Trademark Surveys: A Litigator's Guide

Trademark Surveys

“Berger and Halligan have performed a true service in their Trademark Surveys: A Litigator’s Guide. The twists and turns of surveys in general, and more particularly, legal surveys, are rarely taught, but now they are explicated by a highly competent pair of guides. This book provides practical and invaluable advice to practicing attorneys.” Gabe Gelb Gelb Consulting Group Inc. “James Berger and Mark Halligan bring years of experience and insight to this valuable book. Trademark Surveys: A Litigator’s Guide should be read by every attorney who needs to conduct survey research in the course of trademark, unfair competition, or trade dress litigation.” D. A. N. Chase Chase Law Firm, L.C. Kansas City, Missouri “Trademark Surveys: A Litigator’s Guide should be an essential addition to any IP litigation library. Its concise discussions of the related law and associated litigation strategy will put everyone who reads it more than two steps ahead of an adversary who has not.” Marvin Benn Senior Patent Counsel Much Shelist Denenberg Ament & Rubenstein, P.C.

Trademark Surveys A Litigator’s Guide

James T. Berger R. Mark Halligan

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CONTENT S

Prefaceâ•…â•… vii Acknowledgmentsâ•…â•… xi 1. The Impact of Surveys on IP Litigationâ•…â•… 1 2. Market Research Considerationsâ•…â•… 31 3. Types of Surveys and Protocolsâ•…â•… 59 4. IP Issues Where Surveys Can be Criticalâ•…â•… 75 5. Likelihood of Confusion Issuesâ•… â•… 85 6. Secondary Meaning Issuesâ•… â•… 111 7. Distinctiveness and Strength of Markâ•… â•… 135 8. Issues Involving Generic Marksâ•… â•… 159 9. Trade Dress Issuesâ•… â•… 185 10. Dilution Issuesâ•… â•… 203 11. Implications of Daubert Rulings on Trademark Surveysâ•… â•… 225 12. Practical Considerations When Using Survey Expertsâ•… â•… 233 Appendixâ•…â•… 247 Table of Casesâ•…â•… 275 Indexâ•…â•… 283

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PREFACE

The ever increasing complex world of trademark surveys has created a variety of problems and opportunities for lawyers and survey experts: • Trademark issues and cases are far more complex as American businesses have become less product-oriented and more service-oriented. Thus, there is less tangibility to the issues in question. • There are ever increasing methods to do surveys, especially with Internet technology, while more traditional approaches of doing surveys–such as mall intercepts and telephone–have become increasingly challenging. Moreover, there is a reluctance of people to participate in surveys of any kind—even with substantial incentives. • The size and scope of many of these cases can be enormous and it becomes increasingly more expensive to create, implement, and defend surveys. • The emergence of the “Daubert motion” provides an added complication and expense to the survey process. While one might think the Intellectual Property (IP) survey area is some form of an intense intellectual contest or obstacle course, there are basic ground rules that govern scientific surveys, and these rule are inviolate. It is mandatory that the survey uses and respects the basic rules of scientific research. While such rules are stated in a variety of writings, the bible for IP survey research is The Reference Manual on Scientific Evidence, published by Federal Judicial Center. The specific chapter of greatest significance is “Reference Guide on Survey Research” by Shari Seidman Diamond, J.D., Ph.D. Another basic ground rule is to be sure you are surveying the relevant target market. This may appear obvious, but often it is not. For example in the traditional likelihood of confusion case (forward confusion case) where a weaker junior user attempts to trade on a more powerful senior user’s mark, the relevant target market would be the potential buyers of the junior

user’s goods or services. On the other hand, in a “reverse confusion” situation where a powerful junior user attempts to hijack the brand name of a less powerful senior user, the relevant target market would be the present and potential buyers of the senior user’s target market. It wasn’t terribly long ago when a majority of trademark infringement cases focused on tangible products and brands. However, in the last several years, the trademark environment has seen ever increasing numbers of cases focusing on services and service-oriented companies—many doing business in cyberspace. New terminology includes words such as: websites, blogs, search engines, meta tags, key word sponsored sites, cybersquatting and the like. These new variables make it far more difficult to defend trademarks and brands, and open new opportunities for infringement. Trademark and survey experts must understand these new service-oriented products, the hidden languages of the Internet, and the way the search engine spiders locate key words and websites. Adding to the complexity is the myriad of new services offered to consumers and businesses. The U.S. economy has migrated from a manufacturing to a services economy, and this makes it increasingly difficult to measure the intangibility of services. This not only includes financial services but real estate, medical, and many other types of services. Often the only possible tangible issue in question is a name or logo–not a tangible product that can be found on retail store shelves. All this intangibility makes it extremely hard to survey consumers and business people as to the identification of brands and trademarks. When the authors started doing IP litigation surveys approximately ten years ago, virtually all work dealt with products that were sold in businessto-consumer (B2C) or business-to-business (B2B) environments. Issues in question focused on the names of the products, color schemes, and manner of packaging in the trade dress, the configuration of the products and the like. Much work focused on knock-off products coming into the United States from the Far East that were similar to trademarked and patented U.S. products. Such surveys often involved mall intercept research, pre-recruit research (where arrangements were made to bring workmen or other professionals into a research facility), or telephone research. Today, many malls have abandoned their research facilities, and those consumers frequenting shopping malls are often teenagers or young adults. This makes it increasingly difficult to recruit respondents at shopping malls. In addition, people often are in a hurry and are reluctant to participate. The profusion of telemarketing and the use of voice mail has made it considerably more difficult to do telephone interviews. Moreover, some 20 percent of the population consists of individuals who don’t have a landline and who use a cell phone as the primary telephone. [â•›viiiâ•›]â•… Preface

The Internet has emerged as a new medium for research, but it has its problems as well. Spam, or impersonal, unsolicited e-mails, have created a profusion of messages and most people use spam filters to ferret out these unwanted messages. Thus, the primary way to use the Internet as a research medium is through opt-in consumer panels. Research organizations have put such panels together, and the research expert can specify those market segments that are needed for the survey. Even using these panels, the response rates tend to be very low and there is always the chance that the respondent is the “professional” survey-taker. The decline of the mall intercept method, the problems of using traditional telephone research, and the constraints offered by Internet panels make the “survey game” ever more challenging. However, due to the complexity of trademark infringement cases and other IP litigation, plaintiffs and defendants have come to rely more and more on survey methodologies to prove or disprove infringements. These are enormous cases in terms of the costs to pursue them and the budgets involved. Since intellectual property has displaced real property, clients will often spend inordinate sums not only to create original surveys but to critique them. Exacerbating this picture are the numbers of experts that often are brought in to consult on the same case. All sorts of scenarios can unfold. Multiple experts enable adversaries to play one expert off against another. Sometimes the findings or opinions of one expert actually can contribute to the cause of the adversary. The costly depositions, filing of motions, critiques, and critiques of the critiques are often both mind-boggling and enormously expensive. If all of these new complexities did not make the game complicated enough, we now have the final obstacle—The Daubert motion. The original intention of the Daubert motion was to exclude unqualified experts from offering testimony. The scope of Daubert has been extended by subÂ�sequent court rulings in an attempt to exclude the testimony or survey research of even the most qualified of experts. It has become an additional obstacle in the survey “obstacle course” and yet another way to saddle attorneys with more work and saddle the clients with higher costs. It appears that the lawyers, in seeking to criticize a creative survey, often will routinely file the Daubert motion. The positive contribution from Daubert is that it has effectively addressed the problem of testimony from non-experts, and has emphasized the need for scientific research. Because surveys have become so much more complex, there are not very many “cookie-cutter” protocols out there. The survey expert is required to be ever more creative in thinking of possible ways a research hypothesis can be proved or disproved. This often requires out-of-the-box thinking. When an adversary encounters such creative executions, a normal reaction will be to file the Daubert Prefaceâ•… [â•›ixâ•›]

motion because the protocol may have no precedent. Fortunately, it has been the experience of co-author Berger that judges are often more insightful than the lawyers might give them credit for. They are able to see how the survey addresses the issues and are able to make sure that despite the fact that the survey applied new and different protocols, the survey still adhered to the key scientific research ground rules. It is important to note that the law of trademarks is ever changing. So the examples used today may change tomorrow. We should not be absolute in anything we say because there are new cases and new decisions in trademark law every day. Our book is intended to be a practical guide for lawyers and non-lawyers involved with planning or conducting surveys in trademark and related intellectual property litigation. The intent of the authors has not been to write a legal treatise. For such information, we will refer the reader to J. Thomas McCarthy, the eminent trademark scholar in the field, and other legal authorities in the field. Instead, this book is intended to be a roadmap of the do’s and don’ts, as well as the proper procedures and pitfalls in planning and conducting trademark surveys, from an experienced trademark survey expert and an experienced intellectual property litigator. This perspective reflects on the combined years of experience of both authors in dealing with the complex issues that arise in these types of intellectual property disputes together with the integration of the vagaries of trademark law with the scientific aspects of survey research. —James T. Berger and R. Mark Halligan

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ACKNOWL E D G M E N T S

A lifelong marketing professional and college-level instructor, I started becoming involved in intellectual property survey work about 20 years ago. There are some people who were very instrumental in my growth and development in this field: Stanley Adelman, head of litigation at DLA Piper assigned me my first case in which I testified. Marvin Benn, I.P. litigation partner at Much Shelist, Chicago, enabled me to develop my thinking on brand valuation. Ivan Ross, a retired survey expert from Minneapolis and long-time professor at the University of Minnesota, served for years as my mentor. Raymond Niro, chair at the Chicago law firm of Niro, Scavone, Haller, Niro, retained me on a number of occasions in the early years of my practice for various Black & Decker matters. Other attorneys who have been instrumental in my development as a survey expert include: D.A.N. Chase, Kansas City; Mitch Reinis, Los Angeles, David Bloch, San Francisco, Michael Florey, Chris Larus and Michael Collyard, Minneapolis. I also wish to acknowledge the support from my wife, Louise, and my four children, Carrie, Liza, Jonathan and Meredith. —James T. Berger

As an intellectual property lawyer, I counsel and advise clients on all aspects of intellectual property law including patents, trade secrets, copyrights and trademarks as well as related Internet and antitrust issues. There are many facets to intellectual property law and one of the most esoteric areas involves trademark surveys. I want to thank Jim Berger for his invitation to participate as co-author on this project. I also want to give

special thanks to the Nixon Peabody lawyers and staff that assisted me on this project including the following: Amanda Baker Peter Durant Jason Kunze Lynn Leinartas (Librarian) William Pegg Peter Prommer Maria Swiatek Justin Swindells Deanna Swits Wayne Tang Christopher Wallace Kristen Mollnow Walsh Robert Weikert Jodi Rosen Wine Lisa Yun. Finally, I wish to acknowledge the efforts of my longtime secretary, Jamie P. Skokal, as well as the perseverance of my wife, Kathleen, and my three beautiful daughters: Bridget, Kara and Molly. —R. Mark Halligan

[â•›xiiâ•›]â•… Acknowledgments

CHAPTER 1

The Impact of Surveys on IP Litigation

1.01╇ EVOLUTION OF THE USE OF SURVEYS

Thirty years ago, surveys were considered little more than hearsay evidence. Today, however, the use of scientific surveys has gained widespread acceptance within the federal court system. While the predominant use of surveys is seen in trademark actions, surveys also are used in trade dress, trade secrets, truth-in-advertising, Internet marketing, genericness, and even in patent infringement issues. According to Shari Seidman Diamond, J.D., Ph.D., author of the highly respected “Reference Guide on Survey Research,” published in The Manual for Scientific Evidence: Thirty years ago the question whether surveys constituted acceptable evidence still was unsettled. Early doubts about the admissibility of surveys centered on their use of sampling techniques and their status as hearsay evidence. Federal Rule of Evidence 703 settled both matters by redirecting attention to the “validity” of the techniques employed.1

