Intellectual Property Surveys - Annual Cumulative Update 2013

INTELLECTUAL PROPERTY SURVEYS
ANNUAL CUMULATIVE UPDATE 1998-2014
Gerald L. Ford and Matthew Ezell
Copyright © 2014
Gerald L. Ford
All Rights Reserved
No Claim to Orig. US Gov. Works
The author sincerely thanks Sherry J. Laufenburger and
Rina Jacobson,
Research Associates at Ford Bubala & Associates,
for their diligent research and assistance.
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TABLE OF CONTENTS
Introduction………………………………………………………………………….………
3
Genericness Surveys…………………………………………………………………………
4
Descriptiveness/Suggestiveness Surveys……………………………………………………
32
Secondary Meaning Surveys………………………………………………………………...
36
Likelihood of Confusion Surveys……………………………………………………………
70
False Advertising Surveys…………………………………………………………………...
166
Fame Surveys.….....................………………………………………………………………
192
Dilution Surveys......................................................................................................................
205
False Endorsement Surveys………………………………………………………………….
217
Geographically Deceptively Misdescriptive Surveys……………………………………….
218
Scandalous/Disparaging Mark Surveys……………………………………………………..
219
Copyright Surveys…………………………………………………………………………..
220
Patent Surveys..……………………………………………………………………………..
222
First Amendment Issues..……...……………………………………………………………
227
Daubert/Admissibility Issues………………………………………………………………..
229
Procedural Issues…………………………………………………………………………….
273
Bibliography: Intellectual Property Surveys By Issue……...………………………………
278
Bibliography: Intellectual Property Surveys By Circuit……………………………………
325
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INTRODUCTION
The following provides short excerpts of a number of selected opinions referencing
survey evidence published in opinions from January 1998 through June 2014, which might be of
interest to the Lanham Act litigator. For opinions referencing survey evidence prior to January
1998, see Phyllis J. Welter’s Trademark Surveys, West Group, 1999.
The bibliographies to this paper provide citations, by Circuit and by survey issue, for all
identified opinions published during the January 1998 through June 2014 time period in which
survey evidence was referenced.
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GENERICNESS SURVEYS
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, T.T.A.B. LEXIS 38, *22, *29
(T.T.A.B. 2014) This opinion is a precedent of the T.T.A.B.
Based on these results, [Plaintiff’s expert] concluded in [the] report: “The
results indicate that PRETZEL CRISPS is not perceived by a majority of relevant
consumers as a brand name;”...Defendant’s expert...was retained to rebut the
conclusions of [Plaintiff’s expert]. [Defendant’s expert] noted several problems
with [Plaintiff’s expert’s] methodology including the following: 1) the universe of
survey participants was underinclusive, including only those who purchase salty
snacks at certain places; 2) there were two options of giving no opinion, both
“don’t know” and “not sure,” which may have confused participants, and caused
some to choose one or the other incorrectly; and, perhaps most importantly 3)
[Plaintiff’s expert] did not conduct a mini-test to ascertain whether survey
participants understood the difference between brand and common (or category)
names, but rather he simply asked whether they did. Indeed, as pointed out by
[Defendant’s expert], only two survey participants indicated they did not, or less
than 1%.
...
...We...find on this record that the designation of “PRETZEL CRISPS” is
generic for “pretzel crackers.”
In making this determination, while we consider the entirety of the record,
including the surveys (which in any event arrive at different conclusions), we give
controlling weight to the dictionary definitions, evidence of use by the public,
including use by the media and by third-parties in the food industry, and evidence
of use by defendant itself.
Taza Systems, LLC, v. Taza 21 CO., LLC, 2013 U.S. Dist. LEXIS 130974, *26, *31, n.5 (W.D.
Pa. 2013)
[Defendant] has also asserted that each of [Plaintiffs’] registrations is
invalid and subject to cancellation because the service marks are merely
descriptive upon application of the doctrine of foreign equivalents...
...
However, the doctrine of foreign equivalents applies only if the “ordinary
American purchaser” would “stop and translate” the mark into English...When it
is unlikely that an American buyer will translate the foreign mark, either because
of unfamiliarity with the foreign word, or association of the word with its foreign
language through décor, the doctrine does not apply...
...
...[A]ssuming that the doctrine of foreign equivalents might apply,
[Defendant] has failed to produce any evidence from which a reasonable juror
could conclude that the doctrine would invalidate [Plaintiffs’] trademark
registrations under the circumstances of this case. First, there would be no basis
on this record for a reasonable juror to make the required threshold finding that
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the ordinary American purchaser would stop and translate the service mark TAZA
into English as “fresh.” The uncontroverted evidence is that only a third of one
percent of the United States population speaks Arabic. (n.5 This statistic is in
accord with [Plaintiffs’] survey evidence in which only one person out of 200 (or
0.50%) knew that "taza" translated into English as "fresh."...)...
Sheetz of Delaware, Inc. v. Doctor's Associates Inc., 2013 T.T.A.B. LEXIS 468, *37-*48,
*50-*53, *56-*61 (T.T.A.B. 2013)
Each party proffered a “Teflon” survey to test how consumers perceive the
term “Footlong.”...
...
[Applicant’s expert] designed and conducted a “Teflon” type survey on
behalf of applicant to prove that consumers perceive the term “Footlong” as a
brand name rather than a common name...polling 200 interviewees in four
geographic locations. [The] defined universe was subjects likely to encounter the
term “Footlong”...men and women 18 years old and older who had eaten at or had
bought food or beverages to take out at fast food restaurants or sandwich shops in
the past three months and ate at or took out food from these restaurants at least
once a month...
The survey was conducted in the following manner:
1. The interviewer read aloud to survey respondents definitions of
“common names” (generic names) and “brand names” and asked if respondents
understood the definition of a common name and a brand name.
2. The interviewer used the following examples to explain the difference
between a brand name and a common name...
(Example # 1) For example, the name “iced tea” is a common name for a
type of beverage that is made by several companies. But “Snapple” is a
brand name for iced tea that is made by one company.
(Example # 2) Another example is the name, “hamburger” which is the
common name for a sandwich made with a cooked patty of ground meat
placed in a bun. But “Quarter Pounder” is a brand name for a hamburger
that is made by one company.
(Example # 3) Another example is the name, “fried chicken” for chicken
parts that have been breaded and fried, but “Original Recipe” is a brand
name for a type of chicken made by one restaurant chain...
3. The mini-test was conducted by asking the respondent the following
question: Do you understand what a common name is and what a brand name
is?...
4. Respondents who said they understood the difference between a
common name and brand name were then read and shown a list of names
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individually for food and beverage products and asked whether they thought each
name was a common name, a brand name, both, neither, or they didn’t know...
According to the [Applicant’s] survey, 54% of the respondents identified
“Footlong” as a brand name, 34% identified it as a common name, and 9.5%
identified it as both...
There are several problems with the [Applicant’s] survey. First, the
universe of respondents is too narrow. The description of goods in the application
is “sandwiches, excluding hot dogs.” As indicated above, the relevant public
comprises ordinary consumers who purchase and eat sandwiches. Relevant
consumers are not limited to recent and frequent patrons of fast food
restaurants and sandwich shops; they include inter alia patrons of eat-in and sitdown restaurants, delicatessens, and supermarkets that sell sandwiches. Because
the application does not limit the channels of trade or potential customers for
applicant’s sandwiches, we must presume that they are sold in all normal channels
of trade and to all of the usual customers for such goods...Accordingly, the survey
results may be skewed because the survey did not include all of the potentially
relevant consumers.
Second, the examples [Applicant’s expert] used to illustrate the difference
between a common name and a brand name could be considered ambiguous, in a
potentially significant way. By using highly descriptive terms that have acquired
distinctiveness, [Applicant’s expert’s] “Quarter Pounder” and “Original Recipe”
examples might have led consumers mistakenly to think that a heavily advertised
word like “Footlong” has become the equivalent to the terms the interviewer used
to explain the meaning of a brand name, rather than ensure that the survey
respondents understood the difference between a common name and a brand
name...
Third, [Applicant’s expert] failed to conduct a mini-test to determine
whether the respondents understood the difference between a common name and
a brand name. Asking a respondent whether he or she understood the difference is
not the same as testing whether she or he understood the difference.
The gate-keeping questions in a genericness survey are designed to
determine whether the survey participant understands the difference
between “brand names” and “common names.”
In this flawed survey, rather than actually testing the survey
participant’s specific understanding of “whether Chevrolet is a brand
name or a common name?” (the “Teflon” format), after providing some
“training,” the question was asked “Do you understand the difference
between ‘brand names’ and ‘common names?’” According to [one expert],
this is a leading question calling for a “yea-saying” response and is not a
reliable measure of comprehension...
Fourth, [Applicant’s expert] should not have provided respondents with
the option of stating that the subject terms were both common names and brand
names. By definition, a generic term for a product can never function as a
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trademark for that product...A respondent who said that a term was both a brand
name and a common name might not have understood the difference between the
two. This calls into question the validity of [Applicant’s expert’s] results because
we cannot be sure how many of the respondents actually understood the
difference between a brand name and a common name.
In [the] analysis of [Opposer’s] survey, [Applicant’s expert] criticized
[Opposer’s expert’s] failure to permit the respondents to answer “both,” citing as
authority Windsurfing International, Inc. v. Fred Ostermann GmbH...However,
[Applicant’s expert’s] reliance on Windsurfing is misplaced because in that case
the court noted that although respondents were free to answer “both,” “the
answers of the persons who responded in this manner were not included in the
final tabulation,” whereas [Applicant’s expert] included responses identifying the
names as both a brand name and a common name.
For these reasons, we give very little weight to [Applicant’s expert’s]
survey on the question of whether prospective purchasers of sandwiches,
excluding hot dogs, view the term “Footlong” as a common name or a brand
name.
[Opposer’s expert] testified that he designed and conducted a survey “that
would address the major defects in the [Applicant’s expert’s] Survey...As noted
earlier, we have considered this survey not as evidence of genericness supporting
opposer’s case in chief, but only to the extent it stands as evidence rebutting
applicant’s case-in-chief.
...
[Opposer’s] survey was conducted in the following manner:
Step 1. The interviewer read the following introduction to the prospective
respondents...:
As you may know, most products and services have two names.
One tells us what type of product or service it is, such as CREDIT CARD,
AUTOMOBILE, or HAMBURGER, which are names used to identify
different products or services that come from many different sources or
companies. The other is its brand name, such as VISA, TOYOTA, or
DENNY’S, which is used to identify a particular product or service that
comes from a particular source or company. Before we go on, do you
understand what I mean when I talk about a type of product or service or a
brand name, or would you like me to read the examples again?
Step 2. The respondent had to report that he/she understood, otherwise the
interview was terminated.
Step 3. If the respondent said that he/she understood the difference
between and type of product and a brand name, they were asked the following
mini-test questions in rotated order...
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Let’s take some example terms that are used in the food service
industry.
Question VIII:
HAND RESPONDENT “CORNDOG” CARD AND SAY: Do
you believe that the word on the card is a...(ROTATE ORDER OF
FIRST TWO ALTERNATIVES READ)?
... TYPE?
OR
...BRAND?
OR
... DO YOU NOT KNOW?
HAND RESPONDENT “DORITOS” CARD AND SAY: Do you
believe that the word on the card is a...(ROTATE ORDER OF FIRST
TWO ALTERNATIVES READ)?
... TYPE?
OR
...BRAND?
OR
DO YOU NOT KNOW?
...
Step 4. If the respondent answered either question incorrectly or answered
“did not know” to either one, the interview was terminated.
Step 5. The successful respondents were then shown a card with terms
used for products or services in the food industry and asked whether the terms
were (i) a type of product or service, (ii) a brand of product or service, (iii) have
you never heard of it, or (iv) do you not know.
According to the [Opposer’s expert’s] survey, 80% of the respondents
identified “Footlong” as a type of product, 19% identified it as a brand, and 1%
did not know...
...
...[Applicant’s expert] is highly critical of [Opposer’s expert's] explanation
differentiating brand names from common names...However, [Opposer’s] survey
results demonstrate that the respondents had a firm understanding regarding the
difference between a common name and a brand name (e.g., only 3% of the
respondents in the [Opposer’s] survey identified COCA-COLA as a common
name whereas 21% of the respondents in [Applicant’s] survey identified DIET
COKE as a common name and 6% of the respondents identified it as both a
common name and a brand name).
[Applicant’s expert] criticizes the examples that [Opposer’s expert] used
to explain the difference between a common name and a brand name (i.e., credit
card/VISA, automobile/TOYOTA and hamburger/DENNY’S). According to
[Applicant’s expert], because the word “visa” may be a travel document, because
TOYOTA manufactures many products, and because DENNY’S is a restaurant
(i.e., a service provider) and not a product, consumers would be confused...We
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disagree. When used in the context of the explanation in [Opposer’s expert’s]
survey, set forth above, VISA would be understood to mean a credit card brand
and not a travel document, and TOYOTA would be understood as a brand for
automobiles...
...[Applicant’s expert] criticizes [Opposer’s expert’s] use of the term “food
service industry” to introduce [the] mini-test, arguing that [Opposer’s expert] is
“confusing to the survey respondents” because the term misleads the respondents
into thinking the questions relate to food and beverages purchased at fast food
restaurants or sandwich shops...As indicated above, the results of the [Opposer’s
expert’s] survey show that the respondents understood the difference between a
brand name and a common name and, therefore, the respondents were not
confused. Moreover, suggesting the sector or industry in which the terms and
marks were used is not a fatal flaw because trademarks are understood in relation
to goods and services, not in the abstract.
...[Applicant’s expert] also criticizes [Opposer’s expert’s] use of the term
“type of product or service” to define a generic or common name because it
‘immediately tells survey respondents that a ‘descriptive name’ can be a type of
product or service.”...[Applicant’s expert] supports this argument by pointing to
the survey results where 41% of the respondents identified McMUFFIN as a type
of product and 42% of the respondents identified WHOPPER as a type of product.
After carefully reviewing [Opposer’s expert’s] instructions and examples, we find
nothing therein would lead a respondent into believing that a descriptive name is a
type of product. In fact, [Opposer’s expert’s] choice of brand names avoided
descriptive terms and the majority of respondents properly classified McMUFFIN
and WHOPPER as brand names.
...[Applicant’s expert] criticizes [Opposer’s expert’s] use of CORNDOG
in the mini-test and GRILLEDCHEESE in the survey because CORNDOG and
GRILLEDCHEESE are actually two words – “Corn Dog” and “Grilled Cheese” and by displaying them as one word [Opposer’s expert] “signals survey
respondents that a descriptive/suggestive name ‘FOOTLONG’ should be
classified as a ‘type of product.’ This is leading the survey respondent to the
answer preferred by the [Opposer’s expert’s] Rebuttal Survey.” The display of
“Corn Dog” and “Grilled Cheese” as one word instead of two words is not a fatal
error. First, it is not clear that most respondents recognized that CORNDOG and
GRILLEDCHEESE were actually two words instead of one word and, to the
extent that they did, it is doubtful that the respondents cared or that it affected
their response. Moreover, since GRILLEDCHEESE was presented as one of
several terms created by merging two words (i.e., MILKSHAKE and
PANCAKE), we are not persuaded that the respondents were led to classify
FOOTLONG as type of product simply because “grilled cheese” and “corn dog”
were depicted without a space. Finally, we note that applicant, itself, uses “Foot
Long” and “Footlong” interchangeably...
... [Applicant’s expert] criticized [Opposer’s expert] for using
COCACOLA (sic) and GATORADE as brand names in [the] survey because they
are well known, if not famous, brands and they are not descriptive or suggestive...
We see nothing wrong with [Opposer’s expert’s] use of COCA-COLA and
9
GATORADE because they act as control terms demonstrating that the
respondents understand the difference between common names and brand names.
Furthermore, as indicated above, the results show that 59% of the survey
respondents correctly identified McMUFFIN as a brand name and that 57% of the
respondents correctly identified WHOPPER as a brand name; both terms are at
least somewhat suggestive.
In summary, we find that the [Opposer’s expert’s] survey supports our
finding that the [Applicant’s expert’s] survey is entitled to little probative value...
Amazon Technologies, Inc. v. Geoffrey R. Daigle, 2013 T.T.A.B. LEXIS 298, *1-*2, *29-*31
(T.T.A.B. 2013)
[Petitioner] has petitioned to cancel [r]egistration for the mark WINDOW
SHOPPING...
...[P]etitioner alleges that the term “window shopping” is the generic name
for the respondent’s identified services and is therefore incapable of functioning
as a mark...
...
To say that a term identifying “what [a] website is for” is the common
name of the website may be too broad an instruction. The name for a purpose of a
website may not, in every case, be a generic name for the website. These
instructions may induce subjects to consider words that describe or suggest any
potential use of a website to be a “common name” for the website. While we
appreciate that these instructions might be inspired by the concept of “key aspect”
or “central focus” discussed above, we are concerned that they may open too wide
a door to potential misunderstanding by the subjects.
We also agree with respondent’s observation that the examples of brand
names given in the instructions, the gate-keeper questions, and the survey were
unnecessarily weighted toward fanciful marks, as opposed to marks composed of
ordinary words. The brand names presented were WALMART, ITUNES,
YOUTUBE, BING, NEXTAG, SHOPZILLA, and TWITTER. Of these marks,
only TWITTER is an ordinary word, but it is a well known mark. In this context,
there was a danger that subjects would believe that any ordinary word or any
phrase composed of ordinary words is a common name, rather than a brand name.
For these reasons, we find the petitioner’s survey to be of limited probative value
and we have not relied on it in making our determination.
Primary Children’s Med. Ctr. Found. v. Scentsy, Inc., 2012 U.S. Dist. LEXIS 86318, *13-*14
(D. Utah 2012)
[Defendant] does object to the survey on the grounds that consumer
surveys are irrelevant if the term at issue was not coined by the party that is
seeking trademark protection. [Defendant] relies on a Fourth Circuit case which
rejected as “irrelevant” a registrant’s survey of local consumers because the
registrant had not first coined the term “crab house.”...([and the 8th Circuit]
holding that survey evidence concerning the term “Brick Oven” was irrelevant
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because the designation was “commonly used” before the use by either party).
But the court agrees with authorities that challenge this position and finds that
consumer surveys can play an important role in determining primary significance
even if the term at issue was not first coined by the party seeking to protect its
mark. See McCarthy...§ 12:17:50 (criticizing the holding in the cases cited above
and noting that “[t]o state that consumer perception is irrelevant for a non-coined
“generic” word . . . is to assume the result before making an analysis of that which
is to be decided”). No matter how a term received its genesis, the “primary
significance” test is still of paramount importance to determine if the term is
generic, and a consumer survey is a useful indicator of what that significance is to
the relevant public.
STK LLC v. Backrack, Inc., 2012 T.T.A.B. LEXIS 186, *51-*54, n.93,
(T.T.A.B. 2012)
n.95, n.96, n.97
Petitioner conducted a “homemade” survey of 18 of its customers (“a
small cross-section of (petitioner’s) customer base”) that sell headache
racks...Based on their answers to two questions, petitioner concludes that an
overwhelming majority of these 18 survey respondents recognize that their
customers (i.e., the end user), generally use the term “Backrack” as the name of
any headache rack or cab guard as opposed to an identifier as the source of a
product...
Respondent objects to petitioner’s survey evidence on the grounds that
petitioner failed to disclose the survey during discovery, and that the survey
constitutes inadmissible hearsay. Whether the survey is designated as a scientific
survey (n.93 In fact the survey is not a scientific survey; the survey designer
readily admitted that he is inexperienced and not an expert with respect to
surveys...)...
Survey evidence is subject to review for its probative value, based on
factors including the design of the survey, the questions asked, and the experience
of the surveyor...While all surveys are necessarily based on some degree of
hearsay, petitioner’s survey is replete with fatal defects, including a double layer
of hearsay. That is, the survey does not solicit opinions directly from the true
subjects of the survey. Rather, the survey respondents simply serve as conduits to
relay feedback they supposedly received from their customers, i.e., the end users,
who are the true subjects...
Putting aside the fatal defects pertaining to the small number of
respondents surveyed and the fact that the survey was not administered to the end
users who comprise a significant portion of the relevant public, the design of the
survey did not test for genericness of the BACKRACK mark. Rather than
ascertaining the term used by the relevant public to identify a headache rack, the
survey asked what name was used by customers to identify a “BackRack truck
rack.” (n.95 Survey question No. 1: When customers come into your store or call
you on the phone looking to buy a BackRack truck rack, do they most often ask
for a “BackRack” or do they most often ask for a “BackRack truck rack” or
“BackRack cab guard?”...) The designer of the survey...testified that he was
11
looking to establish whether consumers were improperly using the term
“Backrack” as a noun...Whether customers refer to the rack as a “Backrack,” (i.e.,
use the term as a noun), “Backrack truck rack” or a “BackRack cab guard” sheds
no light on the genericness issue. Customers looking for a BACKRACK brand
product will undoubtedly use the term “Backrack” as a noun:
The fact that buyers or users often call for or order a product by a
term does not necessarily prove that a term is a “generic name.”
The person who orders for lunch a “BIG MAC and a COKE”
undoubtedly has brand knowledge and brand loyalty. The generic
names “hamburger” and “cola” are understood by all precisely
because BIG MAC and COKE are such strong trademarks
identifying source. Since everyone knows the generic names, they
are dropped in ordinary usage.
The second survey question is so ambiguous and speculative that it
precludes the possibility of drawing any conclusions. (n.97 Survey question No.
2: Has there ever been instances, even if only on occasion, that customers have
come into your store or call you asking for a “BackRack” when they really don't
actually want a “BackRack” at all; rather they want another type of truck rack?
For instance, this could mean a different type of cab guard or a full truck rack?...)
Neither survey question elicited responses that could provide insight into whether
consumers understand the term BACKRACK to mean a product brand or source,
or a product genus. Additionally, whether respondents are capable of
distinguishing between brand and common names is an important feature of a
genericness survey, and petitioner’s survey was not designed to detect this
capability...In view of the foregoing, petitioner’s imprecise and non-scientific
survey is not probative of the significance of the term BACKRACK to the
relevant public...
In re Softspikes, Inc., 2012 T.T.A.B. LEXIS 107, *34 n.20 (T.T.A.B. 2012)
n.20 ...we have given little weight to applicant’s survey which has major
deficiencies and is not particularly useful to show that SOFTSPIKES is
recognized as a mark by the relevant public as a whole. This was a telephone
survey...The sample consisted of a total of 50 individuals from six states who
were responsible for ordering the products for golf shops located at courses which
require players to wear non-metal spikes. The 50 respondents were divided into
two groups of 25 respondents. Each group was read a list of names for various
golf products, some of which were brand names and others of which were
common names. The list presented to one group included “Softspikes” and the
other list included “plastic cleat.” After each name in the list was read,
respondents were asked whether it is the name of a type of golf product, a brand
name of a specific product, or both. They could also respond “no opinion.” The
results show that 16% of respondents identified Softspikes as a type of product;
48% identified it exclusively as a brand; and 36% identified it as both a type of
12
product and a brand. The fact that 48% identified “Softspikes” as a brand name
would be sufficient to raise a doubt as to whether the mark is generic, but the
sample size is so small and the universe is so narrowly defined that the results are
not meaningful. In particular, even if we assume that the selected universe for the
survey, i.e., golf shops, identifies a discrete subset of purchasers for applicant’s
golf cleats, that subset is very small, representing only 17% (by applicant's own
figures) of applicant's entire market. And with only 25 participants in the test
group, the results cannot be generalized to even this limited subset of the relevant
public as a whole...
In re Shuffle Master, Inc., 2011 T.T.A.B. LEXIS 391, *26-*30 (T.T.A.B. 2011)
Finally, we consider applicant’s consumer survey which purports to use
both a “Thermos” and “Teflon” style methodology...to measure the relevant
public’s understanding of the significance of the term THREE CARD
POKER...Applicant asserts that the survey results demonstrate that THREE
CARD POKER is not generic. We disagree, finding that the survey methodology
is fundamentally flawed.
For the Thermos style question, respondents were asked: “If you walk into
a brand new casino and want to find the area where the dealer games are located,
how would you complete the following question: Excuse me where can I find the
?” The choices were BLACKJACK, CASINO WAR, CARD GAMES,
FORTUNE PAI GOW, POKER, TABLE GAMES, TEXAS NO LIMIT,
HOLD'EM POKER, or THREE CARD POKER. However, unlike the
respondents in Thermos...the respondents in this case were not also asked to name
any proprietary or brand name dealer games, or more specifically, whether any of
the above terms referred to brand or proprietary names. As such, this portion of
applicant’s survey is of little probative value.
Respondents were then asked another series of questions which purported
to use the Teflon style methodology, asking respondents whether THREE CARD
POKER was “primarily” a “common name” for the following choices – “live
games of chance,” “casino services,” “casino games,” “table games,” “card
games,” or “poker” or whether it identified a “the name for a specific type of
poker.” Respondents were also asked whether they would use the term “three card
poker” to refer to any of the same choices. The survey methodology, however,
failed to follow the Teflon protocol because it did not ask any screening questions
to ensure that respondents were capable of distinguishing between brand and
common names. In applicant’s survey, the only guidance respondents were
provided was the following narrative:
A common name is a name that is used to refer to an entire class of
items. For example, the common name for NIKE brand products
might be shoes.
Equally problematic, respondents were not eliminated if they failed to understand
the distinction.
13
By contrast, in the Board’s recently decided case of In re Country Music
Ass'n, Inc.,...respondents were screened...to ensure their understanding of this
conceptual distinction...
In addition, applicant’s potential survey choices were poorly worded. In
lieu of directly asking respondents whether a term constituted a “brand” or
“proprietary” name, respondents were instead asked whether a term referred to a
“specific type of poker.” The survey did not state that “specific type of poker”
meant brand or proprietary name, and in fact, no explanation of the meaning of
the term was supplied. Applicant then argued that positive responses that “three
card poker” referred primarily to a “specific type of poker”" constituted evidence
that respondents perceived the term as a brand or proprietary name. We disagree
with this conclusion, and in fact find that such responses support the contrary
finding that the term “three card poker” constitutes a generic term for a type of
poker game. As such, the survey results do not favor applicant.
In re Country Music Ass’n, 2011 T.T.A.B. LEXIS 343, *20-*24 & n.5, *32-*33 (T.T.A.B. 2011)
This opinion is a precedent of the T.T.A.B.
Applicant also submitted a “Teflon” type consumer survey...targeted to
listeners of country music...The stated objective of the survey was to measure the
relevant public’s understanding of the significance of the term COUNTRY
MUSIC ASSOCIATION...The survey sample was based on a random digit
probability sample of computer-generated phone numbers derived from all
working telephones in the continental United States and based on a representative
sample of the U.S. population. Using a double-blind protocol, the interviewers
screened for qualified survey respondents who consisted of males and females at
least 18 years of age who listened to country western music. The interviewer
explained to the qualified survey respondents the conceptual distinction between a
“brand or proprietary name” and “common name” using the following example:
“By brand or proprietary name, I mean a name like ‘Bank of America’ which is
used by one company or organization; by a ‘common name’ I mean a name like
‘safe deposit box’ which is used by a number of different companies or
organizations...Respondents were then asked two questions to test their ability to
distinguish brand or proprietary names from common names: (1) Do you
understand the name “National Football League” to be a brand or proprietary
name or common term? (2) Do you understand the name “high school football” to
be a brand or proprietary name or common term? One hundred persons were
deemed qualified and interviewed after completion of the screening process.
These qualified respondents were then given a list of terms and asked whether
they were brand or common names.
...respondents were asked whether the following ten terms were brand [or
proprietary names] or common names. The results represented in percentages
were as follows:
Brand
Name
Common
Name
14
Don’t
Know
Both
STP
Coke
Jello
Refrigerator
Margarine
American Airlines
Gas Station
National Rifle Association
Alumni Association
74
92
66
9
12
94
6
93
23
6
7
30
91
86
5
94
4
74
19
-1
-2
1
-2
3
1
1
3
----1
--
...respondents were [then] asked, with regard to music, whether the
following were understood to be the name of a brand or proprietary name used by
one company or organization or a common name used by a number of different
companies or organizations. The results represented in percentages were as
follows:
Brand
Common
Don’t
Both
Name
Name
Know
Country Music
85
10
5
-Association
iTunes
86
3
11
-Bluegrass
15
77
8
-A significant number of surveyed respondents, 85%, answered that
COUNTRY MUSIC ASSOCIATION is a brand name. Based on the survey
results, [Applicant’s expert] concluded that the term “country music association”
is perceived by listeners of country western music as a proprietary or brand name,
and not a generic term.
The examining attorney questions [Applicant’s expert’s] interpretation of
the survey results. First, he argues that the survey respondents’ recognition of the
wording “country music association” as a brand name does not mean that the
mark is not generic but rather is the result of applicant’s extensive promotion of
its mark. (n.5 The examining attorney's assertion is incorrect. Extensive
promotion of a mark that results in acquired distinctiveness is evidence that may
be considered with regard to the genericness inquiry...) Second, the examining
attorney maintains that it is impossible to distinguish whether the survey results
reflect respondent’s recognition of applicant’s mark as a brand name for
applicant’s association services or for applicant’s annual televised award program.
As a threshold matter, we find that the methodology used in [Applicant’s
expert’s] survey to be sound. Similar to the Teflon survey, the respondents were
capable of distinguishing between brand and common names. In addition, the
interviewers presented to respondents brand and common names which are
similar to the mark at issue here such as “National Rifle Association” and
“Alumni Association” in testing the respondent’s ability to distinguish such
names. According to the survey results, the majority of listeners of country
western music, members of the relevant public in this case, identified COUNTRY
MUSIC ASSOCIATION as a brand name as opposed to a common or generic
15
designation. We therefore find that [Applicant’s expert’s] survey has probative
value in applicant’s favor.
...
Finally, although the consumer survey conducted by [Applicant’s expert]
was submitted in connection with the issue of genericness, the acquired
distinctiveness of the term COUNTRY MUSIC ASSOCIATION among the
relevant purchasing public can be inferred from the results. By categorizing the
term COUNTRY MUSIC ASSOCIATION as a brand name, 85% of the
respondents were saying, in effect, that they associated the term with the product
or services of only one company.
In re in3media, Inc., 2011 T.T.A.B. LEXIS 189, *14-*15 (T.T.A.B. 2011)
Applicant points to its survey conducted to show acquired distinctiveness.
Overall, we find this survey to be lacking in probative value. The participants in
the survey were limited to people already on applicant’s website which has the
effect of skewing the results in applicant’s favor. After the participants have
already come to applicant’s website they were asked the following questions:
Do you associate RADIO-INFO.COM with the website of
one, or more than one company?
Do you believe RADIO-INFO.COM to be the brand name
of the website located at the URL www.radio-info.com?
The survey did not follow the “Teflon” methodology discussed in E.I. du
Pont deNemours & Co. v. Yoshida Int’l, Inc...For example, the survey does not
adequately reflect the difference between a brand name and a domain name.
Applicant argues that 80% of the participants of the survey “associated
RADIO-INFO.COM as the website of one company (and) 481 of 515 people who
participated in the survey answered that they believed RADIO-INFO to be the
brand name of the website.”...Aside from the serious flaws in the survey, as noted
in Hotels.com “consumers may automatically equate a domain name with a brand
name.”...
16
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *17-*20
(3rd Cir. 2008)
“The primary significance test…inquires whether the primary significance
of a term in the minds of the consuming public is the product or the
producer.”…We therefore inquire whether the consuming public understands
“Cocoa Butter Formula” to refer to a product genus or to a producer…
Plaintiffs seeking to establish the descriptiveness of a mark often use one
of two types of survey evidence. J. Thomas McCarthy…describes a “Teflon
survey” as “essentially a mini-course in the generic versus trademark distinction,
followed by a test.”…That survey runs a participant through a number of terms
(such as “washing machine” and “Chevrolet”), asking whether they are common
names or brand names. After the participant grasps the distinction, the survey asks
the participant to categorize a number of terms, including the term at issue…
A “Thermos survey,” on the other hand, asks the respondent how he or she
would ask for the product at issue. If, to use the term under dispute in the case
from which the survey gets its name, the respondents largely say the brand name
(“Thermos”) rather than the initial product category name (“Vacuum Bottle”), the
survey provides evidence that the brand name (“Thermos”) has become a generic
term for the product category…To put this in the terms of the primary
significance test, the term would be generic because the consumers would be
using it to refer to the product category rather than a producer who makes
products within that product category.
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495, *8*9, *11 (E.D. Tex. 2008)
[Defendant] relies in part on the survey of [its expert] to demonstrate that
the term is merely generic. In [the] Teflon survey, [Defendant’s expert] notes that
77% of those surveyed had an opinion that Brooklyn style pizza was a common
generic name...[Defendant] points out that even a survey showing of 60% is
enough to hold that the name is merely generic. E.I. Dupont de Nemours & Co. v.
Yoshida Int'l, Inc., 393 F.Supp. 502 (E.D.N.Y. 1975). [Defendant] also cites a
number of articles from newspaper advertisements which mention a Brooklyn
style pizza. For example, “The demand for Pucci’s Brooklyn style pizza would
seem to be greater than the supply.” “The soul of a genuinely scrumptious
Brooklyn - style pizza doesn’t reside in fancy gimmicks or a host of bizarre
toppings”...Even in the [Dallas-Fort Worth] metroplex, Pastazio’s Pizza cuisine is
highlighted as the Brooklyn style pizza...
As [Defendant] points out, it has submitted 28 media articles referring to
the generic use of the term. Advertising use of a word in its generic sense can be
compelling evidence of the general public’s perception that the term is generic…
[Defendant] also points out that it is not alone in the use of the term
Brooklyn style pizza and claims over a hundred restaurants around the country
use the moniker. [Defendant] also argues that even the Patent and Trademark
17
office recognizes Brooklyn style pizza as a generic term not entitled to
protection…
*
Whether [Brooklyn style pizza] is viewed as a generic term, or whether it
is descriptive, the result is the same. There is no trademark violation…
Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353, *24, *26-*28
(C.D. Cal. 2008)
Plaintiff has introduced evidence of a consumer survey…known as the
‘Teflon Survey’ design which has been accepted and given weight by the courts
and is frequently cited…
…
…Defendant…submitted survey evidence concerning whether “organic
food bar” is a generic term…In [the] survey…consumers were shown a variety of
nutrition bars and asked what they would ask for if they were looking for this
product in a grocery store…The majority of consumers said “energy bar” or
“protein bar.” Only three consumers out of 229 said “organic food bar.”
Defendant introduces this to prove that “organic food bar” is not a generic term.
…
…Defendant’s papers offer no case law in support of its open-ended
survey questions...just because a term is not the most generic term for a product
does not mean it is not generic. This Court does not see how the [Defendant’s
expert’s] Survey supports, in any meaningful way, Defendant’s argument that
“organic food bar” is not generic…
In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60, *4-*5, *7 (T.T.A.B. 2008)
In view of the adverse decision in the prior case, and during suspension of
the present appeal, applicant commissioned a survey to determine the significance
to the public of the term HOTELS.COM. After the survey was completed,
applicant requested remand of the application to the examining attorney for
reconsideration of the refusal in light of this new evidence…
The examining attorney argues in her brief that in view of the prior Board
proceeding involving the same applicant and, as applicant admits, the same issues,
the claim presented in this appeal, i.e., that HOTELS.COM is not generic and may
be registered on a showing of acquired distinctiveness, is barred by res judicata…
…
Under the circumstances, and in an exercise of caution, we find that the
survey evidence constitutes a change in facts sufficient to avoid application of the
doctrine of res judicata and to justify re-examining applicant’s claim that the term
HOTELS.COM is not generic…
18
Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337, 341-345 (D. R.I. 2007)
Notwithstanding the protection to which registered (or unregistered) marks
may be entitled, a finding of genericness will render the term unprotectable…
For a term to be generic, its “primary significance…to the relevant public
must be to identify the nature of a good, rather than its source.”…This can occur
in one of two ways. First, an invented name may become “genericized,”…that is,
the term “began life as a ‘coined term’” but became generic through common
usage…Second, a term may be generic if it was commonly used prior to its
association with the specific products at issue…
Under either approach, evidence of the relevant public’s understanding of
a term can be used to prove genericness…This evidence may include competitors’
use (use of the term by competitors which has not been contested by plaintiff),
plaintiff’s use (use of the term as a generic name by the plaintiff), dictionary
definitions, media usage, testimony of persons in the trade, and consumer
surveys…
*
…[Defendant] submitted compelling evidence that the term “Memory”
has been used to describe a generic card game since before [Plaintiff] obtained its
first trademark in 1967…
[Defendant] also submitted dictionary use as evidence establishing the
genericness of the term…
*
[Defendant] has additionally adduced evidence of [Plaintiff’s] own generic
use of the term…
*
The substantial volume of evidence of competitors’ use of the term
“Memory” to describe a memory matching game is particularly significant, and
probative, for the question of genericness because “the more members of the
public see a term used by competitors in the field, the less likely they will be to
identify the term with one particular producer.”…
It is true that [Defendant] failed to offer any consumer surveys in support
of its genericness claim, and that, additionally, [Plaintiff] offered its own brand
penetration surveys, which, it claims, demonstrate that consumers associate
[Plaintiff’s] specific game with the term “Memory.”…But, it has been made clear
that such evidence is not dispositive on the question of genericness; rather, it is
merely one of several factors that may be considered…This is also true of relative
sales volume. Although [Plaintiff] argues that its dominant market position rebuts
any claim that the relevant public would view the term “Memory” as generic, in
the absence of actual evidence proving this, the Court cannot draw such a
conclusion…There has been no presentation of evidence suggesting that
consumers associate the term “Memory” with [Plaintiff’s] game, just that
[Plaintiff’s] game occupies a large market share…
In sum, at this juncture, [Defendant] has carried its burden of proving by a
preponderance of the evidence that the term “Memory” is and has been a generic
term not entitled to trademark protection.
19
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565, *2*4, *26-*27 (N.D. Ga. 2007)
…[Defendant] commissioned…a survey…designed to determine whether
the term NITE LITES is or is not a generic designation for systems that provide
low-voltage nighttime illumination of the exteriors of upscale
residences…[Defendant’s expert] designed the survey based on the “Thermos
Survey” model, a product category survey that generally describes the product
and asks respondents how they would ask for the product in a store…
[Defendant’s] survey consisted of interviewing a random sample of 200
homeowners…
*
The interview consisted of two sets of questions - screening questions and
main questions. The screening questions were designed to identify individuals
within the relevant consuming public for outside low-voltage home
illumination,…termed the “relevant universe” or “survey universe,” and asked:
1. Do you own your own home?…
2. Is it a detached home, a town home, an attached house, a mobile house,
or some other?…
3. When you bought the home, did it cost less than $ 300,000 or $ 300,000
or more?…
4. Are you familiar with the practice of homeowners illuminating their
trees and the outside of their houses with a low voltage system?…
5. Have you ever illuminated your trees and the outside of your house with
a low voltage system?…
6. In the next 12 months, how likely would you be to consider illuminating
your trees and house with a low voltage system: Very likely, somewhat
likely, or not likely?…
The main questions were designed to identify what terms the relevant
universe used to describe a system of outside low-voltage home illumination, and
asked:
1. What do you call such a system of outside illumination?…
2. Do you know the names of manufacturers of such illuminating
systems?…
3. Who are those manufacturers?
4. Can you name any trademarks or brand names of such outside
illumination systems?…
5. What are those brand names?
*
20
…The court finds that [Defendant’s expert’s] survey meets the criteria of
helpfulness to the trier of fact given the specific allegations and contentions of
this case.
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525, *34-*35 (C.D. Cal.
2007)
KFI nevertheless contends that “kettle” is a descriptive mark, not a generic
one. KFI argues that its survey evidence shows that consumers view “kettle” as a
brand name, and not a generic name. KFI’s survey…found that 52% of the public
viewed “kettle” as a brand name…KFI’s survey, however, has several flaws in its
methodology. It uses a circular definition for what a brand name is, it fails to
screen subjects to see if they understood what a brand is, and it fails to identify or
account for any order bias that might have been produced…Also, CFI introduced
its own consumer survey…that produced essentially opposite results. Only 34.8%
of those surveyed…thought “kettle” was a brand name…In light of the foregoing,
the survey evidence presented by KFI is essentially in equipoise with that offered
by CFI, and is of only limited evidentiary value.
Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330, *42, *43 & n.20, *44*45, *46 & n.22, *48 (T.T.A.B. 2006)
Applicant points to the survey in support of its contention that the mark is
generic and only denotes a type of tea, and then proceeds to argue that the survey
“clearly establishes that the public, as a whole, does not understand that
Darjeeling tea comes only from the Darjeeling region of India”; and that there is
no association in the public’s mind between the term Darjeeling as applied to tea
and any specific geographic region….
…
To the extent applicant is relying on the survey to show that the term
Darjeeling is generic among consumers, which is the actual issue in the case, the
survey fails to do so and, as far as we can tell, was not even designed to show that
the term is generic. In addition, we find the survey is flawed at least in
interpretation of what it does purport to show, and is of little probative value.
This was a telephone survey…The stated purpose of the survey was “to
determine what consumers say Darjeeling tea is.” The survey involved 301
respondents who answered preliminary questions indicating that they had
purchased tea for themselves or others in their household during the past year and
that they are “personally familiar” with Darjeeling tea.
Each respondent was asked the open-ended question “What is Darjeeling
tea?” where the respondents could give as many responses as they wished. This
question was followed up by the probe “Anything else?”…
Applicant introduced, through the testimony of [Applicant’s expert], a
written report of the survey which includes, not the verbatim responses, [n.20
Opposer points out that it requested the database of actual responses during the
deposition of [Applicant’s expert] but did not receive them and applicant does not
21
dispute that the actual responses were not provided.] but [a] summary of
responses and a separate “tabulation” of responses...
Under each category, [Applicant’s expert] listed the answers or types of
answers which in his judgment should fall into that category. For example, under
the category “A type of tea,” he listed the following answers or types of answers
along with the number of individuals who gave those answers:
A type of tea (32.4%)
general reference to type
black tea
herbal tea
green tea
flavored tea
caffeinated tea
English tea
83
34
15
11
7
4
3
[Applicant’s expert] totaled the percentages of all categories except the
category “A tea from India” and came to the following conclusions: that “a
sizable majority (nearly 75%) of the 485 answers…described [Darjeeling] as a
type of tea, a tea they recognize, a tea with certain qualities, or a tea that they may
or may not buy”; that “over 75 percent of the 301 respondents did not make any
mention of a ‘tea from India’…”; and finally that “the vast majority of
persons…do not think of Darjeeling tea as a ‘tea from India.’”…
First, [Applicant’s expert] did not conclude or even suggest that the results
show that Darjeeling is perceived as a generic term. Nor do the results support
that finding.
Second, we have numerous problems with the way in which [Applicant’s
expert] interpreted or “coded” the responses as well as the manner in which he
grouped the coded responses, and as a result, we have no confidence that the
“32.4%” figure, which represents the number of answers allegedly identifying
Darjeeling as a “type” of tea, is accurate. [n.22 Apart from the many issues we
have concerning [Applicant’s expert’s] characterization of any given answer as a
“type” of tea, even if the respondents themselves actually thought of Darjeeling as
a “type” of tea or actually used the word “type” in their answers, there is no way
of knowing what the respondents understood the word “type” to mean, that is,
whether they understood the word to mean a product brand or source, or a product
genus. For example, we cannot determine whether the 34 respondents who gave
the answer “black tea” viewed Darjeeling (which is a black tea) as a type of black
tea from a particular place or a type of black tea regardless of where it comes
from.]…
…
Simply put, applicant’s survey fails to either show or support an inference
that the primary significance of DARJEELING is generic.
22
Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783, *16-*17 (C.D. Cal.
2005)
…Plaintiff submitted evidence of a “Teflon survey” conducted [among]
313 women, ages 18 to 45, each of whom either had purchased a pair of boots or
casual shoes (excluding athletic footwear) that cost $100 or more in the past 12
months or expected to do so in the next 12 months…Respondents were asked
whether they considered the term “UGG” to be a “common name or a brand
name.”…The data collected…demonstrate that…“58% of all survey respondents
thought UGG was a brand name, whereas only 11 % thought UGG was a
common name…Among those survey respondents who had an opinion, 84%
thought UGG was a brand name, and not a common name.”…Defendants’
genericness expert, reached conclusions similar to [Plaintiff’s expert].
[Defendants’ expert’s] survey indicated that 57% of respondents recognized
“UGG” as a brand, while only 6% considered it a common name…
In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27,*9, *14-*16 (T.T.A.B.
2005)
In addition, applicant introduced a survey to demonstrate that the term
VIRUSSCAN is not generic for computer software…The survey asked the
following relevant questions:
Q6 What do you call the type or category of computer software that is
designed to protect and secure computer data, software, and computer
communications networks?
Q7 What other name or names, if any, do you use when referring to this
type or category of software?…
…
…At first glance, applicant’s survey results appear very impressive. Of
110 respondents to survey questions six and seven, only one responded that the
term “virus scan” was a name for the software and another responded that “virus
protection scan” was the generic name of the goods. On its face, these results of
the survey would strongly support applicant’s argument that its mark was not
generic.
However, upon closer analysis, the results are less impressive. Applicant’s
survey asked “What do you call the type or category of computer software that is
designed to protect and secure computer data, software, and computer
communications networks.” The largest response (37 of 110) to the initial
question identified “firewall,” “firewall software” or “firewall protection” as the
generic name of the software. Another 14 responses identified “security” and
“security protection” as the generic name, while 22 identified other names. The
largest number of responses identified a generic term for a different type of
computer protection product, i.e. a firewall, in response to applicant’s survey
question No. 6…Applicant’s survey questions are more like a guessing game. The
questions provide just enough information so that participants can guess about
applicant’s product but not enough information to understand what the specific
23
product is. Applicant’s survey would be similar to asking prospective purchasers:
“What do you drive that has four wheels and a motor?” While it is likely that the
vast majority of responses would be “car,” “truck,” and “motor vehicle,” it would
hardly demonstrate that unmentioned terms such as “SUV,” “subcompact,” or
“sedan” were not generic terms also…A survey that establishes a generic name
for a product not at issue…is not very relevant.
While we have reason to question the persuasiveness of the survey, we
must give it some weight…
Robert Donchez v. Coors Brewing Co., 392 F.3d 1211, 1218 (10th Cir. 2004)
The last piece of evidence cited…concerns the results of a telephone
survey conducted by defendants. Approximately 200 persons…were asked
“whether nine (9) different names,” including the term “beerman,” were
“‘common’ names or…‘brand’ names.”…The term “beerman” “was recognized
as a common or generic name by 75.9% of the” respondents…[Plaintiff] however,
attempts to interpret the results in his favor by noting that several other terms,
including “draft beer,” “popcorn,” “vendor,” and “mascot,” were found by a
higher percentage of the respondents (i.e., from 90.1% to 95.6%) to be common
or generic terms. Further…[Plaintiff’s expert] opined “there is a statistically
significant difference between the responses obtained for ‘beerman’ and the
[other] so-called common names in the survey.” Again, however, we are not
persuaded that a rational trier of fact could find, based on [Plaintiff’s]
interpretation of the defendants’ survey results, that the term “beerman” is
descriptive rather than generic. In particular, the number of survey respondents
classifying the term “beerman” as generic was clearly substantial...
The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983, 989, 993 (E.D. Mo.
2004)
[Plaintiff] presented survey evidence…to evaluate and quantify the level
of consumer recognition of the term “steakburger.”…The [survey respondents]
were read a list of items and asked whether they most often identified certain
listed items as something that comes from more than one company or something
that comes from only one company…
…
I do not agree with [Plaintiff’s] argument that the [Plaintiff’s experts’]
surveys show the non-genericness of the term “steakburger.”… At most, the
[Plaintiff’s first expert’s] study is directed at consumer awareness of the term and
consumer familiarity with Steak n Shake, which advertises heavily that it is
“Famous for Steakburgers.”
…[Plaintiff’s first expert] asked whether respondents “most often”
associated the term with one company or more than one company. “Steakburger”
was highly associated with Steak n Shake in the markets tested, but this fails to
advance an understanding of the public perception of what a steakburger is…
24
Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180, *31-*32, *37-*39
(T.T.A.B. 2004)
…the parties to these proceedings have each proffered a survey…on the
question of genericness…
…petitioner points to a…survey [which] targeted individuals who had
consulted a real estate agent in the past year or were planning to do so in the
coming year, or were planning to buy, sell or rent real estate in the next year. Of
the ninety-six individuals surveyed, only ten percent said that “Realtor” was a
brand name.
By contrast, respondent’s telephone survey targeted real estate brokers and
agents. Respondent argues that real estate professionals make up the proper
survey universe, as they are actually the purchasers or prospective purchasers of
membership in respondent and the services provided by respondent…
…
Accordingly, given…the deficiencies of petitioner’s survey, we accord it
very little weight on the question of whether prospective purchasers of a real
estate professional's service would view the term “Realtor” as indicating the
services were being offered by a real estate association member (even if the
association were unknown).
…
We need not agree with respondent that real estate professionals are the
sole group with whose perceptions we should be concerned in order to accord
substantial weight to the results of the [Respondent’s expert’s] survey. For given
the circumstances of the use of these collective service marks, we agree with
respondent's fallback position that real estate professionals make up a significant
subgroup of relevant consumers…
Ty, Inc. v. Softbelly’s, Inc., 353 F.3d 528, 530-531 (7th Cir. 2003)
…A survey by [Plaintiff’s expert]…found that 60 percent of the
respondents thought “Beanies” [was] a brand name…If 60 percent of the relevant
consuming public thinks “Beanies” [is] a brand name, as many of 40 percent may
think it generic…the legal test of genericness is “primary significance,”…and
[Plaintiff’s expert’s] results are evidence that the primary significance of
“Beanies” is still as the name of [Plaintiff’s] brand.
…A linguist testified that 98 percent of the references in news articles to
the word “Beanie” were to [Plaintiff’s] products and that dictionaries do not list it
as a generic (lower-case) word.
…A statistician sampled eBay and Yahoo auctions and found that more
than 80 percent of all references to “beanie(s)” were to [Plaintiff’s] products.
…In a phone survey conducted in 1999, more than 60 percent of the
respondents identified “Beanies” as relating to [Plaintiff] or Beanie Babies…
25
Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310, *44-*45 (T.T.A.B.
2003)
Applicants…have submitted convincing evidence that SWISS ARMY is
[a] trademark…This…includes…the results of the telephone survey…conducted
in 1997 to determine whether the term “Swiss Army” was perceived as a generic
name or as a brand designation. The findings from the survey were: (1) of a crosssection of potential purchasers, 81% considered “Swiss Army” to be a brand
name, not a common name; and (2) most consumers (92%) associated “Swiss
Army” with knives or pocketknives, although 16% believed there was some
association between the “Swiss Army” name and watches.
[The] survey utilized the generally approved “Teflon Methodology.” It
involved men and women, ages 18 and older, who indicated an intention to
purchase a pocketknife in the next six months…[Respondents] were asked a
series of questions, including whether they thought “Margarine,” “Aspirin,”
“Cellophane,” “Easy Spirit,” “Swiss Army,” “M & M,” and “Sony” were
common names or brand names…
Opposer thoroughly cross-examined applicant’s survey expert witness
regarding the type of survey, the interviewing, the analysis, etc…it is noteworthy
that opposer did not retain a survey expert to critique applicants’ survey, and did
not conduct its own survey (or elected not to submit such testimony or survey
results)…
We have carefully considered the entire testimony…and we find no reason
to discount [the] survey…
Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236, 1250-1251 (D. Haw.
2003)
In the [Plaintiff’s survey], respondents were first shown a picture of a BIC
Cookie wrapped in cellophane printed with the word “Big Island Candies.” They
were then asked if they had seen the BIC Cookie before. If they stated that they
had, they were asked, “Who makes this product?” In response to that question,
16.9% to 29.4% of respondents answered “BIC.”…
It is true that relevant survey data or statistics of some sort might assist
this court…As [Plaintiff] contends, “the most important type of evidence used in
evaluating genericness is consumer surveys.”…
Unfortunately…the [Plaintiff’s] Survey is of no help to it on the present
motion. First, the [Plaintiff’s] Survey does not test for genericness. The survey
asked the “Who are you?” question. That method cannot possibly test whether
respondents view the BIC Cookie as answering the question “Who are you?”
(rather than answering the question “What are you?”). The question is not which
source consumers most often associate with the BIC Cookie, but whether the BIC
Cookie design's primary significance to the consumer is that of source
identification…
Second, no attempt was made to test consumers’ perceptions of the BIC
Cookie design rather than the BIC Cookie packaging (or the combination of the
26
BIC Cookie design and packaging). Survey respondents were never shown a plain
BIC Cookie. Rather, the only way in which respondents saw the BIC Cookie was
when it was wrapped in cellophane printed with the words “Big Island
Candies.”…
Finally, the court notes that [Plaintiff] misunderstands what percentage of
respondents must respond in a certain way to establish nongenericness…
[Plaintiff] suggests that, if more than 15% of survey respondents identified
[Plaintiff] after viewing the BIC Cookie, that percentage was “sufficient to
support a summary judgment finding of distinctiveness, so it is more than
sufficient to show that the dress is not generic.”…That argument is incorrect
because (1) the type of survey used to test for genericness differs from the type of
survey used to test for distinctiveness, and (2) for a genericness survey, “majority
usage controls.”…For a term to be held nongeneric, the seller must prove that the
“primary significance of the term in the minds of the consuming public is not the
product but the producer.”…
Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513, 526 (D. N.J. 2002)
Defendant has also provided a report…which determined that the term
“NetBank” is not considered generic after surveying 400 random internet users
and asking them certain questions regarding phrases that describe banking
services…
In this case, the…survey asked, in relevant part:
1. Are you aware of a banking service that allows you to pay some or all
of your bills by using your computer to communicate with your bank?
2. If you were to describe this process to a friend, what words or phrases
would come to mind first? That is, what would you call this process?
…[Defendants’] report indicated that no one responded with the term “net bank”
to describe the process of paying bills by using a computer. …the…Court finds
that by posing such survey questions, Defendants attempt to confuse the separate
industries or services of online banking and online bill payment. Both online bill
payment and banking services are combined in the question, Defendants having
initially occupied the capacity of an online bill payment company while seeking
to assert its mark over Plaintiff in the field of banking services provided via the
global computer network…the issue is whether “net bank” is generic for online
banking services, for which Defendants seek to expand their trademark protection,
not online bill payment services using electronic coupons, for which the mark was
registered. Defendants’…questions…fail[ed] to reach the heart of the issue, which
is whether the “net bank” term has reached genericness in the field of banking
services provided via the global computer network…
27
Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, *28, *39-*42 (W.D. Wash.
2002)
…Here, [Defendant] has presented evidence in five of the six categories,
omitting only consumer surveys, to support its claim that the Windows trademark
is generic.
…
The Court first turns to the evidence submitted by [Plaintiff] consisting
primarily of several consumer surveys that show a high degree of recognition of
the Windows brand among the consuming public…The Ninth Circuit has
emphasized that a trial court may consider factors such as “survey design, nature
of the questions asked, and the experience and reputation of the surveyor” in
determining the weight to accord a survey…
In support of its [m]otion…[Plaintiff] submitted the Declaration of…the
current Director of Branding…The first survey mentioned was conducted for
[Plaintiff] in 1999 and shows that 93% of personal computer users recognized the
Windows brand…No exhibits are attached to demonstrate the methodology or
explain the survey design, and without such a foundation, the Court has no
alternative but to ascribe a bare minimum of weight to the result. The next survey
[offered in the declaration of the Director of Branding] was conducted…[among]
“on-line” consumers in early 2001 and concluded that Windows was the No. 1
brand overall and No. 3 in distinctiveness…The Declaration attaches a copy of
the…survey results which displays the top twenty “Marks of Distinction” in ten
countries…Based on the one page exhibit, it is impossible for the Court to analyze
the…assertion that “Windows ranked No. 1 overall” because the submitted
evidence lacks meaningful information about survey methodology….the Court
finds it to be of little probative value in showing that Windows is a protectable
trademark. The final survey [offered in the declaration of the Director of
Branding] showed that “in the United States, almost 80% of the general public is
aware of the Window (sic) brand.”…The Court therefore declines to give any
substantial weight to this survey, or the others described in the [declaration of the
Plaintiff’s Director of Branding].
Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926, 934 (M.D. Tenn.
2001)
[Plaintiff] has also commissioned a survey [where]…[r]espondents were
interviewed in three shopping malls in three states between the geographical sites
of the litigants, with 210 total interviews conducted…The survey was designed to
investigate the issue of whether the existence of the alphanumeric telephone
number, 1-800-THE OPRY, would convey the impression of an association with
a particular company, namely “Grand Ole Opry,” or whether it referred to country
music generally…
The survey indicated that 45.7% of the overall population associates the
number with a particular company, namely the “Grand Ole Opry.”…Within the
population of respondents who listen to country music, the relevant market, 60%
28
associated 1-800-THE OPRY with a particular company, specifically the Grand
Ole Opry in Nashville, TN…
The survey results clearly support the conclusion that the general
population, and the specific target market of country music listeners, expects an
800 number, 1-800-The Opry, to be associated with [a] particular company,
specifically the Grand Ole Opry in Nashville, TN, and any other company
utilizing the 800 number, 1-800-The Opry, would be misleading to the general
population and the specific target market of country music listeners. The results
reject any proposition that The Opry refers to country music generally or to a
variety of country music shows.
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc. and Sports Marketing Int’l, Inc., 162 F.
Supp. 2d 560, 570, 572 (N.D. Tex. 2001)
Finally, the depositions of both parties’ experts raise genuine issues of
material fact regarding the genericness of March Madness.…In addition,
Plaintiff’s expert…opined in his sworn declaration that “the primary significance
of March Madness is a trademark that identifies a specific basketball-related
sports event sponsored by a single source.”…the survey conducted by [Plaintiff]
demonstrated that 61 percent of eligible consumers recognized March Madness as
a trade name, as opposed to a common name…
…
The [Plaintiff’s] survey, discussed above, also raises questions about the
protectability of March Madness. Just as the 61 percent figure might convince a
juror that March Madness is not generic, the same figure could lead a juror to
believe that [March Madness Athletic Association] does not hold a protected
mark in the phrase. This conclusion becomes more likely when comparing the 61
percent result for March Madness with the 92 and 93 percent results for the terms
“Kentucky Derby” and “Stanley Cup.” In addition, the fact that the survey did not
ask which brand the participants associated with March Madness could lead a
fact-finder to discount its results.
In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599, *10-*18 (T.T.A.B. 2001)
The respondent was then asked the following: “Now, for each of the
following ten names, would you please tell me whether you understand the name
to be a common name or a brand name?” The list was read randomly…[STP,
Windsurfer, Margarine, Teflon, Jell-O, Refrigerator, Aspirin, Coke, American
Airlines, Gas Station]. [Subsequently] the respondent was asked: “With respect to
golf, for each of the following names, would you please tell me whether you
understand the name to be a common name or a brand name?”…[n6 This followup question presents a twist on a typical “Teflon Survey.” In this connection, we
take judicial notice of the dictionary definition of the term “steelhead”: “a largesized silvery anadromous rainbow trout.” Webster’s New International Dictionary
(unabridged ed. 1993) Given the fact that “steelhead” is a name of a fish, some
respondents may well have classified the term as a common name if the term
29
appeared in the first list of terms. By way of example, the same likely would be
true of the term “Arrow.” Although the term is a common name (as in “bow and
arrow”), it is also a brand name as applied to shirts. Thus, inasmuch as
“steelhead” is a dictionary term, we see no problem with the follow-up question
that directs the respondents’ attention to the significance of “Steelhead” as it
pertains to golf.] [Steelhead, Footjoy, Graphite]
…
The issues on appeal are whether the term STEELHEAD is merely
descriptive or generic for applicant’s golf clubs and, alternatively, if such term is
not generic but rather merely descriptive, whether it has acquired distinctiveness...
We turn first to the issues of whether the term STEELHEAD is generic, or
whether it is just merely descriptive, when used on golf clubs…The United States
Patent and Trademark Office has the burden of establishing by clear evidence that
a mark is generic and thus unregistrable…Evidence of the relevant public’s
understanding of a term may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals, newspapers, and other
publications…
…
We next turn to the second step of the…inquiry, that is, whether the
relevant public understands the term STEELHEAD to refer primarily to the type
or category of goods…
…
The Examining Attorney provided dictionary definitions of the words
“steel” and “clubhead,” as well as examples of generic uses by the media…the
survey, which shows results that are pretty evenly divided, establishes that it is
not clear cut as to whether the relevant public views STEELHEAD as a brand
name or a generic term.
…
Of considerable significance in the present case is the survey. As in the
original “Teflon Survey,” the respondents in applicant’s survey were quite good at
sorting out brand names from common names. Although the Examining Attorney
is technically correct in viewing the survey results relating to STEELHEAD as a
statistical tie (taking into account the precision variance), the simple fact is that a
substantial part (over 48%) of the relevant purchasing public view the term
STEELHEAD as a trademark, and not as a generic name. The survey by itself
raises a doubt regarding genericness, and any doubt in determining registrability
is resolved in favor of applicant…
Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251, 254-255 (4th Cir. 2001)
In support of its argument that “crab house” is not generic, [Plaintiff]
offers a survey conducted of consumers in the Charleston area. [Plaintiff] asserts
that the district court erred in failing to consider its survey evidence in assessing
genericness…However, [Plaintiff] fails to recognize that there are two distinct
ways in which terms may be classified as generic: (1) where the term began life as
a “coined term”; and (2) where the term was commonly used prior to its
30
association with the products at issue…The notion that whether a word is generic
depends upon consumers’ understanding of the word is based upon a scenario
involving a coined word for a commercial product (such as “aspirin,” “teflon,” or
“thermos”) that is alleged to have become generic through common
usage…[Plaintiff] does not claim to have first coined the term “crab house.”
Therefore, it is not necessary to determine whether the term has become generic
through common use, rendering [Plaintiff’s] customer survey irrelevant.
Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832, 840 (9th Cir. 2001)
…[Defendant] submitted excerpts from a consumer survey purportedly
showing forty-four percent consumer awareness of the term “Fire-Safe.”…the
district court noted that the survey excerpts do not indicate whether the consumers
were asked to identify the term “firesafe” as a brand name or a common name, a
critical issue in a case involving genericness. Simply asserting consumer
awareness of the term begs the question. Nor did the submission address the
format of the survey or its methodology. Without any information regarding the
survey design, questions, or methodology, the district court did not abuse its
discretion by ascribing little weight…
31
DESCRIPTIVENESS/SUGGESTIVENESS SURVEYS
In re Super-Pharm (Israel) Limited, 2013 T.T.A.B. LEXIS 629, *8-*13 (T.T.A.B. 2013)
... [A]pplicant argues that it has shown via two surveys...that
consumers do not consider SUPER-PHARM to be “merely descriptive”
for “drugstore retail,” the category tested. To this end, applicant
commissioned...a Teflon-style survey...[I]n line with a Teflon-style
survey, participants were told the difference between a brand and a
“merely descriptive” term...
In the Teflon-style format, participants were given a mini-test, to
see if they understood what merely descriptive means. Only those who
correctly identified THE GAP (for clothing) as a brand and LOOSE FIT
JEANS (for clothing) as a merely descriptive term proceeded with the
survey. Participants were then asked about nine terms in relation to
specific goods or services and asked whether they were a “Brand name,”
“Merely Descriptive term,” or “I’m not Sure.” The results are as follows:
TERM:
Brand
J&R
(electronics)
ACTIVISION
(video game publishing)
MACY's
(general retail)
SUPER-PHARM
(drugstore retail)
PERSONAL CARE
(banking services)
HOME SAVINGS
(banking services)
DUANE READE
(drugstore retail)
BED & BREAKFAST REGISTRY
(lodging reservation services)
SECURITY CENTER
(storage services)
...
Merely.
Descr.
76.4%
7.2%
Don't
Know
16.5%
75.1%
13.1%
11.8%
97.0%
2.1%
0.8%
45.1%
35.4%
19.4%
1.3%
96.6%
2.1%
14.3%
78.5%
7.2%
73.0%
6.8%
20.3%
13.9%
79.3%
6.8%
3.4%
89.9%
6.8%
[Applicant’s expert] conducted a second consumer survey whereby
potential consumers were asked to come up with their own “open ended”
32
ideas of descriptive terms for drugstore services. Specifically, participants
were tasked as follows:
We’d like you to think for a moment about one particular industry
-- retail drugstores. Imagine that someone you know asks you for a
recommendation about a retail drugstore they could use. You make
a recommendation for a particular store, such as CVS, Rite Aid or
Walgreens, etc.
Your task is to come up with a two-word phrase that DESCRIBES
THE DRUGSTORE'S PRODUCTS/SERVICES IN A POSITIVE
WAY to your friend. Your phrase needs to make clear, in a general
way, what products or services the drugstore sells. Please do not
name the actual store in your response -- just describe its
products/services in a positive way to your friend.
Due to the extremely open-ended nature of the survey and the
innumerable possible answers, we do not give any weight to this openended survey. Indeed, although no consumers came up with the term
SUPER-PHARM in response to the question, that does not at all indicate
that it is not merely descriptive of any of applicant’s services...
...
...[W]e give no probative value to the open-ended survey. Further,
we give little to no probative value to the Teflon-style survey. First, while
a Teflon survey, typically used in the context of a genericness inquiry,
may be of assistance in determining whether a term has acquired
distinctiveness, it is less certain what relevance, if any, it may have for
purposes of establishing inherent distinctiveness...
...[T]o the extent the Teflon-style survey has any probative value,
less than half the participants thought SUPER-PHARM to be a drugstore
brand, compared with 73% for competitor DUANE READE...
In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621, *9-*10, n.2 (T.T.A.B. 2004)
…while the Trademark Examining Attorney herein has successfully made out a
prima facie case for MOSCONI being primarily merely a surname, we find that the
present applicant has successfully rebutted this case with its showing. The record is
replete with references to the legendary Willie Mosconi as being so famous at billiards
during the last fifty years of his life that his name is synonymous with the game. In a
survey of members of the relevant purchasing public [n2 Heads of households who were
interested in sports, had household incomes of $50,000 per year or higher, who had
purchased a pool table or intended to do so within the next five years…]…at least 21% of
the respondents associated Willie Mosconi with the game of pool…It is this showing that
demonstrates that MOSCONI would be viewed by the relevant purchasing public as a
reference to Willie Mosconi when used in connection with applicant’s goods. This
effectively rebuts the prima facie showing made by the Trademark Examining Attorney
herein.
33
Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS
19278, *9, *16-*17 (D. Vt. 2004)
…[Plaintiff] offered a survey…designed to test whether “PocketMoney” is
a descriptive or a suggestive mark…[Plaintiff’s expert] selected as its
universe…all individuals aged eighteen or older…[Plaintiff’s expert] assumed
that many individuals could be within the class of potential consumers of PDA
products even if they were not currently aware of this…
…
The survey conducted by [Plaintiff’s expert] also provides some support
for the conclusion that “PocketMoney” is suggestive. The survey does not provide
strong evidence because it sampled the views of the general public rather than
those known to be likely to purchase software for PDAs…Thus, the survey
provides a small amount of additional evidence that Catamount's mark is
suggestive.
J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358, 366, 370-372 (D. N.J.
2002)
[Plaintiff] offers [a] market survey…as evidence that the [BREAK &
BAKE] mark should be classified as “suggestive” (and thus protected) instead of
“generic”…[Plaintiff’s expert] has proffered his opinion, based on the results of
his survey conducted on the BREAK & BAKE mark, that respondents found the
mark to be suggestive, not merely descriptive…
…
In this case, the [Plaintiff’s] survey suffers from two substantial
flaws…The first, and perhaps clearest, flaw is the uncontroverted definitional
problems of the survey…The survey was submitted to show the mark should be
classified as “suggestive” instead of “generic” or “descriptive,” but it did not
properly define any of the classifications. Because the classifications were not
properly defined, the survey has no bearing on the issue it was submitted for.
…This Court had previously discussed in detail and with numerous
citations to case law the proper definition of a descriptive term…Specifically, this
Court explained that “descriptive marks describe the purpose, function or use of
the product, a desirable characteristic of the product, or the nature of the
product.”…Yet, the [Plaintiff’s expert’s] definition includes nothing that refers in
any way to the correct, recognized and binding definition of a descriptive term
under trademark law…
…As a result, the flawed definition permeated the entire survey to make
its finding completely untrustworthy and unreliable…
…
The second flaw in the survey is that the universe chosen for the survey
was improper…
…It is undisputed that [Plaintiff] sells all of its frozen cookie dough
product with the “BREAK & BAKE” mark through its food service distributors to
distributors who offer the product to fund raising organizations…As a
34
result…[Plaintiff’s] study should have been limited to the commercial distributors
in the food service industry who may have contact with frozen dough
products…Instead, the universe here consisted of adults shopping at one of four
malls in the United States who either “do at least some of the grocery shopping
for their household,”…or “have purchased refrigerated cookie dough in the past
and/or intend to purchase refrigerated cookie dough in the future,”…This universe
renders the study unreliable as it ignores the fact that the ultimate consumer does
not have any contact with the “BREAK & BAKE” mark on [Plaintiff’s] product.
In addition, it only concerns the views of ultimate consumers who purchase or
may purchase refrigerated dough when [Plaintiff’s] product is unquestionably
frozen.
The improper sampling universe is further compounded by the survey’s
design flaw of failing to disclose to respondents the context of the product with
which the mark is connected. The [Plaintiff’s] survey instead asked shopping mall
customers to guess about this context. Again, such a survey misses the mark
where descriptiveness is sought to be ruled out. This is true because the survey
must supply to “the hypothetical potential customer” the “amount of basic
knowledge about the product that most people would have from news and
advertising.”
35
SECONDARY MEANING SURVEYS
Genesis Strategies, Inc. v Pitney Bowes, Inc., 2014 U.S. Dist. LEXIS 67714, *11, *15*17 (D. MA. 2014)
...Plaintiff commissioned a consumer survey, which Defendant
contends is inadequate to show secondary meaning.
...
The survey consisted of eight multiple choice questions...
Of the eight multiple choice questions, only two could arguably
relate to secondary meaning. These ask “Prior to taking this survey, had
you seen the product pictured below?” and, if yes, “Where have you seen
this product?” The second question supplied nine multiple choice answers,
three of which are websites controlled by Plaintiff. This question can show
only that existing customers remember where they saw the product, not
that consumers identify any particular design feature with Plaintiff. The
question also lists Plaintiff’s websites for three out of nine of the answers
— giving the survey taker a thirty-three percent chance of picking one of
Plaintiff’s websites...
These questions are not sufficient to show secondary meaning.
First, the survey only questioned existing customers who are already
familiar with Plaintiff’s product and thus likely familiar with Plaintiff’s
websites...
The survey is further deficient because it utilizes an improper
sampling of individuals. [Plaintiff’s expert] noted that an ideal sample
would have been a “large enough sample of the general population that
would buy these styluses,”...Instead, [Plaintiff’s expert] questioned only
customers of Plaintiff, rather than consumers generally...[A] proper
sample should include not just Plaintiff’s own customers, but also
potential customers of Plaintiff...
The survey is thus deficient because it uses an improper sample of
the Plaintiff’s customers and gives participants an approximately thirty
percent chance of guessing Plaintiff as the source of the product. This is
insufficient as a matter of law to establish secondary meaning...
Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 2014 U.S. Dist. Lexis
1030, *24 (S.D.N.Y. 2014)
Although the [Plaintiff’s expert’s] study focused on post-sale
confusion, it also provides support for secondary meaning. Despite the fact
that the watches in the study had a [Defendant’s] logo on their faces, those
who identified them as [Plaintiff’s] watches nonetheless listed the aspects
of the [Plaintiff’s] trade dress design as the reason, including the octagonal
shape of the watch (23%), the style, design or shape of the watch dial
(20%), the octagonal bezel and shape or look (15%), similar bezel (13%),
bezel and screws (10%), the octagonal shape (8%)...These responses
36
support the secondary meaning of the design as distinctive to the
[Plaintiff’s] brand or source...
Farm Fleet Supplies, Inc. v. Blain Supply, Inc., 2013 T.T.A.B. LEXIS 449, *22-*26, *47*49 (T.T.A.B. 2013)
...[A]pplicant relies on a secondary meaning survey...
The purpose of the survey was to determine “whether FARM &
FLEET has acquired secondary meaning within the geographic area where
(applicant) operates its Farm & Fleet stores, such that the primary
significance of the term FARM & FLEET is to identify a store that comes
from a single, even if unknown, source.”...The survey was originally
conducted in connection with another dispute, but [Applicant’s expert]
believes its results “are applicable to the tri-state area (including Iowa),
and would therefore be useful in this dispute.”...
The survey was conducted between July 16-26, 2010 by telephone.
In total, 404 consumers above the age of 18 “who are responsible for all or
some of the shopping needs of the household” were
interviewed...Interviewees were randomly selected from a sampling of
both listed and unlisted numbers, “based on having a high probability of
being within a 12 mile wide circle around one of 33 Farm & Fleet store
locations that has been operating prior to 2003, the year when (applicant)
applied for registration of the ‘Blain’s Farm Fleet’ mark” with the Office...
One half of the interviews (201) were in the “test cell,” and were
asked about the term FARM & FLEET, while the other half (203) were in
the “control cell” and were asked about the term RANCH &
MACHINERY, which has a “parallel construction” to FARM & FLEET
but “is not believed to currently function as a name of an actual retailer.”...
Participants were next asked whether the term is owned or
operated by one company or more than one company, and “What makes
you say that?”...Those who responded that the term is owned by one
company were also asked where that store or company is
located...Interviews were “double-blind” and validated, and other standard
survey techniques were used...
The survey revealed that “(v)irtually all of the test cell respondents
(98%) are familiar with FARM & FLEET. By contrast, only 4% of control
cell respondents report awareness of RANCH & MACHINERY.”...A
majority of those asked how they would describe FARM & FLEET
provided “a specific description that is consistent with (applicant’s)
stores...Furthermore, “a substantial majority of test cell respondents (59%)
believe that FARM & FLEET is owned or operated by one company
compared to just one control cell respondent (0.5%) who believes that
RANCH & MACHINERY is owned or operated by one
company.”...Overall, “a majority of test cell respondents believe FARM &
FLEET is operated by a single company (56%) and [identified the]
location (55%) when describing FARM & FLEET.”...
37
...
[Applicant’s] survey, to which opposer does not specifically
object, further supports a finding of acquired
distinctiveness...Furthermore, while the survey was conducted by
telephone, this does not significantly detract from its reliability, especially
because the survey concerned only the words FARM & FLEET, rather
than a color, design or other mark for which a visual inspection would be
expected to increase the reliability of the survey’s results...
We do have one concern with the survey, however, which is that
its attempt to select consumers living within 12 miles of one of applicant’s
stores may have skewed the results. [Applicant’s Vice-President of
Management Information Systems] testified that applicant considers
consumers living in a zip code within 25 miles of the home zip code of
one of applicant’s stores to be “in market.”...[Applicant’s expert’s]
selection of a subset of applicant’s “in market” consumers, those living
within 12 miles of one of applicant’s stores, may have increased the
likelihood of respondents associating FARM & FLEET with a single
source because consumers living closer to a BLAIN’S FARM & FLEET
store will be more likely to be aware of the mark given the large size of
applicant’s stores and their prominence in their communities...[W]e find
that the survey tends to support a finding that FARM & FLEET has
acquired distinctiveness.
The Bd. of Trustees of the Univ. of Alabama v. William Pitts, Jr., 2013 T.T.A.B. LEXIS
370, *57-*58 (T.T.A.B. 2013) This opinion is a precedent of the T.T.A.B.
Nor have opposers introduced any survey evidence of acquired
distinctiveness. While survey evidence is not required, considering the
ornamental nature of the Houndstooth Pattern, the lack of a survey in the
absence of other probative evidence of acquired distinctiveness leaves
little basis for us to recognize opposers’ alleged ownership of trademark
rights in the Houndstooth Pattern...
Glen Raven, Inc. v. Amerinova Properties, LLC, 2013 T.T.A.B. LEXIS 431, *8-*10, *16*17 (T.T.A.B. 2013)
Applicant objects to that portion of the testimony...addressing
market research studies conducted at opposer’s behest in 1988 and
1989...1997...and...in 2005...Opposer seeks to make the reports of record
to show brand awareness of its SUNBRELLA mark...
We believe that applicant’s objections go to the weight of this
evidence and not to its admissibility. The studies appear to have been
designed and conducted according to accepted principles for determining
accurate results, and are relevant to the issue of the relative market
strength of opposer’s mark. Accordingly, the evidence is admitted for
what it shows on its face. The studies and the related testimony, however,
38
have limited probative value. They were directed to a sample that does not
include buyers of live plants, and with the exception of the 2005 study,
were also not directed to buyers of outdoor items such as patio furniture,
umbrellas, or outdoor cushions, but rather to buyers of opposer’s fabric.
Further, although introduced by [Opposer’s Vice-President of
Marketing’s] testimony, [he] did not conduct, design or direct the studies,
with the possible exception of the study directed to the boating market,
and does not appear to have any first-hand knowledge thereof. Thus, we
have considered the evidence as showing that at the time conducted, for
the representative sample that was included in the study, and limited to the
market at issue therein, a certain segment interviewed
recognized SUNBRELLA as a brand for opposer's fabric...
...
Overall, the record evidence supports a finding that opposer’s mark
is commercially strong among opposer’s customers, i.e., wholesalers,
landscape architects, fabric stores, and designers...
In re GIE Media, Inc., 2013 T.T.A.B. LEXIS 244, *10-*11, *15-*18 (T.T.A.B. 2013)
In February 2012, applicant conducted a survey of 600 randomly
selected subscribers of QUALITY ASSURANCE & FOOD
SAFETY magazine. There were 89 responses (a 14.7% response rate).
Applicant reported the following results:
a. 61.6% indicated that QUALITY ASSURANCE &
FOOD SAFETY had the best coverage of food quality and
safety;
b. 58.6% indicated that they look to QUALITY
ASSURANCE & FOOD SAFETY for information
regarding new products and services in the industry;
c. 64.8% indicated that if they could only receive one
publication, they would choose QUALITY ASSURANCE
& FOOD SAFETY; and
d. 70.4% indicated that QUALITY ASSURANCE &
FOOD SAFETY is read by more than just one person at the
survey respondent’s place of business.
...
...[T]here are numerous problems with applicant’s survey that
affect its probative value. Applicant submitted only selected excerpts from
the survey results. Applicant did not provide any information regarding
the purpose of the survey (“An industry survey was conducted for
QUALITY ASSURANCE & FOOD SAFETY in February 2012”)...We do
not know whether the survey was conducted in the regular course of
39
applicant’s business or specifically for the purpose of establishing
acquired distinctiveness. If, for example, the survey was conducted during
the regular course of business, then the survey is a business record and has
probative value for what it shows on its face.
If, on the other hand, the purpose of the survey was to establish
acquired distinctiveness, we note that applicant conducted the survey
rather than an independent market research company with experience in
the field of consumer surveys. Accordingly, unbeknownst to applicant
there may be biases built into the instructions and questions that limit the
probative value of the survey. In this regard, the universe of respondents
selected for the survey is too narrow because it is limited to applicant’s
subscribers rather than including everyone in the field of quality assurance
and food safety. Thus, the narrow universe skews the results in favor of
finding acquired distinctiveness...there is no evidence putting the number
of applicant’s subscribers into context to show whether applicant’s
subscribers are significant vis-a-vis the subscribers of competing
magazines and website or other industry specific magazines and websites.
In addition, applicant did not present the survey instructions with
the questions the interviewers asked the respondents. To the extent that the
survey results that applicant submitted accurately represent the questions,
applicant identified its magazine as “QA (Quality Assurance & Food
Safety).” It is possible that the interviewer simply identified applicant’s
magazine as QA during the interview. In that situation, the conclusions
that applicant draws from the survey results show recognition of QA as a
trademark, not QUALITY ASSURANCE & FOOD SAFETY.
The questions in the survey are leading questions in that they ask
respondents to choose one of three magazines - - Food Quality, Food
Safety, or “QA (Quality Assurance & Food Safety).” Moreover, the
questions do not measure acquired distinctiveness...A proper question for
measuring acquired distinctiveness is do you associate the term
“QUALITY ASSURANCE & FOOD SAFETY” with one company, more
than one company, or no company? An appropriate follow-up question
would be what company or companies do you associate with “QUALITY
ASSURANCE & FOOD SAFETY”?
In view of the foregoing, we find that the evidence is insufficient
to show that the term QUALITY ASSURANCE & FOOD SAFETY has
acquired distinctiveness.
In re Hershey Chocolate and Confectionary Corp., 2012 T.T.A.B. LEXIS 255, *14-*16
(T.T.A.B. 2012)
Applicant’s direct evidence that the candy bar design has acquired
distinctiveness comprises a consumer recognition survey...Applicant
commissioned a blind internet survey of individuals (over 18 years old)
who “have both purchased a chocolate bar in the past six months and also
plan on purchasing a chocolate bar in the next six months.”...The survey
40
respondents were shown the “four by three” panel candy bar configuration
in the application. A control group also was used and was shown a “one
by three panel” candy bar design. Respondents were first asked if they
associated the “appearance or design of the product with one or more
particular companies.”...If the respondents answered affirmatively, they
next were asked which company or companies they associated with the
design and appearance of the product...After adjusting for the control
group, approximately 42% of the survey participants correctly identified
applicant as the maker of the candy bar...These percentages are significant
when compared to previous cases where secondary meaning or acquired
distinctiveness in a mark has been established...We do not find these
survey results, alone, to be conclusive in establishing that the candy bar
design has acquired distinctiveness; however, the survey is one piece of
persuasive evidence that is considered in conjunction with the entire
record before us.
Companhia de Bebidas das Americas –AMBEV v. The Coca Cola Co., 2012 T.T.A.B.
LEXIS 169, *23-*25 (T.T.A.B. 2012)
...both parties submitted surveys. [Opposer] introduced the survey
and testimony deposition of [Opposer’s expert] who sought to determine
“the main function of the word “zero” . . . in the brand name Coca-Cola
Zero.”...The concern with the [Opposer’s expert’s] survey is that it is a
survey more of meaning than source identification. The source identifying
function of a trademark and the “main function” - as [Opposer’s expert]
put it - of a word in that mark are not necessarily the same things. If, as
[Opposer] argues, the term ZERO is merely descriptive, it would not be
inconsistent for consumers to view the term ZERO as both describing a
characteristic of COCA-COLA ZERO while still perceiving the term to be
a source indicator. The “main function” premise of the survey and source
identification are not mutually exclusive. Put another way, it is possible
that a “main function” of ZERO in [Applicant’s] marks is to identify a
characteristic of applicant’s goods, but consumers nevertheless may have
come to recognize that applicant is the only entity that identifies the
characteristic of its goods in that manner. It is not enough that consumers
merely know that ZERO means “something” is missing from COCACOLA ZERO. The survey needs to test whether consumers view ZERO in
the marks as indicating a source of the goods.
[Applicant’s] rebuttal survey was more on point. Rather than look
for the “main function” of ZERO, the [Applicant’s expert’s] survey
attempted to rebut the [Opposer’s expert’s] survey by determining whether
ZERO in COCA-COLA ZERO served a trademark function. The
[Applicant’s expert’s] survey examined acquired distinctiveness to see if
ZERO was associated with one company or more than one
company...[Applicant’s expert] found that 61% of respondents “perceive”
41
that ZERO was associated with only one company as opposed to 6% for
the term DIET...
We find that the [Applicant’s expert’s] survey validates the
significant sales and advertising numbers discussed above. Consumers
have been exposed to [Applicant’s] ZERO products and advertising on
television, over the radio, via print media, and in every conceivable retail
outlet. Billions of the products have been sold since 2004. [Opposer’s]
attempt to show that the ZERO marks have not acquired distinctiveness
simply fails in light of the scope of [Applicant’s] significant sales and
marketing numbers.
American Express v. Black Card LLC, 2011 U.S. Dist. LEXIS 133151, *25 n.15, *28-*29
(S.D.N.Y. 2011)
n.15...[Plaintiff] submitted two consumer surveys in support of its
argument that secondary meaning in the mark “black card” has accrued to
[Plaintiff]...
The [Plaintiff’s first expert’s] Survey surveyed a sample of 200
individuals with a household income of $250,000 or more. 33.5% of
respondents stated that they associated “Black Card” with only one
company: [Plaintiff]. Surveying an ostensibly broader group, those who
currently have or within the next year will consider getting a credit,
charge, or debit card with an annual fee of $450 or more, the [Plaintiff’s
second expert’s] Survey found that 19.4% of respondents indicated a
unique association of the name “Black Card” with [Plaintiff].
...
[Plaintiff] has demonstrated that summary judgment is appropriate
on its claim that the PTO registration of [Defendant’s] “BLACKCARD”
mark should be cancelled because the mark is not inherently distinctive
and [Defendant] has not demonstrated secondary meaning...
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884, 893-894
(S.D. Tex. 2011)
...the secondary meaning survey question, “If you have an opinion,
what is the brand of motor oil product in the picture I showed you?” is
somewhat leading. A better phrasing of the question would have been
“what is the brand or brands . . .” or “what company or companies puts out
this product?”...However, other courts have found such questions not to be
leading...In the context of product packaging, which “almost
automatically tell(s) customer that (it) refer(s) to a brand . . . and
immediately signal(s) a brand or a product source”...the Court finds that
this question phrasing is only slightly leading. The best remedy, the Court
concludes, is to give slightly less weight to the survey as a result of this
phrasing...
42
...The Court does find the control bottle used in the secondary
meaning survey to be slightly problematic, but not enough so to warrant
exclusion. As a control, the interviewers showed an “F-style bottle” with a
single handle—the sort frequently used several years ago in the industry
but less often today— that had been painted all brown, with the label fully
blacked-out...
In re Charles N. Van Valkenburgh, 2011 T.T.A.B. LEXIS 1, *34-*35 (T.T.A.B. 2011)
This opinion is a precedent of the T.T.A.B.
...we address the probative value of applicants consumer surveys
and declarations. While survey evidence is relevant to establish acquired
distinctiveness, the proponent of the survey must document the procedural
and statistical accuracy of the evidence. In this case, applicant’s survey
evidence consisted only of 23 survey questionnaires completed by the
survey respondents themselves. Apparently, applicant and/or applicant’s
counsel distributed the survey questionnaires to an unknown number of
people at motorsports events who filled them out at their leisure and
subsequently mailed them back to applicant's counsel. Suffice it to say that
there is no basis on which to conclude that the survey is based on
scientifically valid principles. While we will not consider the “consumer
surveys” as survey evidence, we will consider them as declarations
purportedly asserting recognition of the proposed mark as a source
indicator.
General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711, *25 (D.
Utah 2010)
...For nearly the same reasons that the dress is famous, it also has
acquired distinctiveness. The [Hummer] trade dress has been used for over
twenty years and has been actively promoted in connection with the
Hummer product line. Moreover, [Plaintiff] has marketed the Hummer H1
on television, in print, online, and at events and has spent several hundreds
of millions of dollars doing so. Finally, [Plaintiff’s expert’s] survey
indicates a rate of actual confusion of over 50 percent which supports the
inference that the mark has acquired secondary meaning.
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389, *63-*65 (D. Utah
2010)
...Plaintiff also has presented evidence from a consumer awareness
survey. A question on the survey asks respondents: “Which companies
have you ever seen or heard of that sell contact lenses by phone, mail, or
on the Internet?...The first answer by a respondent is recorded...The
respondent is then asked to name other companies that sell contact lenses
by phone, mail, or on the Internet...In 2008, forty percent of the
43
respondents who wore contact lenses mentioned Plaintiff first. In contrast,
only about one percent of respondents listed the next closest competitor...
While the survey provides evidence that the name “1800Contacts”
has marketplace recognition, it is not without its flaws. Because the survey
questions asked about “phone,” “mail,” and “Internet” together, the survey
does not disclose how many respondents recognize Plaintiff as a[n]
Internet retailer...Consequently, the degree of recognition that Plaintiff has
obtained on the Internet versus other marketing channels is unknowable
from the survey...
A second problem with the survey results from how questions were
asked versus how they were recorded. The survey asked an open-ended
question about which companies a respondent had heard sold contacts by
phone, mail, or the Internet. Yet, the person recording the answer had to fit
the answer into a category from a close-ended list...Since the survey was
not double-blind, this survey design may have led to unintended
interviewer bias...Respondents do not always provide a clear and precise
answer. Instead, people may “say, oh, I don't know, it’s a 1-800 number,
or they say, oh it’s got—you know, it’s contact something.”...Because
these answers do not fit cleanly within the close-ended list of possible
responses, an interviewer, in a non-double blind study, may be more apt to
record it as the desired answer of “1800Contacts.”...This weakness in the
survey design lessens its probative value.
Moreover, the survey results are somewhat marginal. Courts have found
that consumer awareness exceeding fifty percent provides good evidence
while “a recognition figure of thirty-eight percent” provides only marginal
evidence...
Carl Walther Gmbh, In re, 2010 TTAB LEXIS 410, *9-*12 (T.T.A.B. 2010)
Applicant’s direct evidence that the PPK handgun design has
acquired distinctiveness primarily consists of a consumer recognition
survey...Applicant commissioned a blind, online survey of individuals
(over 18 years old) who “own a handgun or plan on purchasing a handgun
in the near future” and have not previously worked for a gun
manufacturer. The eligible individuals were instructed “we are going to
show you four different images of pistol shapes and then ask you to
respond to some questions about each pistol shape.” The participants were
then shown the images and asked whether or not they were able to identify
each pistol “based on (their) shape(s)” and, if so, to identify the ‘company
or companies that make a pistol with this shape.’ Applicant’s PPK
handgun design was among three other handguns from various
manufacture[r]s shown to the survey participants...Approximately 54% of
the participants who completed the survey stated that they were able to
identify who makes applicant’s PPK pistol based on the shape of the
pistol; and 33% of survey participants correctly identified applicant, or its
licensee, as the maker. That is, over half of the survey participants
44
associated PPK handgun design with a single source and approximately
one-third of the participants were able to correctly identify the source.
These percentages are not out of line with previous cases where secondary
meaning or acquired distinctiveness in a mark has been established...We
do not find these survey results, alone, to be conclusive in establishing that
the PPK handgun design has acquired distinctiveness; rather, the survey is
one piece of persuasive evidence that is considered in conjunction with the
entire record before us.
...We also disagree with the examining attorney’s reasoning that
the survey is flawed because the participants were subscribers to
publications in the field of handguns. The examining attorney asserts that
“by only surveying consumers with extensive knowledge of handguns, the
applicant has not shown that the public recognizes that (the PPK handgun
design) identifies the source of the goods.”...First, applicant need only
show that the mark has become distinctive as a source identifier in the
minds of consumers or prospective consumers of handguns, and not the
“public” at large...
Cartier N.W., In re, 2010 TTAB LEXIS 337, *4-*5 (T.T.A.B. 2010)
Applicant submitted evidence into this record of a consumer
survey taken in the course of another litigation involving a knock-off
watch design that incorporated all the protectable elements of the Pasha
Chronograph...In order to test the level of consumer confusion as to that
infringing watch, applicant commissioned a survey...This survey’s use of
“look-alike” watches to determine levels of acquired distinctiveness has
been explicitly approved by our primary reviewing Court...A high
percentage of respondents erroneously identified the knock-off watch as
coming from Cartier. We find this to be powerful evidence that this
overall configuration has acquired distinctiveness. The survey properly
focused on the totality of the watch design. On this point, we disagree with
the Trademark Examining Attorney's position that such a survey is not
probative of acquired distinitiveness [sic] if it fails to inquire about
respondents' recognition of specific “features” of the watch at issue.
45
Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573, 580 (W.D. Ttex. 2010)
In short, the Court finds the evidence of secondary meaning
presented at trial would likely not have been sufficient to establish
secondary meaning even without [Defendant’s expert’s] survey evidence
to rebut it...This conclusion is further buttressed by the fact that [Plaintiff]
presented no evidence involving an objective survey of the public's
perception of its name, although the Fifth Circuit places considerable
weight on such evidence...
Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp.
2d 1360, 1373-1374 (N.D. Ga. 2010)
Defendant asserts that the Survey is not reliable because the
universe of respondents was not properly defined. Here, the sampling
universe was Defendants’ list of referring doctors provided by Defendants
in discovery. Plaintiff states that the general allergy suffering public was
not used because Defendants receive 85% of their patients from referrals
from other doctors, and Defendants direct virtually all of their marketing
toward other doctors to increase their referrals. Plaintiff contends that by
focusing only on Defendants’ referring doctors, any bias in the Survey was
in favor of Defendants and the results likely under-represent the true level
of Plaintiff's secondary meaning in the market.
...
The Court does not find that Plaintiff’s Survey universe is fatally
flawed. At issue is the question of whether Plaintiff’s mark had become
associated with Plaintiff’s services in the mind of the consuming public.
Plaintiff argues that the relevant “consuming public” is the population of
physicians that actually refer patients to medical specialists such as
Plaintiff and Defendants. Defendants have not provided any authority
holding that defining the consuming public in this manner is inherently
flawed or necessarily produces an unreliable result. Indeed, the law
appears contrary to Defendants’ position. When “the relevant market
includes both distributors and ultimate purchasers, the state of mind of
dealers is important in determining if secondary meaning exists. While the
fact that no ultimate consumers were surveyed may be relevant in
determining the weight the survey should be given by the finder of fact, it
does not render the . . . survey meaningless for determining if secondary
meaning exists.”...
While Defendants may argue that a survey of a broader universe
may have produced different and more informative results, such argument
goes to the weight Plaintiff’s survey deserves, not to its admissibility. The
Court is persuaded that Plaintiff’s Survey is probative of the question of
whether Plaintiff’s name acquired secondary meaning.
46
Fair Isaac Corp. v. Experian Information Solutions Inc., 645 F. Supp. 2d 734, 759 (D.
Minn. 2009)
…Although direct evidence such as consumer testimony or surveys
is most probative, secondary meaning can also be proven through
circumstantial evidence, such as “the exclusivity, length and manner of
use of the mark; the amount and manner of advertising; the amount of
sales and number of customers; the plaintiff’s established place in the
market; and the existence of intentional copying.”…
Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458, *17
n.3 (S.D.N.Y. 2009)
[Defendant] has moved to preclude [Plaintiff’s expert’s] survey
and report…[Defendant] argues that, because SEXY HAIR is the subject
of an incontestable registration, it cannot be challenged as a matter of law
on the grounds that it is descriptive. This is wrong; as discussed below,
the issue here is not a challenge to any of [Defendant’s] trademarks, but
rather whether the word “sexy” can be regarded as the surname of
[Defendant’s] purported family of marks. [Plaintiff’s expert’s] survey is
relevant because, in order for [Defendant] to establish that it owns a
family of marks using the word “sexy,” it must demonstrate that
consumers perceive the word “sexy” to be an indication of the source of
the hair care product…
Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS
132, *53-*54, *56-*57, *59-*60, *61 n.45 (T.T.A.B. 2009)
Applicant’s expert witness…performed a [secondary meaning]
survey…
…
The survey was conducted in four different geographic locations in
Houston, Texas (Evans Music City and Bellaire Music), Chicago, Illinois
(Guitar Center and American Music), Philadelphia, Pennsylvania (Medley
Music), and Portland, Oregon (Guitar Center)…The relevant population
was defined as “persons who own or plan to own an electric guitar.” The
survey was conducted in front of the display windows of six different
retail musical instrument stores. Potential participants were selected
outside these stores and asked if they own or plan to own an electric guitar
and, if so, if they would be willing to participate in a “national survey” for
a “national maker of guitars.” Respondents were then asked a qualifying
question as to their level of guitar-playing skill. Those who answered that
they do not play the electric guitar were eliminated…
…
We find the inability to review…the verbatim responses lessens
the probative value of the survey report’s conclusions…
47
In addition, the probative value of the survey is weakened
inasmuch as it was conducted with the interviewees facing the display
windows of stores selling electric guitars, two of which (Guitar Center
stores) are known to carry a significant number of applicant’s guitars…
The probative value of the survey is further weakened by the
exclusion of an entire segment of the relevant population, those who own
or want to own an electric guitar but do not play…
…
We further note other more subtle biases in the survey
presentation…“by saying national maker of guitars”…
…given applicant’s market share, it “is not surprising” that
interviewees could recall that applicant makes guitars with these body
shapes “in light of applicant’s sales and advertising, its market share and
the length of time that it has sold” guitars. [n.45 This problem is illustrated
by the 32% false positive responses as to the imaginary shape. Thirty-two
percent of respondents believed an imaginary shape came from
applicant…Thus, when we subtract the positive results of the control
shape from the positive results on the target shapes the results are much
lower…]
Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277, *5-*7 (2d Cir. 2008)
As to consumer studies, [Plaintiff] submitted a survey…conducted
to determine whether the Tank Francaise had achieved a secondary
meaning; the survey had been conducted in the course of [Plaintiff’s]
litigation of a different case…The…survey indicated that there was a 60%
recognition rate among relevant consumers for identifying the Tank
Francaise with a single source. The district court appropriately found that
this survey also mitigated in favor of finding that the Tank Francaise had
acquired a secondary meaning…
To support their argument relating to attempts to plagiarize the
mark, plaintiffs produced evidence that there are many different Tank
Francaise knockoffs or lookalikes being sold by various merchants. That
there are a number of merchants who use the words “Cartier style” and
“Tank style” or even “Tank Francaise” supports the plaintiffs’ argument
that Tank Francaise has acquired secondary meaning. The district court’s
conclusion on this factor was not clearly erroneous…
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *29,
*32-*33, *36 (3rd Cir. 2008)
…Even assuming that [Plaintiff] prevailed and proved “Cocoa
Butter Formula” to be descriptive, it also would need to show that the term
had acquired secondary meaning which associates it with [Plaintiff].
