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, JULY 25, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Megan K. Bannigan, Counsel, Debevoise & Plimpton , New York Matt Ezell, Partner, Ford Bubala & Associate , Huntington Beach, Calif. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Surveys in Trademark Litigation: Likelihood of Confusion and Dilution Megan Bannigan, Debevoise & Plimpton LLP Matt Ezell, Ford Bubala & Associates Strafford Webinar July 25, 2017 Surveys in Trademark Litigation: Likelihood of Confusion and Dilution
SURVEY EVIDENCE Lanham Act Matters: Average Surveys Per Year (Reported Decisions Only) 49 47 50 40 29 30 20 6 10 1 0 1946- 1961- 1976- 1991- 2006- 6 1960 1975 1990 2005 2016 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 7 Manual for Complex Litigation, Fourth 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 observed.” Source: Rule 703 Federal Civil Judicial Procedure and Rule, 2015 Revised Edition 8 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 9 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 10 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… 11 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 12 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) • 13 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 14 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 15 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 16 Surveys in Trademark Litigation: Likelihood of Confusion and Dilution
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 17 specialized universe
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. 18
FACTORS TO CONSIDER IN THE DESIGN AND USE OF SURVEYS IN LITIGATION Questions and Procedures • • Historically surveys asked about source and other products • Amendment to Lanham Act later included concepts of authorization/approval and business affiliation/connection Survey Question Formats • • Eveready • Squirt 19 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: 20 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 of the characteristic whose influence is being assessed.” 21 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: • 22 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 23 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 24 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 25 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 offer 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. 2 nd Circuit Polaroid factors 26 Surveys in Trademark Litigation: Likelihood of Confusion and Dilution
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