Dr. Diamond goes on to say that, one of the reasons for the more widespread use of surveys is: Because the survey method provides an economical and systematic way to gather information about a large number of individuals or social units, surveys are used widely in

1.╇ Shari S. Diamond, “Reference Guide on Survey Research,” in Reference Manual on Scientific Evidence, (Federal Judicial Center, 229–276.

business, governments, and, increasingly, administrative settings and judicial proceedings. Both federal and state courts have accepted survey evidence on a variety of issues.2

The courts have been slower to accept survey evidence in trademark cases, although they have accepted such evidence for other issues. The main reason courts looked warily at surveys prior to the 1950s, is that such evidence was considered nonadmissible, especially because those interviewed in surveys could not be cross-examined. According to An Introduction to Survey Research, Polling and Data Analysis by Herbert F. Weisberg, Jon A. Krosiak, and Bruce D. Bowen: By the 1950s, some courts held that surveys were not hearsay because they were not being used to prove the truth of what the respondents said. Meanwhile, other courts were accepting surveys as evidence of present state of mind, attitudes or beliefs, which is a recognized exception to the hearsay rule. Survey evidence in trademark cases is still often challenged based on the quality of the survey, but surveys are now recognized as appropriate means of testing trademark violation.3

Weisberg, Krosiak, and Bowen further add that courts have admitted surveys in other areas other than trademarks. For example, they point to the 1963 case between the Zippo® lighter company and the Rogers lighter company over unfair competition. Surveys also have a history of use in misleading advertising cases. A notable case was the Federal Trade Commission’s (FTC) action against Hi-C® fruit drinks where the FTC charged that Hi-C led consumers to believe that that the fruit drink was providing more vitamin C than orange juice. Hi-C won the case by using a consumer survey that proved consumers did not draw the conclusion that the FTC alleged. Gerald Ford, D.B.A., partner in the Huntington Beach, California-based Ford Bubala & Associates, researched the use of surveys in trademark cases. Providing a historical perspective, Dr. Ford places the passage of the Lanham Act in 1946 as the starting point for his “Walk Down Memory Lane.” In this work, he points out that between 1946 and 1960 only 18 surveys were offered in reported cases. While gathering some momentum, the pace of survey usage continued to remain slow from 1961 through 1980, with only 193 surveys offered in reported cases–an increase of about 10 per year. Pace and momentum of surveys increased notably from 1980

2.╇ Diamond, “Reference Guide on Survey Research,” 229–276. 3.╇ Herbert F. Weisberg, Jon A. Krosiak, Bruce D. Bowen, An Introduction to Survey Research, Polling and Data Analysis, 3rd edition, (Thousand Oaks: Sage Publications, 1996) 8. [â•›2â•›]â•… Trademark Surveys

through 2004, according to Dr. Ford, with 1007 or an average of 42 additional surveys per year.4 Dr. Ford points to several factors that he believes promoted more use of surveys. One such factor was the initial 1960 publication of the “Manual for Complex Litigation” by the Federal Judicial Center. The reason this manual was a foundation for increased survey use is that it provided criteria for judging the trustworthiness of evidence. An additional building block was the Federal Judicial Center’s “Manual for Scientific Evidence.” The adoption in 1975 of the Federal Rules of Evidence, specifically Rule 703, is yet another set of documents for courts to rely upon. Initially, surveys were routinely challenged and often excluded, however, the pendulum has swung the other way, and surveys are now routinely admitted into evidence. Dr. Ford points out that between 1981 to 2004, surveys became increasingly more complex and expensive, and judges became more sophisticated in weighing survey evidence. The Daubert v. Merrell Dow decision in 1993 marked yet another swing of the pendulum where the relevant surveys and expert opinions were again challenged. 1.02╇ HOW SURVEYS ARE USED IN LITIGATION

The following is a brief account of key circumstances and situations where surveys can be used in litigation. These will be further developed in sub� sequent chapters. [A]╇ Likelihood of Confusion

When lawyers use surveys, several central or essential areas are generally being addressed. The first of these is the likelihood of confusion survey. Here, the lawyer needs to prove or disprove one or more major allegations in the complaint. The key concept is that some level of confusion exists. Usually the confusion pertains to the perceived source of a product, brand name, trademark, or a graphic presentation of the product; or perhaps the confusion relates to the graphic presentation of a product, brand name, or mark. For many years, McDonald’s Corporation has been extremely aggressive in seeking to protect its many trademarks, and any food product

4.╇ “Trademark Survey Evidence—A Walk Down Memory Lane and a Year in Review–Part 1,” The America’s Intelligence Wire (2005). Retrieved September 01, 2009 from AccessMyLibrary: http://www.accessmylibrary.com/coms2/summary 0286–9878014_ITM. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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preceded by “Mc” will likely face the wrath of McDonald’s if there is an attempt to bring the product to market. On the other hand, companies with valuable trademarks, such as Kleenex or Fibreglas (the actual brand name), have seen their marks disappear into the public domain because of their failure to protect their trademarks from infringers. Consequently, formerly valuable marks are now considered generic. Other ways a registered trademark can be contested is if the product is so blatantly generic or descriptive or if the service name or positioning statement is considered a common name. Highly descriptive names of medical practices or companies that bear only a geographic designation sometimes fall into this category and are often successfully contested. However, there are products with geographic designations that are considered fanciful names, such as Elgin Watch or Waltham Watch. Often a purely descriptive name is granted trademark or service mark status. In such cases, one can prove descriptiveness if a scientific survey is produced showing consumers consider the name to be descriptive and not suggestive. Such surveys often are extremely complex because it is necessary to educate the respondents on how to recognize generic, descriptive, suggestive, and/or fanciful or arbitrary names so that consumers have the knowledge to draw proper distinctions. [B]╇ Trade Dress

A second survey type is the trade dress confusion survey. In addition to the trademarked name, symbol, and logo of a product, its presentation–its trade dress—to the consumer is also subject to possible confusion. Often a competitor will replicate the color scheme, size, and shape of a package, in an effort to gain market share. These actions can cause confusion and offer evidence of infringement. Knock-off manufacturers, usually from the Far East, will take a successful, domestically developed, patented product and develop something that closely resembles its unique configuration. Survey evidence can be effectively presented to disprove the existence of any confusion because often customers recognize the product not by its name but by its appearance. A number of years ago, Black & Decker created the SNAKE LIGHT® flexible flashlight, and it became an extremely popular and successful product in the U.S. marketplace. A host of knock-off products were produced offshore with the intention of importing and selling the knock-offs at lower prices than the Black & Decker product. Surveys were implemented that proved the consuming public was unable to differentiate between the products, and, for the most part, those knock-off products were confiscated at [â•›4â•›]â•… Trademark Surveys

the port of entry and were never sold in the U.S. In addition to losing their products, the offshore manufacturers were forced to pay significant damages. [C]╇ Secondary Meaning

In cases where there are no registered trade names or trademarks, a product or some aspect of the product’s non-functional features may have obtained market recognition because that feature designates the source. Surveys to detect such recognition are known as secondary meaning surveys. In these surveys, it is not necessary that consumers recognize the specific maker, distributor, or retailer of the product, only that they recognize it comes from a single (perhaps anonymous) source. Sometimes a product gains widespread consumer recognition for reasons other than the name of the product or its maker. The classic example of this is the pink fiberglass insulation product whose spokesperson is the animated Pink Panther. The fact that the product is pink provides no functionality whatsoever. It could be any color. The manufacturer is actually Owens Corning, but to prove secondary meaning it would not be necessary for consumers to remember Owens Corning. All they would have to do is be able to relate that they believed the product came from a single source. [D]╇ Genericness

Finally, an area where survey research is often used involves proving or disproving “genericness.” Even if one has an established, registered trademark, there might be an argument that the trademark has “morphed” into commonly used vocabulary, and therefore the trademark is no longer incontestable or even a trademark. Common examples of this phenomenon are Kleenex, Fibreglas (generically called fiberglass), Frigidaire, and Windows. All of these were originally registered as trademarks, but through the frequency of common usage, sufficiently large numbers of people now consider them part of the general vocabulary, and they have lost their original trademark status. One factor that makes a brand vulnerable to becoming generic is the degree of descriptiveness. However, this phenomenon is not limited to a purely descriptive name. For example, a fanciful name like LEVI’s jeans has almost become a generic name for denim men and women’s apparel. Even if a registered trade name–like Microsoft Windows–can be proved that the general population considers it a common name, others could then T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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use that mark. The “Teflon protocol” used for proving genericness is discussed later in this chapter when important survey-related cases are Â�presented in capsulated form. 1.03╇ TRUTH-IN-ADVERTISING AND PATENT INFRINGEMENT

Beyond the trademark realm, surveys have also been used in truth-inadvertising and patent matters. A class action lawsuit against the old AT&T and Lucent Technologies came about when the plaintiff ’s attorney representing the class alleged that AT&T improperly communicated options for home telephone ownership vs. leasing. The genesis of the case resulted from the anti-trust consent decree that broke up the Bell System into AT&T, Lucent Technologies, and the operating regional Bell telephone companies in the 1980s. In the case, it was necessary to show—through survey evidence—how many years before individuals who had never been exposed to the original AT&T advertising and mailings comprehended the messages that were communicated to customers. The research asked whether consumers believed they had sufficient information to understand their options. False or deceptive advertising can clearly cause confusion, and the scientific survey that was developed sought to determine: (1)  if confusion was created; and (2) how harmful was any confusion to the wronged party. While surveys to document confusion over patent infringement are uncommon, there is at least one way infringements can be tested through a scientific survey. For example, a party has a patent but the party has not produced the product depicted in the patent drawings, and a competitor has produced such a product, a survey can be created to establish confusion. The consumer would be shown the patent drawing and then shown an array of competitive products that resembled or functioned similarly to the product in the patent drawings. If a sufficient number of consumers believe the actual product is the same as the one represented in the drawings, there can be an argument for infringement. The false and/or deceptive advertising issue often occurs when companies or individuals have developed personal vendettas. In these types of cases, the issue is not so much the damages but the desire to inflict harm on an adversary. 1.04╇ NON-LITIGATION USES OF SURVEYS

A common use of surveys by attorneys is not in the actual execution of the case, but in gathering research information to determine whether the matter [â•›6â•›]â•… Trademark Surveys

is worth pursuing. A client will often hypothesize that an infringement has happened or is likely to happen and will assign the matter to its attorneys for further investigation. However, one should beware that sometimes a client will have a distorted and unrealistic view of its market because the client is so close to it and so sensitive to what competitors are doing. Rather than rushing into an expensive and potentially unsuccessful legal action, the conscientious law firm would be wise to hire a survey expert to undertake a pilot study designed to prove or disprove the client’s hypothesis. If the survey shows there is no issue or there is an insufficient level of conÂ� fusion, the case may never be filed. The expenditure of a few thousand dollars might avoid potential legal costs totalling a hundred thousand dollars or more. Since the vast majority of IP-related cases settle prior to trial, survey evidence that is produced in support of or to rebut issues raised in a complaint could very well convince an adversary that settlement is a wiser decision than pursuing the litigation. If the survey expert’s work and methodology are compelling enough, the other side might be convinced to pick up its marbles and go home. Survey evidence may also support motions for summary judgment or preliminary injunction. 1.05╇ WHO QUALIFIES AS A SURVEY EXPERT

