Trademark Confusion: Proving or Defending Against Infringement - - PowerPoint PPT Presentation

Trademark Confusion: Proving or Defending Against Infringement

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

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

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta Charles M. Allen, Shareholder, Goodman Allen & Filetti, Richmond, Va. Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.

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

Ted Davis Kilpatrick Townsend & Stockton LLP

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

6

PROVING LIKELY CONFUSION

• Section 32 of the Lanham Act, 15 U.S.C.

§ 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

7

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).

8

Bases of the Likelihood-of-Confusion Test

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).

9

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

• source or origin of the parties’ goods or

services;

• sponsorship; and
• affiliation.

Types of actionable likely confusion:

10

Bases of the Likelihood-of-Confusion Test

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).

11

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

12

Bases of the Likelihood-of-Confusion Test

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

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

PROVING LIKELY CONFUSION

13

Bases of the Likelihood-of-Confusion Test

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

PROVING LIKELY CONFUSION

• point-of-sale;

The timing of actionable likely confusion:

14

Bases of the Likelihood-of-Confusion Test

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:

15

Bases of the Likelihood-of-Confusion Test

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).

16

Bases of the Likelihood-of-Confusion Test

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).

17

Bases of the Likelihood-of-Confusion Test

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:

18

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

• point-of-sale;
• pre-sale;

The timing of actionable likely confusion:

19

Bases of the Likelihood-of-Confusion Test

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).

20

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

21

Bases of the Likelihood-of-Confusion Test

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

PEGASUS PETROLEUM

PROVING LIKELY CONFUSION

22

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

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

Bases of the Likelihood-of-Confusion Test

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).

23

Bases of the Likelihood-of-Confusion Test

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).

24

Bases of the Likelihood-of-Confusion Test

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).

25

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

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

The timing of actionable likely confusion:

26

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

27

Bases of the Likelihood-of-Confusion Test

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

PROVING LIKELY CONFUSION

28

Bases of the Likelihood-of-Confusion Test

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

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).

29

Bases of the Likelihood-of-Confusion Test

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).

30

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

• forward confusion; and
• reverse confusion.

The two “directions” of likely confusion:

31

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY CONFUSION

32

Bases of the Likelihood-of-Confusion Test

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

PROVING LIKELY CONFUSION

33

Bases of the Likelihood-of-Confusion Test

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

PROVING LIKELY CONFUSION

34

Bases of the Likelihood-of-Confusion Test

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

• Wash. 2010)

PROVING LIKELY CONFUSION

Theodore H. Davis Jr.

404.815.6534 Tdavis@kilpatricktownsend.com

WWW.GOODMANALLEN.COM

TEST FOR LIKELIHOOD OF CONFUSION

CHUCK ALLEN GOODMAN, ALLEN & FILETTI RICHMOND, VA

36

Test for Likelihood of Confusion

In ex parte matters

Refusal under Section 2(d) of the Trademark Act in applications for registration filed with the USPTO

In inter partes proceedings before the TTAB

Notice of Opposition to registration of a trademark application Petition to Cancel a federal registration

In Civil Actions

Trademark infringement

37

Du Pont Factors

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)

 (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.  (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.  (3) The similarity or dissimilarity of established, likely-to-continue trade channels.  (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.  (5) The fame of the prior mark (sales, advertising, length of use).  (6) The number and nature of similar marks in use on similar goods.  (7) The nature and extent of any actual confusion.  (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

38

Du Pont Factors

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)

 (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).  (10) The market interface between applicant and the owner of a prior mark:  (a) a mere "consent" to register or use.  (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.  (c) assignment of mark, application, registration and good will of the related business.  (d) laches and estoppel attributable to owner of prior mark and indicative of lack

• f confusion.

 (11) The extent to which applicant has a right to exclude others from use of its mark

• n its goods.

 (12) The extent of potential confusion, i.e., whether de minimis or substantial.  (13) Any other established fact probative of the effect of use.

39

Du Pont Factors

• Two-Prong Test

– The Marks

• Appearance
• Sound
• Meaning
• Overall Commercial Impression

– Goods/Services

• Same or related
• As described in the application and registration
• Reasonable Person Test

40

Applying Du Pont Factors

41

Applying Du Pont Factors

42

Factors Vary by Jurisdiction

2nd Cir – Polaroid Test

Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961)

(1) the strength of [plaintiff's] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant's good faith in adopting its

• wn mark,

(7) the quality of defendant's product, (8) and the sophistication of the buyers

43

Factors Vary by Jurisdiction

4th Cir- Pizzeria Uno

Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527, 224 U.S.P.Q. 185 (4th Cir. 1984)