48
[Defendant] moved for summary judgment on the basis that
Browne had not produced evidence creating a genuine issue of material
fact on the secondary meaning question…
*
The evidence’s core deficiency is that while it shows [Plaintiff]
used the term “Cocoa Butter Formula” on many occasions over a long
period of time, it does not show [Plaintiff] succeeded in creating
secondary meaning in the minds of consumers. Although the evidence
leaves no doubt that [Plaintiff] hoped the term would acquire secondary
meaning, nothing shows that it achieved this goal. Jurors would have to
make a leap of faith to conclude that the term gained secondary meaning
because the record fails to provide meaningful support. A jury could
evaluate the quality of the advertising or consider this rise in product sales,
but it would have to guess what lasting impression the advertising left in
the mind of consumers or what portion of [Plaintiff’s] revenue growth it
caused.
*
[Plaintiff] could have overcome these deficiencies in its evidence
by conducting a secondary meaning survey…It could have used survey
evidence to show that “Cocoa Butter Formula” had acquired secondary
meaning in the minds of consumers, thus creating a genuine issue of
material fact on that issue…We never have held, and do not hold today,
that a party seeking to establish secondary meaning must submit a survey
on that point. However, [Plaintiff’s] failure to conduct a secondary
meaning survey leaves it without evidence of any sort in this case of the
secondary meaning of the term “Cocoa Butter Formula.”
Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS
36800, *10-*11, *12 & n.1, *13-*14, (E.D. Mich. 2008)
Plaintiff cites its duration using the term in Michigan, the amount
of money spent on advertising, as well as the results of a secondary
meaning study conducted by its expert witness…Plaintiff concludes that it
has established secondary meaning, and that its mark therefore deserves
strong protection. The Court disagrees.
*
…[Plaintiff’s expert’s] studies [do not] establish secondary
meaning. The studies investigated whether respondents associated the
word “Citizens” in the banking industry with one or more companies, or
no company at all.
In his first study of twelve counties in Michigan, fifty-two percent
(240 out of 473) of respondents indicated they associated “one company”
with the term. The study followed up with “unaided recall” questions,
which asked the “one company” respondents for addresses, logos, or other
advertising cues to determine which company they associated with
“Citizens.” At most eight per cent answered in a manner that suggested the
49
Plaintiff was the one company…[n.1 Defendants challenge [Plaintiff’s
expert’s] total number of “un-aided recall” respondents who identified
Plaintiff as the single source. [Plaintiff’s expert] apologized on the stand
for “missed verifications” of banks outside the counties at issue, some of
which referred to banks even outside Michigan, but acknowledged he did
not correct those entries in a subsequent supplemental report.]
[Plaintiff’s expert] did a second analysis of the data, of respondents
from the nine-county area where Plaintiff is the only “Citizens”-named
bank. The percentage responding that they associated one company was
statistically the same. The second study did not seek to determine which
companies were in respondents’ minds as the “single source.” Plaintiff
argues that because it is the only “Citizens”-named bank in that nine
county area, one must logically conclude that it was the “single source” in
respondents’ minds…
The Court is not persuaded, because the data is simply
inconclusive…
*
In addition, the [second] study followed a time period in which
Plaintiff had invested significant funds and efforts to become established,
especially in Oakland County, whose inhabitants represented one-third of
the second analysis’s respondents. The fact that the numbers were
statistically the same between the two analyses indicates that awareness of
Plaintiff’s mark is weak.
…the eight percent attribution to Plaintiff is insufficient to
demonstrate secondary meaning…
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478, *29*30, *34 (E.D.N.Y. 2008)
…A court considering secondary meaning should take into account
six factors that bear on the extent to which the “consuming public for a
particular product” associates that product with its source on the basis of
its trade dress: “(1) advertising expenditures, (2) consumer studies linking
the mark to a source, (3) unsolicited media coverage of the product, (4)
sales success, (5) attempts to plagiarize the mark, and (6) length and
exclusivity of the mark’s use.”…This is an “essentially factual
determination, proof of which entails vigorous evidentiary
requirements.”…
In seeking to establish secondary meaning, [Defendant] focused its
efforts almost exclusively on the second factor listed above. Such
consumer surveys are a probative source of evidence as to secondary
meaning, but they are not conclusive…
*
[The survey results] persuasively demonstrate that some people
reliably recognize two dominant features and attribute them to
[Defendant]. But the data do not go further to persuade me…that the
50
combination of six features for which [Defendant] seeks protection has
acquired a secondary meaning. The latter proposition may be more
difficult to establish by means of a consumer survey, but such difficulty
does not relieve [Defendant] of its burden of persuasion…Nor does it do
anything to undermine the availability of other sources of proof -including such things as advertising expenditures, and unsolicited media
coverage of the product -- that [Defendant] could have sought to adduce
but did not.
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242, *6-*7 (S.D.N.Y.
2008)
…[Plaintiff] relies on a survey…to support its contention that [its
color mark] has acquired secondary meaning. It asserts that 54.6% of
consumers in the study named NEOSPORIN (R) as a source of the
product sold in a box bearing only [its color mark]. But only 34% of
consumers in the study named NEOSPORIN (R) as the only ointment sold
in a package like the one they were shown. This percentage fell to 32%
when the results from the control group were considered…Taken as a
whole, while [Plaintiff’s] evidence of secondary meaning is sufficient for
a jury to conclude that [its color mark] has acquired distinctiveness in the
marketplace, it is insufficient to establish secondary meaning as a matter
of law.
Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82, *45-*46, *50, *52 (T.T.A.B.
2007) (This opinion is a precedent of the T.T.A.B.)
Opposer also introduced a survey to support its position that
applicant's mark had not acquired distinctiveness…
[Opposer’s expert] conducted a survey that involved telephonically
contacting users of abrasives. The survey also involved a control. A
control is “a twin product attribute, service or stimuli that has the same
characteristics generally as the test stimuli, but does not have the
characteristic that is at issue... it would have all of the characteristics of
purple sandpaper but not be purple.”…
As a result of the survey, [Opposer’s expert] concluded that “when
one measures how many people would identify [Applicant] or one
company, even if an unknown company, as a single source of purple
sandpaper, and you then subtract the similar proportion among people who
are asked about orange sandpaper in the control, you end up with six
percent…
*
Regarding the objection that a telephone survey should be virtually
meaningless, we ultimately agree with opposer that, despite our initial
misgivings, a telephone survey involving a color, at least under the facts of
this case, is not inherently unreliable. To the extent that opposer’s survey
51
is subject to criticism, it could also be criticized as erring on the side of
over-inclusion, because any customer who saw any shade of the color
purple as indicating a single source for coated abrasives would have
responded affirmatively…
*
Overall, we find that the survey, despite some unusual features, is
probative and we will accord it some weight on the question of acquired
distinctiveness…
Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS
27148, *30-*32 (D. Mass. 2007)
The [Plaintiff’s] survey is insufficient to establish secondary
meaning…First, the survey--which was conducted in 2005-06--is
irrelevant to the issue of whether plaintiff’s marks had acquired secondary
meaning as of 1997…Second, the survey did not evaluate whether
respondents associated the name “Bay State” with institutions providing
investment or insurance services…Instead, it asked only if respondents
associated the words “Bay State” with a “financial institution or
institutions in the Worcester area.” Thus, at best, the survey demonstrates
that a portion of respondents associated the words “Bay State” with “Bay
State Savings Bank.” Finally, the number of respondents who associated
the name “Bay State” with plaintiff was not high enough to prove
secondary meaning. Courts typically view survey evidence indicating that
50% or more of the consuming public associate a mark with the
company’s products as sufficient to demonstrate secondary meaning…
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530, *26*27 (E.D.N.Y. 2007)
[Defendant] has submitted a survey of 157 participants to support
its claim that the configuration of six features serves the function of
identifying the source of the Sanitaires and thus possesses secondary
meaning…Of the 157 participants in [Defendant’s] survey, 118 identified
one or more of the six relevant features as signifying that the vacuum
cleaner was a Sanitaire -- none identified all six, let alone the particular
configuration of all six features…In fact, some two-thirds of those 118
participants cited the “red color” as the reason for identifying the vacuum
cleaner as a Sanitaire…No probative weight can attach to a survey that
does not demonstrate the symbolic function of the product design, overall,
with respect to the source of the product. This survey falls well short of
providing sufficient evidence on which to conclude that the design of the
Sanitaires has secondary meaning as a matter of law...
52
Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist.
LEXIS 3659, *20 (S.D. Fla. 2007)
Appeals courts have held that survey evidence “is the most direct
and persuasive evidence” to establish secondary meaning…[Plaintiff]
presented no survey evidence at trial indicating that its Redline product
had acquired secondary meaning in the minds of consumers. [Defendant],
on the other hand, provided [Defendant’s expert’s] survey, and this survey
indicated that Redline had not attained secondary meaning. While survey
evidence is not required to prove secondary meaning, the fact that Plaintiff
did not offer its own survey when faced with [Defendant’s] survey
evidence mitigates against any finding that secondary meaning exists.
Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520, *24*26 (N.D. Cal. 2006)
Here, plaintiff’s survey performed by [Plaintiff’s expert] found that
36% of interior designers in the six states where the parties compete, and
25% of interior designers interviewed nationwide, recognized either all or
some of plaintiff’s tiles as being produced by a specific company known
to them…Defendant criticizes [Plaintiff’s expert] for utilizing an
underinclusive test group; that is, the survey sampled interior designers,
yet plaintiff’s customers include builders, design centers, architects,
contractors and end users (i.e., home owners or purchasers and retail
customers)…
The court agrees with defendant that the limited survey population
reduces its probative value, but the court declines to rule the survey
inadmissible…
plaintiff’s Rule 30(b)(6) witness concedes that interior designers are not
“retail” or “average” customers, as they hold specialized knowledge of the
tile industry…Due to these shortcomings, the court assumes that, if the
survey had included a proportionate sampling of all customers, the
percentage of respondents identifying the tile design would be lower. See
Yankee Candle, 259 F3d at n14 (noting that opinions of retailers and those
active in the field not evidence of views of the consuming public). Indeed,
plaintiff’s survey undercuts its argument for secondary meaning: the
survey suggests that over three quarters of the most sophisticated
purchasers do not recognize plaintiff’s tiles as being produced by a
specific company.
53
General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 418-419 (6th Cir. 2006)
…[Plaintiff] also relies on a survey from 2002, conducted in
anticipation of this litigation. [Plaintiff’s] survey concluded that
Hummer’s trade dress had secondary meaning…
[Defendant] argues that [Plaintiff’s] survey evidence is not enough
to establish secondary meaning. First of all, it argues that secondary
meaning must be proven before the first allegedly infringing use of the
trade dress…Survey evidence from either 1999 or 2002 is therefore not
relevant given that [Defendant] developed the [first allegedly infringing
product] in 1992 and the [second] allegedly infringing [product] in 1997.
[Plaintiff] retorts that such a blanket rule would invalidate all surveys of
trade dress conducted in anticipation of litigation.
This Court has historically favored the use of consumer surveys as
proof of secondary meaning…However, the question remains whether we
should ignore all survey evidence conducted post-infringement or accept
the evidence with the understanding that the survey does not reflect a preinfringement world. A court may easily take into consideration the
strength of recognition at the time of the survey in light of the amount of
time passed between that date and the date of infringement. We have
previously taken the latter course…This seems to be the appropriate
choice, given the relatively unlikely scenario that a company has
conducted a pre-infringement survey and this Court’s strong support for
survey evidence in evaluating secondary meaning. In light of the strong
statistical evidence (96% recognition in 1999 and 77% recognition in
2002), we hold that [Plaintiff’s] survey evidence was sufficient to support
secondary meaning…
Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418, *7-*8 & n.1, *15 (D.
Nev. 2006)
Additionally persuasive is [Plaintiff’s] evidence in the form of a
survey of table game managers from a cross-section of casinos in the
United States indicating that 35% of individuals interviewed associated
[Plaintiff’s] Four Card Poker Game with a single source…[n.1 Various
courts have held that such a percentage of recognition (approximately 30%
or more) is probative of secondary meaning. See Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d 277 (7th Cir. 1998); Zatarains, Inc. v. Oak Grove
Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983); McNeil-PPC v.
Granutec, Inc., 919 F. Supp. 198 (E.D. N.C. 1995).]
…
…And further, the survey conducted by [Plaintiff] implies that
[Plaintiff’s] table design is a strong trade dress…
54
American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195, *62-*64
(T.T.A.B. 2006)
The statement of the purpose and the conclusion in applicant’s
survey report exhibits a conceptual flaw which permeates the survey. To
show acquired distinctiveness, it is not sufficient to show that the applicant
is the party “most commonly associated with” the product design. Rather,
the applicant must show that the product design identifies a single source,
that is, that the public has come to expect that every plug having the
appearance of applicant’s plug to be from applicant, even though it does
not bear the [Applicant’s word] mark…
…the fact that only 19% think only one company makes products
employing this product design contradicts applicant’s claim that
applicant’s mark has acquired distinctiveness…Here, 19% is far short of
the level necessary to show applicant’s mark has acquired distinctiveness,
even if the result was otherwise reliable. In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985)(surveys
showing 41% and 50% recognition, submitted together, found sufficient to
establish acquired distinctiveness for trade dress); In re Jockey Intl., Inc.,
192 USPQ 579, 581 (TTAB 1976)(survey showing 51.6% recognition
found sufficient to establish acquired distinctiveness for trade dress).
Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas
Subsidiary, 2006 U.S. Dist. LEXIS 9752, *20, *22 (N.D. Tex. 2006)
Defendant seeks to exclude the results of a survey conducted by
[Plaintiff] to determine whether a hospital known as “Children’s” has
acquired secondary meaning among parents in the Dallas
area…The…survey found that “[a] total of 58% of Dallas parents
interviewed believed that ‘Children’s’ identified one specific Dallas
hospital, and specifically Children’s Medical Center of
Dallas.”…Defendant objects that the results of this survey are unreliable
because: (1) the survey universe is not limited to parents or guardians who
make healthcare decisions for their children; (2) responses are based on an
improper leading question; and (3) only Dallas County residents were
interviewed.
…
[Plaintiff’s expert] surveyed 65 adult men and 157 adult women in
Dallas County, Texas who live with a child under 18 years of age…Each
person interviewed was asked:
If someone mentioned a Dallas hospital to you, and
called it “Children’s,” do you think “Children’s”
--Identifies one specific Dallas hospital
--Or, describes more than one Dallas hospital which
provides pediatric services?
55
…Defendant correctly observes that the survey universe is not necessarily
limited to parents who make healthcare decisions for children. Instead,
potential respondents include adult siblings, babysitters, relatives, or
friends living in the same household as a minor child. Defendant also
believes that the geographic area of the survey is too limited and that the
operative question asked of the respondents -- whether a Dallas hospital
called “Children’s” identifies one specific hospital or more than one
hospital which provides pediatric services -- is biased in favor of selecting
the first response…
Cartier, Inc. v. Samo’s Sons, Inc. 2005 U.S. Dist. LEXIS 23395, *12-*13 (S.D.N.Y. 2005)
…The survey found that “sixty-one percent of the respondents associated
the design of the [Plaintiff’s] watch with a single company.”…Defendants argue
that the [Plaintiff’s survey] is “flawed” because it “did not test the perceptions of
an ordinary observer.”…
[Plaintiff’s survey] shows that a majority of consumers who “reported
owning a fine watch valued at $2,500 or more” or “were very likely to buy a fine
watch in the next year” identify the [Plaintiff’s watch] with one source. “The
Plaintiff is not required to establish that all consumers relate the product to its
producer; it need only show that a substantial segment of the relevant consumer
group makes this connection.”…
Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016, 1023-1024 (D. Minn. 2005)
…[Plaintiff] commissioned…a survey…of 400 potential purchasers at
malls in eight U.S. locations, where participants were shown [Plaintiff’s]
commercial twice and were then able to browse a…computerized simulation of a
grocery store frozen pizza aisle. The sample was randomly split into a control
group and a test group…
[Plaintiff] argues that its…survey demonstrates secondary meaning by
showing that between 13% and 14% of consumers believe there is an association
between the [Plaintiff’s] and [Defendant’s] brands. But the…[s]urvey is not
persuasive with regard to secondary meaning because participants were
improperly shown [Plaintiff’s] product, thereby forcing their awareness of the
product, rather than gauging the participants’ pre-existing awareness…[Plaintiff’s
expert] agreed in his deposition that he is not aware of any court that has accepted
or authorized his simulation’s methods…As such, [Plaintiff’s] survey is flawed
and does not support a finding of secondary meaning.
[Plaintiff] next points to…a Teflon-type survey, in which respondents are
first instructed on the definition of common names and brand names, pre-tested
on their understanding of common names and brand names, and then asked to
categorize certain test and control phrases or words as brand names or common
names…
[Plaintiff] argues that the…[s]urvey demonstrates secondary meaning in
that 61% of the respondents believed that BRICK OVEN was a brand name that
56
originates from “one particular company.” But the…[s]urvey was conducted
months after [Defendant’s] BRICK OVEN STYLE product had already entered
the market…
Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001, 1005 (8th Cir. 2005)
The record, when viewed in favor of [Plaintiff], demonstrates that
[Defendant] is entitled to judgment as a matter of law on this issue. [Plaintiff] has
failed to put forth more than a scintilla of evidence that the public recognizes its
“Frosty Treats” mark and associates it with a single source. [Plaintiff] claims that
its survey evidence demonstrates that the term “Frosty Treats” has acquired
secondary meaning, but, if anything, it indicates the opposite. In the survey,
respondents were shown images of the Frosty Treats ice cream van and asked,
“Are you familiar with or have you ever seen or heard of this before?” Fortyseven percent responded affirmatively. They were then asked what they knew
about the van. The respondents most frequently mentioned that it sold ice cream.
Only one percent of the respondents in the survey mentioned Frosty Treats by
name. There is no indication in the record that the survey respondents (apart from
the one percent) were familiar with the vans because of the small nine-by-fourinch “Frosty Treats” decal on the rear portion of the side of the van, the only place
where the phrase “Frosty Treats” appears on the vehicle…[Plaintiff’s] survey
provides no basis to conclude that the respondents associated the van with a single
source as opposed to simply a generic ice cream truck.
In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005)
The Board considered applicant’s Internet poll on name recognition. The
poll…first asked visitors a few questions about current events or sports, e.g.,
“Who will win Election 2000? Who will win the NBA title?” then asked “which
one of the following building manufacturers is the most recognizable?” In the
poll, the applicant was more recognizable than the others on the list…This court
agrees with the Board that this particular poll lacked sufficient signs of reliability.
For instance, the poll results do not indicate the number of actual participants. The
poll did not attempt to prevent visitors from voting more than once. The poll did
not prevent interested parties, such as friends or associates or even employees of
the applicant, from voting multiple times to skew the results. In sum, this poll
does not even remotely follow the precepts of standard trademark namerecognition polls…the survey did not show sufficient reliability to constitute
sufficient evidence of acquired distinctiveness…
Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088, 1098-1099, 1106-1108 (9th Cir. 2004)
…The concurring opinion is incorrect in its suggestion that the case necessarily
must go to trial because distinctiveness of a mark is a question of fact and defendants
have contested the reliability of plaintiffs’ survey evidence. That conclusion flies in the
face of the 1986 triumvirate of summary judgment cases. [n34 See Celotex, Corp. v.
57
Catrett, 477 U.S. 317, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); Matsushita Elec.
Indus. Co. v. Zenith Radio, 475 U.S. 574, 89 L. Ed. 2d 38, 106 S. Ct. 1348
(1986).]…Regardless of whether questions are factual, there is nothing to try unless there
is a genuine issue of material fact. One survey that is impeachable, but still good enough
to get to a jury, weighed against no survey evidence at all on the other side, along with all
the other evidence in the record, does not necessarily add up to a genuine issue of fact.
[Compare: Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001); Thane
InterNat’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002;
Playboy Enterprises, Inc. v Netscape Communications Corp., 354 F.3d 1020 (9th Cir.
2004)
…
[Concurring opinion]
…I write separately to express my view that the evidence that Plaintiffs
have presented thus far is insufficient as a matter of law to establish that their
mark is famous or well-known. The survey population and the survey’s results
establish little more than the fact that Plaintiffs’ customers are familiar with
Plaintiffs’ stores…
The district court, relying entirely on survey evidence, concluded that
Plaintiffs’ trademark had acquired secondary meaning and was thus entitled to
protection from domestic users…The survey population consisted of only 78
people in San Diego County who were “Spanish-speaking, and had recently
purchased Mexican-style food at a supermarket or other food store.”… However,
the survey was conducted in 2000, nine years after Defendants first began using
the Gigante name in the United States. When testing for awareness of the Gigante
mark before Defendants’ entry into the San Diego market in 1991, the awareness
level dropped to 20 to 22 percent of the respondents…
That evidence is insufficient in two important respects. First, the survey
result is highly questionable in view of its narrowly defined survey population.
Plaintiffs’ own description of their stores makes clear that the goods sold are little
different from those available in any large retail grocery store…Further, Plaintiffs
admit in their briefs that the clientele of their Mexican stores includes “both
Hispanic and non-Hispanic” customers. Consequently, nothing about either the
nature of the goods sold by Plaintiffs or its customer base warrants limiting the
relevant public to Mexican-Americans.
We have rejected similar attempts to limit the relevant sector of the public.
For instance, in Japan Telecom, Inc. v. Japan Telecom America Inc…a trademark
dispute between two providers of telecommunications services, the plaintiff
advertised only to “members of the Japanese and Japanese American business
communities in Southern California.” Nonetheless, we concluded that “the
relevant buying public consists at least of buyers of telephone and network
installation services in that region.”…Thus, we emphasized the nature of the
service provided, rather than the composition of the market to which the plaintiff
actively targeted its services.
Because Plaintiffs sell widely-available, non-specialized goods to the
general public, it is uninformative to focus exclusively on Mexican-Americans
58
living in San Diego County. The district court’s reliance on Plaintiffs’ survey is
especially problematic because its population was limited to Mexican-Americans
who had recently purchased Mexican-style food at a supermarket or grocery store.
That survey is only very slightly more informative than the study whose probative
value we dismissed entirely in Avery-Dennison Corp. v. Sumpton…because it
focused exclusively on the plaintiff’s existing customers: “Avery Dennison’s
marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc.
v. General Mills Fun Group, Inc…proving only the near tautology that consumers
already acquainted with Avery and Avery Dennison products are familiar with
Avery Dennison…
…the relevant sector of the public consists of all residents of San Diego
County, without qualification.
Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561, 565-566
(E.D. Ky. 2004)
The plaintiffs present survey evidence to support their claim that
WINCHESTER has a secondary meaning. “Survey evidence has become a wellrecognized means of establishing secondary meaning.”…The defendant’s
complaints about the survey evidence are that the methodology, questions, and
data interpretation are flawed, but it offers no survey evidence to rebut it…The
survey consisted of open-ended questions, such as asking respondents to identify
financial institutions in Clark County and their location. Approximately 35% of
the respondents identified [Plaintiff] in connection with the word “Winchester” as
a bank in Clark County. Thus, the survey results support a finding that
WINCHESTER is associated with the banking services provided by the plaintiff.
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *28-*32 (D. Puerto Rico
2004)
…In the survey, consumers who both (a) have purchased a no-calorie
sweetener in the past three months, and (b) plan to do so again in the next three
months, were shown one of two packages. One group -- the so-called “test” group
-- was shown a package that contained the graphics used on the actual Splenda
package, but with all textual references to Splenda, including the brand name,
removed…and respondents were asked a series of questions [including]…
…
…“What do you think is the brand name of the No-Calorie Sweetener that
I showed you?”…[and] “why do you think that?”…
…A second group of...consumers -- the so-called “control” group -- was
shown a different package that does not resemble the current Splenda trade
dress…
…Consumers in the “control” group were asked the same questions as
those in the “test” group…four respondents in the control group -- four percent -said that they associated the control package with Splenda. This represents the
“noise” level of the survey -- i.e., the approximate percentage of respondents who
59
answer “Splenda” for reasons unrelated to the package they are shown (e.g.,
guessing, brand awareness or popularity, etc.)…Subtracting this four percent from
the 62.5 percent of respondents in the test group who associated the test package
with only the Splenda brand, the survey shows a “net” level of recognition of the
Splenda trade dress of 58.5 percent. This percentage is more than sufficient to
establish secondary meaning…
Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708,
*33-*36 (N.D. Cal. 2004)
On reply to their motion for summary judgment, Defendants submitted for
the first time their Food and Beverage Study, a survey of potential consumers
with regard to their recognition of the Meeker name…
Substantively, Plaintiff objects to the introduction of the survey evidence
on three bases: (1) the survey is irrelevant, confusing and a waste of the Court’s
time; (2) the survey is improper because it fails to comport with validly scientific
methods; and (3) there is no authority to support introduction of the survey by
Defendants for the purpose of disproving, as opposed to establishing the existence
of, secondary meaning.
With regard to the contention that the survey is irrelevant and confusing,
such blanket objections go to the weight of the survey, not its admissibility...
With regard to the contention that the methodology employed by
Defendants’ expert was invalid, the Court finds that these challenges, for instance
to the scope of the interviewed population or the failure to thoroughly analyze the
data gathered, are challenges that similarly go to the weight of the survey
evidence and not its admissibility…
Third, Plaintiff contends that survey evidence is not admissible for the
purpose of disproving the existence of secondary meaning, but only for the
purpose of affirmatively establishing the existence of secondary meaning.
However, in Levi Strauss & Co. v. Blue Bell, Inc.…the Ninth Circuit favorably
reviewed the district court’s admission of a survey conducted to support a finding
of no secondary meaning. It is clear that using survey evidence to disprove the
existence of secondary meaning is permissible.
In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345, *24-*25 (T.T.A.B. 2004).
While the survey is evidence that a very small group of potential
purchasers (owners, presidents, vice-presidents, and general managers of
health/racquet and fitness clubs) may recognize the applicant’s design as a
trademark…we have little, if any, evidence of whether the broader group of
prospective purchasers would recognize applicant’s design as a trademark. We
note that applicant’s goods are identified as barbell plates without any limitation
as to prospective purchasers…
60
The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130, 137-138 (D. Mass. 2003)
…[Plaintiff] has produced a consumer survey…in support of its position
that its implant has acquired secondary meaning…That survey does not support
[Plaintiff’s] claims.
…
…the study does not filter out the non-functional features from those that
are functional to evaluate which features consumers use to identify the source of
the product…
…
[Plaintiff’s] study on secondary meaning also suffers from an additional
flaw which would lead me to exclude it from the jury's consideration. The initial
questions asked of the respondents were: “What company do you think puts out
these products? If you do not know, please feel free to say so.”…These questions
presume the existence of the key element in a secondary meaning inquiry, namely
the association of the design with a single source…Hence, the [Plaintiff’s] study
would not be helpful to a jury attempting to determine whether consumers
associate the product features at issue with a single manufacturer, because the
survey suggested to the respondents that the products did come from a single
manufacturer…
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786, 803-804 (N.D. Tex.
2003)
…Plaintiff conducted a Teflon [type] survey, and concluded that the
primary significance of March madness…is as a trade name relating to
basketball…
The survey was a double-blind…[telephone] survey…based on a list of
randomly generated residential phone numbers from the continental United States.
The ‘next birthday technique’ was used to randomly select the actual respondent
to the survey within each residence which was called…within the relevant sample
of persons who knew March madness was related to basketball, over 60%
classified it as a trade name. Based on this evidence, the Court finds that March
madness has acquired secondary meaning as a trade name.
Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933, *29-*30 (D.
R.I. 2003)
Boston Beer, as cited by [Defendant], is not dispositive of this issue…The
Boston Beer court upheld the district court’s judgment that secondary meaning
had not been sufficiently shown when only 36% of persons who participated in a
secondary meaning survey associated the mark with the source. Here, [Defendant]
argues that the fact that only 30% of survey participants matched [Plaintiff’s
mark] is insufficient to show secondary meaning under Boston Beer…While the
First Circuit in Boston Beer did state that “a positive response rate of 36% is
hardly overwhelming,” it did not hold that a positive response rate of
61
approximately 36% is always insufficient to show secondary meaning as a matter
of law…
WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463, 471 (S.D.N.Y. 2002)
Regardless of the awards, and as Defendants point out, survey evidence
does not support [Plaintiff’s] claim to acquired distinctiveness…[Plaintiff]
retained Group Plus, Inc. and Yahoo! to conduct surveys. According to its report,
Group Plus conducted thirteen focus groups…not intended to measure brand
awareness of [Plaintiff]; rather, it was designed to help [Plaintiff] increase
awareness of its brand. Nonetheless, it found that: “There was a very low level of
awareness of WeMedia among the people in these groups.”
Similarly, the Yahoo! survey was not designed to measure the precise
question before the Court but…concluded…very few knew of WeMedia.com or
We Magazine -- even within a community of people who know disabled friends
or family, or have a disability there is not strong brand awareness yet.
Carroll Shelby Licensing, Inc. v. Superformance Int’l., Inc., 251 F. Supp. 2d 983, 986-987
(D. Mass. 2002)
…[Plaintiff] has failed to present any evidence that consumers associate
the Cobra design with [Plaintiff], and [Plaintiff] alone as source…[Plaintiff’s
expert] performed face-to-face interviews with sports-car hobbyists at one
industry trade show. Although the survey establishes an association between the
Cobra design and [Plaintiff]…[Plaintiff] must prove that the primary significance
of the Cobra shape in the minds of consumers is to identify [Plaintiff] as the
single producer…
The most troubling aspect of the report is…conclusory grouping of
responses…When asked if they recognized the picture of a Cobra design,
[Plaintiff’s expert] reports that over 50% of the people surveyed associated the
picture with [Plaintiff]. Within this percentage, however, [Plaintiff’s expert]
includes numerous different responses, such as “Cobra,” “Shelby Cobra,” and
“Ford Shelby Cobra.” By grouping these responses into one “Shelby” category,
[Plaintiff’s expert] assumes the answer to the very question at issue. Not only are
[Plaintiff’s expert’s] conclusions illogical in a very basic sense, but they are also
completely unreliable and bear no weight on [Plaintiff’s] secondary meaning
argument…
U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517, 526 (4th Cir. 2002)
…[Plaintiff] has failed to satisfy any of the factors relevant to secondary
meaning…[Plaintiff] has spent minimal amounts of money on advertising and has
enjoyed limited sales success…[Plaintiff] presented no evidence of attempts to
plagiarize the mark, no evidence of any unsolicited media coverage, no consumer
studies, and no evidence of exclusive use…On the other hand, [Defendant]
offered a consumer study it commissioned of individuals in the plastics industry
62
who used, or were likely to use a recruiting firm. [n13 Survey evidence is
generally thought to be the most direct and persuasive way of establishing
secondary meaning…] This study showed that only 2% of those queried appeared
to know “U.S. Search,” the type of firm it is, and the services it provides.
In re 1-800 CONTACTS, INC., 2002 T.T.A.B. LEXIS 247, *10 (T.T.A.B. 2002)
…Survey respondents were asked whether they wear contact lenses; what
companies they have seen or heard of that sell contact lenses by mail or on the
Internet (unaided recall); whether they had heard of listed companies, including
applicant (aided recall); and, if they wear contact lenses and purchased their last
pair of contact lenses by mail or Internet, from whom did they make that
purchase…results stated that, “among the representative sample of contact lens
wearers, 1-800 Contacts measured 20.8% unaided awareness, 40.2% aided
awareness and 61.0% total awareness.”…we find it to be probative of the issue of
acquired distinctiveness.
Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912, *16-*17 (N.D. Ill. 2001)
The record shows that [Plaintiff’s] Beanie Babies have been extremely
successful for a number of years and have been featured extensively in the media
and in web sites. But is the word “Beanie” merely a common descriptive term for
bean bag toys? [Plaintiff] points to a nationwide toy survey finding that over 70%
of those surveyed identified the words “Beanies” and “Beanie” with Beanie
Babies and [Plaintiff], while [Defendant] takes issue with the methodology used
in the [Plaintiff’s] study. The court finds that the word “Beanie” is not purely
descriptive and thus is not generic…the record shows that [Plaintiff’s] Beanie
Babies mark is strong or, at the very least, that the precise strength of the mark is
a material issue of disputed fact…
Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879, *6 (S.D.N.Y. 2001)
Consumer surveys conducted…at [Plaintiff’s] behest in 1995 and 1996,
also established the existence of secondary meaning in the trade dress…The 1995
survey was performed in “weaker” Coach markets, areas in which [Plaintiff] did
not sell its products at its own stores but rather through department stores. The
1996 survey was performed in “stronger” Coach markets, including cities where
[Plaintiff] tends to perform well as well as in shopping malls where [Plaintiff] had
stand-alone stores…found that 30 percent of women shown a Coach bag
identified it as such in 1995, compared to 65 percent in 1996. In contrast, when
shown a non-Coach control handbag, 3 percent of women in 1995, and 1 percent
of women in 1996, identified it as a Coach bag.*
*It appears the same secondary meaning surveys reported here were also offered
in a prior litigation. (See also Sara Lee Corp. v. American Leather Products, Inc.,
1998 U.S. Dist. LEXIS 11914 (N.D. Ill. 1998).)
63
Clicks Billiards Inc. v. Sixshooters Inc., Ronald R. Forbes, Jane Doe Forbes, 251 F.3d 1252,
1262-1264 (9th Cir. 2001)
…In this survey, patrons at a [Plaintiff’s] establishment were asked, “Do
you associate the visual look and appearance of this billiard parlor with Clicks
Billiards only or with other billiard parlors too?” Eighty percent of respondents
said that they associated the look and feel with [Plaintiff] only; eighteen percent
said, “Other billiard parlors too.”
The district court stated, “This survey is not without flaws,” and ultimately
concluded, “Put bluntly, the survey is of little or no value.” The court was
troubled by the fact that in response to a follow-up question, respondents often
used vague and general language in describing [Plaintiff’s] image and made
reference to unprotectable features of [Plaintiff’s] interior, such as its cleanliness,
upkeep, good service, and music. This is a valid observation and may indeed be
true, but the issue is not one subject to resolution on summary judgment.
…
Ultimately these responses may not add up to much, and a reasonable
juror might ultimately agree with the district court that the survey did not prove
that [Plaintiff’s] trade dress had acquired secondary meaning. But the juror could
only have done so after considering conflicting evidence and deciding what
weight to accord the survey and the follow-up interviews. This undertaking
describes the proper role for a trier of fact; it is not the role of a district court at
the summary judgment stage where the issue is whether a triable issue of fact
even exists…
Here, the district court did not exclude the survey on the ground that it was
irrelevant or that it was undermined by some other fatal flaw. Rather, the court
appeared to admit the survey into evidence and then to analyze what it considered
to be its deficiencies. Treatment of surveys is a two-step process. First, is the
survey admissible? That is, is there a proper foundation for admissibility… This
threshold question may be determined by the judge. Once the survey is admitted,
however, follow-on issues of methodology, survey design, reliability, the
experience and reputation of the expert, critique of conclusions, and the like go to
the weight of the survey rather than its admissibility…[Also see Schering Corp. v.
Pfizer Inc., 189 F.3d 218, 230-238 (2d Cir. 1999).] These are issues for a jury or,
in a bench trial, the judge. In laying this guide for analysis of survey evidence, we
are not endorsing the survey here nor are we prejudging its fate at trial. Nor are
we suggesting that the presence of a survey will always preclude summary
judgment. We are simply saying that the survey admitted by the district court
raises questions of material fact with respect to secondary meaning that may not
be disposed of by the court alone.
64
America Online, Inc. v. AT&T Corp., 243 F.3d 812, 822 (4th Cir. 2001)
[Plaintiff] argues that its survey evidence indicates an association in the
public’s eye between “You Have Mail” and [Plaintiff] and that this association is
sufficient to permit a reasonable factfinder to conclude that “You Have Mail” is a
trademark descriptive of its e-mail service that has acquired secondary meaning...
…
…[Plaintiff’s] evidence of association may establish what is called “de
facto secondary meaning,” but such secondary meaning does not entitle AOL to
exclude others from a functional use of the words…
Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384, *16 (E.D. Pa. 2000)
…Plaintiffs also offer evidence that demonstrates a high marketplace
recognition among its target consumers, the mothers of young children…A survey
conducted in 1999 [prior to the litigation] revealed that ninety two percent of
mothers of children aged 2-12 demonstrated an unaided brand awareness [of]
Crayola…In the same survey, eighty four percent of mothers viewed Crayola as a
high quality brand and eighty three viewed Crayola as a brand “I can trust.”... As
a result, the Court concludes that Plaintiffs mark has a high level of commercial
strength.
BIC Corp.s and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist.
LEXIS 18226, *3 (S.D.N.Y. 2000)
A consumer survey conducted by [Plaintiff] in 1999, prior to the initiation
of this action, showed an 86% unaided brand awareness for the WITE-OUT
name…
Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc.,
116 F. Supp. 2d 405, 409 (S.D.N.Y. 2000)
Plaintiff has not put forth evidence demonstrating that Greenpoint has
achieved secondary meaning either in New York or nationally. While its survey,
assuming its validity, may demonstrate some name recognition in the New York
metropolitan area for the term “Greenpoint Bank,” this is insufficient to establish
secondary meaning, for either federal or state infringement purposes, for the term
“Greenpoint.” In addition, the flaws in the survey, from lack of objectivity in
creation and determination of parameters because of the involvement of Plaintiff’s
law firm, lack of a control group, and the addition of questions a third of the way
into the sampling, cast serious doubts on the value of the survey and any
conclusion the Plaintiff seeks to draw therefrom.
65
Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 440 (3d Cir.
2000)
…[Plaintiff] also points to a recent customer satisfaction survey as
evidence supportive of the District Court’s finding that the mark achieved
secondary meaning. However,…[Plaintiff’s] reliance on that survey is misplaced
because the survey is wholly irrelevant to whether…[Plaintiff] established
secondary meaning in the “Commerce” mark as of 1983. First, based on the
recency of the survey, it follows that it is not particularly probative of customer
views in 1983. Second, and more importantly, customer surveys and customer
testimony are relevant to the secondary meaning inquiry only insofar as they are
probative of the strength of the “Commerce” mark in the collective consumer
consciousness. The satisfaction of customers with …[Plaintiff’s] services does
little to demonstrate that when customers see the word “Commerce” they
associate it with…[Plaintiff, apart from Plaintiff’s composite mark].
Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126, 1127-1128 (N.D. Iowa
2000)
By virtue of Ford’s and Ford Credit’s long use, advertising, and
promotion, the FORD Name and Marks are distinctive and famous, possessing a
strong secondary meaning signifying Ford and the financial services it offers and
provides. Survey results evidence this fame and secondary meaning. In a recent
survey of individuals seeking or planning to seek investment and other financial
information or advice, 54% of consumers throughout the United States stated that
they believe Ford is responsible for the Internet site at www.fordfinancialsolutions.com.
General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154, 1160 (S.D.
Fla. 2000)
The…Survey conducted by Plaintiff’s expert witness…in the summer of
1999, established Plaintiff’s use of its mark has resulted in the general public in
the United States identifying the words “SEVENTH-DAY ADVENTIST” with
the Plaintiff Church. Further, the…Survey showed that the Plaintiff’s mark has
achieved secondary meaning in the minds of the general public throughout the
United States as identifying the Plaintiff Church. Two prior surveys conducted by
the Gallup Organization in 1970 and 1986 also support strong identification in the
minds of the public between the mark SEVENTH-DAY ADVENTIST and the
Plaintiff Church.
Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997, 1003 (D.
Minn. 2000)
…The types of evidence relevant to the question of secondary meaning
include: (1) customer surveys; (2) exclusivity, length, and manner of use; (3)
66
amount and type of advertising; (4) media coverage; (5) sales volume and market
share…
Here, [Plaintiff] has produced substantial evidence of secondary meaning.
First, [Plaintiff] has introduced survey evidence supporting the conclusion that
consumers strongly associate canary yellow sticky notes with [Plaintiff] and the
POST-IT product…
In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843, 1847-1848 (T.T.A.B. 1999)
With respect to acquired distinctiveness…
Applicant has also relied upon certain material from…[a prior]
litigation…pilot study…
…
For a variety of reasons, we have given little weight to applicant’s ten-year
old pilot study. Among other things, the respondents in that study were shown
applicant’s watch which contained allegedly origin-indicating matter other than
the asserted mark herein sought to be registered. This reason alone is sufficient to
give little weight to the study…
Black & Decker (U.S.) Inc. v. Pro-Tech Power Inc., P & F, 26 F. Supp. 2d 834, 851 (E.D. Va.
1998)
...[Plaintiff’s] survey expert, found that eighty-five percent of the
professional power tool users that he polled identified yellow and black with
Black & Decker or DeWalt...a level of consumer recognition that parallels the
extent to which the public associates golden arches with the McDonald’s
Corporation...
...
Although...Defendants’ survey expert, pointed out that...[Plaintiff’s
expert] could only measure consumer perceptions in 1998..., the fact that brand
identity takes time to develop...means that...[Plaintiff’s expert’s] conclusions
inferentially support...how quickly consumers began to associate yellow and black
with the DeWalt line...
In light of this evidence, the Court finds that the yellow and black color
scheme on the DeWalt line achieved secondary meaning in the minds of
professional power tools users by May, 1992...
Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914, *23-*25, *39
(N.D. Ill. 1998)
In order to test for secondary meaning, ...[Plaintiff’s survey] showed the
respondents (women 18 years or older who would consider purchasing a handbag
for more than $50) three COACH bags with the COACH hang tags
removed...[Plaintiff’s survey] also showed these respondents three leather
handbags manufactured by Kenneth Cole. These three bags are of comparable
size to the COACH bags, but are in other respects-leather texture, hardware, and
67
overall design-dissimilar to COACH products...In half the instances,...the
participants [were shown] the COACH bags first and, for the other half, he
displayed the Kenneth Cole bags first... participants...were not allowed to touch
the bags.
...[Plaintiff’s survey] then asked each respondent whether she believed
each set of handbags looked like a particular brand of handbags or not, and, if yes,
what brand of handbags she believed the handbags looked like...In the weaker
COACH markets, 57 percent...responded by saying that the three COACH
handbags looked like a particular brand...Further, close to 30 percent of all
respondents identified COACH as the brand of the COACH bags; only 3 percent
of the respondents identified COACH as the manufacturer of the Kenneth Cole
bags...
In the stronger COACH markets, 75 percent...believed the COACH bags
looked like a particular brand, and of these, close to 65 percent identified COACH
as the brand...Only 1 percent of the respondents believed the Kenneth Cole bags
looked like COACH bags...
...
...as shown by...[Plaintiff’s] survey, ...consumers have come to recognize
the trade dress in COACH’s Classic Collection...
Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 349-350 (S.D.N.Y. 1998)
...out of 200 people interviewed in ...[Plaintiffs’] telephone survey, 42%
of all respondents had heard of or seen a motion picture with the words “River
Kwai” in the title...Seventy-four percent of those respondents identified that
motion picture as Bridge...[Plaintiffs’] mall survey of 100 people disclosed that
51% of all respondents had heard of or seen a motion picture with the words
“River Kwai” in the title...Again, approximately 73% of those respondents gave a
description of Bridge...
...
Defendants...suggest that...[Plaintiffs’] survey is flawed because it posed
leading questions to its respondents...The question posed by [Plaintiffs’ expert]
was whether they had ever heard of any motion picture or motion pictures with
the words “River Kwai” in the title. Defendants suggest that a better question
would have been “with whom or what do you associate ‘River Kwai.’...Since
Plaintiffs claim trademark protection in the title “The Bridge on the River Kwai”
and in the words “River Kwai” when used in the title of a motion picture, this
Court finds that [Plaintiffs’ survey] question was appropriate...Defendants’
suggested question might have been appropriate had Plaintiffs claimed a
trademark in the phrase “River Kwai” for any purpose. Here, however, in the
context of the narrower trademark claimed by Plaintiffs, Defendants’ suggestion
is off the mark.
...
...Although...[Plaintiffs’] survey is not perfect, and thus is not conclusive
evidence of secondary meaning, this Court finds that ...[Plaintiffs’] survey
establishes some evidence that Plaintiffs’ marks have attained secondary meaning.
68
Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159, *30-*31 (D. Mass. 1998)
In order to indicate secondary meaning, consumer surveys must prove
more than a “relatively small number of people” associate the mark with the
source of the product. 2 McCarthy at §15:42. Often, consumer recognition below
25% fails to establish secondary meaning. See e.g., Zippo Mfg. Co. v. Rogers
Imports, Inc., 216 F Supp 670 (S.D.N.Y. 1963) (25% insufficient); Roselux
Chemical Co. v. Parsons Ammonia Co., 49 C.C.P.A. 931, 299 F.2d 855 (C.C.P.A.
1962) (10% insufficient)…
...[Plaintiff] has failed to submit its own consumer survey.
Instead,...[Plaintiff] cites [Defendant’s] survey to prove that a sufficient
percentage of consumers are familiar with a business by the name of “Yankee
Spirits.”...[Plaintiff] explains that 29% of the participants in the survey (residents
within an eight (8) mile radius of ...[Plaintiff’s] store) had heard of “Yankee
Spirits” in June of 1996...
...[Defendant]...argues that 29% is not sufficient as a matter of law to
warrant a finding of secondary meaning...[Defendant] argues...that “Plaintiff has
proferred [sic] no direct evidence whatsoever on the issue of secondary meaning...
...[Plaintiff’s] failure to produce its own survey evidence and the fact that
[Plaintiff] presents statistics taken from... [Defendant’s] survey are far from fatal
to ...[Plaintiff’s] cause. Of particular importance is the fact that...[Defendant’s]
survey was conducted within one month of the opening of...[Plaintiff’s]
store...Given this limited time period...[the 29% is]... understandable...
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 295 (7th Cir. 1998)
...[Defendant] argues...that the...survey was flawed because the
interviewees were not consumers...when, as here, the relevant market includes
both distributors and ultimate purchasers, the state of mind of dealers is important
in determining if secondary meaning exists. While the fact that no ultimate
consumers were surveyed may be relevant in determining the weight the survey
should be given...
...
The district court...found that the...survey did not establish secondary
meaning, since the 30% recognition was insufficient to establish secondary
meaning. The court cited Spraying Systems, 975 F.2d at 394, for the proposition
that “while a 50-percent figure is regarded as clearly sufficient to establish
secondary meaning, a figure in the thirties can only be considered marginal.”...We
noted that figures in the 30% range were marginal and did not establish secondary
meaning as a matter of law. Such evidence is still probative of the issue of
secondary meaning...the survey provides relevant evidence of secondary meaning
which raises material questions of fact.
69
LIKELIHOOD OF CONFUSION SURVEYS
Kind LLC v. Clif Bar & Co., 2014 U.S. Dist. LEXIS 81097, *29-*31 & n.7 (S.D.N.Y.
2014)
The consumer survey...found a 15% net confusion rate...Although
case law indicates that a 15% net confusion rate may be sufficient to show
actual confusion...confusion rates of 15% are on the lower end of rates that
courts within this Circuit have found sufficient to show actual confusion
(n.7 To demonstrate that the 15% net confusion rate had “flown over the
bar”...[Plaintiff’s] counsel recounted the evolution of control
methodologies...and emphasizes that “in the past, courts have found
confusion rates in the 15% range, even where such rates reflected ‘gross’
rather than ‘net’ confusion.”)...
In addition, [Defendant’s expert] credibly testified that the
[Plaintiff’s expert’s] survey was flawed because it measured whether there
was confusion, but not what caused the confusion...
Edward W. Tovey v. Nike, Inc. 2014 U.S. Dist. LEXIS 93905, *4-*6,*13-*15,*23-*25
(N.D. Ohio 2014)
...Rule [702] obligates the trial court to act as a gatekeeper
and ensure that any expert evidence admitted – scientific or otherwise – is
relevant and reliable...
...“[I]t is the proponent of the testimony that must establish its
admissibility by a preponderance of proof.”...
...
...[Plaintiff’s expert] testified at deposition that she did not conduct
a survey to determine the likelihood of consumer confusion in this
case...She agreed that a survey is “the best way to determine whether there
is consumer confusion,” because “it would be more statistically sound. It
would be [projectable] to the national norm. It is generally what courts
rely upon in consumer-confusion cases when brought forth by an
expert.”...In this case, however, [Plaintiff’s expert] testified that, rather
than conducting a survey she relied on her “experience and expertise and
judgment in working with consumers for 25 years” to support her
conclusion that consumers would likely confuse [Plaintiff’s and
Defendants’] mark[s].
The question whether an expert in a trademark infringement case
must support his or her opinion regarding consumer confusion with a
consumer survey is not settled...[Plaintiff’s expert’s] decision to forego a
consumer survey in this case is not necessarily fatal to the admissibility of
her opinion, so long as [Plaintiff’s expert] satisfied her burden of
explaining why she chose those other methods, and those other methods
are sufficiently reliable to support her conclusion.
70
Plaintiff contends that [Plaintiff’s expert’s] report “carefully
catalogues” her reasoning on the issue of consumer confusion... The
“careful catalogue” of reasons to which Plaintiff refers is merely a list of
factual assertions accompanied by a conclusion without any explanation
for its basis or reliance on accepted methodology.
...
... For the foregoing reasons, Plaintiff has failed to demonstrate
either that [Plaintiff’s expert] employed a reliable method in forming her
opinion regarding consumer confusion in this case, or that her experience
reliably supported her conclusion on this issue...Absent reliable support
for her conclusion, [Plaintiff’s expert’s] opinion amounts to "only
speculation, which is generally inadmissible...Plaintiff has failed to carry
his burden of demonstrating the admissibility of [Plaintiff’s expert’s]
opinion and testimony regarding the issue of consumer confusion in this
case.
Hornady Manufacturing Company, Inc. v. Doubletap, Inc. 746 F.3d 995, 1147 & n.9
(10th Cir. 2014)
...(n.9 [Plaintiff] argues that the weight of expert testimony, such
as competing interpretations of a survey, must be tested by the jury, not
the court on summary judgment...It argues that methodological flaws go to
a survey’s weight, not its admissibility, and it therefore must be presented
to a jury...Even on summary judgment, however, the district court may
register “concerns about the survey’s methodology” and “decid(e) that the
survey failed to support a likelihood of confusion.”)...
The [Defendant’s] Survey followed an identical strategy [as in
Water Pik v. Med-Systems, Inc.]:
After viewing (three) packages, respondents were asked to answer
whether they thought that the [Defendant] and the [Plaintiff] and control
(Federal Premium) packages were:
(1) of the same company or owned by the first company
shown;
(2) affiliated with the first company shown,
(3) had permission from the first company shown to use
this name on their website, or
(4) had no affiliation or connection to the first website
shown, or that they were unsure.
...By suggesting the possibility that [Defendant] might be
connected with another brand, and limiting the candidates to [Plaintiff]
and Federal Premium, the [Defendant’s] Survey risked showing confusion
between [Plaintiff] and TAP when none would have arisen
otherwise...This prevented the survey from eliciting responses as they
might occur spontaneously in the marketplace. Because of this and other
methodological flaws, the [Defendant’s] Survey is entitled to little weight
on the issue of actual confusion...
71
Denimafia Inc. v. New Balance Athletic Shoe, Inc., 2014 U.S. Dist. LEXIS 27541, *95*99, *101-*103, nn.84-85 (S.D.N.Y. 2014)
[Plaintiff] does not offer a rebuttal survey and does not seek to
exclude [Defendant’s] survey, but argues that the Court should “not find
[Defendant’s expert’s] survey results persuasive”...
First, [Plaintiff] argues that the Eveready survey format only is
appropriate in cases of forward confusion involving a senior user with a
strong mark. (n.84 The Court notes that [Plaintiff] contradicts itself by
arguing in favor of the strength of its mark in the context of the first
Polaroid factor, and then arguing that the Eveready survey was improper
due to the weakness of [Plaintiff’s] mark)...[Defendant’s expert] testified
that because an Eveready survey displays only one product, as compared
to other formats which ask respondents to compare multiple products
displayed simultaneously or sequentially, it was best suited to replicate the
relevant market conditions in this case, since [Plaintiff’s and Defendant’s]
products are insulated from each other, such that consumers would not see
both [Plaintiff’s] products and [Defendant’s] products at the same
time...The Court is satisfied that [Defendant’s expert] had good reason for
employing the Eveready format for reverse confusion analysis. See, e.g.,
Kargo Global, Inc. v. Advance Magazine Publishers, Inc...(“Here, where
[plaintiff] has alleged that reverse confusion has occurred it would have
been far more replicative of actual marketplace conditions to have
[used]...the Eveready format. A survey that utilizes the Eveready format,
by displaying only a single party’s mark and attempting to discern whether
respondents are confused as to the source of the mark, is much more
reliable because it more accurately approximates actual market conditions
by ensuring that respondents are not made artificially aware of the other
party's trademark.” THOIP v. Walt Disney Co.... (“in testing for reverse
confusion,” plaintiff’s expert “failed to replicate actual marketplace
conditions” by designing a “sequential array survey” in which respondents
were exposed to both parties’ products, “despite the absence of evidence
that such products would be encountered in close proximity in the actual
marketplace”). (n.85 Moreover, any diminution in the value attributed to
the survey as a result of the format would, at most, reduce the evidentiary
weight of [Defendant’s expert’s] survey, but it would not tip the scale in
[Plaintiff’s] favor.)...
Second, [Plaintiff] argues that the surveyed universe was overly
broad and should have been limited to males between the ages of eighteen
and either twenty-five or forty-five, which it purports to be the likely
buyers of [Plaintiff’s] jeans...
[Plaintiff] offers no expert rebuttal evidence that [Defendant’s
expert’s] methodology was improper...
Third, [Plaintiff] argues that [Defendant’s expert] used an
improper test image because the hangtag displayed the <=> mark
vertically instead of horizontally...[Plaintiff’s] third argument is meritless
72
for the more important reason that the evidence in the record supports that
the image [Defendant’s expert] used most replicates the way the tag would
hang in the marketplace...
Accordingly, the actual confusion factor weighs heavily in
[Defendant’s] favor.
Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 2014 U.S. Dist. LEXIS
1030, *9-*10, *12 (S.D.N.Y. 2014)
Respondents were shown life size, color photographs of either
men’s and women’s wrists with different watches...[Respondents] were
asked to identify the maker of the watch and the basis for that belief after
viewing photographs of the men’s or women’s watches, along with Timex
and Movado watches, which served as controls...
...
Defendants retained [an] expert [to criticize]...several aspects of
[Plaintiff’s survey] including the location of the surveys, eligibility
screening, the manner in which the watches were displayed and several
methodological aspects of the survey.
...
[Among other things, Defendant’s expert] criticizes the way the
watches were presented to survey participants — in life size color
photographs on a man or woman’s wrist — because “(n)obody would ever
look at a watch in this manner.”...While it is true that these conditions do
not exactly replicate real life conditions, I agree with the court in Cartier
that consumer surveys “cannot be conducted in a vacuum.”...I find that the
size and color presentation of the photos created satisfactory conditions for
a consumer survey that is sought to shed light upon the likelihood of postsale confusion. Indeed, the ability of consumers to identify the Movado
and Timex controls supports this conclusion.
Romag Fasteners, Inc. v. Fossil, Inc., 979 F. Supp. 2d 264, *284-*285 (D. Conn. 2013)
...The defendants[’]...expert...conducted a survey of 839
participating handbag consumers to determine whether the [Plaintiff’s]
mark played any role in their handbag purchasing decisions in the five
years preceding the survey...None of the participants identified [Plaintiff]
as a mark they wanted to see on magnetic snaps...
...
...[Plaintiff] disputes the reliability and credibility of the
defendants’ survey, challenging the “assum(ption) that purchasers of
women’s handbags at retail (“Consumers”) are fully aware of how they
make decisions about handbags, that they can remember this information
for years, and that they will report this information accurately in response
to a survey.”...
73
Clear Choice Holdings LLC v. Implant Direct Int'l. 2013 T.T.A.B. LEXIS 477, *20-*22,
*24-*26, n.13, n.18 (T.T.A.B. 2013)
[A]pplicant...applied to register the mark REAL CHOICE, in
standard characters, for dental implant services. Opposer...opposes
registration on the grounds that applicant's mark is likely to cause
confusion with its mark CLEARCHOICE DENTAL IMPLANTS...
...
Opposer's evidence falls woefully short of establishing the fame of
its mark...(n.13 Although 85% of the respondents to opposer's survey which will be discussed further infra - said they had heard of ClearChoice,
we give this result no weight in our fame analysis because the survey
universe was selected from a list of individuals who opposer said had
contacted it within the preceding three years, presumably all of whom
should be familiar with opposer)...
...
Opposer submitted a survey, which can be regarded as evidence of
actual confusion... However, while we will not address and do not
necessarily accept all the critiques of that survey in the analysis by
applicant's expert...the survey still suffers from numerous serious flaws.
First and foremost, the survey did not follow an established format
to measure likelihood of confusion, but was created by opposer’s expert in
a design never before used in a trademark survey or accepted by any
court...It also used a small number of respondents to test each mark...
In addition, rather than following the accepted approach of using a
survey universe comprising potential consumers of applicant’s dental
implant services (n.18 “In a traditional case claiming ‘forward’ confusion,
not ‘reverse’ confusion, the proper universe to survey is the potential
buyers of the junior user’s goods or services...J. Thomas Mccarthy,
Mccarthy On Trademarks & Unfair Competition § 32:159 4th ed. 2013)
opposer’s survey was conducted among a sample of 150,000 customers
who had contacted opposer within the preceding three years and did not
live in the 19 markets where applicant offers its services. Thus, the survey
universe was purposely selected to be aware of opposer and not applicant.
Moreover, respondents were asked only whether they were familiar with
dental implants, not if they were prospective consumers of dental
implants...
Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136, 1145, 1148-1150 (10th Cir. 2013)
...The district court ruled that the results of [Defendant’s expert’s]
survey were “devoid of any probative value and therefore irrelevant”...
because it perceived several serious methodological flaws in the survey:
(1) [Defendant’s expert] selected respondents from those whom he
regarded as potential purchasers of sinus remedies in general, not potential
purchasers of sinus-irrigation products in particular (which account for
74
only 1% of sinus-remedy sales), thus creating an overinclusive survey
universe; (2) [Defendant’s expert], based on the opinion of [Defendant’s]
CEO...regarding the composition of the sinus-remedy market, skewed the
survey population to ensure that 42% of respondents were older than 55,
but an independent market study indicated that fewer than 29% of sinusremedy consumers belonged to that age group; (3) Questions 3 and 10 did
not present the marks as they would appear to a consumer because both
marks were shown in a typewritten format, divorced from packaging, and
without any italics; and the SinuSense mark was unaccompanied by the
distinctive [Plaintiff’s] logo that appears on packaging for [Plaintiff’s]
products; (4) the survey presented images of [Plaintiff’s] products and
images of [Defendant’s] products side by side, thereby failing to recreate
the true conditions of the marketplace; and (5) the questions were leading
and suggestive because they encouraged respondents to entertain the
possibility of an affiliation between SinuCleanse- and SinuSense-branded
products when they might not have considered such a possibility on their
own.
...
Moreover, as pointed out by [Plaintiff’s] expert in the district
court, [Defendants’] survey, even if assumed to be methodologically
sound, does not show a likelihood of confusion. To arrive at this
conclusion, we must discuss how likelihood of confusion is computed
from surveys. The key questions in [Defendants’] survey were those that
asked whether the SinuCleanse and SinuSense products were made by the
same company, whether the companies had a business relationship, or
whether one of the companies had obtained permission or approval from
the other to make its product. The raw confusion rate was the percentage
of respondents who answered yes to one of these questions. For the trial in
which respondents viewed packaging for saline packets, 203 respondents
participated and 47 answered yes to one of the three questions, yielding a
raw confusion rate of about 23%. For the trial involving packaging for neti
pots, 198 participated and 29 answered yes, producing a raw confusion
rate of 14.6%.
Such raw figures are usually unhelpful, however, in predicting
likelihood of confusion, because they can be inflated by “background
noise,” or false positives arising from something other than the particular
confusion that is alleged and that the survey aims to capture...By
discounting for confusion arising from the control, the survey can measure
net confusion, or “the difference between the raw confusion percent and
the control confusion percent”...
Here, the control used in the survey was NeilMed. The net
confusion rate in each trial, then, was the rate of confusion between
SinuCleanse and SinuSense, minus the rate of confusion between
SinuCleanse and NeilMed. Stated differently, the net rate of confusion
was the net number of confused respondents divided by the total number
of respondents. This number was insubstantial for both trials. In the saline-
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packet trial, 34 of the 203 respondents, or 16.7%, expressed confusion
between SinuCleanse and NeilMed. Subtracting these respondents from
the 47 who were confused between SinuCleanse and SinuSense, one
arrives at a net confusion rate of 13 divided by 203, or less than 6.5%...
In the neti-pot trial, 29 of the 198 total respondents, or 14.6%,
expressed confusion between SinuCleanse and SinuSense. But 30
respondents (15.2%) expressed confusion between SinuCleanse and
NeilMed. Therefore, the net confusion rate for the neti-pot trial was
negative 0.5%...Net confusion rates of 6.5% and negative 0.5% do not
create a genuine factual issue of likelihood of confusion...
[Defendants’ expert’s] report cited net confusion rates higher than
the ones calculated above, but only by using a nonsensical analysis...
[Defendants’ expert], however, divided the net number of
respondents confused between SinuCleanse and SinuSense (14 minus 6)
by the number of respondents confused between any pair of brands (or by
all three)—that is, those who answered that any two or more of the three
brands had a business relationship. The number of such confused
respondents was 22, so he arrived at a net confusion rate of 8 over 22, or
36%. This approach greatly exaggerates the confusion rate. The 36%
figure does not measure the net percentage of consumers who were
confused between SinuCleanse and SinuSense; as stated above, that would
be 3.9%. The absurdity of [Defendants’ expert’s] approach can be shown
by an illustration. Say, 2 respondents out of 203 (or out of 1,000, for that
matter) confused SinuCleanse and SinuSense while 1 respondent confused
SinuCleanse and NeilMed. [Defendants’ expert’s] net confusion rate
would then be 33%, the net number of confused respondents (2 minus 1)
divided by the total number of confused respondents (3). Yet the true raw
confusion rate would be less than 1% (2 divided by 203) and the true net
confusion rate would be less than 0.5% (1 divided by 203). [Defendants’
expert’s] calculation is irrelevant...
...
In short, the [Defendants’] survey strongly suggests an
insignificant likelihood of confusion.
Facebook, Inc. v. Think Computer Corp. 2013 T.T.A.B. LEXIS 436, *36-*43 nn.46-47 &
n.57 (T.T.A.B. 2013)
Because applicant has not used its mark, there has been no
opportunity for actual confusion to have occurred. However, opposer
introduced the testimony of [Opposer’s expert] who supervised a
likelihood of confusion survey. Survey evidence is circumstantial, not
direct evidence, of actual confusion because it predicts consumer
perceptions measured with scientific controls, projectable with statistical
accuracy, as opposed to testimony of someone that he or she was confused
or evidence of misdirected telephone calls or mail...
76
The likelihood of confusion survey was an [internet-based] survey
[from a universe of] respondents from a panel of individuals created and
maintained by Knowledge Networks, a probability-based internet panel
generally representative of the U.S. population based on the U.S. census...
The respondents who qualified for the likelihood of confusion
survey were people eighteen (18) years of age or older who (1) use email
or instant messaging, (2) agreed to answer the survey questions
themselves without any assistance, and (3) if they wore contact lenses or
eyeglasses when looking at a computer monitor, would wear them when
filling out the survey...
The survey consisted of two survey cells: (1) a test cell designed
“to measure likelihood of confusion, if any, with respect to the source,
authorization/approval of, or business affiliation/connection of Applicant's
business provided under the proposed FACEMAIL mark;” and (2) a
control cell to measure the extent of mismeasurement in the test cell...
The respondents in both cells were given the following
instructions:
In this survey, you are going to be shown a survey exhibit,
and then you will be asked a few questions.
Please understand that we are only interested in your
opinions or beliefs; and if
you don't have an opinion or
belief or don't know the answer to a question, that is an
acceptable answer.
Please feel free to take as much time as you like looking at
the survey exhibit before moving on to the survey
questions...
The marks were displayed for the respondents. The survey
respondents in the test cell were shown applicant's mark on their computer
screen as displayed below. (nn.46-47)
77
...[control]...
The survey respondents were then asked the following questions:
4.0 Who, or what company, do you believe is offering these
services with this name? ...
4.1 Why do you say that? ...
If the respondent did not know the answer to the first question,
they were asked the following questions:
5.0 Do you believe that the services with this name ...
CHOOSE ONE:
1. one, are being offered with the authorization or
approval of any other company or companies;
2. two, are not being offered with the authorization
or approval of any other company or companies; or
3. three, don't know or have no opinion?...
5.1 With what other company or companies? ...
5.2 Why do you say that?
6.0 Do you believe that the company that offers these
services with this name ...
1. one, has a business affiliation or business
connection with an other company or companies;
2. two, does not have a business affiliation or
business connection with any other company or
companies; or
3. three, don't know or have no opinion?...
78
6.1 With what other company or companies? ...
6.2 Why do you say that?
...The test cell survey results are summarized below.
1. Approximately 30% of the respondents (85) identified
[Opposer] as the source of the email and/or instant messaging services...
2. An additional 1% of the respondents (3) reported that
they believed that the FACEMAIL email or instant messaging services
would be offered by [Opposer]...
3. An additional 4.3% of the respondents (12) reported that
they believed that the company offering FACEMAIL email or instant
messaging services has a business affiliation or connection with
[Opposer]...
None of the respondents in the control cell survey reported that
they believed that there was any connection or affiliation between
THINKMAIL and [Opposer]...
According to the survey results, approximately 36.2% “of the
relevant universe of potential consumers of email and/or instant messaging
services expressed a belief that Applicant's business provided under the
proposed FACEMAIL mark is either offered by [Opposer], that the name
is being used with the authorization/approval of [Opposer], or that the
company that uses the name has a business affiliation/connection with
[Opposer]”...The responses to the follow-up questions – “Why do you say
that?” -- made specific reference to the similarities between the names
FACEMAIL and [Opposer]...
Keeping in mind that there is no such thing as a perfect survey, we
find that there were no serious flaws in the likelihood of confusion survey
that would undermine the reliability of its results. (n.57 We note
applicant’s argument that [Opposer’s expert] should have used a mark
with a FACE-prefix as a control. (Applicant’s Brief, p. 24; TTABVue 55,
p. 31). We disagree because the purpose of a control cell is to measure
“noise” by accounting for responses by people who are providing the
answers they think the survey taker wants rather than what the respondent
truly thinks. [Opposer’s expert’s] use of THINKMAIL as the control term
achieves its purpose.) The manner in which the survey was conducted was
in keeping with standard survey formats...Accordingly, we find that
opposer’s survey results support a finding that there will be a likelihood of
confusion.
79
1-800 Contacts, Inc. v. Lens.Com, Inc., 722 F.3d 1229, 1246-1248 (10th Cir. 2013)
Next, [Plaintiff] argues that its consumer-confusion survey was
wrongly excluded and that it, too, demonstrated actual confusion...The
district court excluded the survey results under Fed. R. Evid. 702 on the
ground that methodological flaws undermined the survey’s reliability...
...We apply abuse-of-discretion review to the manner in which a
district court performs its gatekeeping function under Rule 702,
recognizing the latitude that it has in determining whether expert
testimony is reliable enough to be admitted...
We, too, are concerned about the reliability of the survey....
In any event, even assuming that the survey should have been
admitted, it does not warrant reversal of summary judgment because it was
insufficiently probative of confusion to overcome the factors discussed
above. The survey revealed that the relevant confusion was fairly low. To
isolate confusion arising specifically from the use of [Plaintiff’s] mark as a
search term and keyword, the survey used a control group; respondents in
this group were told to imagine that they had searched for the term contact
lenses rather than the term 1800contacts. When these control-group
respondents were asked whether they thought that the [Defendant’s] ad
either originated from [Plaintiff] or had sponsorship or approval from
[Plaintiff], 11.9% answered in the affirmative. By comparison, 19.4% of
respondents in the first noncontrol group and 19.2% of respondents in the
second noncontrol group answered likewise. Subtracting the control
group’s 11.9% rate of confusion, one is left with net confusion rates of
only 7.5% and 7.3% for the two noncontrol groups, or an average net
confusion rate of only 7.4%...The 7.4% figure is at (or below) the lowest
confusion rate that, together with other evidence supporting confusion,
could justify a conclusion that consumer confusion was likely.
[Plaintiff] relies on Grotrian, Helfferich, Schulz, Th. Steinweg
Nachf. v. Steinway & Sons...in which the plaintiff, a piano maker, sought a
declaratory judgment that its trademark Grotrian-Steinweg was not likely
to cause confusion with the defendant’s trademarks, Steinway and
Steinway & Sons. Following a bench trial, the district court found that
confusion was likely...the district court considered a second survey in
which 7.7% of respondents “p(er)ceived a business connection between
the two companies and 8.5% confused the names”...The court found that
the two surveys, taken together, were “strong evidence of the likelihood of
confusion..
In contrast, the Seventh Circuit has ruled that a district court was
correct to hold that a survey showing a 7.6% confusion rate weighed
against infringement. Henri's Food Products Co. v. Kraft, Inc., 717 F.2d
352, 358-59...
We are not persuaded that Grotrian v. Steinway & Sons, 523 F.2d
1331 (2d Cir. N.Y. 1975) and Goya Foods, Inc. v. Condal Distributors,
Inc., 732 F. Supp. 453 support the proposition that surveys showing
80
confusion as low as 7% can by themselves sustain a finding of likelihood
of confusion. Both cases seem rightly decided, but primarily because of
the strength of other factors supporting confusion and other persuasive
survey results...
James “Jim” Brown v. Electronic Arts, Inc.,724 F.3d 1235, 1238-1239, 1245-1246 (9th
Cir. 2013)
Plaintiff...alleges that Defendant...has violated §43(a) of the
Lanham Act...through the use of [Plaintiff's] likeness in [Defendant’s]
Madden NFL series of football video games...
...
...[Plaintiff] argues that the use of his likeness in the game coupled
with a consumer survey demonstrating that a majority of the public
believes that identifying marks cannot be included in products without
permission at least raises a triable issue of fact as to the second prong of
the Rogers test. It is well established that the use of a mark alone is not
enough to satisfy this prong of the Rogers test. In MCA, we noted that if
the use of a mark alone were sufficient “it would render Rogers a nullity.”
296 F.3d at 902. We reiterated this point in E.S.S., asserting that “the mere
use of a trademark alone cannot suffice to make such use explicitly
misleading.” 547 F.3d at 1100. Adding survey evidence changes nothing.
The test requires that the use be explicitly misleading to consumers. To be
relevant, evidence must relate to the nature of the behavior of the
identifying material's user, not the impact of the use. Even if [Plaintiff]
could offer a survey demonstrating that consumers of the Madden NFL
series believed that [Plaintiff] endorsed the game, that would not support
the claim that the use was explicitly misleading to consumers...The use of
[Plaintiff’s] likeness together with the cited survey do not provide a valid
argument to allow [Plaintiff’s] case to go forward based on this prong of
the Rogers test.
J.T. Colby & Co., Inc. v. Apple Inc., 2013 U.S. Dist. LEXIS 65959, *1, *61, *65-*66,
*75-*76, n.32 (S.D.N.Y. 2013)
In this lawsuit, a book publisher alleges that the [Defendant]...has
infringed its trademark and created a likelihood of reverse confusion, in
that consumers will likely believe that its books are in fact published by or
affiliated with [Defendant]...
...
The plaintiff’s principal evidence of actual confusion is found in
the surveys conducted by the plaintiffs’ expert...In particular, both surveys
concluded that between 47% and 59% of survey takers incorrectly
attributed the source, sponsorship, or affiliation of plaintiffs’...products to
[Defendant]. In light of serious flaws in methodology, however,
81
[Plaintiffs’ expert’s] survey results are not probative of the questions that
are relevant to likelihood of confusion...
...
There is general agreement that, to be probative of actual
confusion, a survey should make some attempt to replicate market
conditions...
[Plaintiffs’ expert’s] surveys, however, made no attempt to
replicate market conditions and deprived the survey takers of every
contextual clue they would encounter when looking at the plaintiffs’
products. As described above, there are a number of stylistic features that
differentiate the plaintiffs’ and defendant’s marks. A consumer would be
able to see these differences under actual market conditions, but
[Plaintiffs’ expert’s] survey takers would not.
...
[Defendant] argues that [Plaintiffs’ expert’s] surveys suffered from
a variety of other shortcomings as well. In particular, the defendant argues
that the surveys failed to ask appropriate questions to test confusion, posed
questions that primed respondents to think of [Defendant], failed to test
the proper universe of consumers, (n.32 The defendant argues that by
requiring respondents to have recently downloaded an ebook, [Plaintiffs’
expert’s] surveys excluded those among plaintiffs’ customer-base who
read only physical books. It is also worth noting that despite the
defendant’s insistence that “trade consumers” and “science-fiction
readers” are major components of their customer-base, neither group was
clearly represented in the group of people surveyed) did not adequately
screen respondents or take steps to prevent guessing, and were not
validated. Some of these errors, on their own, may not have been
fundamental enough to justify the exclusion of [Plaintiffs’ expert’s]
reports and survey results. Taken together with the serious flaws described
above, however, they confirm the conclusion that the plaintiffs’ expert
reports and surveys are inadmissible under Rules 702 and 403.
JJI International, Inc. v. The Bazar Group, Inc., 2013 U.S. Dist. LEXIS 88478, *1-*2,
*9-*12, (R.I. 2013)
This Motion addresses whether raw survey data is required to be
included as part of the expert disclosure...Plaintiff produced a detailed
expert report based on an internet marketing survey, which concluded that
there is a likelihood of confusion between the two brands, but did not
produce all of the raw data from the survey...
...Defendant is right that raw survey data should be included as part
of the expert disclosure of an opinion based on survey results because they
are “facts or data considered by” the expert who designed the survey, even
if the specific data were not relied on in forming the opinion. Fed. R. Civ.
P. 26(a)(2)(B). Nevertheless, the cases are mixed regarding whether such
data must be disclosed contemporaneously with the expert report...
82
...
Rule 26(a)(2) creates a mandatory expert disclosure requirement
that includes the automatic disclosure of “facts or data considered” by an
expert in formulating an expert opinion...The requirement is self-executing
and does not countenance selective disclosure...The inclusion of the
requirement to produce “facts or data” is broadly interpreted to require
disclosure of any material considered by the expert that contains factual
ingredients; it is not limited to the facts or data relied on by the
expert...Rather, Rule 26(a)(2)(B) requires “any information furnished to a
testifying expert that such an expert generates, reviews, reflects upon,
reads, and/or uses in connection with the formulation of his opinions, even
if such information is ultimately rejected.”...
Based on this Rule, the cases directly analyzing the specific issue
presented here - the production of raw survey data as part of the
mandatory discourse of an expert opining on the results of the survey uniformly hold that the raw survey data must be produced as “data” that
was “considered.”...
Here, the evidence establishes that [Plaintiff’s expert] designed the
survey and his Report states that it is “(b)ased on the results of the
survey.”...The Court finds that [Plaintiff’s expert] considered the raw
survey data...accordingly, they were required to be part of [the Plaintiff’s]
expert disclosure under Rule 26(a)(2)(B).
Bruce Lee Enterprises, LLC v. A.V.E.L.A., Inc., 2013 U.S. Dist. LEXIS 31155, *65-*68
(S.D.N.Y. 2013)
Defendants argue that summary judgment in their favor is
appropriate because there is no likelihood of consumer confusion. In
support of this contention, Defendants have provided a survey...
... In [Defendant’s expert’s] survey, 564 participants, all
individuals planning to purchase graphic tees at Target or Urban
Outfitters, were shown either the filmstrip shirt sold by Urban Outfitters or
a control shirt, which was identical except the filmstrip images were of an
Asian male...in a martial arts costume; the hang tag was edited to remove
the words “Bruce L.”, and the Chinese writing on the front of the test tshirt was removed...[Defendant’s expert] compiled [the survey] responses
to reflect what he deemed “net confusion,” meaning the difference
between responses in the test and the control group. Overall, net confusion
ranged from 11.6% to 12%...
Defendants argue that these percentages are so low as to render a
finding of likelihood of confusion impossible...The Court finds that the
survey alone—absent other evidence regarding likelihood of confusion—
is insufficient to warrant a grant of summary judgment on this
point...Viewing the survey evidence in the light most favorable to
[Plaintiff], the Court is not convinced that the survey, absent other
evidence, is enough to support a finding that there is no likelihood of
83
confusion. Defendants have presented insufficient evidence for the Court
to find that there is no genuine issue of material fact as to this element;
consequently, summary judgment is inappropriate.
Brighton Collectibles, Inc. vs. RK Texas Leather Mfg., 923 F. Supp. 2d 1245, 1257-1258
(S.D. Ca. 2013)
The Court agrees that Defendants identify a fatal flaw in
[Plaintiff’s expert’s] first survey, which renders inadmissible his opinion
on the likelihood of confusion...The survey’s design was so blatantly
biased that the results are unreliable...
Participants were first shown four authentic products. In that
display, two of [Plaintiff’s] products were black and red, and all four had
large heart ornaments...Next, [Plaintiff’s expert] showed participants four
similar handbags made by other manufacturers. Yet, only the Defendants’
handbag was two-color (black and brownish-red) with heart
decorations...Participants were then asked which, if any, item was “made,
sponsored, or endorsed” by the same company that made the first set of
handbags.
A line-up in which only one bag shares the most prominent
and eye-catching features - two colors and silver hearts - improperly
suggested to the participants that Defendants’ bag was the “correct”
answer. Consequently, the survey does not prove actual consumer
confusion about [Plaintiff’s] brand, but instead tested the ability of
participants to pick the most obvious match. The flaw is readily apparent
because color is not an element of [Plaintiff’s] definition of trade
dress...The Court excludes [Plaintiff’s] expert opinion that this survey
shows consumers are likely to be confused by Defendants’ products...
The problem was exacerbated because [Plaintiff’s expert] did not
use a control to test the accuracy of his survey...
Bobrick Washroom Equipment, Inc. v. American Specialties, Inc., 2012 U.S. Dist.
LEXIS 111465, *48-*51 (C.D. Cal. 2012)
Defendant retained an expert...to conduct a consumer survey to
determine whether distributors and architects who purchase commercial
washroom products are likely to be confused as to the source of
Defendant’s Roval products...
[Defendant’s expect] found an extremely low likelihood of confusion:
7.4% for architects; 1.3% for distributors; and 4.7% for the combined
sample...Plaintiff also retained an expert...who performed a “likelihood of
confusion” survey of architects....[Plaintiff’s expert found a significantly
higher “net confusion” of 38.46%...
The Court finds that [Plaintiff’s expert’s] survey is entitled to no
probative weight and is, in fact, inadmissible under Federal Rule of
Evidence 702. [Plaintiff’s expert] used the so-called Squirt methodology in
84
conducting [the] survey. Participants were sent two envelopes. They were
instructed to open the first envelope, which contained an advertisement for
one of Plaintiff’s products. They were then instructed to put this
advertisement back into the first envelope and to open the second
envelope, which contained advertisements for four other products: one
manufactured by Plaintiff, and three manufactured by other companies
(i.e., the “control group”). Participants were then asked a series of
questions regarding the relationship of the products in the second envelope
to the company that manufactured the product in the first envelope.
The advertisements used in [Plaintiff’s expert’s] survey, however,
were extremely leading. The advertisements for Plaintiff’s product and
Defendant’s product were nearly identical: similar products, arranged in a
similar fashion (i.e., a full-page photograph of the product arranged
vertically on the page), with similar shading, style and other visual
characteristics. The advertisements for the other three products - the
purported “control group” - were substantially different. Instead of a fullpage photograph of the relevant product, each of these advertisements
contained a very small photograph. One advertisement (for KimberlyClark) showed a different product altogether. Another advertisement (for
Bradley) was oriented horizontally, instead of vertically (as were all of the
other advertisements). The “control group” advertisements also differed
from Plaintiff’s and Defendant’s advertisements in terms of shading, style,
and other visual characteristics.
In sum, [Plaintiff’s expert’s] survey format effectively
predetermined its result - participants inevitably would conclude there was
a relationship between the substantially-similar advertisements for
Plaintiff’s and Defendant’s products, as opposed to the substantiallydifferent advertisements for the remaining three manufacturers.
Accordingly, the survey is neither admissible nor entitled to any probative
weight...
In contrast, the Court finds [Defendant’s expert’s] survey both
admissible and persuasive. [Defendant’s expert] utilized the so-called
Eveready methodology in conducting his survey. Participants were
instructed to look at an advertisement for one of Plaintiff’s products for
the same amount of time that they would look at it if they saw it in a
magazine. Participants were then asked a series of questions regarding the
source of the product shown in the advertisement. The survey was not
leading, and it consistently showed a very low likelihood of confusion.
Pepsico, Inc. v. Jay Pirincci, 2012 T.T.A.B. LEXIS 261, *18-*21 (T.T.A.B.
2012)
...With respect to the substance of the survey:
. it “covered consumers of fruit or fruit-flavored drinks and
fruit-flavored carbonated drinks,” excluding those
85
employed in fields which might give them “special
knowledge or insight,” and those “who had an immediate
household member so employed;”
. in total, 404 consumers participated in the survey,
conducted via the “mall intercept” method, with 200
consumers participating in one of two “test cells” and 204
consumers participating in one of two “control cells;”
. one test cell was questioned about applicant’s involved
mark “in the context of fruit or fruit-flavored drinks,” while
the other was questioned about applicant’s involved mark
“in the context of fruit flavored carbonated soft drinks;”
. the control cells were similarly divided between
carbonated and non-carbonated beverages, and consumers
in the control cells were questioned not about applicant’s
involved mark, but instead about the “control mark” CAN
DO;
. respondents were shown a card bearing the mark
applicable to their particular group, and asked a series of
questions, starting with whether the respondent [*19] had
“any opinion about what company or brand makes or
distributes a drink with this name?;”
. respondents answering yes were then asked which
company or brand makes or distributes a drink under the
applicable mark, followed by “what makes you think so?”;
. respondents were then asked if they had an opinion about
“any other product or products” which are “made or
distributed by the same company that makes or distributes
this drink;”
. those answering “yes” were next asked “what other
product or products do you think are made or distributed by
the same company?,” followed by “what is your reason for
thinking” so;
. finally, respondents were asked whether or not the drink is
made “with the permission of, or in affiliation with any
other company,” and, if the answer was yes, “what other
company or brand?”
86
...After subtracting the 14.7% of control cell respondents who
named MOUNTAIN DEW, i.e. the “noise level,” from the 62.5% of test
cell respondents who were confused, [Opposer’s expert] found that “net
confusion” was 47.8%...
We find that [Opposer’s expert’s] survey, which used the “mall
intercept” method, surveyed approximately 400 respondents divided into
control and test groups, displayed the test and control marks on cards, and
asked a series of questions and follow-up questions in a well-accepted
format, is admissible and credible. In fact, the survey is quite similar in
design and execution to surveys we and federal courts have previously
held to be persuasive...we find that the survey weighs in favor of a finding
of likelihood of confusion.
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 232-233 (S.D.N.Y.
2012)
In addition to the flaws identified in the Daubert opinion [see
Gucci v. Guess?, 2011 U.S. Dist. LEXIS 132706], testimony at trial
revealed several other reasons to give reduced weight to the conclusions in
the [Plaintiff’s expert’s] survey. First, he tested a cross-body bag, even
though cross-body bags represented a maximum of three percent of bags
sold during the period for which Gucci claims damages...Second, the
results of his survey cannot be extrapolated to bags in other
colorways...which account for more than seventy-five percent of Guessbranded bags bearing the Quattro G Pattern...Third, it is unreasonable to
apply [Plaintiff’s expert’s] findings to those bags that feature the “slightly
garish kind of hardware” and loud coloration that are key features of the
[Defendant’s] brand
Based on the foregoing, I find that the [Plaintiff’s expert’s] Survey
— when viewed in light of the [Defendant’s expert’s] observational study
and the testimony of all the confusion experts at trial — is not entitled to
significant weight, and therefore provides only weak evidence in support
of [Plaintiff’s] trade dress claims...
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 81592, *6-*7, *9,
*12-*13, *19-*21, *24-*31 (D. Colo. 2012)
[Defendant’s expert] designed a double-blind survey utilizing a
questionnaire that respondents completed on the internet...[Defendant’s
expert’s] sample size consisted of 401 respondents who had purchased a
sinus remedy product in the last six months or intended to purchase one in
the next six months...Among other questions, respondents were asked the
following:
3. Tell me what comes to mind when I say:
a. SinuCleanse
b. SinuSense
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c. Nielmed (sic)
...This question did not present the [Defendant’s] mark in its stylized
format...The survey then presented respondents with photographs of the
package design for either the Neti pots or the saline
packets...Subsequently, the packaging for the...brands was presented sideby-side...
...
[Plaintiff] argues that [Defendant’s expert’s] survey universe is
overinclusive because it does not adequately limit survey respondents to
prospective users of sinus wash products...
...
...Given that the relevant population targeted by [Plaintiff’s]
allegedly infringing products is users of nasal wash products (i.e. neti pots,
saline refills, and squeeze bottles), [Defendant’s expert’s] failure to
differentiate between general sinus remedy product users and prospective
sinus wash users renders his survey universe overinclusive...
...
[Plaintiff] argues that [Defendant’s expert’s] survey does not
replicate market conditions because question No. 3 of the survey does not
present the stylized version of the [Defendant’s] mark, which is the only
one consumers encounter...Additionally, [Plaintiff] argues that
[Defendant’s expert] disassociates the [Plaintiff’s] mark from the
[Plaintiff’s] company label, which does not replicate consumers’ exposure
to its products...[Plaintiff] claims that, as a result of presenting the marks
in this manner, [Defendant’s expert’s] survey “bias[es] the survey
respondents with the intent to make them consider [Defendant’s product]
and [Plaintiff’s product] as more ‘similar.’”...
...
For a survey to provide reliable information, the survey must
resemble the manner in which consumers would view the products in the
marketplace...
In typical marketplace conditions, [Plaintiff’s] products usually
contain both the SinuSense™ mark and the “waterpik” label on the face of
the packages...Additionally, consumers only encounter [Defendant’s]
products with the SinuCleanse® mark in its stylized
manner...Consequently, the Court finds that [Defendant’s expert’s] use of
the unstylized SinuCleanse® mark and the separation of the SinuSense™
mark from the “Waterpik” label fails to adequately replicate market
conditions.
...
...because the obvious result of [Defendant’s expert’s] survey is to
exaggerate any confusion that might be detected by focusing respondents’
attention solely on the packaging of the three products, the probative value
of the survey is decreased...
...
3
88
When evaluating the objectivity of a survey, a court must consider
the degree of suggestiveness of every survey question...
...First, question No. 7(a) of the survey asks respondents: “Now,
please tell me whether you think that . . . two or more of the products you
see now are made by the same company.”...This question is suggestive
because it introduces the possibility that one company made two or more
of the products...Rather than measure any actual confusion, the question
suggests, at least implicitly, that respondents should believe that there is
some sort of relationship between the different items when the possibility
might not even have occurred to the vast majority of consumers...In
contrast, Professor McCarthy’s sample question asks respondents “What
company do you think makes this product?”...In Professor McCarthy’s
question, the respondent must provide the name of the company on his
own accord, thereby showing the surveyor the extent to which the
respondent was confused by the marks, if at all. In this regard, Professor
McCarthy’s question is not suggestive.
Question No. 8(a) asks respondents: “Looking at these products,
do you think that . . . One or more of the COMPANIES WHO’S (sic)
products you see now have a business affiliation or connection with the
other shown here?”...Also, question No. 9(a) asks respondents: “Looking
at these products, do you think that . . . One or more of the products you
see now received permission or approval from the others shown
here.”...Both of these questions suggest to the respondent that there should
be an association between the companies that produce the products in the
survey...By limiting the respondents’ answers to “others shown here,” the
question creates the impression of a relationship...In contrast, Professor
McCarthy’s sample question asks respondents “Do you think this product
was approved, licensed or sponsored by another company or
not?”...Professor McCarthy’s question is open ended and allows
respondents to determine what, if any, company approved or licensed a
particular product. More importantly, Professor McCarthy’s question is
not leading or suggestive because it does not limit respondents’ responses
to the companies affiliated with the products in the survey.
In addition, none of the questions in [Defendant’s expert’s] survey
require that a respondent identify the name of a company. However, it is
axiomatic that a consumer cannot be confused as to the source of the
marks if he had no previous knowledge of a particular source...Thus,
[Defendant’s expert’s] failure to question respondents as to the source of
the marks divests the survey questions of any probative value.
...
The Court retains the authority to determine what weight, if any, it
should afford a consumer survey...Moreover, individual flaws in
methodology typically only relate to the weight of the survey
evidence...However, “when the deficiencies are so substantial as to render
the survey’s conclusions untrustworthy, a court should exclude the
survey.”...[Defendant’s expert’s] survey has an overinclusive survey
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universe, an unrepresentative sample, replicates unrepresentative market
conditions, and contains suggestive questions. The Court finds that the
substantial deficiencies in [Defendant’s expert’s] survey cumulatively
render all of his conclusions devoid of any probative value and therefore
irrelevant as they do not make the existence of a likelihood of confusion
more or less probable...
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 679 F.3d 763,
770-771 (8th Cir. 2012)
Finally, [Defendant] argues that the district court erred in crediting
an expert survey...purporting to show that nineteen percent of consumers
of retail banking services would be confused as to the source of
[Defendant’s] marketing materials. [Defendant] first challenges the control
mark used by the [Plaintiff’s expert’s] survey to filter out confusion
caused by carelessness...[Defendant] asserts that the control mark “First
Bank & Trust” used in the [Plaintiff’s expert’s] survey was improper
because it does not include the phrase “First National.” To the contrary,
“(t)o fulfill its function, a control should ‘share as many characteristics
with the experimental stimulus as possible, with the key exception of the
characteristic whose influence is being assessed.’”...Here, one
“characteristic whose influence is being assessed” is the phrase “First
National,” so the use of that same phrase in the control mark would mask
not just careless responses, but also legitimate confusion. We agree with
the district court that the control used by the [Plaintiff’s expert’s] survey
was proper.
The Steak Umm Co. v. Steak ‘Em Up, Inc., 868 F. Supp. 2d 415, 424 & n.5 (E.D.
Pa. 2012)
n.5 In Question 1, respondents were asked “Do you believe that
this restaurant (does serve or use the products you saw earlier) or do you
believe this restaurant (does not serve or use the products you saw
earlier)?...For respondents who answered “no” and “I don’t know” to
Question 1, they were asked Question 4 which posed “Do you believe that
this restaurant (is connected or affiliated with the company that put out the
products you saw earlier)?”...
...
The [Plaintiff’s expert’s] survey mixed inquiries about
[Defendant’s] use of Steak Umm products with inquiries about any
“connection or affiliation” between Steak ‘Em-Up and Steak Umm....The
[Plaintiff’s expert’s] survey focuses on an inquiry that has no relevance to
this case and which has nothing to do with the likelihood of confusion
90
between the brands. This point alone renders the survey unreliable as an
indicator of the likelihood of confusion to the consumer. With regard to
the connection or affiliation inquiry, I find that the [Plaintiff’s expert’s]
survey unduly suggests to the survey participants that there may be some
affiliation or connection simply by the use of the word “steak” in each
name without any explanation or any additional information about the two
entities.
Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 U.S. Dist. LEXIS
42795, *69-*71 (S.D.N.Y. 2012)
The parties dispute the relevance and methodologies of one
another’s [likelihood of confusion] consumer surveys. “To be probative
and meaningful . . . surveys . . . must rely upon responses by potential
consumers of the products in question.”...When a senior user asserts that
its mark has been unlawfully used by a defendant, the relevant survey
universe is the prospective purchasers of the defendant’s products...In this
case, the relevant universe would consist of prospective [Defendant’s
product] purchasers, and the relevant underlying issue is whether that
population erroneously believed that [Plaintiff] sponsored, affiliated or
associated with [Defendant]...
According to [Defendant’s] expert, a net eight percent of likely
[Defendant’s product] consumers either believed that [Defendant] and
[Plaintiff] were affiliated in the “Luxury” ad, or that [Plaintiff] granted
permission to use its marks...Ten percent stated that they were more likely
to purchase a [Defendant’s product] as a result of the basketball in
“Luxury.”...[Defendant] asserts that these figures reflect an absence of
actual confusion.
[Plaintiff] points out certain flaws in the [Defendant’s expert’s]
survey. They note that the basketball showed to the control group was a
chestnut-brown color. Indeed, by depicting the ball in an atypical color
that mimics the [Plaintiff’s] marks, a reasonable trier of fact may question
the control’s credibility. In addition, [Defendant’s expert] asked
participants, “In creating the commercial, do you think the company that
produces the advertised brand or product (X) got or was required to get
permission from any other company or brand?” As [Plaintiff] notes, the
question is not only compound, but requires participants to draw a legal
conclusion as to [Defendant’s] obligations...Judge Scheindlin concluded
that a consumer-confusion study premised on a similar question “carr(ied)
little weight,” and cited other district courts that reached the same
conclusion...
To the extent that [Plaintiff] cites its own expert’s opinions in
opposition, that evidence is not directed to likely [Defendant’s product]
purchasers and instead looks to the misapprehension among all
participants who recognized the [Plaintiff’s] mark...While such views may
be relevant in the dilution context — where the inquiry is directed toward
91
perceptions of the senior mark and the whittling away of the senior mark’s
power — they carry little or no weight under the relevant survey
universe...and do not shed light on the ultimate issue of whether
prospective [Defendant’s product] purchasers mistakenly believed that
[Plaintiff] sponsored, approved or affiliated with the “Luxury” ad.
E & J Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10669, *50-*51
(E.D. Cal. 2012)
...The Gallo defendants submit the result of [a] survey. In that
survey, less than 1%, or one person out of 216, was confused about the
origin of the Camarena bottle based on its shape. As mentioned above,
this Court finds [Gallos’] survey to be highly probative of the lack of
likelihood of consumer confusion...