What is necessary is that the survey be conducted by an expert survey director. Shari Seidman Diamond notes the following qualifications for conducting surveys: Experts prepared to design, conduct and analyze a survey generally should have graduate training in psychology (especially social, cognitive, or consumer psychology), sociology, marketing, communications science, statistics or [a] related discipline; that training should include courses in survey research methods, sampling, measurement, interviewing and statistics. In some cases, professional experience in conducting and publishing survey research may provide the requisite background. In all cases, the expert must demonstrate an understanding of survey methodology, including sampling, instrument design (questionnaire and interview construction) and statistical analysis. Publication in peer-reviewed journals, authored books, membership in professional organizations, faculty appointments, consulting experience, research grants, and membership in scientific advisory panels for government agencies or private foundations are indications of a professional’s area and level of expertise. In addition, if the survey involves highly technical subject matter (e.g., the particular preferences of electrical engineers for various pieces of electrical equipment and the bases for these preferences), or involves a special population (e.g., developmentally disabled adults with limited cognitive skills), the survey T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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expert should be able to demonstrate sufficient familiarity with the topic or population (or assistance from an individual on the research team with suitable experience) to design a survey instrument that will communicate clearly with relevant respondents.5

1.06╇ USE OF SURVEY EXPERT AS A CONSULTANT

Often survey experts are hired only at the eleventh hour, when discovery is about to close or final settlement efforts have caved. In this scenario, the survey expert generally receives a retainer check and case-related documents that provide background and information regarding the case issues. If a survey is needed—often on an expedited basis—the expert will move to put a survey together as quickly as possible. In such urgent situations, the survey expert is generally unable to test various methodologies due to time constraints. Waiting until the last minute to request a survey does a disservice to the stakeholders. The client is not getting the most for its money; the expert is severely constrained; and the law firm is taking a huge “opportunity loss.” The survey expert, although usually not a lawyer, often has valuable insights into the marketplace and can make insightful observations and suggestions that strengthen the pursuit of the case. Having this insight can be invaluable in selecting other experts and/or preparing for depositions and trial testimony. If an expert is to be retained, the law firm and/or client should do so at the earliest possible time and not at the eleventh hour. The survey expert can also be a valuable source of non-survey expertise. Judges and juries often do not possess knowledge of the consumer decision process as it pertains to buyer behavior patterns. Survey experts who are professional marketing professors and/or practitioners possess a high degree of buyer behavior insight. As an example, a truth-in-advertising dispute between two competitors of products used to cover wet cement during the curing and drying process was successfully settled largely through the insight possessed by the expert who was brought in to rebut a survey that tested consumer understanding of various labeling messages presented by the two competitors. In the questioning of sales people, the expert discovered that the customers and road construction contractors were not interested in what the label said but only in price and availability. The expert then visited a leading supply house that sold both competitors’ products and verified first-hand that the salespeople were correct in their assessment of buyer behavior. In the expert’s report and subsequent deposition, not

5.╇ Diamond, “Reference Guide on Survey Research,” 233. [â•›8â•›]â•… Trademark Surveys

only was the adversarial survey critiqued but also rendered useless because of the buyer behavior dynamics. This case quickly settled to the benefit of the party that hired the insightful survey expert. 1.07╇ THE “DARK SIDE” OF SURVEYS

While surveys and survey experts can be valuable in proving or disproving allegations with respect to trademarks, trade dress, genericness, and secondary meaning, there are a number of situations in which survey results and the survey expert can be used by an adversary. The key point here is that survey experts and surveys will not go uncontested. This means that there generally will be a rebuttal report and the rebuttal expert will most likely be deposed. In complex cases, there may be a number of experts. In these cases, the rebuttal testimony of one expert can and may be challenged—usually in deposition—by another expert from the other side. It can even become a more difficult situation when one side hires more a single expert. For example, in a case focusing on a financial services product, expert “A” produced a report that was challenged by expert “B” from the other side. The other side had also hired expert “C” to do a survey and produce a report on another aspect of the case. The rebuttal expert “C” raised some significant points that expert “A” had to defend in deposition. Expert “C,” who was deposed after expert “B,” was asked questions that supported the claims of the original expert “A.” Survey experts often are used as either consulting or testifying experts. The consulting expert simply reviews the case and/or the other side’s survey and suggests rebuttal arguments. The testifying expert prepares and produces a rebuttal report and is usually deposed. If the case does not settle, he will often be called upon to offer court testimony. The consulting expert can be a powerful, anonymous force in the trial process. In a significant case brought by a small maker of technology against Sony Corporation, the issue involved the controller or “joystick” for the Sony Play Station 2 video system. The plaintiff, seeking royalties, contended that the technology within the controller, which made it vibrate during use, contributed to the game’s realism. A co-author of the book, James T. Berger, was brought in as a consulting expert and was given the research report, methodology, and results of survey performed by a research firm retained by Sony. Sony contended that people bought Play Station 2 for a variety of reasons and indicated the vibrating controller was of lesser importance. The problem with the survey, which Mr. Berger pointed out, was that people who were questioned were the purchasers of the video game—and not necessarily T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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the users or players of the game. A significant number of people who participated in the survey were parents and grandparents who bought the system as a gift because that was what the children had requested for a Christmas or birthday gift. That significant flaw largely negated the positive results of the survey. In the end, the technology company won an $87 million judgment against Sony, and Sony’s costly survey ended up being a non-factor. In confusion cases, the plaintiff has the burden of proof. However, in some cases, the plaintiff may opt not to a do a survey. Sometimes the defendant will then hire a survey expert to perform the survey. In such cases, to check for consistency the plaintiff might attempt to use the defendant’s survey expert as an instrument for the plaintiff ’s case. In other situations, data collected and reported by one side of a dispute might be used by the other side to prove its allegations. Clearly, the use of survey experts can be a slippery slope, and intelligent and insightful attorneys will take evidence developed by the other side for their purposes and use it against the other side. Equally important in the use of survey evidence is the collected data that may have a detrimental effect on the image of the party that produced the data. For example, a survey was produced for an arbitration hearing. Although not a trademark confusion case, a survey expert probed why buyers of a foreign car brand purchased the cars at dealerships a considerable distance away from where they lived. The party doing the survey wanted to show that inventory and selection were so limited at the nearby dealership that buyers were essentially forced to go elsewhere to make their purchases. The survey asked why these buyers made disparaging remarks about the nearby dealer’s sales personnel and their “independent, arrogant attitude.” The disparaging remarks could be interpreted as an indication of the lack in inventory, making the dealership reluctant to price its cars competitively and, therefore, construed as having an “independent attitude.” The attorney who commissioned the survey directed the expert to make no mention of the verbatim comments in the survey expert’s report. However, the other side’s attorney, who had copies of the completed surveys, questioned the expert about these verbatim comments in deposition. So embarrassing were these verbatim comments that the attorney who commissioned the survey withdrew it prior to the arbitration hearing. 1.08╇ NOTABLE CASES WITH IMPLICATIONS FOR IP SURVEYS

Summarized below are some notable cases with implications for IP surveys. [â•›10â•›]â•… Trademark Surveys

[A]╇ Union Carbide Corporation, Plaintiff-Appellant, v. Ever-Ready Incorporated, a Corporation, and Mark Gilbert, an Individual, Defendant-Appellees

United States Court of Appeals, Seventh Circuit Decided January 30, 1976 1888 U.S.P.Q. 623, 531 F.2d 366 Docket number: 75–1371 This case was an appeal from the District Court for the Northern District of Illinois before Associate Justice Clark, and Circuit Judges Pell and Sprecher, who reversed the lower court, which had found no infringement, no dilution under Illinois law, no unfair competition, and declared Carbide’s mark EVEREADY invalid. Background

The related products were batteries and light bulbs. Union Carbide produced and advertised an extensive line of electric batteries, flashlights, and miniature bulbs for automobile and marine use under the name “Eveready.” The bulbs were sold in blister packages containing the term “Ever-Ready” in a four-sided logo, and the package indicated their use in high-density lamps. Ever-Ready began importing miniature lamps with the term “EverReady” stamped on their bases. Although the products were not exactly the same, the two lines were closely related. In its reversal of the District Court judgment for Ever-Ready, the Seventh Circuit gave significant weight to a consumer survey, which showed 55 percent to 60 percent of consumers were confused about the source of the products.6 Research Design—Survey Method

Plaintiff introduced two surveys designed to measure whether consumers who were shown products from Ever-Ready were confused about the source of the products. Personal interviews were conducted with two thousand consumers, half of whom viewed an Ever-Ready lamp, and half

6.╇ Excerpted from Judith Lynn Zaihkowsky, The Psychology Behind Trademark Infringement and Counterfeiting, 1st edition (Lawrence Erlbaum Associates: 2006), 83. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N ╅

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of whom saw a blister pack of Ever-Ready bulbs. Both product variations included an EVER-READY logo variation on the product and/or the package. The two groups of consumers were individually exposed only to the defendant’s products—lanterns and shrink-wrapped bulbs. None of the plaintiff ’s products or identifying marks was exposed to the survey respondents. The Questionnaires Lamp Survey

Question 1—[Screening question designed to eliminate persons involved in the lamp or bulb industries.] Question 2—Who do you think puts out the lamp shown here? [Shown Picture of defendant’s Ever-Ready lamp.] Question 3—What makes you think so? Question 4—Please name any other products put out by the same concern that puts out the lamp shown here. Bulb Survey

Question 1—[Screening question designed to eliminate persons involved in the lamp or bulb industries.] Question 2—Who do you think puts out these mini-bulbs? [Shown Picture of defendant’s mini-bulbs in blister package.] Question 3—What makes you think so? Question 4a—Have you seen or heard of any advertising by the company that you think puts out these mini-bulbs? Question 4b—Please specify where, what type, and any features you recall. Question 5—Please name any other products put out by the same concern, which you think, puts out these mini-bulbs. Survey Results

According to the Seventh Circuit Court findings, in each of the surveys an insignificant number of persons named Carbide as the maker of defendant’s products, but more than 50 percent of those interviewed associated Carbide’s products, such as batteries and flashlights, with defendant’s mark. [â•›12â•›]â•… Trademark Surveys

The only conclusion that could be drawn from these results was that an extremely significant portion of the population associated Carbide’s products with a single anonymous source. • 55 percent who saw the Ever-Ready lamp associated it with the plaintiff and/or the plaintiff ’s products: • 0.6 percent identified Union Carbide as the maker of the Ever-Ready lamp in response to the question: “Who do you think puts out the lamp shown here?” • 54.6 percent identified Union Carbide products (e.g., batteries) as being made by the same company that made the Ever-Ready lamp. Though most did not know the manufacturer of EVEREADY batteries, they did associate the Ever-Ready lamp with the maker of EVEREADY batteries, indicating confusion with a single (if unknown) source. The District Court had given little weight to any of the surveys, but the Seventh Circuit found the surveys to be probative and overruled the lower court.7 Court Findings and Determinations

According to the court findings: “The survey questions were not designed to establish secondary meaning; but once the issue of descriptiveness was improperly considered, the survey results could not be ignored.” The court ruled: “We hold that the district court’s determination that there was inadequate evidence to find that EVEREADY had acquired secondary meaning as clearly erroneous.” According to the Seventh Circuit Court summary and conclusions, the court further ruled that “the percentages are substantially higher (55.2% Lamp/60.6% mini-bulbs) than those held to support an inference that confusion is likely.” The circuit court added “taking into account the above factors, we hold the district court clearly erroneous in finding no likelihood of confusion.” Note: The Eveready Format has been criticized for possibly underestimating the level of consumer confusion when two names are very similar, since consumers may believe it is illogical that one company would use both names. Thus, the Eveready Format has been generally criticized

7.╇ IPO Annual Meeting, Presentation by Christopher A. Bloom, Bell, Boyd & Lloyd, LLC, September 12, 2006. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N ╅

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for leading respondents to consider an association between two marks that they may not normally have considered.8 Implications for Study Design and Survey Approach

1) Survey the appropriate universe—in this case, consumer purchasers and end-users. 2) Recognize relationship between secondary meaning and likelihood of confusion. 3) Avoid extraneous questions—(e.g., the (4a.) advertising question listed previously). 4) Appeal when survey results are unjustifiably ignored or misinterpreted. 5) Use split samples of sufficient number of respondents when warranted. [B]╇ Squirtco, Cross-Appellee, v. The Seven-Up Company, a Missouri Corporation and U.S.A., Inc., a Missouri Corporation, Cross-Appellants

