Surveys in Trademark Litigation: Likelihood of Confusion and - - PowerPoint PPT Presentation

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Surveys in Trademark Litigation: Likelihood of Confusion and - - PowerPoint PPT Presentation

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Presenting a live 90-minute webinar with interactive Q&A Surveys in Trademark Litigation: Likelihood of Confusion and Dilution Leveraging Survey Evidence to Demonstrate Consumer Perception in the Marketplace and Avoid Fatal Errors TUESDAY,

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Presenting a live 90-minute webinar with interactive Q&A

Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

Leveraging Survey Evidence to Demonstrate Consumer Perception in the Marketplace and Avoid Fatal Errors

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, JULY 25, 2017

Megan K. Bannigan, Counsel, Debevoise & Plimpton, New York Matt Ezell, Partner, Ford Bubala & Associate, Huntington Beach, Calif.

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

Megan Bannigan, Debevoise & Plimpton LLP Matt Ezell, Ford Bubala & Associates Strafford Webinar July 25, 2017

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

SURVEY EVIDENCE

Lanham Act Matters: Average Surveys Per Year (Reported Decisions Only)

1 6 29 49 47

10 20 30 40 50

1946- 1960 1961- 1975 1976- 1990 1991- 2005 2006- 2016

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

TESTS OF TRUSTWORTHINESS SURVEY EVIDENCE

  • Appropriate Universe
  • Representative Sample
  • Data Accurately Reported
  • Data Analysis Based Upon Accepted Practices
  • Clear and Non-Leading Questions
  • Survey Conducted by Qualified Persons and Proper

Interviewing Procedures

  • Survey Procedures to Insure Objectivity

Source: Federal Judicial Center Manual for Complex Litigation, Fourth 7

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FEDERAL CIVIL JUDICIAL PROCEDURE AND RULES EXPERT TESTIMONY

“An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally

  • bserved.”

Source: Rule 703 Federal Civil Judicial Procedure and Rule, 2015 Revised Edition 8

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LANHAM ACT SURVEYS 2013-2016

Reported Opinions – Surveys Referenced 203 Survey Issues Number of Surveys Likelihood of Confusion 90 Secondary Meaning 37 Genericness 27 False Advertising 27 Dilution 11 Fame 4 Other 13

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

WHY CONDUCT A SURVEY?

  • To Prove Your Claims
  • To Decide Whether to Sue
  • To Assist with Settlement

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

GROWING JUDICIAL SOPHISTICATION

  • One group, the test group…

A second group, the control group… The survey shows a “net” level of…

  • The sample was a random probability

sample…

  • Evidence of a double-blind survey…
  • Survey suffers from order effects…

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • The following slides are general guidelines
  • The applicability of these following guidelines will

depend on the facts of a case

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Issue
  • Forum
  • Universe
  • Methodology
  • Questions and Procedures
  • Stimulus (test and control)
  • Timing
  • Cost
  • Retention of Expert(s)

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Forum
  • Example from Federal Court
  • Example from TTAB

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Universe (using Likelihood of Confusion as an example)
  • Forward confusion (most common):

consumers of junior user’s class of goods/services

  • Reverse confusion:

consumers of senior user’s class of goods/services

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Methodology
  • $$

Intercept

  • $$$ Phone
  • $

Internet

  • $$$ Phone-internet

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FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

TRADITIONAL METHODS Random Digit Dialing

  • Probability Sample
  • Increasing use of cell phones; decreasing

participation rates Mall Intercept

  • Non-probability Sample
  • Good for surveys requiring interaction with

a physical stimulus Mail-Based Surveys

  • Good for surveys requiring access to

specialized universe

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FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

Growth of Online Surveys

  • Online surveys have taken a leading role across the

market research world.

  • Courts and tribunals have largely followed the lead of the

marketing research profession.