...The Proximo plaintiffs have submitted no evidence that raises a
genuine issue of fact. Although they criticize the Gallo defendants’ expert
survey, they present no counter-survey results or any other evidence to
rebut the evidence presented by Gallo...
Borghese Trademarks, Inc. v. Francesco Borghese, 2012 U.S. Dist. LEXIS 184363, *32*33 (S.D.N.Y. 2012)
...Plaintiffs’ expert...conducted a survey demonstrating that HSN
infomercials created a fifteen-percent level of net confusion with the Borghese
brand...The Second Circuit has indicated that this level of net confusion is
probative of consumer confusion...
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 1374, *5-*7, *11*13, *19-*23 (D. Colo. 2012)
...In order to determine the likelihood of confusion, [Plaintiff’s
expert] performed a mall intercept survey in sixteen different malls around
the country...The respondents were randomly assigned into two groups,
with the first group exposed to the [Plaintiff’s] mark and the second
(control) group exposed to [a control mark]...After initial screening
questions, consumers were asked the following four questions:
1. If you have an opinion, what company makes or puts out this
product?
2. If you have an opinion, do you or do you not think that the
company that makes or puts out this product makes any other
brand or brands of neti pots?
3. If you have an opinion, do you or do you not think that the
company that makes or puts out this product is connected or
associated with any other company or companies?
92
4. If you have an opinion, do you or do you not think that the
company that makes or puts out this product has authorization or
permission from any other company or companies.
The results of the survey showed that only one of the 164
respondents in the first group (0.6%) believed that [Plaintiff’s product
bearing its mark] had an association or connection with [Defendant’s
product bearing its mark]...
[Defendant] challenges the admissibility of [Plaintiff’s expert’s]
survey results and opinions. Specifically, [Defendant] asserts that
[Plaintiff’s expert’s] survey is fundamentally flawed because: (1) it failed
to test the universe...of consumers who are most likely to buy [Plaintiff’s]
goods; (2) the chosen sample was not a fair sampling of the target
universe; and (3) the questions posed could not adequately determine the
likelihood of confusion between the two marks...According to
[Defendant], these errors render [Plaintiff’s expert’s] survey and
conclusions inadmissible...
...
In this case, [Defendant’s] counterclaim for trademark
infringement is based on the theory of forward confusion. Forward
confusion occurs when the junior user diverts a senior user’s customers
and “attempts to capitalize on” the senior user’s existing reputation and
goodwill...In cases of forward confusion, “the proper universe to survey is
the potential buyers of the junior user’s goods or services.”...
...[Defendant] argues that, by focusing on this universe, the survey
erroneously focused on respondents who are more likely to be familiar
with [Defendant’s product] than [Plaintiff’s product]...[Plaintiff’s expert’s]
survey focused on the wrong universe because the respondents represent
likely purchasers of [Defendant’s] products and not [Plaintiff’s] goods.
[Defendant’s] argument is mistaken in that it confuses consumers
who are likely to buy neti pots with those who are likely to be familiar
with particular marks. Because the focus of surveys in forward confusion
claims are consumers likely to buy the junior user’s goods, in cases such
as this, where [Defendant] and [Plaintiff] market their products to similar
groups, it is not uncommon for likely consumers of the junior user’s
products to be familiar with both the junior and senior marks...
Second, [Defendant] alleges that the survey is flawed because it
did not determine whether the respondents were familiar with the
[Defendant’s] mark...However, as noted above, the focus of a consumer
confusion survey should be the junior user’s goods...Therefore,
[Defendant’s] argument in this regard is meritless.
...
Finally, [Defendant] argues that [Plaintiff’s expert’s] survey design
is systematically flawed because it: (1) fails to expose respondents to both
the [Plaintiff’s] and the [Defendant’s] marks and trade dress; (2) allows
respondents to view the stimulus during survey questioning; and (3)
93
demands that customers identify the company name rather than the brand
name...The Court finds all of these arguments unavailing.
First, [Defendant] argues that [Plaintiff’s expert’s] survey is flawed
because it does not expose consumers to both the [Plaintiff’s] and
[Defendant’s] marks. However, the Tenth Circuit has repeatedly explained
that “(i)t is axiomatic in trademark law that ‘side-by-side’ comparison is
not the test.”...
Here, [Defendant] does not provide evidence that the products are
ever sold side-by-side...Thus, performing a survey with a side-by-side
comparison would not accurately account for the marketplace conditions
under which consumers encounter the two competing marks...
Second, [Defendant] argues that [Plaintiff’s expert’s] survey is
flawed because the respondents were permitted to view the stimulus
during questioning. However, surveys only provide useful evidence of
confusion if the survey mirrors a real world setting...[Defendant’s]
argument that [Plaintiff’s expert’s] survey was flawed because it permitted
the respondents to handle the merchandise is unconvincing because the
survey accurately accounted for marketplace conditions under which
consumers encounter the neti pots.
Third, [Defendant] argues that [Plaintiff’s expert’s] survey is
flawed because it requires that respondents identify the company name
rather than the product’s brand name. However, the inquiry under both a
trademark infringement and a trade dress claim is whether the marks are
so similar that “there is a likelihood of confusion among consumers as to
the source of the competing products.”...Thus, for a survey to test
confusion it must determine whether the “ordinary prospective purchaser,
exercising due care in the circumstances, is likely to regard (the junior
mark) as coming from the same source as the trade-marked article (the
senior mark).”...Moreover, [Plaintiff’s expert’s] experiment was tailored to
Professor McCarthy’s generally accepted “Standard Format” to test
confusion in trademark cases...
Li & Fung Ltd. v. Lelania Cher Farrenkopf, 2011 T.T.A.B. LEXIS 398, *20-*21
(T.T.A.B. 2011)
[Opposer] further testified that “over the years we’ve done a
number of studies and ... telephone surveys done by a third party market
research firm.”...A summary of a July 2008 market research survey shows
that over a four-year period, a range from 75% to 86% of purchasers who
took the survey recognized BLACK CAT as a brand name for
fireworks...Because the parameters of the survey have not been described,
the record does not reflect the make-up of the chosen survey universe, and
the questions that were asked of the respondents are missing from the
record, we afford the survey little weight...
94
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280,
*58 (T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B.
Finally, in connection with its argument that there is no evidence
of actual confusion, applicant requests the Board to make an adverse
inference based on opposers’ failure to conduct a likelihood of confusion
survey. It is well-established that we do not make such adverse
inferences...
The Steak Umm Co. v. Steak ‘Em Up, Inc., 2011 U.S. Dist. LEXIS 94088, *18 (E.D. Pa.
2011)
...[Plaintiff’s] survey of consumers is also not evidence of actual
confusion. Surveys are only evidence of actual confusion if they replicate
the real world setting in which a consumer would encounter the
mark...[Plaintiff’s] survey was conducted online and using only the names
of each company. It did not incorporate either party’s logo or the
packaging that accompanies the products. This is not how a consumer
would encounter either party’s products in a real world setting and is not
strong evidence of actual confusion.
The Gap, Inc. v. G.A.P, Adventures Inc., 2011 U.S. Dist. LEXIS 71675, *20-*21, *23*26 (S.D.N.Y. 2011)
...plaintiffs [also] presented the results of [a] survey that addressed
the likelihood of consumer confusion.
The population for [Plaintiffs’ expert’s] survey consisted of men
and women 18 years of age or older who lived in, worked in, shopped in
or otherwise visited the area in which G.A.P Adventures’ New York City
store is located and who were likely to shop for travel tour packages or
travel tours in the next 12 months. This universe was designed to include
both actual and prospective purchasers of G.A.P Adventures’ services.
...
Respondents in the test cell were shown the test stimulus: a
photograph of the front of G.A.P Adventures’ New York City store.
Respondents in the control cell were shown a photograph identical
to that used in the test cell, except the storefront sign that read “G.A.P
Adventures” was replaced with a storefront sign that read “The Great
Adventure People Adventures.” Otherwise, the stimuli used in the test cell
and the control cell were the same.
...
In Question Set 1, respondents were asked what services or
products they would expect to be able to get at the store in the photograph.
The purpose of this question was to determine whether respondents
believed the store to be a Gap store.
95
In Question Set 2, respondents were asked whether they thought
the company that operates the store in the photograph also operates any
other store or business...The purpose of these questions was to determine
whether respondents believed the store in the photograph to be operated
by the company that runs Gap stores.
In Question Set 3, respondents were asked, “Do you think the
company that operates the store I showed you got authorization, that is,
permission, from any other company to use their name, or not, or don't
you know.”...The purpose of these questions was to determine whether
respondents believed that the company that operates the store in the
photograph obtained authorization or permission to use its name from Gap
clothing.
Overall, the survey demonstrates that 40.9% of respondents in the
test cell were confused into thinking either that (1) the G.A.P Adventures
store was a Gap store, or (2) the G.A.P Adventures store was operated by
the same company as Gap, or (3) the G.A.P Adventures store was
authorized by Gap.
...
By comparing the results in the test cell and the control cell,
[Plaintiffs’ expert] concluded that (1) there is a significant likelihood that
consumers will confuse G.A.P Adventures with Gap; and (2) this
likelihood of confusion is due solely to G.A.P Adventures’ use of the word
“G.A.P”--when the word “G.A.P” was removed, no respondents were
confused.
I credit [Plaintiffs’ expert’s] survey as evidence of a likelihood of
confusion.
U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 532-535
(S.D.N.Y. 2011)
The [DJ Plaintiff] presented a survey [which addressed the issue of
likelihood of confusion]...
The...survey tested three fragrance packages, all set on beige
packaging with gold lettering: (1) the Double Horsemen logo with
“USPA” beneath, (2) the Double Horsemen logo with “U.S. POLO
ASSN.” beneath, and (3) the Double Horsemen logo with “U.S. POLO
ASSN.” arched above and “1890” below. [DJ Plaintiff’s expert] used two
controls. One sported identical packaging and gold ink to the three tested
fragrances, except instead of the Double Horsemen logo, the control
featured USPA’s horsehead mark, which consists of a picture of a horse’s
head in an oval shape formed by a stylized horseshoe, with “U.S. POLO”
arched above. The second control is a fragrance which presents a gold
embossed polo player astride a horse, facing directly to the viewer’s right,
with “Beverly Hills” arched above and “Polo Club” below...
The [DJ Plaintiff’s expert’s] survey found 28% gross confusion
with the Double Horsemen logo with “USPA” beneath; 27% gross
96
confusion with the Double Horsemen logo with “U.S. POLO ASSN.”
beneath; and 25.5% gross confusion with the Double Horsemen logo with
“U.S. POLO ASSN.” arched above and “1890” below...The survey found
28.5% confusion with the USPA’s horsehead mark control and 32%
confusion with the Beverly Hills Polo Club control...
...
The most significant error in the...study was its choice of control
variables. Without a proper control, there is no benchmark for determining
whether a likelihood of confusion estimate is significant or merely reflects
flaws in the survey methodology. “In designing a control group study, the
expert should select a stimulus for the control group that shares as many
characteristics with the control group as possible, with the key exception
of the characteristic whose influence is being assessed.”...Here...controls
were improper in that they included the very elements being
assessed,...namely, the word mark “POLO” and, in the case of the Beverly
Hills Polo Club control, also a mounted polo player image.
...
...In sum, dues to its significant drawbacks, the Court gives the [DJ
Plaintiff’s expert’s] study no weight.
THOIP v. Walt Disney Co., 788 F. Supp. 2d 168, 170, 183-184 (S.D.N.Y. 2011)
[Plaintiff’s expert] conducted two surveys based on the “array or
Squirt research model”...one for the Miss Disney shirts (“Miss Disney
survey”) and another for the Little Miss Disney shirts (“Little Miss Disney
survey”). In brief, respondents for each survey were asked a series of
questions after being exposed to two portfolios of products: one containing
either Miss Disney or Little Miss Disney shirts, and one containing Little
Miss THOIP shirts.
...
In sum, because [Plaintiff’s expert’s] Survey failed to replicate
actual marketplace conditions, lacked a proper control, improperly
counted certain responses as indicating confusion, and suffered from
demand effects, it is not a reliable indicator of consumer confusion, and is
inadmissible.
Clinique Laboratories LLC v. Absolute Dental, LLC, 2011 T.T.A.B. LEXIS 161,
*32-*39 & n.33 (T.T.A.B. 2011)
...applicant has not disputed, the competence of opposer’s survey
expert...In this case, [Opposer’s expert] designed a mall intercept survey
involving interviews with four-hundred thirty-two respondents at shopping
malls in eight geographically dispersed metropolitan areas. According to
[Opposer’s expert], the survey indicates that “the net measured likelihood
of confusion of approximately thirty-six percent (35.64%) is attributable
97
solely to the presence of the CLINIQUE portion of Applicant’s proposed
CLINIQUE DENTIQUE mark.”...
In understanding the relevance of a particular percentage, courts
and the Board find likelihood of confusion when a “substantial” or
“appreciable” number of consumers are likely to be confused. In analyzing
percentage numbers then, courts will extrapolate a percentage to the actual
number of potentially confused consumers. In any case, thirty-six percent
represents a substantial number of potential consumers, based on the class
of consumers being those members of the public interested in enhancing
their personal appearance, or even, based on opposer’s annual sales...
[Opposer’s expert] explains the significance of the survey results
when compared to the results of the control group:
Specifically, the survey results make clear that the causal
nexus for likelihood of confusion is Applicant’s use of CLINIQUE
in Applicant’s CLINIQUE DENTIQUE mark and is not due to any
other alternative explanation. Because the control cell, using the
BOUTIQUE DENTIQUE mark, also employed the same list of
services (restorative, cosmetic and family dentistry services) and
asked the same survey questions, and resulted in less than six
percent (5.56%) likelihood of confusion with opposer’s Clinique, it
is certain that the measured likelihood of confusion is attributable
solely to the presence of the CLINIQUE portion of Applicant’s
proposed CLINIQUE DENTIQUE mark. Conversely, the survey
results also make clear that the use of a dissimilar mark in
conjunction with the list of Applicant’s specified services is not
likely to cause confusion...
Applicant has retained its own survey expert to attack the probative
value of opposer's made-for-litigation survey...
However, we find that opposer’s survey was carefully constructed
to mirror the so-called Ever-Ready...survey format...This survey is
consistent with those accepted in our established precedent on Ever-Ready
type trademark surveys.
...we find that [Opposer’s expert’s] 6- and 7-series of questions
[n.33 (Question 6.0) [On seeing the test cell card or control cell card]:
“Who, or what company, do you believe owns or operates this business?”
(Question 6.1) “Why do you say that?” (Question 6.2) “What, if anything,
can you tell me about INSERT RESPONSE TO Q6.0?”] parallels the
precise formats approved in Ever-Ready and Carl Karcher. The survey
was conducted well within the parameters of the likelihood of confusion
survey formats previously accepted by this Board...Thus, we find that it is
reliable and has probative value on the issue of likelihood of confusion as
to the CLINIQUE DENTIQUE mark used in connection with restorative,
cosmetic and family dentistry services...
98
Although applicant criticizes [Opposer’s expert] for making the
word “cosmetic” continuously visible on the stimulus card to the
interviewee, we note that opposer’s survey expert merely adopted
verbatim applicant’s recitation of services. This is entirely consistent with
Board practice and the progeny of the Ever-Ready decision over more than
three decades.
The parties are also at odds over the question of whether the
fictitious mark used on the control cell card, BOUTIQUE DENTIQUE,
was an appropriate choice. While applicant’s expert criticized [Opposer’s
expert’s] choice, we find it an appropriate choice to eliminate any noise
from the survey, and certainly find greater weaknesses in the alternatives
thrown out by applicant’s expert and counsel.
Next, we note that consistent with Ever-Ready, opposer’s 8- and 9series questions were designed to elicit responses concerning
authorization/approval and affiliation/connection. While these types of
questions were not expressly addressed in Ever-Ready, a leading
commentator...suggests, and court opinions have found,...that
authorization and affiliation queries are appropriate in light of the specific
language of the Lanham Act.
Additionally, each series of the survey questions contain the
follow-up question: “Why do you say that?”...The answers given to these
follow-up questions persuade us that the respondents were not merely
reading the stimulus card, guessing or trying to please the interviewer.
...given the way in which this survey format carefully follows the
Ever-Ready survey format, we find that it is reliable and therefore of
probative value on the issue of likelihood of confusion herein.
In re Oversee.net, 2011 T.T.A.B. LEXIS 114, *14 (T.T.A.B. 2011)
Finally, applicant relies on a survey to show that there is no
likelihood of confusion. We begin by observing that typically surveys are
used to prove likelihood of confusion rather than to prove no likelihood of
confusion. While the survey follows the accepted format set out in Union
Carbide Corp. v. Ever-Ready, Inc.,...and followed by the Board...we find
that it is compromised by the initial statement to the survey participants. In
the preliminary statement of purpose, the participants are told “that the
research [is] related to website names.” The reference to “website names”
does not prepare the participant to perceive these examples as brands or
trademarks but rather more as simply the virtual world’s version of an
address...
Papa Ads, LLC v. Gatehouse Media, Inc., 2011 U.S. Dist. LEXIS 155496, *19-*20 (N.D.
Ohio 2011)
Plaintiff has also opposed defendants’ motion for judgment on
plaintiff’s claims by producing a “consumer survey.” This survey
99
consisted of plaintiff sending an e-mail question to 60,000 e-mail
addresses that plaintiff acquired directly by consumers that “signed up” on
plaintiff’s website or were provided to plaintiff by local vendors or local
businesses. Plaintiff received 155 responses to the survey - or 0.25%...
...The question posed by plaintiff in this e-mail survey was:
“Which one of these companies, if any, would confuse you into thinking
that they were either part of iShopStark.com or actually
iShopStark.com?”...The recipients of this e-mail question could select
from the following from a drop-down menu:
yellowpages.com;...HeyButler.com; ShopNStark.com;...BuyNDine.com;
[and none]...
...the Court is doubtful of the methodological validity of the
survey...on the question of consumer confusion. When methodological
issues undermine the relevance and persuasiveness of a survey, it is
appropriate for the Court to accord little weight to the results...
Go SMiLE, Inc. v. Dr. Johnathan Levine, 769 F. Supp. 2d 630, 642-643 (S.D.N.Y.
2011)
In an effort to establish a low likelihood of consumer confusion,
defendants have proffered [an] expert report...five hundred “qualified
prospective consumers of tooth whitening products” participated in one of
two online surveys...The surveys were double blind: participants were not
informed of the survey’s purpose or sponsorship, and the firm retained to
administer the survey was not told of the study’s sponsor or purpose...
The first survey was a so-called “Eveready” survey...Fifty survey
participants were shown an image of the Glo packaging, and a separate
image of the Glo light-whitening products in their packaging...Another
fifty were shown an image of the packaging on “GLO Brilliant” whitening
gels...The survey asked participants to “look at this product” as if they
were viewing it on a cable shopping channel such as QVC or HSN, in a
store such as Sephora or on a website.”...It then asked all participants: “Do
you have an opinion about what company or brand puts out the product
you were just shown, or do you not?”...Respondents who answered “yes”
were then asked to identify the brand or company responsible for the
product...All participants were asked if they knew of any other products
marketed by the same company, and if so, the brand and product marketed
by that company...
All respondents were then asked if they believed that “the
company that puts out the product you were shown is affiliated with or
received approval from any other company or brand that you know
of...None of the 100 respondents in the Eveready survey named Go
SMiLE as a potential source of the Glo product...The product was
associated with 14 other brands, which were as varied as Sony and
Crest...Four associated Glo with Sephora, but when asked to explain the
basis for making the association, responses included that it looked like a
100
product that Sephora would sell, that “it is nice,” and erroneously, that the
product said Sephora on the box...
The second survey was a “sequential lineup survey” of 400
respondents, 200 of them assigned to a test cell and 200 to a control
cell...Respondents were first shown an image of a Go SMiLE product
package...Half saw the packaging of the “GO SMiLE SMILE
WHITENING SYSTEM.”...Half saw an image of the “GO SMiLE GO
WHITER” product...“The purpose of including two products in the study
was to cover two different manners in which consumers could encounter
the GOSMILE mark on GOSMILE products.”...
Respondents in the control cell were then shown Glo packaging,
with the word “glo” removed, and the product renamed as “Brilliant
G.”...The control-cell alterations were intended to “measure noise — i.e.,
the extent to which survey respondents will make a connection between
the two products even when the GLO marks have been removed.”...
In the test cell, 37.5% of respondents concluded that the GLO
Brilliant product “is put out by the same company as Gosmile” or is
otherwise affiliated with Gosmile...In the control cell, which did not use
“Glo,” 38.5% of respondents reached the same conclusions...The
[Defendant’s expert’s] Report concludes, “Since the Test and Control Cell
results were equivalent, the net confusion level is 0%. There was not
confusion caused by the GLO or GLO Brilliant mark above the level of
survey noise.”...
...I find his testimony to be credible and the surrounding results to
be reliable and probative. They support my finding that there is little
likelihood of consumer confusion as to the parties’ products...
Harry J. Binder v. Disability Group, Inc., 772 F. Supp. 2d 1172, 1177 n.5 (C.D. Cal.
2011)
n.5 We also find that Defendants’ behavior contributed to the low
answer rate [in Plaintiff’s] survey. For example, we credit Karen Funk
Seller’s testimony that a representative of [Defendants] called on the
telephone and told her to ignore the survey. (...[Defendants] called me on
the phone and told me to ignore this letter.”) In light of Defendants’
attempt to subvert the survey, their complaints about the purportedly low
answer rate are unconvincing. Defendants should not benefit from their
attempt to undermine the survey...
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884, 893 (S.D.
Tex. 2011)
...the Court does not find the [likelihood of confusion] survey
evidence inadmissible based on failure to replicate market conditions.
Although the interviewees were shown photographs of the products,
101
whereas in a store they would see three-dimensional bottles, that method is
commonly used and accepted...
General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711, *53*55, *57 (D. Utah 2010)
In the present case, a survey...was offered by [Plaintiff] to establish
that there is actual confusion in the marketplace between the Hummer and
an assembled Urban Gorilla...
The survey was a double-blind, test-control survey administered
online...Respondents viewed three images from different viewpoints of
either an assembled Urban Gorilla wagon model body kit or a militarystyle control vehicle...Each respondent then answered a series of questions
related to the images...The terms “Hummer,” “GM,” or “Urban Gorilla”
were not used in the questions about the images and there were no other
brand identifiers...
...[Plaintiff’s expert] identified individuals in the “relevant” group
as a “consumer who has purchased in the last three years or plans to
purchase within the next three years a new or used four-wheel drive SUV
with off-road capability and who is a decisionmaker in their household for
a car, truck, or SUV” because both [Plaintiff] and [Defendant] market
their products to this group...A random selection of individuals who met
market data demographics affiliated with this group were invited to
participate in the survey...
Half of the 1100 respondents completed the test condition survey
and the other 550 completed the control condition...In the summary of his
findings [Plaintiff’s expert] shared that the net confusion rate among those
surveyed was 50.4%...This percentage represents the difference between
the number of respondents in the control condition who associated the
images with Hummer or GM (21.1%) and those in the test condition who
associated the image with Hummer or GM (71.5%).
...
...The respondents in this case repeatedly said the Urban Gorilla
was a “Hummer” and when asked why, the oft recurring response was
“because it looks like one.” These responses strongly suggest, if not prove,
actual confusion. Due to this compelling survey evidence, I find that there
is actual post-sale confusion between the Urban Gorilla and Hummer...
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948, *23 (D. Utah
2010)
An open-ended question was not required to create a valid survey
question. Indeed, an open-ended question may have made interpreting the
survey results more difficult. The problem, however, is not the failure to
use an open-ended question, but the failure to design a close-ended
question that offers exhaustive alternative responses...
102
Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155,
*30-*33 (C.D. Cal. 2010)
...[Plaintiff] submitted a blinded, controlled Eveready consumer
confusion survey of more than 400 respondents at a sample of malls
nationwide, which reported a 24.3% confusion level after adjusting for the
confusion found in the control group...In other words, 24.3% of
respondents answered that the VITI water bottle shown to them was made
by FIJI or the same company that makes FIJI water, or was put out with
the sponsorship or approval of FIJI...Many of these respondents’ reasons
for thinking the product was associated with FIJI were the elements of the
FIJI trade dress...
[Defendant’s] own expert survey...does not discredit [Plaintiff’s]
survey. [Defendant’s expert] reported an 8% confusion level in an online
survey of 401 participants nationwide...The Court was troubled by several
aspects of [Defendant’s expert’s] survey, all of which indicate that his
report under-stated the confusion level...First, [Defendant’s expert] did not
include as “confused” 10 respondents that misspelled FIJI as FIGI or FUJI
or FUGI, which would increase the confusion level by 2.5%...Second,
[Defendant’s expert] did not include as “confused” the 15 respondents
who answered the question “What brand name, or names, if any, do you
think are also used by the company that makes [VITI]?” with “Fiji” (or
misspelled it), which would increase the confusion level by 4%...Third,
[Defendant’s expert] did not count as confused any of the 53 respondents
who answered “Fiji” when asked “Where do you think this product comes
from?”...Admittedly, this is an ambiguous question, because many
respondents probably answered on the basis of geographic origin, not
brand name, but at least some of the subsequent answers given by these
respondents do suggest that the respondent meant the brand, such as
“Looks like the Fiji bottle.”...Finally, [Defendant’s expert’s] survey began
with a question that listed numerous brands of water, including separately
listing FIJI and VITI, which suggests to respondents at the outset that the
two brands are not affiliated with each other...
Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation
No. 92046246, 27-31
...plaintiff...submitted a likelihood of confusion survey conducted for the
EE logo...
...According to the [Plaintiff’s expert], the survey indicates that
“approximately fourteen percent...of the relevant universe of potential
purchasers of one or more of (defendant’s) intended products expressed
the belief that (defendant’s) products bearing the stylized “ee” logo mark
are either put out by (plaintiff), are put out with the authorization/approval
103
of (plaintiff), or that the company that puts out the products has a business
affiliation/connection with (plaintiff).”...
...fourteen percent, represents quite an appreciable number of
potential consumers, based on the class of consumers being those
members of the public interested in purchasing handbags, etc...
[Plaintiff’s expert] explains the significance of the survey results
when compared to the result of the control group:
Specifically, the survey results make clear that the causal nexus for
likelihood of confusion is the appearance of the stylized “ee” logo mark and is
not due to any other alternative explanation. Because the control cell, using the
dissimilar yet interlocking fictitious stylized “mm” logo mark, also employed
the same list of products and asked the same survey questions, and resulted in
less than one percent likelihood of confusion with [Plaintiff], it is certain that
the measured likelihood of confusion is attributable solely to the presence of
the stylized “ee” logo mark...
Defendant attacks the probative value of the survey, by contending
that the survey questions were biased. We find no such deficiency...
Defendant also takes issue with the plaintiff’s classification of
certain responses as belonging in the category of those indicating a
connection to [Plaintiff]. While we do not agree with defendant’s
characterization, even if we were to subscribe to defendant’s calculations
which reduces the survey result of 9% being confused, this percentage has
been recognized by courts as supporting a finding of likelihood of
confusion..
Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025, 1037-1038 (9th Cir. 2010)
...What makes the district court’s misuse of Levi Strauss even more
glaring is its failure to mention even one of the numerous cases in which
we have held that survey evidence should be admitted “as long as [it is]
conducted according to accepted principles and [is] relevant.”...In sum, we
conclude that the district court abused its discretion in excluding the
survey because [Plaintiff’s expert] appears to have conducted the survey in
accordance with accepted principles, and because the results of the survey
are relevant to the ultimate question whether [Defendant’s] use of
“Delicious” was likely to confuse consumers.
...
To be sure, as [Defendant] argues and as the district court noted,
the [Plaintiff’s expert’s] survey has a number of shortcomings, including
the fact that it was conducted over the internet (thereby failing to replicate
real world conditions), may have been suggestive, and quite possibly
produced counterintuitive results. But these criticisms, valid as they may
be, go to “issues of methodology, survey design, reliability, . . . [and]
104
critique of conclusions,” and therefore “go to the weight of the survey
rather than its admissibility.”...
People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173, *22-*23 (D. Conn.
2010)
[Defendant] also offered survey evidence of confusion...
Defendant’s expert, conducted an online survey among 700 banking
consumers in Western Massachusetts. The survey used the sequential
“squirt” method. Respondents were shown Defendant’s mark (in
photographs, advertisements or brochures) followed by three other banks’
marks. Respondents were then asked if any of the three later banks were
“the same as” or “affiliated with” Defendant. Some of the respondents
were shown Plaintiff’s mark in the second group, some were shown a
control and some were shown “Bank of Western Massachusetts a division
of People’s United Bank.” The survey found that 32% of respondents
thought that the parties were the same or affiliated...However, the Court
agrees with...Plaintiff’s rebuttal expert, that the survey was suggestive.
The question posed - which if any of the banks are the same as or
affiliated with Defendant - provokes a “demand effect.”...The question is
leading. It logically elicits more answers finding affiliation because
respondents know what the survey tests. In addition, respondents actually
exhibited more confusion between PeoplesBank and “Bank of Western
Massachusetts, division of People’s United Bank” than between
PeoplesBank and “People’s United Bank.”...The fact that Defendant seeks
to enjoin the use of a name which elicits less confusion than the status quo
weighs heavily against Defendant’s motion.
Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237, *24 (N.D. Cal. 2010)
…In fact, as Defendants point out, Plaintiff’s expert...conceded
that when presented the package of the iXL toy (even when side-by-side
with [Plaintiff’s] IXL Math advertisement), his survey data indicates
confusion was unlikely ([approximately equal to] 8% confusion).”...
Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671, 689,
693-694, & n.29 (W.D. Ky. 2010)
To analyze consumer confusion, one must first identify the
relevant pool of consumers. [Plaintiff] contends that confusion of potential
buyers of either product is relevant, while [Defendant] insists that only
potential buyers of [Defendant’s class of goods] should be considered. The
circuits are split on this issue...The Sixth Circuit has addressed the issue
only tangentially, when affirming a district court’s criticism of a survey
that included too broad a spectrum of purchasers...It cited the Fifth Circuit
case with approval when it said “(t)he district court correctly recognized
105
that the (confusion) study failed to limit the respondent population to those
persons likely to purchase defendant’s products.”...
This Court agrees with the Sixth Circuit’s apparent endorsement of
the view that the relevant consumers are the potential buyers of the junior
user’s product. This limitation is sensible. [Plaintiff] is not harmed if its
own consumers believe there is an association between [Plaintiff] and the
[Defendant’s class of goods] but would never purchase [Defendant’s class
of goods] based on that connection. Therefore, the Court will consider
only the confusion of potential...consumers of [Defendant’s class of
goods]...
...
[Defendant] offered the survey evidence of [its expert] to show that
confusion did not exist. [Defendant’s expert] concluded that only two
percent of respondents were confused about the two brands. In the Court’s
view, the study and its conclusions were flawed in several significant
ways...First, the survey -- conducted online using 500 respondents -created an environment that was dissimilar to that in which a typical
consumer would encounter [either Plaintiff’s or Defendant’s products]...
Second, [Defendant’s expert] showed the respondents pictures of various
liquors with the brand name listed below each product, which would tend
to suggest that the products were not affiliated. Third, [Defendant’s
expert’s] control group was problematic and may have skewed the
confusion results. [n.29 In that group, he replaced the picture of the
[Defendant’s product] that included a red wax seal but had no drips. Then
he subtracted the number of confused respondents in the control group
from the number of confused respondents in the test group. Such an
approach ignores the fact that the control group picture could have been
confusing also.] Last, [Defendant’s expert] excluded respondents who
indicated that the products were related but said that they were “guessing.”
In sum, [Defendant’s expert’s] study was neither useful nor persuasive.
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719, *23-*28
& nn.17-19 (D. Md. 2010)
[Plaintiff’s expert]...was retained...to determine the extent to which
the SECRETS mark is likely to cause confusion with the SEACRETS
mark...[Plaintiff’s expert] performed an Internet-based consumer
confusion survey that targeted people who had “visited an adults-only
resort in the Caribbean or Mexico in the past 12 months or would be likely
to do so in the coming 12 months”--i.e., potential Secrets patrons...
Participants were divided into a “test” group and a “control” group...The
test group was shown web pages from Seacrets and Secrets and were
asked if they believed they were operated by the same company or were
otherwise affiliated...The control group survey was similar in all respects
except that the SECRETS mark on the Secrets web pages was changed to
“SEA CREST.”
106
[Defendant] argues that [Plaintiff’s expert] failed to apply industry
standards in designing and implementing the survey; thus, his report and
testimony should be excluded. “Survey evidence is generally admissible in
cases alleging trademark infringement under the Lanham Act.”...“While
there will be occasions when the proffered survey is so flawed as to be
completely unhelpful to the trier of fact and therefore inadmissible, such
situations will be rare.”...Usually, objections based on flaws in the
survey’s methodology are properly addressed to the trier of fact...“Unlike
novel scientific theories, a jury should be able to determine whether
asserted technical deficiencies undermine a survey’s probative value.”...
[Defendant] argues that the [Plaintiff’s expert’s] Report is
inadmissible because (1) the “universe” of the survey was incorrectly
defined; (2) the control stimulus was improper; (3) confusion as to
sponsorship was not measured; and (4) there was no validation of the
survey. [n.17 The applicable professional standards for survey research are
discussed in Shari Seidman Diamond, “Reference Guide on Survey
Research,” in Reference Manual on Scientific Evidence 229-276 (2d ed.
2000)] These arguments relate to alleged technical deficiencies of the
Report and are properly addressed to the trier of fact. [n.18 [Defendant’s]
argument that the universe of the survey participants was improperly
defined appears not only to challenge the survey’s reliability but also its
relevance. [Defendant] argues that because it has alleged “reverse
confusion,” the proper universe was potential Seacrets patrons and that
because [Plaintiff’s expert] surveyed only potential Secrets patrons, the
report should be excluded. Although a survey intended to measure reverse
confusion should be directed to the senior user’s customer base, see 6
McCarthy, § 32:159, [Plaintiff’s expert’s] failure to conduct such a survey
does not render the Report irrelevant. [Defendant] is also claiming
infringement based on “forward confusion,” and [Defendant] has appealed
the TTAB’s finding of forward confusion. The Report is relevant to those
claims.] The issues [Defendant] raises are straightforward, and, with the
aid of cross-examination and [Defendant’s] rebuttal witness, a jury will be
able to determine whether the asserted technical deficiencies undermine
the Report’s probative value. [n.19 The Court recognizes that the flaws
(Defendant) notes are potentially serious, but even assuming the accuracy
of (Defendant’s) criticisms, “[v]igorous cross examination, presentation of
contrary evidence, and careful instruction on the burden of proof are the
traditional and appropriate means of attaching shaky but admissible
evidence.” Daubert, 509 U.S. at 596.] The clarity of the issues also
diminishes any risk of prejudice or jury confusion. There being no other
objection to the admissibility of the Report, [Plaintiff] has shown by a
preponderance of the evidence that the report is relevant and reliable.
Accordingly, [Defendant’s] motion will be denied.
107
Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148, 1154-1155
(D. Nev. 2010)
...The survey’s purpose was “to determine whether potential
purchasers of graphic or screened T-shirts are likely to mistakenly believe
that the heirs, estate or agents of Robert Nesta Marley (‘Bob Marley’) are
the source or the sponsor of, or are affiliated with, [Defendant’s] T-shirts
bearing Bob Marley’s image.”...[Plaintiff’s expert] conducted 509 face-toface interviews with potential graphic t-shirt purchasers...[Plaintiff’s
expert] split the group into a control group, which was shown a fictitious
[Defendant’s] t-shirt bearing the image of an unknown African-American
male with dreadlocks, and a test group, which was shown an actual
[Defendant’s] t-shirt bearing Marley’s image...Both t-shirts contained the
[Defendant’s] neck label...
...
...[The] results led [Plaintiff’s expert] to conclude that forty-two
percent of respondents in the test group mistakenly believed Marley, his
heirs, or the person on the shirt were the source or sponsor of the tshirt...The comparable percentage for the control group was twenty-two
percent...[Plaintiff’s expert] thus concluded that twenty percent of the test
group was confused as to source of the actual [Defendant’s] t-shirt
because it bears Marley’s image...[Plaintiff’s expert] opined there is a
likelihood of confusion as to the source or sponsor of the [Defendant’s] tshirts due to the use of Marley’s image thereon...
THOIP v. Walt Disney Co., 690 F. Supp. 2d 218, 219, 222-223, 236-238, 240-241
(S.D.N.Y. 2010)
...I conclude that [Plaintiff’s] survey is inadmissible and
[Defendant’s] survey is admissible.
...
[Plaintiff’s expert] conducted a two-room “sequential array”
survey in which respondents were shown, in room one, a [Plaintiff’s] shirt,
and, in room two, an array of five shirts including an allegedly infringing
[Defendant’s] shirt (or control shirt) and four non-infringing “filler”
shirts...Each respondent participated in one of eight different cells...
...
...a respondent was shown in room one a specific [Plaintiff’s] shirt
and was told to look at it as if deciding whether to purchase it...When the
respondent was finished looking at the shirt, the shirt was removed from
view and the interviewer asked some unrelated questions intended to clear
short-term memory of the [Plaintiff’s] shirt.
The interviewer then escorted the respondent into a second room in
which she was shown the five-shirt array...The interviewer instructed the
respondent to look at the shirts as if considering whether to purchase any
of them...
108
When the respondent finished looking over the array, the
interviewer asked her a series of questions to determine whether she
thought one or more of the shirts in the array emanated from, was
associated with, or was permitted by [Plaintiff]...For instance, a
respondent was asked: “Do you think one or more of these products is put
out by the same company that put out the shirt I showed you earlier or that
none of these products is put out by the same company that put out the
shirt I showed you earlier or don't you know?”...
...
Based on all of the expert testimony and reports and my review of
the academic literature and case law, I conclude that the [Plaintiff’s
expert’s] Survey did not sufficiently approximate the manner in which
consumers encountered the parties’ products in the marketplace. When
ascertaining whether a survey methodology sufficiently simulates
marketplace conditions, the focal point must be the specific products
tested by the survey. [Plaintiff] has not shown a reasonable likelihood that
consumers would have proximately encountered the specific pairs of shirts
tested by [Plaintiff’s expert]...
By contrast to [Plaintiff’s] failure to establish that the specific pairs
tested in the [Plaintiff’s expert’s] survey were to be found in close
proximity in the marketplace, [Defendant] has demonstrated that
[Plaintiff’s expert’s] choices did not reflect the realities of the
marketplace...
...
Another aspect of [Plaintiff’s expert’s] methodology caused his
survey to further depart from actual marketplace conditions. The shirts
used in the survey did not bear the neck labels and hang tags that would
have been attached to the shirts in the marketplace...
...
...based on all of the foregoing discussion, I conclude that the
[Plaintiff’s expert’s] survey failed to sufficiently replicate the manner in
which consumers encountered the parties’ products in the marketplace
which severely diminishes the reliability and probative force of this
survey.
Not only did the [Plaintiff’s expert’s] survey fail to approximate
marketplace conditions, it also suffers from another major flaw – it did not
have an effective control. A survey designed to estimate likelihood of
confusion must include a proper control...
[Plaintiff’s expert’s] control was a shirt depicting the same
[Defendant’s] character image as an allegedly infringing shirt but without
any words. [Defendant] argues that these control shirts, because they
contained no words, were too dissimilar to the test shirts such that they
were not an effective control...
...
Because the [Plaintiff’s expert’s] survey failed to replicate actual
marketplace conditions in which consumers encountered the products at
109
issue here and failed to use an adequate control, it is not a reliable
indicator of consumer confusion. Accordingly, the [Plaintiff’s expert’s]
survey is inadmissible.
Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058, *46 (C.D. Cal.
2009)
…The Court need not apply a categorical rule about percentages
and its relationship to the likelihood of consumer confusion. Rather, the
Court finds that a 12.5% net confusion rate (a rate that is based on both
parties’ evidence), though not independently sufficient to show consumer
confusion, informs the Court of likelihood of consumer confusion…
Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554, *12*15 (D. Ut. 2009)
…[Plaintiff] has presented evidence of a likelihood of confusion via a
product “line-up” survey of 660 Utah residents…Adjusting for the control group,
the survey found that between 33.8 and 44.6 percent of Utah bread purchasers are
likely to be confused and falsely believe that Defendants’ SYCAMORE FAMILY
BAKERY products are either made by [Plaintiff] or connected or affiliated with
[Plaintiff]...Defendants did not offer any competing survey evidence…
To counteract the likelihood of confusion, Defendants propose
affixing a disclaimer sticker to their packaging that would state that the
product is not associated with GRANDMA SYCAMORE’S. Disclaimers,
however, are generally disfavored and the reference to GRANDMA
SYCAMORE’S could actually cause additional confusion to a casual
observer.
The Tenth Circuit has adopted a very demanding standard when a
defendant seeks to avoid an injunction for trademark infringement by using a
product disclaimer that disavows any association with the plaintiff’s products.
Under this standard: “The proponent of a disclaimer bears a ‘heavy burden…to
come forward with evidence sufficient to demonstrate that any proposed
(disclaimer) materials would significantly reduce the likelihood of consumer
confusion.’”…
…
Defendants have submitted no evidence nor offered any argument
to meet their heavy burden of proving how or why a disclaimer sticker
would avoid the consumer confusion proven by Plaintiff. This fact alone
requires the Court to deny this form of relief...
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist.
LEXIS 82980, *24-*28, *30, *56-*57 (D. S.D. 2009)
[Plaintiff] hired [a survey expert] to conduct a survey to address
the likelihood of confusion between [Defendant] and
110
[Plaintiff]…The…study was conducted by telephoning a random sample
of households located within a ten-mile radius of [Plaintiff’s] main office,
and asking to speak to the person in the household 18 years of age or older
who would have the next birthday. That household member was then
asked if he or she currently had accounts, such as checking or savings
accounts, a certificate of deposit, mortgage or loan at any financial
institution…
The questionnaire…was administered to a test group and a control
group. The test group was questioned regarding an advertisement
sponsored by [Defendant], which included its full name and circle 1 logo.
The control group was questioned regarding an advertisement sponsored
by the First Bank & Trust…with branches in Sioux Falls…The survey was
administered under double-blind conditions.
If a potential respondent agreed to participate in the…study he or
she was sent a sealed envelope containing either the test or control
envelope and instructed not to open the sealed envelope until recontacted
by telephone. When recontacted by telephone, respondents were asked to
open their envelope and look at the advertisement as long as they would if
reading a newspaper or magazine…
…After subtracting the survey noise, [Plaintiff’s expert] reported
what he characterized as a conservative measure of confusion of 19%.
Defendants hired [an expert] to conduct its survey…The
methodology in the [Defendant’s expert’s] survey consisted of one-room
in-person interviews at the offices of a Sioux Falls market research
company during March and April of 2006. The respondents were recruited
and screened over the telephone and paid $ 25 to drive to the market
research company offices to complete a 10-minute double blind survey…
The respondents were shown a display of names of test and control
banks, and asked whether they perceived any of the banks in the display as
being connected to or affiliated with each other. Half of the respondents
saw a display with five names in it, and half of the respondents saw a
display with an additional sixth name in it…
…
[Defendant’s expert] reviewed the responses and reported 13%
confusion…concluded that 13% confusion was not significant evidence of
likelihood of trademark confusion…also opined that given the care people
show in selecting a bank, even where there is an initial misunderstanding
of the connections between banks, people are more likely to correctly
identify a bank before creating or expanding a relation as compared to the
selection of another product or service.
…
The closer a survey method mirrors the situation in which an
ordinary consumer would encounter the trademark, the greater the weight
that should be given the survey results…The [Plaintiff’s expert’s] survey,
which employed bank advertisements, more closely resembled the market
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conditions at issue than did the methodology of displaying a series of
cards as was utilized in [Defendant’s expert’s] survey…
The [Plaintiff’s expert’s] survey…resulted in a reported measure of
confusion of 19%. [Defendant’s expert’s] survey…resulted in a reported
measure of confusion of 13%, which [Defendant’s expert] concluded was
not significant evidence of likelihood of trademark confusion. However, in
a case in which the Eighth Circuit upheld the denial of a request to modify
injunctive relief, in which the survey evidence produced a range of
confusion from 11% to 49%, the Eighth Circuit stated, “The lower figure
itself is not an insignificant percentage.”…
Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356, *50-*52,
*55-*58 (S.D. Tex. 2009)
To help establish likelihood of confusion, a plaintiff may present
survey evidence…[In this case, Plaintiff] has offered a survey… of 225
individuals in the Houston metropolitan area over 18 years of age and
either using, recently having used, or considering the use of a real estate
agent or broker to purchase or sell a home…In this survey…individuals
were shown a picture of [Defendant’s] red-over-white-over-blue yard sign
pitched in front of a house, with “Trend Setter Realty” written across the
front in large typeface…The survey asked a series of open-ended
questions regarding what company was being promoted or advertised by
the sign…Of those participating, 25.3% stated either that: (I) RE/MAX
was the company being promoted or advertised by the sign…; (ii) the
company being promoted or advertised by the sign was affiliated or
connected with RE/MAX…; or (iii) the company being promoted or
advertised by the sign would have to get permission or approval from
RE/MAX to use the sign…The survey also asked the same questions of a
control group of…individuals shown a modified Trend Setter sign with the
red and blue bars removed but otherwise unchanged…Only 2.7% of these
individuals mentioned RE/MAX as the company being promoted by the
sign…
…
First, the defendants point out that the survey only shows a 25.3%
confusion level and “also unmistakably reveals that 74.7% of the
individuals show[n] (sic) the unmodified sign did not believe the company
being promoted was RE/MAX.”…This argument is unpersuasive…courts
have upheld the finding of a likelihood of confusion based on survey
results showing that as few as 10% of the respondents were confused…
The defendants next argue that the survey fails to take into account
the reality of real estate transactions…that a person buying a “big ticket”
item such as a house would “ordinarily be expected to be a more careful
buyer than the impulse purchaser or the purchaser of a relatively
inexpensive item.”…
112
The defendants’ argument that even if consumers are initially
confused about the source of the services, they are no longer confused at
the point of sale, does not diminish the weight to be given the
survey…“Actual confusion that is later dissipated by further inspection of
the goods, services, or premises, as well as post-sale confusion, is relevant
to a determination of a likelihood of confusion. ‘Infringement can be
based upon confusion that creates initial consumer interest, even though
no actual sale is finally completed as a result of the confusion.’”…
Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665, *21-*23 (C.D.
Cal. 2009)
…The survey conducted by [Plaintiff’s] expert witness…does not
establish that consumers were likely to be confused as to the source or
affiliation of [Defendant’s] shoes…
…The survey was so leading and unrealistic that it did not measure
any likelihood of real world confusion. [Plaintiff’s expert’s] survey was
essentially an artificial matching game in which respondents were shown
two products in succession and asked whether those two products were
somehow connected…
…The “control” chosen was inadequate to screen out the high
levels of “noise” expected from a survey that is so leading…
…The leading nature and lack of realism of [Plaintiff’s expert’s]
survey was exacerbated by [the] use of [Plaintiff’s] products that were
very atypical…and did not give the respondents the kind of exposure to
[Plaintiff’s products] that they would have if exposed to [Plaintiff’s]
products in the real world.
…The instructions and screening questions emphasized to
respondents a connection between the shoes and hats and t-shirts that
would have tended to bias the respondents to assume that the products
probably were coming from the same or related companies.
…There were defects in the “universe” (consumers whose opinion
would be relevant to the survey) that was used for the survey. By requiring
that a survey participant be a potential purchaser of both [Plaintiff’s] and
[Defendant’s] products, [Plaintiff’s expert] excluded a significant portion
of the relevant universe -- people who would only be [Defendant’s]
customers. Also, [Plaintiff’s expert’s] focus on geographic regions in
which [Plaintiff’s] sales are greatest was also inappropriate.
Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS
63774, *19 (W.D. Ark. 2009)
[One of the] problem[s] with [Plaintiff’s] survey is lack of a
control…
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Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051, 1075-1076 & n.10
(E.D. Cal. 2009)
…[Plaintiff] submits a consumer survey which it commissioned
with respect to the likelihood of confusion between the MUSCLE
POWER(R) and MUSCLE MILK(R) marks. The consumer survey
comprised a mall intercept survey of 419 respondents at 12 mall research
facilities across the country. 208 respondents were assigned…to a Test
Group, and the other 211 respondents were assigned to a Control Group.
According to the consumer survey, approximately 51.9% of those
surveyed answered that the MUSCLE POWER(R) product was made by
the same company that makes MUSCLE MILK(R) or is connected or
affiliated with the same company. Within the Control Group, 26.5% of
those surveyed responded that the control product was made by the same
company that makes MUSCLE MILK(R) or is connected or affiliated with
MUSCLE MILK. Subtracting the Control Group from the Test Group
resulted in a net confusion level of 25.4% between the MUSCLE POWER
product and the MUSCLE MILK(R) product…
…this court as well as other circuit courts have accepted survey
results well below the 25% net confusion…[n.10 Notably, while defendant
submits a declaration by an expert who criticizes plaintiff’s survey,
defendant did not conduct its own survey despite adequate time to do
so…]…
Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839, 849 (N.D. Tex. 2009)
The defendants also object to the methodology of [Plaintiff’s
expert’s] survey…They contend that the control website [Plaintiff’s
expert] used was improper, that the question was leading, and that
distinction between the control website and touchofpinkcosmetics.com is
not the “key characteristic” being tested…However, technical
inadequacies in a survey, “such as the format of the question or the
manner in which it was...taken,” bear on the weight of the evidence, not its
admissibility…The court finds that the errors the defendants complain of
are the type of methodological flaws best weighed by the jury.
In sum, the court will consider some of the results of [Plaintiff’s
expert’s] survey, and will look, especially, to the interviewees’
explanations of their confusion. The court will not consider, or allow the
jury to hear, the bald assertion that forty five percent of interviewees were
confused…Only some of that confusion is legally relevant…
Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066, *78-*81
(W.D. Pa. 2008)
…Although defendants’ argument that many grounds exist on
which the Court could find [Plaintiff’s expert’s] survey fundamentally
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unsound is strong, the Court will focus on [Plaintiff’s expert’s] choice of
stimuli.
A survey is only useful as evidence of actual confusion if it
replicates the conditions in which instances of actual confusion, whether
of the “source” or “initial interest” variety, would occur…[In this product
category, potential purchasers] generally research a product before making
a purchase…In order to conduct this research, [potential purchasers]
typically look at the producer’s website, check a reseller…or search for
products through Google or other web search sites…The survey’s stimuli
did not replicate the parties marks as they would be encountered in any of
these situations in which a potential purchaser would encounter the
parties’ products or services. Instead of using screen shots of the parties’
websites, common Google searches potential purchasers would use,
or…other resellers’ product listings, [Plaintiff’s expert] presented the
parties’ marks on a plain background in large block letters [Compare to
the likelihood of confusion survey design preferred by the Trademark
Trial and Appeal Board. See, e.g., OMS Investments, Inc. v. Central
Garden & Pet Co., 2006 T.T.A.B. LEXIS 274, *41; Carl Karcher
Enterprises, Inc. v. Stars Restaurants Corp., 35 U.S.P.Q.2d 1125, 1132
n.19 (T.T.A.B. 1995); Marshall Field & Co. v. Mrs. Field’s Cookies, 25
U.S.P.Q.2d 1321, 1332 (T.T.A.B. 1992); and Miles Laboratories, Inc. v.
Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1459 (T.T.A.B.
1991).] followed by descriptions of the companies [Plaintiff’s expert]
gathered from [Defendant’s] website and a listing of sponsors (not
vendors) for a trade show.
[Plaintiff] fails to present evidence demonstrating that potential
purchasers or other third parties encounter the parties’ marks in the
manner presented in the stimuli of [Plaintiff’s expert’s] survey…
The Court finds that the stimuli [Plaintiff’s expert] employed are
completely divergent from the conditions that potential purchasers
encounter in the parties’ marketplace…Since the survey failed to replicate
market conditions, the Court affords it extremely minimal weight as
circumstantial evidence of actual confusion…
Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258, *6, *7 n.5, *8,
*18-*19 (E.D. Mo. 2008)
…The interviewee was shown either the test product…or a control
product [n.5 The control product is used in confusion surveys to make
certain that any confusion between the products at issue is not caused by
an unrelated factor. In this case, the focus was on any confusion between
“Buttwiper” and “Budweiser” and whether that confusion was caused by
something unrelated to the “Budweiser” mark or trade dress. Therefore, to
be effective the control product could not share any characteristics with
the test product that was being tested…In the instant case, the control
product had a different color scheme than the test product, the name was
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changed to something that did not have a similar sound, and the label
design was modified…]…
…
In the instant case, the survey was conducted in a technically
proper manner using relevant and non-confusing questions…The 327
participants in the survey included only those individuals who, within the
next six months, were likely to purchase a dog toy. They were able to view
“Buttwiper” and a control item for as long as they wished…Examples of
core questions are as follows: “What company or companies do you think
makes or puts out the product you just saw?”…; “Do you think that the
company that makes or puts out the product you just saw puts out any
other products or brands?”…; “What other products or brands do you
think are put out by that company?”…; “Whether or not you know the
name of the company that makes or puts out the product you just saw, do
you think that company puts out any other products or brands?”…; “Do
you think that the company that makes or puts out the product that you just
saw does or does not have a business connection or business affiliation
with any other company or brand?”…; “Do you think that the product that
you just saw is or is not made or put out with the approval or sponsorship
of any other company or brand?”…
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376,
*20-*26 (D. Minn. 2008)
In addition, [Plaintiff] advances the related argument that should
laches otherwise be applicable, laches should not bar injunctive relief
because the public maintains an interest in being free from confusion in
instances of trademark infringement…Courts considering this factor
typically will decline to apply laches to bar injunctive relief only when
some elevated likelihood of confusion is demonstrated…
In this case, the evidence of likelihood of confusion consists of the
similarity between the product’s names, the fact that both Cristal and
Cristalino are sparkling wines that are sold nationwide…In addition,
[Plaintiff] submitted the results of a survey indicating some confusion
among potential consumers…The results indicated that 6.9% of
respondents believed the bottle of Cristalino was the same brand as the
bottle of Cristal, 9.2% believed Cristal and Cristalino were produced by
the same company, 4.6% believed the Cristal and Cristalino were
produced by affiliated companies, and 2.3% believed that permission from
the maker of Cristal was required in order to produce Cristalino.
On this record, the Court concludes that confusion between
Cristalino and Cristal is not inevitable and the likelihood of confusion is
not so high as to prevent application of laches to [Plaintiff’s] request for
injunctive relief and that, on that issue, no genuine issue of material fact
remains…While [Plaintiff’s] survey is probative of a possibility of
confusion, the Court concludes that, in light of the other available
116
evidence, a higher confusion rate on this survey would be required to
establish an issue of material fact as to the existence of “inevitable
confusion.”
Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS
36800, *26-*28, (E.D. Mich. 2008)
Plaintiff's expert…executed four surveys, and analyzed 22 reported
incidents of actual confusion…
In general, the appropriate resolution for a flawed survey is to
address its weight and credibility, and not to exclude it…
The most significant error was the choice of control variable.
Described by [Plaintiff’s expert] as a “naturally occur[r]ing control
variable” the term “CHASE” bears very little resemblance to the marks at
issue, in contrast to the guidance on which [Plaintiff’s expert] said he
relied…“In designing a control group study, the expert should select a
stimulus for the control group that shares as many characteristics with the
[test] group as possible, with the key exception of the characteristic whose
influence is being assessed.”…
[Plaintiff’s expert] admitted on the stand at trial that a bad control
selection could invalidate a survey...
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16,
*41-*46 (T.T.A.B. 2008)
…the likelihood of confusion survey conducted on behalf of
petitioner…was based on the mark in petitioner’s registration.
[Petitioner’s expert] conducted a mall intercept survey in 15 cities among
396 people aged 18 or older who had purchased fishing, hunting, camping,
or other outdoor gear in the past 12 months…Respondents were first
shown the “Bass Pro Shops Sportsman’s Warehouse” logo. Then,
respondents were exposed to an array of six logos that they would be
likely to encounter in shopping for outdoor gear…Among these six logos
was the logo put out by Sportsman’s Warehouse, Inc. To assess potential
confusion between the petitioner’s and the registrant’s marks, all survey
respondents were asked whether any of the six logos in front of them
either (1) is put out, (2) needed permission or approval, or (3) is affiliated
with the company that puts out the logo that they had seen earlier (“Bass
Pro Shops Sportsman’s Warehouse” logo). Adjusting for the control cell,
over 35% of the outdoor gear purchasers felt that the Sportsman’s
Warehouse, Inc.’s logo was put out by the same company that put out the
“Bass Pro Shops Sportsman’s Warehouse” logo. In addition, adjusting for
the control cell, 30% of outdoor gear purchasers either felt that the
Sportsman’s Warehouse, Inc.’s logo (1) is put out, (2) needed permission
or approval, or (3) is affiliated with the same company that puts out the
“Bass Pro Shops Sportsman’s Warehouse” logo. In addition, respondents
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were asked their reasons for selecting the Sportsman’s Warehouse, Inc.
logo from the array. [An] analysis revealed that 22% of the respondents
who had indicated that the Sportsman’s Warehouse, Inc. logo and the
“Bass Pro Shops [Sportsman’s] Warehouse” logo had a common source or
were somehow connected mentioned that similarity of the names [was] the
reason…
It was not surprising that a significant segment of the survey
respondents believed that there was some affiliation between petitioner
and respondent. Because the only similarity between any of the 7 marks in
the survey was that petitioner’s mark and respondent’s mark both feature
the term “Sportsman’s Warehouse,” this would suggest to some survey
respondents that they should find an affiliation between those two marks.
For this reason, we find the survey results to be of little probative value.
*
To the extent that petitioner has established actual confusion, it is
confusion resulting from the common use of this merely descriptive term
for which petitioner has not acquired distinctiveness. Thus, petitioner
assumed this risk in using a descriptive term as part of its mark.
Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672, *9-*10, *44 & n.20
(T.T.A.B. 2008)
We consider all of this evidence, which go to the factors of the
fame of opposer’s mark, the conditions of purchase, and whether
consumers are confused, to be properly part of opposer’s case-in-chief.
The fact that opposer is attempting to make of record a survey as part of
rebuttal testimony highlights how unfair it would be to treat this evidence
as proper rebuttal. It is obvious from the trademark cases involving
surveys that no survey is perfect, and that problems with surveys can
range from minor to so major that they make the survey of no probative
value whatsoever. Allowing a plaintiff to wait until the rebuttal period to
submit survey results would deprive the defendant of an opportunity to
challenge the methodology or results of the survey by the testimony of its
own witnesses, or to submit a survey countering the evidence of the
plaintiff’s survey. Opposer itself recognizes that it is “well established that
challenges to survey methodology go to the weight given the survey, not
its admissibility,”…but if opposer were permitted to submit a survey as
part of its rebuttal testimony, applicant would not have the opportunity to
challenge the survey methodology with the testimony of its own
witnesses. Applicant’s objections to the rebuttal testimony are well taken,
and none of the rebuttal testimony has been considered…
…
Finally, opposer has asserted that there is evidence of actual
confusion. However, there is no evidence of record that shows such
confusion. [n.20 As indicated supra, the survey which opposer relies on to
show purported actual confusion has not been considered.]…
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Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS
678, *1, *10-*13, *15 (T.T.A.B. 2008)
…(“petitioner”) seeks to cancel the registration of…(“respondent”)
for the mark MEYER VINEYARD for “wine.”…
…
…Respondent…relies heavily on a shopping mall intercept survey
and expert opinion thereon to argue that there is no likelihood of confusion
between the parties’ marks.
…
…we consider the survey, which allegedly shows that there is no
likelihood of confusion between the two marks, to be so seriously flawed
that it fails to raise a genuine issue with respect to the likelihood of
confusion between the parties’ marks.
…
…First, there is a problem with the stimulus, in that the survey
respondents were shown respondent's entire wine bottle, including the full
label, rather than just the mark. The Board has held that surveys, such as
respondent’s, which embellish the stimulus with features that are not
directly involved in the determination of likelihood of confusion, have
limited probative value. See, e.g., Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1132 n.19 (TTAB 1995); Marshall
Field & Co. v. Mrs. Field’s Cookies, 25 USPQ2d 1321, 1334 (TTAB
1992); and Miles Laboratories, Inc. v. Naturally Vitamin Supplements,
Inc., 1 USPQ2d 1445, 1459 (TTAB 1986)(“a labeled ... multivitamin
tablets jar would have introduced irrelevant matter, thereby destroying any
probative value of the survey for our purposes”).
The interviewees were instructed to look at the “bottle” and were
then shown a bottle of respondent’s wine bearing the information “Meyer
Vineyard 2003 Napa Valley Cabernet Sauvignon” on the label…As a
result, the majority of the survey respondents focused on features of the
bottle apart from the mark, i.e. the trade dress comprising the color and
shape of the bottle and label, and other data on the bottle such as the
geographic origin of the product (i.e. Napa Valley)…
…
…the survey did not include probing questions such as, “What
makes you think so?”…
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052, *26-*28,
(S.D.N.Y. 2008)
Although “actual confusion need not be shown to prevail under the
Lanham Act,”…“there can be no more positive or substantial proof of the
likelihood of confusion than proof of actual confusion”…Despite the
obvious importance of this Polaroid factor…[Plaintiff] has done nothing to
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fill this evidentiary gap. Defendants, in contrast, commissioned a survey
of 200 potential purchasers of their…products, which “documented a total
absence of consumer confusion.”…Although [Plaintiff] argues that the
survey contains several methodological flaws, its objections are
convincingly refuted in a reply affidavit filed by defendants’ expert…In
particular, [Defendants’ expert] explains that his survey utilized the
“Eveready” procedure…which has been approved by courts and described
by a leading commentator as “a now-standard survey format…The lack of
any consumer confusion reported in [Defendants’] survey, coupled with
[Plaintiff’s] failure to perform its own consumer survey…or adduce any
other evidence of actual confusion, clearly tip this Polaroid factor in
defendants’ favor.
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1226 - 1227
(D. Or. 2007)
[Defendant] seeks an Order striking both…Rule 26 expert report[s]
of [Plaintiff’s expert]. [Defendant] also seeks an order barring [Plaintiff’s
expert] from testifying at trial. [Defendant] argues [Plaintiff’s expert’s]
likelihood of confusion surveys, which focused on [Plaintiff’s] Superstar
Trade Dress infringement claims, cannot be used to support [Plaintiff’s]
Three-Stripe trademark infringement claims…[and] that [Plaintiff’s
expert] improperly relied on likelihood of confusion surveys he conducted
for [Plaintiff] in other cases involving potentially infringing third-party
uses of two and four-stripe designs. In essence, [Defendant] argues that
because [Plaintiff’s expert] did not conduct a likelihood of confusion
survey for each of the accused shoe lots at issue, his expert reports must be
stricken with respect to all of the unreviewed shoes…
Where actually surveyed products and subsequently accused
products share common and prominent features, a trademark infringement
plaintiff need not create new likelihood of confusion surveys for each
newly accused product…
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635, *26-*27 (C.D. Cal.
2007)
A significant number of respondents explained their confusion
with answers, such as “design” or “style,” that could refer to the
checkerboard design. However, the study’s poor choice of control
precludes any inference that they were referring to the checkerboard
design. Instead of using a control shoe that resembled the Smooth Rider in
every respect except its use of a checkerboard design, the study employed
a control shoe that differs from the Smooth Rider in a number of
significant respects…The Smooth Rider is a slip-on shoe with a flat heel,
whose profile significantly resembles Vans’ “classic slip-on shoe.”…The
Urbantrack Tao is a lace-up shoe resembling a running sneaker, with a
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curved heel and a grooved tread…There are a number of elements of
“style” or “design” shared between the Smooth Rider and the “classic slipon” that are not incorporated in the control, and that could explain
respondents’ confusion…The control was thus useless in eliminating
explanations for respondents’ confusion other than the checkerboard
design.
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320,
*9, *17-*18 n.8, *24-*25 (S.D.N.Y. 2007)
Here, because [Plaintiff] is claiming that “reverse” confusion
exists, the relevant survey for purposes of demonstrating actual consumer
confusion is that of [Plaintiff’s] universe of prospective purchasers…
*
In addition to failing to approximate actual marketplace conditions,
the survey’s back-to-back design was impermissibly leading. After
viewing the seriatim display of non-competing products that few if any
respondents actually would have encountered in close physical or
temporal proximity in real life, the respondents were given multiple choice
questions in which they were asked whether they believed a connection, as
to source, business relationship, or sponsorship, existed between the
companies whose marks the respondents had just seen. Rather than
measure any actual confusion, however, these questions were far more
likely to generate “demand effects” by suggesting the existence of a
connection between the products that the respondents would not have
made on their own…(“Demand effect results when the interviewer’s
question or other elements of the survey design influence participants’
responses by suggesting what the “correct” answers might be or by
implying associations that might not otherwise occur to participants.”) In
other words, the mere putting of a question creates the impression of a
relationship.
*
n. 8 The percentage of confusion occurring among participants in
the control group is subtracted from the percentage of confused
participants in the test group, pursuant to standard protocol, as “noise” that
should be discarded. “In an experiment or statistical study, the ‘noise’ is
the variation in the data being collected that is not believed to be caused
by the variables being tested.”…
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755, 758, 762 (7th Cir. 2007)
…A consumer survey conducted by [Plaintiff’s] expert suggests
that twenty-seven percent of motorcycle riders who view [Defendant’s]
promotional materials believe that [Plaintiff] promotes or approves of
[Defendant’s] cruises. The same survey suggests that much of this
121
confusion stems from [Defendant’s] use of the word “hog” and the word’s
association with the Harley Owners Group.
*
Having determined that [Plantiff’s] “HOG” and “H.O.G.” marks
are protectable, we need not discuss at length the issue of likelihood of
confusion, for [Plaintiff] has offered evidence of actual confusion in the
form of a survey and questions asked by [Defendant’s] customers…And
evidence of actual confusion (so long as it is not de minimis) ordinarily is
sufficient to create a genuine issue of material fact on the issue of
likelihood of confusion…
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220, 227-228 (E.D.N.Y. 2007)
…Plaintiff has neither conducted nor submitted the results of any
consumer survey. While not bearing any burden on this issue, Defendant
commissioned and submits the results of a consumer survey…
*
Plaintiff has not conducted a consumer survey. Instead, Plaintiff
submits an expert report explaining to the court the problems with the
Defendant’s survey and asking that the court reject its findings…
In consideration of the evidence submitted, the court concludes
that there is little evidence of actual confusion. The court reaches this
conclusion even if it were to accept each and every one of Plaintiff’s
quarrels with the reliability of [Defendant’s] survey…the court notes that
Defendant was not required to submit a consumer survey. While Plaintiff
commissioned an expert to criticize that survey, it did not conduct a
survey of its own. This weighs against Plaintiff’s argument of consumer
confusion…
Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS
29377, 45 n.9, *47-*50 (E.D. Pa. 2007)
n9 Both experts testified at length about whether the survey was
designed to measure reverse or forward confusion…Reverse confusion
occurs when “the junior user saturates the market with a similar trademark
and overwhelms the senior user.”…The only difference between testing
for forward and reverse confusion is who should be interviewed: “In a
traditional case claiming ‘forward’ confusion, not ‘reverse’ confusion, the
proper universe to survey is the potential buyers of the junior user’s goods
or services. But in a ‘reverse’ confusion case, it is appropriate to survey
the senior user’s customer base.” McCarthy § 32:159…The customer base
for both products is the same, making the survey probative of both
forward and reverse confusion.
…
…In the absence of a “why” question (i.e. why did you select that
response), however, the Court finds that neither expert can testify
122
conclusively as to the reasons for the difference in that response
rate…Defendants criticized the Plaintiffs’ expert for not asking a “why”
question in his survey, but their own survey suffers from the same
limitation…
At the same time, the Court also finds that the use of the
“American People” control suffers from its own limitations and therefore
fails to conclusively demonstrate the absence of a likelihood of confusion
between the [Defendants’] and [Plaintiffs’] marks. Defendants’ screening
survey for potential survey respondents specifically listed the store
“American Eagle” as one of the stores where respondents may have
shopped in the last month. As [Plaintiffs’ expert] testified, American Eagle
is a popular store that caters to young men and women, and six of the nine
malls where [Defendants’ expert] conducted his study had American
Eagle stores. Hearing the phrase “American Eagle” and then filling out a
survey with a response “American People” is suggestive and could skew
the results in favor of “American People.” [Plaintiffs’ expert’s] rebuttal
testimony on this point was persuasive, particularly his analysis that
respondents who answered “yes” to question 4S on the screening survey,
asking whether the respondent had shopped at stores such as Abercrombie
& Fitch or American Eagle in the last month, or answered “American
Eagle” when asked where they were most likely to purchase clothes, were
three and four times more likely, respectively, to select American People
as a response than those who did not answer those questions
positively…Defendants’ expert himself conceded during his rebuttal
testimony that those respondents who were likely to try to “figure out” the
right answer might respond to the “American Eagle” cues in the screening
survey.
Leelanau Wine Cellars, Ltd .v. Black & Red, Inc., 452 F. Supp. 2d 772, 779-780, 783-784
(W.D. Mich. 2006)
…Initially, participants were screened to ensure that they met the
following criteria: (1) 21 years of age or older; (2) must have purchased a
regular size bottle (750 ml) of wine that costs between $5 and $14 within
the last three months or must be likely to make such a purchase within the
next three months; (3) no household member working for a market
research firm or an advertising firm, a manufacturer, distributor, or retailer
of wine; a bar or restaurant that serves wine; or a store in the mall; (4)
must not have participated in any market research survey in the past three
months; and (5) must be wearing his/her eyeglasses or contacts if normally
worn while shopping for wine…
Participants were divided into two groups, a “test cell” and a
“control cell.”…The test cell consisted of 203 participants and the control
cell consisted of 101 participants. Both groups were first shown an
advertisement for [Plaintiff’s] Chardonnay wines…After the participants
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finished looking at the advertisement, the interviewer put it away out of
sight for the remainder of the interview…
Participants were then shown a display of five bottles of Chardonnay
wines, all from different Michigan wineries. The following wines were
present in both the test cell display and the control cell display: Turner
Road, St. Julian, Wilhurst, and Zafarana. The fifth bottle in the test cell
was Chateau de Leelanau [Defendants’ wine], while the fifth bottle in the
control cell was Bel Lago, another winery, like [Plaintiff] and
Defendant…
…
[Plaintiff’s expert’s] survey is subject to the same criticisms as the
surveys in Weight Watchers, Scheiffelin, and Franklin Resources. That is,
the universe is overbroad because a purchaser of a $5 to $14 bottle of wine
would, in most instances, be a potential consumer of Defendants’ wine
only if the purchaser planned to buy wine from Defendants’ tasting rooms
or website or, at the very least, through some winery’s tasting room or
website…
…
The survey in this case was conducted in a manner that was
substantially at odds with the circumstances under which most consumers
encounter Defendants’ wine. As noted above, Defendants’ wine is sold
through Defendants’ tasting rooms and website, which offer only one
brand of wine -- Chateau de Leelanau. That is, actual purchasers would
not be presented with the situation where Defendants’ wine is displayed
side-by-side with other wines, and they would be purchasing from a
location identified expressly and exclusively with Chateau de Leelanau…
Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250, 256-257
(S.D.N.Y. 2006)
…plaintiffs presented…consumer surveys that provide strong
circumstantial evidence of…confusion…For example, [Plaintiff’s] survey,
which used actual specimens of apparel marketed by defendants or their
licensees, showed net confusion levels ranging from 23% to 59%…
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266, 279-280
(S.D.N.Y. 2006)
[Plaintiff offered] evidence of actual confusion with a consumer
survey…A control group was shown a television commercial from
Lifetime Fitness, while a test group was shown a 24 Hour Fitness
television commercial…Each respondent was then shown three health
club print advertisements, one at a time, in rotated order, and asked
whether they thought the health club in the print ad was the same as the
one advertised in the television commercial…The print ads were from
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24/7 Fitness, Omni Health and Fitness, and New York Health and
Racquet Club…
…
[Defendant] obtained [an] expert…to criticize [Plaintiff’s expert]
Survey…[Defendant’s expert] criticized [Plaintiff’s expert] for choosing
Lifetime Fitness as the control group…He said that the control should
have been another fitness facility that advertised that it was open twentyfour hours a day…[Plaintiff] argues the control was proper because it is a
traditional survey method to use a control that shares characteristics with
the stimuli to be compared, except for the characteristic at issue, in this
case, the words “24 hour.”…However, the Court finds [Defendant’s
expert’s] criticism compelling, especially in light of the fact that a number
of 24 Hour’s enforcement actions have ended in agreements as to
acceptable uses of the following words, some as trademarks and others as
descriptors: “open 24 hours,” “24 hour,” “24 hour a day,” “Fit 24 Club,”
“Workout 24/7,” “24/7 Tanning and Fitness,” and “The 24 Hour
Gym.”…As conducted, the survey does not measure the amount of
confusion between “24 Hour Fitness” and names such as these, or a name
such as “All Day Gym,” for that matter, compared to the amount of
confusion claimed with “24/7 Fitness.”
OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274, *34*35, *40-*41 (T.T.A.B. 2006)
Applicant commissioned a survey to “determine whether or not
there is a likelihood of confusion of source or affiliation among
consumers…concerning [Opposer’s] marks WEED-B-GON [and] BUGB-GON, with [Applicant’s] mark EASYGONE.”…The survey concluded
that there was no likelihood of confusion between EASYGONE and
WEED-B-GON, and EASYGONE and BUG-B-GON.
…
…[Applicant’s expert] conducted two product line-up surveys…
…
In the first product line-up - identified as the weed control survey one hundred survey respondents were shown two displays of lawn weed
killers. The respondents first viewed a container of opposer’s WEED-BGON. After they finished viewing the container, it was covered. Next, the
survey respondents were shown a display of three lawn weed killer
containers; EASYGONE, and two control brands, i.e., ADVANCED
Lawn All-In-One Weed Killer for Lawns, and WEED STOP Weed Killer
for Lawns (“Weed Stop”)…According to applicant, ADVANCED and
WEED STOP were selected because “they are major brands that have
products with the same functions as the WEED-B-GON lawn weed killer
product and the EASYGONE lawn weed killer product.”…
…
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We find that the survey is flawed in that the stimulus used is one
not suited for Board proceedings where the issue in question is the
registrability of the mark depicted in the drawing. Specifically, applicant
showed respondents containers containing a variety of wording, shapes,
colors and trade dress. Applicant’s marks and Opposer’s marks were not
displayed prominently, other marks were on the containers, and the marks
at issue here were subordinated to other house marks and source
indicators, which undoubtedly influenced the responses. Further, Opposer
has noted that the “EASYGONE container in each instance is shorter than
all three other containers; it is a bright white color as compared to the dark
colors of the other three containers; and the EASYGONE containers are
formed to make a closed handle, where none of the other three containers
are.”…Applicant’s mark is in standard character form, thus the stimulus
should also have been in standard character form. See Miles Laboratories
Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986)
(“In the case before us, we have already held that the issue we have to
decide concerns only the likelihood of confusion of the terms VIT-A-DAY
and SUPER VIT-A-DAY with ONE A DAY, without regard to any
special form of lettering or design features which may, in fact, be currently
associated with either of those word marks in the marketplace.
Accordingly, using the card on which the mark is displayed in block
letters was the only appropriate stimulus available to the survey
designer.”). See also Carl Karcher Enterprises, Inc. v. Stars Restaurants
Corp., 35 USPQ2d 1125 (TTAB 1995). Applicant’s methodology was
better suited for a survey for trademark infringement litigation…
Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787, *73-*74, *78,
*80-*82 (S.D.N.Y. 2006)
…[Plaintiff] principally seeks to show actual confusion through a
survey…
[Plaintiff] asked [its expert] to design and conduct a consumer
study to measure the extent to which consumers, when exposed to either
the name Juicy or Juicy Wear in the context of shopping for makeup, may
believe that the makeup products come from or are associated with
[Plaintiff]. To do so, [Plaintiff’s expert] created three 8 1/2 by 11 inch
laminated cards bearing the words Juicy, Juicy Wear, or Glossy
Wear…each of these three cards was separately shown in a shopping mall
to over 200 teenage and adult females between the ages of sixteen and
thirty-nine…who…had purchased both a cosmetics item that costs over
$15 and an item of clothing that costs $50 or more, and who had shopped
at a major department store…
…
The [Plaintiff’s] survey has no value on the issue of actual
confusion because of fundamental flaws in its design. Most significantly,
the survey did not replicate the marketplace conditions in which
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consumers encounter [Defendant’s] products. [Defendant’s] cosmetics are
sold at [Defendant’s] counters or department store sections, or over
websites, with prominent signage identifying [Defendant] as the seller,
and the products as [Defendant’s] products. [Defendant’s] products are
also packaged in both boxes and a product container that identify them as
[Defendant’s] products…
…
The bias created by this faulty design was exacerbated by the
choice of the universe of respondents. The pool of respondents was
skewed towards a younger population to obtain a higher proportion of
respondents who are familiar with [Plaintiff]…
Also, by asking an introductory question about clothing…there
was a not so subtle suggestion that the survey was connected to clothing in
some way. Since [Plaintiff’s expert] included a screening question at the
end of the survey to learn whether anyone in the respondent’s household
worked for a manufacturer, distributor or retailer of clothing, there was no
need to include the introductory question except to plant a suggestion
about clothing.
…
Although [Plaintiff’s expert] contends that his survey was a test of
post-sale confusion…it in fact begins with the statement “Here is
something that you might see if you were shopping for makeup and
cosmetics in a department store.”…The respondents were asked, therefore,
to consider this a point-of-sale survey, and yet the survey design did
nothing to replicate the point-of-sale experience.
The survey says as little about post-sale confusion…
…This survey is so fundamentally flawed, that it would have been
excluded from evidence at a jury trial.
Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54, *36, *37 &
n.31, *38 & n.32, n.33, *39 (T.T.A.B. 2006)
…[Opposer’s expert] designed a mall intercept survey involving
interviews with two hundred respondents at shopping malls in eight
geographically dispersed metropolitan areas.
[Applicant] challenges [Opposer’s] survey results by criticizing the
survey’s format…we find that the survey questions are consistent with
those accepted in our established precedent on trademark surveys.
This Board has had occasion to review the so-called EverReady…survey format. See Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1132 (TTAB 1995); and Miles
Laboratories, Inc. v. Naturally Vitamin Supplements, Inc. 1 USPQ2d 1445
(TTAB 1986). We agree with opposers that Questions 1a and 1b of
[Opposer’s] survey…parallel the precise formats approved in Ever-Ready
and Carl Karcher.
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n31 (Question 1a): “This is the name of a retail establishment that serves
coffee, tea, and other beverages. Just from knowing this, have you formed
an opinion about the name of a company that owns this retail
establishment?”
[Respondents answering Question 1a “yes” were then asked:]
(Question 1b): “What is the name of the company?”
Next, we note that consistent with Ever-Ready, Starbucks’
Question 2a…and Question 3a…were designed to elicit responses
concerning sponsorship, affiliation, permission and approval. While these
types of questions were not expressly addressed in Ever-Ready, a leading
commentator…suggests, and court opinions…have found, that affiliation
and connection queries are appropriate in light of the specific language of
the Lanham Act.
n32 (Question 2a): “Do you think the company that owns this retail
establishment is connected or affiliated with any other company?”
[Respondents answering Question 2a “yes” were then asked:]
(Question 2b): “What other company?”
n33 (Question 3a): “Do you think the company that owns this retail
establishment has authorization, permission or approval from another
company to use this name?”
[Respondents answering Question 3a “yes” were then asked:
(Question 3b): “From what other company?”
Additionally, all these survey questions contain the follow-up
question: “What makes you think so?” The answers given to these followup questions persuade us that the respondents were not merely guessing.
…given the way in which this survey format carefully follows the
Ever-Ready likelihood of confusion survey format, we find that it is
reliable and therefore of probative value on the issue of likelihood of
confusion herein…
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523, *4, *6 (E.D. Mich. 2006)
…[Plaintiff’s expert] conducted a survey…“to determine whether
[Defendant’s] use of POWERHOUSE on its exercise equipment has confused
consumers to erroneously think that the exercise equipment is affiliated,
connected, or otherwise associated with the Plaintiffs.”…interview[ing] sites
[were selected where] there were three or more [of Defendant’s] fitness centers
within a twelve mile radius…surveyors interviewed…individuals…age eighteen
years or older, who had worked out in a fitness center, club, or gym in the
preceding five years…Those individuals were brought into a room in which five
branded pieces of workout equipment were on display…After the individuals
examined the equipment, they were asked “Which, if any, equipment brand that
you see in this room do you believe is sponsored by, licensed by or associated
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with a particular fitness center, fitness club or fitness center chain?”…If the
participant identified a particular piece of equipment, he or she was then asked:
“What is the fitness center, fitness club or fitness chain?”…
…
First, “[i]dentification of the proper universe is recognized as a critical
element in the development of a survey.”…In a case where the plaintiff alleges
that the defendant’s use of the plaintiff’s marks causes customers to mistakenly
think that the defendant’s goods or services are from the same source as or are
connected with the plaintiff’s goods or services (referred to as “forward
confusion”), “the proper universe to survey is the potential buyers of the junior
user’s [i.e. defendant’s] goods or services.”…
[Plaintiff’s] survey did not focus on buyers of fitness equipment; rather the
population…surveyed was limited to individuals who worked out at fitness
centers, clubs, or gyms in the preceding five years. These are individuals who are
customers or potential customers of [Plaintiff’s] products and/or services…
…
“A survey also is not reliable if it suggests to the respondents an answer
that would not otherwise have occurred to them.”…“It is improper to suggest a
business relationship where the respondent may previously have had no thought
of any connection.”…In this case, [Plaintiff’s survey] asked respondents:
“Which, if any, equipment brand that you see in this room do you believe is
sponsored by, licensed by or associated with a particular fitness center, fitness
club or fitness center chain?” This question clearly led respondents to find, not
only a connection or association between the fitness equipment shown and some
other product or service, but specifically a fitness center, club, or chain…
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578, *14-*15
(S.D.N.Y. 2005)
…the only evidentiary proffer as to actual confusion of [Defendant’s]
product for one offered or sponsored by [Plaintiff] is a minuscule number of
responses to one telephone survey item in which respondents were queried as to
whether they could “name any company or store that [they] think might offer a
product called ‘Charbucks.’”…In response to that question, only 3.1% of the 600
respondents named [Plaintiff] as a possible source of a “Charbucks” product
…Particularly in light of the fact that this survey item was administered by
telephone and did not present the term “Charbucks” in the linguistic or visual
context in which Defendant uses it, this evidence is insufficient to make the actual
confusion factor weigh in Plaintiff's favor to any significant degree.
Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524, *9-*11 (T.T.A.B. 2005)
In the present case, the Board finds that defendant has established the
absence of any genuine issue of material fact and that it is entitled to judgment as
a matter of law…
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…we find that plaintiff’s survey does not raise a genuine issue of material
fact with respect to the similarities of the parties’ respective marks…
…
…We observe, too, that the survey, at a minimum, is not based on
established or recognized survey techniques; was prepared and administered by a
biased party; and was not analyzed in any statistically meaningful way…
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 32660. *24-*26 (D. Or. 2005)
…The evidence presented by Starbucks is sufficient to meet its burden or
proving that [Defendant’s] use of the “Sambuck’s” mark infringes [Plaintiff’s]
registered trademarks.
…[Defendant’s] use of the “Sambuck’s” mark need not be likely to
confuse a majority of consumers. Rather, the defendant’s mark need only create a
likelihood that an “appreciable number” of ordinary consumers would be
confused…The percentage of consumers likely to be confused can be in the range
of 10 to 15 percent or even lower.
…The likelihood of confusion that gives rise to trademark infringement
liability need not involve the source or origin of the goods at issue. Rather, the
“appropriate inquiry is whether the average purchaser would be likely to believe
that the infringer’s product has some connection with the trademark owner.”…
…A likelihood of confusion need not exist at the time a consumer makes a
purchase decision. Infringement occurs even if the likelihood of confusion
terminates before a sale is made by the defendant. “Initial interest” confusion
occurs when the defendant uses the mark in a manner that is likely “to capture
initial consumer attention, even though no actual sale is finally completed as a
result of the confusion.”…
…[Defendant’s] use of the “Sambuck’s” mark creates initial interest
confusion. Thus, [Defendant] has committed trademark infringement even if, as
she claims, consumers who make purchases at her store have “no reason to
believe that [it is] related to, or in any way sponsored by,” [Plaintiff] when they
finally make a purchase.
M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563, *18 & n.5, *20-*21 (D.
N.J. 2005)
Plaintiff…submitted a survey to show actual confusion…The survey was
of 302 people who were employed by personal care physicians, their employment
involved submission of medical claims to insurance companies, and the
submission of those claims was done or prospectively would be done over the
internet. The test group was composed of 202 people, and the remaining 100
people composed the control group. [n5 The purpose of the control group is to
account for “noise,” that is, any external factors that may improperly influence
participants’ opinions. In order to account for noise, the survey questioned
participants in the control group about the association between plaintiff's mark
and a “fictitious mark, ‘ProxyMed.’”…Any confusion that the control group had
130
would be considered noise because the comparison mark was presumably
fictitious, and thus must be attributable to other factors. However, it came to light
during the hearing on plaintiff’s motion that ProxyMed is not a fictitious name; it
is an actual company that provides electronic claims to healthcare providers…
This obviously casts tremendous doubt on the survey’s ability to account for
noise.]
…
After tallying the responses and contrasting the test group with the control
group,…[Plaintiff’s expert] estimates that approximately 25.7% of the
participants expressed that they “thought that the two names…were affiliated or
connected in some way because of their same or similar name.”…However, this
survey is both procedurally and substantively flawed. First, plaintiff introduced
the survey in its reply brief, not its moving brief. This maneuver deprived the
defendants of a meaningful opportunity to respond within the normal course. As
such, the Court will disregard this “newly minted” evidence…
Second, even if the Court were to consider the survey, it appears to suffer
several flaws that render it unreliable, two of which the Court will address at this
time. “Survey evidence can sometimes demonstrate evidence of actual confusion
but only to the extent ‘that the survey mirrors the real world setting which can
create an instance of actual confusion.’” “…Here, plaintiff’s survey does not
mirror the “real world setting.” The marks in question identify the sources of webbased programs. And yet, this survey was done over the telephone, participants
were not shown the marks, nor were they directed to websites that contained the
marks. Thus, any alleged association the participants found between the marks
was based on sound alone, and does not address how the marks might be viewed
in a commercial setting. By removing the marks from their proper commercial
setting, plaintiff unjustifiably skewed the results.
Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917, 27-29 (C.D. Cal.
2005)
In considering what weight to give a survey, the court may consider a
variety of factors, including survey design, nature of the questions asked, and the
experience and reputation of the surveyor…Qualified respondents viewed the
displays side-by-side…They then answered four questions. Two focused on the
likelihood of confusion between the products when they were displayed side-byside. One focused on the likelihood of confusion if the products were sold in the
same store, but were not placed side-by-side, while the last focused on the
likelihood of confusion if the products were not sold in the same store…Having
reviewed the survey, the court concludes that the methodology employed by
[Plaintiff’s expert] raises serious questions regarding the reliability of her
results…There is no evidence in the record, however, that [Plaintiff’s] and
[Defendant’s] products are sold side-by-side other than in a single K-Mart
display…As a consequence, [Plaintiff’s] survey did not replicated marketplace
conditions…
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Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541, #10, *14-*18,
*20-*21 (E.D.N.Y. 2005)
Plaintiff submits a report by its expert…wherein he discusses a survey he
conducted “to determine whether there is a likelihood of public confusion
between the trademarks and trade names ‘Vista’ and ‘Vistar.’”…
…
…While errors in survey methodology usually go to weight of the
evidence, a survey should be excluded under Federal Rule of Evidence
403 when its probative value is substantially outweighed by the risk of
prejudice or confusion…
…there are several defects in the survey which significantly reduce
its probative value. As an initial matter, the brochure shown to the
participants did not replicate “actual market conditions.”…The brochure
correctly showed Plaintiff’s logo only twice…Inside the brochure,
however, were 45 mentions of the name [not in the manner it is used in the
marketplace]…After removing the brochure and asking general questions,
the participants were provided with a list of ten names…Defendant’s mark
was not shown as it is used in commerce…
Thus, by focusing on the words…the survey failed to replicate actual
marketing conditions and improperly skewed results in favor of responses
indicating confusion…
This flaw is further exacerbated by the survey’s failure to use a
control product, i.e., “‘a non-infringing product which is similar to the
products at issue.’”…
…the survey utilized an improper universe…
Here, the Complaint alleges that Defendant’s logo causes
“confusion among and mislead[s] the users of plaintiff’s food distribution
services into believing that defendant’s products were, in fact, the
plaintiff’s or were in some way connected therewith.”…Thus, Plaintiff is
claiming the “traditional” type of confusion. The right universe, therefore,
is the junior user’s (Defendant’s) potential customers. The [Expert’s]
Report…indicates that the universe was defined as 75 persons “who fall
within target market characteristics of [Plaintiff]”…Thus, the survey’s
reliance on Plaintiff’s market as opposed to that of Defendant’s further
weakens its results.
Even had the universe been properly defined, 75 [respondents in
one location] is too small a sample to be representative of the universe of
potential consumers of Defendant’s products, which are distributed
nationwide…
Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452, *10-*11
(D. P.R. 2005)
132
…while plaintiff…presented no evidence of actual confusion,
neither was the Court convinced by the results of [Defendant’s] customer
survey offered to prove that there is no confusion…In the main, the Court
finds the [Defendant’s] survey flawed because it is essentially challenging
customers to try and spot the differences between the two boxes-it was not
designed to identify whether a potential customer was in fact confused…
Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642, *20-*21, *22 &
n.15, *23-*24 (E.D. Va. 2005)
The Court found that defendant’s cross examination…revealed a number
of weaknesses in GEICO’s survey evidence. First, the control did not successfully
demonstrate the source of the test group's confusion. As the survey expert
admitted, an effective control should have removed from the page viewed by the
test group the allegedly infringing elements for which GEICO wanted to measure
confusion…This would have allowed the evaluator to subtract any degree of
confusion expressed by the control group from that expressed by the test group,
with the resulting difference representing the confusion attributable to the
eliminated elements--similar to the manner in which medical researchers subtract
out the “placebo effect” of a drug or procedure under examination. However, the
survey’s control…did not function as an accurate measure of the confusion
caused by non-infringing elements…the control retained the use of “GEICO” as a
keyword, which itself was alleged to be a source of confusion. Further, instead of
removing only the references to GEICO in the Sponsored Links, which would
have measured whether the use of the trademarked keyword to place relevant
Sponsored Links or the appearance of the mark in the ads was responsible for
respondents’ confusion, the survey removed all references to car insurance and
replaced them with clearly unrelated NIKE ads. Thus, the control did not reveal
which aspects of the insurance-related Sponsored Links caused respondents’
confusion--the use of GEICO’s mark in the ads or the ads’ mere reference to
insurance. [n15 No respondent in the control group expressed confusion when
asked whether clicking on one of the NIKE Sponsored Links would direct him to
GEICO’s Web site…]…
Second, the survey design introduced “demand effects” and “order
effects” that could have tainted respondents’ answers that appeared to indicate
confusion. A demand effect results when the interviewer’s questions or other
elements of the survey design influence participants’ responses by suggesting
what the “correct” answers might be or by implying associations that might not
otherwise occur to participants…order effect results when a participant’s answer
to one question affects his answers to subsequent questions. For obvious reasons,
both effects can significantly bias the survey results. In this instance…the
interviewers repeatedly questioned respondents about their behavior and
assumptions with regard to GEICO and obtaining GEICO quotes. Responses to
subsequent questions, such as whether the participant thought the Sponsored
Links were affiliated with any company, easily could have been influenced by the
earlier questions about GEICO, making the participant more likely to assume that
133
“GEICO” was the right answer or what the interviewer wanted to hear…the order
effect, also undercut the assessment of confusion…Of the five Sponsored Links
listed, only the last one did not refer to GEICO in its heading or text. By the time
respondents considered this ad, they had already seen the four others that did
contain the GEICO mark, calling into question whether they would have
expressed similar confusion if faced only with insurance-related ads that appeared
next to the organic results for “GEICO” but did not mention the mark itself.
Third, discrepancies between the Web page selected to be shown to the
survey participants and the actual pages users are likely to see when searching on
“GEICO” further weakened the reliability of the results…the page chosen
included more Sponsored Links than the average Google results page. In
addition…the overall appearance of the outdated screen shot shown to survey
participants differed markedly from the Google results page that a user would
encounter in running a real search…
Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 2005 U.S. App. LEXIS 15127, *18*19 (8th Cir. 2005)
[Plaintiff’s] survey also fails to create a genuine issue of material fact
regarding the likelihood of confusion. In the survey, participants who had played
the [Defendant’s] games were shown a picture of the [Plaintiff’s] ice cream truck
and told, “Please take a look at this. Feel free to comment on anything that strikes
you about it, positively or negatively.” Seventeen percent of the participants
mentioned that it reminded them of or looked like images from the [Defendant’s]
games. As a follow-up question they were asked, “Specifically, does this or does
this not remind you in any way of an ice cream truck or character that you have
seen before or are aware of?” Thirty-four percent of those surveyed indicated that
it reminded them of something from the [Defendant’s] games. But these responses
are not probative of confusion. A leading trademark treatise states, “‘Confusion’
means more than that the junior user’s mark merely ‘calls to mind’ the senior
user’s mark…While the junior user’s mark may call to mind the senior user’s
famous mark, this alone is not sufficient for a likelihood of confusion.”…The
survey fails to address the relevant inquiry, which is whether consumers are
confused as to the existence of any sponsorship of or affiliation or association
[between Plaintiff and Defendant].
MetLife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223, 232-233 (S.D.N.Y. 2005)
…[Plaintiff] conducted a survey of 350 consumers in an effort to
determine whether they were likely to confuse the parties’ marks…A test group
was shown the blue “MetBank” logo as photographed at the 99 Park Avenue
location and a control group was shown a similar blue logo with the name
“MetroBank.” The images were identical in size, quality, and manner of
depiction…The results of the survey were that 38% of the test group believed that
MetBank was owned, operated, associated with, or sponsored by [Plaintiff]. In
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contrast, only 4% of the control group believed that “MetroBank” was owned,
operated, associated with or sponsored by [Plaintiff]….
…
In opposition, [Defendant] submits the declaration of…an expert in
consumer surveys, who has reviewed the [Plaintiff’s] survey…Notably,
[Defendant] did not offer evidence of any consumer study of its own.
Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 387-388 (2d Cir. 2005)
…[Plaintiff’s] evidence of actual confusion was extremely weak while
[Defendants’] evidence, though not flawless, tended to prove that actual confusion
was minimal at worst and nonexistent at best. [Plaintiff’s] evidence of actual
confusion consisted entirely of testimony by several interested witnesses
recounting a handful of anecdotes, including a number of hearsay statements by
unidentified and unidentifiable declarants. [Defendants], on the other hand,
submitted consumer surveys tending to rebut charges of actual consumer
confusion. [Plaintiff] points out, and the district court noted, various flaws with
these surveys. But as [Defendants] correctly point out, [Plaintiff’s] failure to
present its own consumer survey weighs against a finding of consumer
confusion…
Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 629-631 (9th Cir. 2005)
After Survivor aired, [Plaintiff] encountered a few people who wondered
whether his business was sponsored by Survivor. One retailer and one customer
mistook Survivor sunscreen for [Plaintiff’s] product, and one trade show attendee
thought that [Plaintiff’s] business was endorsed by Survivor’s producers.