 (1) the strength or distinctiveness of the mark;  (2) the similarity of the two marks;  (3) the similarity of the goods/services the marks identify;  (4) the similarity of the facilities the two parties use in their businesses;  (5) the similarity of the advertising used by the two parties;  (6) the defendant's intent;  (7) actual confusion

Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234, 242, 42 U.S.P.Q.2d 1266 (4th Cir. 1997); Perini Corp. v. Perini Construction, Inc., 915 F.2d 121, 127, 16 U.S.P.Q.2d 1289 (4th Cir. 1990)

 (8) the proximity of the products as they are actually sold;  (9) the probability that the senior mark owner will "bridge the gap" by entering the defendant's market;  (10) the quality of the defendant's product in relationship to the quality of the senior mark owner's product; and  (11) the sophistication of the buyers

44

Weight of Factors Vary Case by Case

• The weight of the evidentiary elements are not the

same in all cases. As the facts of each case differ so does the weight of the factors.

“Rosetta Stone contends that the district court's failure to consider all nine of the traditional likelihood-of- confusion factors was reversible error. We cannot agree. This judicially created list of factors is not intended to be exhaustive or mandatory. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (setting forth factors one through seven); see also Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463-64 (4th Cir. 1996) (identifying factors eight and nine). These "factors are not always weighted equally, and not all factors are relevant in every case." Louis Vuitton, 507 F.3d at 259-60. In fact, "there is no need for each factor to support [the plaintiff's] position on the likelihood of confusion issue." Synergistic Int'l, LLC

• v. Korman, 470 F.3d 162, 171 (4th Cir. 2006). Rather, the confusion "factors are only a guide--a catalog of

various considerations that may be relevant in determining the ultimate statutory question of likelihood of confusion." Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992). Accordingly, there is no hard and fast rule that obligates the district court to discuss each non-mandatory factor.” Rosetta Stone , Ltd. v. Google Inc., 676 F.3d 144, 153-54 (4th Cir. 2011)

45

Practice Tips

Present evidence based on factors for the Jurisdiction

If USPTO, TTAB or Federal Circuit, du Pont factors If civil action, check factors for the particular jurisdiction

Remember it is a subjective test determined on a case by case basis

Consider the circumstances surrounding the facts in your case Consider whether a reasonable person in your target market would be confused

46

WWW.GOODMANALLEN.COM

DEFENSES

CHUCK ALLEN GOODMAN, ALLEN & FILETTI RICHMOND, VA

47

Assertion of Right to Mark

Registration: Prima facie evidence of the validity

• f the

Registered mark Registration of the mark Registrant’s ownership of the mark Registrant’s exclusive right to use the registered mark in commerce on goods/services listed in the registration

Incontestable Registration: Conclusive evidence

• f aforementioned validities

48

Defenses – 15 U.S.C. §1115

• Challenge Registration

– Abandonment – Genericide – Fraud

• Equitable Defenses

– Laches, estoppel and acquiescence

• Refute Likelihood of Confusion

– Fair use – Senior user

49

Fair Use

Classic Fair Use

Defendant uses the plaintiff’s mark to describe the defendant’s own product KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004) Plaintiff has the burden of proving likelihood of confusion A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have the burden to negate confusion

50

Fair Use

Nominative Fair Use Definitions:

Defendant uses the plaintiff’s mark to identify the plaintiff’ goods where the trademark is the only practical way to refer to the plaintiff Defendant use the plaintiff’s mark to refer to plaintiff’s product in order to better describe defendant’s product

• r service

Types:

Comparative advertising Creative works – motion pictures, novels Parody

51

Nominative Fair Use

Ninth Circuit – Different Test for Likelihood of Confusion  The alleged infringer uses the plaintiff’s trademark to describe plaintiff’s goods or services AND

Trademark is needed to describe the plaintiff’s goods/services; Use of mark is reasonably necessary; and User does not suggest sponsorship or endorsement by plaintiff.

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308, 23 U.S.P.Q.2d 1534, 1539 (9th

• Cir. 1992)

52

Nominative Fair Use

Third Circuit – Affirmative Defense  Use of the plaintiff’s mark is necessary to describe both the plaintiff’s product and the defendant’s product  Defendant uses so much of plaintiff’s mark as necessary to describe plaintiff’s product  Defendant’s conduct or language reflect true and accurate relationship between plaintiff and defendant’s products or services

Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 76 U.S.P.Q.2d 1769 (3d Cir. 2005)

53

WWW.GOODMANALLEN.COM

CHARLES M. ALLEN

CALLEN@GOODMANALLEN.COM 804-346-0600

• MR. ALLEN’S IP PRACTICE INCLUDES:
• CLIENT COUNSELING IN ALL VARIETY OF IP MATTERS
• PROSECUTION AND PORTFOLIO MANAGEMENT OF PATENTS AND TRADEMARKS
• LICENSING AND OTHER TRANSACTIONS
• PATENT INFRINGEMENT ACTIONS
• TRADEMARK INFRINGEMENT ACTIONS
• TRADEMARK OPPOSITIONS AND CANCELLATIONS

54

Proving a Likelihood of Confusion

June 6, 2013

Presented by Robert D. Litowitz

56

56

A Lifetime of Confusion

57

57

A Lifetime of Confusion

58

58

A Lifetime of Confusion

59

59

A Lifetime of Confusion

60

60

???