United States Court of Appeals, Eighth Circuit Decided Aug. 20, 1980 107 U.S.P.Q. 897; F.2d 1086 Background

This was an appeal in a trademark action brought by the Squirt Company, which had changed its name to SquirtCo, against The Seven-Up Company and Seven-Up U.S.A., Inc. over the introduction of the QUIRST trademark. Seven-Up appealed from the district court’s permanent injunction against the use of QUIRST on a carbonated Research Design—Survey Method

According to the Seventh Circuit Court Summary and Conclusions, SquirtCo had a survey performed by the Maritz Company to evidence confusion between SQUIRT and Seven-Up QUIRST brands. The survey was conducted over three days at three low-cost grocery stores located in and 8.╇ Robert H. Thornburg, “Trademark Surveys: Development of Computer Based Survey Methods,” J. Marshall Rev. Intell. Prop. L. 4 (2005): 91. [â•›14â•›]â•… Trademark Surveys

around Phoenix, Arizona. During the survey, all three of the low-cost stores had the soft drinks SQUIRT and QUIRST available for sale at the reduced price of 99 cents for a six-pack of 12-ounce cans. Upon entering the grocery store, all customers were given a coupon worth 50 cents off the regular price of one six-pack of 12-ounce cans of any flavor of non-alcoholic beverage except colas. The primary purpose of the fifty-cent coupon was to stimulate the purchase of non-cola soft drinks and thus increase the efficiency of the three-day survey by having a large sample. After a customer had finished shopping, gone through the checkout line, had the groceries bagged, and was preparing to leave the store, he was intercepted by an interviewer and asked the following questions: The Questionnaire

Question 1—Did you get a coupon like this on your way into the grocery store? [Show sample coupon.] Question 2—[If “yes” to Q. 1.] Did you use your coupon? Question 3—[If “yes” to Q. 2.] What brands of six-pack 12-ounce cans of non-alcoholic beverage other than cola flavor did you buy? Question 4—May I see the six-pack(s) of (each brand in the order mentioned in Question 3) you bought? I know it is an inconvenience, so I will give you a $3.00 gift certificate good on any purchase of $3.00 or more at this store . . . if you will show me the six-pack(s) you bought. [The interviewers were instructed to record verbatim the exact brands of 12-ounce canned-non-alcoholic beverages shown to them.] Survey Results

Researchers tabulated the number of respondents who correctly and incorrectly identified the brands just purchased. One-thousand sixteen persons were interviewed. Of this total, 884 answered that they used their fifty-cent coupon (see Question 2). Of the 884 coupon users, 839 identified the brands they purchased and displayed their beverage purchases to the interviewer (see Questions 3 and 4). Of the 839 coupon users, 70 named the soft drink purchased as SQUIRT, and 65 of these were, in fact, able to display packages of SQUIRT to the interviewer. Of the other 5 of the 70, there were 3 who had actually purchased QUIRST, and 2 who had purchased SPRITE. Thus, approximately 4.3 percent of the survey respondents, or 3 out of T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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the 70 who said they had purchased SQUIRT in fact had purchased QUIRST.9 Court Findings and Determinations

Although case law suggests that survey data indicative of a net rate as low as 15–20 percent may not be very reliable, the Court couldn’t say that a 4.3 percent (3 out of 70) level of error between SQUIRT and QUIRST was de minimis or statistically insignificant when considered in the context of the entire soft drink industry. These considerations led the court to the conclusion that the defendants infringed the SQUIRT trademarks because the name QUIRST was likely to cause confusion, mistake, or deception. Additionally, SquirtCo argued that the three consumers who said they bought SQUIRT, but purchased QUIRST, were instances of actual confusion. The appellate court noted that the trial court’s refusal to treat this as actual confusion was without legal precedent. (The trial court had found the three mistakes only as indications of a likelihood of confusion.) Implications for Study Design and Survey Approach

Although the courts did not discuss the study method, other than to consider the merits of the survey’s real-world buying setting and the novelty of its design, the “infamous” Squirt side-by-side product comparison methodology has been criticized (presumably) for its lack of isolating and measuring the impact of potentially infringing components of the product trademark (e.g., the product name, logo, colors, and mark as a whole, etc.). This case marked a new development in using surveys in litigation because it discussed a survey with actual purchasers asked to display recently purchased products. The study measured actual buyer action or behavior, unlike a standard “opinion” type survey conducted in the more typical “non-purchasing” format. Note: A difference between the Eveready and Squirt Formats is that the Squirt Format presents both junior and senior marks side-by-side when conducting the survey. Nevertheless, like the Eveready Format, the Squirt Format has been criticized for possibly underestimating the level of consumer confusion when two names are very similar,

9.╇ John Monahan and Laurens Walker, Social Science in Law, 6th edition (Thomson Reuter: 2005). [╛16╛]╅ Trademark Surveys

as consumers may believe it is illogical that the same company would use both names. In addition, like the Eveready Format, the Squirt Format has been generally criticized for leading respondents to consider an association between two marks that they may not normally have considered. Despite these criticisms, the Squirt Format remains one of the most pervasive and acceptable forms of litigation trademark surveys.10 [C]╇ Exxon Corporation, Plaintiff-Appellant, v. Texas Motor Exchange of Houston, Inc., Defendants-Appellees

United States Court of Appeals, Fifth Circuit Decided October 22, 1980 208 U.S.P.Q. 384; 628 F.2d 500 Background

In late 1972 and early 1973, the owner of Texas Motor Exchange of Houston began searching for a new name for his corporation. He felt that Texas Motor Exchange was too common a name for Texas. After some thought and consultation with his attorney, the owner settled on the name Texxon. In May 1973, he established a new corporation, Texxon Motor Centers, Inc., at which point he began using all manner of advertising to promote his new corporation. He also substituted Texxon for Texas in two large neon signs located in front of his place of business so that both signs now read Texxon Motor Exchange. In addition, the owner began using Texxon as the most prominent name in the large painted sign appearing on one side of his premises. Finally, Texxon was prominently displayed in newspaper and yellow page advertisements, and Texxon Motor Exchange was used as the firm’s trade name in radio advertising. Unfortunately, in his effort to find an innovative name that would attract more business, the owner seemed to have forgotten about Exxon Corporation. In November 1972, Standard Oil Company changed its name to Exxon Corporation. Exxon Corporation owns several federal registrations of EXXON as a trademark for petroleum and other automotive products that it sells. Additionally, after adopting EXXON as its national trademark and changing its name, Exxon Corporation went to great expense to advertise and promote its EXXON mark and name throughout the United States. 10.╇ Thornburg, “Trademark Surveys: Development of Computer Based Survey Methods,” 106. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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In February 1975, Exxon Corporation filed an action for trademark infringement and unfair competition against Texxon Motor Centers. Exxon Corporation sought damages and, most importantly, a judgment restraining defendant from using Texxon or Texon in connection with its business. The [district court] held a hearing in January 1977. Circuit Court Decision

The court found that defendant’s use of Texxon infringed plaintiff ’s rights in its federally registered EXXON mark and name and that that the defendant had engaged in unfair competition. The trial judge then issued the following order: 1. Defendant Texxon Motor Centers Incorporated be, and hereby is, affirmatively directed to: (a) Change its corporate name by eliminating “Texxon” therefrom; (b) Remove TEXXON from any and all signs painted on or otherwise affixed to the building in which said defendant’s place of business is located; and (c) Deliver up for destruction all other signs, labels, prints, packages, wrappers, receptacles, and advertisements in its possession on which TEXXON appears. 2. Defendants Texas Motor Exchange of Houston, Inc. and Texxon Motor Centers Incorporated and their officers, agents, representatives, employees, attorneys and any and all persons in active concert or participation with them be and hereby are, permanently enjoined and restrained from: (a) Using TEXXON as part of any corporate or trade name or mark or in the advertising, offering for sale or sale of any services or products; or (b) Using any signs, advertising or promotional materials of any kind or nature whatsoever on which the trade name or mark is displayed in red letters on a white background above a blue bar or rectangle or in any other manner imitative of plaintiff ’s distinctive EXXON logotype. Defendant’s Response

In accordance with the district court’s order, the defendant stopped using the name Texxon on any of its signs or in any of its advertisements.

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In its place, defendant began using the marks Texon and Tex-On. Defendant, however, did not formally change its corporate name to eliminate Texxon. Instead, it conducted business under the names Texon and Tex-On and waited to formally change its name until Exxon Corporation filed a second lawsuit on the propriety of the use of either Texon or Tex-On. As anticipated, Exxon Corporation instituted a likelihood of confusion appeal and submitted a consumer survey as supporting evidence. In the second lawsuit, the District Court found no likelihood of confusion. Both cases were consolidated on appeal. Research Design—Survey Method

Hello, I am __________ with Houston Interviewing, a national marketing research and public opinion organization. We are conducting a research study of people’s reactions to company logos and signs. Are you a licensed driver and do you drive a car or truck? (IF NO, TERMINATE AND TALLY. IF YES, ASK . . . . .) No ______________________ (TALLY) Yes _____________________ 1a—Are you . . . (READ) Under 25 () 25–34 () 34–44 () 44–54 () 55 and over () 1b. (SIGHT CHECK) Sex . . . Male () Female () 1c. And, what is your occupation? Industry ______________ Job Title _____________ (ASK RESPONDENT TO PARTICIPATE IN THE STUDY AND TO COMPLETE THE INTERVIEW) Refused ______________________ (TALLY) 2a. (SHOW RESPONDENT PHOTOGRAPH AND ASK . . . .) First, would you please look at this photograph. Take as much time as you need and I will ask you some questions. What is the first thing that

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comes to mind when looking at this sign? (RECORD THE RESPONSE VERBATIM) 2b. What was there about the sign that made you say that? (PROBE FULLY) 3a. (IF A COMPANY NAME IS NOT MENTIONED IN QUESTION 2, ASK QUESTION 3a. IF A COMPANY NAME IS MENTIONED, SKIP TO QUESTION 3b.) What is the first company that comes to mind when you look at this sign? (RECORD NAME EXACTLY AS RESPONDENT STATES IT) 3b. What was there about the sign that made you mention (COMPANY)? (CLARIFY AND PROBE FULLY) Court of Appeals’ Findings and Determinations

The Fifth Circuit held that the district court was clearly erroneous when it concluded that there was no likelihood of confusion between Texxon and EXXON. Accordingly, the district court was instructed to issue an injunction, similar to its earlier one issued in January 1977, prohibiting the defendant from using the mark Texxon in connection with its business. The Fifth Circuit also held that the district court had not erred in holding that there was no likelihood of confusion between Tex-On and EXXON, although the court noted that no survey had been conducted on possible confusion between the names EXXON and Tex-On. Accordingly, the judgment of the district court was affirmed in part, reversed in part, and remanded back to the lower court. Implications for Study Design and Survey Approach Some commentators have voiced general concerns with the Exxon Format in that, when asked about what comes to mind in seeing a particular product, the respondent will likely answer with the most similar name, rather than the actual mark in mind. However, the general errors associated with these responses have been well documented and can be corrected mathematically once the survey is completed by a survey expert. Moreover, answers directed toward what comes to mind regarding the similarity of name, may also factor favorably for a trademark holder seeking to demonstrate that a likelihood of confusion exists.11

11.╇ Thornburg, “Trademark Surveys: Development of Computer Based Survey Methods,” 104–105. [â•›20â•›]â•… Trademark Surveys

[D]╇ E. I. DuPont de Nemours and Company, Plaintiff, v. Yoshida International, Inc., Defendants, 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975)

United States Patent Court 597 Decided 1975 F. Supp. 502, 526 (E.D.N.Y) (“TEFLON”) Background