…a survey commissioned by Survivor revealed that fewer than two
percent of four hundred and two sunscreen purchasers were confused by the two
marks…
…
We have recognized two distinct claims in the trademark infringement
context: forward confusion and reverse confusion…Forward confusion occurs
when consumers believe that goods bearing the junior mark came from, or were
sponsored by, the senior mark holder…reverse confusion occurs when consumers
dealing with the senior mark holder believe that they are doing business with the
junior one…
We need not determine whether [Plaintiff] raised a material issue of fact
on the forward confusion claim. [Plaintiff] may not proceed on this theory
because he failed to reference it in his complaint…
Pilot Corp. of America v. Fisher-Price, Inc. and Mattel, Inc., 344 F. Supp. 2d 349, 358 (D. Conn.
2004)
I agree with [Defendant] that there are at least three significant problems
with the [Plaintiff’s expert’s] survey. First, consumers were never shown any
135
products. Instead, the survey was designed to determine whether the two logos
were, in the abstract, confusingly similar. That two logos may be confusing when
viewed in isolation, does not show that their use on two separate products is also
confusing. Second, the survey did not use the entire trademarked logo for the
Magna Doodle. [Plaintiff’s expert] left out two potentially distinguishing markers
- the words “The Original” and the Magna Doodle slogan - even though those
items have consistently been present on the actual Magna Doodle products. Third,
the survey’s “internal control” seems inadequate. It does not account for the
possibility that respondents could have relied on non-protected similarities such as
similar colors…
CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714, 725 (E.D. Va. 2004)
…This Court [finds] that two people out of 130 indicating actual
confusion is de minimus…this number is far below ten percent of the survey
respondents, a threshold that the United States Court of Appeals for the Fourth
Circuit established in order for survey evidence to indicate likely actual
confusion…
Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062, *16-*17 (7th Cir.
2004)
…[Plaintiff] had ample opportunity to conduct his own survey, but
he chose not to…
[Plaintiff] was not required to conduct his own survey, but he
presented no other evidence of actual confusion or likelihood of
confusion…with one exception. That exception is a presentation showing
the results of searches conducted on two automated search engines. The
search engines retrieved web sites related to both the [Plaintiff] and the
[Defendant]. This does not mean, however, that the search engine was
“confused” as to the source of the sites…But those results just take us
back to the same point about confusion: would a consumer, looking at the
different web-sites, think that [Defendant] and the [Plaintiff] were
somehow from the same source?…
In re Borysiewicz, 2004 T.T.A.B. LEXIS 622, *2 (T.T.A.B. 2004)
In addition, we note that in [the] reply brief, applicant refers for the first
time to the “results of a survey conducted as to whether consumers are likely to be
confused as to the marks CIELO and HEAVEN.”…inasmuch as the evidentiary
record in an application should be complete prior to the filing of an appeal, such
evidence is untimely…Moreover, the purported results are of no probative value
in any event given the absence of any information as to the methodology utilized
in conducting the consumer survey…
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Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 487-488 (5th Cir. 2004)
…In assessing the validity of a survey, we look to two factors: first, the
manner of conducting the survey, including especially the adequacy of the
universe; and second, the way in which participants are questioned…
…In an infringement action, “the appropriate universe should include a
fair sampling of those purchasers most likely to partake of the alleged infringer’s
good or services.”…The universe in [Plaintiff’s] survey consisted entirely of
persons who purchased Kirby vacuum cleaners through [Plaintiff]. This group is
uniquely familiar with [Plaintiff’s] marketing and distribution techniques. Thus,
the survey says nothing about the ad’s effect on the class of potential consumers
of new Kirby vacuum cleaners, a class that includes a large proportion of persons
who have not yet purchased a Kirby…
In any event, flaws in the questions asked prevent the survey from proving
confusion even among potential consumers…first, the surveyors asked whether
[Defendant] “is in any way affiliated with, connected with, sponsored by,
associated with or authorized by” Kirby. The use of the phrase “in any way”
prodded survey participants to search for any connection, no matter how
attenuated, between the two companies. Second, the survey question suggested a
connection between [Defendant] and Kirby instead of permitting participants to
make their own associations. A survey question that begs its answer by
suggesting a link between plaintiff and defendant cannot be a true indicator of the
likelihood of consumer confusion…
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *59-*60 (D. Puerto Rico
2004)
…The respondents in [Defendant’s] survey were…asked, “Based on what
you just saw, do you or don't you know who or what brand or company makes or
puts out the sugar substitute that I showed you?”…
…the tortured wording of this question likely contributed to its extremely
low response rate. The question uses the word “or” four times in a single
sentence…Following the…“admonishment” to respond only if the [sic] they knew
the correct answer, and not to guess, participants in [Defendant’s] survey
overwhelmingly indicated that they did not know “who or what brand or company
makes or puts out” the product they had just seen.
…[Defendant’s] expert…testified that, in formulating this question, he was
guided by the survey conducted and approved by the Court in Union Carbide
Corp. v. Ever-Ready Inc.…The actual question asked in Ever-Ready was much
simpler…“Who do you think puts out the lamp shown here?”…The differences
between [Defendant’s expert’s] question and the question in Ever-Ready are
material, and likely affected the responses.
137
Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297, *15-*16, *45, *47 (D.
Or. 2004)
…Plaintiff did not conduct a consumer survey to assess whether a
likelihood of confusion would occur between easyedge SM and
edgeWIRELESS® or plaintiff's rate plan marks. Instead, plaintiff obtained the
services of…a brand marketing consultant with over twenty years experience in
advertising…
…
…Specifically, [Plaintiff’s expert] was asked to address three questions:
1. Does plaintiff have a viable brand in the marketplace?
2. If easyedge SM was introduced into plaintiff's markets, would
there be a likelihood of confusion?
3. If so, what would be the likely effect on plaintiff?
…
…Plaintiff's expert report does not alter the court's conclusion that no
confusion is likely to occur…
…[Plaintiff’s expert] did not base his opinion on survey evidence,
marketing research, or other empirical data...Instead, [Plaintiff’s expert] testified
that his conclusion was “an educated estimate based on my experience.”…
…
…I do not find that the lack of survey evidence warrants a presumption
that the results would have been unfavorable to plaintiff…
WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379, *7 (2d Cir. 2004)
…“[Plaintiff’s] strongest evidence purporting to show actual confusion
would be [Plaintiff’s expert’s] Report concluding that one-third of his respondents
believed [Defendant] and [Plaintiff] to be affiliated.”…However, the district court
found that flaws in methodology meant that the Report carried little probative
weight…We agree…The district court also declined to infer the possibility of
confusion from the United States Patent and Trademark Office's refusal to register
[Defendant’s] mark. Therefore, the district court concluded that this element did
not support [Plaintiff].
Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Culbro Corp., 2004 U.S. Dist. LEXIS 4935.
*128-*129 (S.D.N.Y. 2004)
The 2000 survey conducted by [Plaintiff’s] expert also demonstrated a
significant degree of confusion among consumers…approximately 15% of all
premium cigar consumers were confused…
…
Figures comparable to those in the 2000 survey have been found probative
of a likelihood of confusion…
138
New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195, 224 (D. Conn.
2004)
…participation in the administration of the survey by those with
knowledge of the litigation and the use of leading questions raise the risk of
insincerity in responses and cast doubt on the trustworthiness of the survey…The
questions challenged as leading clearly are both in form and in context (i.e.
considering the preceding questions). Furthermore, [Plaintiff’s expert] and his son
should not have administered the survey.
Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171, *24-*25 (T.T.A.B.
2004).
…Respondent objects to this testimony on numerous grounds including
that [Petitioner’s expert] is unqualified to render an expert opinion, the
methodology of the survey is flawed, and the results are unreliable. We agree with
respondent to the extent that we can give the survey little, if any, weight.
[Petitioner’s expert] “works almost exclusively as a distributor for
[Petitioner].”…He has “a two-year degree from what was called [H]eald Business
College” and he has taken a course in Probability in Statistics…The witness
indicated that he had no training or background in developing consumer surveys
in likelihood of confusion cases…
The “survey” petitioner has submitted was really an Internet poll…
Participants were instructed that: “If you don't know an answer to a question you
are better off just taking your best guess and quickly moving on.”…Anyone who
visited the witness’s website could take the test and there was no attempt made to
exclude participants who were not potential purchasers of nutritional
supplements…
…Because of the lack of screening of participants and the vagueness of
the question, among other things, this survey offers little support for petitioner.
1-800 Contacts, Inc. v. WhenU.com and Vision Direct, Inc., 309 F. Supp. 2d 467, 499-500
(S.D.N.Y. 2003)
Plaintiff’s survey statistics rely on numerous leading questions that
suggested their own answers,…and that are therefore entitled to little weight in
assessing consumer confusion...
Even if [the survey] questions are disregarded, the survey is burdened by
other flaws. To have substantial probative value, Plaintiff’s survey must examine
the impression of a junior mark on a potential consumer… Plaintiff’s expert…
testified…that in the survey he did not show respondents an example of a
SaveNow pop-up advertisement [and] also did not ask whether survey
respondents had ever seen a SaveNow pop-up ad,…did not attempt to distinguish
between SaveNow pop-up ads and other pop-up ads,…and did not determine
139
whether differences between SaveNow ads and other pop-up ads might have
affected users’ perceptions of the advertisements provided by SaveNow…
… Accordingly, [Plaintiff’s] survey, as designed and carried out, is not
dispositive of whether pop-up advertisements generated by the SaveNow software
has caused actual confusion among SaveNow users, and is not evidence of actual
confusion.
Medical Economics Co., Inc. v. Prescribing Reference, Inc., 294 F. Supp. 2d 456, 461 (S.D.N.Y.
2003)
…[Defendant’s expert] admits that while his survey shows some
“confusion,” it does not show what caused that confusion because he did not test
causation…In addition, the [Defendant’s] survey failed to use any
controls…Although the results of [Defendant’s] survey shows some confusion or
some likelihood of confusion, it does not show that this confusion exists because
the respondents are confused by the titles of the publications at issue…
Wells Fargo & Co. v. WhenU.Com, Inc. 293 F. Supp. 2d 734, 765-768 (E.D. Mich. 2003)
…It is clear from a review of…the most critical factors that [Plaintiffs’
expert’s] surveys do not provide reliable evidence of likelihood of confusion…
…
“To have substantial probative value, a survey…must…be designed to
examine the impression presented to the consumer by the accused product…”
…
…at a minimum, survey respondents should have been shown the item
that is said to be infringing or confusing…
…
Identification of the proper universe is recognized as a critical element in
the development of a survey…
In this case, the relevant universe consists of people who are likely to bank
or look for a mortgage online…
Because [Plaintiffs’ expert] failed to survey the appropriate universe of
people, the results of his 1-800 [contacts] and Gator surveys cannot be
extrapolated to this case regardless of whether those respondents were
demographically representative of the general population of Internet users…Only
a fraction of Internet users bank and obtain mortgages online; therefore, there is
no way to know whether any of the Gator and 1-800 [contacts] respondents were
users or potential users of plaintiffs’ websites...
…
A survey is not reliable if it suggests to the respondents an answer that
would not otherwise have occurred to them. More specifically, “it is improper to
suggest a business relationship where the respondent may previously have had no
thought of any such connection.”…
140
…The Court cannot find [Plaintiffs’ expert’s] conclusions on this subject
reliable, because the survey questionnaire repeatedly suggested to respondents a
link between pop-up ads and websites…
[Plaintiffs’ expert’s] surveys suffered from numerous other flaws,
including the use of an Internet Panel…and the failure to use control questions to
generate an error rate…Of even greater significance, [Plaintiffs’ expert] failed to
employ an experimental design that established causation…
…
…Plaintiffs have…not established any likelihood of confusion in
defendant’s “use” of their marks…
Anheuser Busch, Inc. v. Caught-on-Bleu, Inc., 2003 U.S. Dist. LEXIS 18010, 121-123
(D. N.H. 2003)
[Plaintiff] has submitted a survey which found “a substantial likelihood of
source confusion” between [Plaintiff] and [Defendant] based on the use of the
Billy Budd mark. The survey…revealed that a total of twenty-four percent of
consumers who were shown a tap handle identical to that distributed with the kegs
of [Defendant’s] product believed that [Plaintiff] put out the product or was
affiliated or connected with, or had given permission to, whomever did…Each
[respondent] was shown either a tap handle identical in all respects to that which
had been distributed with the kegs of [Defendant’s] product, or one identical in all
respects except the insertion of the word “Boy” for “Budd.”…
…
[Defendant] attempts to challenge [Plaintiff’s expert’s] conclusion with
the testimony of its own expert…The fact that [Defendant] has procured an expert
affidavit which purports to contradict that of [Plaintiff’s] expert, however, does
not necessarily render summary judgment inappropriate…
…
[Defendant’s expert] also calls [Plaintiff’s] survey “problematic” because
the interviews occurred in the “artificial environment” of a shopping mall, rather
than in a bar, restaurant, or store. [Defendant’s expert] opines that in such a
“realistic purchase environment, the chances that a beer purchaser would be
confused between Billy Budd and Budweiser are quite remote.” As an initial
matter, this testimony is insufficient to defeat summary judgment because it lacks
any foundation, i.e., [Defendant’s expert] does not present the conflicting results
of a consumer study which was actually conducted in a bar, restaurant, or other
beer retail outlet or provide any other basis for his opinion. Furthermore,
[Defendant’s expert’s] testimony runs afoul of settled law that mall-intercept
surveys of the kind conducted by [Plaintiff’s expert] are acceptable proof of actual
confusion…
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 375 (S.D.N.Y. 2003)
The [Plaintiff’s] Survey also tested for consumer confusion in the
marketplace regarding the parties’ packaging trade dress…[Plaintiff’s expert’s]
141
description of the survey results goes on to conclude that, “in total,…10% of the
respondents said that the similarity of [the parties’] packages was the basis for
their belief that the Famous Squish candy was ‘put out’ or made by the same
company as Original Swedish Fish candy or that it had obtained an approval or
permission from Original Swedish Fish.”…
…this…conclusion of a 10% consumer confusion over packaging
overstates the point since the underlying data show only a 9.5% confusion level
which was rounded upward by [Plaintiff’s] expert to 10%…Even assuming that
the [Plaintiff’s] Survey was conducted within the bounds of acceptable testing
methodology…the survey’s report that only 9.5% of respondents expressed
confusion over the parties’ packaging trade dress is too low to sustain [Plaintiff’s]
contention of actual confusion…
Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408, *9-*10 (T.T.A.B. 2003).
…applicant argues that the survey was unfair because the shirts on which
the marks were shown to the survey respondents were identical to shirts on which
opposer’s mark is actually used…This argument conveniently overlooks the fact
that as identified in the application, applicant’s goods encompass the goods on
which opposer has used its mark…Because applicant shows its mark in typed
format in the application, applicant would be free to adopt any style of lettering it
chooses, so the fact that the shirts used in the survey present the marks in block
letters does not invalidate the results of the survey. Similarly, in view of the
absence in the application of restrictions or limitations as to the types of shirts, for
example, the channels of trade through which they will move, and the purchasers
applicant plans to target with its advertising for its goods, opposer was under no
obligation to use only high-end items of apparel or to choose only well off,
sophisticated consumers for its survey.
Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461, *41 & n.4, *42, *43
& n.7, *47-*48 (D. S.D. 2003)
[In Plaintiff’s survey] the participants were randomly divided into two
groups. The test cell was exposed to a photograph of Cody Cow wrapped around
a computer monitor; the control cell saw a photo of the tiger stretch pet wrapped
around a monitor. The surveys were otherwise conducted identically… The
exposure to the photograph mimicked the overall commercial impression
consumers would receive in the marketplace. It also resembled how consumers
would view Cody Cow in advertising materials…
…
n4 While allowing the survey participants to look at the photograph, the
person conducting the survey stated:
Here is a picture of a product that is used to decorate or personalize a
computer monitor. As you can see from the picture, it stretches to fit
around the screen. Please take a look at this as you would if you saw it on
somebody's computer or if you were shopping for personal computer
142
accessories either on the internet or in a computer store. Take as much
time as you normally would when looking at something like this or when
shopping for such products. Let me know when you are finished.
…
Participants were first asked, “Based on what you just saw, do you or do
you not have a belief as to who or what company or companies makes or puts out
the product in the picture that I just showed you?” Those who had a belief were
asked “Who or what companies do you believe makes the product in the picture
that I showed you?” They were also asked whether they knew of other products
made by whomever made the product in the picture, what those products were,
and whether they believed that whoever made the pictured product is or is not
related to, sponsored by, or associated with any other source or company. After
each question, they were asked to explain why they came to that conclusion…
…
…[Plaintiff’s expert] subtracted the percentage of people who identified
[Plaintiff] in the control group from the percentage of people who named
[Plaintiff] in the test group. This resulted in the adjusted likelihood of
confusion…
…
Displaying Cody Cow in the post-sale context, moreover, does not
invalidate the survey since the Lanham Act protects post-sale as well as point-ofsale confusion…
Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281, 298 (S.D.N.Y. 2003)
…there is no evidence of any consumer confusion. The Defendants
commissioned a survey, which was performed in accordance with accepted
market testing techniques. This survey revealed that fewer than 3% of respondents
saw any connection between the Plaintiff’s magazine and [the magazine]
produced by the Defendants. This rate of confusion is not sufficient to
demonstrate a likelihood of confusion. See Cumberland Packing Corp. v.
Monsanto Co., 140 F. Supp. 2d 241, 254 (E.D.N.Y. 2001) (finding survey’s
confusion rate of 7.84% insufficient to raise material fact as to likelihood of
consumer confusion); cf. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058,
1061 (2d Cir. 1979) (finding a consumer survey showing a fifteen to twenty
percent rate of product confusion to be probative of a showing of confusion)…
Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302, 311 (W.D.N.Y.
2002)
[Plaintiff’s] survey results…concluded that [Defendant’s] ROCKLETS are
mistaken by consumers as being a Mars product, or being a product authorized by
Mars, because of the packaging. The survey used, in one “cell,” a package of
ROCKLETS plain chocolate candy…respondents…were shown the ROCKLETS
package and asked, “who, or what company, do you believe puts out these
candies?”…37.80%, answered that the ROCKLETS candies in the brown package
143
were put out by Mars or M&M’s®, despite the appearance of “ROCKLETS” and
“Arcor” on the packages…When asked the follow-up question, “what other brand
name or names, if any, do you believe are used by the company that puts out these
candies,”…21.53%, answered either Mars or M&M’s®…
The survey also used two control cells, one which used a white paper
package with the words Arcor and ROCKLETS on it…The package had a small
clear window through which one could see colored lentils…The other control cell
used a similar white package, but the candies seen through the small clear window
in the package were all white lentils…
…[Plaintiff’s survey] shows that at least 29.22% of respondents were
confused as to the origin of ROCKLETS candies based on the package
alone…That is a significant number, especially when considering that the names
ROCKLETS and Arcor appear on the ROCKLETS packages. Contrary to
[Defendant’s] counsel’s suggestions, the Court finds that this survey, with the
package in isolation, strongly shows that Arcor was successful in imitating the
M&M’s® trade dress, albeit with a different name on the front…
adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M.
Int’l, Inc., 2002 U.S. Dist. LEXIS 25141, *11 (D. Or. 2002)
…through the evidence of the double-blind survey, [Plaintiff] has
demonstrated a triable issue of fact on the issue of post-sale confusion, which
occurs when consumers other than the purchaser see the item after it has been
purchased…
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399, 408 (S.D.N.Y. 2002)
…A central problem with the survey, however, is that it compared the
[Plaintiff’s] can and label to [Defendants’] can and label rather than comparing
the [Defendants’] trademark to Defendants’ label. Thus, the results of the survey
are geared to a trade dress infringement claim (which encompasses the entire
packaging of the goods) rather than to a trademark infringement claim (which
focuses on the actual mark). Given this problem, the survey does not provide
evidence of actual confusion between the [Plaintiff’s] trademark and the
Defendants’ products.
Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316, *22-*23 (D. Minn.
2002)
…There are several indicia of reliability a court can consider in assessing
the validity of a consumer survey. These factors include whether: “the population
was properly chosen and defined; the sample chosen was representative of that
population; the data gathered were accurately reported; the data were analyzed in
accordance with accepted statistical principles; the questions asked were clear and
not leading; the survey was conducted by qualified persons following proper
interview procedures; and the process was conducted to ensure objectivity.”
144
(Sports Authority, Inc. v. Abercrombie & Fitch, Inc., 965 F. Supp. 925, 933 (E.D.
Mich. 1997) (quoting the Manual for Complex Litigation, Third, § 21.493
(1995)).
U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620, *15-*20
(T.T.A.B. 2002)
…we have not relied upon opposer’s survey, which has certain
deficiencies. Purportedly, “the survey resulted in a likelihood of confusion finding
of 22.9%.”…
Opposer’s survey was a shopping mall intercept survey conducted in four
cities all within opposer’s fourteen state region…A total of 420 respondents, age
18 or older, participated in the survey….the respondents were shown two cards at
separate times. One card had U S WEST typed at the top, and the other card had
US EAST typed at the top…Consumers were shown the U S WEST card, and
then it was removed from their view. Consumers were shown the US EAST card,
and it too was removed from their view…
When the first card was taken away, the respondents were then
asked…“What company do you think provides the services mentioned in that
card? If you do not know, please feel free to say so.” This question was repeated
after the respondent was shown the second card. Again…only after the second
card had been removed from the view of the respondent. Depending upon their
responses to these two questions, certain respondents were then asked the
following question: (1) Do you think the services provided in the exhibits I just
showed you are provided by the same company or by different companies? If you
do not know, please feel free to say so. If a respondent said “different
companies” or “don’t know” to question one above, he was asked…(2) Do you
think the companies that provide the services in the exhibits I just showed you are
associated with each other in any way or that they are not associated? If you do
not know, please feel free to say so. If a respondent said “not associated” or
“don’t know” to question two above, he was asked…(3) Do you think that either
U S WEST received permission from US EAST to use the name U S WEST or
that US EAST received permission from U S WEST to use the name US EAST or
did not receive permission? If you do not know, please feel free to say so.
At the outset, we note that all four questions - the initial question which
was repeated twice and the three follow-up questions - are in effect a test of the
respondent’s memory in that the cards bearing the marks U S WEST and US
EAST were removed from the respondent’s view prior to the questions being
posed…
…the survey lacked a degree of “control”…
The final three pertinent questions are not only memory based questions,
but…are somewhat convoluted…
In short, we have accorded no weight to opposer’s survey. Not only are
the questions memory based and convoluted, but in addition, a respondent merely
had to give a “wrong” answer to one of the four pertinent questions in order to be
counted as part of the 22.9% of the respondents who were “confused.”
145
Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646, 655 (D. Md. 2002)
In Sara Lee Corporation v. Kayser-Roth Corporation, 81 F.3d 455 (4th
Cir. 1996), the Fourth Circuit noted that a survey estimate finding 15% confusion
of similarity in marks would demonstrate actual confusion to a significant
degree…On the other hand, the court suggested that “survey evidence clearly
favors the Defendant when it demonstrates a level of confusion much below ten
percent.”…(citing Henri’s Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352,
358 (7th Cir. 1983)). In addition, while “actual confusion can be demonstrated by
survey evidence,…survey evidence is not necessarily the best evidence of actual
confusion and ‘surveys are not required to prove likelihood of confusion.’”…
Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634,
*22-*25 (E.D.N.Y. 2002)
[Plaintiff] also offers the “professional study” it relied upon in its effort to
show secondary meaning to support its claim of actual confusion…
[Plaintiff’s] survey reports that fifty-five percent of the twenty-five
participants shown [Defendant’s] tray associated it with [Plaintiff]; thirty-three
percent of those shown the [Plaintiff’s] tray were not sure whether the tray
originated with [Plaintiff] or [Defendant]…However, once the participants were
allowed to inspect the trays, there was little confusion. As [Plaintiff]
acknowledges, “upon closer inspection, respondents could see the [Defendant’s]
logo on the back of their tray and most were able to identify the manufacturer.”…
…even if the survey were accepted as accurate…it is not particularly
persuasive as to actual confusion: The trays were shown separate from their
packaging at a significant distance, and the conditions appear to have been chosen
to make it difficult for the participants to discern [Defendant’s] logo before being
asked to identify the tray brand…
Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964, 979-980 (10th
Cir. 2002)
…[Plaintiff] points to the survey…which reports that 51 out of 180
participants, or twenty-six percent of participants after adjusting for error,
believed that [Defendant’s product] was manufactured by [Plaintiff] based solely
on the products’ packaging or appearances. The survey concludes that “[a]
significant number of respondents provide ‘package/appearance’ related reasons
as a basis for their mistaken belief that [Defendant’s product] is put out by the
same company that puts out [Plaintiff’s products]. . . . Even after adjusting for
‘noise,’ confusion remains high[,] accounting for more than one out of four
respondents.” [Plaintiff’s] survey is strong evidence of actual confusion…
146
WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463, 474 (S.D.N.Y. 2002)
Due to flaws in its methodology, [Plaintiff’s] Report does not provide
support for [Plaintiff’s] case…[Plaintiff’s expert] did not use pictures or
advertisements that approximate what a potential customer would encounter in
making her television-viewing choices. Thus, by presenting respondents with
word lists, [Plaintiff] essentially measured respondents’ word associations devoid
of context. Accordingly, the information within [Plaintiff’s] Report does not go to
the issue at bar.
Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335, 365-366 (D. N.J. 2002)
[Defendant] produced evidence in the form of a survey of the relevant
population…of ophthalmologists and optometrists…
…
The…Survey tested for product source confusion. It asked a series of
questions based on a stimulus that was mailed to respondents in a sealed
envelope…There were two cells in the survey: (1) a test cell of 200 prescribers
that used a[n]… advertisement [for the alleged infringing mark] as the stimulus;
and (2) a control cell, also of 200 prescribers, that used an identical
…advertisement [featuring a mark not alleged to infringe] as the stimulus…The
stimulus was designed to focus the respondent’s attention primarily on the name
of the product…
The questions…selected for the survey (“What company do you believe
puts out the product whose advertisement you just saw?;” “Please tell me whether
or not you believe the company whose advertisement you just saw puts out any
other medications for the eye;” and “Please tell me whether or not you believe
that the company whose advertisement you just saw needs authorization,
permission or approval from some other company in order to put out the product
advertised.”)… are a standard type and format of questions used to gauge
confusion in trademark cases…[Defendant’s] survey expert…used virtually
identical questions in a trademark confusion survey he designed in a prior
infringement case…
Five percent of the test cell respondents confused the source of [Plaintiff’s
mark] and [Defendant’s mark] and 3.5% of control cell respondents confused the
source of [Plaintiff’s mark] and [the control mark], yielding net confusion of
1.5%...
National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474, 482484 (S.D.N.Y. 2002)
[Plaintiff] offered a survey conducted…in various shopping malls…and is
a so-called “two-room” survey. Subjects were…only those who indicated that
they drink “liquor, such as gin, rum, tequila, or vo[dk]a” on average at least once
a month…In the first “room,” the interviewer showed the subject the TETON
147
GLACIER label, without the bottle to which it is normally attached. Then, in the
second room, the subject was shown seven or eight empty cooler bottles…and
told, “Some, all, or none of these alcoholic beverages may come from the same
maker or company as the product on the card I showed you [in the first room].
Which, if any, of these alcoholic beverages do you think come from the same
maker or company as the product on the card I showed you [in the first room]?…
…
We find two major flaws in [Plaintiff’s] survey that persuade us that it
does not reliably indicate the existence of actual confusion. First, we find that the
“universe” was not properly defined. The proper universe in a forward confusion
case is the universe of potential purchasers of the junior user’s product, here, the
cooler drinkers who may purchase Glacier Bay…[Plaintiff] however, chose a
universe of respondents who regularly consume “liquor, such as gin, rum, tequila,
or vodka.” We are not convinced that this definition would generate a universe of
potential Glacier Bay purchasers because the evidence adduced at trial
demonstrated that the liquor and cooler markets are not coextensive…
The second major flaw…in [Plaintiff’s] Survey is that every respondent
was exposed to the Teton Glacier product in the first room, thus acquainting them
with a product that they would almost certainly have been unfamiliar with
otherwise, due to Teton Glacier’s very limited distribution network and weak
sales…
Apart from these two glaring flaws…there were other methodological
errors...First, the respondents were shown the Teton Glacier label on a card, rather
on a bottle…as they would encounter the label in the marketplace. Second, while
the cooler bottles would obviously be full when sold in the marketplace, they
were empty when shown to the subjects…In sum, the…Survey simply did not
sufficiently replicate marketplace conditions to make it a reliable indicator of
actual confusion in the marketplace.
…
[Defendants] commissioned their own survey…subjects chosen were
persons 21 years of age or older and who had purchased or consumed a cooler
product within the previous ninety days, or who were likely to purchase such a
product within the next ninety days. The [Defendant’s] Survey was not a “tworoom” survey, but rather a “single exposure” design, similar to the well known
Ever-Ready survey.See Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366,
385 n.11 (7th Cir. 1976). In the [Defendant’s] Survey, the subjects were shown
either a bottle and four-pack of Glacier Bay, or a bottle and four-pack of a
fictitious “Arctic Bay” product as a control. The Arctic Bay product was created
by modifying the Glacier Bay product by changing the word “Glacier” to
“Arctic,” the abbreviation “GB” to “AB,” and by removing the mountains from
the Glacier Bay label. The subjects were shown either the Arctic Bay or Glacier
Bay products and permitted to examine them for as long as they wished. The
products were then taken away and the subjects were asked a series of questions,
to wit: “What company or companies do you think makes or puts out this
product?”, “Whether you know the name of the company that makes this product,
are you aware of any other products or brands put out by this company?”, if yes,
148
then, “What other products or brands do you think are put out by the company
that makes this product?”, and “If you have an opinion, do you think that the
company that makes this product did or did not get approval or permission from
any other company or companies in order to put out this product?”…
…
[Defendant’s] Survey…is much more reliable because it more accurately
approximates actual market conditions. For example, subjects were not made
artificially aware of Teton Glacier or the TETON GLACIER trademark. Most
importantly, however, [Defendant’s] Survey selected an appropriate universe of
respondents, namely, cooler consumers. In short, we find the [Defendant’s]
Survey to be more reliable than the [Plaintiff’s] Survey…
The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S.
Dist. LEXIS 5925, *30-*33 (E.D. Pa. 2002)
…A primary infirmity identified by [Defendant’s expert] was [Plaintiff’s
expert’s] failure to ask respondents why they answered as they did…I find that
because the respondents were not asked the reason for their answers, there is no
indication how much influence was exercised by the choice of stimuli over the
respondents’ perception and thus the survey data are infirmed.
…because of the infirmities in the survey… I reject the purported
survey…as showing there is any likelihood of confusion between the two marks.
Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS
144, *22 (T.T.A.B. 2002)
…opposers’ survey tends to bolster the conclusion we reach, we have not
given much weight to it…survey involved…too much of a memory test...
E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740, *33
(T.T.A.B. 2001)
Surveys are statistical evidence that can be an aid to the Board. It must be
kept in mind, however, that survey evidence is only one factor to be considered in
the overall determination of likelihood of confusion…In this case, both parties,
with significant merit, have perceived flaws in the other’s survey. Our skepticism
about the reliability of the parties’ surveys in this case is fueled by the virtually
opposite results reached by each party, namely a confusion rate of forty percent
(opposer’s) versus three percent (applicant’s). In view of the flaws noted above
and the wide disparity in these surveys which purport to determine essentially the
same thing, we find that neither survey is particularly reliable. All in all, neither
survey is of any particular assistance to the Board in resolving the issue of
likelihood of confusion.
149
Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949,
954-955 (S.D. Tex. 2001)
The parties developed jointly a consumer survey to gather data about
actual confusion. They selected [a single expert to design a survey and certify on
behalf of both parties] as their expert…
…The parties approved the questions…
The results indicate a likelihood of confusion between Tiffany &
Broadway’s shoes and Tiffany & Company merchandise. Approximately 15
percent of those surveyed said the shoe was put out by, affiliated with, or
approved by Tiffany and that Tiffany also sells jewelry, purses, handbags, or
perfume.…(finding strong evidence of likelihood of confusion in survey showing
a 15 percent association rate between Texon sign and EXXON)…
The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785, 786, 787
& n.2, 789- 792 (D. Md. 2001)
The Court has before it…Motion to Exclude the Expert Report and
Testimony of…and the materials submitted by the parties relating thereto...
…
…[Plaintiff] commissioned…a market research expert, to design and
conduct a survey to determine whether or not there is a likelihood of confusion
between Network’s “Learning Network” [website] and Discovery
Communications, Inc.’s…“The Learning Channel” or “TLC.”
...
Each respondent was then shown one of two portfolios containing color
pictures of what was said to be a website page. Two hundred thirty-two
respondents were shown the “Test” Portfolio containing pages from Network’s
“Learning Network” site. Two hundred twenty eight respondents were shown the
“Control” Portfolio [n.2 The “control” portfolio was used to determine whether
the use of the word “learning” contributed to any confusion.], which was identical
to the “Test” Portfolio, but within which the name “Learning Network” had been
replaced with “Learning.com.”
…
When respondents indicated that they had finished looking at the portfolio,
it was removed. Respondents were asked [a] series of questions…
…
The question here presented is whether the asserted defects in the
[Defendant’s] survey are so great as to warrant exclusion rather than gust (sic) for
the mill of cross-examination, rebuttal evidence, and jury evaluation.
…
[Plaintiff] raises the question of whether the survey format is defective
because the stimulus is presented through a medium different from that used by
the consumer in the marketplace. Specifically, [Plaintiff] contends than a printed
picture of a webpage has a different effect from the webpage as it appears on a
computer monitor screen.
150
…
The Court concludes…it should not hold that the display of the stimulus
on a paper page rather than on a computer monitor, is a determinative, or even
significant, factor...
…
The Court finds that the survey is defectively designed in that it does not
engender reasonable confidence that all, a majority, or even a substantial number,
of the subjects…were answering the questions posed with the understanding that
the stimulus was the website of, or presented by, “Learning Network.” If subjects
did not have this understanding, their responses to the “substantive” questions
would be meaningless.
…once the subject reached the portfolio pages purportedly depicting the
website, he was denied significant location information that would be available to
a real world consumer. Subjects were provided with a picture of the website
which omitted the “title bar” at the very top of each website page. The “title bar”
for the Learning Network home page includes the statement “Welcome to the
Learning Network – your educational resource.”…
Moreover, the portfolio website pictures omitted…the location tool bar
which would tell the consumer that he was connected to http://www.learningnetwork.com.
…
The Court finds that the survey was severely defective by virtue of its
failure to ask any question that would test the critical question of what website it
is that the subject thought they had seen.
…
The Court concludes that the subjects have not been shown to have known
that they had seen the Learning Network website as distinct from real world
consumers who would have had this knowledge. Accordingly, the survey
evidence does not establish that the subjects were answering questions with
critical knowledge equivalent to that possessed by the relevant universe of
consumers…
…
…Motion to Exclude…GRANTED.
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 678 (E.D. Va. 2001)
The report and testimony of…plaintiff’s expert…reinforces this
conclusion…designed and conducted a survey to determine whether and to what
extent individuals would likely believe that the Domain Name
“harrodssouthamerica.com” is used or approved by [Plaintiff]…Between
approximately twenty-three and thirty-one percent of those surveyed believed that
“harrodssouthamerica.com” was used, approved, or permitted by [Plaintiff]…
[S]urvey therefore confirms that the defendant Domain Names are confusingly
similar because there is a significant likelihood of confusion between plaintiff’s
HARRODS mark and defendant harrodssouthamerica.com…
151
Sara Lee Corp. v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204, *23-*27 (T.T.A.B. 2001)
Petitioner introduced the results of two shopping mall intercept surveys…
In the original survey… The interviewer handed…qualified respondents a
white card as shown below.
GOLDEN LEGS
HOSIERY FOR WOMEN AND CHILDREN
After viewing the card, each respondent was asked the following question:
“What company do you think puts out that brand of hosiery?” Respondents who
answered something other than “don’t know” to the first question were then
asked: “Why do you say that?”
A second control group of…respondents saw a different control name
(Golden Step, Golden Spirit, Golden Sheers, Golden Fit, Golden Touch or Golden
Kicks), and then were asked the same two questions...the purpose of this control
group was to control the survey for “noise,” that is, the tendency of consumers in
this particular situation to attribute manufacture to L’EGGS because it is a
familiar brand.
…
Respondent countered with…testimony…essentially criticiz[ing] the
methodology used in conducting the survey. More specifically, he stated that the
survey’s instructions encouraged guessing; that the card bearing respondent’s
mark which was shown to the respondents omitted the category of men’s hosiery
products…
In response to two of these criticisms, namely the encouragement of
guessing and the perceived misidentification of the product category on the
sample card, petitioner…undertook a replication survey. Accordingly, the
stimulus card shown to respondents indicated that the GOLDEN LEGS product is
“hosiery for men, women and children”…The instructions were modified in
relevant part to read “For any of my questions please give me an opinion if you
have one, but if you don’t know or have no opinion, that’s OK”…
The replication survey…shows results which are very similar to the results
of the original survey…
…
Petitioner’s surveys employ a fairly standard format used in likelihood of
confusion cases, the so-called Eveready format…This survey format has been
approved by a number of courts…We find that the surveys here support
petitioner’s position on the issue of likelihood of confusion.
Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226, *33-*33 (S.D.N.Y. 2001)
A survey is probative and may be admitted into evidence to establish
actual confusion if it is “fairly prepared and its results directed to relevant issues.”
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (quotations
152
omitted). Errors in methodology properly go to the weight of the survey evidence.
See Schering Corp. v. Pfizer Inc., 189 F.3d 218, 227-28 (2d Cir. 1999); Lois
Sportswear, 799 F.2d at 875. A survey, however, should be excluded under
Fed.R.Evid. 403 where it is so flawed in methodology that its probative value is
substantially outweighed by its prejudicial effect. See Schering, 189 F.3d at 228;
Starter Corp. v. Converse, Inc., 170 F.3d 286, 297 (2d Cir. 1999); Arche, Inc. v.
Azaleia, U.S.A., Inc., 882 F. Supp. 334, 336 (S.D.N.Y.1995).
The defendants challenge the methodology used in the plaintiff’s survey
and argue that the survey does not support a showing of likelihood of confusion,
but, despite the survey’s flaws, the survey does not appear to be devoid of all
probative value on the issue of the likelihood of confusion…The survey results
still have some relevance to the issue of how potential purchasers would react
when presented with [Defendant’s] “CACHE” watches. Any flaws in the survey
are factored into the weight to be given to the evidence. The survey results,
together with the anecdotal evidence of actual confusion, lend support to the
plaintiff’s argument of actual confusion, which supports the plaintiff’s contention
of a likelihood of confusion.
Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504,
*5-*7 (S.D.N.Y. 2000)
The Court next considers plaintiffs’ trade dress claims…
…
…defendants are entitled to summary judgment dismissing the trade dress
claims because there are no facts in dispute sufficient to support a likelihood of
confusion between the plaintiffs’ and defendants’ bottles. Comparing the bottles,
with the labels properly on them, unlike plaintiffs’ survey comparison of the
bottles with that very significant element of their trade dress removed, the Court
holds that a reasonable jury properly considering the aforementioned factors,
could not find a likelihood of confusion…
Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 368 (S.D.N.Y. 2000)
Finally, the evidence of actual confusion plaintiff repeatedly refers to is
illusory. The survey conducted by plaintiff’s expert merely proved that there were
significant visual similarities between Petoskey and Colonnade…[Plaintiff’s]
survey did not, however, account for the reality that plaintiff’s and defendant’s
products are bought using catalogs that, unlike the pictures used in the survey,
clearly identify the manufacturer…
Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1219-1220 (C.D. Cal. 2000)
The survey concludes that 49.5% of the respondents “perceived that
proceeds from, or authorization for, the sale of the advertised Diana, Princess of
Wales memorabilia went to, or was authorized by, Diana, Princess of Wales
and/or her family, estate, Foundation or other legal entity (other than the Franklin
153
Mint).”…Without a specific percentage reflecting the number of respondents
expressing confusion as to the plaintiffs’ endorsement of defendants’ product, the
survey is not beneficial to the Court’s analysis.
…
…the…result was tabulated by counting any answer given by a respondent
to a question that “reflected an understanding that the ‘family,’ ‘estate,’
‘Foundation,’ or other similar entity was thought by respondent to have
participated in the sale” of the product…Initially, this method is problematic
because the “participation” of neither the “family” nor “other similar entity” is at
issue in this case. Moreover, each question following the first dealt with who
would receive proceeds from the sale of the product. Answers to the charityrelated questions are irrelevant to determining actual confusion over the plaintiffs’
endorsement of defendants’ products…
Finally, respondents’ answers may have been tainted because they were
shown three advertisements of [Defendant’s] products: an Elvis Presley statue, a
Marilyn Monroe doll and the Princess Diana doll. The Presley advertisement
states that it is “authorized by Graceland” and identifies Elvis Presely Enterprises
as the trademark holder.…The Monroe advertisement states that it is “Fully
authorized by the Estate of Marilyn Monroe” and identifies trademark
holders…These advertisements may have led respondents to assume that because
the Presley and Monroe products were “authorized” and contained trademark
protected aspects, that the Princess Diana doll required similar authorization or
permission…the Court would attribute little weight to the results because the
survey method provided respondents with information that may have led them to
assume that authorization or permission to use Princess Diana’s image was
necessary.
Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033, 1039, 1041, 1043, 1049,
1050 (S.D. Ind. 2000)
The case is now before the court on SPG’s motion in limine asking the
court to find in advance of trial that the results of proposed consumer surveys on
possible consumer confusion will be admissible at trial.
…
Simon’s motion in limine also asks the court to perform before trial a
variation of the gatekeeping function the court must perform for expert testimony
under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 591, 113
S.Ct. 2786, 125 L.Ed.2d 469 (1993)…
…
In…[Plaintiff’s proposed] survey, the respondent is first shown a card
depicting… [Defendant’s] mySimon home page...the interviewer takes back the
mySimon card, hands the respondent a card depicting…[Plaintiff’s] SPG home
page…both cards are placed out of the respondent’s sight. The interviewer then
asks “Do you believe that the two web pages just shown to you are put out by (a)
Two unrelated sources, companies, or organizations; (b) The same source,
company, or organization; (c) Related but different sources, companies, or
154
organizations; or (d) Don’t know?” If the respondent answers (a), (b), or (c), the
interviewer then asks “Why do you say that?” and “What else?”
…[Plaintiff’s] proposed…survey suffers from three serious flaws: (a) it
grossly distorts the “marketplace conditions” in which Internet users might
actually encounter the two parties’ marks together; (b) it fails to use the most
basic control by failing to compare potential confusion with respect to other
“Simon” web sites not related to either of these parties; and (c) it is designed to
create “demand effects” that will appear to exaggerate unfairly any possible
confusion about affiliation between SPG and mySimon. Although no survey is
beyond criticism, these problems are so fundamental that the court does not
believe it would be fair to treat them as matters going only to the weight of the
evidence. They are so basic as to strip the proposed survey of any significant
probative value. The court concludes under Rule 702 and Rule 403 that the
proposed…survey should be excluded from evidence.
…
…the proposed survey [is] nothing more than a meaningless memory
game or word association exercise that bears no relationship to the marketplace.
…
…[Plaintiff’s] experts have opined that a survey in the Eveready format
would not be appropriate for this case. In the Eveready format… Union Carbide
Corp. v. Ever-Ready, Inc., 531 F.2d at 385-86, a consumer would be exposed to
only mySimon’s mark, home page, or other stimulus, and would then be asked
“Who do you think puts out this service? What makes you think so? Name any
other products or services put out by the same concern that puts out this
service.”…
…[Plaintiff’s expert] asserts the Eveready format is most appropriate
where specific products are involved and would be “very difficult to adapt to an
extremely dynamic INTERNET service oriented marketplace.”…With all due
respect…this is simply not an explanation at all. It would seem to be a relatively
simple matter to design a survey that exposes a respondent only to mySimon’s
web site or advertising, to ask who the respondent thinks puts out that service and
what other services it provides, and then to see how many respondents come up
with SPG or a recognizable variation…
Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567, 584 (E.D. Va. 2000)
…The results indicated that approximately sixteen percent of those
surveyed were confused (net of control confusion) based on the common name of
the products…This survey evidence supports a finding of a likelihood of
confusion under Section 43(a) of the Lanham Act. See, e.g., Sara Lee, 81 F.3d at
467 n. 15 (stating that survey evidence showing a level of confusion between ten
and eleven percent is sufficient to demonstrate actual confusion) (citing Mutual of
Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987)).
…
Although Defendant presented an expert to challenge…[Plaintiff’s survey]
results… [Defendant’s expert] acknowledged that the best way to determine
155
whether the alleged design flaws… identified had any effect on the outcome
would be to conduct an alternate survey. However, [Defendant] did not present
any alternative survey…[Defendant] had ample opportunity to conduct a “proper”
survey on likelihood of confusion, since it had completed a survey purportedly
addressing secondary meaning by the end of July.
Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 322 & n.17 (S.D.N.Y. 2000)
…the defects of the…[Defendant’s] survey’s universe become
immediately apparent.
First, the universe was defined as persons who had purchased fragrances
in the preceding twelve months rather than persons who intended to purchase
fragrances in the future…Thus, the survey improperly excluded prospective
purchasers…
Second, the survey improperly focused on the fragrance market rather than
on the jeans or casual clothing market…traditional rather than reverse confusion
is at issue. Accordingly, the relevant market is the purchasers of jeans or casual
clothing, and not the purchasers of fragrances.
n.17…[Defendant] contends that a person who is not aware of Paco
Rabanne cannot be confused at all, and, therefore, is irrelevant to the actual
confusion analysis…The Court finds [Defendant’s] approach, limiting its universe
to consumers aware of its products, inappropriate because even a weak brand
could demonstrate a high degree of confusion because of the limited nature of the
universe being surveyed…
Thane Int’l Inc. v. Trek Bicycle Corp. 53 U.S.P.Q.2d 1523, 1531-1532 (C.D. Cal. 1999)
…[Plaintiff] can only supply evidence of actual confusion in a contrived
“survey” environment quite unlike those environments in which customers would
actually encounter the marks at issue in this action. The pictures employed
by…[Plaintiff’s expert] to conduct…[this] survey do not strike this Court as
accurately replicating the environments in which consumers would encounter the
parties’ marks…
Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321, *16-*18 (N.D.
Ill. 1999)
At the Rule 16 Conference…[Plaintiff] presented a preliminary consumer
survey that purported to measure the likelihood of product confusion
among…consumers. [Defendant] suggested that the universe of consumers used
by [Plaintiff] was underinclusive. Both parties have indicated that they will likely
gather additional survey evidence. In order to conserve resources and focus
discovery, we agreed to take briefs on the relevant universe of such consumer
surveys.
Before reaching the merits…we must answer…[Plaintiff’s] procedural
objection. [Plaintiff] correctly points out that neither party has brought a motion
156
in limine. [Plaintiff] argues that, because we may not issue advisory opinions, we
should not address the propriety of any particular survey design. We disagree.
Because conducting consumer surveys often involves a great expense of both
money and effort, we believe the court should be willing to provide guidance
when requested to do so. Indeed, the Seventh Circuit has explicitly approved of
this practice. See Union Carbide Corp. v Ever-Ready Inc., 531 F.2d 366, 386 (7th
Cir. 1976) …Because the parties cannot agree on survey methodology, we believe
it is appropriate to offer our thoughts.
[Plaintiff] would like to survey only people who identify themselves as
users of its product… [Defendant] suggests that only survey evidence drawn from
a universe of all bathroom tissue consumers is appropriate.
…an examination of the plaintiff’s apparent theory of liability…suggests,
quite clearly, that [Plaintiff’s] theory of the case involves confusion among all
consumers of bathroom tissue. In order to determine whether confusion exists
among all such consumers, the entire bathroom tissue consumer marketplace
would be the logical universe from which to draw a sample…
Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62, 70-71 (E.D.N.Y. 1999)
To establish likelihood of consumer confusion, plaintiff relies on a survey
[reflecting]…that sixty-seven percent of the respondents associated defendants’
device with The Club and thirty percent associated it with Global America…
…
The most significant flaw in this study is that it has nothing to do with
trade dress. There is no way to tell whether those who answered “The Club”
responded that way because “The Club” has become a generic name for steering
wheel locking devices, because they do not know The Club has competitors,
because they simply guessed at the name because it is a famous brand, or because
the trade dress--the way the product was presented in the package--was confused
with that of The Club. In other words, there is no way to determine whether
respondents answered “The Club” for non-trade dress reasons…
…
…To be meaningful a survey should show the reason that each
interviewee found confusion…
Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935, 965-968 (S.D.
Tex. 1999)
For…trial…[Defendant]…commissioned…[a] survey…to determine the
percentage of consumers, if any, who are likely to believe that the New POLO
Magazine is published by, sponsored by, authorized by, or affiliated with
[Defendant]. The…survey respondents were…divided into two groups, one a test
group, and one a control group. Interviewers showed the test group…a copy of
the…New POLO Magazine, and the control group…was shown a copy of the
July 1998 issue of Polo Players’ Edition…
157
In response to several open-ended… questions…53% of the test group
believed that [Defendant] had authorized, approved, or produced the New POLO
Magazine, as compared with only 22% of the control group, who believed that
[Defendant] had authorized, approved, or produced Polo Players’ Edition…
[Plaintiff’s] survey found an incremental rate of confusion of 31%…
…these rates of confusion were even more striking among those
respondents who were familiar with publications which are said to compete
directly with the New POLO Magazine…Among this group of readers, a higher
level of incremental confusion, 34%, was present…[Additionally] among those…
respondents who reported income of more than $70,000 per year, a 40%
incremental confusion level was found. The court accepts [Plaintiff’s] assertion
that it is that particular audience which it hopes to attract to its New POLO
Magazine…
…
The court also concludes that…the… presentation of stimuli to the survey
respondents [in Defendant’s survey] was suspect in several aspects…[Defendant’s
expert]…asked the respondents to view an “array” of various goods in two
different displays…In spite of…[Defendant’s expert’s] recitation that it is
desirable, in an array survey, to replicate actual market conditions… [Defendant’s
expert] admitted that the product displays that…[were] used were quite different
from the actual marketplace…
…
…In a survey which tests the likelihood of confusion, a control is used “to
determine the noise--the inherent confusion in the market which exists
independently of and thus is not caused by confusion between the products being
tested.”…
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242, 253-254 (S.D.N.Y. 1999)
In the first confusion study submitted by [Plaintiff]...[a]pproximately 24
percent of those surveyed identified the pre-launch ROMANCE bottle as
ETERNITY or as a Calvin Klein product...Despite this result, the survey’s
probative value is quite limited given: (1) the survey’s universe, (2) the survey’s
stimulus, and (3) the survey’s presentation of the stimulus and control bottles.
...The universe tested by [Plaintiff’s] expert...was flawed and led to
skewed results for several reasons: (1) it excluded all men and women over the
age of forty-five who represent a substantial portion of the total universe of the
products’ potential consumers;...(2) it included past purchasers who were not
necessarily future potential purchasers;...and (3) it failed to properly discriminate
between purchasers of “prestige fragrance” brands as opposed to those who
purchase just any fragrance...
To have substantial probative value, a survey...must also be designed to
examine the impression presented to the consumer by the accused product...The
ROMANCE bottle shown to the survey’s respondents was the “pre-launch
bottle,” not the one consumers would eventually see with a collar label that reads
“RALPH LAUREN ROMANCE.”...
158
Similarly, [Plaintiff’s] presentation of the various stimuli and
controls,...including the accused bottle, failed to properly replicate marketplace
conditions in which the respondents would encounter the products...[Plaintiff], in
an effort to present the accused product in its proper marketplace context, should
have, at the very least, presented to the participants, the various fragrance bottles
with their respective boxes...
Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296, 306 (S.D.N.Y. 1999)
Finally, [Defendant] also asks for $20,600 for consumer survey costs...
While other courts have disallowed the reimbursement of consumer survey costs,
this Court will permit them. See Simon & Schuster, Inc. v. Dove Audio, Inc., 970
F. Supp. 279, 302 (S.D.N.Y. 1997); Imagineering, Inc. v. Van Klassens, Inc., 851
F. Supp. 532, 540; Gillette Co. v. Wilkinson Sword, Inc., No. 89-CV-3586, 1992
WL 30938, at *10 (S.D.N.Y. Feb.3, 1992). In Simon & Schuster, the court
highlighted that “plaintiffs [did] not demonstrate that they [were] entitled to
recover the costs of conducting their consumer survey” and that the survey was
“minimally probative.” 970 F. Supp. at 302, n. 23. In Imagineering, of the two
surveys plaintiffs prepared, the court excluded one from trial while plaintiffs did
not introduce the other. 851 F. Supp. at 539. Here, this Court accepted consumer
surveys from both parties and found them to be informative and helpful in the
advancement of their claims. This Court also relied on the presented surveys in
adjudicating this case and specifically stated that “the market surveys entered into
evidence suggest actual confusion.” Unger, 14 F. Supp. 2d at 356. Thus, this
Court authorizes the recovery of [Defendant’s] consumer costs.
Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212, 221, 222 & nn.20 & 21
(S.D.N.Y. 1999)
[Plaintiff] commissioned...[an expert] to conduct a post-sale confusion
survey. [Plaintiff’s expert] concluded that there was a strong association between
the Kelly bag design and its source (as well as a high probability of confusion
between defendants’ and [Plaintiff’s bags)...According to [Plaintiff’s expert], 70%
of the 47 respondents who were shown [Defendants’] Kelly bag (as carried by a
woman walking at a distance of four feet) identified [Plaintiff] as the
manufacturer...45% of the respondents who identified [Plaintiff] as the source of
the [Defendant] knock-off, explicitly and voluntarily mentioned the Kelly name…
n.20...[Plaintiff’s expert] used Coach and Ferragamo bags as controls.
These bags were mistaken for [Plaintiff’s] bags by only 9% of respondents. Only
4% of the respondents correctly identified [Defendant] as the maker...
…Defendants criticize the accuracy of the survey results on several
grounds, including the suggestibility of the survey and that...[Plaintiff’s expert]
incorrectly interpreted some responses…
n.21…Respondents were intercepted randomly on East 57th Street in
Manhattan (the [Plaintiff’s] boutique also happens to be located on East 57th
159
Street)...Eligible respondents were then invited to tea in a private room at the Four
Seasons Hotel and given $150 for their participation in the 15 minute survey...
While the...[Plaintiff’s] survey may not be reliable, a properly conducted
survey might result in some evidence of single source identification. Defendants’
failure to offer its own consumer study supporting its argument that [Plaintiff’s]
designs are generic weakens their abandonment defense...
Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827, 829 (8th Cir. 1999)
By contrast...[Defendant’s] marketing and consumer research expert,
declared [Plaintiff’s] survey biased and invalid... Despite these criticisms,
however, [Defendant’s expert] offered no opinion about the likelihood of
confusion or possible association between Lean Cuisine and Michelina’s Lean ‘N
Tasty. Additionally, although [Defendant’s expert] advocated conducting a
competent survey, [Defendant] did not retain either [its expert] or another expert
to do so...
Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690, 699-700 (S.D.N.Y. 1999)
...The results of plaintiffs’ study indicate a 14% level of confusion
between the products...
...The court finds that plaintiffs’ methodology was flawed because its
study was not targeted to the specific question of confusion between “Ice
Breakers” and “Dentyne Ice.” Plaintiffs’ study used advertisements of the
products, instead of the actual products, which could have lead to unreliable
results. Both “Ice Breakers” and “Dentyne Ice” use similar advertising themes
that play off the cool, breath freshening qualities of their gums. Plaintiffs’ study
did not control for this unintended consequence...
Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 570, 572, 578 (E.D.N.Y. 1999)
To establish likelihood of consumer confusion, plaintiff relies on...three
consumer surveys...
...
...the court finds the studies flawed and the survey results untrustworthy
and unreliable.
First, ...[Plaintiff’s expert] selected a universe for the surveys that was
over- inclusive. The survey universe for all three studies was defined as “users or
buyers of sugar substitutes within the past six months.”...
...[Plaintiff’s expert] says that past users are good proxies for future
purchasers. This may be true for some products. But in the case of sweeteners,
the assumption is... questionable. Plaintiff’s...and... defendant’s...packets are
available at most diners and coffee shops and many restaurants. A high
percentage of past users of sugar-substitutes may never have purchased sugar
substitutes and have no intention to do so in the future...
160
It was also improper to use all past “sugar-substitute” users without
distinguishing between saccharin and aspartame users. As noted earlier, there is
little overlap between saccharin and aspartame users. Despite EQUAL’s instant
success upon introduction in 1982, Sweet’N Low sales remained relatively stable
because demand for EQUAL came almost entirely from people who had
previously never used sweeteners. Thus, past users of saccharin are unlikely to be
potential purchasers of aspartame sweeteners and vice versa.
In addition,...[Plaintiff’s expert’s] choice of so-called “controls” in the
first two surveys was inappropriate. Given the unreliability of his controls, a
sounder analytical approach was to review the reasons respondents gave for
thinking that NutraSweet was made by the same company that made NatraTaste
and to disregard the people who said they were confused for reasons unrelated to
trade dress...The third survey was flawed because, among other reasons, it failed
to resemble actual market conditions. The leading nature of the questions asked
and the lack of instructions against guessing flawed all three surveys.
...
...[Plaintiff’s expert] conducted a third survey to assess the likelihood of
confusion...Respondents were shown a Sweetmate package from a distance of
three feet and not allowed to handle the box or to view it from a closer distance.
Then the package was removed from view.
...
...In an actual market situation, the product would not disappear from the
consumer’s eye just as he or she is about to make a purchase. Given the
prominence of the name Sweetmate on its trade dress, it is highly unlikely that
customers would think that the name of the product is “Sweet’N Low.” Question
one was essentially a memory test.
IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815, 829-830 (E.D. Va. 1998)
First, the defendants assert that the survey results were not validated by a
third party and therefore the survey is unreliable. That fact, however, does not
affect the reliability of the survey because the method of validation did not violate
industry practice...
Second, the defendants argue that the survey is unreliable because the
interviewers were not professionals in the survey field. That argument fails
because industry practice does not prohibit the use of non-professional
interviewers...
Third, the defendants contend that the survey is invalid because it was
conducted with reference to an inappropriate universe of survey
participants...[T]he Court concludes that the limited universe of survey
participants does not render the survey completely invalid. However, the failure to
include in the survey persons who are in the market for both products rather
seriously undercuts the credibility of the survey because it excludes those most
likely to be aware that BAILEYS liqueurs are not made by a tobacco
manufacturer. By excluding persons in the market for both kinds of products
(tobacco and liqueur cordials), the survey contained a built in bias...
161
Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013, 1040-1042 (C.D. Cal. 1998)
...defendants have presented the results of double-blind telephone
survey...[in which] only 6.9% of respondents [indicated any level of a likelihood
of confusion]...Consequently, defendants’ survey suggests that there is little
likelihood of confusion.
...
...the survey ultimately provides useful evidence regarding whether
plaintiffs have a fair chance of success in proving that defendants’ advertisements
are likely to confuse consumers as to the source or endorsement by plaintiffs of
defendants’ products.
...plaintiffs have not submitted survey results, despite the opportunity to
conduct such research both before seeking injunctive relief and before the
continued hearing on the pending motion...[Plaintiff’s] failure to do so
undermines their position that the advertisements at issue are likely to confuse
consumers as to plaintiffs’ endorsement.
The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775, 792-793 (D. N.J. 1998)
It is Professor McCarthy’s opinion that surveys are not helpful on the issue
of confusion in the present case which concerns primarily reverse confusion. In a
situation where the junior user (Citigroup) has not yet commenced massive use of
its name and there has been no advertising or promotion of products and services
under that name reverse confusion cannot be measured because the triggering
event of market place saturation has not yet occurred.
While this observation may be generally correct, it is not totally correct in
the present case. The overwhelmingly dominant feature of Citicorp’s new mark,
CITIGROUP, is CITI. That name alone and in combination with other names has
saturated the market for many years without overwhelming The CIT Group
name...
...Thus in the present case the survey evidence may be helpful in
determining the likelihood of reverse confusion. It is unnecessary to decide
whether it alone would be sufficient, because weighing the other factors led to the
conclusion that adoption of the Citigroup name will cause neither forward nor
reverse confusion in the market place.
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 544 & n.10 (5th Cir. 1998)
...[Defendant] argues that the survey was flawed because, by relying upon
“permission,” it created the possibility that those surveyed believed that
permission was required, thereby skewing the result. But the survey asked
whether [Defendant] “did get” or “did not get” permission to use the Plaintiffs’
marks or to copy the Plaintiffs’ golf holes. This question asks what message
[Defendant’s] use of the Plaintiffs’ marks and trade dress conveyed, rather than
whether [Defendant] needed to get permission, which would focus on what those
162
surveyed believed to be required. Although this latter form is more problematic
because it allows for the consumer’s misunderstanding of the law...
n.10...the district court did not err in relying upon the Plaintiffs’ survey
asking whether permission was obtained. However, we note that “approval” is a
word with an easily understood everyday meaning that could have been used just
as easily in the survey or in questions asked of the witnesses. We do not hold
here that the unfettered use of “permission,” rather than “approval” or other less
ambiguous language, is always acceptable, and we caution litigants to consider
the language of the survey and questions so that the consumer’s belief that
permission is required does not skew the results of the survey, thus decreasing its
probative value...
Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1120, 1133-1134 (C.D. Cal. 1998)
Flaws in survey given to consumers in shopping malls, allegedly showing
confusion over song that parodied fashion doll, went to survey’s weight, rather
than its admissibility in toy manufacturer’s trademark infringement action; flaws
included use of leading questions and absence of control group.
...
The...[Plaintiff’s] survey includes a number of questions that Circuits
courts have found to be inherently leading or biased and therefore should be given
little if any weight as evidence of actual confusion...
...
It is unclear from the results of this question...[“3. Who or what company,
if any, do you think is connected with or gave permission for the music video and
CD (the music CD) you just saw?”]...how many individuals who answered Mattel
thought the company was “connected” with the song and how many thought the
company gave its permission. The use of the term “connected with” is not
relevant in the context of parody, as parodies evoke the object that they are
poking fun of and therefore...are often linked or connected to that object in the
public’s mind...
Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914, *25, *26 n.6
(N.D. Ill. 1998)
...[Plaintiff’s expert] also conducted tests of post-sale confusion...In his
post-sale confusion test, [Plaintiff’s expert] removed the Laura Leather hang tags
from the handbags and allowed the respondents to view, but not touch the
bags...then followed the same procedure with the Kenneth Cole handbags
[control]...After showing these sets of handbags to the respondents,...[Plaintiff’s
survey] asked who respondents believed to have manufactured the handbags.
...
n.6...[Plaintiff’s expert] also conducted a point-of-sale confusion test, in
which respondents were shown the Laura Leather and Kenneth Cole handbags
with the Laura Leather and Kenneth Cole hang tags still attached and were
163
permitted to touch and feel the bags and to look inside them at the names
embossed therein...
Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705, 1715 (N.D. Ill. 1998)
...[Plaintiff] claims that showing the picture of the Hoover
WINDTUNNEL alone to respondents, after taking away the portfolio showing a
variety of vacuums, unfairly focused the respondents’ attention on Hoover.
Certainly for the question about who manufactures the Hoover
WINDTUNNEL, there is no bias in showing a picture of the WINDTUNNEL
with the “by Hoover” featured on the vacuum. This indication of source is
displayed on the vacuum and on the box of the vacuum, so consumers are
exposed in a similar manner as the survey respondents...
...
[Plaintiff] also objects that the question about connection or association is
incomplete, as it fails to address whether the respondents might have believed that
there was an “affiliation” between [Defendant’s WINDTUNNEL vacuum] and
[Plaintiff] or that [Plaintiff] was involved in “sponsorship” or “approval” of
[Defendant’s] WINDTUNNEL vacuum. While [Plaintiff] is correct that
[Defendant’s] survey did not inquire as to all of the terms in 15 U.S.C. Section
1125, the questions about two of them, “connection” and “association,” yield
probative results...The terms “connection” and “association” are sufficiently
broad that, outside the hypertechnical readings of zealous attorneys, they are
likely to reveal whether the respondents believe there is any relationship between
[Plaintiff] and [Defendant].
Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 357 n.16 (S.D.N.Y. 1998)
n.16 [Plaintiffs’] confusion survey demonstrated confusion among
consumers in that it found that 49% of telephone respondents answered
affirmatively when asked whether they had heard of Return...Twenty-five of those
respondents said they had seen Return while 40% either described Bridge or said
Return was a sequel to Bridge...Defendants’ experts’ surveys indicated that
consumer confusion was only approximately 7.3%,...a level that Defendants
contend is too minimal to support a finding of a likelihood of confusion.
However, Defendants’ contention ignores case law that has held otherwise. See
Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F.
Supp. 707, 716 (S.D.N.Y. 1973), aff’d, 523 F.2d 1331 (2d Cir. 1975) (holding
that a confusion level of 7.7% was sufficient to support a finding of a likelihood
of confusion).
Westchester Media Co. L.P., et al. v. PRL USA Holdings, Inc., et al., 1998 U.S. Dist. LEXIS
11737, *14 (S.D. Tex. 1998)
The Court finds merit in [Plaintiff’s] objections to the format of the
questions, and concludes that the...[Plaintiff’s] survey did little more than “allow
164
the respondents to advise whether, upon viewing the magazine, it brought
anything else to mind.” Such surveys “are given little weight” because they do
not adequately account for responses that are attributable only to the word at
issue...[W]ithout pertinent follow-up [e.g., Why do you say that?] inquiries or
preliminary questions, the court has little guidance as to exactly what the
respondents were reacting to...
Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919, 930 n.14 (D. Minn. 1998)
n.14. Defendants also point to [Plaintiff’s expert’s] failure to survey
Midwest consumers, and failure to use third party products as a control.
Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073,
1080-1081 (Fed. Cir. 1998)
...The district court found that the relevant consumer base was wholesale
purchasers of empty bottles without lids or labels...the district court noted, the
wholesale purchasers may be characterized as sophisticated buyers...
[Plaintiff] argues that [Plaintiff’s] relevant market includes the ultimate
retail consumer...
The district court properly rejected this data on the basis that these
consumers are buying juice, not plastic bottles...“the proper inquiry centers on the
confusion of consumers in the market for the particular product at issue.”...
165
FALSE ADVERTISING SURVEYS
Groupe Seb USA, Inc. v. Euro-Pro Operating LLC, 2014 U.S. Dist. LEXIS 75163, *7
(W.D. Pa. 2014)
...[B]ecause the Court determined that the statements at issue are
literally false, it was “not required to evaluate the advertisements’ impact
on the buying public, and to the extent it discounted or disregarded
[Defendant’s] consumer survey evidence, that decision was proper”...
Mobileye, Inc. v. Picitup Corp., 928 F. Supp. 2d 759, 777 (2d Cir. 2013)
However, upon closer review of the Comparative Ads Survey —
which, on summary judgment, the Court must view in the light most
favorable to [Plaintiff] — it appears that the statement “Similar systems in
luxury cars cost more than $1,000 while [Defendant’s app] is FREE” leads
9.2 percent of consumers to believe that the overall performance of the
[Defendant’s] app is equal to or better than that of similar systems in
luxury cars. Moreover, as [Defendant’s] counsel conceded at oral
argument, neither Proctor & Gamble nor any other case recognizes any
hard threshold for what constitutes the requisite substantial percentage of
consumers who must be mislead...Ultimately, while 9.2 percent is not
overwhelming, the Court cannot conclude that it is insubstantial as a
matter of law. Based on the Comparative Ads Survey, a reasonable jury
could find that the comparison's between [Defendant’s] app and similar
systems in luxury vehicles are impliedly false and mislead a substantial
percentage of consumers.
Merck Eprova AG v. Brookstone Pharmaceuticals, 920 F. Supp. 2d 404, 418-419 (2d
Cir.2013)
Although [Plaintiff] has not demonstrated that [Defendant’s] labels
are literally false, it may still succeed on its Lanham Act false advertising
claim on an implied falsity theory...
...
...[Plaintiff] conducted two surveys to assess confusion among
pharmacists and physicians. The first...attempted to determine whether the
designation “L-methylfolate” conveyed to pharmacists and physicians that
Xolafin is made up of the “substantially pure isomer”...The second,
designed by [Plaintiff’s second expert], a pharmacist and pharmacy expert,
attempted to assess product substitutions by pharmacists.
...[Plaintiff’s expert] showed participants [Defendant’s] labels and
package inserts and asked questions to determine what the term “Lmethylfolate” on those labels and inserts communicated to them...Both the
pharmacist group and the physician group had a Test Group and a Control
Group...
166
...
Although [Defendant] attempts to poke holes in these surveys...the
Court nonetheless finds them to be sufficiently reliable. Both surveys used
adequate control groups, which “enable(d) the surveyor(s) to separate the
wheat (the effect of the advertisement, alone, on the participant) from the
chaff (the effect of the participant’s prior knowledge and/or prior
(mis)conceptions)”...Considering that 21% of the pharmacists and 11% of
the physicians surveyed in [Plaintiff’s first survey]...and even larger
numbers of pharmacists in [Plaintiff’s second survey]...believed that
Xolafin was the pure L-isomer, the Court has little difficulty concluding
that the surveys demonstrate that “a substantial percentage of consumers
are taking away the message that the plaintiff contends the advertising is
conveying”...
Millennium Laboratories, Inc. v. Ameritox, Ltd., 924 F. Supp. 2d 594, 600 (Md. 2013)
... After carefully reviewing [the surveys], the Court had
reservations about their validity and reliability...Significantly, both
surveys lacked any meaningful form of control...
...
To test its preliminary views, the Court engaged [an independent
expert] to serve as a technical advisor...After independently reviewing the
surveys, [the independent expert] opined that they were fatally flawed,
primarily because of the absence of proper controls...Based on its
independent evaluation of the surveys, which included [the independent
expert’s] input, the Court excluded both for failing to meet the standards
for admissibility articulated in Federal Rule of Evidence 702...
page
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 2012 U.S. Dist. LEXIS 126976, *8-*9
(E.D. Cal. 2012)
At the August 8, 2012 hearing, the Court granted [Plaintiff’s]
motion to exclude evidence of a survey conducted by [Defendant’s expert]
which was done to test...the use of Muscle Milk on a product that contains
no milk causes consumers to mistakenly believe that the product contains
milk...
The [Defendant’s expert’s] survey was a series of three questions
where respondents were presented three brand names without
accompanying trade dress or images of the products: Muscle Milk,
ProMan-X, and Lean Body. They were then asked if each product
contained a lot, some, or no protein, creatine, and milk. Consumers did not
have an “I don't know” option or another means to indicate lack of
knowledge. Lean Body and Muscle Milk are protein drinks, ProMan-X is
a herbal male enhancement supplement. The respondent’s answers
indicate that a high level of guessing occurred. For instance, for ProManX, 98% said it contains protein, 92% creatine, and 68% milk. ProMan-X
167
does not contain any of these ingredients. For Muscle Milk, 80%
responded that it contained milk. [Defendant’s expert] admitted in his
deposition that respondents were guessing...
[Plaintiff] cites two cases to support its contention that the
[Defendant’s expert’s] survey was not conducted according to accepted
principles...[Defendant] responds with general arguments about the
adequacy of the survey, but cites no authority that shows that the methods
used by [Defendant’s expert] are generally acceptable. [Defendant] bears
the burden of showing the admissibility of its survey...and it has not met
its burden. Accordingly, the [Defendant’s expert’s] survey is excluded.
Milso Indus. Corp. v. Edward C. Nazzaro, 2012 U.S. Dist. LEXIS 123999, *60-*65 (D.
Conn. 2012)
“(T)he success of a plaintiff’s implied falsity claim usually turns
on the persuasiveness of a consumer survey.”...
The plaintiff contends that “[Plaintiff’s expert’s] Report
conclusively demonstrates that omission of the words ‘Made in China’
from [Defendants’] lithographs is materially misleading to consumers with
a deception rate significantly higher than 20%...
The [Plaintiff’s expert’s] Report explains how the study was
designed:
...
The experiment was composed of two Cells.
200 respondents were assigned at random to Cell 1
and 200 to Cell 2.
Respondents in Cell 1 were shown a booklet
containing three lithographs of Liberty caskets and a
booklet containing three lithographs of Matthews caskets.
The Liberty lithographs did not designate the caskets as
being made in China. Respondents were then asked which
casket (out of the six shown to them) would be their first,
second, and third choices to buy (if they had a preference or
preferences at all).
Respondents in Cell 2 were also shown a booklet
containing three lithographs of Liberty caskets and a
booklet containing three lithographs of Matthews caskets.
The Matthews booklet was identical to the booklet shown
to Cell 1. The Liberty booklet was the same as the one
shown to Cell 1 except that the lithographs were changed to
indicate that the Liberty caskets are “Made in China.”
Respondents were then asked the identical question as in
Cell 1 - which casket (out of the six shown to them) would
be their first, second, and third choices to buy (if they had a
preference or preferences at all).
168
...The “Summary of Key Findings and Opinions” includes five findings
and opinions. The final finding and opinion is: “5) Based on the survey
results, it is my opinion to a high degree of professional certainty that the
information that a Liberty casket is made in China is material to
consumers and that the omission of such information is misleading to
consumers.”...
Although [Plaintiff’s expert’s] survey would support a conclusion
that information that a casket is made in China is material to consumers, it
does not support a conclusion that the omission of such information from
Liberty’s advertising and promotional materials renders them impliedly
false. No part of [Plaintiff’s expert’s] survey focused on Liberty’s
advertising and promotional materials and whether they suggest that
Liberty’s caskets are manufactured domestically. Nor for that matter did
any part of the study focus on advertising and promotional materials in
general to determine what characteristics of such materials, if any, would
suggest to consumers that a product is manufactured domestically. Rather,
the [Plaintiff’s expert’s] Report draws an inference that because
information that a casket is made in China is material to consumers, the
omission of such information is misleading to consumers, which is a
conclusion that would apply to the promotional materials of any company
in the industry. However, [Plaintiff’s] claim here is not that omission from
a casket manufacturer’s advertising and promotional materials of the fact
that a casket is made in China renders them impliedly false, and for that
reason Liberty’s advertising and promotional materials violate the Lanham
Act, but rather that Liberty’s pervasive use of American iconography,
including the name of the company and its logo, requires disclosure of the
fact that its caskets are manufactured in China in order for Liberty’s
advertising and promotional materials not to be implicitly false.
In addition, the mere fact that information that was material to
consumers was omitted in advertising and promotional materials is not
enough to support a claim under the Lanham Act in light of the fact that
“the Lanham Act ‘impos(es) no affirmative duty of disclosure.’”...
Therefore, the defendants’ motion for summary judgment on the
plaintiff’s claim for impliedly false advertising in violation of the Lanham
Act is being granted, and the plaintiff’s motion is being denied.
Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc., 829 F. Supp. 2d 802, 814 (D.
Minn. 2011)
[Plaintiff] also has the report and testimony of its expert [who]
conducted a consumer study, in which nearly half of the participants were
shown the image and description of a [Defendant’s] product as it appears
in advertisements and packaging. The remaining participants were shown
an allegedly “accurate” image (along with the same description) of the
[Defendant’s] product. Both groups were also shown images and
descriptions of three other products, including [a Plaintiff’s] product. After
169
reviewing all four products, participants indicated their first, second, third,
and fourth choice and explained the reasons for their decisions. The results
showed that in the group shown the advertised image, 69% would have
selected the [Defendant’s] product as their first choice and 10% would
have selected the [Plaintiff’s] product as their first choice. In the group
shown the allegedly “accurate” image, 25% would have selected the
[Defendant’s] product as their first choice and 28% would have selected
the [Plaintiff’s] product as their first choice. [Plaintiff’s expert] concluded
that the use of the allegedly “accurate” image had a material impact on
consumers’ decisions to purchase the [Defendant’s] product. Further, more
consumers would have chosen the [Plaintiff’s] product had it not been for
[Defendant’s] allegedly false advertising. As discussed below, the Court
finds [Plaintiff’s expert’s] testimony to be both relevant and reliable...The
results of [Plaintiff’s expert’s] study can reasonably provide circumstantial
evidence of materiality with respect to the other [Defendant’s] products
that were not included in this study. Therefore, taking the evidence in the
light most favorable to [Plaintiff], there is sufficient evidence of
materiality so as to avoid summary judgment.
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879, *14-15 ,
*17 (N.D. Ill. 2010)
[Plaintiff] next contends that the Court should exclude
[Defendant’s expert’s] opinions because courts typically do not rely on
surveys to show that a challenged advertisement is not material in a
Lanham Act case…
…
…In rejecting this argument, however, the Seventh Circuit did not
-- as [Plaintiff] argues -- hold that as a matter of law a party cannot submit
surveys to refute materiality in these cases…
Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176, *27-*28
(W.D. Wash. 2010)
False statements in an advertisement are material if they are likely
to influence the purchasing decision...[Plaintiff’s expert’s] report indicates
that relevant consumers were influenced by weight claims standing alone
and that stiffness, stiffness-to-weight ratio, and weight are the first,
second, and fourth most important characteristics consumers consider
when purchasing a crankset. This is sufficient for a finding of materiality.
Additionally, a plaintiff may establish materiality by showing that
advertisements misrepresent an “inherent quality or characteristic” of the
product...Weight and stiffness-to-weight ratio are important and inherent
qualities of cranksets. Accordingly, a jury could conclude that the false
statements were material.
170
Schering-Plough v. Neutrogena, 702 F.Supp.2d 266, 275 & n.10 (D.Del. 2010)
[Plaintiff’s expert’s] testimony was brief and summary-level, and the
details of [Plaintiff’s expert’s] methodologies are not readily apparent from
his testimony or plaintiff's briefing. [Plaintiff’s expert] testified that the
methodology he used is contained in his expert report, however, the report
was admitted into evidence with all of the narrative sections redacted. [n.10
Apparently, plaintiff redacted all of the text preceding the “results” portion
of [Plaintiff’s expert’s] report in response to an objection by defendant prior
to trial.] The court declines to accept [Plaintiff’s expert’s] testimony on this
record and, therefore, finds that plaintiff has not met its burden to prove
actual consumer deception.
Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F.Supp.2d 238, 247, 250-251, 253
(D. Del. 2010)
In its papers, plaintiff argues that defendant’s use of the name
“Havana Club” is misleading…Plaintiff’s case is built around testimony
regarding a survey taken by its expert...As explained by [Plaintiff’s expert]
at trial, this survey purports to establish that defendant’s use of “Havana”
in the Havana Club name deceives a significant number of likely rum
purchasers into believing that defendant’s rum is made in Cuba…
…
An ad that is truthful on its face cannot be proven to be misleading
by surveying customers…As the Seventh Circuit has explained, survey
research does not determine the meaning of words or “set the standard to
which objectively verifiable claims must be held.” Mead Johnson...
[I]nterpreting “misleading” to include factual propositions
that are susceptible to misunderstanding would make
consumers as a whole worse off by suppressing truthful
statements that will help many of them find superior
products. A “misunderstood” statement is not the same as
one designed to mislead. Reducing ads and packaging to
meaningless puffery can’t be the objective of the Lanham
Act -- though it is a logical (and likely) outcome of
[plaintiff’s] approach, given the normal level of confusion
and misunderstanding reflected in consumer surveys.
…The Havana Club label clearly and truthfully provides the origin of
defendant’s rum, and is not deceptive…
…
…The court concludes that defendant's Havana Club rum has a
Cuban heritage; defendant's Havana Club rum labels truthfully (and
prominently) provide the geographic location of the product's manufacture
(Puerto Rico); and the labeling, therefore, is neither false nor misleading…
171
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404, *12
(E.D. Va. 2010)
To prove implied falsity with a consumer survey, the survey must
address the critical question in the case...Here, [Defendant] alleges that the
“compare to” claim impliedly communicates the message that [Plaintiff’s]
formulas is “identical in composition” to [Defendant’s] formulas.
Testimony at trial showed that the ingredients of the parties’ products are
very similar, but not identical, and that it is likely that the nutritional value
of the parties’ products is nearly the same. In that context, the critical
question is whether consumers understand the “compare to” language to
make the claim that the formulas are indeed “identical,” not whether the
ingredients are nearly the same, substantially the same, or any other
gradation one could create. Despite that focus, [Defendant’s expert’s]
surveys never used the word “identical” nor did the surveys probe what
respondents may have meant when they said the products were the
“same.” Instead, [Defendant’s expert] assumed that respondents who
believed the parties’ products had all of the same ingredients would have
selected “the same,” while respondents who believed the products had
some or even most of the same ingredients would have selected
“different.” For example, [Defendant’s expert] admitted that respondents
who thought that ninety-five percent of the ingredients were the same
could have chosen to say “same”—and, in [Defendant’s expert’s] view,
would have meant “identical.”...That assumption, however is not
warranted. By failing to account for the specific allegations in this case
and consider obvious alternative explanations for the results, the surveys
cannot provide the required evidence needed to prove implied falsity. And,
without that evidence, [Defendant] cannot prevail on its Lanham Act
claim...
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357, *33, *3542 (N.D. Ill. 2009)
To obtain a representative sample, [Plaintiff’s expert] conducted a
double-blind, “mall-intercept” survey in 12 separate metropolitan markets
representing each census region…The interviewers applied a pre-planned
quota screening procedure designed to obtain a sample population roughly
equivalent to male and female age groups based on the United States
census…Each sample group--the test group and the control group-targeted 200 respondents, for a total sample population of 400
respondents…In practice, interviewers completed a total of 440
interviews…Each sample group met the same screening criteria and
answered the same questionnaire…
The study questionnaire asked both open-ended and closed-ended
questions…
172
…
Focusing on the questionnaire and visual exhibits, [Defendant]
criticizes the [Plaintiff’s expert’s] study as leading and unreliable on three
grounds. First, [Defendant] contends that the survey ignores the results of
open-ended questions--questions that required respondents to answer in
their own words…Second, [Defendant] argues that [Plaintiff’s expert]
improperly bases his opinion solely on the result of the closed-ended
question at the end of the survey, despite the lack of a filter question to
screen out respondents who received no message from the
commercial…Third, [Defendant] contends that the “control” commercial
employed by [Plaintiff’s expert] was too different from the “test”
commercial to eliminate “noise” from the survey results…
To begin with, [Defendant] contends that open-ended questions are
the “most probative evidence of any messages communicated by
advertising,” and thus [Plaintiff’s expert] erred in failing to base his
opinion on responses to these questions…The precedent cited by
[Defendant], however, does not support uncritical acceptance of answers
to open-ended questions…
Open-ended and closed-ended questions serve different purposes
and generally elicit different responses…Properly-drafted closed-ended,
multiple choice questions are not inherently leading simply because they
provide respondents with an explicit set of responses from which to
choose—“closed-ended questions may remind respondents of options that
they would not otherwise consider or which simply do not come to mind
as easily.”…Thus, a non-leading closed-ended question is not improper
merely because it explicitly provides respondents with a set of responses
from which to choose--particularly where as here, the question allows
respondents the option of choosing “don’t know/not sure,” in case they do
not agree with any of the provided choices…(…this Court finds it
reasonable in the context of the present case to rely on unbiased, closedended questions when adjudicating a false advertising claim.”)…
Given that the universe surveyed--consumers of home laundry
appliances--does not necessarily make appliance purchasing decisions
impetuously, the closed-ended question may provide relevant information
beyond what first pops into the minds of respondents. The jury thus will
be free to weigh the utility, if any, of the closed-ended question along with
the open-ended question and the survey as a whole. Given the facts in this
case, the mere existence of the closed-ended question does not render the
survey inadmissible. Similarly, given that the purpose of a filter question
is to reduce guessing…the Court rejects [Defendant’s] criticism of the lack
of filter questions--the [Plaintiff’s expert’s] Study’s use of “don't know” in
the close-ended question sufficiently mitigates this concern to permit
admission of the survey.
[Defendant] also takes issue with the control advertisement
employed by [Plaintiff’s expert]. In particular, [Defendant] contents [sic]
that, rather than editing the test commercial, the [Plaintiff’s expert’s]
173
Study improperly used as a control another commercial for [Defendant’s]
Duet Steam Washer and Dryer. The purpose of a control is to eliminate
“noise”--to reduce the impact of respondents’ preexisting impressions on
their answers and focus the survey on the proposition the study is designed
to test…To be relevant, a proper control should be similar to the test group
and:
share as many characteristics with the experimental stimulus as
possible, with the key exception of the characteristic whose influence is being
assessed. A survey with an imperfect control group generally provides better
information than no control group at all, but the choice of the specific control
group requires some care and should influence the weight that the survey
receives.
…Although the [Plaintiff’s expert’s] Study’s control commercial used
different imagery, the commercial aired contemporaneously with the test
commercial and otherwise covered the same [Defendant’s] product that
the test commercial addressed…
In sum, [Defendant’s] criticism addresses the weight of the
[Plaintiff’s expert’s] Study, rather than its admissibility…The court thus
denies [Defendant’s] motion to exclude [Plaintiff’s expert’s] testimony…
Rexall Sundown, Inc. v. Perrigo Co., 651 F. Supp. 2d 9, 36-37, 39 (E.D.N.Y. 2009)
It is well settled that, when a plaintiff is seeking to proceed on a
claim of implied falsity, “a plaintiff must demonstrate, by extrinsic
evidence, that the challenged commercials tend to mislead or confuse
consumers.”…
[Defendant] argues that the NAD and National Advertising Review
Board (“NARB”) decisions, themselves, constitute extrinsic evidence that
the statements are misleading. The Court finds this argument
unpersuasive. The Second Circuit has clearly stated that the purpose of
extrinsic evidence that a statement is misleading to consumers is largely to
avoid having “the judge determine, based solely upon his or her own
intuitive reaction, whether the advertisement is deceptive…”...Simply
substituting the findings of the NAD and NARB decision-makers for that
of the district judge would not be consistent with the Second Circuit’s
guidance. Moreover, the NAD and NARB decisions make no finding of
consumer deception, nor do they make a finding of a likelihood of
consumer deception…to the extent [Defendant] is attempting to rely upon
such findings for the truth of the matter asserted, [Defendant] has failed to
explain how the NAD and NARB decisions could even be admitted under
the Rules of Evidence. These findings, like judicial findings, are generally
characterized as inadmissible hearsay that cannot be used to prove the
truth of the matter asserted…Finally, [Defendant] has been unable to point
to any case in the United States, either in its brief or at oral argument,
where NAD and NARB findings have been found to constitute admissible
extrinsic evidence that could support an implied falsity claim…cases that
174
have found sufficient evidence of consumer deception have relied upon
surveys of potential consumers or evidence provided by consumers who
were actually misled. Although the use of other extrinsic evidence of
likely consumer deception is not foreclosed, defendant has put forth no
such admissible evidence…
…
To survive [Plaintiff’s] motion for summary judgment with respect
to Claim 5, [Defendant] must show that the statement is material.
[Plaintiff] argues that the [Defendant’s expert’s] survey “confirms that
there is no statistically significant difference in the levels of purchase
interest manifested by respondents exposed to an altered version of
[Plaintiff’s product’s] packaging including Statement 5 and respondents
exposed to a similar stimulus from which that Statement was
deleted.”…[Plaintiff] thus argues that the “survey therefore establishes
beyond any doubt that, in fact, [Plaintiff’s] Advertising Statement 5 is not
likely to influence consumer purchasing decisions…
The Court finds this argument to be unpersuasive…Although the
survey concluded that consumers who saw the claim were not statistically
significantly more likely to express interest in purchasing [Plaintiff’s
product], the survey’s inability to find evidence that any confusion
influenced the purchasing decision does not require a finding of
immateriality as a matter of law. In other words, the fact that a portion of
the survey may undermine [Defendant’s] position regarding materiality
does not mean that materiality cannot be proven by other means. Unlike
on the issue of consumer confusion, materiality need not be proven by
extrinsic evidence such as consumer surveys. Moreover, as noted in
connection with [Plaintiff’s] claim, materiality may be proven by showing
that the misrepresentation related to an inherent characteristic of the
product…
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384, 445-448, 452454 (D. N.J. 2009)
…During trial, [Plaintiff’s expert] testified regarding a survey that
he conducted to determine physicians’ perceptions of [Defendant’s]
website advertising…A total of 80 radiologists and 30 interventional
cardiologists were interviewed and the survey referenced re-created web
pages from the Visipaque portion of [Defendant’s] website…
…The Court notes at the outset that [Plaintiff’s expert’s] survey is
replete with problems that undermine the survey’s reliability…To state a
few, the survey: (1) failed to identify the correct survey population by not
asking survey respondents whether they were in any way responsible for
the purchase of contrast media; (2) failed to use an adequate control
mechanism to determine whether the respondents may have had
preexisting or predominant views prior to viewing the advertisements that
175
may have affected their decision; and (3) failed to correctly characterize
certain statements made to the survey participants…
Initially, the Court strikes [Plaintiff’s expert’s] survey as it pertains
to the 30 interventional cardiologists interviewed. This is based on the fact
that the web pages re-created…for the survey administered to the 30
interventional cardiologists were never produced at trial, nor were their
contents testified to by a witness with personal knowledge. [Plaintiff’s
expert] testified that he never saw the web pages that were re-created and
used for the survey and neither counsel nor [Plaintiff’s expert] were able
to produce the original email from [Plaintiff’s expert] which allegedly
contained the web pages used in the survey…
The Court also finds that [Plaintiff’s expert’s] survey with regard
to the 80 radiologists is also fatally flawed and hence unreliable. First, the
web page that was presented to the survey respondents did not contain a
clickable link, as the actual [Defendant’s] website did, to view the abstract
of the NEPHRIC study…
…the survey [also] failed to identify the correct sample population;
none of the survey questions established whether the participants were in
any way responsible for the purchase of contrast media. Even without
asking this question, many survey respondents independently stated that
they were not involved in making the purchasing decision, and that their
use of the product was mainly because the hospital uses that brand
product, not because the respondent had any impact or influence on the
purchasing decision. This is a critical flaw in the design of the survey,
which makes it significantly less useful for determining whether
consumers who were making the actual purchasing decision were
deceived…
Case law from this district as well as others supports the contention
that [Plaintiff’s expert’s] survey needed control mechanisms to be
reliable…
Furthermore, the Court notes that in addition to other courts
excluding expert testimony on similar grounds, another court specifically
excluded one of [Plaintiff’s expert’s] surveys because it did not use a
proper control group…Additionally, [Plaintiff’s expert] said that the main
downside of using a control group is money, something that the Court
finds to be disingenuous for this particular case, especially given the
apparent staggering amount of legal fees and costs related to expert
testimony…
…Thus the Court excludes [Plaintiff’s expert’s] testimony in
connection with his survey in its entirety.
…
…[Plaintiff] contends that [Defendant’s expert’s] testimony…and
related [Defendant’s] survey… ostensibly relating to a [Plaintiff’s]
brochure and letter, were flawed in several respects, such that they render
his opinions and testimony unreliable, lacking fit and otherwise of no help
to the Court. [Plaintiff] incorporates its related motion in limine…and
176
identifies the alleged flaws as follows: (1) the survey used three cropped
and out of context snippets taken from a [Plaintiff’s] brochure…and a
letter sent to doctors…; (2) the survey used the three snippets orally over
the telephone despite the uncontested fact that the documents (and the
snippets) were meant to be read (not heard) and handled and thus the
survey did not in any way simulate marketplace conditions…; (3) certain
of the survey questions misrepresented the snippet used…; (4) counsel for
[Defendant] chose the snippets that were tested and helped design the
survey…
As to [Plaintiff’s] first contention, the survey withheld from the
respondents large amounts of other essential visual, contextual and
informational portions from the two documents that directly relate to the
survey questions…The Court finds that the survey results thus have no
probative value as to whether there was false or misleading advertising or
the effect of any advertising on a customer, and as such, the [Defendant’s
expert’s] testimony is excluded…
As to [Plaintiff’s] second contention, the problem of presenting the
material orally as opposed to in writing does present a problem, but only
because all three snippets are difficult to understand when heard
orally…Thus, [Plaintiff] argues that the survey has no probative
value…The Court agrees.
[Plaintiff’s] third contention is that certain of the survey questions
misrepresented the snippet used…and suggested answers…rendering the
survey unreliable, inconclusive and lacking fit to the facts in issue – i.e.,
whether ads were false or misleading, Again, the Court concurs.
Fourth, [Plaintiff] contends that [Defendant’s expert’s] lack of
objectivity was also confirmed by how he interpreted his results…
…The Court agrees for all of the aforementioned reasons and
excludes [Defendant’s expert’s] testimony.
The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *10, *12
& n.19, *13 (D. Utah 2008)
In the First Circuit case Cashmere & Camel Hair Mfrs. Institute v.
Saks Fifth Ave,…the court held that because a defendant does not dispute
that the statement is a literal falsity claim, the presumption of consumer
deception in plaintiff’s favor and the defendant’s failure to present
evidence to rebut the presumption satisfied the plaintiff’s burden of
demonstrating consumer deception on its claim. Similarly, in the present
case the presumption of consumer confusion arising from the literally false
statement was unrebutted. Defendants argued that [Plaintiff’s expert’s]
survey evidence, the only evidence on the issue, was not sufficient, but
presented no evidence of their own to rebut either the presumption or the
[Plaintiff’s expert’s] testimony. Therefore, the presumption by itself is
sufficient for Plaintiff to meet its burden of demonstrating consumer
deception…Thus,…in order to recover damages or obtain equitable relief
177
under the Lanham Act, a plaintiff must also show that either: (1) the
challenged advertisement is literally false, or (2) while the advertisement
is literally true it is nevertheless likely to mislead or confuse
consumers."…
…the unrebutted presumption of consumer confusion arising from
the literal falsity of the Amvox Message was sufficient to establish
consumer confusion, the Court will address Defendants’ arguments on the
survey evidence…[n.19 Some courts also apply a presumption of
materiality upon a finding of literal falsity. See, e.g., Richard J. Leighton,
Literal Falsity by Necessary Implication: Presuming Deception Without
Evidence in Lanham Act False Advertising Cases, 97 Trademark Rep.
1286, 1291 n.19 (2007)(citing cases).]…Defendants argue that [Plaintiff’s
expert’s] testimony is insufficient because he surveyed persons other than
those who were known to actually have heard the Amvox message. As
this Court noted in its Order denying Defendants’ Daubert challenge to
the admissibility of [Plaintiff’s expert’s] testimony, such challenges to the
survey are credibility challenges for the jury to resolve…
Having reviewed the record, the Court finds that there was no need
for evidence on consumer confusion or deception because the unrebutted
presumption arising from the literally false Amvox Message satisfied
Plaintiff’s burden to show consumer confusion or deception…
Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063, 1079 (C.D. Cal. 2008)
…[Defendant’s expert] noted problems with [Plaintiff’s expert’s]
survey, including that it failed to use a control, failed to instruct
respondents not to guess, used improper and leading stimuli, and
combined questions onto the same page…Furthermore, [Defendant’s
expert] pointed out that [Plaintiff’s expert’s] survey did not provide the
respondents with a view of the full DMV.ORG webpage so that
respondents could scroll down and see the disclaimer if they so
desired…The Court agrees that the lack of a control, and the failure to
present Defendants’ webpage as an actual consumer would see it,
including the disclaimer, are significant problems with [Plaintiff’s
expert’s] survey…
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139, 1144-1146 (C.D. Cal.
2007)
Here, Plaintiffs provide the Court with a pilot survey as
preliminary evidence of consumer deception. The survey questionnaire
asked consumers from four different cities to answer various questions
after viewing both of Defendant’s challenged commercials. The survey
involved answering questions “based only on what the consumer saw in
the commercials, and not based on any independent knowledge the
consumer might have.”…The survey asked, “Based on the commercials,
178
does Angus beef refer to where on the cow the meat comes from, a type of
cattle, neither statement is true, both statements are true, or you don't
know?”…The survey generally asked consumers to select one of four
potential answers to the questions posed about what the commercials
said…
Plaintiffs state that “a statistically significant number of
participants were misled by the commercials into believing that Angus is a
cut of meat rather than a breed of cattle, that Angus beef is an inferior type
of meat, and that Angus beef emanates from the rear-end and/or anus of
beef cattle.”…Defendant argues that the survey is unreliable, and these
conclusions are therefore baseless…The Court agrees with Defendant that
the survey should be given very little weight.