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Questions and Procedures
  • Historically surveys asked about source and
  • ther products
  • Amendment to Lanham Act later included

concepts of authorization/approval and business affiliation/connection

  • Survey Question Formats
  • Eveready
  • Squirt

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Test stimulus

Point-of-sale example: Post-sale example:

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Control stimulus
  • “…the expert should select a

stimulus for the control group that shares as many characteristics with the experimental stimulus as possible, with the key exception

  • f the characteristic whose

influence is being assessed.”

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Test examples:

Control examples:

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Timing
  • Typically need 6 to 8 weeks if straightforward
  • Potential delays may include, for example:
  • Unavailable demographics
  • Difficult universe
  • Unresponsive client
  • Holidays and scheduling issues
  • Stimulus creation

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Cost
  • Omnibus for demographics - $1500
  • Pilot study (n=100) - $12k to $20k
  • Full study including report - $40k to $100k

(price includes pilot)

  • Omnibus as a mini-study - $1500 and up

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION

  • Expert(s)
  • Testifying expert
  • Consulting expert
  • Discoverability

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF CONFUSION FACTORS

1) The strength of plaintiff's mark 2) The similarity of the two marks 3) The competitive proximity of the products 4) The likelihood that plaintiff will bridge the gap and

  • ffer a product like defendant's

5) Actual confusion between the products 6) Defendant's good faith 7) The comparable quality of defendant's product 8) Purchaser sophistication.

2nd Circuit Polaroid factors 26

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF CONFUSION: EVEREADY or SQUIRT?

Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976)

  • Show one product
  • “Who makes or puts [this] out?”
  • “Why do you think that”
  • “Do you believe that whoever makes or puts this
  • ut is [or is not] sponsored or approved by

another company; or do you know and have no

  • pinion?”
  • “What company?” “Why?”

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF CONFUSION: EVEREADY or SQUIRT?

Squirt Co. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980)

  • First show one product then show other products
  • Do you think that any of these brands come

from or are affiliated with the same maker or company as the product I showed you first?

  • [If yes] “Which brand or brands do you

believe are from the same company or are affiliated”? “Why?”

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF DILUTION

  • Blurring
  • Impairment of the distinctiveness of a

famous mark by association with another similar mark

  • Tarnishment
  • Reputation of a famous mark is harmed by

association with another similar mark

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF DILUTION

  • Association Tests (most common)
  • Show Product
  • “What do you think of when you see [or hear

the name] of this product?”

  • “Do you associate this product with anything

else?”

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

DILUTION: FAME

  • Under the TDRA, fame requires that the mark be

“widely recognized by the general consuming public under the United States as a designation of source of the goods or services of the mark’s

  • wner.” 15 USC § 1125(c)(2)

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

SURVEYS

  • THAT MADE THE MARK
  • THAT DID NOT MAKE THE MARK
  • Likelihood of Confusion
  • Likelihood of Dilution

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF CONFUSION SURVEY THAT DID MAKE THE MARK

Anheuser-Busch, LLC v. Innvopak Systems

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

ANHEUSER-BUSCH v. INNVOPAK SYSTEMS

2015 TTAB LEXIS 260

Opposer:

Anheuser-Busch

Applicant:

Innvopak Systems

Likelihood of Confusion Survey

...wine products...

WINEBUD

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

ANHEUSER-BUSCH v. INNVOPAK SYSTEMS

Likelihood of Confusion Survey

  • Where?

National internet survey

  • Who?

400 males and females, 21+, purchased wine in the past 6 months and likely to purchase wine in the next 6 months

  • Procedure? Generally followed “Eveready” format

Test cell: WINEBUD mark on plain card Control cell: WINEBLOSSOM mark on plain card (both cells showed context of wine)

  • Results?