E. I. DuPont de Nemours, the owner of the trademark “TEFLON,” sued Yoshida International to prevent the registration of “Efflon” for its zipper products. Pointing to the obvious similarity of the two names, DuPont claimed that the two names were likely to be confused. Yoshida responded along two lines: first, there was no danger of confusion; and second, Teflon had lost its trademark character by having become the generic name for a category of products that prevents food from sticking to pots and pans when cooking. Although both Plaintiff and Defendant conducted their own initial surveys to prove or disprove that the Teflon trademark had become a generic term, the judge was not satisfied with the methodology or the interpretation of either study. DuPont countered with a second survey. Research Design—Study Method

DuPont’s second survey was conducted by telephone. The interviewer’s first task was to explain to the respondents the difference between a brand name and a common name. Using “Chevrolet automobile” as an example, the interviewer educated the respondents. The interviewer then used “comparative questions,” asking the respondents whether each of eight product names was a brand name or a common name.12

12.╇ Hans Zeisel and David Kaye, Prove It with Figures: Empirical Methods in Law and Litigation (Springer, 1997). T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N ╅

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Survey Results Results of the Teflon Test (in percentages) Name

Brand

Common

Don’t Know

STP THERMOS MARGARINE TEFLON JELLO REFRIGERATOR ASPIRIN COKE

90 51 9 68 75 6 13 76

5 46 91 31 25 94 86 24

5 3 1 2 1 -

Court Findings and Determinations

Based on the survey results, the court found that Teflon had retained its trademark character. The court described the second survey as “the only one which really gets down the critical element of the case. . . .” According to the court’s summary and conclusions, the court did not: “wholly reject defendant’s contention that the surveys reveal some evidence and examples of generic use of TEFLON by the public. DuPont admits they do. But . . . ‘some evidence’ of generic usage is not sufficient” to prove loss of Teflon’s status as a trademark of DuPont. Implications for Study Design and Survey Approach

The TEFLON protocol has been found to be an excellent test for use in proving or disproving genericness. It can be used in multiple environments (e.g., a telephone research, a mall intercept face-to-face, and in an Internet survey). Using this protocol effectively involves an education process to explain the differences between common names and brand names. A threshold question asking about an obvious generic name—“washing machine”—is used to eliminate those who simply do not understand. From that point, the respondent is usually given ten product names to consider— ranging from obviously generic names (like gas station) to obvious brand names (like American Airlines). In between are names that can be construed, both as brand and generic names, such as Teflon and Jell-O. A final grouping of names is then given for the product category in question. The generic and brand names as well as the name being tested are in the final listing. The determinant is a comparison of the results between the common names and the brand names and where the tested name falls. [â•›22â•›]â•… Trademark Surveys

[E]╇ Daubert v. Merrell Dow Pharmaceuticals, Inc.

Supreme Court of the United States Decided June 28, 1993 On Writ of Certiorari for the 9th Circuit 509 U.S. 579 [See Chapter 11 for an in-depth analysis of the implications of Daubert.] Background

Jason Daubert and Eric Schuller had been born with serious birth defects. They and their parents sued Merrell Dow Pharmaceuticals, a subsidiary of Dow Chemical Company, in a California state court claiming the drug Benedictin had caused the birth defects. Merrell Dow removed the case to federal court and then moved for summary judgment because its expert had submitted documents showing that no published scientific study demonstrated a link between Benedictin and birth defects, Daubert and Schuller submitted expert evidence of their own that suggested that Benedictin could cause birth defects. Daubert and Schuller’s evidence, however, was based on in vitro and in vivo animal studies, and at the time of the case pharmacological studies and re-analysis of other published studies and their methodologies had not yet gained acceptance within the general scientific community. Prior Law: In 1923, Frye v. United States became the basis of the “Frye” standard, which is that an expert’s opinion was admissible only if the cited technique or methodology of the expert was generally accepted as reliable in the relevant scientific community. Once Congress adopted the Federal Rules of Evidence in 1975 (n particular Rule 702), the Frye standard was no longer the governing standard for admitting scientific evidence in trials held in the federal courts. Rule 702 provides (in part): If scientific evidence, technical or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training or education, may testify thereto in the form of an opinion or otherwise….

The text of Rule 702 did not make admissibility of expert testimony dependant on general acceptance. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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The Daubert Determination

In Daubert, the United States Supreme Court issued an opinion instructing federal judges how to decide whether to allow expert testimony into the courtroom. The judges were directed to act as “gatekeepers” in the courtroom and to examine the scientific method and underlying expert evidence and to admit only evidence that was both “relevant and reliable.” The Supreme Court suggested four criteria for determining whether science was reliable and, therefore, admissible: 1) Was the evidence based on a testable theory or technique? 2) Had the theory or technique been peer reviewed? 3) In the case of a particular technique, did it have a known error rate and standards controlling the technique’s operation? 4) Was the underlying science generally accepted?13 The Court explicitly refused to adopt any “definitive checklist or test” for determining the reliability of expert scientific testimony, and it emphasized the need for flexibility. The Court also noted Rule 702’s requirement that expert testimony assist the trier of fact—primarily a question of relevance or “fit,” sufficiently tied to the facts of the case. By way of offering further guidance, the Court emphasized that the admissibility inquiry must focus “solely on the [expert’s] principles and methodology, not on the conclusions they generate.” Key Issues

1) Since only scientific knowledge can be offered as expert testimony and the Daubert Court regarded scientific knowledge as only that which is derived by scientific method, only inferences that are derived from a scientific method can be offered as expert testimony.14 2) One trend since Daubert is that the courts appear to be excluding surveys used in cases with juries with greater frequency using their “gatekeeper function” in order to prevent a jury from being misled.” One might ask if the judge has become scientist, clinician, and jury?15 13.╇ Daubert: The Most Influential Supreme Court Case You’ve Never Heard of (Tellus Institute, 2003). 14.╇ Robert W. Lehrburger, “The Daubert Rule and Consumer Surveys,” IP on Trial (Spring 2002). 15.╇ Bernice Leber, “Consumer Surveys in Trademark Cases: Are They in Evidence or Out?,” New York Law Journal ( June 25, 2005). [â•›24â•›]â•… Trademark Surveys

Implications for IP Surveys

Like Watergate, Daubert has become a term that encompasses an increasingly wider territory. Under Daubert, judges are the gatekeepers regarding expert testimony, using specific criteria to evaluate and determine admissibility. So pronounced are the effects of Daubert that virtually every kind of research study offered by a marketing or social science researcher is now subject to challenge. Furthermore, soon after the Daubert decision, courts added additional criteria. The result is increased difficulty for attorneys to have expert witnesses surveys admitted into evidence. The net result, among other things, is the elimination of marginal studies that might have been admitted before Daubert. [F]╇ Kumho Tire Company, Ltd., Petitioners, v. Patrick Carmichael

Supreme Court of the United States Decided March 23, 1999 526 U.S. 137 (131 F.3d 1433, reversed) Background

Patrick Carmichael was driving his minivan on July 6, 1993, when the right rear tire blew out. One of the passengers in the vehicle died, and others were severely injured. Three months later, the Carmichaels sued the manufacturer of the tire, Kumho Tire, claiming that the tire was defective and the defect caused the accident. The Carmichaels’ case rested largely on testimony from a tire failure expert. The tire failure expert relied on elements of tire technology, which the manufacturer did not dispute, as well as background facts about the particular tire on the Carmichaels’ van. The expert’s conclusion, that a defect in the tire caused the accident, relied on certain observations about the tire that were vigorously disputed. Kumho also disagreed with certain aspects of the tire expert’s methodology and asked the federal district court to exclude it under Rule 702 of the Federal Rules of Evidence. The district court took its cue from Daubert, which provided the gatekeeping role for trial judges in admitting expert testimony. The Daubert court had held that certain factors contribute to the reliability, and hence the admissibility, of expert testimony. One factor was the general validity of the expert’s methods. The district court found the tire expert’s methods not scientifically valid, and hence excluded his testimony. The Carmichaels appealed to the Eleventh Circuit. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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The Eleventh Circuit reversed the district court’s ruling in favor of Kumho. In doing so, it reasoned that Daubert was expressly limited only to scientific expert testimony and did not apply to “skill- or experience-based observation.” The tire expert’s testimony rested on observation and experience, and so the Eleventh Circuit reasoned the district court should have made a different ruling based on Rule 702 without the Daubert gloss. Kumho Tire asked the Supreme Court to review whether Daubert applied solely to scientific evidence. Kumho Majority Opinion

In Daubert, the Supreme Court found in the text of Rule 702 a gate-keeping function for federal trial judges who were to determine whether expert scientific testimony was admissible in a federal trial. However, since Rule 702 applies to “scientific, technical, or other specialized knowledge,” the court opined that: “This language makes no relevant distinction between ‘scientific’ knowledge and ‘technical’ or ‘other specialized’ knowledge.” The Court observed that the line between “scientific” and “technical” knowledge is not always clear. “Pure scientific theory itself may depend for its development upon observation and properly engineered machinery. And conceptual efforts to distinguish the two are unlikely to produce clear legal lines capable of application in particular cases.” Furthermore, If the line between “scientific” and “technical” knowledge were not clear, then it would be difficult for federal trial judges to determine when they were to perform Daubert’s gate-keeping function and when to apply some other threshold test the Court might design for applying Rule 702. In addition, the Court saw no “convincing need” to draw a distinction between “scientific” and “technical” knowledge because both types of knowledge would typically be outside the grasp of an average juror. Accordingly, the Court held that the gate-keeping function described in Daubert applied to all expert testimony proffered under Rule 702. The Daubert ruling had mentioned four factors that district courts could take into account in making the gate-keeping assessment—whether a theory had been tested; whether an idea has been subjected to scientific peer review or published in scientific journals; the rate of error involved in the technique; and the general acceptance of the underlying science. In the context of other forms of expert knowledge, the Court in Kumho conceded other factors might be relevant. The Court said that whether these additional factors could be taken into account when performing the Daubert gate-keeping function would depend on the particular kind of expert testimony involved in a particular case. Equally as important, because federal [â•›26â•›]â•… Trademark Surveys

appeals courts review evidentiary rulings of district courts for abuse of discretion, the Court reiterated that district courts have a certain latitude in determining how they will assess the reliability of expert testimony as a subsidiary component of the decision whether to admit the evidence at all. Applying that standard to the evidence proffered by the Carmichaels’ tire expert, the Court concluded that the district court correctly refused to admit the expert’s testimony. The district court had to determine whether the tire expert’s methods could reliably determine what had caused the tire on the Carmichaels’ van to explode. The expert’s experience as a tire engineer was not the problem—the expert had worked for ten years at Michelin. The fact that visual inspection of tires was generally a reliable method was not an issue either because the issue before the court was specific to the tire on the Carmichaels’ van. Nevertheless, the expert said that his inspection of the tire led to the conclusion that a defect caused the tire to explode because he could not find evidence of other causes. In response, the Supreme Court stated: “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.” Since the district court acted within its discretion to exclude the evidence proffered by the tire expert in light of these concerns, the Supreme Court reversed the Eleventh Circuit’s overruling of the district court. [G]╇ Victor Moseley and Cathy Moseley v. V Secret Catalogue Inc.