The Ninth Circuit has stated that “surveys in trademark cases are to
be admitted as long as they are conducted according to accepted
principles.”…“Technical unreliability goes to the weight accorded a
survey, not its admissibility.”…The weight and “evidentiary value of a
survey’s results rest upon the underlying objectivity of the survey itself…
Plaintiffs’ survey uses leading and suggestive questions, and
consumers were not permitted to articulate their own impressions of the
commercials. Typically, consumer perception surveys begin with openended questions that permit consumers to identify the primary message of
a commercial and any source of deception…In Plaintiffs’ survey, the
questions were unfairly framed as to beg the results that Plaintiffs
ultimately received. Consumers were given responses that suggested the
answers that Plaintiffs wanted. By providing the consumers with the
suggested response, Plaintiffs increased the likelihood of biased results.
Further, Plaintiffs’ survey is worded in such a way as to obscure whether
any inference suggested by the commercial was negated because the
consumer understood the joke. These deficiencies in the survey’s design
weaken the relevance and credibility of the survey evidence to the point
where it sheds little if any light on the issue of likelihood of deceiving
consumers.
*
Plaintiffs lack any evidence that establishes actual injury and
causation. Plaintiffs’ survey does not address whether Plaintiffs will
experience any particular harm. Rather, the survey questions ask
consumers to give their general feelings about purchasing Angus burgers
and do not explore consumers’ impressions on whether Plaintiffs, rather
than any other competitors, would be damaged. Based on this evidence,
the Court cannot conclude that Plaintiffs are harmed specifically by any
potentially false or misleading representations in the commercial rather
than just the mere advertisement of a competing product that attempts to
use effective marketing techniques. Thus, this evidence is not sufficient to
make Plaintiffs’ necessary showing of actual injury and causation.
179
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780, *47-*48 (E.D.
Pa. 2007)
[Defendant] argues that the survey evidence that [Plaintiff] intends
to present does not demonstrate confusion among consumers about the
meaning of “made from sugar.” [Plaintiff’s] burden is to prove that
[Defendant’s] advertising has the tendency to deceive a substantial portion
of the intended audience. Novartis, 290 F.3d at 590 (citing Johnson &
Johnson-Merck Consumer Pharm. Co. v. Rhone-Poulenc Rorer Pharm.,
Inc., 19 F.3d 125, 129 (3d Cir. 1994). Courts have acknowledged that a
“confusion rate” of as low as 7.5% to 10% may be adequate while a
confusion rate of 15% is almost always deemed sufficient. Id. at 594
(confusion rate of 15% was sufficient, acknowledging that the Second
Circuit Court of Appeals had indicated that a 7.5% rate of confusion
would suffice); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 466-67
& n.15 (4th Cir. 1996) (15 to 20% confusion was sufficient to establish
“actual confusion…to a significant degree”); Goya Foods, Inc. v. Condal
Distribs., Inc., 732 F. Supp. 453, 457 n.7 (S.D.N.Y. 1990) (9 to 10%
confusion rate was sufficient to demonstrate “meaningful evidence of
actual confusion”).
180
Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002, *22-*25 (S.D.N.Y. 2006)
The consumer survey purported to examine consumer perception
of [Defendant’s] two television ads…
The survey consisted of fourteen questions…The first five
questions were open-ended…The open-ended questions were followed by
two closed-ended questions….
…
The open-ended format is well suited to surveys focusing on a
simple and/or primary claims made in ads…“On the other hand, openended questions are likely to understate secondary claims, particularly
where…those claims are also rather complex by virtue of being both
compound and comparative.”…Thus, it was not inappropriate for
[Plaintiff’s expert] to formulate proper, closed-ended questions in order to
assess whether [Defendant’s] TV ads communicated the messages
[Plaintiff] complains of, i.e., messages that concern secondary, complex,
and implicitly comparative claims.
But closed-ended questions, however helpful…can be leading and
suggestive and require incorporation of several well-established
mechanisms to minimize bias…For example, the questions ought to be
rotated…
Other forms of bias involving closed-ended questions include “yea
saying,” “which is the tendency to give the answer the participant believes
the interviewer is seeking.”…This effect can be mitigated through the use
of a control question…(“The [Federal Trade] Commission has long
recognized that a control of some kind is necessary for closed-ended
questions and that…there is a potential for yea-saying inherent in the
closed-ended question format.”). Control questions offer a “don’t know”
or “no opinion” type of option, as part of a set of response alternatives to a
closed-ended question…Such questions screen out respondents who may
truly not have an opinion on the issue under investigation and minimizes
guessing…[Plaintiff’s expert] neglected to include any “funnel,” “fullfilter” questions…or “quasi-filter questions.”
…What the women surveyed in the mall knew about fracture
reduction and clinical testing is, in all likelihood, limited. Certainly, the
challenged TV ads said nothing about either topic. Accordingly, the
survey should have provided respondents with all possible options to any
question (including the options of “neither” or “don’t know”)…The
reliability of the answers elicited by the closed-ended questions is
undermined by the survey failure to inform respondents that they could
also respond in this way…
…
A survey’s control attempts to address in part the possible biasing
effect of the questioning and a respondent’s prior beliefs…In Lanham Act
cases, courts accept as a measure of the message conveyed the difference
between the results obtained in the test and the control…The control may
181
simply purge the allegedly deceptive materials from the ad…Rather than
eliminating the questionable material from the ads…[Plaintiff’s expert]
chose a prominent disclaimer at the beginning of the ads as its
control…The disclaimer was suggestive and implanted responses to
closed-ended question…
In addition to these structural and design inadequacies, the
[Plaintiff’s] surveys had serious data collection flaws…
These flaws…are fatal to the admissibility of the consumer survey.
[Plaintiff’s expert] also conducted a telephone survey of
physicians’ perceptions to the sales aid; and reported the results in January
2006…To date, [Defendant] has deployed three [product] sales aids: the
first in April 2005 in connection with [the product’s] commercial launch,
the second in October 2005…and the third in March 2006…As noted
previously, [Defendant] is currently using the March 2006 revised sales
aid…Thus, the survey does not study the sales aid currently in use. As a
result, the physician survey, which focused [on] an earlier version of the
sales aid, is completely irrelevant to the sales aid currently in use…
…the physician survey lacked any control. [Plaintiff’s expert]
maintained that a control group is unnecessary for sophisticated
respondents like doctors, who are unlikely to “guess”…This is a marked
departure from generally accepted market research practices…
Second, the physician telephone survey suffered from the
extensive and inappropriate probing…the probing indicates a suggestive
implanting with regard to fractures…
…
The sample size of the telephone physician survey involved only
sixty-three respondents. [Plaintiff’s expert] said the primary reason for the
small sample size was economic…This claim of economy is completely
out of character with [Plaintiff’s] spending to beat [Defendant’s product]
in the marketplace, to say nothing of the costs of this litigation. In any
event, the sample size here is too small to be reliable…
These reasons, plus others, are more than sufficient to determine
that the physician survey results are inadmissible.
Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695, 708709, 711 (M.D. Pa. 2006)
We find that [Plaintiff’s] evidence, which consists of [Plaintiff’s]
expert report, the depositions of various policyholders, and various phone
call recordings, does not create a genuine issue of material fact of “actual
deception or at least a tendency to deceive a substantial portion of the
intended audience.”…[Plaintiff’s expert’s] report outlines her research
into general consumer behavior and her beliefs as to how consumers likely
reacted to the [Defendant’s customer service representatives’] greetings
and warnings…She conducted no survey into how consumers actually
responded to the representations but reviewed a number of consumer
182
depositions as well as recorded conversations with [Defendant’s customer
service representatives]…Based on her experience and this evidence, she
opined that the greeting led callers to believe that the [Defendant’s
customer service representatives] were representatives of their insurance
companies. She also believed that the warning regarding non-network
pricing and services created “uncertainty,” which caused many callers to
choose [Defendant] because its prices and services were guaranteed…
…
An expert opinion is not the standard by which we measure actual
consumer confusion…[Plaintiff’s expert’s] report falls short for this
reason. “As an expert in consumer behavior, I was asked to evaluate the
likely effect on consumer choice of the statements made by
[Defendant].”…[Plaintiff], however, must demonstrate how customers
actually do react, not how they could react…Thus, we conclude that
[Plaintiff’s expert’s] opinion along with the consumer depositions and
phone calls do not create a genuine issue of material fact of “actual
consumer deception or a tendency to deceive a substantial portion of the
population,” and we will grant summary judgment on the Lanham Act
claim.
McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226, 244-245, 253 n.21 (S.D.N.Y. 2005)
…[Plaintiff’s expert] conducted three consumer surveys in connection
with this case, in malls and shopping centers in ten different locations throughout
the United States…
In the first survey, consumers were shown [Defendant’s television
advertisement] twice and then asked a series of questions about the ideas that
were communicated to them by the commercial. The survey found that 50% of the
respondents took away the message that “you can replace floss with Listerine.”…
In the second survey…consumers were shown a Listerine bottle with…the
shoulder label. They were asked essentially the same questions as were asked in
the first survey. Some 45% of the consumers took away the message that Listerine
could be used instead of floss…
In the third survey, a control survey, consumers were asked their “preexisting beliefs” regarding Listerine and floss; the intent was to determine the
number of people who did not recall seeing [Defendant’s] commercials but who
still believed that Listerine could be used instead of floss. A minority of those
surveyed did not recall seeing [the allegedly false or misleading advertisement],
and of those 19% stated the opinion that Listerine could be used in place of
floss…
The surveyors then took the three surveys together, subtracted the 19%
figure from the 50% and 45% figures, respectively, and concluded that 31% of
those who saw the commercial and 26% of those who viewed the shoulder label
took away a replacement message…
[Defendant] commissioned its own survey, which was conducted…in
shopping malls in twelve markets throughout the United States…
183
…
n21…[Defendant’s expert’s] testimony is rejected. First, [the control
advertisement] was not a good control…it implied that Listerine is a good
substitute if one does not have time to floss, a similar message to that sent by [the
allegedly false or misleading advertisement]. Second, [Defendant’s expert] did
not ask consumers what message they believed the commercials were conveying;
instead, he asked them what their beliefs were…Third, the survey was poorly
designed. Consumers were asked questions about Listerine and flossing…before
they were shown the commercial and then they were asked the questions again.
Hence, although [Defendant’s expert] acknowledged that it was important not to
“clue” respondents in on the subject matter of the test before showing them a
commercial, here the consumers were given an idea of what to look for in the
commercials before they saw them…
American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387, 393-394 (8th Cir. 2004)
…In its survey, [Defendant] asked consumers if the phrase “America's
Favorite Pasta” conveyed a meaning. According to [Defendant], thirty-three
percent of those surveyed allegedly perceived the phrase “America's Favorite
Pasta” to mean [Plaintiff’s] is the number one brand. Fifty percent of those
surveyed allegedly perceived the phrase “America's Favorite Pasta” to mean
[Plaintiff’s] is a national brand.
The Seventh Circuit confronted a similar question in Mead Johnson & Co.
v. Abbott Laboratories, 201 F.3d 883 (7th Cir [2000])…Having concluded the
phrase “1st Choice of Doctors” conveyed more doctors prefer this product over its
rivals, the Seventh Circuit considered whether a consumer survey can assign a
different meaning to a phrase…Mead Johnson’s survey indicated consumers
perceived the phrase “1st Choice of Doctors” to mean a majority of doctors.
Concluding the district court erred in using the survey to assign such a meaning,
the Seventh Circuit noted, “never before has survey research been used to
determine the meaning of words, or to set the standard to which objectively
verifiable claims must be held.”…While acknowledging dictionaries are surveys
by people who devote their entire lives to discovering the usage of words, the
Seventh Circuit cogitated “it would be a bad idea to replace the work of these
professionals with the first impressions of people on the street.”…
We agree with the Seventh Circuit. To allow a consumer survey to
determine a claim's benchmark would subject any advertisement or promotional
statement to numerous variables, often unpredictable, and would introduce even
more uncertainty into the market place…
Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594,
604 n.5, 605 n.8 (D. N.J. 2003)
n5 [Plaintiff’s expert]…testified that he did not have access to any other
commercials comparing NicoDerm to another product, so he could not have used
one [a comparative commercial as a control] even if he had thought it
184
appropriate…The Court disregards this excuse. [Defendant’s expert] testified that
experts conducting consumer surveys often create new ads or alter existing
ones…If [Plaintiff] wishes the Court to credit its survey evidence, that evidence
must conform to generally accepted survey principles. Nothing prevented
[Plaintiff] from designing its own mock comparative commercial for the purposes
of [its] Survey.
…
n8 [Plaintiff] attempts to salvage the [Plaintiff’s expert’s] Survey by
claiming that [Plaintiff’s expert’s] control question is a sufficient safeguard
against any “noise.”…As noted supra, however, the control question only weeds
out the "yea-sayers." It does not protect the survey from the bias brought by
consumers' pre-existing beliefs about comparative commercials.
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 379 (S.D.N.Y. 2003)
…When an advertisement is not literally false, but rather is
ambiguous or implicitly false, a plaintiff can only establish a claim of false
advertising through a survey…[Plaintiff] fails to present this Court with
any survey…Accordingly, defendant’s motion for summary judgment on
[Plaintiff’s] false advertising claim is granted.
The Scotts Co. v. United Industries Corp., 315 F.3d 264, 276-281 (4th Cir. 2002)
To show consumer confusion, [Plaintiff] presented evidence of two focus
group[s]…and the results of a survey of forty consumers…
…
We note that the very nature of a focus group seems, to some extent, to
limit its ability to identify the message an advertisement conveys to an individual
consumer. As the Defendants’ expert explained, focus groups “are a form of
brainstorming where the participants are encouraged to ‘build on’ the thoughts of
others.”…Thus, a participant who may have derived no false message from an
advertisement viewed outside the context of the focus group might well change
his opinion about the message conveyed by the advertisement after considering
the views expressed by the other participants…we agree with the Defendants that,
in this case, the focus group evidence was unreliable and cannot be considered
probative on the question of whether the [Defendants’] packaging was likely to
mislead consumers.
…
We…conclude that the manner in which the focus groups were conducted
destroyed the objectivity of the discussions, rendering the results utterly
unreliable on the question of whether the…packaging conveys a false
message…the deficiencies in the focus group evidence are so substantial that we
are constrained to conclude that the district court abused its discretion by giving
the evidence any weight…
…[Plaintiff’s other] evidence of consumer confusion comes from its
survey of 40 do-it-yourself lawn care consumers…
185
As previously discussed, the express messages conveyed by the
…packaging are literally true. Vigoro prevents crabgrass if it is applied up to four
weeks after the crabgrass has emerged from the soil… By preventing crabgrass
from even starting, Vigoro does prevent mature crabgrass. The critical question in
this case, then, is whether the…packaging conveys the message that Vigoro kills
mature crabgrass, a message that would be false. The survey, however, simply did
not address that question.
The interviewer showed the respondents an empty Vigoro bag folded in
quarters so that the lower left quadrant…was visible and asked: “Based on your
review of this section of the bag, should this product prevent the growth of
crabgrass that looks like the crabgrass pictured?”…Through the use of the word
“prevent,” this question suffers from the same ambiguity as does the Vigoro
packaging itself. That is, we cannot tell from this question whether the
respondents who answered yes believed that Vigoro could prevent mature
crabgrass by stopping it before it started, or whether they believed that Vigoro
could kill if applied to established, mature crabgrass.
…
Moreover, the manner in which the survey was conducted creates
significant questions about its relevance and reliability. The purpose of consumer
surveys in false advertising cases is to determine the message actually conveyed
to consumers. But the interviewers conducted the survey in this case in a way that
effectively required the respondents to express a specific opinion, even if they did
not have an opinion, by specifically not offering the respondents the opportunity
to give “not sure” as a response…In addition, the survey respondents were given
an empty Vigoro bag folded into quarters so that only the quadrant with the
crabgrass illustration was visible, thus obscuring the parts of the Vigoro
packaging that emphasized its focus on stopping crabgrass before it started, and
the respondents were asked to review only that portion of the bag. The survey
thus elicited information about the consumer’s reaction to an isolated part of the
packaging, when the relevant issue in a false advertising case is the consumer’s
reaction to the advertisement as a whole and in context. We believe that these
deficiencies in the survey’s design, particularly when considered in light of the
survey’s failure to focus on the critical question, weaken the relevance and
credibility of the survey evidence to the point that it sheds no light on the critical
question in this case…
…
…We therefore conclude that the district court abused its discretion by
crediting the survey evidence.
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
290 F.3d 578, 590-591 & n.7, 593-594 & nn.12-13 (3d Cir. 2002)
The District Court gave significant weight to the results of [Plaintiff’s]
consumer survey…The [Plaintiff’s] survey was conducted in what is called a
“double blind” fashion during which both the respondents and the interviewers
are unaware of the purpose of the survey or its sponsor…432 respondents were
186
split into two groups known as “cells.” The first cell was asked to focus on the
[Mylanta Night Time Strength] product line as it would likely appear in retail
stores. The second cell served as a control group that was asked to focus on the
Mylanta Extra Strength product. In the [Mylanta Night Time Strength] cell,
approximately 30% of the respondents expressed their belief that [Mylanta Night
Time Strength] provided relief that lasted the whole night. By contrast, less than
5% of the respondents in the control cell believed that Mylanta Extra Strength
provides relief that lasts all night. After netting out this “noise,”…[n.7 The
responses of the control cell are called “noise.” They represent the percentage of
people that would have found a message of “all-night relief” irrespective of the
labeling claim.] the survey results indicated that a total of 25% of respondents
received a message that the [Mylanta Night Time Strength] product provides allnight relief.
The District Court accepted this 25% figure as sufficient proof that the
[Mylanta Night Time Strength] product name “deceives a substantial portion of
the intended audience.”…
…
…[Defendant] disputes the District Court’s use of its results…
…
…it is fair to conclude that at least 15% of the total number of
respondents…derived a message of all-night relief from the product name…
Assuming arguendo that only 15% of respondents received a message of
all-night relief from the [Mylanta Night Time Strength] name, we need not vacate
the injunction. Relying upon Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d
312, 317 (2d Cir. 1982), the District Court observed that even a 15.5% figure
would be sufficient to demonstrate a likelihood of substantial consumer
confusion…[n.12 Although the 15.5 figure that the District Court considered was
proferred by J&J under a different rationale than the one used on appeal, the
District Court did find that 15.5 would be sufficient to support a finding of
substantial consumer confusion. 129 F. Supp. 2d at 367.]…In Coca-Cola the
consumer survey evidence demonstrated only 7.5% consumer deception. CocaCola Co. v. Tropicana Prods., Inc., 538 F. Supp. 1091, 1096 (S.D.N.Y.), rev’d,
690 F.2d 312 (2d Cir. 1982). There, the District Court denied the injunction
sought by the plaintiff because, inter alia, “a level of consumer confusion
significantly below 15% does not indicate plaintiff’s probable success on the
merits.” …On appeal, the Second Circuit reversed, finding that “a significant
number of consumers would be likely to be misled.” Coca-Cola, 690 F.2d at
317...[n.13 Although the Second Circuit’s holding was made before Federal Rule
of Civil Procedure 52(a) was amended to provide that a district court’s findings of
fact cannot be set aside unless clearly erroneous, its holding nevertheless supports
the view that a 7.5 figure could sustain a finding of substantial consumer
confusion.]
In an analogous context involving trademark cases under the Lanham Act,
courts have held that survey evidence of 15% confusion is sufficient to
demonstrate actual confusion. See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d
455, 466-67 & n.15 (4th Cir. 1996) (15-20% confusion was sufficient to establish
187
“actual confusion . . . to a significant degree”); Goya Foods, Inc. v. Condal
Distribs., Inc., 732 F. Supp. 453, 457 n.7 (S.D.N.Y. 1990) (9-10% confusion was
sufficient to demonstrate “meaningful evidence of actual confusion”). Likewise
we believe that survey evidence demonstrating that 15% of the respondents were
misled by the [Mylanta Night Time Strength] name is sufficient to establish the
“actual deception or at least a tendency to deceive a substantial portion of the
intended audience,” Rorer, 19 F.3d at 129…
Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470, *72 & n.200
(W.D. Tex. 2001)
At best [Plaintiff’s] survey shows the “likelihood” of deception, as…stated
in its summary judgment response. The [survey respondents] were not asked
about the message they perceived from the advertisements or what they thought
the message meant…[n.200 See Johnson & Johnson-Merck Consumer
Pharmaceutical Co. v. Rhone-Poulenc Rorer Pharmaceuticals, Inc., 19 F.3d 125,
134-36 (3d Cir. 1994) (affirming and discussing district court’s findings that
“well-designed consumer survey first asks ‘communication’ questions to see what
messages the viewer got…In the next step, the survey asks those who received a
particular message… questions to determine what the viewers thought the
message meant.”)] The physicians who participated in the survey were not even
asked to view the advertisements or any questions about their understanding of
the term “generic.” Therefore, [Plaintiff] has not established that a substantial
number of [physicians] were actually deceived by the advertisements…
SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer
Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061, *24-*25 & n.14, *35, *37-*38 (S.D.N.Y.
2001)
While it is certainly true that courts considering Lanham Act challenges
base literal falsity determinations upon the explicit claims made by an
advertisement, courts may also consider any claims the advertisement conveys by
“necessary implication” through visual images or visual images combined with an
audio message…[n.14 The doctrine of “necessary implication” involves a finding
that a claim, as communicated by the visual and verbal representations of the
advertisement, is literally false. In such cases, no reference need be made to
consumer reaction and thus is distinct from a finding of implied falsity, where the
claim is literally true but deemed misleading.]…see also Gillette Co. v. Wilkinson
Sword, Inc., 1989 U.S. Dist. LEXIS 8276, 1989 WL 82453 (S.D.N.Y. 1989)
(holding that consumer survey evidence is not required when the allegedly false
claim is a “necessary implication” of the explicit language in the
advertisement)…
…
In considering a claim of implied falsity, a district judge cannot determine
whether the advertisement is deceptive based “solely upon his or her own intuitive
188
reaction.”…Thus, the success of a party’s implied falsity claim usually turns on
the persuasiveness of a consumer survey…
…
The consumer survey presented by [Defendant] purporting to gauge the
misleading message conveyed to consumers, suffers from a fatal flaw as to the
first factor, in that there were no controls in place to assure the accuracy of the
results. A control is a way of measuring and rooting out whatever error potential,
or “noise” exists, that is, something other than what is being measured in the first
place…
…
[Defendant’s expert’s] testimony that a control was simply impractical in
this context does not function to alleviate concerns regarding the survey’s
methodology…
JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926, 939 & n.8
(E.D. Va. 2001)
Although consumer survey evidence is not required to establish
materiality, probative evidence must support a trier of fact’s determination of
materiality...
n.8 Defendants [argue]…that proof of the materiality element requires
survey evidence…Deception and materiality are two distinct analyses: (1)
whether a false advertisement is deceptive (actually or tending to), which analysis
requires survey evidence and (2) whether the deception is material, which
analysis requires probative, but not necessarily survey, evidence…
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
129 F. Supp. 2d 351, 364-367 (D. N.J. 2000)
A well-designed consumer survey first asks “communication” questions to
see what messages the viewer got and to “filter” or separate those viewers who
received certain messages from those who did not. In the next step, the survey
asks those who received a particular message, ... “comprehension” questions to
determine what the viewers thought the message meant…
…
…[Defendant] first criticizes the survey as containing questions that are
result driven, leading or suggestive…
…None of the questions posed…are leading because they do not suggest
an answer...
Additionally, bias…was eliminated by use of the control group…
[Defendant] further believes that…survey is flawed because products were
left in front of the respondent for the entire interview. [Defendant] asserts that
such a technique fails “to simulate with any remote realism how consumers
actually” behave and turns the survey into “more [of] an open book test than a
measure of realistic consumer reaction.”…the Court finds that leaving the
189
products for the respondents to examine rather than taking the products away
replicates market conditions.
…
…[Defendant] concludes that the net percentage of consumers who
received an all night message from the label was only 15.5%, which J & J claims
is an insufficient number for a finding of implied falsity.
…
Even assuming that [Defendant] is correct that only 15.5% of the
respondents were misled, that percentage is sufficient to show that, under the
Lanham Act, the “Night Time Strength” name tends to deceive or mislead a
substantial portion of the intended audience.
Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116, 131-132 (2d Cir. 2000)
Second, to establish the likelihood of commercial injury for the purposes
of standing, [Plaintiff] argues that [Defendant’s] use of the “Havana Club” name
will adversely affect [Plaintiff’s] current and future sales of its rum to U.S.
visitors to Cuba. The fact that [Plaintiff] sells to Americans traveling in Cuba,
however, does not necessarily demonstrate the likelihood that the distribution of
[Defendant’s] “Havana Club” rum in the United States will hurt [Plaintiff’s] sales
to those persons in Cuba. Although [Plaintiff] presented consumer surveys that
reported that “33% of Americans think that it is legal to sell rum from Cuba in the
United States and 9% do not know whether it is legal or illegal,” the District
Court noted that “it is intuitively doubtful that these finding[s] would apply to
U.S. travelers authorized to visit Cuba.” Havana Club Holding IV, 62 F.Supp.2d
at 1100 n. 11…A district court has broad discretion concerning the weight of
particular evidence, including consumer surveys…see Schering v. Pfizer, Inc.,
189 F.3d 218, 230 (2d Cir. 1999); Grotrian, Helfferich, Schulz, Th. Steinweg
Nachf. v. Steinway & Sons, 523 F.2d 1331, 1341 (2d Cir. 1975)…In this case, the
plaintiffs’ consumer surveys drew their sample from across the United States,
without attempting to control for any likelihood that the participants would travel
to Cuba. Under such circumstances, the District Court’s finding that these surveys
did not show consumer confusion among the relevant class of travelers was not
clearly erroneous.
Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883, 884-886 (7th Cir. 2000)
…[Plaintiff] commissioned a survey…
…
…of consumers about their understanding of the phrase “1st Choice of
Doctors.” It is a problematic exercise, for the survey assumes that “first” is a
cardinal number--that is, a count such as “246” or “55” or a ratio of two such
numbers, rather than a place in a series...
There is a deeper problem: the use of a survey in the first place. Surveys
are accepted ways to probe for things such as confusion about the source of
goods, for confusion depends on the effect of a phrase or trade dress on the
190
consumer…So far as we can tell, however, never before has survey research been
used to determine the meaning of words, or to set the standard to which
objectively verifiable claims must be held. Dictionaries themselves are a form of
survey; lexicographers determine how words have been used in both scholarly
and popular texts. But philologists and others who contribute to dictionaries
devote their lives to discovering usage and interpreting nuance. It would be a bad
idea to replace the work of these professionals with the first impressions of people
on the street, especially because consumers’ sketchy understanding of science
means that survey results are apt to present firms with unrealistic demands for
verification.
Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879, 888 n.4 (S.D. Ind.
1999)
FN4. Federal courts have not established a numerical benchmark for
determining when a claim is misleading for purposes of the Lanham Act. Circuit
courts have written in terms of deceiving “a substantial portion of the intended
audience,”...and deceiving “a not insubstantial number of consumers.”...
(“deceived a significant portion of the recipients”)...(requiring plaintiff to
demonstrate that “a statistically significant part of the commercial audience holds
the false belief allegedly communicated by the challenged advertisement”)...
(tendency to deceive 7.5% of consumers was not sufficient to prove deception).
District courts have found a tendency to deceive where surveys indicated that a
substantial minority of consumers was likely to be misled...(potential that between
22% and 57% of consumers will be misled is not insubstantial)...(deception rate
of between 23% and 33% sufficient to warrant preliminary injunctive
relief)...(23% not insubstantial number of consumers)...In this case, the tendency
to deceive more than 40 percent of consumers is substantial…
Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F. Supp. 294, 299 (S.D.N.Y. 1998)
The survey involved two studies. The first...is a study of consumers who
saw “Summer” during its opening weekend...The second...is a study of consumers
standing in line waiting to view “Summer”...Both surveys were directed to fifteen
to forty year olds in the top 180 motion picture markets of the United States.”
...17% of [the consumers in the first study and]...
...20% of [the consumers in the second study] thought that the advertising
for “Summer” communicated that “Summer” was “the sequel to ‘Scream,’” that
the creator of “Summer” produced “Scream,” that the creator of “Summer”
directed “Scream,” or that the creator of “Summer” was Wes Craven...
...
Plaintiff is likely to succeed on its claim that the “Scream” catchphrases
are misleading and are likely to mislead potential viewers of horror films to
believe that “Summer” comes from the same source as “Scream.”
First, plaintiff has shown that an appreciable number of consumers hold
false beliefs as to the connection between the two films...
191
FAME SURVEYS
Citigroup Inc. v. Citiair, LLC, 2014 T.T.A.B. LEXIS 150, *18-*19, *21-*22, *25-*26,
n.30, n.35 (T.T.A.B. 2014)
...[O]pposer has made of record corporate image tracking research
(n.30 The research materials discussed here were submitted as "business
records of opposer." [Opposer’s Director of Global Branding], explained
and interpreted the research reports at deposition. Although he did not
perform the research himself, he testified that in his view the research was
performed in accordance with industry standards...and that his position
involved supervising, contracting for, and interpreting the results of such
studies...Although applicant stated at deposition a vague objection to
[Opposer’s Director of Global Branding’s] "Continuing to give expert
qualification as to the other witnesses"...applicant did not object to the
admission of the research reports, nor was any objection to their admission
stated in applicant's brief.) performed in 1990 and 1995 relating to the
CITIBANK brand. Each study shows extremely high total awareness of
the brand and substantial degrees of familiarity with the brand and
awareness of advertising... Opposer also submitted results of a 2011
survey relating to the CITI brand, indicating highly positive levels of
awareness characterized as “familiar” and “very familiar”; a report of
awareness of CITI credit card services between 2008 and 2012, showing
extremely high aided awareness; and a 2008 “BrandZ” report on brand
awareness, prepared independently...indicating extremely high levels of
aided (“total”) awareness of the CITIBANK brand between 2002 and
2007...
...
Applicant also points out that the survey figures for “unaided
awareness” of opposer’s brands (n.35 Typical questions for testing
unaided awareness, as illustrated in the 2011 and 2012 surveys, are “When
you think about credit card brands or issuers, what are the credit card
brands or issuers that come to mind?” and “When you think about
financial service providers (i.e., banks, credit card brands and issuers,
investment firms and brokerages), what are the financial service providers
that come to mind?”) are not nearly as impressive as those for “aided” (or
“total”) awareness...This is, of course, true. Opposer pointed out, at oral
argument, that the number of banks and other financial institutions in the
U.S. market is very large. This is an apt point, as the crowded field greatly
diminishes the likelihood that a particular institution would be included in
a person's answer to an unaided awareness question, making the test a very
difficult one to pass. (This might not be the case in industries that include
only a small number of competing companies.) Although opposer’s
unaided awareness figures were very much smaller than its aided
awareness figures, they do not, in our view, reflect poorly on opposer’s
192
level of renown. Although the percentages are modest, they do nonetheless
reflect a substantial level of public recognition...
...
The evidence discussed above indicates extensive public
recognition and renown of the CITI and CITIBANK brands. It also
indicates that opposer has effectively promoted the CITI and CITIBANK
brands in conjunction with other marks that incorporate the designation
CITI. We therefore find that opposer has demonstrated that its family of
marks is famous for purposes of an analysis of likelihood of confusion.
Facebook, Inc. v. Think Computer Corp. 2013 T.T.A.B. LEXIS 436, *8, *14-*22
(T.T.A.B. 2013)
[One of the] du Pont factor[s] requires us to consider the fame of
opposers’ marks. Fame, if it exists, plays a dominant role in the likelihood
of confusion analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. A famous mark has extensive public
recognition and renown...
...
...Opposer authorized...a survey to...determine the extent to which
the mark [Opposer] is recognized...“The fame survey is a traditional
measure of the recognition, both unaided and aided recognition, of the
[Opposer’s] mark.”
[The survey was] a telephone survey interviewing 406
respondents. The survey employed a random digit telephone protocol of
telephone numbers from working telephone exchanges throughout the
United States including both landlines and cell phones...
[The survey was conducted] among the general consuming public,
there were quotas that were established so that the sample would be
representative of all adults by age and gender 13 years of age and older...
After a survey candidate was properly screened to confirm that the
survey candidate was an appropriate subject for the survey, the person
conducting the survey read the following statement:
In a moment, I am going to ask you some questions about
networking sites on the internet.
social
opinions; and
answer to a
answer...
Please understand that we are only interested in your
if you don't have an opinion or don't know the
question, that is an acceptable
The questioner then asked the following questions:
internet ...
4.0 Now, thinking about social networking sites on the
PAUSE ... would you please tell me the
193
names of the social
of?
networking sites that you can think
Record responses.
you
4.1 What other names of social networking sites, if any, can
think of?
Record responses.
5.0 Now I am going to read you some additional names that
may or
may not be names used for social networking sites
on the internet
... PAUSE ... Have you ever heard of
INSERT NAME(S) NOT
MENTIONED IN Q4.0 or
Q4.1? RANDOMIZE LIST
FACEBOOK?
TWITTER?
CLASSMATES?
DIGG?
BEBO?
GATHER?
HELIUM?
GOODREADS?
BROADMORE?
[The survey used an] in-treatment control that was a fictitious mark
(i.e., BROADMORE) that is not the name of a social networking site but
rather a fictitious mark to provide an estimate of mismeasurement error
(sometimes referred to as ‘noise’) resulting from such respondent
behaviors as ‘yea saying’ agreement bias or acquiescence.”...
“The [Opposer’s] mark for a social networking site was identified
by approximately seventy-four percent (73.65%) of the general public in
response to the unprompted or unaided recall questions (i.e., ‘...would you
please tell me the names of social networking sites that you can think of?’
and ‘What other names of social networking sites, if any, can you think
of?’).”...
“[I]n response to the unaided and aided questions combined,
approximately ninety-seven percent (97.29%) of the general public
reported recognition of the [Opposer’s] mark for a social networking
site.”...
BROADMORE was recognized by 2.7% of the respondents in
response to the aided question (Q5.0) so that should be subtracted from the
totals noted above. Thus, in total, on a net basis, after adjusting the survey
data for mismeasurement or agreement bias, approximately ninety-five
194
percent (i.e., 97.29% - 2.71% = 94.58%) of the general public recognizes
the [Opposer’s] mark for a social networking site...
The survey also included a series of questions [at the end of the
survey that asked] about internet usage to determine the recognition of the
mark by internet users and by social network users as opposed to the
general public. With respect to internet users, “after adjusting the survey
data for mismeasurement or agreement bias, the net level of recognition of
the [Opposer’s] mark for a social networking site among past and potential
internet users ranges from approximately ninety-seven percent for past
internet users (99.71% - 2.86% = 96.85%) to approximately ninety-six
percent for potential internet users (99.16% - 2.80% = 96.36%) (i.e., the
general consuming public)”...
With respect to social network users, “after adjusting the survey
data for mismeasurement or agreement bias, the net level of recognition of
the [Opposer’s] mark for a social networking site among past and potential
social networking users is approximately ninety-eight percent for both past
users of social networking sites (100.00% - 1.69% = 98.31%) and
potential users of social networking sites (100.00% -2.07% = 97.93%)
(i.e., the general consuming public).”
...
In view of the foregoing, we find that opposer’s...mark is famous.
The fame of opposer’s mark is particularly significant because the
evidence shows that it is well known to the general public, as well as to
users of social networking services. Thus, opposer’s mark is “accorded
more protection precisely because (it is) more likely to be remembered
and associated in the public mind”...
Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1375 (Fed. Cir. 2012)
Next, the Board found that [Plaintiff’s] 2008 brand awareness
study was “of dubious probative value” because it did not offer a witness
with first-hand knowledge of the study to explain how it was
conducted...The Board further noted that, although the study showed a
high level of brand awareness among women ages 13-24, it provided no
evidence of brand awareness among women generally, or among
men...(noting that the TDRA eliminated the possibility of “niche fame” as
a basis for finding a mark famous). And, the survey was conducted in
2007, several years after Triumph filed its applications. Given these
circumstances, we find no error in the Board’s decision to give this survey
limited weight.
Ahold Licensing SA v. Premium Nutritional Products, Inc., 2011 T.T.A.B. LEXIS 411,
*13-*17 (T.T.A.B. 2011)
Fame may be measured indirectly by the volume of sales and
advertising expenditures of the goods and services identified by the marks
195
at issue, “by the length of time those indicia of commercial awareness
have been evident,” widespread critical assessments and through notice by
independent sources of the products identified by the marks, as well as the
general reputation of the products and services....Although raw numbers of
product sales and advertising expenses may have sufficed in the past to
prove fame of a mark, raw numbers alone may be misleading. Some
context in which to place raw statistics may be necessary...
Finally, because of the extreme deference that we accord a famous
mark in terms of the wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting that its mark is famous to clearly prove it...
...
In 2007, opposer compiled a brand awareness study “based on our
customer frequent shopper card data on the customer usage of various
corporate brand products.”...
...According to the study, “71 percent of consumers that (opposer)
surveyed were aware of the Nature’s Promise brand” suggesting a “very
high awareness of the Nature’s Promise brand.”...
While opposer’s [brand] has achieved commercial success and
brand awareness among opposer’s customers, the evidence of record is not
sufficient to establish that opposer’s [brand] is famous for purposes of
likelihood of confusion. For example, a study demonstrating that a
significant percentage of opposer’s own customers recognize opposer’s
corporate brand is derived from such a narrow universe of consumers that
it is not sufficient to establish the fame of the mark...Finally...opposer
argues that “the consuming public consists of consumers exposed to
(opposer’s) advertising. As a result of (opposer’s) advertising efforts and
extensive use of its mark, (opposer’s) Nature’s Promise mark is its most
recognized brand.”...The problem with this argument is that the
consuming public is not limited to consumers exposed to opposer’s
advertising...
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280, *29, *31
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B.
Finally, in addition to the overwhelming evidence of TOTAL’s
brand awareness discussed in summary form above, opposers submitted a
consumer awareness survey conducted by their testifying expert. The
combined aided and unaided awareness number is very high and is in line
with the numbers opposers have seen in their own regularly conducted
consumer awareness surveys made during the ordinary course of
business...Applicant argues that the unaided awareness numbers are low
and that aided awareness is of no significance. While unaided awareness
numbers are more significant, that does not mean that aided awareness
numbers have no significance...Based on the record, opposers have shown
that in the context of this industry and fragmented market, the unaided
196
awareness numbers are high. Moreover, the very high aided awareness
numbers have significance and have not been shown to be compromised...
...
Based on the totality of the evidence, we find that...TOTAL is a
famous mark for ready-to-eat cereal...
Clinique Labs. v. Absolute Dental, 2011 T.T.A.B. LEXIS 161, *20-*21 (T.T.A.B. 2011)
As part of its regular course of business activity, in 2008, opposer
commissioned [a] research firm to conduct a brand awareness survey
relating to facial skin care and make-up products, including CLINIQUE.
While the exact levels of unaided and aided awareness of the CLINIQUE
brand on the part of relevant consumers were submitted under seal, both
numbers are quite impressive. In its August 2009 publication, among a
[Women’s Wear Daily] survey of buyers in this prestige market, Clinique
placed first with 14.3% of respondents having purchased CLINIQUE
products during the first six months of 2009...In fact, other than quibbling
about whether opposer’s made for litigation survey shows fame among
dental patients...we note that applicant does not dispute or rebut opposer’s
evidence of fame as outlined above.
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225, *28-*30,
*34 (T.T.A.B. 2010) This opinion is a precedent of the T.T.A.B.
As part of its regular monitoring of its demand enhancement
activities, as well as to comply with its obligation to report on such
activities to the Agricultural Marketing Service of the USDA, opposers
have since 1987 conducted semi-annual tracking surveys through
independent research firms...These tracking study results have been
critical to the planning of opposers’ annual advertising and promotional
strategies and other business activities...In response to the admittedly
leading question “Have you read, seen or heard pork referred to as ‘THE
OTHER WHITE MEAT?’,” these tracking studies have consistently
shown public awareness of the mark THE OTHER WHITE MEAT at or
above eighty-five percent of consumers nationwide...
In a separate study in the year 2000 (“the Northwestern Study”),
conducted under the auspices of the School of Integrated Marketing &
Communications at Northwestern University...researchers found that the
mark THE OTHER WHITE MARK [sic] was the fifth most recognized
advertising slogan in America among the general adult population at that
time.
...
...In assessing the proper evidentiary weight to be accorded to this
evidence and testimony, we find the results to be probative of the public
perceptions, and hence the renown, of opposers’ claimed slogan.
197
Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81, *9-*10, *16-*17 & n.8
(T.T.A.B. 2009)
The record is rife with other evidence of [Plaintiff’s]
fame…Opposer also presented an expert witness…who testified that he
conducted a survey on behalf of opposer for an unrelated litigation in
2003…In the telephonic survey of respondents who indicated “they used
the Internet,” 53.47% identified Google as a search engine without
prompting, more than double the next most recognized brand…[Opposer’s
expert] concluded that “the Google mark both is famous and was famous
as early as March of 2003.”…
We conclude that opposer has shown significant market exposure,
revenue, and overall fame amongst the relevant public. The evidence
clearly establishes that GOOGLE is a famous mark in connection with
search engine services…
…
Opposer has established that its mark is famous as well as fanciful,
both of which weigh heavily in its favor. Furthermore, we find that the
marks are similar, and the services overlap. Accordingly, we find a
likelihood of confusion between opposer’s GOOGLE mark for the search
engine and related services as pleaded, and applicant’s mark
CHMOOGLE for “consultation services in the field of scientific research.”
[n.8 Since we find a likelihood of confusion, we need not consider
opposer’s claim of dilution.]
Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306, 1315 (D. Nev. 2008)
The third factor is “[t]he extent of actual recognition of the
mark.”…A survey authored by Plaintiff’s expert…found that 99 percent of
respondents, who were taken from a sample encompassing the entire
United States, were aware of the VISA brand of payment
cards…[Plaintiff’s expert] also found that 85 percent of respondents
identified VISA when asked, “Now, please tell me which brands of
payment cards can be used to buy goods and services at more than one
type of merchant. These include credit cards, charge cards, debit or ATM
cards and prepaid cards. Which payment card brand names can you think
of?”…Therefore, the third factor weighs heavily in favor of a finding of
fame.
The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657,
675 & n.14, 676 & n.15 (W.D. Tex. 2008)
[Defendant’s] primary argument goes to the third issue, the actual
recognition of the mark, and contends that [Plaintiff’s] mark is not
sufficiently recognized on a national level to be famous. They base this
argument on their expert…who conducted a national survey he contends
198
demonstrates that only 5.8% of respondents in the United States
“associated the UT registered longhorn logo with UT alone” and that
“only 21.1% of respondents in Texas associated the UT registered
longhorn logo with UT alone.”…As an initial matter, it simply does not
matter, for purposes of a federal dilution cause of action, what the results
are of a survey conducted of people in the Austin metropolitan area or the
State of Texas. As noted above, the TDRA specifically requires that the
mark be “widely recognized by the general consuming public of the United
States.”…
…[Defendant’s expert] conducted his survey using a test group
and a control group…For the test group he used the UT LSL that is
registered with the Federal Register (however he showed it to participants
in white with a white background, rather than the burnt orange color it
almost invariably appears in, or against). For the control group he used the
longhorn or “the cow's head” from the Longhorn World Championship
Rodeo logo…[n.14 Note that in his survey [Defendant’s expert] only used
the longhorn portion of this graphic (i.e., not the entire logo.)]
[Defendant’s expert] contends that he used this alternative longhorn
depiction because “[r]espondents who associate the ‘control’ symbol with
UT are either guessing or indicating that any depiction of a longhorn steer
will be associated with UT.”…
…The evidence shows that [Defendant’s expert] did not test the
LSL in the burnt orange color in which it almost invariably appears
(apparently survey respondents were shown a “whited out” version of the
LSL)…When confronted with this fact -- that the mark he was ostensibly
attempting to test was not being shown to the general consuming public in
the manner in which they would be exposed to in the marketplace –
[Defendant’s expert] stated UT’s mark, the LSL, is used in a wide variety
of contexts, and picking any one of them would be to bias the results…It
is difficult to understand how it would bias the results to show the general
consuming public the mark in the typical circumstance in which the public
would confront that mark in the marketplace, rather than showing them it
in a manner in which they would likely not confront it. [n.15 The Court’s
view is supported by the leading treatise. In a slightly different context –
likelihood of confusion – McCarthy notes that while survey evidence “is
sometimes said to be evidence of ‘actual’ confusion, it is so only to the
extent that the survey mirrors the real world setting which can create an
instance of actual confusion.”…The same overarching principle applies to
a the [sic] dilution cause of action. See 15 U.S.C. § 1125 ©(2)(A) (the
TDRA specially requires that the mark be “widely recognized by the
general consuming public of the United States as a designation of source
of the goods or services of the mark’s owner”; see also adidas America,
[529 F. Supp. 2d 1215 @ 1244.])
199
Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089, 1097
(D. Nev. 2007)
The sixth consideration in determining whether the VISA mark is
famous is the degree of recognition of the mark in the trading areas and
channels of trade used by the owner of the mark and the person against
whom the injunction is sought. A survey authored by Plaintiff’s
expert…found that 99% of respondents, who were sampled from
households with telephones in the United States, were aware of the VISA
brand of payment cards…[Plaintiff’s expert] also found that 85% of
respondents identified VISA when asked what kinds of payment cards
they could think of…Accordingly, this factor weighs greatly in favor of a
finding that the VISA mark is famous.
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1245 n. 11
(D. Or. 2007)
n.11 Given the extensive evidence [Plaintiff] submitted as to each
of the statutory “fame” factors, its failure to conduct a fame survey is not
dispositive…
Binney & Smith and Binney & Smith Properties, Inc. v. Rose Art Industries, 2001 U.S. Dist.
LEXIS 11827, *8, *9 & n.2, *10 (E.D. Pa. 2001)
The Crayola color scheme qualifies as…famous…This is evidenced by the
market research surveys…[n.2 Defendant claims that Plaintiffs rely on several
surveys that must be disregarded because there is no evidentiary basis for their
admission into the record… Plaintiffs assert that their surveys were performed by
an outside firm in the ordinary course of their business, none of which were
conducted for the purposes of litigation. Based on these representations, the Court
finds that the surveys have the Circumstantial guarantees of trustworthiness…]
…The Crayola mark has acquired virtually universal recognition among
consumers in this county…survey conducted for Plaintiffs found that 92% of
mothers of children aged 2-12, who are the primary purchasers of children’s art
products, think of the Crayola mark without prompting when asked to name a
brand of crayons…The same survey found that 80% think of the Crayola mark
with [and] without prompting when asked to name a brand of markers…Also, in a
1987 market research survey that asked mothers to draw a Crayola package from
memory, all 450 mothers surveyed drew a green and yellow box…
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 669 & n.18 (E.D. Va. 2001)
n.18…we find that the [Plaintiff’s] marks is famous…
The report and testimony of plaintiff’s expert…supports this finding…
concluded that the [Plaintiff’s] trademark is known to approximately fifty-three
percent of the Internet users who would be exposed to the defendant…and fifty-
200
seven percent of the international travelers who would be exposed to the
[Plaintiff’s] trademark. See 4 J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, § 24:92, at 24-169 (2001 ed.) (trademark may be
characterized as famous if it is known to more than fifty percent of the
defendant’s potential customers)…[the] survey also shows that the [Plaintiff’s]
trademark is known to approximately forty-five percent of the United States
public as a whole. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v.
Utah Div. Of Travel Dev., 955 F. Supp. 605, 613 n. 4 (E.D. Va. 1997), aff’d, 170
F.3d 449 (4th Cir. 1999) (survey showing that over forty percent of United States
general public recognized trademark supported conclusion that the mark was
famous).
Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93, *3, *5 (T.T.A.B.
2001)
…Marketing surveys conducted for opposer demonstrate that more than
50% of the consumers in the United States are aware of the NESCAFE brand of
instant coffee.
…
…As a result of opposer’s sales and promotional activity, and the survey
demonstrating recognition of the mark, we find opposer’s NESCAFE mark is a
famous mark…
Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083, 1099, 1011 (C.D. Cal. 2000)
…The only evidence of the strength or distinctiveness of the plaintiffs’
Gigante mark in 1991 is the…[r]eport. According to that report, as of the time the
defendants began using the name Gigante, 22% of Mexican-Americans in San
Diego had heard of the plaintiffs’ Gigante mark…
…
…the…[r]eport shows that, as of 1991, 22% of Mexican-Americans in
San Diego were aware of the plaintiffs’ Gigante mark. Although this level of
recognition is sufficient to protect the plaintiffs’ mark from infringement, the
Court finds that it is not sufficient to establish that the plaintiffs’ mark is famous
enough to be protectable from dilution. See, e.g., McCarthy, supra, § 24:92 at 24168 (stating that mark should not be considered famous unless it is known to more
than 50% of defendant’s potential customers); Ringling Brothers--Barnum &
Bailey Combined Shows, Inc., v. Utah Div. of Travel Dev., 955 F.Supp. 605, 613
n. 4 (E.D.Va.1997) (finding mark was famous, in part, because survey evidence
shows that mark was recognized by over 40% of nationwide class of
respondents).
Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622, *8, *17
(T.T.A.B. 2000)
A[n]…independent telephone survey of subscribers to several magazines
showed that petitioner had both the highest unaided and aided brand awareness
201
amongst both businesses (33% and 71%, respectively) and resellers (52% and
79%, respectively)…
…
…petitioner has established that its mark is a famous one in the computer
storage product field…
Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504, 1509 (T.T.A.B. 2000)
Applicant has also objected to the entire testimony… as being beyond the
scope of proper rebuttal. This testimony relates to a survey taken by opposer with
respect to public awareness of the HARD ROCK CAFE restaurants. Because
evidence of such awareness goes to the fame of the mark, it is properly part of
opposer’s case-in-chief. The objection is sustained.
Simon Property Group, L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227, *19-*20 (S.D. Ind.
2000)
[Plaintiff] also relies on a November 1997 survey as evidence that its mark
was famous among consumers. The survey…[i]n a test for unaided awareness of
mall management companies, respondents were asked: “When thinking of
companies that manage shopping malls or shopping centers, which one comes to
mind first? What others?”…This question was presented to 685 respondents, 498
of who stated that they shopped at Simon DeBartolo Group malls most often
while 187 shopped most often at other malls.
[Plaintiff] boldly asserts that “Simon was recognized by 15% of the
respondents as the mall management company.”…That is not an accurate
representation of the survey results. The survey results state that 15 percent of
respondents named either DeBartolo, Simon DeBartolo, or Simon… DeBartolo,
Simon DeBartolo, and Simon are different marks. Evidence of consumer
awareness of the DeBartolo name or the Simon DeBartolo name is not evidence
of consumer recognition of the Simon mark.
In fact, [Plaintiff’s] survey shows that only a meager 3 percent of
respondents, or approximately 21 people out of 685 polled, named Simon as a
shopping mall management company without prompting from the interviewer…
While this survey shows that a small percentage of consumers are familiar with
the Simon mark, it is not evidence from which a reasonable trier of fact could
conclude that the Simon mark was famous among consumers prior to October
1998. It is powerful evidence to the contrary…these survey results…[fall] far
short of establishing anything recognizable as “fame” for purposes of the Anti
Dilution Act. [Plaintiff’s] own survey shows as a matter of law that all these
efforts have not generated fame sufficient to warrant protection under the
FTDA…
202
M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061, 1068, 1072 (C.D. Cal. 2000)
Defendants properly point out that plaintiff has failed to submit survey
evidence or any proof that “an appreciable number of reasonably prudent
purchasers exercising ordinary care” have been confused as to the source of
plaintiff’s product…
…
Defendants offer survey evidence that the [Plaintiff’s] trademark is not
famous. A survey was conducted telephonically with 501 random respondents.
The [Plaintiff’s] mark received “a very low-level awareness” according to
defendants’ expert...The awareness factor was 12% on an aided basis. The expert
notes that 11% responded favorably to completely fictitious marks, and that a
broad range of products were connected with the [Plaintiff’s] mark. Only 1%
connected [Plaintiff] with CD’s or music videos.
Plaintiff’s mark is not famous, and more importantly, it was not famous at
the time defendants entered the market…Defendants are entitled to summary
judgment on plaintiff’s dilution claims.
Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1270-1271 (S.D. Fla.
1999)
The Plaintiff relies on survey evidence…to show consumer recognition of
the “Fun Ship” mark. The Plaintiff points out that when asked if they had heard
of the “Fun Ship” slogan, 68% of respondents stated that they had. When asked
which cruise line uses the “Fun Ships” slogan, 58% said Carnival. The
Defendant challenges the results of the survey as biased and aided by specific
identification of seven cruise line names. It is also noteworthy that one of the
qualifications for the respondents was that they be “very or somewhat interested
in taking a cruise ship vacation in the next three years.” Therefore, it is evident
that the respondents do not represent the general public.
…
Given the weaknesses of the survey evidence and the fact that [Plaintiff]
and [Defendant] do not operate in the same market, the Court finds that even if
the “Fun Ship” mark is somewhat well-recognized among individuals planning to
take a cruise in the near future, this does not render the mark “famous” for
purposes of the dilution analysis.
Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999)
[Plaintiff] submitted three market research studies regarding perceptions
of the “Avery” and “Avery Dennison” brands. Discussion groups through which
one study was conducted were formed “using [Plaintiff] client lists,” and
produced the conclusion that the “Avery” name has “positive associations ...
among current customers.” Surveyed persons in the other two studies were
mostly “users and purchasers of office products” and “[o]ffice supply
consumers.” The one consumer group that did not necessarily include office
203
supply purchasers for businesses was still required to be “somewhat” or “very”
familiar with [Plaintiff’s] products in order to be counted.
[Plaintiff’s] marketing reports are comparable to a survey we discussed in
Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir.
1981), proving only the near tautology that consumers already acquainted with
Avery and Avery Dennison products are familiar with [Plaintiff]…The marketing
reports add nothing to the discussion of whether consumers in general have any
brand association with “Avery” and “Avery Dennison,” and no evidence of
product awareness...[related] specifically to the “Dennison” trademark. Although
proper consumer surveys might be highly relevant to a showing of fame, we reject
any reliance on the flawed reports submitted by [Plaintiff].
204
DILUTION SURVEYS
Chanel, Inc. v. Jerzy Makarczyk, 2014 T.T.A.B. LEXIS 217, *26, *28-*29, n.10
(T.T.A.B. 2014) This opinion is a precedent of the T.T.A.B.
Opposer's...mark has been consistently ranked as one of the most
recognized and famous brands in the United States...
...
The consumer recognition survey evidence introduced by opposer
is also particularly persuasive. Over the past six years, for internal
business purposes, opposer has commissioned multiple consumer surveys
demonstrating that its mark...is extremely well known and enjoys an
unusually high degree of unaided and aided (n.10 “Unaided” awareness
indicates that the survey participant spontaneously mentions the Opposer’s
brand name without prompting; “aided” awareness means that the survey
participant responds “yes” when asked whether he or she is aware of the
[Opposer’s] brand name) recognition...The fact that these surveys were
commissioned prior to the instant litigation and were used in the ordinary
course of business increases their probative value...
Starbucks Corp. v. Wolfe's Borough Coffee, Inc. 736 F.3d 198, 204 (2d Cir. 2013)
As for...(actual association), the District Court acknowledged that
the results of the...survey “constitute evidence of actual association”...but
it then significantly discounted those results on the ground that the survey
inquired into associations only with the isolated word “Charbucks” and
failed to present the Charbucks Marks in full context...
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 233 (S.D.N.Y. 2012)
In support of its dilution claim, [Plaintiff] submitted a survey...that
claims to show a twelve percent level of a likelihood of association
between [Defendant’s] Quattro G Pattern on a beige background and
[Plaintiff]. At trial, [Defendant’s expert] criticized the [Plaintiff’s expert’s]
Survey for asking what “products or brands” came to mind, instead of
merely “what came to mind.” According to [Defendant’s expert], this led
consumers to mention brands and products, instead of giving “top of
mind” responses...
[Plaintiff’s expert] was also criticized for not using multiple
controls to parse out the various elements of the trade dress...At trial,
[Plaintiff’s expert] explained that he did not use multiple controls because
he was testing the effect of a combination of elements, rather than each
element discretely...While multiple controls may have been helpful in
further parsing the results [Plaintiff’s expert] found, his failure to use them
does not affect the validity of his results.
205
Based on the forgoing, I find that [Plaintiff’s expert’s] survey —
while somewhat flawed because it used questions that primed respondents
to answer with brands and products — provides valid, relevant evidence as
to the likelihood that consumers will associate the Quattro G Pattern with
[Plaintiff] when rendered in a brown/beige colorway.
Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 U.S. Dist. LEXIS 42795,
*3, *27-*34 (S.D.N.Y. 2012)
[Defendant’s] thirty-second commercial goes by the name
“Luxury.”...
The commercial’s “scene of an inner-city basketball game”
features “a basketball bearing marks similar, but not identical,” to the
[Plaintiff’s] marks...
To prove actual association, a plaintiff must establish that
defendant’s mark “conjure[s] an association with the senior (mark),”
thereby “lessen(ing) the distinctiveness of the senior mark.”...“(T)he
absence of actual or even of a likelihood of confusion does not undermine
evidence of trademark dilution.”...In Starbucks, the Second Circuit noted
that the plaintiff submitted results of a telephone survey reflecting that
3.1% of respondents viewed Starbucks as the possible source of a coffee
that called itself “Charbucks.”...Overall, 30.5% of consumers said that
Starbucks was “the first thing that comes to mind” upon hearing the word
“Charbucks.”...The Second Circuit concluded that the district court erred
by concluding that no evidence supported a conclusion of “actual
association,” noting that the statute does not equate association with
confusion...On remand, the district court concluded that the survey results
“constitute evidence of actual association,” but that because the survey did
not present the marks in their full contexts and the surveys reflected
relatively low levels of confusion, “the actual association factor weighs no
more than minimally in Plaintiff’s favor.”...
In support of its assertion of actual association, [Plaintiff] cites the
research of [Defendant’s] own expert...[Defendant’s expert] conducted a
double-blind survey using a test group that was shown the “Luxury” ad
and a control group that was shown the same ad without the stylized
basketball...Participants were asked a series of questions about the
ad...The study tested among the general population, and, separately, a
subset of prospective [Defendant’s product] purchasers...
When asked to identify the brands shown in “Luxury,” 19% of
[Defendant’s expert’s] test-group participants cited [Plaintiff]...
[Plaintiff’s] expert...conducted a double-blind internet survey...The
survey used both a control group and a test group, with the control group
shown a video that replaced the stylized “Luxury” basketball with a
standard orange basketball...fifteen percent of the test-group recognized
the design as belonging to [Plaintiff]...
206
[Plaintiff] also cites to messages that appeared on the social
networking site Twitter, which purport to show public responses to
[Plaintiff’s] role in the “Luxury” ad...
...[Defendant]...argues that the [Defendant’s expert’s] survey
indicates that “only” nineteen percent of unguided test-group participants
recognized [Plaintiff’s] appearance in the “Luxury” ad...However, in light
of the Starbucks opinions in both the Second Circuit and this District, the
survey results present evidence of association...As also emphasized by
Starbucks, [Plaintiff] is not required to prove actual consumer confusion,
as in a trademark-infringement case...
[Defendant’s] evidence...also relies on one aspect of the
[Defendant’s expert’s] survey, which [Defendant] itself commissioned, in
which 19% of respondents cited the presence of [Plaintiff’s] logo...a figure
that [Defendant] contends is too low to constitute evidence of actual
association. It is statistically significant that 19% of survey respondents,
without prompting, identified [Plaintiff] as a brand shown in the ad, as is
the 30% of participants who, when asked in [Defendant’s] survey to focus
their attention on the basketball, said that it reminded them of [Plaintiff]...
...
...[Plaintiff] has come forward with significant, probative evidence
reflecting actual association between its famous marks and the stylized
basketball in the “Luxury” ad...Each party’s expert conducted surveys as
to consumer perceptions of [Plaintiff’s] role in the “Luxury”
advertisement. When asked an open-ended question as to the brands
identified in the ad, [Defendant’s] study concluded that 19% of
respondents identified [Plaintiff]; [Plaintiff’s] expert found a rate of
15%...The record as to actual association with [Plaintiff] is substantial and
unrebutted.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2011 U.S. Dist. LEXIS 148081, *9-*10
(S.D.N.Y. 2011)
Plaintiff has proffered, as evidence of actual association, the results
of a telephonic survey in which respondents were asked to react to the
terms “Charbucks” and “Starbucks.” Of the 600 respondents surveyed,
30.5% said that they associated the term “Charbucks” with “Starbucks,”
and 9% said they associated the term “Charbucks” with coffee....
The results of Plaintiff’s survey show some association between
the terms Charbucks and Starbucks. However, the survey did not measure
how consumers would react to the Charbucks marks as they are actually
packaged and presented in commerce...
207
The Gap, Inc. v. G.A.P, Adventures Inc., 2011 U.S. Dist. LEXIS 71675, *16-*20, *43*44 (S.D.N.Y. 2011)
...[Plaintiffs’ expert] presented the results of his two surveys
addressing likelihood of dilution.
The population for both surveys consisted of men and women 18
years of age or older who reported that they were likely, within the next
year, to use the Internet to search for information on travel tours outside
the continental United States.
...
In the test cell, respondents were exposed to an abbreviated version
of G.A.P Adventures’ website that used the old logo on the home page and
that linked to hundreds of other G.A.P Adventures web pages.
In the control cell, respondents were exposed to a website identical
to that used in the test cell, except that “G.A.P” was replaced with the
words “Great Adventure People”...Otherwise, the questions and
procedures for the test cell and the control cell were identical.
Respondents in both cells were asked, “What company or brand, if
any, comes to mind when you see the name on this
website?”...Respondents were also asked what other companies or brands,
if any, came to mind.
...
[Plaintiffs’ expert’s] second survey addresses the likelihood of
dilution using G.A.P Adventures’ new logo.
...
[Defendant’s expert] gave the opinion that [Plaintiffs’ expert’s]
control cells should have included uses of the word “gap” to which Gap
had not objected, to provide a proper baseline for comparison, However, I
find that it was proper for [Plaintiffs’ expert] to exclude the word “gap”
from his control cells.
[Defendant’s expert] criticized [Plaintiffs’ expert’s] survey
question, asking if any companies or brands came to mind after viewing
the G.A.P Adventures’ website, as leading...
...
I accept the appropriateness and relevance of [Plaintiffs’ expert’s]
surveys. I find that they show a likelihood of association between G.A.P.
Adventures and variants, with plaintiffs’ trademark “Gap.”
Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088, 1091 (9th Cir. 2010)
[Defendant] vigorously contests the validity of market surveys and
expert testimony introduced by [Plaintiff] to show that eVisa dilutes the
[Plaintiff’s] mark, and it claims that evidence should have been excluded
under Daubert v. Merrell Dow Pharms., Inc...But a plaintiff seeking to
establish a likelihood of dilution is not required to go to the expense of
producing expert testimony or market surveys; it may rely entirely on the
208
characteristics of the marks at issue. See 15 U.S.C. § 1125(c)(2)(B) (listing
relevant factors). Expert testimony and survey evidence may be necessary
in marginal cases, or where a defendant introduces significant evidence to
show that dilution is unlikely. But [Defendant] presented nothing, other
than [the operator’s] statement that he did not intend to dilute the
[Plaintiff’s] mark, to rebut the inference of likely dilution created by the
strength and similarity of the marks. Good intentions alone do not negate a
showing of a likelihood of dilution. We therefore need not reach the
admissibility of [Plaintiff’s] expert testimony and market survey evidence.
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225, *35-*38,
*40-*41 (T.T.A.B. 2010) This opinion is a precedent of the T.T.A.B.
After playing a recording of applicant’s slogan, the screener asked
the respondents the following questions:
(4) “Thinking about the slogan you just heard [THE
OTHER RED MEAT], do any other advertising slogans or
phrases come to mind?” [If answered “yes” continue to Q5]
(5) “What other advertising slogan or phrase comes to
mind?...
Applicant charges that Question 4 is inappropriate “because it
improperly suggests to survey respondents that another slogan or phrase
exists that should be brought to mind” upon hearing applicant’s slogan.
However, the survey was intended to test the precise question of whether
applicant’s mark calls to mind opposers’ mark or advertising campaigns.
Accordingly, it seems that it was necessary to pose the question of
whether this slogan brought to mind any other advertising slogans. We do
not find this to [be] an inappropriately leading question. An affirmative
answer of another slogan is not presumed with the phrasing of “... do any
other advertising slogans ...” come to mind...
As to the follow-on query contained in survey Question 5,
applicant argues that intentional trickery was involved here. According to
applicant, by asking respondents to identify some “other advertising
slogan” that may come to mind, [Opposers’ expert] intended to introduce a
critical word-association. By instructing the survey interviewers to stress
the word “other” in “other advertising slogan,” applicant argues that
screeners allegedly induced the response “The Other White Meat.” In this
context, it is difficult to avoid this word, coincidentally contained in both
parties' marks...Furthermore, although Professor McCarthy may question
the relevance of a “call to mind” question as it relates to issues of actual
confusion or likelihood of confusion, the phraseology of this question is
clearly relevant to the issue of likelihood of dilution...
...
209
Applicant’s criticism of opposers’ use of “The Tasty Main Dish”
as an allegedly inappropriate control slogan, like other of applicant’s
complaints about the [opposers’ expert’s] survey, comes without a
convincing explanation about what is inherently wrong with this particular
phrase. If the proof is in the pudding, opposers’ survey results demonstrate
that this control phrase did exactly what it was designed to do, namely, to
assess the level of any guessing (or “noise”) on the part of respondents
that could affect the reliability of the critical results of the survey.
...
...we overrule applicant’s objections to [opposers’ expert’s]
testimony and...dilution survey prepared for this litigation. We find
[opposers’ expert’s] testimony to be reliable and persuasive, and the
results of the survey to be probative on the issue of likelihood of dilution.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 109 (2d Cir. 2009)
The District Court also determined that there was not an “actual
association” favoring Starbucks in the dilution analysis. Starbucks,
however, submitted the results of a telephone survey where 3.1% of 600
consumers responded that Starbucks was the possible source of
Charbucks. The survey also showed that 30.5% of consumers responded
“Starbucks” to the question: “[w]hat is the first thing that comes to mind
when you hear the name ‘Charbucks.’” In rejecting Starbucks’ claim of
actual association, the District Court referred to evidence supporting the
absence of “actual confusion” to conclude that “the evidence is
insufficient to make the…factor weigh in [Starbucks’] favor to any
significant degree.”…This was error, as the absence of actual or even of a
likelihood of confusion does not undermine evidence of trademark
dilution…
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 569 (S.D.N.Y.
2007)
…Moreover, with respect to the trademark dilution component of
the [Plaintiff’s] Survey, the Special Masters [Louis Vuitton Malletier v.
Dooney & Bourke, Inc., 2007 U.S. Dist. LEXIS 92167, *62-*66 (S.D.N.Y.
2007)] found that [Plaintiff’s expert’s] analysis was plagued by the same
methodological flaws present in the confusion component, and also
“proceeds from a fundamental misunderstanding of the theory of dilution
by blurring,”…improperly conflating it with consumer confusion…
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686, *12-*13 (E.D. Cal. 2007)
…[Plaintiff] retained [an expert] to design a survey to measure,
inter alia, the likelihood of dilution of the NIKE brand as a result of
[Defendant’s] use of the NIKEPAL mark…
210
In designing his study, [Plaintiff’s expert] used a universe of
survey participants randomly selected from lists of companies that
[Defendant’s] deposition testimony identified as the sources for Nikepal’s
current and prospective customers…[Plaintiff’s expert] conducted the
survey by phone and asked respondents about their perception of a website
called nikepal.com…
Once survey respondents were screened to confirm that they were
the persons most responsible for ordering laboratory equipment at their
business, they were asked: “What if anything, came to your mind when I
first said the word Nikepal?” Many survey respondents…
identified Nike. [Plaintiff’s expert] testified that his survey revealed that
the vast majority of respondents, 87%, associated Nikepal with Nike; that
is, when they encounter the mark NIKEPAL, they think of Nike and/or its
offerings…
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966,*10, *13, *14 (E.D. Cal.
2007) (Dilution)
In support of its motion, Plaintiff submitted…survey
evidence…that allegedly indicates that a substantial majority of laboratory
equipment purchasers think of NIKE when encountered with Defendant’s
website, “nikepal.com.”…Plaintiff contends that the survey supports
certain factors relevant to the dilution claim, specifically that NIKE is a
highly recognized mark and that there is an actual association between
Plaintiff and Defendant’s mark…
Defendant contends that the survey is “fatally flawed” because it
was only directed to Defendant’s website which is not “a service mark
which is in issue in this action” and because it was administered by
telephone and thus “the survey could NOT possibly present Defendant’s
service mark in the context in which Defendant uses its [m]ark.”…
…
Defendant’s contention that the survey is limited to Defendant’s
website name and conducted only by telephone may diminish its weight,
but it does not indicate [that Plaintiff’s] survey is “so badly flawed that it
cannot be used to demonstrate the existence of a question of fact on the
[dilution claim].”…Further, Defendant’s assertion that the survey is
flawed because, among other reasons, the “survey was not directed to the
general consuming public of the United States” has not been supported by
authority. The survey targeted laboratory research professionals which
included a targeted sample of Defendant’s customer base and potential
consumers that [Plaintiff’s expert] asserts Defendant “describes as its
target industries.”…“‘To be probative and meaningful . . . surveys . . .
must rely upon responses by potential consumers of the products in
question.’”…Similarly, although Defendant argues that only a “small
number of persons were surveyed[,]” Defendant does not point to any
211
authority suggesting that a survey of 301 laboratory research professionals
is fatally flawed.
Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481,
*10-*13 (D. Or. 2006)
[Plaintiff’s expert] also conducted a survey to estimate the actual
dilution of the MO’s mark resulting from the entry of Moe’s Southwest
Grill. Surveyors telephoned 472 Oregon and Vancouver, Washington
consumers and asked if they had heard of several restaurants: Mo’s,
Sizzler, Arby’s, Baja Fresh, McCormick & Schmick’s, Olive Garden, and
two control phantom names, Mary’s and Gary’s. Additional questions
were asked about Mo’s and Olive Garden if the consumer indicated they
knew about them.
[Plaintiff’s expert] concluded: (1) 60.75 % of the consumers had
heard about Mo’s; (2) 30% of the consumers in Wilsonville have come to
associate Mo’s with the types of food sold by Moe’s, namely
Mexican/Southwestern food; and (3) consumers in the control towns of
Beaverton, Clackamas, and Gresham were 16% more likely than
consumers in Wilsonville to identify Mo’s with seafood.
…
[Defendant’s expert] concludes that there are reasons why
[Plaintiff’s expert’s] net estimate of fame/awareness for Mo’s, 60.75 %, is
inflated. The telephone context precludes the consumer from seeing the
spelling of Mo’s. Combined with the fact that there are many third-parties
that use Mo’s or Moe’s as part of their business names, and that three of
these are restaurants in the Portland metropolitan area, a consumer
indicating that he had heard of “Mo’s” could have been referring to any of
these businesses because there were not adequate follow-up questions to
identify the specific restaurant the consumer knew. Recalculating
[Plaintiff’s expert’s] raw data, [Defendant’s expert] reaches a net fame
estimate of 49.35%, at most.
CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588, *27-*28 (4th Cir.
2006)
[Plaintiff’s] second argument - that the [Plaintiff’s] survey provides
evidence of actual dilution - is no more convincing. As noted above, the
[Plaintiff’s] survey was designed to measure likelihood of confusion, not
dilution…Thus, the survey at best measured whether consumers believe that
[Defendant] is associated with [Plaintiff], not whether [Defendant’s] mark has
“reduced the capacity of the [Plaintiff’s] mark to identify the [services] of its
owner.” …The survey’s results provide no forecast of actual dilution…
Accordingly, the district court did not err in granting [Defendant]
summary judgment on [Plaintiff’s] dilution claim.
212
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578, *26-*30
(S.D.N.Y. 2005)
Here there is no showing of actual dilution of Plaintiff’s Starbucks Marks
as a unique identifier of its goods. Although Plaintiff’s survey results indicate that
39.5% of people associate the term “Charbucks” with “Starbucks” or
coffee…there is no indication that that is attributable to any usage of that term by
Defendant, or that such usage affects the ability of the Starbucks Marks to serve
as a unique identifier of Plaintiff’s products…
Nor is there sufficient evidence of dilution by tarnishment to warrant the
grant of injunctive relief. Plaintiff again relies on the survey results in this
connection. Although the Plaintiff’s summary of the survey results indicates that
43.3% of the respondents, when queried as to whether they “would…have a
positive impression or negative impression of a coffee called ‘Charbucks,’”
indicated that they would have a “negative” impression of such a coffee…the
reported responses to the open-ended query that preceded the positive/negative
question -- “If the name ‘Charbucks’ were used for a type of coffee, how would
you describe the coffee?” -- are much less indicative of any potential for
tarnishment. There, only 6.3% of the respondents provided what was
characterized as “generally negative” response to the query, 15.2% described such
a hypothetical coffee as “charred,” “burnt,” “bitter” or “smokey” (at least five of
those providing this description are reported to have made a “positive” response
to the negative/positive impression question…and 34.9% of the respondents
described the hypothetical flavor as “strong,” “dark,” “black” or “rich-flavored”
coffee…Many of those describing the taste as strong or rich are also reported to
have made “positive” responses to the two-pronged question that
followed…Plaintiff also proffers its expert’s conclusory assertion that negative
perceptions of “Charbucks” would have a negative impact on Starbucks’ brand
name recognition…However, that opinion carries little weight in light of the
paucity of evidence of such negative impressions and linkage.
Accordingly, Plaintiff has failed to demonstrate that Defendant’s use of
the term “Charbucks” as part of the name of one of its lines of coffee has
tarnished Starbucks’ reputation, or is likely to lead the public to associate a lack
of quality or prestige of Defendant’s product with Plaintiff’s good. Plaintiff has
failed to sustain its burden of proof under the FTDA and New York antidilution
statute.
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660, *20-*22 (D. Or. 2005)
…Oregon’s dilution statute requires only that a plaintiff prove a
“likelihood” of dilution…This burden is met by evidence that the defendant used
a variant mark that “has created some mental association between the protected
mark and the alleged diluter.”…
…Dilution can occur in two distinct manners: by “blurring” or
“tarnishment.” Dilution by “blurring” occurs when the defendant’s use of a
variant of the plaintiff’s mark creates “at least some subliminal connection in a
213
buyer’s mind between the two parties’ use of their marks.”…Blurring is
actionable even before the defendant’s use becomes widespread and before the
mark suffers significant injury.
…“Tarnishment” of a trademark occurs when the defendant creates an
association in the minds of consumers that is inconsistent with the pre-existing
reputation of the plaintiff’s mark.
…[Plaintiff’s expert’s] testimony and survey provided direct evidence that
[Defendant’s] use of the name “Sambuck’s” creates a likelihood of both types of
dilution. [Plaintiff’s expert’s] consumer survey establishes, among other things,
that: (1) Eighty-five percent of respondents shown the “Sambuck’s Coffeehouse”
name immediately thought of “Starbucks” (twice the percentage of persons who
were shown the placebo name, “Sammy’s Coffeehouse”); (2) over seventy
percent of respondents who were shown the “Sambuck’s Coffeehouse” name
indicated that the name brought Starbucks to mind because of the high degree of
similarity between the two terms; and (3) no respondent who saw only the
“Sammy’s Coffeehouse” name indicated that they thought of “Starbucks” because
of similarities between the marks.
…
…[Defendant’s] use of the “Sambuck’s” mark is likely to dilute the
distinctive quality of the Starbucks mark…
Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766, 779 (S.D. Tex. 2005)
…Defendants have produced evidence that a significant percentage of
consumers surveyed believed that a beer called “Starbock” or “Star Bock” was
put out by, affiliated or connected with, or approved or sponsored by Defendants.
This evidence goes beyond a mere mental association. It shows that Plaintiff's
mark lessens Defendants’ ability “to identify and distinguish goods and
services.”…
…Therefore, Plaintiff’s use of “Star Bock” and “Starbock” does dilute
Defendants’ marks under federal law…
Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158,
167-168 (2d Cir. 2004)
Plaintiff’s federal dilution claim fails also because no evidence of actual
dilution exists…This does not mean that a plaintiff must show the actual
consequences of dilution, such as lost profits…Plaintiffs may rely on consumer
surveys and other circumstantial evidence. Here…plaintiffs…rely heavily on a
survey conducted by [Plaintiff’s expert]. That survey, however, did not use any
[of Defendant’s] packaging, but rather used index cards with the words “MoistOnes” and “Wet Ones” placed out of context. Moreover, the index cards did not
contain the words “Quilted Northern.” The survey therefore cannot be offered as
evidence that the mark “Quilted Northern Moist-Ones,” as it is presented and
packaged, has actually diluted the mark “Wet Ones.”…
214
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295, *88-*89, *92
(S.D.N.Y. 2004)
…[Plaintiff’s expert] found that [Defendant’s] It-bags “cause dilution by
blurring at [twenty-three] percent…”
This finding merits little weight for several reasons. First, screening
questions used in this study rely on respondents’ understanding of [an] ambiguous
word…Second, the study lacks objectivity. Having failed to obtain satisfactory
responses (i.e., no dilution) from his first fifty-eight respondents, [Plaintiff’s
expert] terminated the original survey and started over…Third, [Plaintiff’s expert]
expanded the scope of “dilution” (by blurring) under the FTDA beyond
“distinctiveness,”…by asking questions relating to “desirability.”…Because
desirability is unrelated to a mark’s ability to identify and distinguish [Plaintiff’s]
handbags, inclusion of these questions was erroneous…
Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335, 354, 362, 380-381 (D. N.J.
2002)
…[Plaintiff] relied on a survey…to support its contention that the
[Defendant’s] mark dilutes the [Plaintiff’s] mark.
…
… According to [Plaintiff, Plaintiff’s] survey demonstrated a 14% dilution
of the [Plaintiff’s] mark…
[In Plaintiff’s] survey...ophthalmologists were shown a box [bearing
Defendant’s mark] and asked what other “products,” if any, were brought to
mind…
…
Even fully crediting [Plaintiff’s] survey, it is insufficient on its face to
support a preliminary injunction for trademark dilution. That survey shows at best
a dilution level of 14%…That is less than half of the lowest percentage of dilution
in any reported decision basing a finding of dilution on a survey…Without
dictating that any particular level of dilution is necessary at a minimum, it is plain
that 14% is not adequate to sustain the extraordinary remedy sought here--a
preliminary injunction against an FDA-approved prescription drug…
Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790, 803, 805, 807-808 (W.D. Tenn. 2001)
Courts that have held that the FTDA requires a showing of only a
“likelihood of dilution” criticize focusing on the phrase “causes dilution” as using
“excessive literalism to defeat the intent of the statute.” …They primarily argue
that it will be difficult for trademark owners to provide evidence of actual
dilution, even by such common means as revenue data and consumer surveys:…
…
…to that end, [Plaintiff] has submitted the results of a survey…
…
215
…that…suffices as proof that [Defendant’s] use of the Cartoon Tiger to
market convenience food products causes dilution “by blurring.”…
…
…survey provides evidence that [Plaintiff’s] Tony the Tiger has been
“linked” to [Defendant’s] Cartoon Tiger…
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development,
170 F.3d 449, 463 (4th Cir. 1999)
We affirm as not clearly erroneous the district court’s assessment that the
consumer survey evidence does not support a finding of dilution under the federal
Act. While we might have some concern with the implicit finding that this
evidence does not even show the requisite threshold “mental association” of the
two marks within the consumer market surveyed, we have no concern respecting
the specific finding that the survey evidence does not show that use of
[Defendant’s] junior mark had caused any actual harm to [Plaintiff’s] mark in the
form of a lessening of that mark’s former capacity to identify and distinguish
[Plaintiff’s] circus as its subject. And that, of course, suffices to support the
court’s ultimate conclusion.
Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 501 (M.D. Pa. 1998)
A manufacturer of peanut butter candy failed to show likelihood of
success on its claim that a competitor’s trade dress created a “blurring” of that
portion of its trade dress...as required to obtain a preliminary injunction against
the competitor’s continued use of the competitor’s trade dress in a trademark
dilution action, even though there was a survey showing that...participants...
misidentified the candy as coming from the manufacturer; the survey was
flawed...
216
FALSE ENDORSEMENT SURVEYS
Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568, 1578 (D.C. Colo.. 2000)
[Plaintiff] has not presented any survey evidence as to the existence of
consumer confusion regarding Ms. Giove’s continued affiliation with
[Defendant]. Several courts have held that a plaintiff’s failure to conduct a
consumer survey, assuming it has the financial resources to do so may lead to an
inference that the results of such a survey would be unfavorable…
217
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE SURVEYS
In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154, 1157-1158 (T.T.A.B. 2000)
With regard to the Examining Attorney’s objections, we do agree…that an
insufficient number of survey respondents was included in applicant’s survey.
Moreover…When survey respondents were asked if they thought the hotels
shown in the material provided “are connected or affiliated with the country or
principality of Monaco,” we believe it possible, if not likely, that many of the
survey respondents may have interpreted “connected or affiliated with” to mean
some sort of official or governmental ownership or sponsorship by the
principality of Monaco. The more appropriate question…would have been
whether the survey respondents believed that applicant’s hotels (or hotel services)
have their origin in or come from Monaco…Because we cannot, of course,
determine how the question was interpreted by the survey respondents, and
because of the insufficient number of survey respondents, we do not find the
survey results to be persuasive or probative.
218
SCANDALOUS/DISPARAGING MARKS SURVEYS
Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364, 1367 (T.T.A.B.
1999)
…[Petitioner] also placed in evidence a public opinion study conducted in
1990…with respect to prevalent social attitudes toward certain ethnic groups
including Italian-Americans…
…
…While in the public opinion study made of record by petitioner a general
association was found to exist between Italian-Americans and organized crime, no
mention was made of the term “Mafia,” or whether its use, regardless of context,
would automatically trigger this association.
219
COPYRIGHT SURVEYS
Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 801 (9th Cir. 2003)
…In support of this argument, [Plaintiff] offered into evidence a survey in
which they presented individuals from the general public in a shopping mall with
color photocopies of [Defendant’s] photographs and asked them what meaning
they perceived. Relying on this survey, [Plantiff] asserts that only some
individuals may perceive parodic character.
The issue of whether a work is a parody is a question of law, not a matter
of public majority opinion…
We decline to consider [Plaintiff’s] survey in assessing whether
[Defendant’s] work can be reasonably perceived as a parody. Parody is an
objectively defined rhetorical device. Further, because parody is “a form of social
and literary criticism,” it has “socially significant value as free speech under the
First Amendment.”…While individuals may disagree on the success or extent of a
parody, parodic elements in a work will often justify fair use protection…Use of
surveys in assessing parody would allow majorities to determine the parodic
nature of a work and possibly silence artistic creativity. Allowing majorities to
determine whether a work is a parody would be greatly at odds with the purpose
of the fair use exception and the Copyright Act...
A & M Records v. Napster, Inc., 239 F.3d 1004, 1016-1017 (9th Cir. 2001)
…plaintiffs’ expert…conducted a survey…using a random sample of
college and university students…The court recognized that the [Plaintiff’s expert]
focused on just one segment of the Napster user population and found “evidence
of lost sales attributable to college use to be probative of irreparable harm for
purposes of the preliminary injunction motion.”…
…
As for defendant’s expert…The district court found problems in
[Defendant’s expert’s] minimal role in overseeing the administration of the survey
and the lack of objective data in his report…
A & M Records v. Napster, Inc., 114 F. Supp. 2d 896, 909, 910 n.15, 914 (N.D. Cal. 2000)
…Plaintiffs’ expert…opined that forty-one percent of her college-student
survey respondents “gave a reason for using Napster or described the nature of its
impact on their music purchases in a way which either explicitly indicated or
suggested that Napster displaces CD sales.”…[Plaintiff’s expert’s] overall
conclusion was that “[t]he more songs Napster users have downloaded,” the more
likely they are to admit or imply that such use has reduced their music
purchases…
220
For the reasons discussed in the court’s separate order, the report by
defendant’s expert…does not provide credible evidence that music file-sharing on
Napster stimulates more CD sales than it displaces...
n.15… Among the shortcomings the court noted are…[Defendant’s
expert’s] heavy reliance on journalistic articles and studies that he did not
conduct, the fact the centerpiece of his report is a survey that he only distantly
supervised, and the lack of tables offering statistical breakdowns of survey
respondents and their answers.
…
…[Plaintiff’s expert] reached the overarching conclusion that the more
songs Napster users download, the more likely they are to reveal that such use
reduces their music buying…evidence suggests that sampling and building a free
music library through unauthorized downloading are not mutually exclusive: it is
likely that survey respondents who sample are primarily direct infringers…
221
PATENT SURVEYS
Apple, Inc. v. Samsung Electronics Co., Ltd. 2014 U.S. Dist. LEXIS 29721, *59-*60,
*72, *95 (N.D. Cal. 2014)
...[T]he Court considered evidence stemming from the conjoint
survey conducted by [Plaintiff’s] expert...[Plaintiff’s expert’s]
survey...tested consumers’ willingness to pay for certain smartphone and
tablet features by presenting respondents with four device choices with
varying combinations of different feature sets...
...
[Plaintiff’s expert] employed a web-based conjoint survey
methodology to measure consumer preferences for [Defendant’s]
products...“The general idea behind conjoint analysis is that consumers’
preferences for a particular product are driven by features or descriptions
of features embodied in that product”...
...
The Court has fully evaluated [Plaintiff’s expert’s] conjoint survey
and its results to determine whether they show the degree of connection
necessary to establish that the patented features drive consumer demand
for the infringing products, either directly or circumstantially...the Court
concludes that [Plaintiff’s expert’s] survey evidence is unpersuasive on
this point...
Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678, *13-*14, *17-*22
(N.D. Ill. 2010)
[Plaintiffs’ expert] conducted a survey and an experiment
supporting Plaintiffs’ claims of patent and trade dress infringement, and
prepared an expert report that Plaintiffs seek to admit into evidence. The
survey consisted of asking respondents, who were primarily college
students, to compare the [Defendant’s] Pillow Top calculator to the ‘734
patented design and then with [Plaintiffs’] Bubble Calculator, and to
answer five questions about the comparisons...The experiment was a
classroom experiment designed by [Plaintiffs’ expert] in order to simulate
the purchasing situation in which prospective consumers of the two
calculators might find themselves...[Plaintiffs’ expert] created and
administered the experiment.
...
The probative value of a survey depends in large part upon the
“universe” of respondents, and the reliability of the survey is diminished if
the universe of desired respondents is erroneous or undefined...[Plaintiffs’
expert] did not define a universe when developing the survey...Later,
however, he defines the universe as the general purchasing public with an
ability to perceive...The reliability of the survey is diminished by
222
[Plaintiffs’ expert’s] failure to define his target universe, and its relevance
is greatly harmed by...failure to focus the survey on the consumers in the
market at issue in this case...
Once a universe is identified, a reliable survey must select a
sample population that accurately represents the universe...The survey
population of college students is underinclusive, and thus the survey’s
value depends on the extent to which the excluded population is likely to
react differently from the included population. [Plaintiffs’ expert] does not
analyze this issue, but only states that, based on “common sense,” college
students represent a “conservative population” for the survey...Without a
more adequate justification, however, the underinclusive sample
population seriously diminishes the reliability of the survey...
A reliable survey should avoid the use of confusing or ambiguous
questions...The questions in [Plaintiffs’ expert’s] survey, however, are
replete with potential ambiguities. For example, questions...ask whether
the respondent thinks the calculators “come from a single
source.”...Survey respondents could interpret “source” to mean
manufacturer, retail store, country of origin, or one of many other potential
sources. [Plaintiffs’ expert] testified that a respondent may have been
confused and asked about this language...This potential confusion
undermines the reliability of the survey, even though the existence of any
actual confusion as to the meaning of the questions cannot be ascertained.
Some respondents to a survey will not have an opinion on a
question asked, which can result in a respondent guessing as to the “right”
answer. Reliable surveys address this issue through the use of filter
questions and “don’t know” or “no opinion” answer alternatives...Here,
the questions used in the survey allowed for only “yes” or “no”
responses...The survey’s reliability is significantly compromised by its
failure to use open-ended questions or to allow for “don’t know”
responses...
In order to ensure their objectivity, reliable surveys are conducted
using double-blind research methodology whenever possible...Here, the
administrators knew that the survey was intended for use in a patent
infringement case...The takers also potentially knew the purpose of the
survey before taking it...Failure to conduct an appropriate double-blind
study limits the reliability of the survey.
Steps must be taken to ensure that data are classified and recorded
consistently and accurately. [Plaintiffs’ expert] testified that [Plaintiffs’
expert] received all the survey responses...“in one batch.” [Plaintiffs’
expert’s assistant], however, testified that [Plaintiffs’ expert’s assistant]
sent each day’s results separately....Further, two different people
administered the Survey, and did not use a uniform method of
administration...Worse, it is possible that certain respondents took the
survey more than once...The Court’s confidence in the reliability of the
survey’s collected data is gravely diminished by these collection and
recording irregularities.
223
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1325-1326 (Fed. Cir. 2009)
[Plaintiff’s] second expert…conducted a double-blind survey of
blender users, and testified that during his survey he observed a certain
percentage of users insert the stir stick into the pitcher but not stir it.
[Plaintiff] offered this testimony as evidence that some of [Defendant’s]
customers use the accused products in an infringing manner. The district
court struck the…report as irrelevant because [Plaintiff’s expert] only
testified as to whether and how the survey participants used the stir
stick…The district court concluded that his testimony did not establish
whether any infringing act actually occurred and was therefore not
relevant to the issue of direct infringement on the part of [Defendant’s]
customers…
…
We find that the district court erred as a matter of law in disposing
of the direct infringement claims by requiring direct evidence of
infringement. The court discounted the accusations against [Defendant’s
employees] because there was no testimony or footage showing actual
infringement in those cases. Such evidence, however, is not required…
We also find that the district court erred as a matter of law in
striking the testimony of [Plaintiff’s survey expert] and thereby disposing
of [Plaintiff’s] allegations of direct infringement by [Defendant’s]
customers. [Plaintiff’s expert’s] testimony need not establish the ultimate
question of infringement to be relevant…
We find that the combination of [Defendant’s employees’]
testimony is circumstantial evidence that creates genuine issues of
material fact regarding whether employees of [Defendant] engaged in acts
of direct infringement. We also find that the combination of [Plaintiff’s
experts’] testimonies is circumstantial evidence that created genuine issues
of material fact regarding whether and when the accused device performs
the infringing method…
Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344, 350
(D. Conn. 2005)
A review of [Plaintiffs’ expert’s] surveys…reveals rigorous
methodological standards applied by an experienced survey researcher using a
double blind survey protocol…and clear, precise, and predominately non-leading
questions…In addition, the questions pertained in part to experiences learned by
direct perception and to events that are unlikely to be forgotten, namely the usage
of thermal cyclers in respondent’s lab during a period not exceeding six years, and
were posed to individuals who by self-report were the most knowledgeable in the
lab about such usage.
With respect to the notice prong of Rule 807, defendants had all three
surveys since September 2002. Defendants provided in discovery their invoice
224
database from which [Plaintiffs’ expert] selected respondents and thus
[Defendants] could have conducted its own survey of [Defendants’] customers to
test the reliability of [Plaintiffs’ expert’s] methodology and/or results. In
fact…researchers are prohibited by ethical rules from disclosing the actual
individual identities of the survey respondents and instructed to defend against
Court orders compelling disclosure…The Reference Manual for Scientific
Evidence published by the Federal Judicial Center instructs that, because of such
ethical obligations, identifying information such as names and addresses should
be removed from survey data before it is provided to opposing counsel…
Under the circumstances of record here, the Court believes the name and
address requirement of Rule 807 has been satisfied. To hold otherwise would
require exclusion of trustworthy evidence on material facts in this case and violate
the mandate of Fed. R. Evid. 102…
Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896, *76-*77 (S.D.
Ind. 2004)
…[Plaintiff’s] survey purports to find the approximately 62% of patients
who use portable oxygen units would consider the ESCORT’s design similar to
that of the ‘056 patent. However, the hypothetical “ordinary observer’ in the
Gorham test both speaks to “purchasers” and must be “objective.”…[Plaintiff]
admits that the “purchaser” of the portable oxygen units in question is not the
patient…The purchaser of portable oxygen units is the medical equipment
distributor…[Plaintiff] admits that physicians and medical equipment distributors
were their first targets when it introduced [its oxygen tank] because those groups
made the purchasing decision…It follows then that any survey of “ordinary
observers’ in this case must include medical equipment distributors, at the least,
and possibly, hospitals and physicians, at best, to ensure that all relevant
purchasers’ views are considered. [Plaintiff’s] survey simply misses these key
“ordinary observer” groups, and as a result, is not nearly broad enough to create
an issue of fact on infringement.
Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322, 347 (E.D. N.Y.
2003)
[Plaintiff] introduced survey evidence that purportedly shows that
purchasers of the hangers erroneously identified the [Defendant’s] hanger as
being the same as the design depicted in the ‘246 design patent. In the survey, six
buyers for garment manufacturers were shown a drawing from the ‘246 design
patent and were then shown a collection of hangers including [Defendant’s]
hanger with a size cap and asked, “Do you think any of these hangers are the
same as the hanger in the drawing?” However, the survey is severely flawed and
does not assist in the infringement determination because all the hangers shown in
the survey, other than the [Defendant’s] hanger, did not have upswept arms. As
such, the only hanger remotely related to the dominant feature of the patent (the
upswept arms), was the [Defendant’s] hanger. (For example, the survey did not
225
include a non-[Defendant] design with upswept arms that would not infringe upon
the ‘246 design patent such as any of the alternative designs proposed by
[Plaintiff] in Exhibit 1473.) Moreover, as explained above, the confusion must be
related to the ornamental aspects of the design. Accordingly, the survey is not
probative of confusion…
226
FIRST AMENDMENT ISSUES
Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572, *8, *10 (D. D.C.
2007)
…[The Court] reopened discovery to allow the government and
intervenors to depose plaintiffs’ survey designer and to submit affidavits
in opposition using their own survey experts that would explain why or
whether the internet survey was reliable enough to enable a trier of fact to
render a judgment in plaintiffs’ favor…
…
…the survey itself is fatally flawed. First, plaintiffs’ own expert
admitted that the ad shown to the survey respondents was not attributed to
anyone specifically…He also admitted that it was unlikely that any of the
respondents would have identified, unaided by the design of the survey,
any of the plaintiffs as sponsors of the ad…Second, plaintiffs declined to
provide any underlying documentation about the survey, such as their
expert’s files documenting specific data on the age, distribution, income,
occupation, and gender of the respondents, or even the actual screenshots
of what information was actually shown to the respondents…
Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45, 54, 56, 57 (D. D.C. 2006)
Plaintiffs’ freedom of association claim…rests on their contention
that the Avocado Act forces them to associate with producers against
whom they compete…
…
Plaintiffs’ argument appears calculated to fit within a narrow
exception left open in Livestock Marketing…“if the advertisements
associated their generic pro-beef message with either the individual or
organization respondents, then respondents would have a valid as-applied
First Amendment challenge: because “the government may not…associate
individuals or organizations individually with speech by attributing an
unwanted message to them.”…
Given that Avocado Act promotions make no reference to
individual avocado growers or importers, the Court has grave doubts that
Plaintiffs can succeed on their as-applied claim…
To survive the pending summary judgment Motions, Plaintiffs
must demonstrate that the survey provides enough evidence that a
reasonable factfinder could return a judgment in their favor…
Several of Defendants’ criticisms of the survey’s methodology
seem well-founded…The survey first required respondents to look at an
Avocado Act promotion and then to read a complete list of Plaintiffs. Only
then did respondents proceed to the question: “Do you believe that any of
these companies was the source of the advertisement you just saw”.This
format seems unnecessarily suggestive, and Defendants may be correct
227
that it was “the survey itself, not the advertisement, that planted the seed
of a possible connection between the advertisement and Plaintiffs.”…A
less suggestive survey might have yielded results that are significantly
different, and significantly less favorable to Plaintiffs. Consequently, the
Court is far from satisfied that the survey is reliable enough to enable a
reasonable factfinder to find in Plaintiffs’ favor on their as-applied claim.