24% confusion – Test cell 0% confusion – Control cell

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

ANHEUSER-BUSCH v. INNVOPAK SYSTEMS

  • Applicant’s Criticisms:
  • Opposer’s expert had never done survey re: wine TM
  • 24% confusion constitutes a “small minority” of total

respondents

  • Internet survey may not be reliable
  • 400 respondents is “infinitesimal” compared to

number of beer/wine consumers

  • Board ruled:
  • Gave criticisms little weight; found survey probative

Likelihood of Confusion Survey

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF CONFUSION SURVEY THAT DID NOT MAKE THE MARK Tokidoki v. Fortune Dynamic

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

TOKIDOKI v. FORTUNE DYNAMIC

2009 U.S. Dist. LEXIS 65665 (July 2009)

Plaintiff:

Tokidoki

Defendant:

Fortune Dynamic

Likelihood of Confusion Survey

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

TOKIDOKI v. FORTUNE DYNAMIC

Likelihood of Confusion

  • Where?

Online, geographies where Plaintiff sells goods

  • Who?

Females 15–25 years old Past and potential purchasers of casual flat-heeled shoes

  • Procedure? Squirt format
  • Results?

59% gave Tokidoki – Test cell 40% gave Tokidoki – Control cell

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

TOKIDOKI v. FORTUNE DYNAMIC

  • Survey shortcomings:
  • Leading questions
  • Lack of marketplace reality
  • Survey lacked a proper control stimulus
  • Survey universe and survey geography skewed in

Plaintiff’s favor

  • Court ruled:
  • Survey deserved little or no weight

Likelihood of Confusion

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF DILUTION SURVEY THAT DID MAKE THE MARK

Nat’l Pork Board v. Supreme Lobster & Seafood Co.

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

NATIONAL PORK BOARD v. SUPREME LOBSTER & SEAFOOD CO.

2010 T.T.A.B. LEXIS 225 (June, 2010)

Applicant:

Supreme Lobster & Seafood Co.

Opposer:

National Pork Board

Likelihood of Dilution Survey

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

NATIONAL PORK BOARD v. SUPREME LOBSTER & SEAFOOD CO.

Likelihood of Dilution Survey

  • Where?

Telephone

  • Who?

Past purchasers of fish or seafood

  • Procedure? Exposed to “The Other Red Meat” slogan.

“Thinking about the slogan you just heard, do any other advertising slogans or phrases come to mind?”

  • Results?

35% associated Applicant’s slogan with Opposer’s slogan (“The Other White Meat”)

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

NATIONAL PORK BOARD v. SUPREME LOBSTER & SEAFOOD CO.

Likelihood of Dilution Survey

  • Applicant’s Criticisms:
  • Opposer’s survey failed to replicate the marketplace
  • The survey questions were leading
  • The universe should have been potential purchasers of

salmon

  • The control slogan differed too much from the test

slogan

  • Board ruled:
  • Overruled Applicant’s objections; found survey reliable

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

LIKELIHOOD OF DILUTION SURVEY THAT DID NOT MAKE THE MARK

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. d/b/a Black Bear Micro Roastery

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

STARBUCKS v. WOLFE’S BOROUGH

2013 U.S. App. LEXIS 23114 (November, 2013)

Plaintiff:

Starbucks Corp.

Defendant:

Wolfe’s Borough Coffee, Inc.

Likelihood of Dilution Survey

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

STARBUCKS v. WOLFE’S BOROUGH

Likelihood of Dilution Survey

  • Where?

Telephone survey

  • Who?

600 participants designed to be representative of the U.S. population.

  • Procedure? Asked “What is the first thing that comes to your

mind when you hear the name ‘Charbucks’?” and “Can you name any company or store that you think might offer a product called ‘Charbucks’?”

  • Results?

30.5% said Starbucks

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

STARBUCKS v. WOLFE’S BOROUGH

  • Survey shortcomings:
  • Lack of marketplace reality
  • The survey inquired into associations only with the

isolated word “Charbucks” and failed to present the Charbucks mark as it is encountered in the marketplace

  • 30.5% association of “Charbucks” with Starbucks
  • utside marketplace context
  • Court ruled:
  • Significantly discounted the results of the survey
  • Upheld district courts’ ruling of limited probative value

Likelihood of Dilution Survey

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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution

THANK YOU

Megan Bannigan Debevoise & Plimpton LLP mkbannigan@debevoise.com Matt Ezell Ford Bubala & Associates matte@fordbubala.com