Supreme Court of the United States Decided March 4, 2003 537 U.S. 418 No. 01–1015 Background

The case stemmed from Victor and Cathy Moseley’s operation of an adult novelty store named “Victor’s Secret” in Elizabethtown, Kentucky. Victoria’s Secret learned of the store and, fearing that the name “Victor’s Secret” would confuse and/or tarnish Victoria Secret’s image, asked the Moseleys to halt the use of the name. The Moseleys changed the name to “Victor’s Little Secret,” but Victoria’s Secret remained unsatisfied. Victoria’s Secret filed suit against the Moseleys and asserted claims of trademark infringement, unfair competition, and trademark dilution. Finding no likelihood of confusion, the district court granted summary judgment for the Moseleys on the claims of trademark infringement and T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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unfair competition; however, it granted summary judgment for Victoria’s Secret on its claim of trademark dilution under the Federal Trademark Dilution Act. The Moseleys appealed the trademark dilution ruling to the Sixth Circuit Court of Appeals (decision upheld), and then to the United States Supreme Court.16 Court Findings and Determinations

Dilution law provides an owner of a famous mark a remedy against uses that diminish the mark’s ability to distinguish goods and services, regardless of competition or a likelihood of confusion among consumers. In its highly anticipated decision, the United States Supreme Court stated that the text of the Federal Trademark Dilution Act of 1995 (FTDA) required proof of actual dilution of a famous mark.17 Victoria’s Secret declined to argue possible confusion and unfair competition in its claim, thus these points were not even considered by the Supreme Court. However, in its decision, the Court found that even though Victoria’s Secret mark is an “unquestionably valuable and famous mark, the expert retained by Victoria’s Secret failed to prove “the impact of petitioner’s name on the strength of the respondents’ mark.” In its decision, the Supreme Court interpreted the FTDA as requiring the owner of a famous trademark to prove that its trademark was actually diluted by a third party to obtain injunctive relief under the statute. The Court was not persuaded by arguments that consumer surveys are expensive and often unreliable or that evidence of actual dilution is difficult to obtain. The Court found that Victoria’s Secret had failed to present sufficient evidence of dilution by blurring or tarnishment. As Justice Stevens said in the opinion’s final paragraph, “The evidence in the present record is not sufficient to support the summary judgment on the dilution count.” Resulting Modifications to Trademark Dilution Consideration

The ruling was criticized by many industry groups and academics and a large-scale lobbying effort to modify the applicable federal dilution standard ensued. That effort culminated in 2006, when Congress passed, 16.╇ Robert B. Burlingame, Esq., Excerpt—Intellectual Property Counseling and Litigation Section, Pillsbury Winthrop LLP. 17.╇ Jonathan Hudis and Amy C. Sullivan, “Victoria’s Secret and the Ever Elusive Dilution Doctrine,” Intellectual Property Today (April 2003). [â•›28â•›]â•… Trademark Surveys

and President George W. Bush signed into law, the Trademark Dilution Revision Act (TDRA), which expressly requires plaintiffs to prove merely a “likelihood of dilution” to prevail on a claim for trademark dilution under federal law. The TDRA also clarified that only truly famous trademarks—specifically those that are 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—are entitled to the extraordinary protections that the TDRA offers.18

18.╇ Court Issues Decision in “VICTORIA’S SECRET” Trademark Dilution Suit, Arent Fox, 2009. T H E I M PA CT O F S U RV E Y S O N I P L I T I G AT I O N â•…

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CHAPTER 2╇

Market Research Considerations

2.01╇ INTRODUCTION

This chapter takes an in-depth view of the marketing research process and how it relates specifically to IP surveys. The focus is made up of the following 12-step process: Step 1—Establishing the need for marketing research Step 2—Defining the problem Step 3—Determining the objectives of the research Step 4—Determining the research design Step 5—Identifying secondary data types and sources Step 6—Designing survey data collection forms Step 7—Determining the sample plan and size Step 8—Collecting the data Step 9—Tabulating the data Step 10—Analyzing the data Step 11—Validating the data Step 12—Preparing the final research report Source Materials for this chapter came largely from: Alvin C. Burns and Ronald F. Bush, Marketing Research, 2nd edition, (Upper Saddle River, NJ: Prentice Hall, 1998). Carl McDaniel and Roger Gates, Contemporary Marketing Research, 4th edition, (Cincinnati: South-Western College, 1999).

2.02╇ STEP 1—ESTABLISHING THE NEED FOR MARKETING RESEARCH

In intellectual property matters—particularly trademark infringement cases—there is often the need to prove or disprove important allegations in the complaint. If the plaintiff alleges the defendant has done something that causes a likelihood of confusion in the marketplace, such an allegation must be proven by the plaintiff or disproved by the defendant, and a scientific survey that conforms to the standards of the judicial system is an accepted way to provide such evidence. If secondary meaning is the issue, it either exists or does not exist and must be proven, and again a scientific survey that conforms to the standards of the judicial system is an accepted way to provide this evidence. If the defendant alleges that the use of somebody’s trademark should be permitted because the trademark has become a “generic” name, this must be proven and a scientific survey that conforms to the standards of the judicial system is an accepted way to provide such evidence. If a trademark is alleged to be descriptive and not suggestive, this must be proven as well and utilizing a scientific survey that conforms to the standards of the judicial system is an accepted way to provide such evidence. On the other side of the coin, if the defendant seeks to disprove any of the plaintiff’s allegations, they can undertake a scientific survey that conforms to the standards of the judicial system as an accepted way to provide such evidence. While the need may exist for a survey, the practical considerations may not exist because surveys take time and money. So determining the need for a survey is also a function of how much it will cost and how much time it will take. Therefore, if a settlement is eminent in a case, why spend the money? Also, if the case has moved into the eleventh hour and discovery is about to close, perhaps there is not enough time to undertake a survey. Furthermore, if the matter in question is so small and the potential loss to the losing party in the dispute is less than the cost of undertaking the survey, why bother. However, if the matter is financially significant, if evidence needs to be established, and if there is sufficient time and the payoff for undertaking the survey will justify the expense, then a survey definitely should be considered.

2.03╇ STEP 2—DEFINING THE PROBLEM

The survey expert faces six key questions in the expert’s quest to define the specific problem at hand: 1. What is the background with respect to the problem? 2. What issues or questions prompted the considerations to undertake the research? [â•›32â•›]â•… Trademark Surveys

3. What specific types of information or data could clarify or potentially solve the problem? 4. What alternative decisions, choices, or actions will be presented from the results of the research or the findings from the study? 5. How much is that information worth—in terms of what opportunities will be gained—with respect to the costs or risks connected with obtaining the information? 6. What is the time frame involved with doing the research and what resources are available to perform the research? The bottom line is precisely what can be gained or lost by undertaking the research effort. When the survey expert has thoroughly done his homework and due diligence, and becomes thoroughly immersed in the problem, it becomes clear what resources will have to be committed to the project. It is equally important that the survey expert obtain as complete a preliminary picture as possible. This can be accomplished by asking pointed questions, and carefully reviewing important case documents and other materials. The survey expert should also understand all the key motives on behalf of the client in pursuing the research. To this end, the level of interÂ� action between client and survey expert and the openness in which all issues are presented and discussed will be directly proportional to the value the survey expert will provide. Ultimately, the phase of defining the problem must be viewed as a partnership between survey expert and client. Such a partnership will only be successful if there is mutual respect, trust, and open Â�communications.

2.04╇ STEP 3—DETERMINING THE OBJECTIVES OF THE RESEARCH

Research objectives address the informational needs that must be considered in order to focus on the problems presented in the case. A good technique is the formulation of an itemized list of the informational needs agreed upon by the client and the survey expert. In compiling such a list, four important qualities need to be present: (1) the issues should be stated precisely; (2) they must be stated with the proper detail; (3) they must be stated clearly; and (4) they must be presented in practical, operational language. ANECDOTE: To illustrate these qualities, here is an example of a litigation matter in which co-author, James T. Berger, was involved. The case involved a nationally known and advertised mortgage company and a M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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regional bank that changed its name to allegedly create confusion in the marketplace. The precise objective of the research was to determine if there was confusion in the marketplace. The marketplace had to be clearly and precisely defined as people who have either already obtained a mortgage or who intended to acquire a mortgage. The detail required was to accurately portray the mortgage company’s use of its trademark. In so doing, the mark had to be presented clearly so as to remove any doubt as to how the information was to be ascertained and presented. Finally, an operational research design had to be created to focus on the research objectives in that it implied specific measurement and statistical analysis. If the research is intended to test some form of causation of a relationship between two or more variable, it is necessary to formulate a hypothesis. The dictionary defines “hypothesis” as “a tentative assumption made in order to draw out and test its logical or empirical consequences.” In commonly used IP surveys, typical hypotheses would be: (1) there is likelihood of confusion; (2) there is no likelihood of confusion; (3) secondary meaning exists; (4) secondary meaning does not exist; (5) the mark is generic, descriptive, or suggestive; and (6) the mark is NOT generic, descriptive or suggestive. While there are different types of research to test hypotheses, two common versions are “experimental” or “observational.” The most common type of experimental research to test a hypothesis is the medical model where a proposed drug is tested to determine if it is effective in treating or curing something. The more common types of observational research involve the presentation of different types of products, services, and packaging presentations, and determine if the respondent(s) see relationships between the items that are presented. In doing experimental research, it is usually desirable to have a control, which is some group, question, or device used to rule out alternative explanations for the resulting effect. The sugar pill (placebo) works well in this type of experimental research. The sugar pill is an easy, inexpensive, and highly effective control. Unfortunately, it is not always so easy to create a control—especially in observational situations. In such cases, it may not be reasonable and practical to use controls, and one might seek to rely on other statistical inferences to demonstrate causation. One such device is the Chi Square analysis. This type of statistical analysis tests whether the observed results are caused by something other than chance. If one flipped a coin one hundred times one would expect approximately fifty heads and fifty tails. If the results showed sixty heads and forty tails, one might assume the coin was unfair, and one might assume the reason for the discrepancy was that a fraudulent coin was used. This is how the Chi Square analysis works and how it can demonstrate causation. [â•›34â•›]â•… Trademark Surveys

The following summarizes what Dr. Diamond writes about the use of controls: According to Dr. Diamond, most surveys that are designed to provide evidence of trademark infringement or deceptive advertising are not conducted to describe consumer beliefs. Instead, she writes, they are intended to show how a trademark or the content of a commercial influences respondents’ understanding or perceptions of a product or commercial. Dr. Diamond uses as an example that the question is whether the commercial misleads consumers into thinking that Product A is a superior pain reliever, not whether consumers have an inaccurate belief about the product. She adds that if consumers already believe—before viewing the commercial—that Product A is a superior pain reliever, a survey that records consumers’ impressions after viewing a commercial for Product A may reflect preexisting beliefs rather than impressions produced by the commercial. Surveys that record consumer impressions, Dr. Diamond writes, have limited ability to find answers to questions about where these impression originated. She points out that a consumer’s response to any question on the survey may be the result of information or misinformation coming from sources other than the trademark the respondent has just seen in the commercial. As another example, she points out that in a trademark survey attempting to show secondary meaning, respondents were shown a picture of the stripes used on Mennen stick deodorant and asked, “[W]hich [brand] would you say uses these stripes on their package?” Dr. Diamond surmises that the high percentage of respondents that selected “Mennen” from an array of brand names may merely have represented market or brand share at the time the survey was taken. Thus, when respondents were asked to offer a brand name, they might simply have guessed the brand that was most familiar to them. Some surveys attempt to reduce the impact of preexisting impressions on respondents’ answers by instructing respondents to focus solely on the stimulus as a basis for their answers. Thus, the survey includes a preface such as “based on the commercial you just saw” or seeks to focus respondent attention on the mark at issue by suggesting something like “Based on what you see on the package.” Such efforts may be only partially successful because it is often difficult for respondents to identify accurately the source of their impressions, according to Dr. Diamond. The more routine the idea being examined in the survey—for example, is the advertised pain reliever more effective than competitive products— when it just happens that that trademark belongs to the brand holding the largest market share, the respondent’s answer might very well be influenced by preexisting impressions or by guessing based on market exposure rather than by the actual words and images communicated in the commercial. M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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Dr. Diamond points out that it is possible to adjust a survey design to allow the respondent to draw causal inferences about a trademark’s effect or to cause an allegedly deceptive commercial to be perceived as clear and unambiguous. Dr. Diamond suggests that by adding an appropriate “control group” the survey expert can directly test the influence of the stimulus. She writes that in the simplest version of a survey experiment, respondents are assigned randomly to one of two conditions—the experimental condition where the allegedly deceptive commercial is shown and a “control” condition where the allegedly deceptive material is not shown, Respondents in both the experimental and control groups answer the same set of questions. Dr. Diamond points out that the effect of the allegedly deceptive message can be evaluated by comparing the responses from the experimental group members with the responses from the control group members. For example, if 45 percent of the respondents in the experimental group responded with the deceptive message such as the advertised product is higher in protein that its competitor, whereas only 6 percent of the control group respondents gave that response, the difference between 45 percent and 6 percent (considering sampling error) can be isolated and can show causation from the allegedly deceptive commercial. Dr. Diamond points out that without the control group, it is not possible to determine how much of the 45 percent is due to respondents’ preexisting beliefs or other “background noise” such as a misunderstanding by respondents of the question. What would assume that the preexisting beliefs and other background noise would produced similar responses in the control groups as in the experimental group. Dr. Diamond also points out that if respondents who viewed the allegedly deceptive commercial respond differently than respondents who viewed the control commercial, the difference cannot be the result of a leading question, because both groups answered the same question. The ability to evaluate the effect of the wording of a particular question makes the control group design particularly useful in assessing responses to closed-ended questions, writes Dr. Diamond. In designing a control group study, Dr. Diamond suggests the expert select a stimulus for the control group that shares as many characteristics with the experimental stimulus as possible, with the key exception of the characteristic whose influence is being assessed. Dr. Diamond writes that a survey with an imperfect control group generally provides better information than a survey without a control group. However, she maintains that the choice of the specific control group requires a degree of care and she suggests that it should influence the weight that the survey receives. For example, she points out that a control stimulus should not be less attractive than