228
DAUBERT/ADMISSIBILITY ISSUES
Edward W. Tovey v. Nike, Inc. 2014 U.S. Dist. LEXIS 93905, *24-*25 (N.D. Ohio 2014)
...Plaintiff points to no instance in the record where [Plaintiff’s
expert] explains how her experience reliably supported her conclusion
regarding consumer confusion.
Schütz Container Systems, Inc. v. Mauser Corporation, 2014 U.S. Dist. LEXIS 44059, *5
(N.D. Ga. 2014)
While the Court finds that [Plaintiff’s expert’s] survey has very
limited relevance to the issues to be decided by the Court, the Court finds
that the survey may, in fact, have some relevance. Because this will be a
bench trial, the Court is not concerned about undue prejudice to
Defendants arising from the evidence. Therefore, Defendants’ Motion to
Exclude the Survey and Testimony..is denied...
The Radiance Foundation, Inc. v. National Association For The Advancement Of Colored
People, 2013 U.S. Dist. LEXIS 188098, *8, *11-*12,*14-*16 (E.D. Va. 2013)
Defendant seeks to exclude the testimony of [Plaintiff’s expert].
Defendant asserts that [Plaintiff’s expert] is unqualified and lacks
knowledge of and familiarity with basic trademark concepts and litigation
survey methodology. Defendant further argues that [Plaintiff’s expert’s]
opinions are not founded upon reliable scientific, technical, or otherwise
specialized evidence as required under Daubert v. Merrell Dow Pharms.,
Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993) and Rule
702.
...
As for the first prong of the Daubert test, [Plaintiff’s expert] does
not possess scientific knowledge related to the particular subject matter
upon which she offers opinions for her testimony and report to be
considered reliable...However, [Plaintiff’s expert] opines upon
[Defendant’s expert’s] trademark dilution and confusion survey, and
Plaintiffs have not demonstrated that she understands the intricacies of
surveys prepared for trademark litigation or surveys testing the particular
issues of dilution and likelihood of consumer confusion. [Plaintiff’s
expert’s] opinions relate more generally to surveying, an area in which she
possesses experiential expertise. However, to the extent that she attempts
to proffer opinions about trademark dilution or likelihood of confusion,
these opinions are unreliable.
As for the second prong of the Daubert test, because her testimony
is unreliable, [Plaintiff’s expert’s] report and testimony will not assist this
Court as the trier of fact in determining the reliability of [Defendant’s
expert’s] survey. Plaintiffs have not established that [Plaintiff’s expert]
229
applied her knowledge of consumer surveys reliably to the facts of the
case.
...
The Fourth Circuit noted in Belk, Inc. that consumer survey
research in trademark dilution litigation is not sui generis, requiring
experience designing specific types of surveys. However, Plaintiffs have
not proven that [Plaintiff’s expert’s] general knowledge of consumer
surveys is specialized enough that she has knowledge of the particular
issues in the case, which Belk, Inc. requires...By [Plaintiff’s expert’s] own
admission under oath, she is unfamiliar with trademark law and specific
consumer surveys used to test dilution and confusion in intellectual
property litigation. She admits to having Googled issues after her report
was filed and before her deposition...
The fact that [Plaintiff’s expert] was unfamiliar with Defendant’s
organization, types of trademark litigation consumer surveys and
trademark law at the time of her report and deposition provides the Court
with sufficient evidence to determine that her conclusions regarding
Defendant’s survey evidence are not based on reliable principles and
methods or sufficient facts and data. Based on the Court’s analysis under
Daubert and Rule 702, [Plaintiff’s expert’s] opinions regarding trademark
dilution and likelihood of consumer confusion are inadmissible. However,
the Court finds that [Plaintiff’s expert] may testify to the principles and
methodologies of consumer surveys without offering her opinion on the
survey’s relationship to trademark dilution and likelihood of confusion.
Lifeguard Licensing Corp. v. Gogo Sports, Inc., 2013 U.S. Dist. LEXIS 115668, *16,
(S.D.N.Y. 2013)
... In light of the liberal construction of expert qualification
requirements applied by courts within the Second Circuit and the general
preference against exclusion of expert testimony, the Court finds
[Defendant’s expert] qualified to provide expert testimony...
MPS Entertainment, LLC v. Abercrombie & Fitch Stores, Inc., 2013 U.S. Dist. LEXIS
91193, *37-*39, n.12 (S.D. Fla. 2013)
The plaintiffs concede that there has not been any third party
anecdotal instance of actual confusion...The defendants argue that the
plaintiff cannot overcome the lack of evidence with the fatally flawed
survey proffered by [Plaintiff’s expert], which is the subject of the
defendants’ Daubert motion to exclude the testimony of [Plaintiff’s
expert]...“A survey question that begs its answer by suggesting a link
between plaintiff and defendant cannot be a true indicator of the likelihood
of consumer confusion”...The Court finds that [Plaintiff’s expert’s] survey
is not reliable under Daubert and rejects it. (n.12 [Plaintiff’s expert]
concedes that she is not an expert in Lanham Act or likelihood of
confusion surveys. The plaintiffs do not deny that her survey violates
230
fundamental principles of reliability by planting the notion of infringement
through closed-ended questioning without any directive not to speculate,
failing to include any control whatsoever, and otherwise failing to comply
with the Reference Guide on Survey Research or to case law evaluating
Lanham Act surveys under Daubert...) The defendants’ motion to exclude
[Plaintiff’s expert’s] expert opinion testimony is granted...
Richard Reinsdorf v. Skechers U.S.A., 2012 U.S. Dist. LEXIS 145495, *21-*22, *29
(C.D. Cal. 2012)
...The court must, therefore, determine whether a preponderance of
the evidence establishes that the reasoning or methodology underlying
expert testimony is scientifically valid...Unless survey evidence is
conducted according to accepted principles, it is not admissible in the first
instance...
Here, the preponderance of the evidence indicates that the
[Plaintiff’s expert’s] survey was not conducted according to accepted
scientific principles. [Plaintiff’s expert] did not identify any basis, save for
his own undocumented research, for selecting the survey population that
he used. There is no indication that the survey population had any
relationship to the relevant population of [Defendants’]
consumers...Furthermore, though the survey purported to examine the role
that [Plaintiff’s] photos played in consumers’ association of certain ads
with [Defendants’] brand, the survey did not include any controls or basis
for comparison.
These inadequacies speak not merely to the weight that should be
accorded to the survey, but rather to the fundamental reliability of
[Plaintiff’s expert’s] approach. [Plaintiff] does not identify any scientific
principles underlying the [Plaintiff’s expert’s] survey, which appears to
violate numerous accepted practices in the field of survey research...
...
The expert opinions of [Plaintiff’s experts] do not satisfy the
requirements of Federal Rule of Evidence 702. Accordingly,
[Defendants’] Motion in Limine to exclude those opinions are granted.
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877, *21-*23 (N.D.
Cal. 2012)
In light of [Plaintiff’s] dismissal of its claim that [Defendant’s]
phones infringe [Plaintiff’s] iPhone trade dress, the Court agrees with
[Plaintiff] that [Defendant’s expert’s] phone confusion survey is no longer
legally relevant to any issues in this case and is therefore excludable under
FRE 402. To establish a trade dress infringement claim, a plaintiff must
show likelihood of consumer confusion, whereas a trade dilution claim
requires only that “the defendant’s use of the mark is likely to cause
dilution by blurring or dilution by tarnishment.”...The latter can be
231
established by showing that “the ‘association arising from the similarity
between a mark or trade name and a famous mark . . . impairs the
distinctiveness of the famous mark.’”...While a showing that confusion is
likely may evidence an association between products, the absence of
confusion is not probative of lack of dilution...Because [Defendant]
presumably seeks to introduce phone confusion survey evidence in order
to show the absence of confusion, such evidence would not be relevant to
[Plaintiff’s] iPhone trade dress dilution claim and would be unduly
prejudicial and confusing to the jury.
Native Amer. Arts, Inc. v. Bud K World Wide, Inc., 2012 U.S. Dist. LEXIS 69715, *4,
*13, *15, *19-*21 (M.D. Ga. 2012)
...For each product, the respondent was asked the question: “Do
you believe this illustration suggests that the product shown is an authentic
(Indian-made) Native American Indian product?” The respondent could
answer “Yes,” “No,” or “Don’t Know.”
...
...the Court finds that the survey must be excluded for other
reasons...
...
In order to be considered reliable, a survey must resemble the way
consumers would view the products in the marketplace...
...
...The Court finds that [Plaintiff’s expert’s] failure to present the
complete manner in which Defendant displays, offers to sell, or sells it
goods render the survey unreliable under Rule 702 and misleading and
confusing under Rule 403.
The questions asked in the survey pose another problem...
...
The Court agrees with Defendant that the question regarding the
products is leading and slanted. It implies the answer to the ultimate
question the survey was designed to test, which is improper. The
respondents should have been asked “Who makes this product?” or “Who
do you believe makes this product based on the picture and text
provided?”...
In addition to the leading nature of the questions, the Court
believes the question regarding the products is ambiguous, requiring the
exclusion of the survey...
Medisim Ltd. v. BestMed LLC, 861 F.Supp.2d 158, 178-180 (S.D.N.Y. 2012)
[Defendant] claims that [Plaintiff’s expert’s] Report should be
excluded under Rules 702 and 403 because it is flawed in two major ways:
(a) [Plaintiff’s expert] used an improper respondent universe, and (2)
[Plaintiff’s expert] used an improper control product...
232
...
...[Plaintiff’s expert] used screening questions to ensure that survey
respondents were likely to shop at stores that sold thermometers made by
the parties. However, he did nothing to ensure that his respondents were
likely to purchase those products. According to [Defendant], this failure
means that [Plaintiff’s expert] surveyed the wrong universe of
respondents, leading to results that are necessarily irrelevant to this case...
...
[Defendant] raises two points in support of its argument that
[Plaintiff’s expert] used an improper control: (1) the control product
[Plaintiff’s expert] used “does not exist in the marketplace and shares few
similarities with either the K-Jump-manufactured or the outdated
[Plaintiff’s]-manufactured thermometers,”...and (2) that because
[Plaintiff’s expert] did not specify which features of the [Plaintiff’s]
product’s packaging he was testing, it is impossible to tell what generated
the reported confusion, thereby “rendering [Plaintiff’s expert’s] analysis
meaningless.”...
...
While both of the flaws noted above are quite serious, neither of
them would justify excluding [Plaintiff’s expert’s] report if taken
separately. Nonetheless, because each flaw goes to a fundamental element
of the survey rather than an issue on the periphery, their combined impact
is too significant to overlook under Daubert and Rule 702. Accordingly,
the [Plaintiff’s expert’s] report is excluded in its entirety...
Fancaster, Inc. v. Comcast Corp., 832 F. Supp. 2d 380, 396-399, 405-406 (D. N.J. 2011)
[Defendant] submits survey evidence to show that there is little
risk of confusion between the FANCAST and fancaster marks.
Specifically, [Defendant] submits two surveys...in March 2009 and March
2011, respectively...
...
The March 2009 survey used a format known as a Sequential
Lineup. That format involves “first exposing respondents to the
defendant’s mark prior to showing respondents the plaintiff’s mark (as
well as other marks), thereby simulating a scenario in which a consumer
comes to learn about defendant’s mark and then encounters plaintiff’s
mark.”...Each respondent in the Test Group was shown a three-page
printout of www.fancast.com. The printout was taken away and the
“(r)espondents were then instructed that they were going to be shown
some websites and asked some questions.”...“One at a time, respondents
were then shown and asked about four websites: (a) Fancaster.com; (b)
Veoh.com; (c) Musicvideocast.com; and (d) Tvfanonline.com."...In
contrast to the printout if [sic] the FANCAST website, these websites were
shown to respondents as static screenshots on a computer screen.
...
233
In contrast to the March 2009 survey’s Sequential Lineup format,
the March 2011 used an Eveready format, under which “respondents are
exposed only to use of one party’s mark and are asked questions to see
whether they confuse it with the other party’s mark.”...“In the context of
reverse confusion, an Eveready survey involves exposing respondents to
the senior user’s mark to determine whether it is mistakenly connected to
the infringing junior user.”...
209 respondents participated in the March 2011 survey. Instead of
a printout, they were first “shown the current, live (f)ancaster web site
(starting on the home page) and asked to take as much time as they needed
to review it.”...They were also given a mouse and allowed to click around
any section of the website...
...
A survey must be “designed to examine the impression presented
to the consumer by the accused product. Therefore, (it) must use the
proper stimulus, one that tests for confusion by replicating marketplace
conditions.”...Accordingly, the results of a survey that does not adequately
simulate how a consumer would encounter a trademark are neither reliable
nor probative.
[Plaintiff] advances several ways in which the March 2009 survey
fails to reflect marketplace conditions, only one of which need be
addressed by the Court: that [Defendant’s expert] used a printout and
static screenshots of the fancast.com fancaster.com homepages instead of
live versions of those websites. [Defendant’s expert’s] use of a printout
and static screenshots, instead of live websites, provide ample grounds on
which to exclude the March 2009 survey. For one, it is difficult to fathom
how presenting a respondent with a paper printout of the FANCAST
homepage in anyway replicates how an Internet user would encounter and
perceive the FANCAST website in the marketplace...Websites,
particularly those that offer video content, are meant to be viewed on a
computer and allow consumers to browse and interact with them via
hyperlinks. The FANCAST printout offered none of these aspects...
[Defendant] contends that the printout and static screenshots
“provided a representative snapshot of the content available on the
sites.”...This contention is unavailing. While an image of a website’s
homepage may accurately summarize the nature of its content and
services, it cannot meaningfully test for confusion if it is not presented in
the way that an Internet user would actually encounter it...Notably, in his
March 2011 survey, [Defendant’s expert] presented respondents with a
live version of the fancaster website and allowed them to browse it on a
computer, and [Defendant] presents no reason why it would have been any
less appropriate or practicable to do so in the context of the March 2009
survey. Accordingly, this methodology deprives the March 2009 of
reliability and therefore merits its exclusion as well as exclusion of any
testimony related thereto.
234
Innovation Ventures, LLC v. N2G Distributing, Inc., 2011 U.S. Dist. LEXIS 137115, *4*8, *10-*13 (E.D. Mich. 2011)
[Plaintiff’s expert’s] study consisted of a “shopping mall intercept”
at eight locations throughout the United States targeting “buyers and
potential buyers of 2-ounce energy drinks...”...The study participants were
shown six television commercials, including one commercial for 5-Hour
Energy. Afterward, the participants were shown two photographs, one of
the front side of Defendants' 6 Hour Energy Shot bottle and one of the
front side of a control product called ROCK ON, and then asked if either
of the two energy drinks was advertised in the television ads the
participant had just watched...
Defendants now seek to exclude [Plaintiff’s expert’s] report and
expert testimony under FRE 702 and Daubert v. Merrell Dow
Pharmaceuticals... Defendants argue that [Plaintiff’s expert’s] study is
fatally flawed because: (1) the study population was improper; (2) the
study used leading and suggestive questions; (3) the study did not replicate
market conditions; (4) the ROCK ON product was not a proper control,
and (5) the study violated proper survey techniques...
...
The Court finds that [Plaintiff’s expert’s] report is based on a
flawed and unreliable foundation for the following reasons.
In the place of actual product bottles, study participants were asked
to view two pictures of just the front of the products, one of Defendants’
product and one of a control product called “ROCK ON.” Participants
were thus unable to pick up and look at the products, as would be the case
under actual market conditions. “A survey that fails to adequately replicate
market conditions is entitled to little weight, if any.”...
...
“A survey is not reliable if it suggests to the respondents an answer
that would not otherwise have occurred to them.”...After viewing six
television commercials, one of which was for Plaintiff's 5 Hour Energy
product, participants were shown a picture of Defendants’ product and
asked three questions. The first question was: “Was this energy drink
advertised in any of the TV ads you saw, or not?”...Second, participants
were asked, “Do you think the company who makes the energy drink you
saw in the TV ad, also makes this one, or not?”...Finally, third,
participants were asked, “Was the name 6 Hour ENERGY approved,
licensed or sponsored by the company who makes the energy drink you
saw in the TV ad, or not?”...This final question, combined with the first
two questions, clearly evidences the suggestiveness of the question
“trifecta,” and infected the objectivity of the study.
The Court finds that the above three compound questions were
improperly designed to elicit a response in favor of Plaintiff.
[Plaintiff’s expert] testified at the Daubert hearing that it was not
relevant whether study participants answered “don’t know” to any survey
235
questions, or were informed that “don’t know” was an acceptable answer.
The Court disagrees, and finds that the survey should have used a quasifilter question to reduce guessing by providing “don’t know” or “no
opinion” options as part of the question...
Although [Plaintiff’s expert’s] survey included a “No/Don’t know”
option, there is no evidence that the individuals administering the survey
informed the participants that “don’t know” was an acceptable answer. It
is therefore likely that a significant segment of study participants felt
pressured to guess in answering certain survey questions...
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2011 U.S. Dist. LEXIS 24566, *20, *22*23, *25, *26-*27 (D. Md. 2011)
[Plaintiff] has moved to exclude the expert report and testimony of
[Defendant’s expert]...[Plaintiff] contends that the...Report should be
excluded (1) under Fed. R. Evid. 702 and Daubert v. Merrell Dow
Pharmaceuticals...
...
[Plaintiff] argues that [Defendant’s expert’s] Report is
“methodologically flawed” and lacking “probative value” because it failed
to approximate the actual marketplace conditions in which consumers
view its mark...[Plaintiff] contends that [Defendant’s expert] improperly
removed from its web page: (1) the website title bar with the text “Secrets
Resorts & Spas,” and (2) copyright and contact information...
...
Removal of the web address bar and copyright and contact
information is not a basis for excluding the [Defendant’s expert’s]
Report...
...
Here, removal of the web address bar and copyright and contact
information did not deprive survey participants of sufficient information to
determine that the print-out was the [Defendant’s] web page. “Secrets
Resorts & Spas” appears prominently in three locations on the page and is
the only logo portrayed. Further, knowledge of the web address and other
removed information was not necessary for survey participants to reliably
answer [Defendant’s expert’s] questions about the relationship between
the [Defendant’s] web page and the other visual and audio stimuli.
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948, *28 (D. Utah
2010)
...Although technical flaws typically go to weight rather than
admissibility, the flaws in this survey’s universe and crucial questions are
so substantial as to render the survey unreliable. The problem is
exacerbated by [Plaintiff’s expert’s] failure to design the survey so as to
allow subclasses to be separately examined to test the validity of the
236
information. For example, the threshold question was compound without
any ability to determine which respondents had actually used or would use
the Internet to purchase contact lenses. The court therefore concludes that
Plaintiff has failed in its burden of establishing that [Plaintiff’s expert’s]
survey is admissible under Rule 702.
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721, *39-*42 n.2 (N.D. Ill.
2010)
n.2 During the Daubert hearing, the parties raised the issue of
whether expert testimony was necessary to establish the materiality
element in Lanham Act cases. Courts do not require that a party proffer
expert testimony to establish that the subject of the false or misleading
advertising was material to the consumer’s decision to purchase the goods.
See, e.g., Osmose, Inc. v. Viance, LLC, 210 U.S .App. LEXIS 15896, 48-49
(11th Cir. July 30, 2010) (holding that in order to establish materiality the
plaintiff must demonstrate that “the defendant’s deception is likely to
influence the purchasing decision” and upholding district court’s finding
that the materiality of the defendant’s statements were “self-evident”
because “the advertisements attacked an inherent quality of [the product],
namely its ability to prevent decay and preserve the structural integrity of
wood”); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211,
1226 (11th Cir. 2008) (holding that the evidence “amply supports the
district court’s conclusion that [the defendant’s] statements are material to
consumers’ purchasing decisions” based on letters from doctors who had
purchased the machine at issue and expressed their dissatisfaction with
their inability to rely on the claims regarding the machine at issue in the
litigation); Cashmere & Camel Hair Mfs. Inst. v. Saks Fifth Ave., 284 F.3d
302, 311-312 (1st Cir. 2002) (holding that it was reasonable to conclude
that “defendants’ misrepresentation of the blazers’ cashmere content was
material because it relates to a characteristic that defines the product at
issue, as well as the market in which it is sold: and that it was “reasonable
to infer from defendants’ aggressive marketing strategy highlighting the
‘cashmere’ nature of the blazers that defendants themselves believed
cashmere to be an inherent and important characteristic of the blazers”)...
[Plaintiff’s] attempt to save [Plaintiff’s expert’s] opinion by
arguing that [Plaintiff’s expert] is merely telling the jury what the
appropriate materiality inquiry is does not save the day. As discussed
below, the Court will instruct the jury as to materiality in this case, not
[Plaintiff’s expert].
Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678, *16-*17 n.2, *24*25 (N.D. Ill. 2010)
n.2 ...the Court notes that in addition to the portions of [Plaintiffs’
expert’s] testimony that are based upon the survey and the experiment,
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[Plaintiffs’ expert’s] planned testimony includes analysis of the ‘734
patent whether there is infringement of the ‘734 patent in this case,
discussion of trade dress infringement, and analysis of secondary meaning
with respect to trade dress doctrine...[Plaintiffs’ expert’s] educational and
professional background does not show expertise in the areas of patent
infringement, patent claim construction or analysis, comparison of patent
claims, trade dress infringement, secondary meaning, or likelihood of
confusion. Further, [Plaintiffs’ expert] states “I have been informed that
determining patent infringement is a two-step process.”...This statement
further indicates a lack of expertise in the area of patent infringement. The
Court therefore finds that [Plaintiffs’ expert] is unqualified to testify as an
expert witness with respect to these issues.
...
The district court is not required to conduct a hearing when
considering whether proposed expert testimony should be admitted...It is
within the court’s discretion to decide whether there is a sufficient basis to
exclude expert testimony without holding a hearing...In light of [Plaintiffs’
expert’s] failure to comply with generally-accepted principles of survey
research and lack of evidence to show that he satisfies the requirements of
Rule 702, the Court finds there is a sufficient basis for excluding
[Plaintiffs’ expert’s] expert testimony without a hearing. Expert testimony
regarding the behavior and expectations of consumers in the marketplace
is usually relevant because consumer behavior is a critical factor in the
consideration of trade dress...Here, however, the Court finds that the
methods used in the administration of both the survey and the experiment
render the data collected of so little reliability and utility as to be
irrelevant...[Plaintiffs’ expert’s] proposed testimony provides no helpful
evidence as to the actual behavior of actual consumers of the products at
issue in this litigation, and is therefore excluded.
[Defendant’s] Motion to Strike [Plaintiffs’ expert’s] proposed
testimony is therefore granted. The Court’s analysis of [Defendant’s]
Motions for Summary Judgment will proceed without reference to
[Plaintiffs’ expert’s] expert report.
Rexall Sundown, Inc. v. Perrigo Co., 651 F. Supp. 2d 9, 24-26, 28 (E.D.N.Y. 2009)
[Defendant] contends that [Plaintiff’s] survey is inadmissible
because it is fatally flawed and, therefore, [Plaintiff’s expert’s] Report
should not be considered by this Court… As set forth below, the Court
finds that the [Plaintiff’s expert’s] Report is admissible under Daubert and
is sufficient to raise genuine issues of fact to survive summary judgment…
In deciding whether a motion for summary judgment should be
granted, a district court may only consider admissible evidence…In other
words, “(t)he court performs the same role at the summary judgment phase
as at trial; an expert’s report is not a talisman against summary
judgment.”…Thus, if the expert testimony is excluded as inadmissible
238
under the Rule 702 framework articulated in Daubert and its progeny, the
summary judgment determination is made by the district court on a record
that does not contain that evidence…Such an analysis must be conducted
even if precluding the expert testimony would be outcome
determinative…Accordingly, the Court must examine the admissibility of
plaintiff’s expert testimony in ruling on defendant’s motion for summary
judgment.
…Because defendant has only challenged the admissibility of the
survey and [Plaintiff’s expert’s] testimony…the Court will proceed to the
question of whether that report adequately depends upon “reliable data and
methodology.”
With respect to reliability, “‘the district court should consider the
indicia of reliability identified in Rule 702, namely, (1) that the testimony
is grounded on sufficient facts or data; (2) that the testimony is the product
of reliable principles and methods; and (3) that the witness has applied the
principles and methods reliably to the facts of the case.’”…
The proponent of the expert testimony bears the burden of
establishing the admissibility of such testimony under the Daubert
framework by a preponderance of the evidence standard…
…
Having reviewed the submissions related to [Plaintiff’s] expert,
including [Plaintiff’s expert’s] Declaration, the Court concludes that there
is no basis to exclude his testimony under Daubert. [Defendant’s]
objections in this particular case regarding the methodology of the study,
even if proven and fully credited, clearly go to the weight of the
[Plaintiff’s expert’s] Report, rather than its admissibility…
[Defendant] has highlighted potential flaws in the survey
methodology, but given that there is sufficient indicia of reliability to
allow admission of [Plaintiff’s expert’s] testimony, “[v]igorous cross
examination, presentation of contrary evidence, and careful instruction on
the burden of proof are the traditional and appropriate means of attacking
shaky but admissible evidence.”…Accordingly, the Court declines to rule
at this juncture that the survey is so unreliable as to be inadmissible.
Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458, *17
n.3 (S.D.N.Y. 2009)
…[Defendant] argues that the [Plaintiff’s expert’s] survey is
flawed in its methodology and that the expert report based on the survey
fails to meet the standard for admissibility under Daubert…In general,
assertions of methodological errors in a survey “bear exclusively on the
weight to be given the survey rather than bearing on an admissibility
determination under Fed. R. Evid. 403.”…Moreover, where a bench trial
is in prospect, resoving Daubert questions at a pretrial stage is generally
less efficient than simply hearing the evidence; if [Defendant’s] objections
are well-taken, the testimony will be disregarded in any event.
239
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384, 439 (D. N.J.
2009)
Together, Daubert and Rule 702 impose three requirements for
admissibility of expert testimony: “qualification, reliability, and
fit.”…First, the witness must have specialized expertise appropriate to his
testimony…Second, the testimony must be reliable, which excludes
opinions based on subjective belief or speculation; the opinion instead
must “reliably flow from the facts known to the expert and the
methodology used.”…Third, the testimony must be relevant to issues in
the case and assist the trier of fact…
The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *12 (D.
Utah 2008)
…Defendants argue that [Plaintiff’s expert’s] testimony is
insufficient because he surveyed persons other than those who were
known to actually have heard the Amvox message. As this Court noted in
its Order denying Defendants’ Daubert challenge to the admissibility of
[Plaintiff’s expert’s] testimony, such challenges to the survey are
credibility challenges for the jury to resolve…
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495, *11-*12 (E.D. Tex. 2008)
The Court also agrees that [Plaintiff] cannot prove that
[Defendant’s] actions create a likelihood of confusion…[Defendant] has
attached as an exhibit the results of a survey performed by its expert…the
challenges to which this Court has addressed in a separate order.
[Defendant’s expert] finds no likelihood of confusion. The Court has also
previously excluded the report of [Plaintiff’s] expert…finding such survey
to be too flawed to be reliable. As [Defendant] correctly points out, only
[its expert’s] survey addresses the issue of source confusion.
Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763, *3-*6, *8 (D. Kan. 2008)
The Court has broad discretion in deciding whether to admit expert
testimony…Fed. R. Evid. 702 provides that a witness who is qualified by
knowledge, skill, experience, training or education may testify in the form
of opinion or otherwise as to scientific, technical or other specialized
knowledge if such testimony will assist the trier of fact to understand the
evidence or to determine a fact in issue, “if (1) the testimony is based upon
sufficient facts or data, (2) the testimony is the product of reliable
principles and methods, and (3) the witness has applied the principles and
methods reliably to the facts of the case.”…
240
The proponent of expert testimony must show “a grounding in the
methods and procedures of science which must be based on actual
knowledge and not subjective belief or unaccepted speculation.”…In order
to determine whether an expert opinion is admissible, the Court performs a
two-step analysis. “[A] district court must [first] determine if the expert’s
proffered testimony . . . has ‘a reliable basis in the knowledge and
experience of his discipline.’” …Second, the district court must further
inquire into whether the proposed testimony is sufficiently “relevant to the
task at hand.”…An expert opinion “must be based on facts which enable
[him] to express a reasonably accurate conclusion as opposed to
conjecture or speculation . . . absolute certainty is not required.”…And it
is not necessary to prove that the expert is “indisputably correct,” but only
that the “method employed by the expert in reaching the conclusion is
scientifically sound and that the opinion is based on facts which satisfy
Rule 702’s reliability requirements.”…
Daubert sets forth a non-exhaustive list of four factors that the trial
court may consider when conducting its inquiry under Rule 702: (1)
whether the theory used can be and has been tested; (2) whether it has
been subjected to peer review and publication; (3) the known or potential
rate of error; and (4) general acceptance in the scientific community…But
“the gatekeeping inquiry must be tied to the facts of a particular case.”…
It is within the discretion of the trail court to determine how to
perform its gatekeeping function under Daubert….The most common
method for fulfilling this function is a Daubert hearing, although such a
process is not specifically mandated…
*
As a general rule, “public recognition surveys may be used to
establish a likelihood of confusion."…And “[t]echnical and
methodological deficiencies in a survey usually relate to the weight to be
given to the survey, not its admissibility.”…However, “when the
deficiencies are so substantial as to render the survey’s conclusions
untrustworthy, a court should exclude the survey from evidence.”…To
determine if a survey is reliable and trustworthy, the Court considers a
variety of factors…
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347, 367-368
(W.D.N.Y. 2008)
In the instant case, [Defendant] has presented evidence regarding
actual instances of consumer confusion, as well as survey evidence. With
regard to the survey evidence, [Defendant] states that its “professional
market survey” “confirms that there is a significant tendency for
consumers to be confused…However, the Court declines to consider the
pilot survey, since [Defendant] did not produce it in discovery…Even if
[Defendant] had produced the survey summary during discovery, the
241
Court would exclude it in any event, since it does not satisfy the criteria
for admissibility…
Here, [Defendant’s] “survey” is a two-page summary of a pilot
survey involving 52 consumers…[n.18 [Defendant] did not submit an
affidavit from the individuals(s) who conducted the pilot survey.]…The
summary does not include photographs of the actual bottles used.
Moreover, although the summary states that the consumers “were asked a
series of questions designed to assess confusion as to source, confusion as
to association or connection, and confusion as to sponsorship or
authorization, and the reasons for their confusion,” it does not provide the
actual questions asked or answers given…Consequently, the Court cannot
determine if the summary evidence is reliable…
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 864 n.8 (10th Cir. 2008)
n.8 That brings us to the question of [Plaintiff’s] survey evidence.
Evidence of actual confusion is often introduced through the use of
surveys, “although their evidentiary value depends on the methodology
and question asked.”…Following a Daubert hearing, the district court
concluded flaws in methodology made [Plaintiff’s] survey data and
supporting expert testimony unreliable “as a basis for drawing conclusions
about confusion or the likelihood of confusion in the relevant market of
potential purchasers of the type of services offered by [Plaintiff]…A
careful review of the record in light of the applicable law makes clear the
district court most assuredly did not abuse its discretion in excluding from
trial [Plaintiff’s] survey evidence…The survey suffered from question
bias, interviewer bias, location bias, participant bias, and timing bias…
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 561-563
(S.D.N.Y. 2007)
District courts are tasked with the “special obligation”…of serving
as the “gatekeepers” of expert evidence, and must therefore decide which
experts may testify and present evidence before the jury…Recognizing
that a purported expert’s opinion often carries special weight with the jury
even when unwarranted,…the Supreme Court has directed district courts
to “ensure that any and all scientific testimony or evidence admitted is not
only relevant, but reliable.”…Courts are given “broad latitude” in deciding
“how to determine reliability” and in making the “ultimate reliability
determination.”…In doing so, however, courts are reminded that the
Federal Rules of Evidence favor the admissibility of expert
testimony,…and their “role as gatekeeper is not intended to serve as a
replacement for the adversary system.”…Indeed, “where the expert’s
conclusion is drawn from a reliable methodology…the correctness of that
conclusion is still an issue for the finder of fact.”…As a result, excluding
expert testimony is the exception rather than the rule,…particularly since
242
“vigorous cross-examination, presentation of contrary evidence, and
careful instruction on the burden of proof” can serve as the means to
“attack shaky but admissible evidence.”…[Footnotes omitted.]
*
As evident from the Report and Recommendation…issued
by…[the Special Masters, Louis Vuitton Malletier v. Dooney & Bourke,
Inc., 2007 U.S. Dist. LEXIS 92167 (S.D.N.Y. 2007)], much of the expert
testimony proffered by the parties here warrants exclusion. The Special
Masters acknowledged that their recommendation to exclude the majority
of the expert testimony may seem “drastic.”…They justify their
conclusions, inter alia, on the ground that while methodological flaws in a
survey generally raise questions of weight rather than admissibility,
“questions of weight, when sufficiently accumulated, become so serious as
to require exclusion.”…
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320,
*20, *24-*25, *31-*33 (S.D.N.Y. 2007)
The [Plaintiff’s expert’s] Survey is so flawed that its probative
value is substantially outweighed by its potential for unfair prejudice and
the likelihood that it will confuse or mislead the jury. Two major defects
strip the [Plaintiff’s expert’s] Survey of probative value. Specifically, the
survey (1) employed a format that failed to approximate real world
conditions and was impermissibly leading, and (2) used improper stimuli.
*
In addition to failing to approximate actual marketplace conditions,
the survey’s back-to-back design was impermissibly leading. After
viewing the seriatim display of non-competing products that few if any
respondents actually would have encountered in close physical or
temporal proximity in real life, the respondents were given multiple choice
questions in which they were asked whether they believed a connection, as
to source, business relationship, or sponsorship, existed between the
companies whose marks the respondents had just seen. Rather than
measure any actual confusion, however, these questions were far more
likely to generate “demand effects” by suggesting the existence of a
connection between the products that the respondents would not have
made on their own…
*
Here, the [Plaintiff’s expert’s] Survey displayed to respondents a
purported “ad” for [Plaintiff], in the form of a blown-up photo of a
Blackberry cellphone that prominently featured the [Plaintiff’s] logo. That
“ad”, however, was not an actual advertisement that a prospective user of
[Plaintiff’s] products would ever encounter but rather was a page prepared
by [Plaintiff] as promotional material, designed for viewing by
[Plaintiff’s] direct business-to-business customers…Thus, because
[Plaintiff’s] mark was not shown as it is used in commerce,”…its use in
243
the survey was improper and further detracts from the survey’s probative
value.
In addition, the pages of Cargo magazine were not sufficiently
representative of [Defendant’s] product…Although the pages were taken
from an actual issue of Cargo, a respondent, viewing the Cargo cover and
interior page, would be highly likely to believe that Cargo was involved in
the same line of business as the company that produced the [Plaintiff’s]
“ads”, namely, providing wirelss or web-related products and services,
when in fact Cargo devoted only a small percentage of its overall content
to such products and services.
Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178,
1181-1182 (D. Kan. 2007)
Defendant does not contest [Plaintiff’s expert’s] qualifications or
analysis of the survey data. Instead, defendant argues that the survey is
unreliable, and thus, [Plaintiff’s expert’s] expert opinion does not rest on a
reliable foundation and is irrelevant to the task at hand. Generally, public
recognition surveys may be used to establish a likelihood of
confusion…Technical and methodological deficiencies in a survey usually
relate to the weight to be given to the survey, not its admissibility…But,
when the “deficiencies are so substantial as to render the survey’s
conclusions untrustworthy, a court should exclude the survey from
evidence.”…Daubert underscores the trial court’s responsibility to ensure
that survey evidence is both reliable and relevant…
*
For the following reasons, the court finds that the survey was not
conducted according to generally accepted survey principles. First, the
survey universe is underinclusive. The survey participants are people who
visited plaintiff’s promotional booth at one shooting tournament--the 2006
Grand American. Only people who attended the tournament and were
already familiar with plaintiff or were interested in learning more about
plaintiff’s products were surveyed. Second, the survey participants are not
representative of the universe of prospective buyers because they were all
familiar with plaintiff or in close proximity to plaintiff’s promotional
material. Other members of the relevant universe are unrepresented. Third,
the survey question is not clear or precise. The survey question, “Who
makes these gunpowders?,” is confusing. It implies that the survey is
asking about gunpowder manufacturers, but the “correct” answers include
companies that only sell, not manufacture, gunpowder. The phrasing of
the question could have skewed the results.
Finally, the survey process was not objective. The survey was
designed by plaintiff’s counsel. Nothing in the record suggests that
plaintiff’s counsel has any experience with designing or conducting
market surveys. Plaintiff’s employees conducted the survey while they
were wearing shirts and hats with plaintiff’s logo. The survey was taken at
244
plaintiff’s promotional booth, which had large signs with plaintiff’s logo
and other promotional material on display. The participants were given
free samples of plaintiff’s gunpowder and a chance to win eight pounds of
gunpowder. Additionally, a biased method was used for the selection of
participants--only people familiar with plaintiff were surveyed…
After reviewing the record, the court finds that the…Survey is
untrustworthy and inadmissible. Because [Plaintiff’s expert’s] expert
opinions and report rely on the untrustworthy survey, they do not meet the
standards of Federal Rule of Evidence 702 or Daubert and are
inadmissible.
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS
95565, *13, *16, *26-*27 (N.D. Ga. 2007)
The plaintiffs object to the admissibility of [Defendant’s] survey
on the basis that, inter alia, the “Thermos Survey” was the wrong survey
methodology to use in concluding that the term “nite lights” was not
generic…The plaintiffs’ contention is while it may be true that high usage
of a term may show “genericness,” it does not follow that the lack of
usage shows that the term is not generic…Because of this, the plaintiffs
contend that the “Thermos Survey” is irrelevant to show non- genericness
of the mark NITE LITES. The plaintiffs contend that [Defendant] should
have employed a “Teflon Survey” model instead of the “Thermos
Survey.”
*
…The “Thermos Survey” has been repeatedly tested, and a
potential error rate has been identified…
The court is not persuaded that the use by [Defendant] of a
“Thermos Survey” to conclude that a term is not generic is sufficiently
beyond the standards practiced in the field of surveying so as to deem the
survey unreliable…
*
…The court finds that [Defendant’s] survey meets the criteria of
helpfulness to the trier of fact given the specific allegations and
contentions of this case.
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681, *2-*5, *7, *10*11, *13, *17-*19, *21-*22, *25-*29, *32, *52, *54-*55, *58 (E.D. Pa. 2007)
…[Plaintiff] moved to exclude surveys and related testimony from
two of the [Defendant’s] expert witnesses, arguing that such evidence is
inadmissible under Rule 702 of the Federal Rules of Evidence and
pursuant to Daubert v. Merrell Dow Pharmaceuticals, Inc.…and its
progeny…
…
245
In Daubert, the Supreme Court imposed upon district courts the
role of a gatekeeper, in order to “ensure that any and all scientific evidence
is not only relevant, but reliable.”…
…
The first requirement, whether the witness is qualified as an expert,
has been interpreted liberally to encompass “a broad range of knowledge,
skills, and training.”…
The second prong requires the expert’s testimony to be reliable….
The final prong requires that the expert testimony “fit” by assisting
the trier of fact…
…
[Plaintiff] filed a Motion to Exclude the Survey[s] Conducted by
[both of Defendant’s survey experts] and all Related Testimony and
Opinions…In its motions, [Plaintiff] does not challenge [Defendant’s
experts’] respective qualifications, experience or credentials. In general,
[Plaintiff] argues that [Defendant’s second expert’s] survey fails the
“reliability” prong and that [Defendant’s first expert’s] survey fails the
“fit” and “reliability” prongs of the Daubert analysis.
The Federal Rules of Evidence “embody a strong and undeniable
preference for admitting any evidence which has the potential for assisting
the trier of fact.”…Rule 702 has a “liberal policy of admissibility.”…In a
Lanham Act case, where the fact-finder must determine whether an
advertising claim is deceptive or misleading, courts have recognized that it
may be that “the success of a plaintiff’s false advertising claim will turn
‘on the persuasiveness of a consumer survey.’”…The Court of Appeals for
the Third Circuit has held that the proponent of a consumer survey has the
burden of establishing that it was conducted in accordance with accepted
principles of survey research…
Courts in the Third Circuit have generally held that a survey’s
“technical unreliability goes to the weight accorded a survey, not its
admissibility”…Typically, a court will not exclude a survey unless it is so
flawed that it would be completely unhelpful or harmful to the trier of
fact…
…
[Defendant’s First Expert’s Survey]
[Plaintiff] does not contest [Defendant’s first expert’s] credentials
or qualifications. Rather, [Plaintiff] argues that the survey…conducted is
neither relevant nor reliable with respect to the issues presented in this
case. Specifically, [Plaintiff] contends that [the] survey was not designed
to determine, nor should it be used at trial to demonstrate, the issue of
consumer’s “confusion” or “likelihood of confusion” when purchasing
Splenda. [Plaintiff] argues that [Defendant] is seeking to use [the] survey
for this very reason.
…
[Defendant] presents several arguments that [Defendant’s first
expert’s] survey should be admitted. First, [Defendant] contends that the
246
issue of “why people buy Splenda” is relevant to the issues in this case and
[the] survey informs the jury on that question. Next, [Defendant] argues
that [the] survey refutes the findings of…a survey commissioned by
[Plaintiff]…[which] like [Defendant’s first expert’s], is not a “likelihood
of confusion” survey. Rather, [Plaintiff’s] survey was designed to measure
why consumers switched to Splenda, or why consumers chose Splenda
over Equal…
[Plaintiff] also contends that [the] survey interviewed the wrong
universe of people, namely, people who had purchased Splenda in the
past, instead of prospective purchasers of Splenda. [The] survey was
created to determine whether a “class” of Splenda consumers could
proceed in a class action lawsuit. Understandably, as to a survey that was
designed to test whether a category of consumers constitutes a “class” for
purposes of filing a lawsuit against a maker of a certain product, the only
permissible universe for such a class must consist of past users of that
product. In Lanham Act cases that seek to prove rates of “confusion”
among consumers, however, it is typical to survey prospective
consumers….
…
To the extent either survey is relevant, [the survey is probative
enough as rebuttal evidence to permit it to be introduced as evidence.
Therefore, both [Plaintiff’s] Daubert motion and its motion in limine to
exclude [the] survey will be denied.
…
[Defendant’s Likelihood of Confusion Survey]
[Defendant’s second expert] designed and conducted her
[likelihood of confusion] survey in response to a survey conducted by
[Plaintiff’s] survey expert. [The] “goal” in designing her survey “was to
demonstrate that a properly designed survey, without any of the
methodological errors committed by [Plaintiff’s expert], would prove . . .
that the vast majority of consumers are not misled by Splenda
packaging.”…
…
[Plaintiff] argues that the Court should exclude [Defendant’s
second expert’s] survey and testimony because the survey is “so
methodologically flawed and so poorly administered that it cannot
possibly be relied upon.”…[Plaintiff] identifies the following alleged
problems with [the] survey: (1) [Defendant’s second expert] improperly
destroyed approximately 14 percent of the responses to her survey; (2) an
insufficiently low percentage of survey responses were validated; (3)
[Defendant’s second expert] provided insufficient oversight in conducting
the survey and developing the results; and (4) the survey is unreliable
because [Defendant’s second expert] adopted…an…“improper”…control
[which] resulted in reducing the “confusion” percentage from
approximately 26 percent to 8 percent, a difference of approximately 18
percent, to purportedly account for “noise.”
247
[Defendant] counters that [Plaintiff’s] criticism go to the weight of
the evidence and not to its admissibility. [Defendant] argues that (1) the
fact that some interviews were destroyed after [its expert] determined that
they were invalid does not invalidate the survey; (2) approximately 40
percent of the responses were validated, which is customary; (3)
[Defendant’s second expert] appropriately delegated; and (4)[Defendant’s
second expert’s] choice of…a control was proper…[Defendant] argues
that the choice of control goes to the weight of a survey and not to its
admissibility…
The Court finds that, although [Defendant’s second expert’s]
methods and oversight were far from perfect, as described by the parties in
their papers, the survey is not so flawed as to render it inadmissible…
With respect to the validation issue, the Court does not doubt that
validation is indeed important. However, [Defendant] argues that [its
expert] validated over 40 percent of her interviews, and that this
percentage exceeds the customary norms. [Plaintiff] cites no legal
precedent for its assertion that a 50 percent validation rate is customary for
litigation surveys; nor does it cite a single case where a court excluded a
survey because of a subpar validation rate.
…
[Plaintiff’s] objections to the technical validity of [Defendant’s
second expert’s] survey go to the weight to be accorded to the survey
rather than to its admissibility. As such, [Plaintiff’s] Daubert motion to
exclude [the] survey will be denied.
…
In 1999, Kraft Foods [ a third party] conducted a series of 14 focus
groups…[Defendant]…received portions of the results of the study
in…2000…
…
[Defendant argues that the Kraft survey should be excluded as
double hearsay…[Plaintiff]…argues that the survey is admissible for nonhearsay purposes such as “notice” of consumer confusion.
The Court notes that the results of a focus group are inherently
different than the results of a survey. Whereas a survey is designed to
collect data from an appropriate numerical sample of individual
respondents, focus groups are designed to gather data from “groups” of
people assembled together for that very purpose. As the Court of Appeals
for the Fourth Circuit stated, “the very nature of a focus group seems, to
some extent, to limit its ability to identify the message an advertisement
conveys to an individual consumer.” Scotts Co. v. United Indus. Corp.,
315 F.3d 264, 277 (4th Cir. 2002) (emphasis added). The court noted that:
Because the participants in a focus group freely
voice their opinions, the opinion of a participant can be
shaped by those of the others. Thus, a participant who may
have derived no false message from an advertisement
viewed outside the context of the focus group might well
248
change his opinion about the message conveyed by the
advertisement after considering the views expressed by the
other participants.
…
…because the Kraft presentation does not address the issues to be
decided in this case, it is irrelevant…the Court finds that it is also
unreliable, and will be excluded.
Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110, 1114-1115
(W.D. Wash. 2007)
Defendants have moved to exclude one of the surveys relied upon
by Plaintiffs to show likelihood of confusion…Under Fed. R. Evid. 702,
expert testimony is admissible if (1) the testimony is based upon sufficient
facts or data, (2) the testimony is the product of reliable principles and
methods, and (3) the witness has applied the principles and methods
reliably to the facts of the case. Expert testimony is admissible if the
expert is qualified to testify on the matters at issue and the testimony is
relevant and reliable…Under Fed. R. Evid. 403, evidence may be excluded
if its probative value is substantially outweighed by the danger of unfair
prejudice, confusion of the issues, or misleading the jury. The Ninth
Circuit has held that, in the context of consumer confusion surveys, “as
long as they are conducted according to accepted principles, survey
evidence should ordinarily be found sufficiently reliable under
Daubert.”…
Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002, *23-*25 (S.D.N.Y. 2006)
…Accordingly, the survey should have provided respondents with
all possible options to any question (including the options of “neither” or
“don’t know”)…The reliability of the answers elicited by the closed-ended
questions is undermined by the survey failure to inform respondents that
they could also respond in this way…
…
A survey’s control attempts to address in part the possible biasing
effect of the questioning and a respondent’s prior beliefs…Rather than
eliminating the questionable material from the ads…[Plaintiff’s expert]
chose a prominent disclaimer at the beginning of the ads as its
control…The disclaimer was suggestive and implanted responses to
closed-ended question…
In addition to these structural and design inadequacies, the
[Plaintiff’s] surveys had serious data collection flaws…
These flaws…are fatal to the admissibility of the consumer survey.
…
…the physician survey lacked any control. [Plaintiff’s expert]
maintained that a control group is unnecessary for sophisticated
249
respondents like doctors, who are unlikely to “guess”…This is a marked
departure from generally accepted market research practices…
Second, the physician telephone survey suffered from the
extensive and inappropriate probing…
…
The sample size of the telephone physician survey involved only
sixty-three respondents. [Plaintiff’s expert] said the primary reason for the
small sample size was economic…This claim of economy is completely
out of character with [Plaintiff’s] spending to beat [Defendant’s product]
in the marketplace, to say nothing of the costs of this litigation. In any
event, the sample size here is too small to be reliable…
These reasons, plus others, are more than sufficient to determine
that the physician survey results are inadmissible.
R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141,1154-1155 (D. Nev. 2006)
…Defendants argue that the survey is flawed, thus inadmissible
under Rule 702 of the Federal Rules of Evidence…
…
The court has considered the survey in light of Rule 702 and the
factors outlined in Daubert and concludes that the survey is
admissible…Defendants have provided no evidence to indicate an actual
flaw exists in the methodology of the survey. Without evidentiary support,
the court finds no merit in the arguments presented by Defendants…
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454, *12-*13
(E.D. Mich. 2006)
…defects in [Plaintiff’s] survey lead this Court to conclude that the
survey results are too unreliable to be admissible…“[a] survey also is not
reliable if it suggests to the respondents an answer that would not
otherwise have occurred to them.”…[The expert’s] surveyors asked
respondents: “Which, if any, equipment brand that you see in this room do
you believe is sponsored by, licensed by or associated with a particular
fitness center, fitness club or fitness center chain?” This question clearly
led respondents to find, not only a connection or association between the
fitness equipment shown and some other product or service, but
specifically a fitness center, club, or chain…
…the Court finds that any probative value of [Plaintiff’s] survey is
substantially outweighed by the prejudice and confusion it will cause at
trial…
250
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist LEXIS 1378, *7, *10*12, *17-*22 (W.D. Mich. 2006)
…nothing in either Daubert or the Federal Rules of Evidence requires a
district court to admit opinion evidence that is connected to existing data only by
the ipse dixit of the expert. A court may conclude that there is simply too great an
analytical gap between the data and the opinion offered.”…
…
Plaintiffs’ motions in limine rely on the declarations of plaintiffs’
expert…[Plaintiffs’ expert’s] opinions in her declarations are generally not
supported by citation to authorities relied on by survey experts…[Plaintiffs’
expert] has not offered any survey results of her own in support of the opinions
She expresses in her declarations. This is despite her claimed expertise in “the
design and implementation of trademark, design patent, unfair competition, right
of publicity, and other consumer surveys.”…She has designed and supervised the
implementation of over 500 surveys, including over 150 trademark, design patent
and unfair competition surveys…She has been retained as an expert witness for
litigation regarding surveys over 150 times, and has “testified as an expert at trial
in Federal Court in thirteen cases in which [she] had conducted surveys for
trademark cases…”…Here, [Plaintiffs’ expert] was not retained by plaintiffs to
conduct a survey, but only “to review and offer an opinion” regarding a survey
conducted by defendants’ [first] expert...and “to review and offer [an] opinion”
regarding a survey conducted by defendants’ [second] expert…Although
plaintiffs’ approach of limiting their expert's assignment in this fashion is not
unusual…the absence of competing survey evidence from [Plaintiffs’ expert]
showing divergent survey results significantly undermines the efficacy of
plaintiffs' arguments that defendants’ evidence is so unreliable that it must be
excluded. In other words, plaintiffs’ criticisms of the methodology used by the
defense experts would have been substantially aided by proof that the “correct”
methodology would have led to a different result.
…
Plaintiffs’ expert…characterizes the universe [Defendant’s first expert]
selected and his sampling from it as “questionable.”…In somewhat hyperbolic
terms, plaintiffs’ brief transforms “questionable” into an argument that
[Defendant’s first expert’s] universe was “fatally flawed” and “hopelessly broad”
and compounded by his “improper sampling.”…Plaintiffs’ expert believes that the
two-year periods selected by [Defendant’s first expert] were too long. She
believes that, “A more recent past time frame such as three months would have
been more appropriate…”…None of [Plaintiffs’ expert’s]criticisms is supported
by reference to written authority in the area of survey research or objective
evidence.
[Plaintiffs’ expert] also suggests additional screening questions that she
believes [Defendant’s first expert] should have asked. [Plaintiffs’ expert] believes
that questions should have been added to determine if the potential respondents
were serious shoppers for laundry equipment such as, “had they looked at
advertising for laundry equipment or had they actually shopped for laundry
251
equipment.”…She criticizes [Defendant’s first expert] for not including screening
questions about price points…She believes that screening questions should have
been asked “about whether potential respondents had previously purchased higher
priced, higher quality home appliances such as KitchenAid or were ‘home
enthusiasts’ who spend time and effort on creating the perfect home.”…She states
without any supporting evidence that, “These are the types of consumers who
would be more likely to be knowledgeable about KitchenAid’s Whisper Quiet
mark because this is the type of equipment they purchase.”…Again, her opinions
are devoid of reference to supporting authorities…[Plaintiffs’ expert] did not
conduct any survey demonstrating that her suggested modifications to
[Defendant’s first expert’s] survey would produce different or more accurate
results. In essence, she is claiming that shecould have conducted a more accurate
survey but did not do so…
…
[Plaintiffs’ expert] states that interviewers provided respondents with a
“poor quality” photo of an LG washer or dryer…[Plaintiffs’ expert] provides no
explanation how these purported deficiencies render [Defendant’s first expert’s]
survey unreliable.
…[Defendant’s first expert’s] survey had the interviewer point to the
bottom line of a photograph, where it said “Whisper Quiet”…The respondent was
then asked, “Now, looking at this picture of just the side of the control panel, if
you were in a store shopping for an appliance and you saw this washer [dryer]
with the words, “Whisper Quiet…on it, would this tell you anything about the
washer [dryer].”…[Plaintiffs’ expert] states, that “there was no reason to preface
‘Whisper Quiet’ with ‘the words,’ or with anything at all.”…She states that, “This
proves that the respondents could hear, see, read, and ultimately come to a
conclusion about what ‘Whisper Quiet’ means because it includes the word
quiet.”…[Plaintiffs’ expert’s] criticisms are captious and unpersuasive. If
[Plaintiffs’ expert] had conducted a similar survey omitting the purportedly
offending phrase “the words,” and achieved significantly different results, her
criticism might be more persuasive. As it is, there is no evidence that if the
challenged phrase had been omitted that the survey results would have been any
different.
…[Defendant’s first expert’s] survey asked, “Do you believe that a washer
[dryer] that uses these words, ‘Whisper Quiet…’…comes from, is associated
with, or is put out by one company only? or More than one company?” [Plaintiffs’
expert] again objects to “these words” appearing in [Defendant’s first expert’s]
question…[Plaintiffs’ expert] states that she finds the question to be confusing.
She states that asking this question with the LG brand name on the depicted
washer or dryer panel is not accepted survey methodology and that in a secondary
meaning survey, the mark must be shown on the product with all brand names
(indicia of origin) redacted…There is no legal or professional survey authority
cited for these propositions…
252
Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541, *21-*23
(E.D.N.Y. 2005)
In sum, the Court finds that the survey conducted by [Plaintiff’s
expert] is flawed to the point that its probative value is substantially
outweighed by the survey’s potential for unfair prejudice and
confusion…Because it is axiomatic that inadmissible information cannot
defeat a well-grounded motion for summary judgment, Plaintiff’s reliance
on [the survey of its expert] is misplaced…
M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1087 (9th Cir. 2005)
Admissibility of a survey is a threshold question that must be resolved by
a judge…(“Treatment of surveys is a two-step process. First, is the survey
admissible? That is, is there a proper foundation for admissibility, and is it
relevant and conducted according to accepted principles? This threshold question
may be determined by the judge.”…) Surveys in trademark cases are to be
admitted as long as they are “conducted according to accepted principles.”…
[Plaintiff’s] survey was twice excluded by the district court because it was
not created or conducted in a manner that complied with appropriate standards…
Both district judges properly rejected the [Plaintiff’s] survey because the
survey’s creator “did not qualify as an expert on designing or analyzing consumer
surveys.” Moreover, [Plaintiff] failed to “show that the survey was conducted in
accordance with generally accepted survey principles…”…[Plaintiff’s] arguments
regarding the weight of the survey are misplaced because [Plaintiff] first failed to
provide a proper foundation for admissibility of its survey…(“Once the survey is
admitted, however, follow-on issues of methodology, survey design, reliability,
the experience and reputation of the expert, critique of conclusions, and the like
go to the weight of the survey rather than its admissibility.”)…
The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251, 261 n.4 (D. R.I.
2005)
n4 [Defendant] retained the services of [a survey expert] to determine
whether there was a likelihood of confusion between [Defendant] and [Plaintiff]
among [Defendant’s] agents in Rhode Island who produce commercial insurance
policies. [Defendant] seeks to have the testimony…admitted as expert testimony
to the effect that the results of the survey…conducted demonstrate a lack of
likelihood of confusion among [Defendant’s] agents…[Plaintiff] filed a motion to
exclude this testimony and the Court conducted a Daubert hearing in the course
of the trial… This Court grants [Plaintiff’s] motion for the following reasons:
First, the Court does not need an expert to testify to the non-startling conclusion
that [Defendant’s] agents…are not confused between [Defendant] and
[Plaintiff]…Second, [Defendant’s expert’s] methodology raises a number of
questions as to the reliability of her conclusions…
253
Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist.
LEXIS 23691, *7-*8, *11-*14, *16-*17 (N.D. Tex. 2004)
In Daubert v. Merrell…“the Supreme Court held that when expert
testimony is offered, the trial judge must perform a screening function to ensure
that the expert’s opinion is reliable and relevant to the facts at issue in the
case.”… Federal Rule of Evidence 702 provides the standard for admissibility of
expert testimony in federal court…
…
“The requirement that the testimony assist the trier of fact means the
evidence must be relevant.”…“The expert testimony must be relevant, not simply
in the sense that all testimony must be relevant...but also in the sense that the
expert’s proposed opinion would assist the trier of fact to understand or determine
a fact in issue.”…Simply put, to be relevant there must be a valid connection
between the expert testimony and the issue(s) in controversy…
…
The final inquiry in determining the admissibility…is the reliability of the
testimony…In analyzing the reliability of an expert’s testimony, the Supreme
Court in Daubert provided an “illustrative list of factors that may aid a court in
evaluating reliability:”…The Daubert factors are flexible and they “may or may
not be pertinent in assessing reliability, depending on the nature of the issue, the
expert’s particular expertise, and the subject of his testimony.”…
…
… An analysis under Daubert and its progeny is not intended to replace
the adversary system…In its role as gatekeeper, the court should not determine
the merits of the case, but instead determine whether the evidence at issue is
admissible…
“A review of the caselaw after Daubert shows that the rejection of expert
testimony is the exception rather than the rule.” FED. R. EVID. 702, Advisory
Committee Notes to 2000 Amendments. The [Defendant’s expert’s] Report
appears to meet the standard for admissibility under Rule 702 and thus the court
will consider it in determining [Defendant’s] motion for summary judgment…
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS
18999, *26-*27 (3d Cir. 2004)
[Defendant’s] argument that any problems of [Defendant’s expert’s]
survey should have affected only its evidentiary weight but not its admissibility is
also unpersuasive. The District Court excluded the survey because [Defendant’s
expert’s] methodology was fundamentally flawed and because the danger of
undue prejudice far outweighed the limited probative value of the survey,
especially for a jury. The courts have held generally that mere technical
unreliability goes to the weight accorded a survey, not its admissibility…The
Court in this case concluded that [Defendant’s expert’s] survey did not suffer
from mere technical flaws, but from fatal flaws.
254
Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist LEXIS 17766, *8-*10 (D.
Minn. 2004)
Subject to proper foundation being laid, and in light of the Federal Rules
of Evidence and Daubert, the Court finds that [Plaintiff’s expert] is a qualified
survey expert. [Plaintiff’s expert] is a trained social scientist with 20 years of
experience in the marketing communications industry. [Plaintiff’s expert] serves
as president of [his company] where he designs, administers, and analyzes market
research for companies. In addition, [Plaintiff’s expert] has experience providing
testimony at trials and depositions in this district.
…
While the Court does not accept the [Defendant’s] invitation to reject
[Plaintiff’s Expert’s] consumer survey, the Court does not agree with all aspects
of the methodology of the survey or the interpretation given to the survey results
by [Plaintiff’s expert]. In particular, the Court finds that the format of the
questions, if not leading, certainly suggested to the respondents the “correct”
answer to some of the questions being asked. The Court also finds that some of
the questions asked had little probative value...In light of these findings, the Court
will give the survey results and their interpretation less weight when considering
the issues before it on the motions for summary judgment.
Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 488 (5th Cir. 2004)
Usually, methodological flaws in a survey bear on the weight the survey
should receive, not the survey’s admissibility…[Plaintiff] argues that its
presentation of survey evidence precludes summary judgment because a court
may not weigh evidence or make credibility determinations when reviewing a
motion for summary judgment…In some cases, however, serious flaws in a
survey will make any reliance on that survey unreasonable…Otherwise, any
survey, no matter how tendentious, would force the parties to trial. Thus,
although minor methodological flaws will affect weight rather than admissibility,
a survey can be “so badly flawed that it cannot be used to demonstrate the
existence of a question of fact on the likelihood of consumer confusion.”…
No reasonable jury could view the proffered survey as evidence of
confusion among relevant consumers…
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *35-*37 (D. Puerto Rico
2004)
…It is true, of course, that the Supreme Court’s holdings in Daubert v.
Merrell Dow Pharms.…which require that certain standards be met before expert
scientific testimony can be accepted and relied upon by a tribunal, apply to survey
research as well as other types of expert testimony. But in general, courts are
loathe to exclude consumer surveys from evidence. “The majority rule is that
while technical deficiencies can reduce a survey’s weight, they will not prevent
the survey from being admitted into evidence.”…So long as the survey is
255
conducted according to accepted principles, “survey evidence should ordinarily be
found sufficiently reliable under Daubert.”…(“Technical and methodological
deficiencies in the survey…bear on the weight of the evidence, not the survey’s
admissibility.”)…(flaws in surveys go to the weight the trier of fact should place
on the survey’s results)…(survey will rarely be so flawed as to be completely
unhelpful to the trier of fact and therefore inadmissible)…(“Even if the court finds
deficiencies in the proponent’s showing” that the population was properly chosen
and defined, that the sample was representative of that population, that the data
was accurately reported and properly analyzed, “the court may receive the
evidence subject to argument going to its weight and probative value.”)…
MasterCard Int’l Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485, *27-*30
(S.D.N.Y. 2004)
The Survey conducted by [Defendant’s expert] is flawed to the point that
its probative value is substantially outweighed by the Survey’s potential for unfair
prejudice and confusion, and the likelihood that it will mislead the jury…
…the number of respondents surveyed is too small to provide meaningful
results in this instance…just 27 individuals [in] the test cell…and 25 individuals
[in] the control group…
… It is unclear whether, and to what extent, the Survey reached the
decision-makers whose potential confusion is relevant to this litigation.
In addition, bank employees deciding which smart card programs are
appropriate for their institutions will do so with far more information than was
provided in the Survey and with far more care than the Survey’s respondents…
…The Survey is excluded pursuant to Rules 403 and 702 of the Federal
Rules of Evidence.
Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550, *2 n.1 (S.D.N.Y. 2004)
n1 Defendant…submitted a motion in limine to exclude all evidence
relating to the purported consumer survey conducted by [Plaintiff’s expert],
including his expert report and related testimony…Defendant argues that
Plaintiff's consumer survey should be excluded under Rule 403 of the Federal
Rules Evidence because it is so flawed in methodology that any probative value
the survey may have is substantially outweighed by its prejudicial effect…The
Court has considered Defendant’s arguments regarding the alleged flaws in the
[Plaintiff’s expert’s] survey in its determination of the summary judgment
motions. However, the Court will not at this time address whether or not
[Plaintiff’s expert’s] report and related testimony concerning the survey results
should be excluded at trial. Regardless, if any errors are present in the
methodology used in conducting this survey, such errors generally go to the
weight of the evidence, not its admissibility…
256
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1026-1027
(9th Cir. 2004)
Defendants criticize [Plaintiff’s expert’s] procedures and conclusions…
Their critique of [Plaintiff’s expert] methods and interpretations formed the basis
of a motion to exclude his expert testimony and report before the district court.
The district court denied that motion, however, and allowed the introduction of
the evidence.
Defendants may have valid criticism of [Plaintiff’s expert’s] methods and
conclusions, and their critique may justify reducing the weight eventually
afforded [Plaintiff’s expert’s] expert report…
Because actual confusion is at the heart of the likelihood of confusion
analysis…[Plaintiff’s expert’s] report alone probably precludes summary
judgment.
Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 765 (E.D. Mich. 2003)
Under Daubert v. Merrell Dow Pharmaceuticals…the Court must ensure
that expert testimony “is not only relevant, but reliable.”…[Plaintiff’s expert]
failed to satisfy fundamental principles of survey research in seven major ways:
(a) The surveys did not sample the appropriate universe of respondents;
(b) The surveys did not use any demonstrative stimuli or otherwise replicate
actual market conditions;
(c) The survey questionnaires were biased and leading;
(d) [Plaintiff’s expert] drew unwarranted inferences and failed to take into
account obvious alternative explanations;
(e) The surveys did not ask the kind of control questions needed to generate
an error rate;
(f) The surveys were not administered properly, including the use of a panel
of regular survey respondents;
(g) The surveys did not employ a design that established causation, rendering
the surveys results uninterpretable…
Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933, *28-*29 (D.
R.I. 2003)
While every survey, including the one at issue here, may contain some
flaws, this Court sees no reason to ignore the survey at the summary judgment
stage. Instead, the alleged infirmities can be examined in a motion to exclude or at
trial by “vigorous cross-examination [and] presentation of contrary evidence.”
…Daubert v. Merrell Dow Pharms., Inc….see also McCarthy § 32:170, at 32274-275 (“The majority rule is that while technical deficiencies can reduce a
survey’s weight, they will not prevent the survey from being admitted into
evidence.”); Callmann § 19.27.50, at 244 (noting that the “methodological
deficiencies which result from failing to follow [the framework for such
257
surveys]…usually go to the probative weight which the survey is accorded, not to
its admissibility.”)…
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369, *16-*17
(N.D. Ill. 2003)
Defendants move to bar any reference to the consumer survey…claim[ing]
that [Plaintiff’s] survey must be excluded because he failed to: (1) differentiate
functional from non-functional product features; and (2) take into account the
effect of the expired patents. Defendant’s objections go to the weight of the
evidence, but do not necessarily preclude admissibility.
First, Defendants claim that “[a] survey which asks consumers to identify
the source of a product based on its overall configuration when most of the
product’s configuration is functional is utterly worthless in determining whether
certain features have acquired secondary meaning.”…In making this argument,
Defendants’ argument assumes the overall configuration of [Plaintiff’s] chair is
entirely functional, in contrast with the opposing assumption made by [Plaintiff’s
expert]…[Plaintiff’s expert’s] reliance on [Plaintiff’s] assertion of nonfunctionality may be explored on cross-examination…
Second, Defendants’ argue that “it is highly probable that the connection
between the product design and [Plaintiff] comes from the patents.”…This
argument goes to the necessity of establishing a sufficient foundation for the
admission of the survey. Accordingly, Defendants’ second motion in limine must
be denied.
J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040, *17, *22-*23 (D.
N.J. 2003)
This Court finds that Plaintiff’s initial filing of this action was justified
and was not exceptional, but also finds that its continued pursuit of the action
after it was aware that [Plaintiff’s] survey lent no credence to its position, in light
of the Court’s clear guidance in the preliminary injunction opinion upon
principles of well-settled law, made the case exceptional.
…
Plaintiff should have been aware after the deposition testimony of
[Plaintiff’s expert] was taken that its case was meritless. The flaws in [Plaintiff’s
expert’s] survey were patent on its face; the very definitions on which it was
based were clearly legally incorrect in light of this Court’s preliminary injunction
opinion…
Instead of acknowledging the flaws in their case, Plaintiff pressed forward
and required Defendants to file, brief, and argue their summary judgment
motion…This Court finds that after [Plaintiff’s expert’s] deposition testimony
was taken…Plaintiff should have reconsidered its position and determined that it
was unable to present the evidence that the Court determined was necessary to
show that their case had merit. Therefore, this Court finds that Plaintiff’s case
258
became an “exceptional case” the following day…and finds that Defendants may
seek reasonable fees for the period from [that date] forward.
Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159, *38 (C.D.
Cal. 2003)
…Here, the survey did not sample the correct group, and did not permit
those sampled to view all of the relevant evidence bearing on the relevant issue.
Moreover, the survey’s conclusion - that a reasonable consumer might believe
that Plaintiff and Defendant are associated - does not meet the correct standard of
whether reasonable consumers were likely to intimate an association. For all of
these reasons, the Court concludes that the survey is not admissible.
Citizens Financial Group, Inc. v. The Citizens Nat’l Bank of Evans City, 2003 U.S. Dist. LEXIS
25977, *7, *9-*11, *13-*15 (W.D. Pa. 2003)
Pursuant to Daubert, [Plaintiff] seeks to exclude [Defendant’s] likelihood
of confusion survey…
…[Plaintiff’s] main objection is that the study is conducted in an improper
universe and,…when conducting a survey in a trademark case the first crucial step
is determining the proper universe…the propriety of a survey can turn on the
geographical area covered…The burden of proving that the universe is proper is
on the proponent of the survey…
In reverse confusion cases, like this one, the appropriate universe is the
“senior user’s customer base.”…
…While it is true that the appropriate universe consists of individuals who
have access to both litigants and are a customer or a potential customer, when
conducting a survey in a reverse confusion case, the universe is further limited to
the senior user’s “customer base.”…
…
Even assuming, arguendo, that the study was conducted in the proper
universe, the survey would have necessarily excluded those individuals that were
likely to be customers or potential customers of [Senior User]. As mentioned
previously,…relevant factors used to assess reliability and trustworthiness of a
survey are whether the sample chosen was representative of that universe and
whether the questions asked of the interviewees were framed in a clear, precise
and nonleading manner…Here, screener question A asked the following question:
“But first, do you live or work in this general area or are you just visiting?”
…“General area” and “just visiting” were not defined by the study. This is not a
clear and precise question. Furthermore, if the individual answered “just visiting,”
then the interview was terminated without any further questioning and the
individual was excluded from the questionnaire…many of the individuals that
should have been included in the proper universe…would have been
automatically excluded from the survey. Therefore, because of the location of the
study and the screener question asked, few (if any) participants were likely to be
part of [Senior User’s] customer base. Consequently, the failure to conduct the
259
survey within [Senior User’s] customer base and then to exclude those individuals
who may potentially come from within the customer base is fatal.
…Although I recognize that no survey is beyond criticism and there is no
perfect survey, the problems with the [Senior User’s] Survey are so fundamental
and basic that the survey is stripped of any significant probative value. Therefore,
I am convinced that the…survey is not simply [well]-tailored (so as to go to the
weight), but is fatally flawed due to an irrelevant and improper universe, such that
it must be excluded from evidence at trial.
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221, 221 (D. R.I. 2003)
The Supreme Court’s ex cathedra pronouncements in Daubert v. Merrell
Dow Pharms., Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993) and
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 119 S. Ct. 1167, 143 L. Ed. 2d 238
(1999) offer district courts guidance in assessing the admissibility of expert
testimony. Under Daubert, the district court undertakes a “gate-keeping” function,
and determines “whether the reasoning or methodology underlying the testimony
is scientifically valid and . . . whether that reasoning or methodology properly can
be applied to the facts in issue.”…
In Kumho Tire, the Supreme Court held that the gate-keeping function
applies to technical and other specialized knowledge in addition to scientific
testimony…The court stressed that the district court must have “considerable
leeway” in both “how to determine reliability” and “its ultimate
conclusion.”…Most importantly for the instant motion, “the ultimate credibility
determination and the testimony’s accorded weight are in the jury’s
province.”…“Vigorous cross-examination, presentation of contrary evidence, and
careful instruction on the burden of proof are the traditional and appropriate
means of attacking shaky but admissible evidence.” Daubert, 509 U.S. at 596.
…
It is true that the admissibility of market surveys as evidence in trademark
cases is a thorny question…
Courts have stated many reasons for excluding survey evidence due to
fatal flaws in methodology of design or implementation…
Likewise, surveys have been upheld and accepted by courts,
notwithstanding attacks on their methodology…
All this serves to show that the decision whether to admit [Plaintiff’s]
survey evidence ultimately rests in the Court’s discretion. Bearing in mind the
Daubert/Kumho analytical scheme…Defendant[’s]…criticisms, valid as they may
be, are not sufficiently weighty to justify exclusion of the survey altogether under
the applicable gate-keeper standard. The alleged infirmities [Defendant]
identifies are best challenged by the type of “vigorous cross-examination (and)
presentation of contrary evidence” envisioned by Daubert…
260
Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100, *12-*13 (N.D.
Cal. 2003)
Plaintiffs’ moving papers did not offer any evidence of actual confusion;
indeed, Plaintiffs conceded that they did not have any such evidence. In
connection with their reply, however, they submitted a survey of 200 professional
mortgage brokers which they claim demonstrates initial interest confusion. This
new evidence is stricken. Plaintiffs have offered no justification for their failure to
submit their survey evidence in connection with their initial moving papers…
In any event, even if the Court were to consider the untimely evidence,
Plaintiffs’ survey has several substantive flaws. First, the survey did not target
Defendants’ market (homeowners) and therefore is not a representative sample.
Second, the individual who conducted Plaintiffs’ survey opines that the
brokers polled will be confused that World Lending Group is connected with
World Savings. The survey, however, makes no specific reference to Defendants’
marks; rather, it asks the respondents generically if they have a belief about a
website owner who uses the term “world” among other terms. The survey’s
failure to refer to Defendants’ marks makes it insufficient to establish any actual
initial confusion.
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951, *3-*5, *8-*11 (N.D. Ill.
2003)
Consumer survey results must be presented through experts. Under
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 125 L. Ed. 2d 469,
113 S. Ct. 2786 (1993), the court must act as a “gatekeeper” to ensure that expert
testimony satisfies the admissibility requirements of Federal Rule of Evidence
702. Daubert requires the court to ensure that expert testimony is “not only
relevant, but reliable.”…
Moreover, Rule 403 requires us to consider the probative value of a survey
in relation to circumstances such as the danger of unfair prejudice, confusion of
the issues, misleading the jury, or waste of time. Methodological deficiencies
often go to the weight rather than to the admissibility of a survey, but if the flaws
are sufficiently serious, “the court may find that the probative value of the survey
is substantially outweighed by the prejudice, waste of time, and confusion it will
cause at trial.”…
[Defendant] contends that [Plaintiff’s] survey…is so flawed that we
should exclude it from evidence. [Defendant] first argues that the survey
conditions failed to replicate actual marketplace conditions, in two ways: first,
respondents were exposed to only 8- or 9-second portions of the parties’ 30second television commercials and 10-second radio advertisements…and second,
the ads were shown consecutively, making the survey little more than a word
association test.
We agree with [Defendant] that the survey distorted marketplace
conditions by taking the advertisements out of context…
…
261
Another major flaw of the [Plaintiff’s] survey is that it failed to ask
respondents a very important question--namely, a follow-up…question
…McCarthy discusses the rationale for the necessity of this follow-up
question as follows: (Questions eliciting responses regarding both source
confusion and confusion as to sponsorship, affiliation and connection) should be
followed up by the importation question: ‘Why do you say that?’ Often, an
examination of the respondents’ verbatim responses to the ‘why’ question are the
most illuminating and probative part of a survey, for they provide a window into
consumer thought processes in a way that mere statistical data cannot.
…
The [Plaintiff’s] survey improperly distorted marketplace conditions by
lifting portions of the commercials out of context; it contained a highly leading
question; and it failed to ask respondents a crucial state-of-mind question
regarding perceived association. It did not accurately gauge likelihood of
confusion and thus fails to meet the standards set forth in Daubert. The
[Plaintiff’s] survey is also excluded under Rule 403 because the results are likely
to create unfair prejudice, confuse the issues, waste time, and, most importantly,
mislead the jury.
For the foregoing reasons, Defendant[’s] motion in limine to exclude the
survey and expert testimony of [Plaintiff’s expert] is granted.
Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO, 2-6 (N.D.
Ga. 2002)
…[Defendant’s expert] has not conducted a survey on this issue…
Defendants wish to use [their expert’s] testimony to attack the credibility and
reliability of the [Plaintiff’s] survey.
…
The Supreme Court has imposed a “special gatekeeping role on the trial
judge in Daubert to ensure that scientific evidence is both reliable and relevant
before being admitted as evidence.”…This gatekeeping role was extended in
Kumho Tire Co., Ltd. v. Carmichael to apply to all expert testimony, not solely
scientific testimony…This gatekeeping role, however, is not intended to supplant
the adversary system or the jury’s role: “[v]igorous cross-examination,
presentation of contrary evidence, and careful instruction on the burden of proof
are the traditional and appropriate means of attacking shaky but admissible
evidence.”…
…
The determination of likelihood of confusion is a question of fact…The
issue of which standards should be considered when evaluating the reliability of
survey evidence is a matter of law…
Because the characteristics of reliable survey evidence are dictated as a
matter of law as set forth in the parties requests to charge on this issue, the
testimony of [Defendant’s expert] is not likely to assist the trier of
fact…[Defendant’s expert’s] testimony consists solely of criticisms of the
survey’s alleged defects, which are capable of being brought out through cross-
262
examination. In addition, the court will instruct the jury with regard to the
standards it should consider in determining the weight the jury decides to give to
[Plaintiff’s] survey. It is then up to the jury to decide whether the survey was
conducted in accordance with those standards and if not, what effect, if any, this
failure would have on reliability of the survey results.
Permitting [Defendant’s expert’s] testimony would allow him to testify to
the legal issue of the standards that should be considered in evaluating the survey
evidence, which is for the court to determine. Permitting his testimony would
also allow him to testify as to the credibility and reliability of [Plaintiff’s] survey,
which is for the jury to decide…
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457, 459-461 (S.D.N.Y.
2002)
…The Second Circuit in Schering made clear that such a survey’s “errors
in methodology…properly go only to the weight of the evidence” -- not to its
admissibility…
The only other potential limitation on the survey’s admissibility is Fed. R.
Evid. 403’s provision that a court may exclude otherwise relevant evidence on the
ground that the probative value of the evidence is substantially outweighed by the
danger of such matters as unfair prejudice or jury confusion…Thus, a survey
should be excluded where it is so flawed in methodology that its probative value
is substantially outweighed by its prejudicial effect…In order to determine a
survey’s “probative” value under Rule 403, however, it would seem that at least
some attention must still be paid to the methodology of the survey because a court
determines whether a survey is probative under Rule 403 by examining whether it
was “fairly prepared and its results directed to the relevant issues.”…
Thus, in considering the probative value of a survey, it is tempting to look
to longstanding case law that provides a detailed framework for evaluating a
survey’s trustworthiness…(under a Rule 403 analysis, a court must conduct a
detailed examination of the trustworthiness of survey evidence)…An in-depth
analysis of trustworthiness, however, is contrary to the admonition in Schering
that “methodological” errors in a survey based on the present sense impressions of
the respondents bear exclusively on the weight to be given the survey rather than
bearing on an admissibility determination under Fed. R. Evid. 403. It is perhaps
for this reason that where Rule 403 alone is at issue, courts have typically not
performed an extensive analysis of the survey…Instead courts have focused on
whether the survey is so far out of the realm of relevance that a jury should not
even be permitted to consider it. Thus in Cache [2001 U.S. Dist. LEXIS 226], the
court admitted a survey because, despite its “flaws,” it did not “appear to be
devoid of all probative value on the issue of the likelihood of confusion.”
…Obviously, with the application of this relaxed standard, many surveys that
might be accorded little weight after an analysis of their methodology would still
pass muster under Rule 403. Indeed, the Seventh Circuit has noted that “while
there will be occasions when the proffered survey is so flawed as to be completely
263
unhelpful to the trier of fact and therefore inadmissible, such situations will be
rare.”…
In the present case, the flaws proffered by [Defendant] are not so obvious
and egregious that the Court can conclude that the probative value of the survey
(even if it could be characterized as minimal) is outweighed by its prejudicial
effect…
J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358, 367-372 (D. N.J. 2002)
The Court must thus determine as a threshold issue whether [Plaintiff’s
expert’s] opinion and report are admissible…the issue here is whether [Plaintiff’s
expert’s] survey design and execution are sufficiently reliable and appropriate to
the facts in this case so that his resulting opinion is admissible under Rule 702 of
the Federal Rules of Evidence…This threshold determination of the admissibility
of proposed expert testimony is governed by the principles of Daubert v. Merrill
Dow Pharm., Inc….
…
This Court recognizes that methodological deficiencies in a survey
generally relate to the weight given the survey’s conclusions rather than to its
admissibility…
…
In this case, the [Plaintiff’s] survey suffers from two substantial flaws that
show that it is not trustworthy and is not admissible. The first, and perhaps
clearest, flaw is the uncontroverted definitional problems of the survey…
…
The second flaw in the survey is that the universe chosen for the survey
was improper…
…
…this Court finds that [Plaintiff’s] survey suffers from substantial flaws, it
is unreliable and inadmissible under Rule 702, Federal Rules of Evidence…
Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP and NHL Enterprises, LP,
2002 U.S. Dist. LEXIS 13991, *6-*8 (D. Minn. 2002)
Defendants oppose admitting the…survey of [Plaintiff], claiming that the
survey is seriously flawed, would not be helpful to the trier of fact, and would
violate the spirit of Daubert v. Merrell Dow Pharmaceuticals…Defendants point
to many alleged flaws in the study, arguing that the composition of the sample,
the tone and content of the questions, and the method of tabulation all favor
[Plaintiff]. Defendants cite numerous cases in which courts have excluded surveys
due to errors similar to those that allegedly plague [Plaintiff’s] report…
…
Defendants make several allegations about [Plaintiff’s expert’s] survey,
which, if true, would seriously undermine his credibility. [Plaintiff] likewise
offers explanations which, if true, would demonstrate that some deficiencies are
inevitable, while other alleged deficiencies are in fact strengths. The relative
264
merits of each argument can be borne out on cross-examination, with credibility
determinations and weighing of the evidence left to the trier of fact. See generally
J. Thomas McCarthy, 5 McCarthy on Trademarks § 32:178 (4th ed.)(“The proper
approach is to view (survey) evidence with some understanding of the difficulty
of devising and running a survey and to use any technical defects only to lessen
evidentiary weight, not to reject the results out-of-hand.”) Therefore, the Court
will deny Defendants’ motion to exclude [Plaintiff’s expert’s] testimony.
Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291, 300-303 (S.D.N.Y. 2001)
[Defendant] asserts that the testimony of [Plaintiff’s] expert…is unreliable
and should be excluded under Federal Rule of Evidence 702 and the principles
contained in Daubert…
…
In assessing the reliability of a proffered expert’s testimony, a district
court’s inquiry under Daubert must focus, not on the substance of the expert’s
conclusions, but on whether those conclusions were generated by a reliable
methodology…
The test of reliability, however, is a “flexible” one, and the factors set
forth in Daubert do not constitute a “definitive checklist or test.”… a “review of
the case law after Daubert shows that the rejection of expert testimony is the
exception rather than the rule.” Advisory Committee Notes, 2000 Amendments,
Fed. R. Evid. 702.
…
In his…report [Plaintiff’s expert] wrote that, “it is very evident that there
is a vast amount of confusion between [the] brands…To reach this conclusion,
[Plaintiff’s expert] visited several of the parties’ stores, looked at their products,
and reviewed [Plaintiff’s] confusion logs...Reviewing the “Background and
Qualifications” section of his report, it appears that [Plaintiff’s expert] has neither
experience assessing the likelihood of confusion between names and marks nor
other experience that would qualify [Plaintiff’s expert] as an expert on this issue.
Without such experience, [Plaintiff’s expert’s] opinion on confusion is merely
conjectural.
Furthermore, it is hard to determine what methodology, if any, [Plaintiff’s
expert] used to reach his conclusion...
The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp.2d 785, 788, 789,
791, 792 (D. Md. 2001)
It is well established that a district court must act as the “gatekeeper” for
expert witness testimony in a jury trial…The instant motion relates to survey
evidence which is intrinsically different from the types of evidence most
frequently encountered in a Daubert or Kumho context.
As stated by Professor McCarthy: One must keep in mind that there is no
such thing as a “perfect” survey…
…
265
Nevertheless, it is, and has been even before Daubert, necessary for a
district court to pass upon the threshold question of the validity of a survey before
submitting the results to a jury for their consideration…
…
The Court finds that the survey was severely defective by virtue of its
failure to ask any question that would test the critical question of what website it
is that the subject thought they had seen.
…
…Motion to Exclude…Granted.
Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177, 1197 n.32
(C.D. Cal. 2001)
n.32…Defendants objected to…the Survey based on hearsay, failure to
authenticate, and lack of reliability…
…Defendants informed the Court that Plaintiffs had refused to produce the
videotape used to conduct the Survey. Plaintiffs confirmed their refusal to
produce it, and they offered the Court no explanation for their refusal. Because
Plaintiffs have not provided the videotape at issue in the Survey, thus depriving
Defendants of another basis upon which to meaningfully oppose it, the Court in
its discretion declines to consider the Survey…
Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp.2d 1033, 1039-1041, 1043, 1045,
1051, 1052 (S.D. Ind. 2000)
No survey is beyond criticism, especially in the context of litigation.
Courts therefore recognize that many criticisms of surveys used in litigation are
appropriate topics of cross-examination and contrary evidence to reduce the
weight of the survey without requiring that the [sic] it be excluded…
There are limits, however. The court need not and should not respond
reflexively to every criticism by saying it merely “goes to the weight”…
[Plaintiff’s] motion in limine…asks the court to perform before trial a
variation of the gatekeeping function the court must perform for expert testimony
under Daubert v. Merrell Dow Pharmaceuticals, Inc.…Consumer survey results
must be presented through expert witnesses. Under Daubert, the gatekeeping
function requires the court to ensure that expert testimony “is not only relevant,
but reliable.” Kumho Tire Co. v. Carmichael…The court’s responsibility is to
ensure that an expert “employs in the courtroom the same level of intellectual
rigor that characterizes the practice of an expert in the relevant field.”…
…The gatekeeping inquiry must be “‘tied to the facts’” of a particular
case…
…
The question here under Rule 702 is whether the results of [Plaintiff’s]
proposed surveys will be sufficiently reliable to use in court and whether they are
likely to assist the trier of fact decide an issue in the case…
[Plaintiff] proposes to conduct…three separate survey[s]…
266
…
The court considers [the] first…survey and then turns to the [other]
surveys…
…
[Plaintiff’s] proposed…survey suffers from three serious flaws: (a) it
grossly distorts the “marketplace conditions” in which Internet users might
actually encounter the two parties’ marks together; (b) it fails to use the most
basic control…(c) it is designed to create “demand effects” that will appear to
exaggerate unfairly any possible confusion…
…
…They [survey defects] make the proposed survey nothing more than a
meaningless memory game or word association exercise that bears no relationship
to the marketplace.
…
…By failing to use…controls, [Plaintiff’s] proposed survey amounts to
little more than a meaningless word association or memory exercise.
…
The [other] surveys suffer from two fundamental and related flaws. First,
they are obviously highly suggestive and leading. In fact, they are so suggestive
and leading that it is astonishing [Plaintiff] is even proposing them…
[The] survey formats therefore test nothing more than the memory and
common sense of a respondent…
Second, the…surveys also fail to include any meaningful controls…
…
…The results of the surveys, therefore, would have little or no probative
value on the questions relevant to the case, and they will be excluded under Rule
702 and the principles of Daubert and Kumho Tire. In addition, the results are
likely to create unfair prejudice, confuse the issues, waste time, and mislead the
jury. The court will also exclude them under Rule 403…
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335, 1336, 1338-1339
(E.D.N.Y. 2000)
In order to determine the admissibility of expert witness testimony, the
Supreme Court has set forth a two-prong relevance/reliability inquiry. Daubert v.
Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 [27 U.S.P.Q.2d 1200]
(1993)…
In Kumho Tire Co. v. Carmichael (526 U.S. 137, 119 S.Ct. 1167), the
Court expanded Daubert’s holding to all expert testimony, rather than just the
scientific testimony challenged in the Daubert case…
…
…The standard governing the administration of a proper likelihood of
confusion survey originally was set forth in this district in Toys R Us…and has
been repeatedly used and cited by courts throughout the country. See Schering,
189 F.3d at 225…
…
267
…Aside from this…holding, the Second Circuit also held that
“[r]egardless of the basis cited for admitting these surveys,…errors in
methodology…properly go only to the weight of the evidence.”…This holding is
limited only by the Court’s balancing of the probative value of the evidence as
opposed to its likely prejudice or confusion under Rule 403…
Pizza Hut Inc. v. Papa John’s Intern., 80 F. Supp. 2d 600, 612, 613 n.13, 614 (N.D. Tex. 2000)
[Defendant] also contends that the jury’s verdict cannot stand because
[Plaintiff] failed to present consumer survey evidence. The record reflects that
the only evidence of consumer surveys consisted of the three studies…These
studies tested the effect of two of [Defendant’s] taste test television commercials
and the [Defendant’s] pizza delivery box.
…
n.13 The court excluded from the jury’s consideration the testimony
of…[Plaintiff’s expert] with reference to the…surveys…on Daubert grounds, but
admitted it with respect to Pizza Hut’s prayer for injunctive relief.
…
In a number of opinions from other Circuits, cited by [Defendant] in its
motion and brief, courts have stated that consumer surveys are necessary…
Despite the frequent pronouncements of sister Circuit courts, the court has found
no cases holding as a matter of law that a consumer survey is a sine qua non for
establishing liability under the Lanham Act where the advertising at issue is not
literally false…
Under some circumstances a consumer survey may be necessary where the
consumers to whom the advertising was addressed have specialized training
beyond the knowledge and expertise of lay persons… However, it is clear that the
targeted audience of [Defendant’s] advertising, i.e., potential purchasers of chain
pizza products, do not constitute a group which has some higher level of expertise
or knowledge than that possessed by the consuming public in general. Similarly,
given the nature of the advertising at issue, there is no reason to believe that it
conveyed esoteric messages which would not be understood by the consumer
population at large.
…
Under the circumstances of this case, the evidence presented to the jury
and the instructions given to the jury, [Plaintiff] was not required to prove its
claims with consumer surveys…
Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 188 F.3d 501 (Table):
1999 WL 639165, *5 (4th Cir. 1999), designated “Unpublished Disposition”
…[Defendant] moved to exclude the [Plaintiff’s] Report from
evidence…the district court found that the [Plaintiff’s] Report fell short of
establishing secondary meaning for the following reasons: (1) it failed to address
the relevant time period…; (2) it focused unjustifiably on license and gun permit
buyers; and (3) it excluded substantial portions of the relevant population…
268
…
After careful review of the [Plaintiff’s] Report, this court finds that the
district court would have abused its discretion had it admitted the report into
evidence…
National Football League Properties, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665, 668, 669, 672,
673 (E.D. Wis. 1999)
According to the recent Supreme Court decision Kumho Tire Company,
Ltd. v. Carmichael…the district court has a special “gatekeeping obligation” to
ensure that all expert testimony “is not only relevant, but reliable.”…(…Daubert
v. Merrell Dow Pharmaceuticals, Inc…). In this spirit, defendants ask the court to
exercise its “gatekeeping obligation” to exclude [Plaintiff’s expert’s] report and
the opinions stated therein…
The court concludes that [Plaintiff’s] survey…is seriously flawed. The
main problem with the survey…is that it essentially asks only one question…and
without…any “control”…or…any control questions…see…McCarthy…
(explaining need for controls to account for “background noise”); [and] Shari
Seidman Diamond, Reference Guide on Survey Research, in Reference Manual
on Scientific Evidence…
[Plaintiff’s expert’s] failure to include a control group or question in his
[survey] is puzzling for several reasons. [Plaintiff’s expert] has emphasized in
both his testimony in other cases and in his academic writing [the necessity of] a
control…
…
Thus, pursuant to Daubert and Kumho Tire, the court will exclude
[Plaintiff’s expert’s] survey evidence and any conclusions he has reached based
on that evidence…
…
…the court will grant defendant’s motion in limine to exclude the…report
of [Plaintiff’s expert] and the opinions stated therein. Because Rule 37(c)(1) and
Rule 26(a)(2) the Federal Rules of Civil Procedure preclude an expert from
testifying at trial regarding opinions not previously disclosed in an expert
report…the court will preclude [Plaintiff’s expert] from offering expert testimony
at trial.
Starter Corp. v. Converse, Inc., 170 F.3d 286, 297 (2d Cir. 1999)
…the district court granted [Defendant’s] motion to exclude [Plaintiff’s]
survey and expert testimony thereon. The court reasoned (1) that the survey was
not relevant because it did not test or demonstrate likelihood of consumer
confusion, if any, and (2) that the slight probative value was outweighed by its
prejudicial effect under Rule 403. At trial, the district court reaffirmed its
exclusion, finding that the survey was little more than a memory test, testing the
ability of the participants to remember the names of the shoes they had just been
269
shown and gave no indication of whether there was a likelihood of confusion in
the marketplace.
We hold that the district court did not abuse its discretion in finding that
any probative value of the survey was outweighed by its potential to confuse the
issues in the case. As long as expert survey evidence possesses sufficient
“Circumstantial guarantees of trustworthiness,” a court may properly rely upon it
to establish the likelihood or remoteness of confusion in a trademark dispute...
National Football League Properties, Inc. v. Prostyle, Inc., 16 F. Supp.2d 1012, 1019 (E.D. Wis.
1998)
Furthermore, defendants correctly point out that [Plaintiffs’ expert’s]
conclusion regarding confusion was not stated in terms of what consumers
believed should have happened, as the survey question was stated, but instead was
phrased in terms of what actually happened…Therefore, the court will grant
defendants’ motion in limine regarding all survey answers to the above question
and any conclusions based on those answers. Because all four conclusions of the
[Plaintiffs’ expert’s] study…must be excluded from trial, the court will exclude
his entire report and survey.
…the court at this time will not preclude [Plaintiffs’ expert] from
testifying.
Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454, 1465-1467, 1469 (D. Kan.
1996)
…The methodological defects in the other surveys, however, are so
significant that they render the remaining survey evidence inadmissible for the
purposes for which it was offered.
The court recognizes that methodological deficiencies generally relate to
the weight given to a survey’s conclusions rather than to its admissibility…but if
those deficiencies are so substantial as to render the survey’s conclusions
untrustworthy, a court should exclude the survey from evidence…the Supreme
Court underscored a trial judge’s responsibility to examine expert testimony
critically to ensure that it is both reliable and relevant before admitting it. This
responsibility extends to the survey evidence at issue here.
…
Multiple flaws mar the value of the consumer survey evidence…First, the
surveyors always handed the consumer the [Plaintiff’s] jacket first. This creates
an order effect…By always handing the [Plaintiff’s] jacket…first, [Plaintiff’s
expert] created an order effect of undeterminable magnitude.
Second, [Plaintiff’s expert’s] definition of the consumer market is fatally
underinclusive…
…
The flaws in…[the] surveys are so substantial and pervasive that they
render the survey evidence inadmissible…The most substantial flaws…are that
270
the surveys [were] underinclusive, select[ed] [respondents] using a biased
method, and [did not] present the overall look of the [product].
Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334, 335-336 (S.D.N.Y. 1995)
…The matter is before the Court on defendants’ motions in limine.
