company has sold clothing for action sports under the mark FUEL since 1992 ̶ Fuel protected its mark against infringement in 5 litigation proceeding and almost 20 companies

• In 2012, Nike introduced an electronic wristband under

the NIKE + FUELBAND mark

̶ Nike promoted the band with extensive advertising, including some promotional t-shirts

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Fuel Clothing v. Nike, (D. S.D. 2014) -- Facts

• FUEL mark is registered in Class 25 for “clothing, namely

hats, shirts, skirts, dresses, swim wear, sweaters, T-shirts, tank tops, socks, belts, and pants”

• NIKE + FUELBAND mark is registered in class 9 for

“electronic monitoring devices” and class 14 for “watches and bracelets”

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Fuel Clothing Theme

• Nike’s fame swamps our smaller company’s efforts

with celebrity endorsements (including skateboarders), and we cannot compete

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Nike’s Theme

• When consumers see the Nike they know we

made the product

• The goods are not sold in the same places
• Fuel Clothing does not sell electronic wrist bands

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Fuel Clothing v. Nike

• Fuel Clothing

̶ Since 1993 less than $20,000 spent in advertising ̶ Fuel operated at a loss during 14 of 19 years

• There are over 1000 federally registered trademarks

including the word “Fuel,” many in the same class as Fuel Clothing

̶ The market was already saturated by the time Nike entered, therefore Nike’s introduction of FUELBAND did not overwhelm Fuel Clothing

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Objective Evidence: Cost of Goods

• How much do products at issue cost?

– Impulse purchase? – Careful purchase? – Distracted shopper? – Educated consumer?

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Fuel Clothing v. Nike

• NIKE + FUELBAND - $169
• Fuel Clothing – leather wristband $16-26
• Nike’s promotional t-shirts – account for less than

1% of all NIKE + FUELBAND sales

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Where Are Goods Sold?

• In brick-and-mortar store?
• Online?
• In same location/trade channel?
• In different locations/trade channels?

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Fuel Clothing v. Nike

• Dissimilar goods
• No Overlapping trade channels

̶ Goods are never sold side-by-side in same stores

̶ Nike uses large retailers or sold exclusively through NIKE and APPLE.

̶ Fuel argues that goods are both sold over the internet

• Court finds the overlap in trade channels to be

insignificant

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Objective Evidence: Advertising

• How and where are goods advertised

– Same media? – Different media?

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Objective Evidence: Intent

• What motivated defendant to choose its mark?

– Likelihood of confusion may be presumed where defendant deliberately mimicked the plaintiff’s mark

• Example: YKK vs. YPP for zippers

– Defendant rejected numerous options as not similar enough to YKK

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Objective Evidence: Intent

• But choosing mark that calls to mind another’s

mark does not necessarily create presumption: No monopoly on two syllable marks with Scandinavian “flair”

– Haagen Dazs v. Frusen Gladje, 493 F.Supp. 73 (S.D.N.Y. 1980)

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Fuel Clothing v. Nike

• Fuel contends that Nike wants more of the action

sports market

• In an effort to gain creditability Nike copied the FUEL

mark.

• Court finds that Nike acted in good faith by

adopting the mark on unrelated goods given the relative weakness of the FUEL mark in the marketplace

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Objective Evidence: Actual Confusion

• The best evidence of the likelihood of confusion,

but is not required

• Actual confusion evidence can be hard to find
• Actual confusion evidence is tricky

– Courts sometimes discount or reject it – Absence of actual confusion over time may help defendant

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Proving Likelihood of Confusion: Experts

• Given the objective facts—the marks, the

products, the purchasers, the trade channels, the advertising, how likely is it or not that confusion will

• ccur?

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Types of Experts

• Survey Experts

– To conduct surveys and present them – To critique surveys

• Other experts

– Linguists – Marketing experts – Industry experts – Legal experts

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Surveys Testing Likelihood of Confusion

• Survey not necessary, especially for flagrant

infringement

• But

– Courts often expect surveys – Lack of survey can hurt – Courts sometime view competing surveys as a “push”

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Survey Fundamentals

• Manual of Complex Litigation, Federal Judicial

Center Reference Guide on Survey Research

– Choose the right people to interview (“the universe”) – Obtain a fair sample – Use qualified interviewers who follow proper procedures – Make questions clear, relevant, non-leading – Analyze and present the results properly and fairly

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Survey Fundamentals: Who to question?

• Potential customers likely to be exposed to the

marks at issue

– Forward confusion—the accused infringer’s customers – Reverse confusion—the trademark owner’s customers

• Relevance is the key: questioning the wrong

people produces irrelevant results

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Survey Fundamentals: What Should Participants Be Shown?

• Survey should strive to replicate real world

– Participants should see the marks at issue as they would when deciding what to buy – Survey should avoid biased or misleading presentations

• Example—showing two marks side-by-side when they are not

sold that way

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Survey Fundamentals: What Questions Should Be Asked

• Eveready format

– Who do you think makes this product, if you know? – Do you think the maker of this machine offers any other products or services?

• If yes, what other products or services?
• What makes you think so?

– Best for when plaintiff’s mark is well know

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Survey Fundamentals: What Questions Should Be Asked

• Squirt format

– [After showing first product] Do you think this product is made by the same company as the product I just showed you? – If yes, what makes you think so?

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Survey Fundamentals: Controls

• Surveys of likelihood of confusion usually need a

control

– A “dummy” stimulus to weed out “confusion” caused by guessing or other factors unrelated to similarity of the marks

• e.g. “Sandoz” in survey to measure whether “Zeneca” for ag

chemicals conflicted with “Seneca” for seeds

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Survey Fundamentals: What Are Good Results

• Rule of thumb—15% or higher

– Courts have accepted 10% or lower, where market is large

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Other Experts

• Linguists

– Can testify about similarity or differences in meaning or sound of marks and strength of marks

• e.g. “Whisper quiet” for laundry dryers is descriptive
• e.g. “Zeneca” audibly different from “Seneca”
• e.g. Similar meanings of “Tornado” and “Cyclone”
• e.g. Similarity between “Swedish Fish” and “Squish Fish”
• e.g. “Mc” prefix transcends McDonald’s

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Other Experts

• Industry expert—how and where products are

sold, advertised

– e.g. Toys and hobbies sold at different stores – e.g. Internet marketing expert explained that “pay per click” ads generate little brand awareness

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Other Experts

• Industry experts (cont.)
• Who buyers are and how they decide

– e.g. purchasers of ladies’ raincoats are careful

– Result—no confusion between DRIZZLE for women’s coats and DRIZZLER for golf jackets

– e.g. Guitarists use instruments’ head stocks to identify brand – e.g. How much attention do shoppers spend looking at a label

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Other Experts

• Legal expert

– To explain procedures at the PTO – To explain search procedures – To express opinion on similarity of mark based on PTO experience

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When to Use Experts

• Preliminary injunction
• Summary judgment
• Trial
• Expert disclosures
• Expert reports
• Daubert motions—expert must be qualified and

her testimony must “fit” (be relevant and useful) and reliable. Rules 702, 703, 403

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Conclusion: Formula for Winning

• Start with a compelling theme
• Tell a compelling story
• Marshal the facts
• Strategically deploy surveys and other experts

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Thank you!

Robert D. Litowitz (rob.litowitz@kelly-ip.com / 202.808.3572)

• Seasoned litigator with experience in litigating trademarks and other

IP rights before the courts, the ITC and the TTAB

• Practice includes litigation, counseling clients, and obtaining,

maintaining, and enforcing their trademark rights, both in the United States and abroad

• Additional expertise in the area of trademark surveys