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the experimental stimulus if the survey is designed to measure how familiar the experimental stimulus is to respondents. She points out that attractiveness may affect perceived familiarity. Importantly, she adds, that the control stimulus should not share with the experimental stimulus the feature whose impact is being assessed. For instance, if the control stimulus in a case of alleged trademark infringement is itself an infringing mark, reactions to the experimental and control stimuli may not differ because both stimuli cause respondents to articulate similar levels of confusion. Explicit attention to the value of control groups in trademark and deceptive advertising litigation is a recent phenomenon, writes Dr. Diamond in 2000. However, it has become increasingly more common. Dr. Diamond reports that a LEXIS search using “Lanham Act” and “control group” revealed fourteen district court cases in the six years since the first edition of Dr. Diamond’s manual in 1994. She suggests that one reason why cases involving surveys with control groups may be underrepresented in reported cases is that a survey with a control group produces less ambiguous findings, which may lead to a resolution before a preliminary injunction hearing or trial occurs. Dr. Diamond adds that another more common use of control methodology is what is known as the “control question.” Instead of creating a control stimulus for a separate group of respondents, Dr. Diamond suggests that the survey asks all respondents one or more control questions along with the question about the product or service. For example, she suggests that in a trademark dispute, a survey could indicate that 7.2 percent of respondents believed that “The Mart” and “Kmart” had the same ownership. However, the court found no likelihood of confusion based on survey evidence that 5.7 percent of the respondents also thought that “The Mart” and “King’s Department Store” also shared the same ownership. Similarly, according to Dr. Diamond, a standard technique used—known as the Teflon protocol—to determine if a brand name is generic is to present survey respondents with a series of product or service names and ask the respondents to indicate in each instance whether they believe the name to be a brand name or a common name. By showing that 68 percent of respondents considered Teflon to be a brand name (a proportion highly comparable to the 75 percent of respondents who recognized Jell-O, an acknowledged trademark, to be a brand name, and markedly different from the 13 percent of respondents who believed “aspirin” to be a brand name), DuPont, the maker of Teflo, was able to retain the trademark. Dr. Diamond points out that every measure of opinion or belief in a survey reflects some degree of error. “Control groups and control questions are the most reliable means for assessing response levels against the

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baseline level of error associated with a particular question,” Dr. Diamond writes.1 2.05╇ STEP 4—DETERMINING THE RESEARCH DESIGN

After a thorough analysis of the research problem, the survey expert will select a research design, which encompasses a series of decisions resulting in the master plan for the research. The plan specifies the methods and procedures to be used for collecting and analyzing the data required for the study. It is important to understand that every IP research problem is unique. While there are certain similarities or common denominators, there are unique target markets, geographical constraints or other situational variables that are special to each IP research endeavor. Because each problem is different, care must be taken to select the right approach to addressing the problem at hand. Even though each problem is unique, the survey expert/researcher need not reinvent the wheel each time a survey is performed. Indeed, one of the measures of value of the survey expert is his or her experience in performing a similar type of research. Economies can therefore be realized through the adaptation of previously used survey protocols and templates. There are three basic types of research designs: Exploratory, Descriptive and Causal. Exploratory research enables one to gain background information, to define terms, clarify problems and hypotheses, and establish research priorities. Descriptive research enables one to describe and measure marketing phenomena at a point in time. Causal research enables one to make “if-then” statements. The choice that is most appropriate is a function of the research objectives. Basic to all three types is the need to: (1) develop hypotheses, and (2) test these hypotheses. It is important to understand that the research process can evolve during the execution of the research. These three research design formats can be interdependent. In some cases, it may be acceptable to use only one of the designs—exploratory, descriptive, or causal—in other cases, it may be necessary to utilize two or even all three designs. 1.╇ Shari S. Diamond, “Reference Guide on Survey Research,” in Reference Manual on Scientific Evidence, 2nd ed. (Federal Judicial Center, 2000) 229–276.

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What might begin as a descriptive format may uncover certain information  that will require more exploratory research. Possibly, exploratory research may provide the information necessary to perform descriptive research, which in turn might provide the data needed to undertake a causal study. Exploratory research is the normal starting point in an IP research effort. It is generally unstructured and informal, with the objective of gaining background information on the general nature of the problem at hand. Thus, such research usually does not include questionnaires or a formalized research plan. It may include conducting library and/or Internet research. It also may include conversations with sales people, customers, and industry experts regarding opinions about the company, its products and the competitive environment. The researcher spending a day with a salesperson calling on customers might be an example of exploratory research. The specific objectives of exploratory research would be to: • Clarify problems • Develop hypotheses • Establish priorities for the research Specific methods for conducting exploratory research might include: • Secondary data analysis. A review of already published information that pertains, in some way, to the research issue. • Experience surveys. This involves gathering information from individuals with a familiarity with the issues involved, such as talking to an editor of a trade publication or a trade association official. • Case analysis. This refers to a review of available information about a former situation or a problem encountered by some other company in the industry that might have relevance to the issues at hand. • Focus groups. This is a qualitative research technique where an appropriate group of individuals are brought together with a moderator. Such sessions often prove illuminating to the issues in the case. Focus groups enable one to learn about feelings and emotions, and the group dynamic inherent to focus groups tends to reduce inhibitions and permit people to reveal important inner feelings. • Projective techniques. This is another form of qualitative research and involves one-on-one interviews where a subject is asked to project himself or herself into some kind of situation. A popular technique would be to ask the subject to complete a sentence.

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When we seek quantitative information for the key issues of a case, we move into the realm of descriptive research. Here, such issues as Â�awareness and recognition of brands, differentiation of brands and trademarks, similarities of brands and trademarks, and the ability to determine the sources of brands and trademarks would be the key issues in descriptive research as it pertains to IP litigation matters. Among the other important issues included in this form of research: who may be defined as the customers or competitors of the trademark/brand in question; what may be defined as the products or services that are purchased or used; where do customers who are identified by the particular brand or trademark purchase the products or services; when are the products identified by the brand or trademark being purchased or used, or how frequently; and how are the products being used. There are two major types of descriptive studies—Cross-sectional and Longitudinal: Cross-sectional studies measure a population or target market at one point in time and are often referred to as “snapshots.” To draw any longerterm meaning from cross-sectional studies would require that they be performed at intervals so that changes over time can be measured and compared to bench-mark numbers. Sample surveys are cross-sectional studies where a portion of a population is chosen to reflect the entire population. This is a common format used in IP litigation surveys. Longitudinal studies measure the same population over a period of time and make use of “panels.” This research format is infrequently used in IP litigation research because of its long-term nature. Longitudinal studies have value in exploratory research when the survey expert seeks background information and is provided with the necessary tools to complete such studies. Causal Research can be equated to experimental research. It focuses on conditional statements such as “If x then y.” If one doesn’t drink for a day, one will be thirsty. What is attempted in this form of research is to manipulate variables and then draw conclusions based on causation. This is used in standard medical research where a certain population is given the actual medication and another population is given the sugar pill (placebo) and based on the results achieved from the research a conclusion on causation can be reached. The group taking the sugar pill is considered the “control” group and the group taking the real medicine is considered the “test” group. Survey experts often try to develop experiments of this type in an attempt to prove causation. Additional information about the use of controls and control devices are found earlier in this chapter.

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2.06╇ STEP 5—IDENTIFYING SECONDARY DATA INFORMATION TYPES AND SOURCES

As previously discussed, data needed to analyze the merits of IP litigation research fall into two categories: Primary Data, which is new information gathered specifically for the task at hand, and Secondary Data, data gathered in the past for some other purpose other than the task at hand. Let’s first analyze some valuable sources of secondary data that can be used by the survey expert primarily for the Exploratory Research phase: Internal Data—Data that has been collected from within the company, including such things as sales reports, invoices, and purchase orders. This also might include financial and accounting data such as sales statements, profit and loss statements, balance sheets, and statements of cash flow. Database Marketing Data—Information from an internal database used to track marketing programs aimed at customers. Published Sources—Information from trade associations, trade publications, and directories. Syndicated Sources—This is highly specialized information and often not available in libraries. The suppliers of the syndicated information sell it to multiple subscribers. It is often available, at a cost, over the Internet. There are some obvious advantages to using secondary data: 1. 2. 3. 4.

It can be obtained quickly It is usually far less expensive than primary data It is usually readily available It can be used to enhance the primary data that will eventually be collected

There are some major disadvantages as well: 1. The measurement units reported in the secondary data might not match the measurement units required by the research. For example, data may be in units rather than in dollars. 2. The classifications for the secondary data may not be usable by the survey expert. Age or income levels may be crucial to the survey expert/researcher but the secondary data may not offer these breakdowns. 3. The secondary data often is out-of-date. Census numbers, for example, are taken every ten years. Reporting years-old data may not be relevant to the immediate situation.

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Survey experts who seek to incorporate secondary data in their research must address the following key questions: 1. 2. 3. 4. 5.

What was the purpose of the original study? Who collected the information? What specific information was collected? How was that information obtained? How consistent is that information with other information?