Defendants seek to exclude plaintiff’s consumer survey…on the added ground
that the methodology employed in the survey renders it so unreliable that it should
not be placed before the jury…
…
The methodology employed here bears little resemblance to the more
scientifically conducted surveys often seen in litigation such as this. Plaintiff’s
counsel designed a questionnaire and sent one of their employees,…a part-time
typist, drama student and actress, into Washington Square Park, which is located
within blocks of one of plaintiff’s retail stores. Over a two day period, she
approached a number of people who, she said, looked as if they could afford
plaintiff’s shoes, which sell at prices considerably higher than defendants’. [The
lawyer’s assistant], who was shod in defendants’ shoes, asked the well-to-do
passersby whether they could identify the shoes she was wearing. Although she
had a questionnaire designed by counsel, she did not necessarily ask the questions
as written. All told, she interviewed forty-six people…
…
While methodological defects in surveys usually go to the weight rather
than the admissibility of the evidence…there comes a point where the probative
value of the survey is exceeded substantially by its prejudicial effect and potential
for confusion and waste of time. See Federal Rule of Evidence 403…Given the
lack of a proper universe and sample, the lack of reproducibility, the poor choice
of location, and the potential bias introduced by the choice of interviewer, among
other methodological defects, this survey in my view has no significant value in
establishing the proportion of consumers, if any, likely to confuse defendants’
products with plaintiff’s. Accordingly, the cumulative survey results and any
opinion evidence based upon them is excluded…
Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114, 1118-1119 (S.D.N.Y.
1993)
At trial, [Plaintiff] offered three surveys which it had commissioned…The
court ruled the surveys were inadmissible because they were hearsay not falling
within any exception under Federal Rule of Evidence 803…[Plaintiff] urges again
that the surveys are admissible because they fall within the business records
exception of Rule 803(6)…
…
There was inadequate foundation as to Exhibits 8, 9, and 10 that
[Plaintiff’s witness] was a “person with knowledge” within the meaning of the
Rule. The trustworthiness of the documents is also unclear because of the
foundation that was laid…There was no testimony that [Plaintiff’s witness] saw
271
the original data or that he had any knowledge of the steps that [someone else in
Plaintiff’s Marketing Department] took in preparing the report. The fact that
[Plaintiff] may have relied upon the report in marketing makes no difference. The
court cannot be assured of the accuracy of the document. Nor can the court or
opposing counsel investigate the accuracy of the material…
272
PROCEDURAL ISSUES
Mattel, Inc. v. S.W. Fantasies, Inc., 2012 T.T.A.B. LEXIS 392, *12-*13 (T.T.A.B. 2012)
As to the survey information...applicant’s objection that the
surveys lack foundation is overruled in part. [Opposer’s] declaration
identified the surveys as annual tracking surveys conducted in the ordinary
course of business and the 2009 US Boys and Girls Tracking
Study...provides ample description of the survey methodology. Therefore,
we note that the Total Unaided Awareness survey...lacks any discussion of
methodology and we have not considered this survey.
Companhia de Bebidas das Americas –AMBEV v. The Coca Cola Co., 2012 T.T.A.B.
LEXIS 169, *4-*6 (T.T.A.B. 2012)
...during its main testimony period, opposer introduced the
testimony deposition of [its survey expert who] conducted a survey to
determine “the main function of the word “zero” . . . in the brand name
Coca-Cola Zero.”...
Applicant introduced the testimony deposition of...applicant’s
expert witness regarding surveys. [Applicant’s expert] was identified by
applicant in its expert disclosures as a rebuttal witness...[Applicant’s
expert] critiqued the survey conducted by [Opposer’s expert] and opined
as to how the survey should have been conducted. [Applicant’s expert]
also conducted a “standard secondary meaning survey as to ZERO.”...
[Opposer] argues that the [Applicant’s expert’s] survey and
testimony should be excluded because it constitutes improper rebuttal in
that it did not “test the same question that was posed in the [Opposer’s]
survey it purports to rebut.”...[Opposer] is correct that [Applicant]
identified [their survey expert] as a rebuttal witness and therefore his
survey and testimony should be limited to rebuttal. However, the rebuttal
survey and testimony need not be limited to the same question that was
posed in [Opposer’s] survey. The purpose of rebuttal is to “introduce facts
and witnesses appropriate to deny, explain or discredit the facts and
witnesses adduced by the opponent. . . .”...
Because [Applicant’s expert’s] survey and testimony regarding
that survey are proper rebuttal to the extent that they bear on the validity
and probative value of the [Opposer’s expert’s] survey, [Opposer’s]
objection is not well taken...
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280, *2 n.1
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B.
n.1 While it is true that claims need only be determined with
regard to one of several items in a single international class, such that
likelihood of confusion will be found as to the entire class if there is likely
273
to be confusion with respect to any item that comes within the
identification of goods in that class...this determination does not extend to
other international classes...(“(I)f priority and likelihood of confusion are
established as to any of the goods or services identified in an opposed
class of goods or services, the opposition to registration of the mark as to
all of the good or services identified in that class will be sustained”)...Each
international class stands on its own, for all practical purposes like a
separate application, and we must make determinations for each separate
class...
Firefly Digital, Inc. v. Google, Inc., 2011 U.S. Dist LEXIS 73259, *19 (W.D. La. 2011)
...to create the targeted universe to be sampled, i.e. relying on the
allegations of the plaintiff’s complaint and public representations, was
likewise reliable and adequately met the goals sought to be achieved by
the criteria for determining the universe in a genericness and secondary
meaning survey.
Gerawan Farming, Inc. v. Prima Bella Produce, Inc., 2011 U.S. Dist. LEXIS 52792, *3,
*8-*9, *19-*20 (E.D. Cal. 2011)
On February 24, 2011, the Court granted the parties’ stipulation to
amend the scheduling order...nothing in the order altered the parties’
obligation under the initial scheduling order to disclose all expert
witnesses by March 23, 2011 and all supplemental experts by April 8,
2011 nor was any such alteration requested...
...Rather, on April 8, 2011, Defendant disclosed two
“supplemental” expert witnesses...whose report are now at issue.
...
....the above discussion makes clear, the expert reports...are initial
expert reports. Characterization of these reports a “supplemental” or
“rebuttal” in nature would only serve to undermine the expert disclosure
deadlines set by the Court...
Parties are required to make expert disclosures “at the times and in
the sequence that the court orders.”...Here the Court issued a scheduling
order instructing the parties to disclose all initial expert reports on or
before March 23, 2011. Defendant, however, did not disclose the expert
reports...until over two weeks later, on April 8, 2011. Accordingly, the
Court finds the reports to be untimely.
...
In sum, the expert witness reports...constitute initial expert
disclosures. These disclosures were made by Defendant after the
applicable March 23, 2011 deadline, making them untimely. Moreover,
because Defendant has not demonstrated that the belated disclosures were
substantially justified or harmless, the expert reports...will be excluded.
Federal Rules of Evidence 1006 provides no different result.
274
Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687, *33-*35,
*39 (D. Conn. 2010)
Discovery in this case closed on September 14, 2009...
The Defendants filed their motion for summary judgment on
October 15, 2009. On November 25, 2009, [Plaintiff] filed its response in
opposition thereto. Attached as Exhibit 95 to [Plaintiff’s] response brief
was an Affidavit from [Plaintiff’s expert], in which he criticizes the
statistical analysis performed in the [Defendants’ study] and concludes
that the Study is unreliable. None of the opinions contained in the
[Plaintiff’s expert’s] Affidavit appeared in [Plaintiff’s expert’s] Rule 26(a)
expert report, nor did [Plaintiff] make any attempt to supplement
[Plaintiff’s expert’s] report at any time.
Fed. R. Civ. P. 26(a)(2)(B) requires expert witnesses to submit,
during discovery, a report that contains, among other things, “a complete
statement of all opinions the witness will express and the basis and reasons
for them.”...
Here, [Plaintiff] has provided no explanation at all as to why it
failed to comply with the Rule 26(a)(2) disclosure requirement.
...
...Accordingly, the Defendants’ motion to preclude the [Plaintiff’s
expert’s] Affidavit is granted...
Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623,
*9-*10 (S.D. S.D. 2009
Defendants in their motion to strike also contend that an affidavit
[Plaintiff] filed of its survey expert witness…should be stricken.
Defendants contend this affidavit contains 14 additional paragraphs of
opinions not previously disclosed in [Plaintiff’s] expert
report…Defendants have proffered no expert report to contradict the
findings of [Plaintiff’s expert], and have not deposed [Plaintiff’s expert].
The Court concludes that [Plaintiff’s expert’s] report merely responds to
the challenges made by the Defendants and elaborates upon his earlier
report, and does not violate the requirements of FED. R. CIV. P. 26.
Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51, *19 (T.T.A.B.
2004).
Another issue concerns a survey that applicant introduced to show that
there was no likelihood of confusion. Opposer objects to the survey on the
ground that applicant has not shown that the survey’s designer…is an expert. In
addition, even if the survey is admitted into evidence, opposer argues that it
includes many flaws and should be given little or no weight…
275
We start by noting that opposer’s objection should have been raised
earlier. Opposer did not raise these objections to the survey in his opening brief,
and for that reason, opposer’s objection to the survey will not be sustained.
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 376 (S.D.N.Y. 2003)
…This Court declines to consider any survey or expert report, including
the Pilot Survey, offered to defendants for the first time on a summary judgment
motion and inexplicably not produced during discovery…
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887, *3, *6, *9
(S.D.N.Y. 2003)
…[Plaintiff]…asked for all expert reports from cases in which
[Defendant’s expert] testified in the last five years. In response to this request,
[the company employing Defendant’s expert] concedes that it has the expert
reports but objects to producing them for plaintiffs.
The issue before the court is whether plaintiffs are entitled to the
[Defendant’s expert’s] reports prepared in cases in which [Defendant’s expert]
testified in the last five years…
…
…plaintiffs’ request for [Defendant’s expert’s] expert reports from all
cases in which he was an expert in the last five years is beyond the scope of Rule
26.
…
…The plain language of Rule 26 directs parties to provide a list of cases,
not the expert reports relied upon in those cases…
Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408, *4, *6-*8 (T.T.A.B.
2003).
The issue is whether opposer’s survey and the testimony that explains it
were proper rebuttal as responsive to applicant’s asserted defenses, or, as
applicant asserts, this testimony and these exhibits could only have been presented
as part of opposer’s case in chief.
The survey was designed to determine whether the third-party uses shown
by applicant during its testimony period have diluted the fame of opposer’s
“DUKE” mark for clothing, and whether, as applicant argues its testimony and
evidence shows, such third-party uses of similar marks have created a
marketplace in which confusion between opposer’s mark and the mark applicant
seeks to register would not be likely.
…
There is no question that [Opposer’s expert’s] testimony and the survey he
conducted would have been appropriate to present as part of opposer’s case in
chief. Neither party contests this fact. Applicant argues that once opposer failed
276
to conduct and introduce the survey during its testimony period, however, opposer
could not thereafter introduce it…
After careful consideration of the arguments of both parties, we have
decided to consider this testimony and evidence because it is proper rebuttal under
the circumstances presented by this case. During its initial testimony period,
opposer had the burden of establishing its standing; of establishing its ownership
of the marks with which it contends applicant’s mark would be likely to cause
confusion; of establishing use of these marks before applicant filed the application
to register the mark it seeks to register; and of establishing a prima facie case of
likelihood of confusion based on the similarity of the marks and the relationship
between opposer’s goods and the goods with which applicant intends to use the
mark it seeks to register.
…opposer was not required to anticipate or guess what grounds of defense
might be raised by applicant, or to counter those grounds of defense prior to their
assertion. Dilution was not raised by applicant as a defense in its answer to the
Notice of Opposition. When applicant presented testimony concerning the alleged
dilution of opposer’s marks, opposer properly rebutted the dilution defense
asserted by applicant with three depositions, one of which is the deposition of
[Opposer’s expert] to which applicant objects. Under these circumstances, his
testimony and the exhibits to it are admissible as rebuttal testimony.
Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238, 242-244 (D. Del.
1998)
[Defendant’s use of copyrighted business letter in survey conducted for
discovery in trademark infringement action is fair use since defendant]...has only
used [Plaintiff’s] letter in a survey, as part of its preparation for litigation [and is
not]...profiting from the survey it is conducting...
...
...[and since Plaintiff’s letter] is not meant to be creative or original...
...
...[and] there is no potential market for [Plaintiff’s] letter...and no one
would be interested in buying it...
...
[Defendant’s use of business letters, which are very similar to plaintiff’s
letter to its potential customers, in survey conducted for discovery in trademark
infringement action did not constitute “false or misleading” description or
representation of fact in violation of Lanham Act’s Section 43(a), 15 USC
1125(a) since defendant’s first letter is exact copy of plaintiff’s letter]...except that
the date matched the date of the survey.
277
BIBLIOGRAPHY
INTELLECTUAL PROPERTY SURVEYS
BY ISSUE
This appendix contains citations, by issue, for all identified published opinions from
January 1998 through December 2012, in which survey evidence was referenced.
Genericness Surveys
First Circuit
Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness)
Second Circuit
Lifeguard Licensing Corp. v. Gogo Sports, Inc., 2013 U.S. Dist. LEXIS 115668
(S.D.N.Y. 2013) (Genericness) (Daubert/Admissibility Issues)
Pfizer, Inc. v. Arye Sachs, 2009 U.S. Dist. LEXIS 81188 (S.D.N.Y. 2009) (Genericness)
Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286 (S.D.N.Y. 2000) (Genericness)
Third Circuit
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd
Cir. 2008) (Genericness) (Secondary Meaning)
E.T. Browne Drug Co. v. Cococare Products, Inc., 2006 U.S. Dist. LEXIS 66515 (D. N.J.
2006) (Genericness)
The Hershey Co. v. Promotion in Motion, Inc., 2011 U.S. Dist. LEXIS 129651 (D. N.J.
2011) (Genericness)
Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513 (D. N.J. 2002)
(Genericness)
J&J Snack Foods, Corp. v. Nestle USA, Inc. and The Earthgrains Co., 149 F. Supp. 2d 136 (D.
N.J. 2001) (Genericness)
Taza Systems, LLC, V. Taza 21 CO., LLC, 2013 U.S. Dist. LEXIS 130974, (D. Pa. 2013)
(Genericness) (Daubert/Admissibility Issues)
Fourth Circuit
BellSouth Corp. v. White Directory Publishers Inc., 42 F. Supp. 2d 598 (M.D. N.C. 1999)
(Genericness)
278
Genericness
Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001)
(Genericness)
Fifth Circuit
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003)
(Genericness) (Secondary Meaning)
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 162 F. Supp. 2d 560 (N.D. Tex. 2001)
(Genericness)
Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary
Meaning)
Sixth Circuit
Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926 (M.D. Tenn. 2001)
(Genericness)
General Conference Corp. of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist.
LEXIS 45526 (W.D. Tenn. 2008) (Genericness)
Seventh Circuit
Baniel v. Guild, 2000 WL 1349254 (N.D. Ill. 2000) (Genericness)
Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528 (7th Cir. 2003) (Genericness)
Ty, Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness)
(Secondary Meaning)
Eighth Circuit
PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010)
(Genericness) (Secondary Meaning)
Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (Genericness)
The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004)
(Genericness) (Secondary Meaning)
279
Genericness
Ninth Circuit
Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS
19221, (C.D. Cal. 2007) (Genericness)
Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236 (D. Haw. 2003)
(Genericness)
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525 (C.D. Cal.
2007) (Genericness)
Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, (W.D. Wash. 2002)
(Genericness)
Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D.
Cal. 2008) (Genericness) (Secondary Meaning)
Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc.,
240 F.3d 832 (9th Cir. 2001) (Genericness)
Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783 (C.D. Cal. 2005)
(Genericness)
Zipee Corp. and Zipee.com, Inc. v. United States Postal Service, 140 F. Supp. 2d 1084 (D. Or.
2000) (Genericness)
Tenth Circuit
Robert Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004) (Genericness)
Primary Children’s Med. Ctr. Found. v. Scentsy, Inc., 2012 U.S. Dist. LEXIS 86318 (D.
Utah 2012) (Genericness)
Eleventh Circuit
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS
95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
Pods Enterprises, Inc. vs. U-Haul International, Inc., 2014 U.S. Dist. LEXIS 80208
(M.D. Fla. 2014) (Genericness) (Daubert/Admissibility Issues)
D.C. Circuit
Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1 (D. D.C. 2006)
(Genericness)
280
Genericness
Federal Circuit
In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (Genericness)
T.T.A.B.
In re 1-800 Contacts, Inc., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness) (Secondary
Meaning)
Amazon Technologies, Inc. v. Geoffrey R. Daigle, 2013 TTAB LEXIS 298, (T.T.A.B.
2013) (Genericness)
Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310 (T.T.A.B. 2003)
(Genericness)
Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (T.T.A.B. 2000)
(Genericness) (Daubert/Admissibility Issues)
Buell Motorcycle Co. v. Honda, 2003 T.T.A.B. LEXIS 359 (T.T.A.B. 2003) (Genericness)
In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599 (T.T.A.B. 2001) (Genericness)
Companhia de Bebidas das Americas –AMBEV v. The Coca Cola Co., 2012 T.T.A.B.
LEXIS 169 (T.T.A.B. 2012) (Genericness) (Secondary Meaning)
In re Country Music Ass’n, 2011 T.T.A.B. LEXIS 343 (T.T.A.B. 2011) This opinion is a
precedent of the T.T.A.B. (Genericness)
In re Credit.com, Inc., 2008 T.T.A.B. LEXIS 321 (T.T.A.B. 2008) (Genericness)
Danish Dairy Bd., Inc. v. The Ministry of Commerce, Cyprus, 1999 T.T.A.B. LEXIS 412
(T.T.A.B. 1999) (Genericness)
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, T.T.A.B. LEXIS 38,
(T.T.A.B. 2014) (Genericness)
Freeman v. Nat’l Ass’n of Realtors, 2002 T.T.A.B. LEXIS 381 (T.T.A.B. 2002) (Genericness)
In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60 (T.T.A.B. 2008) (Genericness)
In re in3media, Inc., 2011 T.T.A.B. LEXIS 189 (T.T.A.B. 2011) (Genericness)
(Secondary Meaning)
Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180 (T.T.A.B. 2004) This
opinion is a precedent of the T.T.A.B. (Genericness)
281
Genericness
In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27 (T.T.A.B. 2005)
(Genericness)
QVC, Inc. v. Home Shopping Network, Inc., 1999 T.T.A.B. LEXIS 751 (T.T.A.B. 1999)
(Genericness)
Schwan’s Sales Enterprises, Inc. v. Kraft Pizza Co., 2006 T.T.A.B. LEXIS 190 (T.T.A.B.
2006) (Genericness)
Sheetz of Delaware, Inc. v. Doctor's Associates Inc., 2013 T.T.A.B. LEXIS 468,
(T.T.A.B. 2013) (Genericness)
In re Shuffle Master, Inc., 2011 T.T.A.B. LEXIS 391 (T.T.A.B. 2011) (Genericness)
In re Softspikes, Inc., 2012 T.T.A.B. LEXIS 107 (T.T.A.B. 2012) (Genericness)
STK LLC v. Backrack, Inc., 2012 T.T.A.B. LEXIS 186 (T.T.A.B. 2012) (Genericness)
In re Super-Pharm (Israel) Limited 2013 T.T.A.B. LEXIS 629, (T.T.A.B. 2013)
(Decriptiveness/Suggestiveness)
Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330 (T.T.A.B. 2006)
(Genericness)
282
Genericness
Descriptiveness/Suggestiveness Surveys
Second Circuit
Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS
19278 (D. Vt. 2004) (Descriptiveness)
Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 327 F. Supp. 2d 278 (D.
Vt. 2003) (Descriptiveness)
Third Circuit
J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003)
(Descriptiveness) (Daubert/Admissibility Issues)
J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002)
(Descriptiveness) (Daubert/Admissibility Issues)
Fifth Circuit
Blendco, Inc. v. Conagra Foods, Inc., 2005 U.S. App. LEXIS 9075 (5th Cir. 2005)
(Descriptiveness)
Seventh Circuit
Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004) (Descriptiveness)
Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 22774 (N.D. Ill. 2003)
(Descriptiveness)
Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 14937 (N.D. Ill. 2003)
(Descriptiveness)
Ninth Circuit
Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080
(C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
T.T.A.B.
In re DaimlerChrysler AG, 2001 T.T.A.B. LEXIS 557 (T.T.A.B. 2001) (Descriptiveness)
In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621 (T.T.A.B. 2004) (Descriptiveness)
283
Descriptiveness/Suggestiveness
In re Super-Pharm (Israel) Limited 2013 T.T.A.B. LEXIS 629, (T.T.A.B. 2013)
(Descriptiveness/Suggestiveness)
Warner-Lambert Co. v. Nabisco, Inc., 1999 T.T.A.B. LEXIS 143 (T.T.A.B. 1999)
(Descriptiveness)
284
Descriptiveness/Suggestiveness
Secondary Meaning Surveys
First Circuit
Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS
27148 (D. Mass. 2007) (Secondary Meaning)
The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) (Secondary
Meaning)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003)
(Secondary Meaning) (Likelihood of Confusion)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
Carroll Shelby v. Superformance Int’l, Inc., 2006 U.S. App. LEXIS 1096 (1st Cir. 2006)
(Secondary Meaning)
Carroll Shelby v. Superformance Int’l, Inc., 251 F. Supp. 2d 983 (D. Mass. 2002) (Secondary
Meaning)
Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion)
Genesis Strategies, Inc. v Pitney Bowes, Inc., 2014 U.S. Dist. LEXIS 67714, (D. MA.
2014) (Secondary Meaning)
I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co. and Robern, Inc., 118 F. Supp. 2d 92 (D.
Mass. 2000) (Secondary Meaning)
Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. Puerto Rico 2004)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159 (D. Mass. 1998) (Secondary
Meaning)
285
Secondary Meaning
Second Circuit
American Express v. Black Card LLC, 2011 U.S. Dist. LEXIS 133151 (S.D.N.Y. 2011)
(Secondary Meaning)
Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 2014 U.S. Dist. LEXIS
1030 (S.D.N.Y. 2014) (Secondary Meaning)
BIC Corps. and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist. LEXIS
18226 (S.D.N.Y. 2000) (Secondary Meaning)
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004)
(Secondary Meaning)
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887 (S.D.N.Y.
2003) (Secondary Meaning)
Cartier, Inc. v. Samo’s Sons, Inc., 2005 U.S. Dist. LEXIS 23395 (S.D.N.Y. 2005) (Secondary
Meaning)
Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277 (2d Cir. 2008)
(Secondary Meaning)
Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 696 F.3d 206 (2d Cir. 2012)
(Secondary Meaning)
Coach, Inc. v. We Care Trading Co., Inc., 2002 U.S. App. LEXIS 28143 (2d Cir. 2002)
(Secondary Meaning)
Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879 (S.D.N.Y. 2001)
(Secondary Meaning)
Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc.,
116 F. Supp. 2d 405 (S.D.N.Y. 2000) (Secondary Meaning)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478
(E.D.N.Y. 2008) (Secondary Meaning)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530
(E.D.N.Y. 2007) (Secondary Meaning)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008)
(Secondary Meaning) (Likelihood of Confusion)
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
286
Secondary Meaning
Nabisco, Inc. v. PF Brands, Inc. and Pepperidge Farm, Inc., 50 F. Supp. 2d 188 (S.D.N.Y.1999)
(Secondary Meaning)
People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010)
(Secondary Meaning) (Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning)
(Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning)
(Likelihood of Confusion)
Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458
(S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634
(E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion)
WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary
Meaning) (Likelihood of Confusion)
Third Circuit
Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384 (E.D. Pa. 2000)
(Secondary Meaning)
Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, (3d Cir. 2000)
(Secondary Meaning)
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd
Cir. 2008) (Genericness) (Secondary Meaning)
Fourth Circuit
America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (Secondary Meaning)
Belk, Inc. v. Meyer Corp., 679 F.3d 146 (4th Cir. 2012) (Secondary Meaning)
(Likelihood of Confusion)
Black & Decker Inc. v. Pro-Tech Power Inc. P & F, 26 F. Supp. 2d 834 (E.D. Va. 1998)
(Secondary Meaning)
Dick’s Sporting Goods, Inc. v. Dick’s Clothing and Sporting Goods, Inc., 188 F.3d 501 (Table):
1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition”. (Secondary Meaning)
(Daubert/Admissibility Issues)
287
Secondary Meaning
U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517 (4th Cir. 2002) (Secondary Meaning)
Fifth Circuit
Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas
Subsidiary, 2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning)
(Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 817 F. Supp. 2d 846 (W.D. La. 2011) (Genericness)
(Secondary Meaning) (Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 2011 U.S. Dist LEXIS 73259 (W.D. La. 2011)
(Genericness) (Secondary Meaning) (Daubert/Admissibility Issues)
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist.
LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
Honestech, Inc. v. Sonic Solutions, 2011 U.S. App. LEXIS 12816 (5th Cir. 2011)
(Secondary Meaning) (Daubert/Admissibility Issues
Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573 (W.D. Ttex. 2010) (Secondary
Meaning)
Kensington Partners v. Cordillera Ranch, Ltd., 1998 U.S. Dist. LEXIS 23673 (W.D. Tex.
1998) (Secondary Meaning)
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003)
(Genericness) (Secondary Meaning)
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning)
(Likelihood of Confusion)
Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D.
Miss. 2007) (Secondary Meaning)
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884 (S.D. Tex.
2011) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary
Meaning)
288
Secondary Meaning
Sixth Circuit
AutoZone, Inc. and Speedbar, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (Secondary
Meaning)
Autozone, Inc. and Speedbar, Inc. v. Tandy Corp., 174 F. Supp. 2d 718 (M.D. Tenn. 2001)
(Secondary Meaning)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366
(6th Cir. (Secondary Meaning) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800
(E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary
Meaning) (Likelihood of Confusion)
Innovation Ventures, LLC v. N2G Distributing, Inc., 779 F. Supp. 2d 671 (E.D. Mich.
2011) (Secondary Meaning)
Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp. 2d 700 (N.D. Ohio 1999) (Secondary Meaning)
Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D.
Ohio 1999) (Secondary Meaning) (Likelihood of Confusion)
T. Marzetti Co. v. Roskam Baking Co., 680 F.3d 629 (6th Cir. 2012) (Secondary Meaning)
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D.
Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues)
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2005 U.S. Dist. LEXIS 30311 (W.D.
Mich. 2005) (Secondary Meaning)
Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561 (E.D. Ky.
2004) (Secondary Meaning)
Seventh Circuit
AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir.
2002) (Secondary Meaning) (Likelihood of Confusion)
Atlas Electric Devices Co. v. Q-Panel Lab Products Corp., 2001 U.S. Dist. LEXIS 24308 (N.D.
Ill. 2001) (Secondary Meaning)
Best Vacuum, Inc. v. Ian Design, Inc., 2006 U.S. Dist. LEXIS 87260 (N.D. Ill. 2006)
(Secondary Meaning)
289
Secondary Meaning
Bretford Mfg., Inc. v. Smith System Mfg. Co., 116 F. Supp. 2d 951 (N.D. Ill. 2000) (Secondary
Meaning)
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill.
2003) (Secondary Meaning) (Daubert/Admissibility Issues)
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 5940 (N.D. Ill.
2003) (Secondary Meaning)
Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill.
1998) (Secondary Meaning) (Likelihood of Confusion)
Simon Property Group, L.P. v. mySimon, Inc., 2003 U.S. Dist. LEXIS 5438 (S.D. Ind. 2003)
(Secondary Meaning)
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (Secondary Meaning)
Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912 (N.D. Ill. 2001) (Secondary
Meaning)
Ty Inc. v. The Jones Group, Inc., 98 F. Supp. 2d 988 (N.D. Ill. 2000) (Secondary Meaning)
Ty Inc. v. Softbelly’s Inc., 2006 WL 5111124 (N.D. Ill. 2006) (Secondary Meaning)
Ty Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness)
(Secondary Meaning)
Eighth Circuit
Fair Isaac Corp. v. Experian Information Solutions Inc., 645 F. Supp. 2d 734(D. Minn.
2009) (Secondary Meaning)
Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000)
(Secondary Meaning) (Likelihood of Confusion) (Dilution)
Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005)
(Secondary Meaning) (Likelihood of Confusion)
Home Builders Ass’n of Great St. Lous v. L&L Exhibition Mgmt., Inc., 1999 U.S. Dist.
LEXIS 23525 (E.D. Mo. 1999) (Secondary Meaning)
Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997 (D. Minn.
2000) (Secondary Meaning)
290
Secondary Meaning
PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010)
(Genericness) (Secondary Meaning)
R.H. Donnelley Inc. v. USA Northland Directories, Inc., 2004 U.S. Dist. LEXIS 26902 (D. Minn.
2004) (Secondary Meaning)
Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016 (D. Minn. 2005) (Secondary
Meaning)
The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004)
(Genericness) (Secondary Meaning)
Ninth Circuit
Aerus LLC v. ProTeam, Inc., 2007 U.S. Dist. LEXIS 97683 (S.D. Cal. 2007) (Secondary
Meaning)
Apple, Inc. v. Samsung Electronics Co., Ltd, 920 F. Supp. 2d 1116 (N.D Cal. 2013)
(Dilution) (Secondary Meaning)
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution)
(Daubert/Admissibility Issues)
Brighton Collectibles, Inc. v. Coldwater Creek Inc., 2008 U.S. Dist. LEXIS 121561 (S.D.
Cal. 2008) (Secondary Meaning)
California Bd. Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal. 2007)
(Secondary Meaning)
Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708
(N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1062 (C.D. Cal. 1999) (Secondary Meaning)
Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) (Secondary Meaning)
Credit One Corp. v. Credit One Financial,Inc., 2009 U.S. Dist. LEXIS 99029 (C.D. Cal.
2009) (Secondary Meaning)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz.
2007) (Secondary Meaning) (Likelihood of Confusion)
Excelligence Learning Corp. v. Oriental Trading Co., Inc., 2004 U.S. Dist. LEXIS 30370 (N.D.
Cal. 2004) (Secondary Meaning)
291
Secondary Meaning
Express, LLC v. Forever 21, Inc., 2010U.S. Dist. LEXIS 91705 (C.D. Cal. 2010)
(Secondary Meaning)
Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame)
Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary
Meaning) (Fame)
Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006)
(Secondary Meaning) (Likelihood of Confusion)
Joel D. Wallach v. Longevity Network, Ltd., 2005 U.S. Dist. LEXIS 45937 (C.D. Cal.
2005) (Secondary Meaning)
Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625
(N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution)
Loblaw Cos. Ltd. v. Guita M. Azimi, 2001 U.S. Dist. LEXIS 26500 (N.D. Cal. 2001) (Secondary
Meaning)
Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D.
Cal. 2008) (Genericness) (Secondary Meaning)
Resource Lenders, Inc. v. Source Solutions, Inc., 2005 U.S. Dist. LEXIS 38732 (E.D. Cal. 2005)
(Secondary Meaning)
Seed Lighting Design Co., Ltd. v. Home Depot, 2005 U.S. Dist. LEXIS 44741 (N.D. Cal. 2005)
(Secondary Meaning)
Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418 (D. Nev. 2006)
(Secondary Meaning)
Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177 (C.D. Cal.
2001) (Secondary Meaning) (Daubert/Admissibility Issues)
Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520 (N.D.
Cal. 2007) (Secondary Meaning)
Warner Bros. Entm’t v. The Global Asylum, Inc., 2012 U.S. Dist. LEXIS 185695 (C.D.
Cal. 2012) (Secondary Meaning) (Likelihood of Confusion)
292
Secondary Meaning
Tenth Circuit
1-800 Contacts, Inc. v. Lens.com, Inc., 2010U.S. Dist. LEXIS 132389 (D. Utah 2010)
(Secondary Meaning) (Likelihood of Confusion)
First Fidelity Bank v. Fidelity Bank, 2006 U.S. Dist. LEXIS 100879 (W.D. Okla. 2006)
(Secondary Meaning) (Daubert/Admissibility Issues)
First Savings Bank, F.S.B. v. U.S. Bancorp, 117 F. Supp. 2d 1061 (D. Kan. 2000) (Secondary
Meaning)
General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah
2010) (Secondary Meaning) (Likelihood of Confusion)
Heartland Animal Clinic, P.A. v. Heartland SPCA Animal Medical Clinic, LLC, 2012
U.S. App. LEXIS 24435 (10th Cir. 2012) (Secondary Meaning)
Heartland Animal Clinic, P.A. v. Heartland SPCA Animal Medical Clinic, LLC, 861 F.
Supp. 2d 1293 (D. Kan. 2012) (Secondary Meaning)
Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary
Meaning) (Daubert/Admissibility Issues)
Eleventh Circuit
Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp.
2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues)
General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154 (S.D. Fla.
2000) (Secondary Meaning)
Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008)
(Secondary Meaning) (Daubert/Admissibility Issues)
Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist.
LEXIS 3659 (S.D. Fla. 2007) (Secondary Meaning)
Federal Circuit
In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (Secondary Meaning)
T.T.A.B.
In re 1-800 Contacts, Inc., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness) (Secondary
Meaning)
293
Secondary Meaning
American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 244 (T.T.A.B. 2006)
(Secondary Meaning)
American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195 (T.T.A.B. 2006)
(Secondary Meaning)
American Girl, LLC v. Barry Epstein, 2009 T.T.A.B. LEXIS 412 (T.T.A.B. 2009)
(Secondary Meaning)
Anvil Knitwear, Inc. v. Success Ware Inc., 2004 T.T.A.B. LEXIS 361 (Secondary Meaning)
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
(T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion)
The Bd. of Trustees of the Univ. of Alabama v. William Pitts, Jr., 2013 T.T.A.B. LEXIS
370 (T.T.A.B. 2013) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
Carl Walther Gmbh, In re, 2010 T.T.A.B. LEXIS 410 (T.T.A.B. 2010) (Secondary
Meaning)
Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning)
(Likelihood of Confusion)
In re Charles N. Van Valkenburgh, 2011 T.T.A.B. LEXIS 1 (T.T.A.B. 2011) This
opinion is a precedent of the T.T.A.B. (Secondary Meaning)
Companhia de Bebidas das Americas –AMBEV v. The Coca Cola Co., 2012 T.T.A.B.
LEXIS 169 (T.T.A.B. 2012) (Genericness) (Secondary Meaning)
Diamonique Corp. v. Wieck Family, Ltd., 2004 T.T.A.B. LEXIS 271 (T.T.A.B. 2004)
(Secondary Meaning)
Duramax Marine, LLC v. R.W. Fernstrum & Co., 2006 T.T.A.B. LEXIS 306 (T.T.A.B.
2006) (Secondary Meaning)
Factory Five Racing, Inc. v. Carroll Shelby, 2010 T.T.A.B. LEXIS 402 (T.T.A.B. 2010)
(Secondary Meaning)
Farm Fleet Supplies, Inc. v. Blain Supply, Inc., 2013 T.T.A.B. LEXIS 449 (T.T.A.B.
2013) (Secondary Meaning)
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
(Likelihood of Confusion) (Fame)
In re GIE Media, Inc., 2013 TTAB LEXIS 244 (T.T.A.B. 2013) (Secondary Meaning)
294
Secondary Meaning
Glen Raven, Inc. v. Amerinova Properties, LLC, 2013 T.T.A.B. LEXIS 431 (T.T.A.B.
2013) (Secondary Meaning)
In re Hershey Chocolate and Confectionary Corp., 2012 T.T.A.B. LEXIS 255 (T.T.A.B.
2012) (Secondary Meaning)
In re in3media, Inc., 2011 T.T.A.B. LEXIS 189 (T.T.A.B. 2011) (Genericness)
(Secondary Meaning)
In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345 (T.T.A.B. 2004) (Secondary Meaning)
Mattel, Inc. v. S.W. Fantasies, Inc., 2012 T.T.A.B. LEXIS 392 (T.T.A.B. 2012)
(Secondary Meaning) (Procedural)
Nextel Communications, Inc. v. Motorola, Inc., 2009 T.T.A.B. LEXIS 443 (T.T.A.B.
2009) (Secondary Meaning)
Nextel Communications, Inc. v. Motorola, Inc., 2006 T.T.A.B. LEXIS 166 (T.T.A.B.
2006) (Secondary Meaning)
The Oakland Corp. v. Nylok Fastener Corp., 1999 T.T.A.B. LEXIS 787 (T.T.A.B. 1999)
(Secondary Meaning)
Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007) (Secondary
Meaning) This opinion is a precedent of the T.T.A.B.
In re Steelbuilding.com, Inc., 2007 T.T.A.B. LEXIS 122 (T.T.A.B. 2007) (Secondary
Meaning)
Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS
132 (T.T.A.B. 2009) (Secondary Meaning)
In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843 (T.T.A.B. 1999) (Secondary Meaning)
In re U-Haul Int’l, Inc., 2003 T.T.A.B. LEXIS 484 (T.T.A.B. 2003) (Secondary Meaning)
Wagner Spray Tech Corp. v. Graco, Inc., 2003 T.T.A.B. LEXIS 343 (T.T.A.B. 2003)
(Secondary Meaning)
Wal-Mart Stores, Inc. v. Franklin Loufrani, 2009 T.T.A.B. LEXIS 113 (T.T.A.B. 2009)
(Secondary Meaning)
The William Carter Co. v. H.W. Carter & Sons, Inc., 2004 T.T.A.B. LEXIS 115 (T.T.A.B. 2004)
(Secondary Meaning)
295
Secondary Meaning
Likelihood of Confusion Surveys
First Circuit
Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288 F. Supp. 2d 105 (D. N.H. 2003) (Likelihood
of Confusion)
The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003)
(Secondary Meaning) (Likelihood of Confusion)
Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (Likelihood
of Confusion)
Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452 (D. P.R.
2005) (Likelihood of Confusion)
Capitol Federal Savings Bank v. Eastern Bank Corp., 2007 U.S. Dist. LEXIS 100193 (D.
Mass. 2007) (Likelihood of Confusion)
EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147 (D. Mass. 1999) (Likelihood of
Confusion)
Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion)
JJI International, Inc. v. The Bazar Group, Inc., 2013 U.S. Dist. LEXIS 88478 (R.I.
2013) (Likelihood of Confusion)
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. P.R. 2004) (Secondary
Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Second Circuit
1-800 Contacts, Inc. v. WhenU.Com, Inc. and Vision Direct, Inc., 414 F.3d 400 (2d Cir. 2005)
(Likelihood of Confusion)
1-800 Contacts, Inc. v. WhenU.com, Inc. and Vision Direct, Inc., 309 F. Supp. 2d 467 (S.D.N.Y.
2003) (Likelihood of Confusion)
296
Likelihood of Confusion
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266 (S.D.N.Y.
2006) (Likelihood of Confusion)
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 2005 U.S. Dist. LEXIS 7462 (S.D.N.Y.
2005) (Likelihood of Confusion)
Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 2014 U.S. Dist. LEXIS
1030 (S.D.N.Y. 2014) (Likelihood of Confusion)
Aztar Corp. v. NY Entm’t, LLC, 15 F. Supp. 2d 252 (E.D.N.Y. 1998) (Likelihood of Confusion)
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 2000 U.S. Dist. LEXIS 19852 (E.D.N.Y.
2000) (Likelihood of Confusion)
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237 (S.D.N.Y. 1999) (Likelihood of Confusion)
Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504
(S.D.N.Y. 2000) (Likelihood of Confusion)
Borghese Trademarks, Inc. v. Francesco Borghese, 2012 U.S. Dist. LEXIS 184363
(S.D.N.Y. 2012) (Likelihood of Confusion)
Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281 (S.D.N.Y. 2003) (Likelihood of
Confusion)
Bruce Lee Enterprises, LLC v. A.V.E.L.A., Inc., 2013 U.S. Dist. LEXIS 31155 (S.D.N.Y.
2013) (Likelihood of Confusion)
Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226 (S.D.N.Y. 2001) (Likelihood of
Confusion)
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242 (S.D.N.Y. 1999) (Likelihood of Confusion)
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347
(W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Cumberland Packing Corp. v. Monsanto Co., 140 F. Supp. 2d 241 (E.D.N.Y. 2001) (Likelihood
of Confusion)
297
Likelihood of Confusion
Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561 (E.D.N.Y. 1999) (Likelihood
of Confusion)
Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood
of Confusion) (Daubert/Addmissibility Issues)
Denimafia Inc. v. New Balance Athletic Shoe, Inc., 2014 U.S. Dist. LEXIS 27541
(S.D.N.Y. 2014) (Likelihood of Confusion)
Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y.
2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Elements/Jill Schwartz, Inc. v. Gloriosa Co. and Gloria Pacosa, 2002 U.S. Dist. LEXIS 12669
(S.D.N.Y. 2002) (Likelihood of Confusion)
Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. Culbro Corp. and General Cigar Co., Inc.,
2004 U.S. Dist. LEXIS 4935 (S.D.N.Y. 2004) (Likelihood of Confusion)
First Nat’l Bank of Omaha, Inc. v. MasterCard Int’l Inc., 2004 U.S. Dist. LEXIS 13162
(S.D.N.Y. 2004) (Likelihood of Confusion)
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399 (S.D.N.Y. 2002)
(Likelihood of Confusion)
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
The Gap, Inc. v. G.A.P, Adventures Inc., 2011 U.S. Dist. LEXIS 71675 (S.D.N.Y. 2011)
(Likelihood of Confusion) (Dilution)
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008)
(Likelihood of Confusion)
Go SMiLE, Inc. v. Dr. Johnathan Levine, 769 F. Supp. 2d 630 (S.D.N.Y. 2011)
(Likelihood of Confusion)
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Gucci America, Inc. v. Guess?, Inc., 2012 U.S. Dist. LEXIS 70833 (S.D.N.Y. 2012)
(Likelihood of Confusion ) (Dilution)
Gucci America, Inc. v. Guess?, Inc., 843 F. Supp. 2d 412 (S.D.N.Y. 2012) (Likelihood of
Confusion)
Gucci America, Inc. v. Guess?, Inc., 2011 U.S. Dist. LEXIS 145180 (S.D.N.Y. 2011)
(Likelihood of Confusion)
298
Likelihood of Confusion
Gucci America, Inc. v. Guess?, Inc., 831 F. Supp. 2d 723 (S.D.N.Y. 2011) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., 64 U.S.P.Q.2d 1039
(S.D.N.Y. 2002) (Likelihood of Confusion)
Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212 (S.D.N.Y. 1999)
(Likelihood of Confusion)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008)
(Secondary Meaning) (Likelihood of Confusion)
J.T. Colby & Company, Inc. v. Apple Inc., 2013 U.S. Dist. LEXIS 65959 (S.D.N.Y 2013)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 64393 (S.D.N.Y. 2006)
(Likelihood of Confusion)
Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787 (S.D.N.Y. 2006)
(Likelihood of Confusion)
Kargo Global, Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Kind LLC v. Clif Bar & Co., 2014 U.S. Dist. LEXIS 81097 (S.D.N.Y. 2014) (Likelihood
of Confusion)
La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. LEXIS 12676 (S.D.N.Y. 2000) (Likelihood of
Confusion)
Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360 (S.D.N.Y. 2000)
(Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2006 U.S. Dist.
LEXIS 32844 (S.D.N.Y. 2006) (Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir.
2005) (Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2004 U.S. Dist. LEXIS
9387 (S.D.N.Y. 2004) (Likelihood of Confusion)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
299
Likelihood of Confusion
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y.
2004) ( Likelihood of Confusion) (Dilution)
Louis Vuitton Malletier v. Hyundai Motor America, 2012 U.S. Dist. LEXIS 42795
(S.D.N.Y. 2012) (Likelihood of Confusion) (Dilution)
Lurzer GMBH v. American Showcase, Inc., 73 F. Supp. 2d 327 (S.D.N.Y. 1998) (Likelihood of
Confusion)
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood
of Confusion) (False Advertising)
MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485
(S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302 (W.D.N.Y. 2002)
(Likelihood of Confusion)
Mattel, Inc., v. Robarb’s, Inc., 2001 U.S. Dist. LEXIS 11742 (S.D.N.Y. 2001) (Likelihood of
Confusion)
Mattel, Inc. v. Robarb’s, Inc., 139 F. Supp. 2d 487 (S.D.N.Y. 2001) (Likelihood of Confusion)
Medical Economics Co., Inc. and ME Licensing Corp. v. Prescribing Reference, Inc., 294 F.
Supp. 2d 456 (S.D.N.Y. 2003) (Likelihood of Confusion)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 169042 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 56800 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 861 F. Supp. 2d 158 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Daubert/Admissibility Issues
Metlife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223 (S.D.N.Y 2005) (Likelihood of
Confusion)
Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690 (S.D.N.Y. 1999) (Likelihood of Confusion)
National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474
(S.D.N.Y. 2002) (Likelihood of Confusion)
NE Opco, Inc. v. American Pad & Paper Co., 2011 U.S. Dist. LEXIS 45231 (S.D.N.Y.
2011) (Likelihood of Confusion)
300
Likelihood of Confusion
New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195 (D. Conn. 2004)
(Likelihood of Confusion)
New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479
(S.D.N.Y. 1999) (Likelihood of Confusion)
On Site Energy Co. v. MTU Onsite Energy Corp., 2012 U.S. Dist. LEXIS 100690 (E.D.N.Y.
2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Paco Sport, Ltd. v. Paco Rabanne Perfumes. 234 F.3d 1262 (Table): 2000 US App LEXIS
29570 (2d Cir. 2000), designated “Unpublished Opinion.” (Likelihood of Confusion)
Paco Sport, Ltd. v. Paco Rabanne Perfumes, 86 F. Supp. 2d 305 (S.D.N.Y. 2000) (Likelihood of
Confusion)
People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010)
(Secondary Meaning) (Likelihood of Confusion)
Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250 (S.D.N.Y.
2006) (Likelihood of Confusion)
Pilot Corp. of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007)
(Likelihood of Confusion)
Pilot Corp. of America v. Fisher-Price, Inc., 344 F. Supp. 2d 349 (D. Conn. 2004) (Likelihood of
Confusion)
PRL USA Holdings, Inc. v. United States Polo Ass’n, Inc., 2006 U.S. Dist. LEXIS 46065
(S.D.N.Y. 2006) (Likelihood of Confusion)
Romag Fasteners, Inc. v. Fossil, Inc., 979 F. Supp. 2d 264 (D. Conn. 2013) (Likelihood
of Confusion)
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood
of Confusion)
Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (Likelihood of
Confusion)
Star Industries, Inc. v. Bacardi & Co. Ltd., 2003 U.S. Dist. LEXIS 23411 (S.D.N.Y. 2003)
(Likelihood of Confusion)
301
Likelihood of Confusion
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005)
(Likelihood of Confusion) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2004 U.S. Dist. LEXIS 19239 (S.D.N.Y. 2004)
(Likelihood of Confusion)
Starter Corp. v. Converse Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
The Swatch Group (U.S.) Inc. v. Movado Corp., 2003 U.S. Dist. LEXIS 6015 (S.D.N.Y. 2003)
(Likelihood of Confusion)
THOIP v. Walt Disney Co., 788 F. Supp. 2d 168 (S.D.N.Y. 2011) (Likelihood of
Confusion)
THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
THOIP v. Walt Disney Co., 2010 U.S. Dist. LEXIS 82726 (S.D.N.Y. 2010) (Likelihood
of Confusion)
Tiffany v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (Likelihood of Confusion)
Tiffany v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) (Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning)
(Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning)
(Likelihood of Confusion)
Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y. 2011)
(Likelihood of Confusion)
Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458
(S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y.
2005) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634
(E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion)
302
Likelihood of Confusion
WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379 (2d Cir. 2004)
(Likelihood of Confusion)
WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary
Meaning) (Likelihood of Confusion)
Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (Likelihood of
Confusion)
Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62 (E.D.N.Y. 1999) (Likelihood
of Confusion)
Third Circuit
A&H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 167 F. Supp. 2d 770 (E.D. Pa. 2001)
(Likelihood of Confusion)
A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 57 F. Supp. 2d 155 (E.D. Pa. 1999)
(Likelihood of Confusion)
A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d 197 (3d Cir. 1999)
(Likelihood of Confusion)
The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775 (D. N.J. 1998) (Likelihood of Confusion)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS
18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS
25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Addmissibility Issues)
CNB Financial Corp. v. CNB Community Bank, 2004 U.S. Dist. LEXIS 21483 (E.D. Pa. 2004)
(Likelihood of Confusion)
Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066 (W.D. Pa.
2008) (Likelihood of Confusion)
Fancaster, Inc. v. Comcast Corp., 832 F. Supp. 2d 380 (D. N.J. 2011) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Interstate Bank v. NetBank, Inc., 348 F. Supp. 2d 340 (D. N.J. 2004) (Likelihood of Confusion)
Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS 130762 (D. Del. 2012)
(Likelihood of Confusion)
303
Likelihood of Confusion
Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238 (D. Del. 1998)
(Likelihood of Confusion)
M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563 (D. N.J. 2005) (Likelihood
of Confusion)
The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S.
Dist. LEXIS 5925 (E.D. Pa. 2002) (Likelihood of Confusion)
Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of
Confusion) (Dilution)
The Steak Umm Co. v. Steak ‘Em Up, Inc., 868 F. Supp. 2d 415 (E.D. Pa. 2012)
(Likelihood of Confusion)
The Steak Umm Co. v. Steak ‘Em Up, Inc., 2011 U.S. Dist. LEXIS 94088 (E.D. Pa. 2011)
(Likelihood of Confusion)
Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS 29377
(E.D. Pa. 2007) (Likelihood of Confusion)
Fourth Circuit
Ale House Mgmt. V. Raleigh Ale House, 2006 U.S. Dist. LEXIS 98819 (E.D. N.C. 2006)
Belk, Inc. v. Meyer Corp., 679 F.3d 146 (4th Cir. 2012) (Secondary Meaning) (Likelihood
of Confusion)
CareFirst of Maryland, Inc. v. First Care, P.C., 422 F. Supp. 2d 592 (E.D. Va. 2006)
(Likelihood of Confusion)
CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006)
(Likelihood of Confusion) (Dilution)
CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714 (E.D. Va. 2004)
(Likelihood of Confusion)
Community First Bank v. Community Banks, 360 F. Supp. 2d 716 (D. Md. 2005) (Likelihood of
Confusion)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 868 F. Supp. 2d 468 (D. Md. 2012)
(Likelihood of Confusion)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2011 U.S. Dist. LEXIS 24566 (D. Md.
2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
304
Likelihood of Confusion
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Georgia Pacific Consumer Products, LP v. Von Drehle Corp., 618 F.3d 441 (4th Cir.
2010) (Likelihood of Confusion)
Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646 (D. Md. 2002) (Likelihood of
Confusion)
Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (E.D. Va. 2005)
(Likelihood of Confusion)
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Likelihood
of Confusion) (Fame)
High Voltage Beverages, LLC v. The Coca-Cola Co., 2009 U.S. Dist. LEXIS 122019
(W.D. N.C. 2009) (Likelihood of Confusion)
IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815 (E.D. Va. 1998) (Likelihood
of Confusion)
The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785 (D. Md.
2001) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C.
2007) (Likelihood of Confusion)
Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., 52 U.S.P.Q.2d 1557 (E.D. Va. 1999)
(Likelihood of Confusion)
Pure Fishing, Inc. v. Redwing Tackle, Ltd., 2012 U.S. Dist LEXIS 115390 (D. S.C. 2012)
(Likelihood of Confusion)
The Radiance Foundation, Inc. v. National Association For The Advancement Of Colored
People, 2013 U.S. Dist. LEXIS 188098 (E.D. Va. 2013) (Daubert/Admissibility Issues)
(Likelihood of Confusion) (Dilution)
Resorts of Pinehurst Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417 (4th Cir. 1998) (Likelihood of
Confusion)
Rosetta Stone Ltd. v. Google Inc., 676 F.3d 144 (4th Cir. 2012) (Likelihood of Confusion)
Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010) (Likelihood of
Confusion)
305
Likelihood of Confusion
Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567 (E.D. Va. 2000)
(Likelihood of Confusion)
X-IT Products, L.L.C. v. Walter Kidde Portable Equipment, Inc., 155 F. Supp. 2d 577 (E.D. Va.
2001) (Likelihood of Confusion)
Fifth Circuit
Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of
Confusion) (Dilution)
Bd. of Supervisors for Louisiana State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th
Cir. 2008) (Likelihood of Confusion)
Bd. of Supervisors of the Louisiana State Univ. v. Smack Apparel Co., 438 F. Supp. 2d
653 (E.D. La. 2006) (Likelihood of Confusion)
Brennan’s, Inc. v. Dickie Brennan and Co., Inc., 2002 U.S. Dist. LEXIS 28235 (E.D. La.
2002) (Likelihood of Confusion)
Citizens Nat’l Bank of Meridian v. The Citizens Bank of Philadelphia, 157 F. Supp. 2d 713 (S.D.
Miss. 2001) (Likelihood of Confusion)
Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc., 616 F. Supp. 2d
622 (N.D. Tex. 2009) (Likelihood of Confusion)
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999) (Likelihood of Confusion)
Ironclad, L.P. v. Poly-America, Inc., 2000 U.S. Dist. LEXIS 10728 (N.D. Tex. 2000)
(Likelihood of Confusion)
Ironclad, L.P. v. Poly-America, Inc., 1999 U.S. Dist. LEXIS 16265 (N.D. Tex. 1999)
(Likelihood of Confusion)
KIS, S.A. v. Foto Fantasy, Inc., 240 F. Supp. 2d 608 (N.D. Tex. 2002) (Likelihood of Confusion)
Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) (Likelihood of
Confusion)
Oreck Holdings, L.L.C. v. Euro-Pro Corp., 2007 U.S. Dist. LEXIS 5830 (E.D. La. 2007)
(Likelihood of Confusion)
306
Likelihood of Confusion
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning)
(Likelihood of Confusion)
RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 3528 (N.D. Tex. 2003)
(Likelihood of Confusion)
RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 1569 (N.D. Tex. 2003)
(Likelihood of Confusion)
Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356 (S.D. Tex.
2009) (Likelihood of Confusion)
Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884 (S.D. Tex. 2011)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949
(S.D. Tex. 2001) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 2001 U.S. Dist. LEXIS 17468
(S.D. Tex. 2001) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 214 F.3d 658 (5th Cir. 2000)
(Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 103 F. Supp. 2d 935 (S.D. Tex.
1999) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 1998 U.S. Dist. LEXIS 11737
(S.D. Tex. 1998) (Likelihood of Confusion)
Sixth Circuit
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366
(6th Cir. (Secondary Meaning) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800
(E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D.
Mich. 2008) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325
(E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
307
Likelihood of Confusion
Edward W. Tovey v. Nike, Inc. 2014 U.S. Dist. LEXIS 93905 (N.D. Ohio 2014)
(Likelihood of Confusion) (Daubert/Admissibility issues)
ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (Likelihood of Confusion)
General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary
Meaning) (Likelihood of Confusion)
Georgia-Pacific Consumer Prods. LP v. Four-U-Packaging, Inc., 2012 U.S. App. LEXIS
25466 (6th Cir. 2012) (Likelihood of Confusion)
Georgia-Pacific Consumer Prods. LP v. Four-U-Packaging, Inc., 821 F. Supp. 2d 948
(N.D. Ohio 2011) (Likelihood of Confusion)
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Innovation Ventures, LLC v. N2G Distributing, Inc., 2011 U.S. Dist. LEXIS 137115
(E.D. Mich. 2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723 (6th Cir. 2012) (Likelihood of
Confusion)
Innovation Ventures, LLC v. N.V.E., Inc., 2010 U.S. Dist. LEXIS 96004 (E.D. Mich.
2010) (Likelihood of Confusion)
K’arsan Corp. v. Christian Dior Perfumes, Inc., 166 F.3d 1214 (6th Cir. 1998) (Likelihood of
Confusion)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007)
(Likelihood of Confusion)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich.
2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671 (W.D.
Ky. 2010) (Likelihood of Confusion)
Papa Ads, LLC v. Gatehouse Media, Inc., 2011 U.S. Dist. LEXIS 155496 (N.D. Ohio
2011) (Likelihood of Confusion)
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D.
Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
308
Likelihood of Confusion
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523 (E.D. Mich. 2006) (Likelihood
of Confusion)
The Procter & Gamble Co. v. Georgia-Pacific Consumer Products LP, 2009 U.S. Dist. LEXIS
72052 (S.D. Ohio 2009) (Likelihood of Confusion)
Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D.
Ohio 1999) (Secondary Meaning) (Likelihood of Confusion)
Safe Auto Ins. Co. v. State Automobile Mutual Inc. Co., 2009 U.S. Dist. LEXIS 94859
(S.D. Ohio 2009) (Likelihood of Confusion)
Schneider Saddlery Co., Inc. v. Best Shot Pet Products Int’l, LLC, 2009 U.S. Dist. LEXIS
27227 (N.D. Ohio 2009) (Likelihood of Confusion)
Volkswagen AG v. Dorling Kindersley Publishing, Inc., 614 F. Supp. 2d 793 (E.D. Mich.
2009) (Likelihood of Confusion)
Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Seventh Circuit
AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir
2002) (Secondary Meaning) (Likelihood of Confusion)
Blue Cross and Blue Shield Ass’n v. American Exp. Co., 1999 U.S. Dist. LEXIS 17994 (N.D. Ill.
1999) (Likelihood of Confusion)
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 805 F. Supp. 2d 503 (N.D. Ill. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705 (N.D. Ill. 1998) (Likelihood of
Confusion)
Chattanoga Mfg., Inc. v. Nike, Inc., 140 F. Supp. 2d 917 (N.D. Ill. 2001) (Likelihood of
Confusion)
Dwyer Instruments, Inc. v. Sensocon, Inc., 2012 U.S. Dist. LEXIS 21308 (N.D. Ind.
2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Eco Mfg. LLC v. Honeywell Int’l, Inc., 2003 U.S. Dist. LEXIS 11384 (S.D. Ind. 2003)
(Likelihood of Confusion)
309
Likelihood of Confusion
Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321 (N.D. Ill. 1999)
(Likelihood of Confusion)
Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062 (7th Cir. 2004) (Likelihood of
Confusion)
Frank M. Sullivan, III v. CBS Corp., 2002 U.S. Dist. LEXIS 6625 (N.D. Ill. 2002) (Likelihood of
Confusion)
Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007)
(Likelihood of Confusion)
Hearthware, Inc. v. E. Mishan & Sons, Inc., 2012 U.S. Dist. LEXIS 113932 (N.D. Ill.
2012) (Likelihood of Confusion) (False Advertising)
Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 U.S. Dist. LEXIS 6664 (N.D.
Ind. 2007) (Likelihood of Confusion)
Miche Bag, LLC v. The Marshall Group, 2010 U.S. Dist. LEXIS 59900 (N.D. Ind. 2010)
(Likelihood of Confusion)
Morningware, Inc. v. Hearthware Home Products, Inc., 2012 U.S. Dist. LEXIS 121333
(N.D. Ill. 2012) (Likelihood of Confusion) (False Advertising)
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/
Admissibility Issues)
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/
Admissibility Issues)
Native American Arts v. Earthdweller, Ltd. and The Waldron Corp., 2002 U.S. Dist. LEXIS
9750 (N.D. Ill. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Navistar Int’l Transportation Corp. v. Freightliner Corp., 52 U.S.P.Q.2d 1074 (N.D. Ill. 1998)
(Likelihood of Confusion)
Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind.
2004) (Likelihood of Confusion) (Patent)
Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill.
1998) (Secondary Meaning) (Likelihood of Confusion)
310
Likelihood of Confusion
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002) (Likelihood of
Confusion)
Simon Property Group, L.P. v. mySimon, Inc., 2001 U.S. Dist. LEXIS 852 (S.D. Ind. 2001)
(Likelihood of Confusion)
Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033 (S.D. Ind. 2000) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Sunstar, Inc. v. Alberto-Culver Co., Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007)
(Likelihood of Confusion)
V & S Vin & Sprit Aktiebolag v. Cracovia Brands, Inc., 2004 U.S. Dist. LEXIS 17 (N.D. Ill.
2004) (Likelihood of Confusion)
Eighth Circuit
3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 81094 (D. Minn. 2010) (Likelihood
of Confusion)
3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 124672 (D. Minn. 2010) (Likelihood
of Confusion)
Am. Ass’n for Justice v. The Am. Trial Lawyers Ass’n, 698 F. Supp. 2d 1129 (D. Minn.
2010) (Likelihood of Confusion)
Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258 (E.D. Mo.
2008) (Likelihood of Confusion)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D.
Minn. 2008) (Likelihood of Confusion)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D.
Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 81329 (D.
Minn. 2010) (Likelihood of Confusion)
Everest Capital Ltd., v. Everest Funds Mgmt., 393 F.3d 755 (8th Cir. 2005) (Likelihood of
Confusion)
311
Likelihood of Confusion
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 679 F.3d 763 (8th Cir.
2012) (Likelihood of Confusion)
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist.
LEXIS 82980 (D. S.D. 2009) (Likelihood of Confusion)
Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000)
(Secondary Meaning) (Likelihood of Confusion) (Dilution)
Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005)
(Secondary Meaning) (Likelihood of Confusion)
Frosty Treats, Inc. v. Sony Computer Entm’t, 2004 U.S. Dist. LEXIS 31526 (W.D. Mo. 2004)
(Likelihood of Confusion)
Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503; 2004 (8th Cir. 2004) (Likelihood of
Confusion)
Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461 (D. S.D. 2003)
(Likelihood of Confusion)
Gateway, Inc. v. Companion Products, Inc., 320 F. Supp. 2d 912 (D. S.D. 2002) (Likelihood of
Confusion)
Georgia –Pacific Consumer Products, LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir.
2010) (Likelihood of Confusion)
Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS
63774 (W.D. Ark. 2009) (Likelihood of Confusion)
Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS
54401 (W.D. Ark. 2009) (Likelihood of Confusion)
Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919 (D. Minn. 1998) (Likelihood of
Confusion)
Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Louis E. Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049 (8th Cir. 2005) (Likelihood of
Confusion)
Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316 (D. Minn. 2002)
(Likelihood of Confusion)
Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827 (8th Cir. 1999) (Likelihood of Confusion)
312
Likelihood of Confusion
Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, 2002 U.S. Dist. LEXIS 13991
(D. Minn. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn.
2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Ninth Circuit
3M Co. v. Pradeep Mohan, 2012 U.S. App. LEXIS 10753 (Fed. Cir. 2012) (Likelihood of
Confusion)
3M Co. v. Rollit, LLC, 2008 U.S. Dist. LEXIS 123592 (N.D. Cal. 2008) (Likelihood of
Confusion)
adidas America, Inc. v. Kmart Corp., 2006 U.S. Dist. LEXIS 49766 (D. Or. 2006)
(Likelihood of Confusion)
adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or.
2008) (Likelihood of Confusion)
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
adidas-Salomon AG and adidas America, Inc. v. Target Corp., 2003 U.S. Dist. LEXIS 28068 (D.
Or. 2003) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp.; 2002 U.S. Dist. LEXIS 25141 (D.
Or. 2002) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp.; 2002 U.S. Dist. LEXIS 19592 (D.
Or. 2002) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp.;2002 U.S. Dist. LEXIS 2262 (D.
Or. 2002) (Likelihood of Confusion)
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution) (Daubert/Admissibility
Issues)
Bobrick Washroom Equipment, Inc. v. American Specialties, Inc., 2012 U.S. Dist. LEXIS
111465 (C.D. Cal. 2012) (Likelihood of Confusion)
Brighton Collectibles, Inc. vs. RK Texas Leather Mfg., 923 F. Supp. 2d 1245
(S.D. Ca. 2013) (Likelihood of Confusion)
313
Likelihood of Confusion
Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212 (C.D. Cal. 2000) (Likelihood of Confusion)
Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998) (Likelihood of Confusion)
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2006 U.S. Dist. LEXIS 97200 (C.D. Cal.
2006) (Likelihood of Confusion)
ConsumerInfo.com, Inc. v. Money Mgmt. Int’l, Inc., 2008 U.S. Dist. LEXIS 79303 (C.D.
Cal. 2008) (Likelihood of Confusion)
CSC Brands LP v. Herdez Corp., 191 F. Supp. 2d 1145 (E.D. Cal. 2001) (Likelihood of
Confusion)
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 2012 U.S. Dist. LEXIS 126976 (E.D. Cal.
2012) (Likelihood of Confusion) (False Advertising)
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009)
(Likelihood of Confusion)
Don Henley v. Charles S. Devore, 2010 U.S. Dist. LEXIS 67987 (C.D. Cal. 2010)
(Likelihood of Confusion)
Duncan McIntosh Co. Inc. v. Newport Dunes Marina LLC, 324 F. Supp. 2d 1078 (C.D. Cal.
2004) (Likelihood of Confusion)
E & J Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10669 (E.D. Cal. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
E & J Gallo v. Proximo Spirits, Inc., 2011 U.S. Dist. LEXIS 136053 (E.D. Cal. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006)
(Likelihood of Confusion)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz.
2007) (Secondary Meaning) (Likelihood of Confusion)
Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297 (D. Or. 2004)
(Likelihood of Confusion)
Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 9074 (D. Or. 2004)
(Likelihood of Confusion)
Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148 (D. Nev.
2010) (Likelihood of Confusion)
314
Likelihood of Confusion
Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155
(C.D. Cal. 2010) (Likelihood of Confusion)
Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Fuel Clothing Co., Inc. v. Safari Shirt Co., 2006 U.S. Dist. LEXIS 92052 (D. Or. 2006)
(Likelihood of Confusion)
Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Google, Inc. v. American Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450
(N.D. Cal. 2007) (Likelihood of Confusion) Not for Citation.
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, (9th Cir. 2000) (Likelihood of Confusion)
Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058 (C.D. Cal. 2009)
(Likelihood of Confusion)
Harry J. Binder v. Disability Group, Inc., 772 F. Supp. 2d 1172 (C.D. Cal. 2011)
(Likelihood of Confusion)
Hispanic Broadcasting Corp. v. Educational Media Foundation, 2003 U.S. Dist. LEXIS 24804
(C.D. Cal. 2003) (Likelihood of Confusion)
Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080
(C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Instant Media, Inc. v. Microsoft Corp., 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007)
(Likelihood of Confusion)
Internet Specialties West, Inc. v. ISPWest, 2006 U.S. Dist. LEXIS 96361 (C.D. Cal.
2006) (Likelihood of Confusion)
James “Jim” Brown v. Electronic Arts, Inc.,724 F.3d 1235 (9th Cir. 2013) (Likelihood of
Confusion)
Joel D. Wallach v. Longevity Network, Ltd., 2006 U.S. Dist. LEXIS 97114 (C.D. Cal.
2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006)
(Secondary Meaning) (Likelihood of Confusion)
315
Likelihood of Confusion
Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (Likelihood
of Confusion)
Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116624 (D.
Nev. 2009) (Likelihood of Confusion)
Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116622 (D.
Nev. 2009) (Likelihood of Confusion)
Kim Seng Co. v. J&A Importers, Inc., 810 F. Supp. 2d 1046 (C.D. Cal. 2011) (Likelihood
of Confusion)
Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923
(N.D. Cal. 2009) (Likelihood of Confusion) (Fame)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625
(N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution)
M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917 MMM (VBKx)
(C.D. Cal. 2005) (Likelihood of Confusion)
Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (C.D. Cal. 1998) (Likelihood of
Confusion)
Metro-Goldwyn-Mayer Pictures, Inc. v. Mark Brown, 2004 U.S. Dist. LEXIS 29562 (C.D. Cal.
2004) (Likelihood of Confusion)
The Nautilus Group, Inc. v. Savvier, Inc., 427 F. Supp. 2d 990 (W.D. Wash. 2006)
(Likelihood of Confusion)
Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D.
Or. 2006) (Likelihood of Confusion) (Dilution)
Nissan Motor Co., v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (C.D. Cal. 2000) (Likelihood
of Confusion)
316
Likelihood of Confusion
Oracle Corp. v. Light Reading, Inc., 233 F. Supp. 2d 1228 (N.D. Cal. 2002) (Likelihood of
Confusion)
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of
Confusion) (Dilution)
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237 (N.D. Cal. 2010) (Likelihood of
Confusion)
R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Rain Bird Corp. v. Hit Products Corp., 2004 U.S. Dist LEXIS 20790 (C.D. Cal. 2004)
(Likelihood of Confusion)
Red Bull GmbH v. Matador Concepts, Inc., 2006 U.S. Dist. LEXIS 96764 (C.D. Cal.
2006) (Likelihood of Confusion)
Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Sharper Image Corp. v. Target Corp., 425 F. Supp. 2d 1056 (N.D. Cal. 2006)
(Likelihood of Confusion)
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007)
(Likelihood of Confusion)
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood
of Confusion) (Dilution)
Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005) (Likelihood of
Confusion)
Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) (Likelihood of Confusion)
Thane Int’l Inc. v. Trek Bicycle Corp., 53 U.S.P.Q.2d 1523 (C.D. Cal. 1999) (Likelihood of
Confusion)
Tokidoki, LLC v. Fortune Dynamic, Inc., 2011 U.S. App. LEXIS 16292 (9th Cir. 2011)
(Likelihood of Confusion)
Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665 (C.D. Cal. 2009)
(Likelihood of Confusion)
317
Likelihood of Confusion
Trovan, Ltd. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7522 (C.D. Cal. 2000) (Likelihood of
Confusion)
Warner Bros. Entm’t v. The Global Asylum, Inc., 2012 U.S. Dist. LEXIS 185695 (C.D.
Cal. 2012) (Secondary Meaning) (Likelihood of Confusion)
YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195 (C.D. Cal. 2002) (Likelihood of
Confusion)
Tenth Circuit
1-800 Contacts, Inc. v. Lens.Com, Inc., 722 F.3d 1229 (10th Cir. 2013) (Likelihood of
Confusion)
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389 (D. Utah 2010)
(Secondary Meaning) (Likelihood of Confusion)
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 2005 U.S. Dist. LEXIS 31059 (D. Kan.
2005) (Likelihood of Confusion)
Big O Tires, Inc. v. Bigfoot 4X4, Inc. and Vulcan Chain and Webbing Products, Inc., 167 F.
Supp. 2d 1216 (D. Colo. 2001) (Likelihood of Confusion)
General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah
2010) (Secondary Meaning) (Likelihood of Confusion)
Healthone of Denver, Inc. v. UnitedHealth Group Inc., 872 S. Supp. 2d 1154 (D. Col.
2012) (Likelihood of Confusion)
Healthone of Denver, Inc. v. UnitedHealth Group Inc., 2012 U.S. Dist. LEXIS 4506 (D.
Colo. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hornady Manufacturing Company, Inc. v. Doubletap, Inc. 746 F.3d 995 (10th Cir. 2014)
(Likelihood of Confusion)
Medi-Flex, Inc. v. NicePak Products, Inc., 422 F. Supp. 2d 1242 (D. Kan. 2006)
(Likelihood of Confusion)
Nestle Prepared Foods Co. v. Pocket Foods Corp., 2006 U.S. Dist. LEXIS 76213 (D.
Colo. 2006) (Likelihood of Confusion)
318
Likelihood of Confusion
Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp. 2d 809 (D. Kan. 1998)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir 2002)
(Likelihood of Confusion)
Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554 (D. Ut.
2009) (Likelihood of Confusion)
Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136 (10th Cir. 2013) (Likelihood of
Confusion)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 81592 (D. Colo. 2012
(Likelihood of Confusion)
Water Pik, Inc. v. Med-Systems, Inc., 848 F. Supp. 2d 1262 (D. Colo. 2012) (Likelihood
of Confusion)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 7738 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 1374 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Eleventh Circuit
Alltel Corp. v. Actel Integrated Communications Inc., 42 F. Supp. 2d 1265 (S.D. Ala. 1999)
(Likelihood of Confusion)
The Bd. of Regents of the Univ. System of Georgia d/b/a The Georgia Institute of Technology v.
Buzas Baseball, Inc., d/b/a The Salt Lake Buzz, 176 F. Supp. 2d 1338 (N.D. Ga. 2001)
(Likelihood of Confusion)
Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999)
(Likelihood of Confusion) (Fame/Dilution)
Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS
66061 (N.D. Ga. 2010) (Likelihood of Confusion)
319
Likelihood of Confusion
Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS
82638 (N.D. Ga. 2010) (Likelihood of Confusion)
Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (N.D. Ga.
2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
MPS Entertainment, LLC v. Abercrombie & Fitch Stores, Inc. 2013 U.S. Dist. LEXIS
91193, (S.D. Fla. 2013) (Daubert/Admissibility Issues)
Native Amer. Arts, Inc. v. Bud K World Wide, Inc., 2012 U.S. Dist. LEXIS 69715 (M.D.
Ga. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347 (S.D. Fla. 1998)
(Likelihood of Confusion)
Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 683 F.3d 1266 (11th Cir. 2012)
(Likelihood of Confusion)
Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238
(N.D. Ala. 2009) (Likelihood of Confusion)
Federal Circuit
3M Co. v. Pradeep Mohan, 2012 U.S. App. LEXIS 10753 (Fed. Cir. 2012) (Likelihood of
Confusion)
Bridgestone v. Federal Corp., 673 F.3d 1330 (Fed. Cir. 2012) (Likelihood of Confusion)
Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073
(Fed. Cir. 1998) (Likelihood of Confusion)
Leonard Studio Equipment, Inc. v Desmar Corp., 173 F.3d 435 (Table): 1998 WL 712452
(CAFC), designated “Unpublished Disposition” (Fed. Cir. 1998) (Likelihood of Confusion)
T.T.A.B.
7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of
Confusion)
America Online v. Prabhu Mohapatra, 2004 T.T.A.B. LEXIS 455 (T.T.A.B. 2004) (Likelihood
of Confusion)
Ava Enterprises, Inc. v. Audio Boss USA, Inc., 2006 T.T.A.B. LEXIS 17 (T.T.A.B. 2006)
(Likelihood of Confusion)
320
Likelihood of Confusion
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
T.T.A.B.) (Secondary Meaning) (Likelihood of Confusion)
The Black Dog Tavern Co., Inc. v. Elizabeth A. Frechette, 2006 T.T.A.B. LEXIS 835
(T.T.A.B. 2006) (Likelihood of Confusion)
In re Borysiewicz, 2004 T.T.A.B. LEXIS 622 (T.T.A.B. 2004) (Likelihood of Confusion)
Bridgestone Firestone No. Amer. Tire, LLC v. Federal Corp., 2010 T.T.A.B. LEXIS 294
(T.T.A.B. 2010) (Likelihood of Confusion)
Bridgestone/Firestone No. Amer. Tire, LLC v. Silverstone Berhad, 2003 T.T.A.B. LEXIS 142
(T.T.A.B. 2003) (Likelihood of Confusion)
Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning)
(Likelihood of Confusion)
Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation
No. 92046246 (T.T.A.B. 2010) (Likelihood of Confusion)
Clear Choice Holdings LLC v. Implant Direct Int'l. 2013 T.T.A.B. LEXIS 477 (T.T.A.B.
2013) (Likelihood of Confusion)
Clinique Labs. v. Absolute Dental, 2011 T.T.A.B. LEXIS 161 (T.T.A.B. 2011)
(Likelihood of Confusion) (Fame)
Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS 144
(T.T.A.B. 2002) (Likelihood of Confusion)
Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of
Confusion) (Fame/Dilution)
E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740
(T.T.A.B. 2001) (Likelihood of Confusion)
Facebook, Inc. v. Think Computer Corp. 2013 T.T.A.B. LEXIS 436 (T.T.A.B. 2013)
(Likelihood of Confusion) (Fame)
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
(Likelihood of Confusion) (Fame)
The Guardian Life Ins. Co. of America v. David P. England, 2002 T.T.A.B. LEXIS 625
(T.T.A.B. 2002) (Likelihood of Confusion)
321
Likelihood of Confusion
Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 829 (T.T.A.B.
2001) (Likelihood of Confusion)
Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 629 (T.T.A.B.
2001) (Likelihood of Confusion)
iMedica Corp. v. Medica Health Plans, 2007 T.T.A.B. LEXIS 140 (T.T.A.B. 2007)
(Likelihood of Confusion)
Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51 (T.T.A.B.
2004) (Likelihood of Confusion)
King Bio Pharmaceuticals, Inc. v. King Pharmaceuticals, Inc., 2002 T.T.A.B. LEXIS 280
(T.T.A.B. 2002) (Likelihood of Confusion)
Kohler Co. v. Kohler Homes, 2008 T.T.A.B. LEXIS 551 (T.T.A.B. 2008) (Likelihood of
Confusion)
Li & Fung Ltd. v. Lelania Cher Farrenkopf, 2011 T.T.A.B. LEXIS 398 (T.T.A.B. 2011)
(Likelihood of Confusion)
Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171 (T.T.A.B. 2004)
(Likelihood of Confusion)
Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS
678 (T.T.A.B. 2008) (Likelihood of Confusion)
Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524 (T.T.A.B. 2005) (Likelihood of
Confusion)
OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274
(T.T.A.B. 2006) (Likelihood of Confusion)
In re Oversee.net, 2011 T.T.A.B. LEXIS 114 (T.T.A.B. 2011) (Likelihood of Confusion)
Pepsico, Inc. v. Jay Pirincci, 2012 T.T.A.B. LEXIS 261 (T.T.A.B. 2012) (Likelihood of
Confusion)
Physicians Health Plan, Inc. v. Michigan HMO Plans, Inc., 1999 T.T.A.B. LEXIS 800
(T.T.A.B. 1000) (Likelihood of Confusion)
Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 2005 T.T.A.B. LEXIS
184 (T.T.A.B. 2005) (Likelihood of Confusion)
Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672 (T.T.A.B. 2008)
(Likelihood of Confusion)
322
Likelihood of Confusion
Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc., 2012 T.T.A.B. LEXIS 226
(T.T.A.B. 2012) (Likelihood of Confusion)
Sara Lee Corp. v. Amine Mahmoud, 2007 T.T.A.B. LEXIS 147 (T.T.A.B. 2007)
(Likelihood of Confusion)
Sara Lee Corp.v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204 (T.T.A.B. 2001)
(Likelihood of Confusion)
Sara Lee Corp. v. Kayser-Roth Corp., 2004 T.T.A.B. LEXIS 146 (T.T.A.B. 2004) (Likelihood of
Confusion)
Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54 (T.T.A.B.
2006) (Likelihood of Confusion)
Team Air Express, Inc. v. Alliance Shippers, Inc., 2007 T.T.A.B. LEXIS 110 (T.T.A.B.
2007) (Likelihood of Confusion)
The Univ. of Iowa v. The Univ. of S. Miss., 2011 T.T.A.B. LEXIS 224 (T.T.A.B. 2011)
(Likelihood of Confusion)
U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620
(T.T.A.B. 2002) (Likelihood of Confusion)
323
Likelihood of Confusion
False Advertising Surveys
First Circuit
Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000)
(False Advertising)
Second Circuit
Auscape Int’l v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004) (False
Advertising)
Braun Inc. v. Optiva Corp., 2000 U.S. Dist. LEXIS 2195 (S.D.N.Y. 2000) (False Advertising)
Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687 (D.
Conn.2010) (False Advertising)
Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000) (False Advertising)
Major League Baseball Properties Inc. v. Pacific Trading Cards Inc., 48 U.S.P.Q.2d 1944
(S.D.N.Y. 1998) (False Advertising)
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood
of Confusion) (False Advertising)
McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) (False Advertising)
Merck Eprova AG, v. Brookstone Pharmaceuticals, 920 F. Supp. 2d 404 (S.D.N.Y. 2013)
(False Advertising)
Milso Indus. Corp. v. Edward C. Nazzaro, 2012 U.S. Dist. LEXIS 123999 (D. Conn.
2012) (False Advertising)
Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F Supp 294 (S.D.N.Y. 1998) (False
Advertising)
Mobileye, Inc. v. Picitup Corp., 928 F. Supp. 2d 759, (2d Cir. 2013) (False Advertising)
Mylan Pharmaceuticals, Inc. v. Procter & Gamble Co., 443 F. Supp. 2d 453 (S.D.N.Y.
2006) (False Advertising)
Playtex Products, Inc. v. Procter & Gamble Co., 2003 U.S. Dist. LEXIS 8913 (S.D.N.Y. 2003)
(False Advertising)
Pom Wonderful LLC v. Organic Juice USA, Inc., 769 F. Supp. 2d 188 (S.D.N.Y. 2011)
(False Advertising) (Daubert/Admissibility Issues)
324
False Advertising
Procter & Gamble V. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False
Advertising) (Daubert/Admissibility Issues)
Procter & Gamble v. Ultreo, 574 F. Supp. 2d 339 (S.D.N.Y. 2008) (False Advertising)
Rexall Sundown, Inc. v. Perrigo Co., 51 F. Supp. 2d 9 (E.D.N.Y. 2009) (False
Advertising) (Daubert/Admissibility Issues)
Salon Fad v. L’Oreal USA, Inc., 2011 U.S. Dist. LEXIS 103936 (S.D.N.Y. 2011) (False
Advertising)
Santana Products, Inc. v. Sylvester & Assoc., Ltd., 2006 U.S. Dist. LEXIS 98045
(E.D.N.Y. 2006) (False Advertising)
Schering Corp. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7071 (S.D.N.Y. 2000) (False Advertising)
Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (False Advertising)
Schering Corp. v. Pfizer, Inc., 1999 U.S. Dist. LEXIS 2980 (S.D.N.Y. 1999) (False Advertising)
SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer
Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061 (S.D.N.Y. 2001) (False Advertising)
Warner-Lambert Co. v. Schering-Plough Corp., 1991 U.S. Dist. LEXIS 14620 (S.D.N.Y. 1991)
(False Advertising)
Zeneca Inc. v. Eli Lilly and Co., 1999 U.S. Dist. LEXIS 10852 (S.D.N.Y. 1999) (False
Advertising)
Third Circuit
Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del.
2006) (False Advertising) (Daubert/Admissibility Issues)
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009)
(False Advertising) (Daubert/Admissibility Issues)
Castrol, Inc. v. Pennzoil Quaker State Co., 169 F. Supp. 2d 332 (D. N.J. 2001) (False
Advertising)
Castrol, Inc. v. Pennzoil Quaker State Co., 2000 U.S. Dist. LEXIS 15336 (D. N.J. 2000) (False
Advertising)
Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695 (M.D. Pa. 2006)
(False Advertising)
325
False Advertising
Groupe Seb USA, Inc., v. Euro-Pro Operating LLC, 2014 U.S. Dist. LEXIS 75163 (W.D.
Pa. 2014) (False Advertising)
IDT Telecom, Inc. v. CVT Prepaid Solutions, LLC, 2009U.S. Dist. LEXIS 120355 (D.
N.J. 2009) (False Advertising)
The Joint Stock Society and The Russian American Spirits Co. v. UDV North America, Inc. and
Pierre Smirnoff Co., 266 F.3d 164 (3d Cir. 2001) (False Advertising)
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007)
(False Advertising) (Daubert/Admissibility Issues)
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780 (E.D. Pa. 2007)
(False Advertising)
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
290 F.3d 578 (3d Cir. 2002) (False Advertising)
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
129 F. Supp. 2d 351 (D. N.J. 2000) (False Advertising)
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241 (3rd Cir. 2011) (False
Advertising)
Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F. Supp. 2d 238 (D. Del. 2010)
(False Advertising)
Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594 (D. N.J.
2003) (False Advertising)
Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 266
(D. Del. 2010) (False Advertising)
Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 253
(D. Del. 2010) (False Advertising)
Fourth Circuit
JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926 (E.D. Va. 2001)
(False Advertising)
Millennium Laboratories, Inc. v. Ameritox, Ltd., 924 F. Supp. 2d 594 (Md. 2013)
(False Advertising) (Daubert/Admissibility Issues)
PBM Products,LLC v. Mead Johnson Nutrition Co., 639 F.3d 111 (4th Cir. 2011) (False
Advertising)
326
False Advertising
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D.
Va. 2010) (False Advertising) (Daubert/Admissibility Issues)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404 (E.D.
Va. 2010) (False Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18460 (E.D.
Va. 2010) (False Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 120200
(E.D. Va. 2009) (False Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 119755
(E.D. Va. 2009) (False Advertising)
Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d
715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues)
The Scotts Co. v. Pennington Seed, Inc., 2012 U.S. Dist. LEXIS 170573 (E.D. Va. 2012)
(False Advertising)
The Scotts Co. v. United Industries Corp., 315 F.3d 264 (4th Cir. 2002) (False Advertising)
Fifth Circuit
Eastman Chemical Company v Plastipure, Inc. 969 F. Supp. 2d 756 (W.D. Tex. 2013)
(False Advertising) (Daubert/Admissibility Issues)
Healthpoint, Ltd v. Ethex Corp., 2004 U.S. Dist. LEXIS 27500 (W.D. Tex. 2004) (False
Advertising)
Healthpoint, Ltd. v. Ethex Corp., 273 F. Supp. 2d 817 (W.D. Tex. 2001) (False Advertising)
Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470 (W.D. Tex.
2001) (False Advertising)
Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22229 (W.D. Tex.
2001) (False Advertising)
Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D.
Tex. 2006) (False Advertising) (Daubert/Admissibility Issues)
Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex.
2005) (False Advertising) (Dilution)
327
False Advertising
Landmark American Ins. Co. v. Rosie Ray, 2006 U.S. Dist. LEXIS 95517 (W.D. Tex.
2006) False Advertising)
Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (False Advertising)
Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp. 2d 600 (N.D. Tex. 2000) (False
Advertising) (Daubert/Admissibility Issues)
Scott O’Grady v. Twentieth Century Fox Film Corp., 2003 U.S. Dist LEXIS 24936 (E.D. Tex.
2003) (False Advertising)
Sixth Circuit
The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15129 (S.D. Ohio 2004) (False
Advertising)
The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15134 (S.D. Ohio 2004) (False
Advertising)
Rocky Brands, Inc. v. Red Wing Shoe Co., Inc., 2009 U.S. Dist. LEXIS 122929 (S.D.
Ohio 2009) (False Advertising)
Static Control Components, Inc. v. Lexmark Int’l, Inc., 2007 U.S. Dist. LEXIS 32489
(E.D. Ky. 2007) (False Advertising)
Seventh Circuit
Continental Datalabel, Inc. v. Avery Dennison Corp., 2012 U.S. Dist. LEXIS 160802
(E.D. Ill. 2012) (False Advertising)
Dyson, Inc. v. Bissell Homecare, Inc. 951 F. Supp. 2d 1009 (N.D. Ill. 2013) (False
Advertising) (Daubert/Admissibility Issues)
Hearthware, Inc. v. E. Mishan & Sons, Inc., 2012 U.S. Dist. LEXIS 113932 (N.D. Ill.
2012) (Likelihood of Confusion) (False Advertising)
Hot Wax Inc. v. Turtle Wax Inc., 27 F. Supp. 2d 1043 (N.D. Ill. 1998) (False Advertising)
Hot Wax, Inc. v. Warsaw Chemical Co., Inc., 45 F. Supp. 2d 635 (N.D. Ill. 1999) (False
Advertising)
LG Electronics v. Whirlpool Corp., 790 F. Supp. 2d 708 (N.D. Ill. 2011) (False
Advertising)
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 145127 (N.D. Ill.
2010) (False Advertising) (Daubert/Admissibility Issues)
328
False Advertising
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill.
2009) (False Advertising) (Daubert/Admissibility Issues)
Mead Johnson & Co. v. Abbott Laboratories, 209 F.3d 1032 (7th Cir. 2000) (False Advertising)
Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000) (False Advertising)
Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879 (S.D. Ind. 1999) (False
Advertising)
Morningware, Inc. v. Hearthware Home Products, Inc., 2012 U.S. Dist. LEXIS 121333
(N.D. Ill. 2012) (Likelihood of Confusion) (False Advertising)
Sanfield Inc. v. Finlay Fine Jewelry Corp., 999 F Supp 1102 (N.D. Ill. 1998) (False Advertising)
Tylka v. Gerber Products Co., 1999 WL 495126 (N.D. Ill. 1999) (False Advertising)
Eighth Circuit
American Equity Mortgage, Inc. v. Ray Vinson, Jr. 2005 U.S. Dist. LEXIS 32160 (E.D. Mo.
2005) (False Advertising) (Daubert/Admissiblity Issues)
American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387 (8th Cir. 2004) (False
Advertising)
Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc., 829 F. Supp. 2d 802 (D. Minn.
2011) (False Advertising) (Daubert/Admissibility Issues)
Millennium Import Co. v. Sidney Frank Importing Co., Inc., 2004 U.S. Dist LEXIS 11871 (D.
Minn. 2004) (False Advertising)
Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623
(S.D. S.D. 2009) (False Advertising)
Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045 (D. Minn. 1999) (False
Advertising)
329
False Advertising
Ninth Circuit
Amer. Optometric Society, Inc. v. Amer. Bd. of Optometry, Inc., 2012 U.S. Dist. LEXIS
171295 (C.D. Cal. 2012) (False Advertising)
Amer. Optometric Society, Inc. v. Amer. Bd. of Optometry, Inc., 2012 U.S. Dist. LEXIS
81379 (C.D. Cal. 2012) (False Advertising)
Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 U.S. Dist. LEXIS 115007
(N.D. Cal. 2009) (False Advertising)
Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176 (W.D.
Wash. 2010) (False Advertising)
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False
Advertising)
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 2012 U.S. Dist. LEXIS 126976 (E.D. Cal.
2012) (Likelihood of Confusion) (False Advertising)
Federal Trade Commission v. John Stefanchik, 559 F.3d 924 (9th Cir. 2009) (False
Advertising)
Hansen Beverage Co. v. Vital Pharmaceutical, Inc., 2010 U.S. Dist. LEXIS 79218 (S.D.
Cal. 2010) (False Advertising)
Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal.
2005) (False Advertising) (Daubert/Admissibility Issues)
Leatherman Tool Group, Inc. v. Coast Cutlery Co., 823 F. Supp. 2d 1150 (D. Or. 2011)
(False Advertising)
Mutual Pharmaceutical Co. v. Ivax Pharmaceuticals, Inc., 459 F. Supp. 2d 925 (C.D.
Cal. 2006) (False Advertising)
Pom Wonderful LLC v. The Coca Cola Co., 727 F. Supp. 2d 849 (C.D. Cal. 2010) (False
Advertising)
Trafficschool.com, Inc. v. Edriver, Inc., 653 F.3d 820 (9th Cir. 2011) (False Advertising)
Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063 (C.D. Cal. 2008) (False
Advertising)
Tenth Circuit
Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 258 F. Supp. 2d 1197 (D. Kan. 2003) (False
Advertising)
330
False Advertising
Icon Health & Fitness, Inc. v. The Nautilus Group, Inc., 2004 U.S. Dist. LEXIS 31511
(D. Ut. 2004) (False Advertising)
The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
Eleventh Circuit
BellSouth Advertising & Publishing Corp. v. Lambert Publishing, 45 F. Supp. 2d 1316 (S.D. Ala.
1999) (False Advertising)
Hickson Corp. v. Northern Crossarm Co., Inc., 357 F.3d 1256 (11th Cir. 2004) (False
Advertising)
Schütz Container Systems, Inc. v. Mauser Corporation, 2014 U.S. Dist. LEXIS 44059
(N.D. Ga. 2014) (False Advertising) (Daubert/Admissibility Issues)
T.T.A.B.
Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 2012 T.T.A.B. LEXIS 221
(T.T.A.B. 2012) This opinion is a precedent of the T.T.A.B. (False Advertising)
331
False Advertising
Fame Surveys
First Circuit
Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass. 1999) (Fame)
Third Circuit
Binney & Smith v. Rose Art Industries, 2001 U.S. Dist. LEXIS 11827 (E.D. Pa. 2001) (Fame)
Hershey Foods Corp. v. Mars, Inc., 998 F Supp 500 (M.D. Pa. 1998) (Fame) (Dilution)
Profoot Inc. v. MSD Consumer Care, Inc., 2012 U.S. Dist. LEXIS 83427 (D. N.J. 2012)
(Fame)
Fourth Circuit
American Mensa, Ltd., v. Inpharmatica, Ltd., 2008 U.S. Dist. LEXIS 99394 (D. Md.
2008) (Fame)
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Likelihood
of Confusion) (Fame)
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development,
170 F.3d 449 (4th Cir. 1999) (Fame) (Dilution)
Fifth Circuit
The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657
(W.D. Tex. 2008) (Fame)
Seventh Circuit
Simon Property Group L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227 (S.D. Ind. 2000)
(Fame)
Ninth Circuit
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution)
(Daubert/Admissibility Issues)
Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (Fame)
332
Fame
Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame)
Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary
Meaning) (Fame)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011)
(Fame) (Dilution)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923
(N.D. Cal. 2009) (Likelihood of Confusion) (Fame)
M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061 (C.D. Cal. 2000) (Fame)
Nissan Motor Co., v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487
(C.D. Cal. 2007) (Fame)
Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (Fame)
Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306 (D. Nev. 2008) (Fame)
Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. Nev. 2007) (Fame)
Eleventh Circuit
Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999)
(Likelihood of Confusion) (Fame)
Federal Circuit
Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (Fame)
T.T.A.B.
Ahold Licensing SA v. Premium Nutritional Products, Inc., 2011 T.T.A.B. LEXIS 411
(T.T.A.B. 2011) (Fame)
Century 21 Real Estate Corp. v. New Century Services Corp., 2007 T.T.A.B. LEXIS 149
(T.T.A.B. 2007) (Fame)
Citigroup Inc. v. Citiair, LLC, 2014 T.T.A.B. LEXIS 150 (T.T.A.B. 2014) (Fame)
Clinique Labs. v. Absolute Dental, 2011 T.T.A.B. LEXIS 161 (T.T.A.B. 2011)
(Likelihood of Confusion) (Fame)
Day-Timers, Inc. v. Medley & Associates, Inc., 2001 T.T.A.B. LEXIS 299 (Fame)
333
Fame
Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of
Confusion) (Fame)
Facebook, Inc. v. Think Computer Corp. 2013 T.T.A.B. LEXIS 436 (T.T.A.B. 2013)
(Likelihood of Confusion) (Fame)
Ferrero S.P.A. v. Destileria La Central, S.A., 2000 T.T.A.B. LEXIS 359 (T.T.A.B. 2000)
(Fame)
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
(Likelihood of Confusion) (Fame)
Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81 (T.T.A.B. 2009) (Fame)
Google Inc. v. Pivot Design, Inc., 2007 T.T.A.B. LEXIS 183 (T.T.A.B. 2007) (Fame)
Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame)
(Daubert/Admissibility Issues)
Motion Picture Ass’n of America, Inc. v. Respect Sportswear, Inc., 2005 T.T.A.B. LEXIS 223
(T.T.A.B. 2005) (Fame)
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B.
2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of
the T.T.A.B.
Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622 (T.T.A.B.
2000) (Fame)
Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93 (T.T.A.B. 2001)
(Fame)
334
Fame
Dilution Surveys
Second Circuit
The Gap, Inc. v. G.A.P, Adventures Inc., 2011 U.S. Dist. LEXIS 71675 (S.D.N.Y. 2011)
(Likelihood of Confusion) (Dilution)
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Gucci America, Inc. v. Guess?, Inc., 2012 U.S. Dist. LEXIS 70833 (S.D.N.Y. 2012)
(Likelihood of Confusion ) (Dilution)
Gucci America, Inc. v. Guess?, Inc., 831 F. Supp. 2d 723 (S.D.N.Y. 2011) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y.
2004) ( Likelihood of Confusion) (Dilution)
Louis Vuitton Malletier v. Hyundai Motor America, 2012 U.S. Dist. LEXIS 42795
(S.D.N.Y. 2012) (Likelihood of Confusion) (Dilution)
Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158 (2d
Cir. 2004) (Dilution)
Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 2003 U.S. Dist.
LEXIS 13981 (S.D.N.Y. 2003) (Dilution)
Starbucks Corp. v. Wolfe's Borough Coffee, Inc. 736 F.3d 198 (2d Cir. 2013) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2011 U.S. Dist. LEXIS 148081
(S.D.N.Y. 2011) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008)
(Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005)
(Likelihood of Confusion) (Dilution)
335
Dilution
Third Circuit
Hershey Foods Corp. v. Mars, Inc., 998 F Supp 500 (M.D. Pa.1998) (Fame) (Dilution)
Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of
Confusion) (Dilution)
Fourth Circuit
CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006)
(Likelihood of Confusion) (Dilution)
The Radiance Foundation, Inc. v. National Association For The Advancement Of Colored
People, 2013 U.S. Dist. LEXIS 188098 (E.D. Va. 2013) (Daubert/Admissibility Issues)
(Likelihood of Confusion) (Dilution)
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development,
170 F.3d 449 (4th Cir. 1999) (Fame) (Dilution)
Fifth Circuit
Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of
Confusion) (Dilution)
Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex.