61

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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

62

62

Proving a Likelihood of Confusion

• Two categories of “facts” that can be proven

– Objective facts—who, what, when, how much?

• Documents
• Records
• Testimony of fact witnesses

– Subjective facts—what’s likely to happen

• Surveys
• Other expert testimony

63

63

Objective Facts: The Theme and Story

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

64

64

Theme: Case Study

• Bridgestone v. Federal

– Issue: Does MILANZA for tires conflict with POTENZA and TURANZA tire marks?

65

65

Bridgestone’s Theme

• Its famous tire marks have wide traction
• Upstart competitor can’t “draft” on Bridgestone’s

goodwill

66

66

Federal’s Theme

• Bridgestone doesn’t own “Italian”
• POTENZA and TURANZA are secondary to

BRIDGESTONE/lack fame

67

67

The Stories

• Bridgestone

– We spent $ millions, sold $ millions to make POTENZA and TURANZA category leaders – Marks have same cadence, structure, and origin – Federal wants to free-ride on our success through, at least, initial interest confusion

• Federal

– MILANZA evokes Milan; ZA simply imparts emphasis in Chinese – BRIDGESTONE may be famous, secondary marks aren’t

68

68

The Proofs

• Strength of marks

– Degree of strength = Degree of protection

• Inherent strength: Where do marks fall on the “spectrum?”
• Commercial strength: How well do consumers know the mark?

69

69

Proofs: Inherent Strength

Fanciful Arbitrary Suggestive Descriptive

70

70

Bridgestone

• POTENZA and TURANZA

– Unique – Arbitrary – Distinctive – Inherently strong

71

71

Proofs: Commercial Strength

• Dollars spent on advertising and promotion
• Revenues earned
• Number of sales
• Length of use

72

72

Bridgestone

• POTENZA and TURANZA achieved commercial

strength

– POTENZA used since 1981 – TURANZA used since 1992 – Sales and advertising “impressive by any standard”

– $ billions in sales – Extensive promotion and marketing

73

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Objective Evidence: Cost of Goods

• How much do products at issue cost?

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

74

74

Bridgestone

• Not all tires are expensive
• Consumers buy “on the spot,” adding “impulse”

component

75

75

Where Are Goods Sold?

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

76

76

Bridgestone

• Identical goods (tires)
• Identical trade channels

(auto stores/tire dealers/garages/dealerships)

– Not necessarily sold side-by-side in same stores

77

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Objective Evidence: Advertising

• How and where are goods advertised

– Same media? – Different media?

78

78

Bridgestone

• Bridgestone used many advertising media

– TV – National print – Local print – Billboards – Race sponsorships

79

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Goods

• Where goods are

identical, less similarity in marks required

Marks

• Where marks are

identical, less similarity in goods required

Similarity

80

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Bridgestone

• Both sides sold tires

– Exact identity between the marks not required – MILANZA similar enough to POTENZA and TURANZA in appearance, sound, connotation to create likelihood of confusion

• What if: TURANZA for auto tires vs. TURANZA for

bicycles?

81

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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

82

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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)

83

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Bridgestone

• Federal knew of POTENZA and TURANZA, but

chose similar MILANZA

– Violated duty of second-comer to steer clear of competitor’s successful marks

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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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Actual Confusion: Example

• The Fresh Market
• Arthur’s Fresh Market

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Actual Confusion: Example

• The Fresh Market v. Arthur’s Fresh Market

– Fresh Market was incontestable mark for grocery chain – Fresh Market expanded to new state/city - Indy – Local grocer opened Arthur’s Fresh Market; planned another in Letterman’s old store – Fresh Market and Arthur’s both recorded actual confusion – Court minimized this evidence, denied injunction

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Proving Likelihood of Confusion: Subjective Facts

• 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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Subjective Facts: Experts

• Survey Experts

– To conduct surveys and present them – To critique surveys

• Other experts

– Linguists – Marketing experts – Industry experts – Legal experts

89

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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”

90

90

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

91

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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

92

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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

93

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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
• Marshall the objective 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