2005) (False Advertising) (Dilution)
Sixth Circuit
Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790 (W.D. Tenn. 2001) (Dilution)
Seventh Circuit
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/
Admissibility Issues)
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/
Admissibility Issues)
Eighth Circuit
Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000)
(Secondary Meaning) (Likelihood of Confusion) (Dilution)
336
Dilution
Ninth Circuit
Apple, Inc. v. Samsung Electronics Co., Ltd, 920 F. Supp. 2d 1116 (N.D Cal. 2013)
(Dilution) (Secondary Meaning)
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution)
(Daubert/Admissibility Issues)
Gerawan Farming, Inc. v. Prima Bella Produce, Inc., 2011 U.S. Dist. LEXIS 52792
(E.D. Cal. 2011) (Dilution)
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011)
(Fame) (Dilution)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625
(N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution)
Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D.
Or. 2006) (Likelihood of Confusion) (Dilution)
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007) (Dilution)
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966 (E.D. Cal. 2007) (Dilution)
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of
Confusion) (Dilution)
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 46167 (D. Or. 2005)
(Dilution)
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood
of Confusion) (Dilution)
Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) (Dilution)
Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006)
(Dilution) (Daubert/Admissibility Issues)
Eleventh Circuit
Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution)
337
Dilution
Federal Circuit
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 2012 U.S. App. LEXIS 17258 (Fed. Cir.
2012) (Dilution)
T.T.A.B.
Chanel, Inc. v. Jerzy Makarczyk, 2014 T.T.A.B. LEXIS 217, (T.T.A.B. 2014) (Dilution)
Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest LLC, 2005 T.T.A.B. LEXIS 144
(T.T.A.B. 2005) (Dilution/Blurring)
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B.
2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of
the T.T.A.B.
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 2011 T.T.A.B. LEXIS 378 (T.T.A.B.
2011) This opinion is a precedent of the T.T.A.B. (Dilution)
338
Dilution
Distinctiveness Surveys
Eighth Circuit
Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 2012 U.S. Dist. LEXIS 181031 (D.
Neb. 2012) (Distinctiveness)
Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 2012 U.S. Dist. LEXIS 143168 (D.
Neb. 2012) (Distinctiveness)
False Endorsement Surveys
Tenth Circuit
Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568 (D.C. Colo. 2000) (False Endorsement)
Geographically Deceptively Misdescriptive Surveys
Federal Circuit
In re Spirits Int’l, N.V., 563 F.3d 1347 (Fed. Cir. 2009) (Geographically Deceptively
Misdescriptive)
T.T.A.B.
In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154 (T.T.A.B. 2000)
(Geographically Deceptively Misdescriptive)
In re Spirits Int’l N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively
Misdescriptive
Scandalous/Disparaging Marks Surveys
D.C. Circuit
Pro-Football, Inc. v. Suzan Shown Harjo, 284 F. Supp. 2d 96 (D. D.C. 2003)
(Scandalous/Disparaging)
T.T.A.B.
Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999) (Scandalous/Disparaging)
Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364 (T.T.A.B. 1999)
(Scandalous/Disparaging)
339
Other
Copyright Surveys
Seventh Circuit
Ty, Inc. v. Publications Int’l Ltd., 2000 U.S. Dist. LEXIS 15382 (N.D. Ill. 2000) (Copyright)
Ninth Circuit
A & M Records v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (Copyright)
A & M Records v. Napster, Inc., 2000 U.S. Dist. LEXIS 20668 (N.D. Cal. 2000) (Copyright)
A & M Records v. Napster, Inc., 114 F. Supp. 2d 896 (N.D. Cal. 2000) (Copyright)
A & M Records v. Napster, Inc., 2000 WL 1009483 (N.D. Cal. 2000) (Copyright)
Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) (Copyright)
Richard Reinsdorf v. Skechers U.S.A., 2012 U.S. Dist. LEXIS 145495 (C.D. Cal. 2012)
(Copyright) (Daubert/Admissibility Issues)
Patent Surveys
Second Circuit
Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344 (D.
Conn. 2005) (Patent)
Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322 (E.D.N.Y. 2003)
(Patent)
Seventh Circuit
Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010)
(Patent) (Daubert/Admissibility Issues)
Moen, Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp. 2d 680 (N.D. Ill. 1999) (Patent)
(Daubert/Admissibility Issues)
PTS Labs LLC v. Abbott Laboratories, 126 F. Supp. 2d 538 (N.D. Ill. 2000) (Patent)
Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind.
2004) (Likelihood of Confusion) (Patent)
340
Other
Ninth Circuit
Apple, Inc. v. Samsung Electronics Co., LTD. 2014 U.S. Dist. LEXIS 29721 (N.D. Cal.
2014) (Patents)
D.C. Circuit
Winner InternatioInt’lnal Royalty Corp. v. Wang, 11 F. Supp. 2d 18 (D. D.C. 1998) (Patent)
Federal Circuit
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (Patent
Infringement)
Breach of Contract
Fifth Circuit
MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La. 1996) (Breach of
Contract) (Daubert/Admissibility Issues)
First Amendment
D.C. Circuit
Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572 (D. D.C. 2007) (First
Amendment)
Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45 (D. D.C. 2006) (First
Amendment)
341
Other
Daubert/Admissibility Issues
First Circuit
The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. Puerto Rico 2004)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Second Circuit
Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347
(W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y.
2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Gucci America, Inc. v. Guess?,Inc., 831 F. Supp. 2d 723 (S.D.N.Y. 2011) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
342
Daubert
J.T. Colby & Company, Inc. v. Apple Inc., 2013 U.S. Dist. LEXIS 65959 (S.D.N.Y 2013)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Lifeguard Licensing Corp. v. Gogo Sports, Inc., 2013 U.S. Dist. LEXIS 115668
(S.D.N.Y. 2013) (Genericness) (Daubert/Admissibility Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485
(S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 169042 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 56800 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 861 F. Supp. 2d 158 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
On Site Energy Co. v. MTU Onsite Energy Corp., 2012 U.S. Dist. LEXIS 100690
(E.D.N.Y. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Pom Wonderful LLC v. Organic Juice USA, Inc., 769 F. Supp. 2d 188 (S.D.N.Y. 2011)
(False Advertising) (Daubert/Admissibility Issues)
Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False
Advertising) (Daubert/Admissibility Issues)
Rexall Sundown, Inc. v Perrigo Co., 651 F. Supp. 2d 9 (E.D.N.Y. 2009) (False
Advertising) (Daubert/Admissibility Issues)
Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
343
Daubert
Trouble v. The Wet Seal, Inc., 179 F. Supp.2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Victoria’s Secret Stores Brand Mgmt., Inc. v. Sexy Hair Concepts, LLC, 2009 U.S. Dist.
LEXIS 30458 (S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y.
2005) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Third Circuit
Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del.
2006) (False Advertising) (Daubert/Admissibility Issues)
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009)
(False Advertising) (Daubert/Admissibility Issues)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS
18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS
25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Fancaster, Inc. v. Comcast Corp., 832 F. Supp. 2d 380 (D. N.J. 2011) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003)
(Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues)
J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002)
(Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues)
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007)
(False Advertising (Daubert/Admissibility Issues)
Taza Systems, LLC, V. Taza 21 CO., LLC, 2013 U.S. Dist. LEXIS 130974 (W.D. Pa.
2013) (Genericness) (Daubert/Admissibility Issues)
Fourth Circuit
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2011 U.S. Dist. LEXIS 24566 (D. Md.
2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
344
Daubert
Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 188 F.3d 501 (Table):
1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition” (Secondary Meaning)
(Daubert/Admissibility Issues)
The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp.2d 785 (D. Md.
2001) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Millennium Laboratories, Inc. v. Ameritox, Ltd., 924 F. Supp. 2d 594 (Md. 2013)
(False Advertising) (Daubert/Admissibility Issues)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D.
Va. 2010) (False Advertising) (Daubert/Admissibility Issues)
Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d
715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues)
The Radiance Foundation, Inc. v. National Association For The Advancement Of
Colored People, 2013 U.S. Dist. LEXIS 188098 (E.D. Va. 2013) (Daubert/Admissibility
Issues) (Likelihood of Confusion) (Dilution)
Fifth Circuit
The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 2007 U.S. Dist.
LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues)
Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary,
2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning) (Daubert/Admissibility
Issues)
Eastman Chemical Company v Plastipure, Inc. 969 F. Supp. 2d 756 (W.D. Tex. 2013)
(False Advertising) (Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 817 F. Supp. 2d 846 (W.D. La. 2011) (Genericness)
(Secondary Meaning) (Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 2011 U.S. Dist LEXIS 73259 (W.D. La. 2011)
(Genericness) (Secondary Meaning) (Daubert/Admissibility Issues)
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist.
LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
345
Daubert
Honestech, Inc. v. Sonic Solutions, 2011 U.S. App. LEXIS 12816 (5th Cir. 2011)
(Secondary Meaning) (Daubert/Admissibility Issues)
Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D.
Tex. 2006) (False Advertising) (Daubert/Admissibility Issues)
MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La. 1996) (Breach of
Contract) (Daubert/Admissibility Issues)
Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp.2d 600 (N.D. Tex. 2000) (False
Advertising) (Daubert/Admissibility Issues)
Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884 (S.D. Tex.
2011) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Sixth Circuit
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325
(E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Edward W. Tovey v. Nike, Inc. 2014 U.S. Dist. LEXIS 93905 (N.D. Ohio 2014)
(Likelihood of Confusion) (Daubert/Admissibility issues)
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Innovation Ventures, LLC v. N2G Distributing, Inc., 2011 U.S. Dist. LEXIS 137115
(E.D. Mich. 2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich. 2006)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D. Mich.
2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D.
Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues)
346
Daubert
Seventh Circuit
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 805 F. Supp. 2d 503 (N.D. Ill. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010)
(Patent) (Daubert/Admissibility Issues)
Dwyer Instruments, Inc. v. Sensocon, Inc., 2012 U.S. Dist. LEXIS 21308 (N.D. Ind.
2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Dyson, Inc. v. Bissell Homecare, Inc. 951 F. Supp. 2d 1009 (N.D. Ill. 2013) (False
Advertising) (Daubert/Admissibility Issues)
Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill.
2003) (Secondary Meaning) (Daubert/Admissibility Issues)
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 145127 (N.D. Ill. 2010)
(False Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill.
2009) (False Advertising) (Daubert/Admissibility Issues)
Moen Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp.2d 680 (N.D. Ill. 1999) (Patent)
(Daubert/Admissibility Issues)
National Football League Properties, Inc. v. Prostyle, Inc., 57 F. Supp.2d 665 (E.D. Wis. 1999)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
National Football League Properties, Inc. v. Prostyle, Inc., 16 F. Supp.2d 1012 (E.D. Wis. 1998)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Native American Arts v. Earthdweller, Ltd., 2002 U.S. Dist. Lexis 9750 (N.D. Ill. 2002)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
347
Daubert
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp.2d 1033 (S.D. Ind. 2000) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Eighth Circuit
American Equity Mortgage, Inc. v. Ray Vinson, Jr., 2005 U.S. Dist. LEXIS 32160 (E.D. Mo.
2005) (False Advertising) (Daubert/Admissibility Issues)
Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc., 829 F. Supp. 2d 802 (D. Minn.
2011) (False Advertising) (Daubert/Admissibility Issues)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D.
Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP and NHL Enterprises, LP,
2002 U.S. Dist. LEXIS 13991 (D. Minn. 2002) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn.
2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Ninth Circuit
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution) (Daubert/Admissibility
Issues)
Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708
(N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
E & J Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10669 (E.D. Cal. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
E & J Gallo v. Proximo Spirits, Inc., 2011 U.S. Dist. LEXIS 136053 (E.D. Cal. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
348
Daubert
Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal.
2005) (False Advertising) (Daubert/Admissibility Issues)
Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080
(C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Joel D. Wallach v. Longevity Network, Ltd., 2006 U.S. Dist. LEXIS 97114 (C.D. Cal.
2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)
(Likelihood of Confusion) (Daubert/Admissibility
R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Richard Reinsdorf v. Skechers U.S.A., 2012 U.S. Dist. LEXIS 145495 (C.D. Cal. 2012)
(Copyright) (Daubert/Admissibility Issues)
Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp.2d 1177 (C.D. Cal.
2001) (Secondary Meaning) (Daubert/Admissibility Issues)
Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006)
(Dilution) (Daubert/Admissibility Issues)
Tenth Circuit
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
First Fidelity Bank v. Fidelity Bank, 2006 U.S. Dist. LEXIS 100879 (W.D. Okla. 2006)
(Secondary Meaning) (Daubert/Admissibility Issues)
349
Daubert
Healthone of Denver, Inc. v. UnitedHealth Group Inc., 2012 U.S. Dist. LEXIS 4506 (D.
Colo. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp.2d 809 (D. Kan. 1998)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 7738 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 1374 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary
Meaning) (Daubert/Admissibility Issues)
Eleventh Circuit
Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp.
2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues)
Hi Ltd. v. Winghouse of Florida, 2004 U.S. Dist LEXIS 30687, (M.D. Fla. 2004)
(Daubert/Admissibility IssuesL
Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (ND Ga.
2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
MPS Entertainment, LLC v. Abercrombie & Fitch Stores, Inc. 2013 U.S. Dist. LEXIS
91193, (S.D. Fla. 2013) (Daubert/Admissibility Issues)
Native Amer. Arts, Inc. v. Bud K World Wide, Inc., 2012 U.S. Dist. LEXIS 69715 (M.D.
Ga. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS
95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
350
Daubert
Pods Enterprises, Inc. vs. U-Haul International, Inc., 2014 U.S. Dist. LEXIS 80208
(M.D. Fla. 2014) (Genericness) (Daubert/Admissibility Issues)
Schütz Container Systems, Inc. v. Mauser Corporation, 2014 U.S. Dist. LEXIS 44059
(N.D. Ga. 2014) (False Advertising) (Daubert/Admissibility Issues)
Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008)
(Secondary Meaning) (Daubert/Admissibility Issues)
T.T.A.B.
Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (T.T.A.B. 2000)
(Genericness) (Daubert/Admissibility Issues)
Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame)
(Daubert/Admissibility Issues)
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B.
2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of
the T.T.A.B.
351
Daubert
BIBLIOGRAPHY
INTELLECTUAL PROPERTY SURVEYS:
BY CIRCUIT
This appendix contains citations, by Circuit, for all identified published opinions from
January 1998 through December 2012, in which survey evidence was referenced.
First Circuit
Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288 F. Supp. 2d 105 (D. N.H. 2003) (Likelihood
of Confusion)
Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS
27148 (D. Mass. 2007) (Secondary Meaning)
The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) (Secondary
Meaning)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003)
(Secondary Meaning) (Likelihood of Confusion)
The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (Likelihood
of Confusion)
Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452 (D. P.R.
2005) (Likelihood of Confusion)
Capitol Federal Savings Bank v. Eastern Bank Corp., 2007 U.S. Dist. LEXIS 100193 (D. Mass.
2007) (Likelihood of Confusion)
Carroll Shelby v. Superformance Int’l, Inc., 2006 U.S. App. LEXIS 1096 (1st Cir. 2006)
(Secondary Meaning)
Carroll Shelby Licensing, Inc. v. Superformance Int’l., Inc., 251 F. Supp. 2d 983 (D. Mass. 2002)
(Secondary Meaning)
Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000)
(False Advertising)
352
First Circuit
EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147 (D. Mass. 1999) (Likelihood of
Confusion)
Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion)
Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass. 1999) (Fame)
Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness)
I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co. and Robern, Inc., 118 F. Supp. 2d 92 (D.
Mass. 2000) (Secondary Meaning)
JJI International, Inc. v. The Bazar Group, Inc., 2013 U.S. Dist. LEXIS 88478 (R.I.
2013) (Likelihood of Confusion)
Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003)
(Secondary Meaning) (Daubert/Admissibility Issues)
McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. P.R. 2004) (Secondary
Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues)
The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003)
(Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159 (D. Mass. 1998) (Secondary
Meaning)
353
First Circuit
Second Circuit
1-800 Contacts, Inc. v. Whenu.Com, Inc. and Vision Direct, 414 F.3d 400 (2d Cir. 2005)
(Likelihood of Confusion)
1-800 Contacts, Inc. v. WhenU.com and Vision Direct, Inc., 309 F. Supp. 2d 467 (S.D.N.Y.
2003) (Likelihood of Confusion)
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266 (S.D.N.Y. 2006)
(Likelihood of Confusion)
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 2005 U.S. Dist. LEXIS 7462 (S.D.N.Y.
2005) (Likelihood of Confusion)
American Express v. Black Card LLC, 2011 U.S. Dist. LEXIS 133151 (S.D.N.Y. 2011)
(Secondary Meaning)
Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344 (D.
Conn. 2005) (Patent)
Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 2014 U.S. Dist. LEXIS
1030 (S.D.N.Y. 2014) (Secondary Meaning) (Likelihood of Confusion)
Auscape Int’l v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004) (False
Advertising)
Aztar Corp. v. NY Entm’t, LLC, 15 F. Supp. 2d 252 (E.D.N.Y. 1998) (Likelihood of Confusion)
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 2000 U.S. Dist. LEXIS 19852 (E.D.N.Y.
2000) (Likelihood of Confusion)
Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237 (S.D.N.Y. 1999) (Likelihood of Confusion)
Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504
(S.D.N.Y. 2000) (Likelihood of Confusion)
BIC Corp.s and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist. LEXIS
18226 (S.D.N.Y. 2000) (Secondary Meaning)
354
Second Circuit
Borghese Trademarks, Inc. v. Francesco Borghese, 2012 U.S. Dist. LEXIS 184363
(S.D.N.Y. 2012) (Likelihood of Confusion)
Braun Inc. v. Optiva Corp., 2000 U.S. Dist. LEXIS 2195 (S.D.N.Y. 2000) (False Advertising)
Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281 (S.D.N.Y. 2003) (Likelihood of
Confusion)
Bruce Lee Enterprises, LLC v. A.V.E.L.A., Inc., 2013 U.S. Dist. LEXIS 31155 (S.D.N.Y.
2013) (Likelihood of Confusion)
Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226 (S.D.N.Y. 2001) (Likelihood of
Confusion)
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004)
(Secondary Meaning)
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887 (S.D.N.Y.
2003) (Secondary Meaning)
Cartie, Inc.r v. Samo’s Sons, Inc., 2005 U.S. Dist. LEXIS 23395 (S.D.N.Y. 2005) (Secondary
Meaning)
Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277 (2d Cir. 2008)
(Secondary Meaning)
Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 696 F.3d 206 (2d Cir. 2012)
(Secondary Meaning)
Coach, Inc. v. We Care Trading Co., Inc., 2002 U.S. App. LEXIS 28143 (2d Cir. 2002)
(Secondary Meaning)
Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879 (S.D.N.Y. 2001)
(Secondary Meaning)
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242 (S.D.N.Y. 1999) (Likelihood of Confusion)
Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347
(W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Cumberland Packing Corp. v. Monsanto Co., 140 F. Supp. 2d 241 (E.D.N.Y. 2001) (Likelihood
of Confusion)
Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561 (E.D.N.Y. 1999) (Likelihood
of Confusion)
355
Second Circuit
Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Denimafia Inc. v. New Balance Athletic Shoe, Inc., 2014 U.S. Dist. LEXIS 27541
(S.D.N.Y. 2014) (Likelihood of Confusion)
Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y.
2008) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687 (D. Conn.
2010) (False Advertising)
Elements/Jill Schwartz, Inc. v. Gloriosa Co. and Gloria Pacosa, 2002 U.S. Dist. LEXIS 12669
(S.D.N.Y. 2002) (Likelihood of Confusion)
Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. Culbro Corp. and General Cigar Co., Inc.,
2004 U.S. Dist. LEXIS 4935 (S.D.N.Y. 2004) (Likelihood of Confusion)
First Nat’l Bank of Omaha, Inc. v. MasterCard Int’l Inc., 2004 U.S. Dist. LEXIS 13162
(S.D.N.Y. 2004) (Likelihood of Confusion)
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399 (S.D.N.Y. 2002)
(Likelihood of Confusion)
Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
The Gap, Inc. v. G.A.P, Adventures Inc., 2011 U.S. Dist. LEXIS 71675 (S.D.N.Y. 2011)
(Likelihood of Confusion) (Dilution)
GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008)
(Likelihood of Confusion)
Go SMiLE, Inc. v. Dr. Johnathan Levine, 769 F. Supp. 2d 630 (S.D.N.Y. 2011)
(Likelihood of Confusion)
Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc.,
116 F. Supp. 2d 405 (S.D.N.Y. 2000) (Secondary Meaning)
Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Gucci America, Inc. v. Guess?, Inc., 2012 U.S. Dist. LEXIS 70833 (S.D.N.Y. 2012)
(Likelihood of Confusion ) (Dilution)
356
Second Circuit
Gucci America, Inc. v. Guess?, Inc., 843 F. Supp. 2d 412 (S.D.N.Y. 2012) (Likelihood of
Confusion)
Gucci America, Inc. v. Guess?, Inc., 2011 U.S. Dist. LEXIS 145180 (S.D.N.Y. 2011)
(Likelihood of Confusion)
Gucci America, Inc. v. Guess?, Inc., 831 F. Supp. 2d 723 (S.D.N.Y. 2011) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., 64 U.S.P.Q.2d 1039
(S.D.N.Y. 2002) (Likelihood of Confusion)
Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS
19278 (D. Vt. 2004) (Descriptiveness)
Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 327 F. Supp. 2d 278 (D.
Vt. 2003) (Descriptiveness)
Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000) (False Advertising)
Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212 (S.D.N.Y. 1999)
(Likelihood of Confusion)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478
(E.D.N.Y. 2008) (Secondary Meaning)
Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530
(E.D.N.Y. 2007) (Secondary Meaning)
Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008)
(Secondary Meaning) (Likelihood of Confusion)
J.T. Colby & Company, Inc. v. Apple Inc., 2013 U.S. Dist. LEXIS 65959 (S.D.N.Y 2013)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 64393 (S.D.N.Y. 2006)
(Likelihood of Confusion)
Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787 (S.D.N.Y. 2006)
(Likelihood of Confusion)
Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320
(S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/
Admissibility Issues)
Kind LLC v. Clif Bar & Co., 2014 U.S. Dist. LEXIS 81097 (S.D.N.Y. 2014) (Likelihood
of Confusion)
357
Second Circuit
La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. LEXIS 12676 (S.D.N.Y. 2000) (Likelihood of
Confusion)
Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360 (S.D.N.Y. 2000)
(Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2006 U.S. Dist.
LEXIS 32844 (S.D.N.Y. 2006) (Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir.
2005) (Likelihood of Confusion)
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2004 U.S. Dist. LEXIS
9387 (S.D.N.Y. 2004) (Likelihood of Confusion)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)
(Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y.
2004) ( Likelihood of Confusion) (Dilution)
Louis Vuitton Malletier v. Hyundai Motor America, 2012 U.S. Dist. LEXIS 42795
(S.D.N.Y. 2012) (Likelihood of Confusion) (Dilution)
Lurzer GMBH v. American Showcase, Inc., 73 F. Supp. 2d 327 (S.D.N.Y. 1998) (Likelihood of
Confusion)
Major League Baseball Properties Inc. v. Pacific Trading Cards Inc., 48 U.S.P.Q.2d 1944
(S.D.N.Y. 1998) (False Advertising)
Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood
of Confusion) (False Advertising)
MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485
(S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302 (W.D.N.Y. 2002)
(Likelihood of Confusion)
Mattel, Inc., v. Robarb’s, Inc., 2001 U.S. Dist. LEXIS 11742 (S.D.N.Y. 2001) (Likelihood of
Confusion)
Mattel, Inc. v. Robarb’s, Inc., 139 F. Supp. 2d 487 (S.D.N.Y. 2001) (Likelihood of Confusion)
McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) (False Advertising)
358
Second Circuit
Medical Economics Co., Inc. and ME Licensing Corp. v. Prescribing Reference, Inc., 294 F.
Supp. 2d 456 (S.D.N.Y. 2003) (Likelihood of Confusion)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 169042 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 2012 U.S. Dist. LEXIS 56800 (S.D.N.Y. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Medisim Ltd. v. BestMed LLC, 861 F. Supp. 2d 158 (S.D.N.Y. 2012) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Merck Eprova AG, v. Brookstone Pharmaceuticals, 920 F. Supp. 2d 404 (S.D.N.Y. 2013)
(False Advertising)
Metlife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223 (S.D.N.Y 2005) (Likelihood of
Confusion)
Milso Indus. Corp. v. Edward C. Nazzaro, 2012 U.S. Dist. LEXIS 123999 (D. Conn.
2012) (False Advertising)
Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F Supp 294 (S.D.N.Y. 1998) (False
Advertising)
Mylan Pharmaceuticals, Inc. v. Procter & Gamble Co., 443 F. Supp. 2d 453 (S.D.N.Y.
2006) (False Advertising)
Nabisco, Inc. v. PF Brands, Inc. and Pepperidge Farm, Inc., 50 F. Supp. 2d 188 (S.D.N.Y. 1999)
(Secondary Meaning)
Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690 (S.D.N.Y. 1999) (Likelihood of Confusion)
National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474
(S.D.N.Y. 2002) (Likelihood of Confusion)
NE Opco, Inc. v. American Pad & Paper Co., 2011 U.S. Dist. LEXIS 45231 (S.D.N.Y.
2011) (Likelihood of Confusion)
New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195 (D. Conn. 2004)
(Likelihood of Confusion)
New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479
(S.D.N.Y. 1999) (Likelihood of Confusion)
On Site Energy Co. v. MTU Onsite Energy Corp., 2012 U.S. Dist. LEXIS 100690
(E.D.N.Y. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
359
Second Circuit
Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Paco Sport, Ltd. v. Paco Rabanne Perfumes, 234 F.3d 1262 (Table): 2000 US App LEXIS
29570 (2d Cir. 2000), designated “Unpublished Opinion.” (Likelihood of Confusion)
Paco Sport, Ltd. v. Paco Rabanne Perfumes, 86 F. Supp. 2d 305 (S.D.N.Y. 2000) (Likelihood of
Confusion)
People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010)
(Secondary Meaning) (Likelihood of Confusion)
Pfizer, Inc. v. Arye Sachs, 2009 U.S. Dist. LEXIS 81188 (S.D.N.Y. 2009) (Genericness)
Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250 (S.D.N.Y.
2006) (Likelihood of Confusion)
Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286 (S.D.N.Y. 2000) (Genericness)
Pilot Corp. of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007)
(Likelihood of Confusion)
Pilot Corp. of America v. Fisher-Price, Inc. and Mattel, Inc., 344 F. Supp. 2d 349 (D. Conn.
2004) (Likelihood of Confusion)
Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158 (2d
Cir. 2004) (Dilution)
Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 2003 U.S. Dist.
LEXIS 13981 (S.D.N.Y. 2003) (Dilution)
Playtex Products, Inc. v. Procter & Gamble Co., 2003 U.S. Dist. LEXIS 8913 (S.D.N.Y. 2003)
(False Advertising)
Pom Wonderful LLC v. Organic Juice USA, Inc., 769 F. Supp. 2d 188 (S.D.N.Y. 2011)
(False Advertising) (Daubert/Admissibility Issues)
PRL USA Holdings, Inc. v. United States Polo Association, Inc., 2006 U.S. Dist. LEXIS
46065 (S.D.N.Y. 2006) (Likelihood of Confusion)
Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False
Advertising) (Daubert/Admissibility Issues)
Procter & Gamble v. Ultreo, 574 F. Supp. 2d 339 (S.D.N.Y. 2008) (False Advertising)
360
Second Circuit
Rexall Sundown, Inc. v. Perrigo Co., 51 F. Supp. 2d 9 (E.D.N.Y. 2009) False
Advertising) (Daubert/Admissibility Issues)
Romag Fasteners, Inc. v. Fossil, Inc., 979 F. Supp. 2d 264 (D. Conn. 2013) (Likelihood
of Confusion)
Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood
of Confusion)
Salon Fad v. L’Oreal USA, Inc., 2011 U.S. Dist. LEXIS 103936 (S.D.N.Y. 2011) (False
Advertising)
Santana Products, Inc. v. Sylvester & Assoc., Ltd., 2006 U.S. Dist. LEXIS 98045
(E.D.N.Y. 2006) (False Advertising)
Schering Corp. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7071 (S.D.N.Y. 2000) (False Advertising)
Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (False Advertising)
Schering Corp. v. Pfizer, Inc., 1999 U.S. Dist. LEXIS 2980 (S.D.N.Y. 1999) (False Advertising)
SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer
Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061 (S.D.N.Y. 2001) (False Advertising)
Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322 (E.D.N.Y. 2003)
(Patent)
Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (Likelihood of
Confusion)
Star Industries, Inc. v. Bacardi & Co. Ltd. Corp., 2003 U.S. Dist. LEXIS 23411 (S.D.N.Y. 2003)
(Likelihood of Confusion)
Starbucks Corp. v. Wolfe's Borough Coffee, Inc. 736 F.3d 198 (2d Cir. 2013) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2011 U.S. Dist. LEXIS 148081
(S.D.N.Y. 2011) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008)
(Dilution)
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005)
(Likelihood of Confusion) (Dilution)
361
Second Circuit
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2004 U.S. Dist LEXIS 19239 (S.D.N.Y. 2004)
(Likelihood of Confusion)
Starter Corp. v. Converse Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
The Swatch Group (U.S.) Inc. v. Movado Corp., 2003 U.S. Dist. LEXIS 6015 (S.D.N.Y. 2003)
(Likelihood of Confusion)
THOIP v. Walt Disney Co., 788 F. Supp. 2d 168 (S.D.N.Y. 2011) (Likelihood of
Confusion)
THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
THOIP v. Walt Disney Co., 2010 U.S. Dist. LEXIS 82726 (S.D.N.Y. 2010) (Likelihood
of Confusion)
Tiffany v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (Likelihood of Confusion)
Tiffany v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) (Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning)
(Likelihood of Confusion)
Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning)
(Likelihood of Confusion)
Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y. 2011)
(Likelihood of Confusion)
Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458
(S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y.
2005) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634
(E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion)
Warner-Lambert Co. v. Schering-Plough Corp., 1991 U.S. Dist. LEXIS 14620 (S.D.N.Y. 1991)
(False Advertising)
362
Second Circuit
WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379 (2d Cir. 2004)
(Likelihood of Confusion)
WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary
Meaning) (Likelihood of Confusion)
Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (Likelihood of
Confusion)
Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62 (E.D.N.Y. 1999) (Likelihood
of Confusion)
Zeneca Inc. v. Eli Lilly and Co., 1999 U.S. Dist. LEXIS 10852 (S.D.N.Y. 1999) (False
Advertising)
363
Second Circuit
Third Circuit
A&H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 167 F. Supp. 2d 770 (E.D. Pa. 2001)
(Likelihood of Confusion)
A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 57 F. Supp. 2d 155 (E.D. Pa. 1999)
(Likelihood of Confusion)
A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d 197 (3d Cir. 1999)
(Likelihood of Confusion)
Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del.
2006) (False Advertising) (Daubert/Admissibility Issues)
Binney & Smith v. Rose Art Industries, 2001 U.S. Dist. LEXIS 11827 (E.D. Pa. 2001) (Fame)
Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384 (E.D. Pa. 2000)
(Secondary Meaning)
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009)
(False Advertising) (Daubert/Admissibility Issues)
Castrol, Inc. v. Pennzoil Quaker State Co., 169 F. Supp. 2d 332 (D. N.J. 2001) (False
Advertising)
Castrol, Inc. v. Pennzoil Quaker State Co., 2000 U.S. Dist. LEXIS 15336 (D. N.J. 2000) (False
Advertising)
The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775 (D. N.J. 1998) (Likelihood of Confusion)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS
18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS
25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
CNB Financial Corp. v. CNB Community Bank, 2004 U.S. Dist. LEXIS 21483 (E.D. Pa. 2004)
(Likelihood of Confusion)
Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, (3d Cir. 2000)
(Secondary Meaning)
Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066 (W.D. Pa.
2008) (Likelihood of Confusion)
364
Third Circuit
Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695 (M.D. Pa. 2006)
(False Advertising)
E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd
Cir. 2008) (Genericness) (Secondary Meaning)
E.T. Browne Drug Co., Inc. v. Cococare Products, Inc., 2006 U.S. Dist. LEXIS 66515
(D. N.J. 2006) (Genericness)
Fancaster, Inc. v. Comcast Corp., 832 F. Supp. 2d 380 (D. N.J. 2011) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Groupe Seb USA, Inc., v. Euro-Pro Operating LLC, 2014 U.S. Dist. LEXIS 75163,
(W.D. Pa. 2014) (False Advertising)
Hershey Foods Corp. v. Mars, Inc., 998 F. Supp 500 (M.D. Pa. 1998) (Fame) (Dilution)
The Hershey Co. v. Promotion in Motion, Inc., 2011 U.S. Dist. LEXIS 129651 (D. N.J.
2011) (Genericness)
IDT Telecom, Inc. v. CVT Prepaid Solutions, LLC, 2009U.S. Dist. LEXIS 120355 (D.
N.J. 2009) (False Advertising)
Interstate Bank v. NetBank, Inc., 348 F. Supp. 2d 340 (D. N.J. 2004) (Likelihood of Confusion)
Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513 (D. N.J. 2002)
(Genericness)
J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003)
(Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues)
J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002)
(Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues)
J&J Snack Foods, Corp. v. Nestle USA, Inc.and The Earthgrains Co., 149 F. Supp. 2d 136 (D.
N.J. 2001) (Genericness)
The Joint Stock Society and The Russian American Spirits Co. v. UDV North America, Inc. and
Pierre Smirnoff Co., 266 F.3d 164 (3d Cir. 2001) (False Advertising)
Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS 130762 (D. Del. 2012)
(Likelihood of Confusion)
Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238 (D. Del. 1998)
(Likelihood of Confusion)
365
Third Circuit
M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563 (D. N.J. 2005) (Likelihood
of Confusion)
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007)
(False Advertising) (Daubert/Admissibility Issues)
Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780 (E.D. Pa. 2007)
(False Advertising)
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
290 F.3d 578 (3d Cir. 2002) (False Advertising)
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.,
129 F. Supp. 2d 351 (D. N.J. 2000) (False Advertising)
The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S.
Dist. LEXIS 5925 (E.D. Pa. 2002) (Likelihood of Confusion)
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241 (3rd Cir. 2011) (False
Advertising)
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 702 F. Supp. 2d 238 (D. Del. 2010)
(False Advertising)
Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594 (D. N.J.
2003) (False Advertising)
Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of
Confusion) (Dilution)
Profoot Inc. v. MSD Consumer Care, Inc., 2012 U.S. Dist. LEXIS 83427 (D. N.J. 2012)
(Fame)
Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 266
(D. Del. 2010) (False Advertising)
The Steak Umm Co. v. Steak ‘Em Up, Inc., 868 F. Supp. 2d 415 (E.D. Pa. 2012)
(Likelihood of Confusion)
The Steak Umm Co. v. Steak ‘Em Up, Inc., 2011 U.S. Dist. LEXIS 94088 (E.D. Pa. 2011)
(Likelihood of Confusion)
Taza Systems, LLC, V. Taza 21 CO., LLC, 2013 U.S. Dist. LEXIS 130974, (D. Pa. 2013)
(Genericness) (Daubert/Admissibility Issues)
366
Third Circuit
Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS 29377
(E.D. Pa. 2007) (Likelihood of Confusion)
367
Third Circuit
Fourth Circuit
Ale House Mgmt. V. Raleigh Ale House, 2006 U.S. Dist. LEXIS 98819 (E.D. N.C. 2006)
America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (Secondary Meaning)
American Mensa, Ltd., v. Inpharmatica, Ltd., 2008 U.S. Dist. LEXIS 99394 (D. Md.
2008) (Fame)
Belk, Inc. v. Meyer Corp., 679 F.3d 146 (4th Cir. 2012) (Secondary Meaning) (Likelihood
of Confusion)
BellSouth Corp. v. White Directory Publishers Inc., 42 F. Supp. 2d 598 (M.D. N.C. 1999)
(Genericness)
Black & Decker Inc. v. Pro-Tech Power Inc. P & F, 26 F. Supp. 2d 834 (E.D. Va. 1998)
(Secondary Meaning)
CareFirst of Maryland, Inc. v. First Care, P.C., 422 F. Supp. 2d 592 (E.D. Va. 2006)
(Likelihood of Confusion)
CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006)
(Likelihood of Confusion) (Dilution)
CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714 (E.D. Va. 2004)
(Likelihood of Confusion)
Community First Bank v. Community Banks, 360 F. Supp. 2d 716 (D. Md. 2005) (Likelihood of
Confusion)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 868 F. Supp. 2d 468 (D. Md. 2012)
(Likelihood of Confusion)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2011 U.S. Dist. LEXIS 24566 (D. Md.
2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Dick’s Sporting Goods, Inc. v. Dick’s Clothing and Sporting Goods, Inc., 188 F.3d 501 (Table):
1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition”. (Secondary Meaning)
(Daubert/Admissibility Issues)
Georgia Pacific Consumer Products, LP v. Von Drehle Corp., 618 F.3d 441 (4th Cir.
2010) (Likelihood of Confusion)
368
Fourth Circuit
Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646 (D. Md. 2002) (Likelihood of
Confusion)
Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (E.D. Va. 2005)
(Likelihood of Confusion)
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Fame)
(Likelihood of Confusion)
High Voltage Beverages, LLC v. The Coca-Cola Co., 2009 U.S. Dist. LEXIS 122019
(W.D. N.C. 2009) (Likelihood of Confusion)
Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001)
(Genericness)
IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815 (E.D. Va. 1998) (Likelihood
of Confusion)
JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926 (E.D. Va. 2001)
(False Advertising)
The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785 (D. Md.
2001) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C.
2007) (Likelihood of Confusion)
Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., 52 U.S.P.Q.2d 1557 (E.D. Va. 1999)
(Likelihood of Confusion)
Millennium Laboratories, Inc. v. Ameritox, Ltd., 924 F. Supp. 2d 594 (4th Cir.
2013) (False Advertising) (Daubert/Admissibility Issues)
PBM Products,LLC v. Mead Johnson Nutrition Co., 639 F.3d 111 (4th Cir. 2011) (False
Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D.
Va. 2010) (False Advertising) (Daubert/Admissibility Issues)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404 (E.D.
Va. 2010) (False Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18460 (E.D.
Va. 2010) (False Advertising)
PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 120200
(E.D. Va. 2009) (False Advertising)
369
Fourth Circuit
PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 119755
(E.D. Va. 2009) (False Advertising)
Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d
715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues)
Pure Fishing, Inc. v. Redwing Tackle, Ltd., 2012 U.S. Dist LEXIS 115390 (D. S.C. 2012)
(Likelihood of Confusion)
The Radiance Foundation, Inc. v. National Association For The Advancement Of Colored
People, 2013 U.S. Dist. LEXIS 188098 (E.D. Va. 2013) (Daubert/Admissibility Issues)
(Likelihood of Confusion) (Dilution)
Resorts of Pinehurst Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417 (4th Cir. 1998) (Likelihood of
Confusion)
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development,
170 F.3d 449 (4th Cir. 1999) (Fame) (Dilution)
Rosetta Stone Ltd. v. Google Inc., 676 F.3d 144 (4th Cir. 2012) (Likelihood of Confusion)
Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010) (Likelihood of
Confusion)
The Scotts Co. v. Pennington Seed, Inc., 2012 U.S. Dist. LEXIS 170573 (E.D. Va. 2012)
(False Advertising)
The Scotts Co. v. United Industries Corp., 315 F.3d 264 (4th Cir 2002) (False Advertising)
Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567 (E.D. Va. 2000)
(Likelihood of Confusion)
U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517 (4th Cir 2002) (Secondary Meaning)
X-IT Products, L.L.C. v. Walter Kidde Portable Equipment, Inc., 155 F. Supp. 2d 577 (E.D. Va.
2001) (Likelihood of Confusion)
370
Fourth Circuit
Fifth Circuit
Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of
Confusion) (Dilution)
Blendco, Inc. v. Conagra Foods, Inc., 2005 U.S. App. LEXIS 9075 (5th Cir. 2005)
(Descriptiveness)
The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657
(W.D. Tex. 2008) (Fame)
The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 2007 U.S. Dist.
LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues)
Bd. of Supervisors for Louisiana State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th
Cir. 2008) (Likelihood of Confusion)
Bd. of Supervisors of the Louisiana State Univ. v. Smack Apparel Co., 438 F. Supp. 2d
653 (E.D. La. 2006) (Likelihood of Confusion)
Brennan’s, Inc. v. Dickie Brennan and Co., Inc., 2002 U.S. Dist. LEXIS 28235 (E.D. La.
2002) (Likelihood of Confusion)
Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary,
2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning) (Daubert/Admissibility
Issues)
Citizens Nat’l Bank of Meridian v. The Citizens Bank of Philadelphia, 157 F. Supp. 2d 713 (S.D.
Miss. 2001) (Likelihood of Confusion)
Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc., 616 F. Supp. 2d
622 (N.D. Tex. 2009) (Likelihood of Confusion)
Eastman Chemical Company v Plastipure, Inc. 969 F. Supp. 2d 756 (W.D. Tex. 2013)
(False Advertising) (Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 817 F. Supp. 2d 846 (W.D. La. 2011) (Genericness)
(Secondary Meaning) (Daubert/Admissibility Issues)
Firefly Digital, Inc. v. Google, Inc., 2011 U.S. Dist LEXIS 73259 (W.D. La. 2011)
(Genericness) (Secondary Meaning) (Daubert/Admissibility Issues)
The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS
32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
371
Fifth Circuit
Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist.
LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
Healthpoint, Ltd v. Ethex Corp., 2004 U.S. Dist. LEXIS 27500 (W.D. Tex. 2004) (False
Advertising)
Healthpoint, Ltd v. Ethex Corp., 273 F. Supp. 2d 817 (W.D. Tex. 2004) (False Advertising)
Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470 (W.D. Tex.
2001) (False Advertising)
Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22229 (W.D. Tex.
2001) (False Advertising)
Healthpoint, Ltd. v. Ethex Corp., 273 F. Supp. 2d 817 (W.D. Tex. 2001) (False Advertising)
Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999) (Likelihood of Confusion)
Honestech, Inc. v. Sonic Solutions, 2011 U.S. App. LEXIS 12816 (5th Cir. 2011)
(Secondary Meaning) (Daubert/Admissibility Issues)
Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573 (W.D. Tex. 2010) (Secondary
Meaning)
Ironclad, L.P. v. Poly-America, Inc., 2000 U.S. Dist. LEXIS 10728 (N.D. Tex. 2000)
(Likelihood of Confusion)
Ironclad, L.P. v. Poly-America, Inc., 1999 U.S. Dist. LEXIS 16265 (N.D. Tex. 1999)
(Likelihood of Confusion)
Kensington Partners v. Cordillera Ranch, Ltd., 1998 U.S. Dist. LEXIS 23673 (W.D. Tex.
1998) (Secondary Meaning)
Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D.
Tex. 2006) (False Advertising) (Daubert/Admissibility Issues)
Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex.
2005) (False Advertising) (Dilution)
KIS, S.A. v. Foto Fantasy, Inc., 240 F. Supp. 2d 608 (N.D. Tex. 2002) (Likelihood of Confusion)
Landmark American Ins. Co. v. Rosie Ray, 2006 U.S. Dist. LEXIS 95517 (W.D. Tex.
2006) (False Advertising)
372
Fifth Circuit
MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La.a 1996) (Breach
of Contract) (Daubert/Admissibility Issues)
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003)
(Genericness) (Secondary Meaning)
March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 162 F. Supp. 2d 560 (N.D. Tex. 2001)
(Genericness)
Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) (Likelihood of
Confusion)
Oreck Holdings, L.L.C. v. Euro-Pro Corp., 2007 U.S. Dist. LEXIS 5830 (E.D. La. 2007)
(Likelihood of Confusion)
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning)
(Likelihood of Confusion)
Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (False Advertising)
Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp. 2d 600 (N.D. Tex. 2000) (False
Advertising) (Daubert/Admissibility Issues)
Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D.
Miss. 2007) (Secondary Meaning)
RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 3528 (N.D. Tex. 2003)
(Likelihood of Confusion)
RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 1569 (N.D. Tex. 2003)
(Likelihood of Confusion)
Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356 (S.D. Tex.
2009) (Likelihood of Confusion)
Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Scott O’Grady v. Twentieth Century Fox Film Corp., 2003 U.S. Dist LEXIS 24936 (E.D. Tex.
2003) (False Advertising)
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884 (S.D. Tex.
2011) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary
Meaning)
373
Fifth Circuit
Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949
(S.D. Tex. 2001) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 2001 U.S. Dist. LEXIS 17468
(S.D. Tex. 2001) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 214 F.3d 658 (5th Cir. 2000)
(Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 103 F. Supp. 2d 935 (S.D. Tex.
1999) (Likelihood of Confusion)
Westchester Media Co. L.P. v. PRL United States Holdings Inc., 1998 U.S. Dist. LEXIS 11737
(S.D. Tex. 1998) (Likelihood of Confusion)
374
Fifth Circuit
Sixth Circuit
AutoZone, Inc. and Speedbar, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (Secondary
Meaning)
Autozone, Inc. and Speedbar, Inc. v. Tandy Corp., 174 F. Supp. 2d 718 (M.D. Tenn. 2001)
(Secondary Meaning)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366
(6th Cir. (Secondary Meaning) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800
(E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D.
Mich. 2008) (Likelihood of Confusion)
Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325
(E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Edward W. Tovey v. Nike, Inc. 2014 U.S. Dist. LEXIS 93905 (N.D. Ohio 2014)
(Likelihood of Confusion) (Daubert/Admissibility issues)
ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (Likelihood of Confusion)
Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926 (M.D. Tenn. 2001)
(Genericness)
General Conference Corp. of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist.
LEXIS 45526 (W.D. Tenn. 2008) (Genericness)
General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary
Meaning) (Likelihood of Confusion)
Georgia-Pacific Consumer Prods. LP v. Four-U-Packaging, Inc., 2012 U.S. App. LEXIS
25466 (6th Cir. 2012) (Likelihood of Confusion)
Georgia-Pacific Consumer Prods. LP v. Four-U-Packaging, Inc., 821 F. Supp. 2d 948
(N.D. Ohio 2011) (Likelihood of Confusion)
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15129 (S.D. Ohio 2004) (False
Advertising)
375
Sixth Circuit
The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15134 (S.D. Ohio 2004) (False
Advertising)
Innovation Ventures, LLC v. N2G Distributing, Inc., 2011 U.S. Dist. LEXIS 137115
(E.D. Mich. 2011) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Innovation Ventures, LLC v. N2G Distributing, Inc., 779 F. Supp. 2d 671 (E.D. Mich.
2011) (Secondary Meaning)
Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723 (6th Cir. 2012) (Likelihood of
Confusion)
Innovation Ventures, LLC v. N.V.E., Inc., 2010 U.S. Dist. LEXIS 96004 (E.D. Mich.
2010) (Likelihood of Confusion)
K’arsan Corp. v. Christian Dior Perfumes, Inc., 166 F.3d 1214 (6th Cir. 1998) (Likelihood of
Confusion)
Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790 (W.D. Tenn. 2001) (Dilution)
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007)
(Likelihood of Confusion)
Leelanau Wine Cellars, Ltd .v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich. 2006)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp. 2d 700 (N.D. Ohio 1999) (Secondary Meaning)
Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671 (W.D.
Ky. 2010) (Likelihood of Confusion)
Papa Ads, LLC v. Gatehouse Media, Inc., 2011 U.S. Dist. LEXIS 155496 (N.D. Ohio
2011) (Likelihood of Confusion)
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D.
Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523 (E.D. Mich. 2006) (Likelihood
of Confusion)
The Procter & Gamble Co. v. Georgia-Pacific Consumer Products LP, 2009 U.S. Dist.
LEXIS 72052 (S.D. Ohio 2009) (Likelihood of Confusion)
Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D.
Ohio 1999) (Secondary Meaning) (Likelihood of Confusion)
376
Sixth Circuit
Rocky Brands, Inc. v. Red Wing Shoe Co., Inc., 2009 U.S. Dist. LEXIS 122929 (S.D.
Ohio 2009) (False Advertising)
Safe Auto Ins. Co. v. State Automobile Mutual Inc. Co., 2009 U.S. Dist. LEXIS 94859
(S.D. Ohio 2009) (Likelihood of Confusion)
Schneider Saddlery Co., Inc. v. Best Shot Pet Products Int’l, LLC, 2009 U.S. Dist. LEXIS
27227 (N.D. Ohio 2009) (Likelihood of Confusion)
Static Control Components, Inc. v. Lexmark Int’l, Inc., 2007 U.S. Dist. LEXIS 32489 (E.D. Ky.
2007) (False Advertising)
T. Marzetti Co. v. Roskam Baking Co., 680 F.3d 629 (6th Cir. 2012) (Secondary Meaning)
Volkswagen AG v. Dorling Kindersley Publishing, Inc., 614 F. Supp. 2d 793 (E.D. Mich.
2009) (Likelihood of Confusion)
Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D.
Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues)
Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2005 U.S. Dist. LEXIS 30311 (W.D.
Mich. 2005) (Secondary Meaning)
Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561 (E.D. Ky.
2004) (Secondary Meaning)
377
Sixth Circuit
Seventh Circuit
AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir
2002) (Secondary Meaning) (Likelihood of Confusion)
Atlas Electric Devices Co. v. Q-Panel Lab Products Corp., 2001 U.S. Dist. LEXIS 24308 (N.D.
Ill. 2001) (Secondary Meaning)
Baniel v. Guild, 2000 WL 1349254 (N.D. Ill. 2000) (Genericness)
Best Vacuum, Inc. v. Ian Design, Inc., 2006 U.S. Dist. LEXIS 87260 (N.D. Ill. 2006)
(Secondary Meaning)
Blue Cross and Blue Shield Ass’n v. American Exp. Co., 1999 U.S. Dist. LEXIS 17994 (N.D. Ill.
1999) (Likelihood of Confusion)
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 805 F. Supp. 2d 503 (N.D. Ill. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Bretford Mfg., Inc. v. Smith System Mfg. Co., 116 F. Supp. 2d 951 (N.D. Ill. 2000) (Secondary
Meaning)
Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705 (N.D. Ill. 1998) (Likelihood of
Confusion)
Chattanoga Mfg., Inc. v. Nike, Inc., 140 F. Supp. 2d 917 (N.D. Ill. 2001) (Likelihood of
Confusion)
Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010)
(Patent) (Daubert/Admissibility Issues)
Continental Datalabel, Inc. v. Avery Dennison Corp., 2012 U.S. Dist. LEXIS 160802
(E.D. Ill. 2012) (False Advertising)
Dwyer Instruments, Inc. v. Sensocon, Inc., 2012 U.S. Dist. LEXIS 21308 (N.D. Ind.
2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Dyson, Inc. v. Bissell Homecare, Inc. 951 F. Supp. 2d 1009 (N.D. Ill. 2013) (False
Advertising) (Daubert/Admissibility Issues)
Eco Mfg. LLC v. Honeywell Int’l, Inc., 2003 U.S. Dist. LEXIS 11384 (S.D. Ind. 2003)
(Likelihood of Confusion)
378
Seventh Circuit
Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321 (N.D. Ill. 1999)
(Likelihood of Confusion)
Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062 (7th Cir. 2004) (Likelihood of
Confusion)
Frank M. Sullivan, III v. CBS Corp., 2002 U.S. Dist. LEXIS 6625 (N.D. Ill. 2002) (Likelihood of
Confusion)
Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill.
2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill.
2003) (Secondary Meaning) (Daubert/Admissibility Issues)
Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 5940 (N.D. Ill.
2003) (Secondary Meaning)
H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (Likelihood
of Confusion)
Hearthware, Inc. v. E. Mishan & Sons, Inc., 2012 U.S. Dist. LEXIS 113932 (N.D. Ill.
2012) (Likelihood of Confusion) (False Advertising)
Hot Wax Inc. v. Turtle Wax Inc., 27 F. Supp. 2d 1043 (N.D. Ill. 1998) (False Advertising)
Hot Wax, Inc. v. Warsaw Chemical Co., Inc., 45 F. Supp. 2d 635 (N.D. Ill. 1999) (False
Advertising)
Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 U.S. Dist. LEXIS 6664 (N.D.
Ind. 2007) (Likelihood of Confusion)
LG Electronics v. Whirlpool Corp., 790 F. Supp. 2d 708 (N.D. Ill. 2011) (False
Advertising)
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 145127 (N.D. Ill. 2010)
(False Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False
Advertising) (Daubert/Admissibility Issues)
LG Electronics v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill. 2009) (False
Advertising) (Daubert/Admissibility Issues)
379
Seventh Circuit
Mead Johnson & Co. v. Abbott Laboratories, 209 F.3d 1032 (7th Cir. 2000) (False Advertising)
Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000) (False Advertising)
Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879 (S.D. Ind. 1999) (False
Advertising)
Miche Bag, LLC v. The Marshall Group, 2010 U.S. Dist. LEXIS 59900 (N.D. Ind. 2010)
(Likelihood of Confusion)
Moen, Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp. 2d 680 (N.D. Ill. 1999) (Patent)
(Daubert/Admissibility Issues)
Morningware, Inc. v. Hearthware Home Products, Inc., 2012 U.S. Dist. LEXIS 121333
(N.D. Ill. 2012) (Likelihood of Confusion) (False Advertising)
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution)
(Daubert/Admissibility Issues)
National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc.,
16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution)
(Daubert/Admissibility Issues)
Native American Arts v. Earthdweller, Ltd. and The Waldron Corp., 2002 U.S. Dist. LEXIS
9750 (N.D. Ill. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Navistar Int’l Transportation Corp. v. Freightliner Corp., 52 U.S.P.Q.2d 1074 (N.D. Ill. 1998)
(Likelihood of Confusion)
Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004) (Descriptiveness)
Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 22774 (N.D. Ill. 2003)
(Descriptiveness)
Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 14937 (N.D. Ill. 2003)
(Descriptiveness)
PTS Labs LLC v. Abbott Laboratories, 126 F. Supp. 2d 538 (N.D. Ill. 2000) (Patent)
Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind.
2004) (Likelihood of Confusion) (Patent)
Sanfield Inc. v. Finlay Fine Jewelry Corp., 999 F Supp 1102 (N.D. Ill. 1998) (False Advertising)
Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill.
1998) (Secondary Meaning) (Likelihood of Confusion)
380
Seventh Circuit
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Simon Property Group, L.P. v. mySimon, Inc., 2003 U.S. Dist. LEXIS 5438 (S.D. Ind. 2003)
(Secondary Meaning)
Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002) (Likelihood of
Confusion)
Simon Property Group, L.P. v. mySimon, Inc., 2001 U.S. Dist. LEXIS 852 (S.D. Ind. 2001)
(Likelihood of Confusion)
Simon Property Group L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227 (S.D. Ind. 2000)
(Fame)
Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033 (S.D. Ind. 2000) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Sunstar, Inc. v. Alberto-Culver Co., Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007)
(Likelihood of Confusion)
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (Secondary Meaning)
Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912 (N.D. Ill. 2001) (Secondary
Meaning)
Ty Inc. v. The Jones Group, Inc., 98 F. Supp. 2d 988 (N.D. Ill. 2000) (Secondary Meaning)
Ty, Inc. v. Publications Int’l Ltd., 2000 U.S. Dist. LEXIS 15382 (N.D. Ill. 2000) (Copyright)
Ty Inc. v. Softbelly’s Inc., 2006 WL 5111124 (N.D. Ill. 2006) (Secondary Meaning)
Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528 (7th Cir. 2003) (Genericness)
Ty, Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness)
(Secondary Meaning)
Tylka v. Gerber Products Co., 1999 WL 495126 (N.D. Ill. 1999) (False Advertising)
V & S Vin & Sprit Aktiebolag v. Cracovia Brands, Inc., 2004 U.S. Dist. LEXIS 17 (N.D. Ill.
2004) (Likelihood of Confusion)
381
Seventh Circuit
Eighth Circuit
3M Co. v. Pradeep Mohan, 2012 U.S. App. LEXIS 10753 (Fed. Cir. 2012) (Likelihood of
Confusion)
3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 124672 (D. Minn. 2010) (Likelihood
of Confusion)
3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 81094 (D. Minn. 2010) (Likelihood
of Confusion)
Am. Ass’n for Justice v. The Am. Trial Lawyers Ass’n, 698 F. Supp. 2d 1129 (D. Minn.
2010) (Likelihood of Confusion)
American Equity Mortgage, Inc. v. Ray Vinson, Jr., 2005 U.S. Dist. LEXIS 32160 (E.D. Mo.
2005) (False Advertising) (Daubert/Admissibility Issues)
American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387 (8th Cir. 2004) (False
Advertising)
Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258 (E.D. Mo.
2008) (Likelihood of Confusion)
Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc., 829 F. Supp. 2d 802 (D. Minn.
2011) (False Advertising) (Daubert/Admissibility Issues)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D.
Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 81329 (D.
Minn. 2010) (Likelihood of Confusion)
Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D.
Minn. 2008) (Likelihood of Confusion)
Everest Capital Ltd., v. Everest Funds Mgmt., 393 F.3d 755 (8th Cir. 2005) (Likelihood of
Confusion)
Fair Isaac Corp. v. Experian Information Solutions, Inc., 2009 U.S. Dist. LEXIS 64022
(D. Minn. 2009) (Secondary Meaning)
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 679 F.3d 763 (8th Cir.
2012) (Likelihood of Confusion)
The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist.
LEXIS 82980 (D. S.D. 2009) (Likelihood of Confusion)
382
Eighth Circuit
Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000)
(Secondary Meaning) (Likelihood of Confusion) (Dilution)
Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005)
(Secondary Meaning) (Likelihood of Confusion)
Frosty Treats, Inc. v. Sony Computer Entm’t, 2004 U.S. Dist. LEXIS 31526 (W.D. Mo. 2004)
(Likelihood of Confusion)
Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503; 2004 (8th Cir. 2004) (Likelihood of
Confusion)
Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461 (D. S.D. 2003)
(Likelihood of Confusion)
Gateway, Inc. v. Companion Products, Inc., 320 F. Supp. 2d 912 (D. S.D. 2002) (Likelihood of
Confusion)
Georgia –Pacific Consumer Products, LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir.
2010) (Likelihood of Confusion)
Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS
63774 (W.D. Ark. 2009) (Likelihood of Confusion)
Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS
54401 (W.D. Ark. 2009) (Likelihood of Confusion)
Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919 (D. Minn. 1998) (Likelihood of
Confusion)
Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Home Builders Ass’n of Great St. Lous v. L&L Exhibition Mgmt., Inc., 1999 U.S. Dist.
LEXIS 23525 (E.D. Mo. 1999) (Secondary Meaning)
Louis E. Kemp, Superior Seafoods, Inc. v. Bumble Bee Seafoods, Inc., 398 F.3d 1049 (8th Cir.
2005) (Likelihood of Confusion)
Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316 (D. Minn. 2002)
(Likelihood of Confusion)
Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 2012 U.S. Dist. LEXIS 181031 (D.
Neb. 2012) (Distinctiveness)
383
Eighth Circuit
Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 2012 U.S. Dist. LEXIS 143168 (D.
Neb. 2012) (Distinctiveness)
Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827 (8th Cir. 1999) (Likelihood of Confusion)
Millennium Import Co. v. Sidney Frank Importing Co., Inc., 2004 U.S. Dist LEXIS 11871 (D.
Minn. 2004) (False Advertising)
Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997 (D. Minn.
2000) (Secondary Meaning)
Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP, 2002 U.S. Dist. LEXIS
13991 (D. Minn. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn.
2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)
PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010)
(Genericness) (Secondary Meaning)
Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623
(S.D. S.D. 2009) (False Advertising)
R.H. Donnelley Inc. v. USA Northland Directories, Inc., 2004 U.S. Dist. LEXIS 26902 (D. Minn.
2004) (Secondary Meaning)
Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (Genericness)
Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016 (D. Minn. 2005) (Secondary
Meaning)
The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004)
(Genericness) (Secondary Meaning)
Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045 (D. Minn. 1999) (False
Advertising)
384
Eighth Circuit
Ninth Circuit
3M Co. v. Rollit, LLC, 2008 U.S. Dist. LEXIS 123592 (N.D. Cal. 2008) (Likelihood of
Confusion)
A & M Records v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (Copyright)
A & M Records v. Napster, Inc., 2000 U.S. Dist. LEXIS 20668 (N.D. Cal. 2000) (Copyright)
A & M Records v. Napster, Inc., 114 F Supp 2d 896 (N.D. Cal. 2000) (Copyright)
A & M Records v. Napster, Inc., 2000 WL 1009483) (N.D. Cal. 2000) (Copyright)
adidas America, Inc. v. Kmart Corp., 2006 U.S. Dist. LEXIS 49766 (D. Or. 2006)
(Likelihood of Confusion)
adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or.
2008) (Likelihood of Confusion)
adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007)
(Likelihood of Confusion) (Fame)
adidas-Salomon AG and adidas America, Inc. v. Target Corp., 2003 U.S. Dist. LEXIS 28068 (D.
Or. 2003) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp., 2002 U.S. Dist. LEXIS 25141 (D.
Or. 2002) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp.; 2002 U.S. Dist. LEXIS 19592 (D.
Or. 2002) (Likelihood of Confusion)
adidas-Salomon AG and adidas America, Inc. v. Target Corp.; 2002 U.S. Dist. LEXIS 2262 (D.
Or. 2002) (Likelihood of Confusion)
Aerus LLC v. ProTeam, Inc., 2007 U.S. Dist. LEXIS 97683 (S.D. Cal. 2007) (Secondary
Meaning)
Amer. Optometric Society, Inc. v. Amer. Bd. of Optometry, Inc., 2012 U.S. Dist. LEXIS
171295 (C.D. Cal. 2012) (False Advertising)
Amer. Optometric Society, Inc. v. Amer. Bd. of Optometry, Inc., 2012 U.S. Dist. LEXIS
81379 (C.D. Cal. 2012) (False Advertising)
Apple, Inc. v. Samsung Electronics Co., LTD. 2014 U.S. Dist. LEXIS 29721 (N.D. Cal.
2014) (Patents)
385
Ninth Circuit
Apple, Inc. v. Samsung Electronics Co., 2012 U.S. Dist. LEXIS 90877 (N.D. Cal. 2012)
(Secondary Meaning) (Likelihood of Confusion) (Fame) (Dilution)
(Daubert/Admissibility Issues)
Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 U.S. Dist. LEXIS 115007
(N.D. Cal. 2009) (False Advertising)
Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS
19221, (C.D. Cal. 2007) (Genericness)
Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (Fame)
Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236 (D. Haw. 2003)
(Genericness)
Bobrick Washroom Equipment, Inc. v. American Specialties, Inc., 2012 U.S. Dist. LEXIS
111465 (C.D. Cal. 2012) (Likelihood of Confusion)
Brighton Collectibles, Inc. vs. RK Texas Leather Mfg., 923 F. Supp. 2d 1245
(S.D. Ca. 2013) (Likelihood of Confusion)
Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212 (C.D. Cal. 2000) (Likelihood of Confusion)
Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998) (Likelihood of Confusion)
California Board Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal.
2007) (Secondary Meaning)
Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176 (W.D.
Wash. 2010) (False Advertising)
Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708
(N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)
Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1062 (C.D. Cal. 1999) (Secondary Meaning)
CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False
Advertising)
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525 (C.D. Cal.
2007) (Genericness)
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2006 U.S. Dist. LEXIS 97200 (C.D. Cal.
2006) (Likelihood of Confusion)
Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) (Secondary Meaning)
386
Ninth Circuit
ConsumerInfo.com, Inc. v. Money Management Int’l, Inc., 2008 U.S. Dist. LEXIS 79303
(C.D. Cal. 2008) (Likelihood of Confusion)
Credit One Corp. v. Credit One Financial,Inc., 2009 U.S. Dist. LEXIS 99029 (C.D. Cal.
2009) (Secondary Meaning)
CSC Brands LP v. Herdez Corp., 191 F. Supp. 2d 1145 (E.D. Cal. 2001) (Likelihood of
Confusion)
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 2012 U.S. Dist. LEXIS 126976 (E.D. Cal.
2012) (Likelihood of Confusion) (False Advertising)
Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009)
(Likelihood of Confusion)
Don Henley v. Charles S. Devore, 2010 U.S. Dist. LEXIS 67987 (C.D. Cal. 2010)
(Likelihood of Confusion)
Duncan McIntosh Co. Inc. v. Newport Dunes Marina LLC, 324 F. Supp. 2d 1078 (C.D. Cal.
2004) (Likelihood of Confusion)
Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz.
2007) (Secondary Meaning) (Likelihood of Confusion)
Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297 (D. Or. 2004)
(Likelihood of Confusion)
Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 9074 (D. Or. 2004)
(Likelihood of Confusion)
E & J Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10669 (E.D. Cal. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
E & J Gallo v. Proximo Spirits, Inc., 2011 U.S. Dist. LEXIS 136053 (E.D. Cal. 2011)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006)
(Likelihood of Confusion)
Excelligence Learning Corp. v. Oriental Trading Co., Inc., 2004 U.S. Dist. LEXIS 30370 (N.D.
Cal. 2004) (Secondary Meaning)
Express, LLC v. Forever 21, Inc., 2010U.S. Dist. LEXIS 91705 (C.D. Cal. 2010)
(Secondary Meaning)
387
Ninth Circuit
Federal Trade Commission v. John Stefanchik, 559 F.3d 924 (9th Cir. 2009) (False
Advertising)
Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148 (D. Nev.
2010) (Likelihood of Confusion)
Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155
(C.D. Cal. 2010) (Likelihood of Confusion)
Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Fuel Clothing Co., Inc. v. Safari Shirt Co., 2006 U.S. Dist. LEXIS 92052 (D. Or. 2006)
(Likelihood of Confusion)
Gerawan Farming, Inc. v. Prima Bella Produce, Inc., 2011 U.S. Dist. LEXIS 52792
(E.D. Cal. 2011) (Dilution)
Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Google, Inc. v. American Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450
(N.D. Cal. 2007) (Likelihood of Confusion) Not for Citation.
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, (9th Cir. 2000) (Likelihood of Confusion)
Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame)
Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary
Meaning) (Fame)
Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058 (C.D. Cal. 2009)
(Likelihood of Confusion)
Hansen Beverage Co. v. Vital Pharmaceutical, Inc., 2010 U.S. Dist. LEXIS 79218 (S.D.
Cal. 2010) (False Advertising)
Harry J. Binder v. Disability Group, Inc., 772 F. Supp. 2d 1172 (C.D. Cal. 2011)
(Likelihood of Confusion)
Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal.
2005) (False Advertising) (Daubert/Admissibility Issues)
Hispanic Broadcasting Corp. v. Educational Media Foundation, 2003 U.S. Dist. LEXIS 24804
(C.D. Cal. 2003) (Likelihood of Confusion)
388
Ninth Circuit
Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080
(C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility
Issues)
Instant Media, Inc. v. Microsoft Corp., 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007)
(Likelihood of Confusion)
Internet Specialties West, Inc. v. ISPWest, 2006 U.S. Dist. LEXIS 96361 (C.D. Cal.
2006) (Likelihood of Confusion)
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution)
James “Jim” Brown v. Electronic Arts, Inc.,724 F.3d 1235 (9th Cir. 2013) (Likelihood of
Confusion)
Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 97114 (C.D. Cal. 2006)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006) (Secondary
Meaning) (Likelihood of Confusion)
Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (Likelihood
of Confusion)
Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116622 (D.
Nev. 2009) (Likelihood of Confusion)
Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116624 (D.
Nev. 2009) (Likelihood of Confusion)
Kim Seng Co. v. J&A Importers, Inc., 810 F. Supp. 2d 1046 (C.D. Cal. 2011) (Likelihood
of Confusion)
Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal.
2003) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary
Meaning) (Likelihood of Confusion)
Leatherman Tool Group, Inc. v. Coast Cutlery Co., 823 F. Supp. 2d 1150 (D. Or. 2011)
(False Advertising)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011)
(Fame) (Dilution)
389
Ninth Circuit
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923
(N.D. Cal. 2009) (Likelihood of Confusion) (Fame)
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625
(N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Fame)
Loblaw Cos. Ltd. v. Guita M. Azimi, 2001 U.S. Dist. LEXIS 26500 (N.D. Cal. 2001)
(Secondary Meaning)
M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion)
(Daubert/Admissibility Issues)
M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061 (C.D. Cal. 2000) (Fame)
Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917 MMM (VBKx)
(C.D. Cal. 2005) (Likelihood of Confusion)
Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (C.D. Cal. 1998) (Likelihood of
Confusion)
Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) (Copyright)
Metro-Goldwyn-Mayer Pictures, Inc. v. Mark Brown, 2004 U.S. Dist. LEXIS 29562 (C.D. Cal.
2004) (Likelihood of Confusion)
Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, (W.D. Wash. 2002)
(Genericness)
Mutual Pharmaceutical Co. v. Ivax Pharmaceuticals, Inc., 459 F. Supp. 2d 925 (C.D.
Cal. 2006) (False Advertising)
The Nautilus Group, Inc. v. Savvier, Inc., 427 F. Supp. 2d 990 (W.D. Wash. 2006)
(Likelihood of Confusion)
Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D.
Or. 2006) (Likelihood of Confusion) (Dilution)
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007) (Dilution)
Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966 (E.D. Cal. 2007) (Dilution)
Nissan Motor Co. v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487
(C.D. Cal. 2007) (Dilution)
Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (Fame)
390
Ninth Circuit
Nissan Motor Co. v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (C.D. Cal. 2000) (Likelihood
of Confusion)
Oracle Corp. v. Light Reading, Inc., 233 F. Supp. 2d 1228 (N.D. Cal. 2002) (Likelihood of
Confusion)
PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of
Confusion) (Dilution)
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Pom Wonderful LLC v. The Coca Cola Co., 727 F. Supp. 2d 849 (C.D. Cal. 2010) (False
Advertising)
Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D.
Cal. 2008) (Genericness) (Secondary Meaning)
Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237 (N.D. Cal. 2010) (Likelihood of
Confusion)
R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood
of Confusion) (Daubert/Admissibility Issues)
Rain Bird Corp. v. Hit Products Corp., 2004 U.S. Dist LEXIS 20790 (C.D. Cal. 2004)
(Likelihood of Confusion)
Red Bull GmbH v. Matador Concepts, Inc., 2006 U.S. Dist. LEXIS 96764 (C.D. Cal.
2006) (Likelihood of Confusion)
Resource Lenders, Inc. v. Source Solutions, Inc., 2005 U.S. Dist. LEXIS 38732 (E.D. Cal. 2005)
(Secondary Meaning)
Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Richard Reinsdorf v. Skechers U.S.A., 2012 U.S. Dist. LEXIS 145495 (C.D. Cal. 2012)
(Copyright) (Daubert/Admissibility Issues)
Seed Lighting Design Co., Ltd. v. Home Depot, 2005 U.S. Dist. LEXIS 44741 (N.D. Cal. 2005)
(Secondary Meaning)
Sharper Image Corp. v. Target Corp., 425 F. Supp. 2d 1056 (N.D. Cal. 2006)
(Likelihood of Confusion)
391
Ninth Circuit
Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418 (D. Nev. 2006)
(Secondary Meaning)
Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007)
(Likelihood of Confusion)
Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177 (C.D. Cal.
2001) (Secondary Meaning) (Daubert/Admissibility Issues)
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood
of Confusion) (Dilution)
Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 46167 (D. Or. 2005)
(Dilution)
Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832 (9th Cir. 2001)
(Genericness)
Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005) (Likelihood of
Confusion)
Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir 2002) (Likelihood of Confusion)
Thane Int’l Inc. v. Trek Bicycle Corp., 53 U.S.P.Q.2d 1523 (C.D. Cal. 1999) (Likelihood of
Confusion)
Tokidoki, LLC v. Fortune Dynamic, Inc., 2011 U.S. App. LEXIS 16292 (9th Cir. 2011)
(Likelihood of Confusion)
Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665 (C.D. Cal. 2009)
(Likelihood of Confusion)
Trafficschool.com, Inc. v. Edriver, Inc., 653 F.3d 820 (9th Cir. 2011) (False Advertising)
Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063 (C.D. Cal. 2008) (False
Advertising)
Trovan, Ltd. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7522 (C.D. Cal. 2000) (Likelihood of
Confusion)
Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783 (C.D. Cal. 2005)
(Genericness)
Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) (Dilution)
Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306 (D. Nev. 2008) (Fame)
392
Ninth Circuit
Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. Nev. 2007) (Dilution)
Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006)
(Dilution) (Daubert/Admissibility Issues)
Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520 (N.D.
Cal. 2007) (Secondary Meaning)
Warner Bros. Entm’t v. The Global Asylum, Inc., 2012 U.S. Dist. LEXIS 185695 (C.D.
Cal. 2012) (Secondary Meaning) (Likelihood of Confusion)
YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195 (C.D. Cal. 2002) (Likelihood of
Confusion)
Zipee Corp. and Zipee.com, Inc. v. United States Postal Service, 140 F. Supp. 2d 1084 (D. Or.
2000) (Genericness)
393
Ninth Circuit
Tenth Circuit
1-800 Contacts, Inc. v. Lens.Com, Inc., 722 F.3d 1229 (10th Cir. 2013) (Likelihood of
Confusion)
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389 (D. Utah 2010)
(Secondary Meaning) (Likelihood of Confusion)
1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568 (D.C. Colo. 2000) (False Endorsement)
Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 2005 U.S. Dist. LEXIS 31059 (D. Kan.
2005) (Likelihood of Confusion)
Big O Tires, Inc. v. Bigfoot 4X4, Inc. and Vulcan Chain and Webbing Products, Inc., 167 F.
Supp. 2d 1216 (D. Colo. 2001) (Likelihood of Confusion)
Brighton Collectibles, Inc. v. Coldwater Creek Inc., 2008 U.S. Dist. LEXIS 121561 (S.D.
Cal. 2008) (Secondary Meaning)
Robert Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004) (Genericness)
First Fidelity Bank v. Fidelity Bank, 2006 U.S. Dist. LEXIS 100879 (W.D. Okla. 2006)
(Secondary Meaning) (Daubert/Admissibility Issues)
First Savings Bank, F.S.B. v. U.S. Bancorp, 117 F. Supp. 2d 1061 (D. Kan. 2000) (Secondary
Meaning)
General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah
2010) (Secondary Meaning) (Likelihood of Confusion)
Healthone of Denver, Inc. v. UnitedHealth Group Inc., 872 S. Supp. 2d 1154 (D. Col.
2012) (Likelihood of Confusion)
Healthone of Denver, Inc. v. UnitedHealth Group Inc., 2012 U.S. Dist. LEXIS 4506 (D.
Colo. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Heartland Animal Clinic, P.A. v. Heartland SPCA Animal Medical Clinic, LLC, 2012
U.S. App. LEXIS 24435 (10th Cir. 2012) (Secondary Meaning)
Heartland Animal Clinic, P.A. v. Heartland SPCA Animal Medical Clinic, LLC, 861 F.
Supp. 2d 1293 (D. Kan. 2012) (Secondary Meaning)
Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 258 F. Supp. 2d 1197 (D. Kan. 2003) (False
Advertising)
394
Tenth Circuit
Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan.
2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Hornady Manufacturing Company, Inc. v. Doubletap, Inc. 746 F.3d 995 (10th Cir. 2014)
(Likelihood of Confusion)
Icon Health & Fitness, Inc. v. The Nautilus Group, Inc., 2004 U.S. Dist. LEXIS 31511
(D. Ut. 2004) (False Advertising)
Medi-Flex, Inc. v. NicePak Products, Inc., 422 F. Supp. 2d 1242 (D. Kan. 2006)
(Likelihood of Confusion)
Nestle Prepared Foods Co. v. Pocket Foods Corp., 2006 U.S. Dist. LEXIS 76213 (D.
Colo. 2006) (Likelihood of Confusion)
Primary Children’s Med. Ctr. Found. v. Scentsy, Inc., 2012 U.S. Dist. LEXIS 86318 (D.
Utah 2012) (Genericness)
Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp. 2d 809 (D. Kan. 1998)
(Likelihood of Confusion) (Daubert/Amissibility Issues)
The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah
2008) (False Advertising) (Daubert/Admissibility Issues)
Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir 2002)
(Likelihood of Confusion)
Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554 (D. Ut.
2009) (Likelihood of Confusion)
Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of
Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136 (10th Cir. 2013) (Likelihood of
Confusion)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 81592 (D. Colo. 2012
(Likelihood of Confusion)
Water Pik, Inc. v. Med-Systems, Inc., 848 F. Supp. 2d 1262 (D. Colo. 2012) (Likelihood
of Confusion)
395
Tenth Circuit
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 7738 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Water Pik, Inc. v. Med-Systems, Inc., 2012 U.S. Dist. LEXIS 1374 (D. Colo. 2012)
(Likelihood of Confusion) (Daubert/Admissibility Issues)
Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary
Meaning) (Daubert/Admissibility Issues)
396
Tenth Circuit
Eleventh Circuit
Alltel Corp. v. Actel Integrated Communications Inc., 42 F. Supp. 2d 1265 (S.D. Ala. 1999)
(Likelihood of Confusion)
Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp.
2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues)
BellSouth Advertising & Publishing Corp. v. Lambert Publishing, 45 F. Supp. 2d 1316 (S.D. Ala.
1999) (False Advertising)
The Bd. of Regents of the Univ. System of Georgia d/b/a The Georgia Institute of Technology v.
Buzas Baseball, Inc., d/b/a The Salt Lake Buzz, 176 F. Supp. 2d 1338 (N.D. Ga. 2001)
(Likelihood of Confusion)
Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999)
(Likelihood of Confusion) (Fame)
Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS
82638 (N.D. Ga. 2010) (Likelihood of Confusion)
Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS
66061 (N.D. Ga. 2010) (Likelihood of Confusion)
General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154 (S.D. Fla.
2000) (Secondary Meaning)
Hi Ltd. v. Winghouse of Florida, 2004 U.S. Dist LEXIS 30687, (M.D. Fla. 2004)
(Daubert/Admissibility Issue
Hickson Corp. v. Northern Crossarm Co., Inc., 357 F.3d 1256 (11th Cir. 2004) (False
Advertising)
Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (N.D. Ga.
2002) (Likelihood of Confusion) ((Daubert/Admissibility Issues)
MPS Entertainment, LLC v. Abercrombie & Fitch Stores, Inc. 2013 U.S. Dist. LEXIS
91193, (S.D. Fla. 2013) (Daubert/Admissibility Issues)
Native Amer. Arts, Inc. v. Bud K World Wide, Inc., 2012 U.S. Dist. LEXIS 69715 (M.D.
Ga. 2012) (Likelihood of Confusion) (Daubert/Admissibility Issues)
Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS
95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues)
397
Eleventh Circuit
Pods Enterprises, Inc. vs. U-Haul International, Inc., 2014 U.S. Dist. LEXIS 80208
(M.D. Fla. 2014) (Genericness) (Daubert/Admissibility Issues)
Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347 (S.D. Fla. 1998)
(Likelihood of Confusion)
Schütz Container Systems, Inc. v. Mauser Corporation, 2014 U.S. Dist. LEXIS 44059
(N.D. Ga. 2014) (False Advertising) (Daubert/Admissibility Issues)
Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of
Confusion) (Dilution) (Daubert/Admissibility Issues)
Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008)
(Secondary Meaning) (Daubert/Admissibility Issues)
Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 683 F.3d 1266 (11th Cir. 2012)
(Likelihood of Confusion)
Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238
(N.D. Ala. 2009) (Likelihood of Confusion)
Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist.
LEXIS 3659 (S.D. Fla. 2007) (Secondary Meaning)
398
Eleventh Circuit
D.C. Circuit
Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572 (D. D.C. 2007) (First
Amendment)
Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45 (D. D.C. 2006) (First
Amendment)
Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1 (D. D.C. 2006)
(Genericness)
Pro-Football, Inc. v. Suzan Shown Harjo, 284 F. Supp. 2d 96 (D. D.C. 2003)
(Scandalous/Disparaging)
Winner Int’l Royalty Corp. v. Wang, 11 F. Supp. 2d 18 (D. D.C. 1998) (Patent)
399
D. C. Circuit
Federal Circuit
3M Co. v. Pradeep Mohan, 2012 U.S. App. LEXIS 10753 (Fed. Cir. 2012) (Likelihood of
Confusion)
Bridgestone v. Federal Corp., 673 F.3d 1330 (Fed. Cir. 2012) (Likelihood of Confusion)
Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (Fame)
Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073
(Fed. Cir. 1998) (Likelihood of Confusion)
In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (Genericness)
Leonard Studio Equipment, Inc. v Desmar Corp., 173 F.3d 435 (Table): 1998 WL 712452
(CAFC), designated “Unpublished Disposition” (Fed. Cir. 1998) (Likelihood of Confusion)
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 2012 U.S. App. LEXIS 17258 (Fed. Cir.
2012) (Dilution)
In re Spirits Int’l, N.V., 563 F.3d 1347 (Fed. Cir. 2009) (Geographically Deceptively
Misdescriptive)
In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (Secondary Meaning)
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (Patent
Infringement)
400
Federal Circuit
Trademark Trial & Appeal Board
In re 1-800 CONTACTS, INC., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness)
(Secondary Meaning)
7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of
Confusion)
Ahold Licensing SA v. Premium Nutritional Products, Inc., 2011 T.T.A.B. LEXIS 411
(T.T.A.B. 2011) (Fame)
Amazon Technologies, Inc. v. Geoffrey R. Daigle, 2013 TTAB LEXIS 298, (T.T.A.B.
2013) (Genericness)
America Online v. Prabhu Mohapatra, 2004 T.T.A.B. LEXIS 455 (T.T.A.B. 2004) (Likelihood
of Confusion)
American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 244 (T.T.A.B.
2006) (Secondary Meaning)
American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195 (T.T.A.B. 2006)
(Secondary Meaning)
American Girl, LLC v. Barry Epstein, 2009 T.T.A.B. LEXIS 412 (T.T.A.B. 2009)
(Secondary Meaning)
Anvil Knitwear, Inc. v. Success Ware Inc., 2004 T.T.A.B. LEXIS 361 (Secondary Meaning)
Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310 (T.T.A.B. 2003)
(Genericness)
Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (Genericness)
(Daubert/Admissibility Issues) (T.T.A.B. 2000)
Ava Enterprises, Inc. v. Audio Boss USA, Inc., 2006 T.T.A.B. LEXIS 17 (T.T.A.B. 2006)
(Likelihood of Confusion)
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16
(T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion)
The Black Dog Tavern Co., Inc. v. Elizabeth A. Frechette, 2006 T.T.A.B. LEXIS 835
(T.T.A.B. 2006) (Likelihood of Confusion)
The Bd. of Trustees of the Univ. of Alabama v. William Pitts, Jr., 2013 T.T.A.B. LEXIS
370 (T.T.A.B. 2013) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
401
T.T.A.B.
In re Borysiewicz, 2004 T.T.A.B. LEXIS 622 (T.T.A.B. 2004) (Likelihood of Confusion)
Bridgestone Firestone No. Amer. Tire, LLC v. Federal Corp., 2010 T.T.A.B. LEXIS 294
(T.T.A.B. 2010) (Likelihood of Confusion)
Bridgestone/Firestone No. Amer. Tire, LLC v. Silverstone Berhad, 2003 T.T.A.B. LEXIS 142
(T.T.A.B. 2003) (Likelihood of Confusion)
Buell Motorcycle Co. v. Honda, 2003 T.T.A.B. LEXIS 359 (T.T.A.B. 2003) (Genericness)
In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599 (T.T.A.B. 2001) (Genericness)
Carl Walther Gmbh, In re, 2010 T.T.A.B. LEXIS 410 (T.T.A.B. 2010) (Secondary
Meaning)
Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning)
(Likelihood of Confusion)
Century 21 Real Estate Corp. v. New Century Services Corp., 2007 T.T.A.B. LEXIS 149
(T.T.A.B. 2007) (Fame)
Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation
No. 92046246 (T.T.A.B. 2010) (Likelihood of Confusion)
In re Charles N. Van Valkenburgh, 2011 T.T.A.B. LEXIS 1 (T.T.A.B. 2011) This
opinion is a precedent of the T.T.A.B. (Secondary Meaning)
Citigroup Inc. v. Citiair, LLC, 2014 T.T.A.B. LEXIS 150 (T.T.A.B. 2014) (Fame)
Clear Choice Holdings LLC v. Implant Direct Int'l. 2013 T.T.A.B. LEXIS 477 (T.T.A.B.
2013) (Likelihood of Confusion)
Clinique Labs. v. Absolute Dental, 2011 T.T.A.B. LEXIS 161 (T.T.A.B. 2011)
(Likelihood of Confusion) (Fame)
Companhia de Bebidas das Americas –AMBEV v. The Coca Cola Co., 2012 T.T.A.B.
LEXIS 169 (T.T.A.B. 2012) (Genericness) (Secondary Meaning)
Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 2012 T.T.A.B. LEXIS 221
(T.T.A.B. 2012) This opinion is a precedent of the T.T.A.B. (False Advertising)
Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS 144
(T.T.A.B. 2002) (Likelihood of Confusion)
In re Country Music Ass’n, 2011 T.T.A.B. LEXIS 343 (T.T.A.B. 2011) This opinion is a
precedent of the T.T.A.B. (Genericness)
402
T.T.A.B.
In re Credit.com, Inc., 2008 T.T.A.B. LEXIS 321 (T.T.A.B. 2008) (Genericness)
In re DaimlerChrysler AG, 2001 T.T.A.B. LEXIS 557 (T.T.A.B. 2001) (Descriptiveness)
Danish Dairy Bd., Inc. v. The Ministry of Commerce, Cyprus, 1999 T.T.A.B. LEXIS 482
(T.T.A.B. 1999) (Genericness)
Day-Timers, Inc. v. Medley & Associates, Inc., 2001 T.T.A.B. LEXIS 299 (Fame)
Diamonique Corp. v. Wieck Family, Ltd., 2004 T.T.A.B. LEXIS 271 (T.T.A.B. 2004)
(Secondary Meaning).
Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of
Confusion) (Fame)
Duramax Marine, LLC v. R.W. Fernstrum & Co., 2006 T.T.A.B. LEXIS 306 (T.T.A.B.
2006) (Secondary Meaning)
E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740
(T.T.A.B. 2001) (Likelihood of Confusion)
Facebook, Inc. v. Think Computer Corp. 2013 T.T.A.B. LEXIS 436 (T.T.A.B. 2013)
(Likelihood of Confusion) (Fame)
Factory Five Racing, Inc. v. Carroll Shelby, 2010 T.T.A.B. LEXIS 402 (T.T.A.B. 2010)
(Secondary Meaning)
Farm Fleet Supplies, Inc. v. Blain Supply, Inc., 2013 T.T.A.B. LEXIS 449 (T.T.A.B.
2014) (Secondary Meaning)
Ferrero S.P.A. v. Destileria La Central, S.A., 2000 T.T.A.B. LEXIS 359 (T.T.A.B. 2000)
(Fame)
Freeman v. Nat’l Ass’n of Realtors, 2002 T.T.A.B. LEXIS 381 (T.T.A.B. 2002) (Genericness)
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, T.T.A.B. LEXIS 38,
(T.T.A.B. 2014) (Genericness)
General Mills v. Fage Dairy Processing Indus. S.A., 2011 T.T.A.B. LEXIS 280
(T.T.A.B. 2011) This opinion is a precedent of the T.T.A.B. (Secondary Meaning)
(Likelihood of Confusion) (Fame)
In re GIE Media, Inc., 2013 TTAB LEXIS 244 (T.T.A.B. 2013) (Secondary Meaning)
403
T.T.A.B.
Glen Raven, Inc. v. Amerinova Properties, LLC, 2013 T.T.A.B. LEXIS 431 (T.T.A.B.
2013) (Secondary Meaning)
Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81 (T.T.A.B. 2009) (Fame)
Google Inc. v. Pivot Design, Inc., 2007 T.T.A.B. LEXIS 183 (T.T.A.B. 2007) (Fame)
The Guardian Life Ins. Co. of America v. David P. England, 2002 T.T.A.B. LEXIS 625
(T.T.A.B. 2002) (Likelihood of Confusion)
Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame)
(Daubert/Admissibility Issues)
Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999) (Scandalous/Disparaging)
Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 829 (T.T.A.B.
2001) (Likelihood of Confusion)
Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 629 (T.T.A.B.
2001) (Likelihood of Confusion)
In re Hershey Chocolate and Confectionary Corp., 2012 T.T.A.B. LEXIS 255 (T.T.A.B.
2012) (Secondary Meaning)
Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest LLC, 2005 T.T.A.B. LEXIS 144
(T.T.A.B. 2005) (Dilution/Blurring)
In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60 (T.T.A.B. 2008) (Genericness)
iMedica Corp. v. Medica Health Plans, 2007 T.T.A.B. LEXIS 140 (T.T.A.B. 2007)
(Likelihood of Confusion)
In re in3media, Inc., 2011 T.T.A.B. LEXIS 189 (T.T.A.B. 2011) (Genericness)
(Secondary Meaning)
In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621 (T.T.A.B. 2004) (Descriptiveness)
In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345 (T.T.A.B. 2004) (Secondary Meaning)
Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180 (T.T.A.B. 2004)
(Genericness)
Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51 (T.T.A.B.
2004) (Likelihood of Confusion)
404
T.T.A.B.
In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154 (T.T.A.B. 2000)
(Geographically Deceptively Misdescriptive)
King Bio Pharmaceuticals, Inc. v. King Pharmaceuticals, Inc., 2002 T.T.A.B. LEXIS 280
(T.T.A.B. 2002) (Likelihood of Confusion)
Kohler Co. v. Kohler Homes, 2008 T.T.A.B. LEXIS 551 (T.T.A.B. 2008) (Likelihood of
Confusion)
Li & Fung Ltd. v. Lelania Cher Farrenkopf, 2011 T.T.A.B. LEXIS 398 (T.T.A.B. 2011)
(Likelihood of Confusion)
Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171 (T.T.A.B. 2004)
(Likelihood of Confusion)
Mattel, Inc. v. S.W. Fantasies, Inc., 2012 T.T.A.B. LEXIS 392 (T.T.A.B. 2012)
(Secondary Meaning) (Procedural)
Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS
678 (T.T.A.B. 2008) (Likelihood of Confusion)
Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524 (T.T.A.B. 2005) (Likelihood of
Confusion)
Motion Picture Ass’n of America, Inc. v. Respect Sportswear, Inc., 2005 T.T.A.B. LEXIS 223
(T.T.A.B. 2005) (Fame)
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B.
2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of
the T.T.A.B.
In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27 (T.T.A.B. 2005)
(Genericness)
Nextel Communications, Inc. v. Motorola, Inc., 2009 T.T.A.B. LEXIS 443 (T.T.A.B.
2009) (Secondary Meaning)
Nextel Communications, Inc. v. Motorola, Inc., 2006 T.T.A.B. LEXIS 166 (T.T.A.B.
2006) (Secondary Meaning)
The Oakland Corp. v. Nylok Fastener Corp., 1999 T.T.A.B. LEXIS 787 (T.T.A.B. 1999)
(Secondary Meaning)
OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274
(T.T.A.B. 2006) (Likelihood of Confusion)
405
T.T.A.B.
Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364 (T.T.A.B. 1999)
(Scandalous/Disparaging)
In re Oversee.net, 2011 T.T.A.B. LEXIS 114 (T.T.A.B. 2011) (Likelihood of Confusion)
Pepsico, Inc. v. Jay Pirincci, 2012 T.T.A.B. LEXIS 261 (T.T.A.B. 2012) (Likelihood of
Confusion)
Physicians Health Plan, Inc. v. Michigan HMO Plans, Inc., 1999 T.T.A.B. LEXIS 800
(T.T.A.B. 1999) (Likelihood of Confusion)
Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 2005 T.T.A.B. LEXIS
184 (T.T.A.B. 2005) (Likelihood of Confusion)
Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672 (T.T.A.B. 2008)
(Likelihood of Confusion)
QVC, Inc. v. Home Shopping Network, Inc., 1999 T.T.A.B. LEXIS 751 (T.T.A.B. 1999)
(Genericness)
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 2011 T.T.A.B. LEXIS 378 (T.T.A.B.
2011) This opinion is a precedent of the T.T.A.B. (Dilution)
Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc., 2012 T.T.A.B. LEXIS 226
(T.T.A.B. 2012) (Likelihood of Confusion)
Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007) (Secondary
Meaning) This opinion is a precedent of the T.T.A.B.
Sara Lee Corp. v. Amine Mahmoud, 2007 T.T.A.B. LEXIS 147 (T.T.A.B. 2007)
(Likelihood of Confusion)
Sara Lee Corp. v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204 (T.T.A.B. 2001)
(Likelihood of Confusion)
Sara Lee Corp. v. Kayser-Roth Corp., 2004 T.T.A.B. LEXIS 146 (T.T.A.B. 2004) (Likelihood of
Confusion)
Schwan’s Sales Enterprises, Inc. v. Kraft Pizza Co., 2006 T.T.A.B. LEXIS 190 (T.T.A.B.
2006) (Genericness)
Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622 (T.T.A.B.
2000) (Fame)
Sheetz of Delaware, Inc. v. Doctor's Associates Inc., 2013 T.T.A.B. LEXIS 468,
(T.T.A.B. 2013) (Genericness)
406
T.T.A.B.
In re Shuffle Master, Inc., 2011 T.T.A.B. LEXIS 391 (T.T.A.B. 2011) (Genericness)
Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93 (T.T.A.B. 2001)
(Fame)
In re Softspikes, Inc., 2012 T.T.A.B. LEXIS 107 (T.T.A.B. 2012) (Genericness)
In re Spirits Int’l N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively
Misdescriptive)
Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54 (T.T.A.B.
2006) (Likelihood of Confusion)
In re Steelbuilding.com, Inc., 2007 T.T.A.B. LEXIS 122 (T.T.A.B. 2007) (Secondary
Meaning)
STK LLC v. Backrack, Inc., 2012 T.T.A.B. LEXIS 186 (T.T.A.B. 2012) (Genericness)
Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS
132 (T.T.A.B. 2009) (Secondary Meaning)
In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843 (T.T.A.B. 1999) (Secondary Meaning)
In re Super-Pharm (Israel) Limited 2013 T.T.A.B. LEXIS 629, (T.T.A.B. 2013)
(Decriptiveness/Suggestiveness)
Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330 (T.T.A.B. 2006)
(Genericness)
Team Air Express, Inc. v. Alliance Shippers, Inc., 2007 T.T.A.B. LEXIS 110 (T.T.A.B.
2007) (Likelihood of Confusion)
In re U-Haul Int’l, Inc., 2003 T.T.A.B. LEXIS 484 (T.T.A.B. 2003) (Secondary Meaning)
The Univ. of Iowa v. The Univ. of S. Miss., 2011 T.T.A.B. LEXIS 224 (T.T.A.B. 2011)
(Likelihood of Confusion)
U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620
(T.T.A.B. 2002) (Likelihood of Confusion)
Wagner Spray Tech Corp. v. Graco, Inc., 2003 T.T.A.B. LEXIS 343 (T.T.A.B. 2003)
(Secondary Meaning)
Wal-Mart Stores, Inc. v. Franklin Loufrani, 2009 T.T.A.B. LEXIS 113 (T.T.A.B. 2009)
(Secondary Meaning)
407
T.T.A.B.
Warner-Lambert Co. v. Nabisco, Inc., 1999 T.T.A.B. LEXIS 143 (T.T.A.B. 1999)
(Descriptiveness)
The William Carter Co. v. H.W. Carter & Sons, Inc., 2004 T.T.A.B. LEXIS 115 (T.T.A.B. 2004)
(Secondary Meaning)
408
T.T.A.B.