2.07 STEP 6—DESIGNING SURVEY DATA COLLECTION FORMS

As we begin a discussion of data collection, it is important to keep in mind the major advantages of surveys compared with observation and other qualitative methods of performing research. Using surveys offers the ability to collect significant amounts of data in an economic and efficient manner and provides opportunities for larger sample sizes. There are five important advantages to survey research: 1. Ability to standardize—Every responder is given the ability to react to identically worded questions that are presented in the same order. 2. Administrative efficiency—Interviewers or interviewing devices such as an Internet survey pose questions to respondents and the answers are recorded efficiently and accurately. In some cases, respondents can fill out the questionnaire themselves. 3. Ability to go beyond the survey—Surveys offer the opportunity to question motives, circumstances, sequences of events, and even mental deliberations. 4. Tabulation/Analysis—Even large sample sizes allow for computerized processing that allows for quick tabulations, cross-tabulations, and coding of verbatim answers. 5. Segmentation dynamics—It is possible to divide respondents into segments or categories and to compare results from one group to the next. [A]╇ Modes of Data Collection

There are three alternative modes for data collection: (1) questions are asked by a person; (2) a computer is used to ask or assist in asking questions; and (3) respondents are directed to fill out a questionnaire directly. [â•›42â•›]â•… Trademark Surveys

These three alternative modes of data collection have advantages and disadvantages: 1. Questions Asked by a Person. There are four major advantages: (A) Feedback: the questioner makes sure the interviewee understands the question and, if not, the interviewer can ask the question again; (B) Rapport. It is possible—even desirable—to establish rapport between the interviewer and interviewee; (C) Screening control. Personal interviews ensure that those selected are qualified; and (D) Adaptability. Qualitative inputs can be developed into the survey so that the respondent might have a choice in saying “somewhat agree” and “somewhat disagree.” Also there are opportunities to probe and ask “why.” â•… The disadvantages of person-based research include: (1) the human element can make interviewing slower and subject to errors; (2) It can be more expensive than telephone or Internet research; and (3) there is always the possibility that some interviewers might be poorly trained or unskilled. 2. Computer-Assisted Interviewing. This form of interviewing is still evolving as technology improves. In computer-administered survey research the computer plays an essential role either in assisting in the interview or relating directly to the interviewee. The use of the computer can be live on-line or through the use of a disk. Live interviewers can guide interviewees through specially created websites so that the interviewee can react to visual stimuli. Many of the advantages of the person-administered survey can be utilized through computeraided formats. There are significant advantages with computer-aided surveys: (A) Speed. Computers can automatically dial numbers and can jump to questions based on specific responses. This means faster and less expensive research; and (B) Accuracy. When properly programmed, computerized research removes all the problems sometimes inherent in person-based research: no skipped questions; no misunderstanding as to how to pose the questions; computers don’t suffer from fatigue; and there is no danger a computer will cheat. Disadvantages include costly setup time, the need to create special websites, and the inability to probe. 3. Self-Administered Surveys. This is the old-fashioned mail survey where the respondent fills out a questionnaire and submits it. The interviewee moves at his or her own pace and submits it when he or she feels like it. The advantages of self-administered surveys: they are M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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less costly, and the respondent controls the response pace and does not feel rushed or pressured. There are major disadvantages to selfadministered surveys: there is no opportunity to interact, no opportunity to ask follow-up questions or probe, and it is difficult to insert skip patterns. Another major disadvantage is the bias inherent in the survey in which people with more time are more likely to fill out the survey whereas busier people will not. ANECDOTE: Although not for litigation purposes, co-author James Berger has had experience in performing surveys for banks regarding customer perceptions of products and services. While the response rates were high, it became very obvious that the results were skewed toward older bank customers, such as retirees, who had time to fill out the survey. When telephone interviews were done with a more accurate cross section of customers, the results were far different. [B]╇ The Challenge of Response Rates

Low-response rates are a challenge to every data collection mode. Shoppers in malls are not really there to take surveys. Cash or merchandise incentives are often needed to pry a few minutes from a mall shopper’s time. Many are not interested in participating, no matter what the incentives. If the person-based interview requires people with special qualifications, a prerecruit survey may be needed and this can cost large amounts of money per interview. Telephone interviewing has become far more challenging with voicemail systems, caller ID, and other barriers. The Internet is beset with spammers and people are overrun with junk e-mail. Getting somebody to even open an e-mail, let alone fill out a questionnaire, is a difficult challenge and response rates are extremely low. One of the best ways of obtaining higher response rates from Internet surveys is using special panels. Members of these panels are provided with incentives to fill out the surveys. The problem with this approach is that you may be dealing with the “professional survey taker” who is biased in favor of taking surveys. The mail survey competes with “junk-mail” and, as with e-mail, just getting the envelope opened, let alone having somebody actually spend the time filling out the survey, is a challenge. Often a mail survey may contain a dollar bill within the envelope, and while taking the dollar bill doesn’t commit the respondent to complete the survey, there is a human conscience element that compels many people to do something because of the incentive.

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2.08╇ STEP 7—DETERMINING THE SAMPLE PLAN AND SIZE

There are some basic concepts and definitions one should be aware of with respect to sampling. A population is defined as the entire group under study, as specified by the objectives of the research project. For example, if the issue is likelihood of confusion between two toothpastes—Colgate and Colguard—the relevant population would be any individual who purchases toothpaste. A sample is some subset of the population that should represent the entire population. The sample unit is the basic level of investigation. While a sample is some subset of the population, a census encompasses every member of that population. The basic example of this would be the U.S. Population Census that takes place every ten years and requires data from every household. [A]╇ Sampling Error

Sampling error is any error in a survey that occurs because a sample rather than a census is used. There are two causes for sampling error: (1) the way in which the sample was selected, and (2) the numeric size of the sample. The selection of a sample requires a sample frame, which is some master list of all the sample units within a population. For example, if the survey expert has deemed the population to be all the doctors practicing medicine in Michigan then the survey expert will need a listing of all practicing physicians in Michigan. Such listings often are available from list sources and can be purchased by the survey expert. The sample frame error quantifies the degree in which the sample frame fails to account for all of the population. While the census can be relatively error-free, there are excellent reasons for opting for the sample rather than the census. Clearly, there are the practical reasons of time and money as is often seen when the total population is too cumbersome to work with because of the numbers involved and the cost of obtaining information. The second reason involves the difficulty in analyzing the huge amounts of information often generated by the census. Samples, however, can be of various sizes. The larger the sample size the smaller the sampling error. Political pollsters often use sample sizes of between twelve hundred and fifteen hundred voters. In IP litigation research, a sample size of two hundred is generally deemed adequate and if it is less than two hundred the survey expert is subject to criticism. All samples fall into one of two categories: the probability sample and the non-probability sample. In a probability sample, every member of the population has an equal or known chance of being selected for the survey.

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In the non-probability sample, every member of the target population does not have an equal or known chance of being selected. The strength of political polling is that every voter has the same chance of being selected in the probability sample. A computer that contains all the names, addresses, and telephone numbers of the population will randomly spit out telephone  numbers, and researchers will phone those numbers until the desired sample size is obtained. In IP research, the courts have recognized the value of the non-probability sample for practicality purposes. A mall intercept survey seeking people who have home mortgages would be a nonÂ�probability sample because it is unknown how many homeowners with mortgages regularly frequent shopping malls. There are four basic probability sample methods: [B]╇ Simple Random Sample

In a simple random sample, the survey expert obtains a database consisting of random telephone numbers and proceeds to dial those numbers in a digitized random fashion or there is some other form of random selection procedure that guarantees that each member of the target population has an equal chance of being selected for the sample. This kind of sampling is typically used in political polling where an accurate cross section of the voting population is sought for the survey. [C]╇ Systematic Sampling

This is sometimes referred to as “Nth sampling.” Here, some point in the database is selected as a starting point or a random starting point is selected. From that point additional names are selected on the basis of a “skip interval” such as every twentieth name on the database list. The skip interval is used to cover the entire list, regardless of the starting point. This procedure accomplishes the same goal as simple random sampling but tends to work more efficiently. [D]╇ Stratified Sampling

Sometimes it is not practical to do a simple random or systematized sample if your population has certain characteristics different from the general population. For example, if one wanted to survey the owners of upscale automobiles, the survey expert can randomly select specific areas—such as [â•›46â•›]â•… Trademark Surveys

affluent suburbs—and then obtain a database covering these affluent suburbs and proceed to develop the probability sample.

[E]╇ Cluster Sampling

Here the stratified sample is broken down further. Instead of affluent suburbs from the entire country, perhaps the survey would be limited to affluent suburbs in the New York Metropolitan Area. The same rule would apply for the stratified sample but the survey would focus on one or more “clusters” within the strata. Probability sampling tends to be very expensive and really lends itself to telephone surveys. The courts have discovered the merits of nonprobability sampling because of its efficiency and its ability to reasonably replicate the findings of probability samples. Following are four key methods of non-probability sampling:

[F]╇ Convenience Sampling

There are many convenience sampling options. The teacher who polls his classroom is an example of somebody doing on-the-street research at a busy intersection. Sampling errors occur because such sampling does not take into account people who didn’t stop at the intersection or who were not present in the classroom. For IP research, convenience sampling is the weakest form of non-probability research and relying on it opens the survey expert up to significant criticism.

[G]╇ Judgment Sampling

This form of sampling is clearly superior to convenience sampling. Here, the survey expert uses his or her judgment to identify who will be included in the sample. Clearly, with this type of sampling there is a level of subjectivity. The key is to rationally determine who is in the relevant target market, and how reasonable the judgment sample will be drawn from it. The mall intercept survey is a commonly used judgment sample in IP litigation. Any kind of survey with a careful screening mechanism—such as telephone, Internet, pre-recruit—will be considered a judgment sample. If the screening is done properly and with little opportunity for bias, this form of sampling can be quite compelling in IP matters. M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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[H]╇ Referral Sampling

Here, respondents are asked for the names of others who might qualify to take part in the survey. This is a really weak survey form. It becomes even more highly selective in that members of the population who are lesser known, disliked, or whose opinions are different from the respondent, will have a low probability of being selected to be interviewed. This form of non-probability sampling is rarely used in IP survey work. [I]╇ Quota Sampling

In this form of non-probability sampling, the survey expert identifies quota requirements such as demographic characteristics, brand loyalty, or usage rates as a means of establishing quotas for specific classes of respondents. The sizes of the quotas are a function of the survey expert’s belief as to how each class of respondents relates to the entire population. For example, a researcher doing a survey on foreign car owners may use, as percentages in his or her sample, the market share numbers of a particular brand. If the survey population is one thousand and Toyota has 20 percent of the foreign car market, then two hundred Toyota owners would be included in the sample. Often, quota sampling is used as a means of making sure the convenience sample has the desired proportion of category respondents included within the sample. Quota sampling, if properly executed to minimize bias, can be a compelling form of non-probability sampling for IP litigation matters. Steps in developing the sample plan: Step 1—Properly define the relevant target population under study. Step 2—Obtain a proper list of individuals within that population that will serve as the sample frame. At all times, keep in mind that an important characteristic of survey research is “incidence rate,” which is the percentage of people on the list that qualify as members of the relevant population. Step 3—Design the sample plan in terms of the size of the relevant sample and the method in which information will be extracted from this sample. Step 4—Determine the optimum way to access the population. It may be through the use of telephone interviews. If what is being studied is a consumer packaged product, the mall intercept survey might be the best way to access the population. If it is a specialty field, some form of Internet panel may serve the survey expert best. [â•›48â•›]â•… Trademark Surveys

Step 5—Select the sample and make provisions for substitutions. For example, if your telephone survey uses a systematic sample of every 200th person on a data base, if the 200th person is not available, the research might be instructed to call the 201st, 202nd, 203rd until the interview can take place. Step 6—It then is necessary to validate the sample, which is the process of ensuring the sample is representative of the population. This form of validation is not to be confused with the process of “validating a survey,” which is a measure done to make sure that the those supposedly interviewed for a survey were, in fact, interviewed. Step 7—Be prepared to resample if necessary. If the validation process shows that inappropriate persons are being selected, it may become necessary to rethink the process and start again with Step 1. There are a number of ways to determine optimum sample size. The IP survey is a different animal than an ordinary market research survey. Various courts, including several circuits, have established minimum standards for IP surveys. One solid rule of thumb is the bigger the sample size, the stronger the survey’s credibility. However, costs are directly proportional to the number of interviewees, with one exception: Internet interviews. In doing Internet interviews, one would generally purchase access to a consumer panel, and everyone on that panel could presumably participate in the survey. Each questionnaire is completed and tabulated on-line so whether there are two hundred or five hundred individuals who take the survey, there would be no increase in costs. In 1990, Fred W. Morgan, at that time a professor at Wayne State University, published “Judicial Standards for Survey Research: An Update and Guidelines.” In this article, Prof. Morgan addressed the threshold for the number of interviews required in IP survey research: In addition to concerns about the effect of sample size on confidence intervals, survey researchers must be able to justify sample size with non-statistical arguments. In Kennedy v. Alabama (1985) [as cited by Morgan, 1990] a telephone sample of one hundred was ruled insufficient to determine whether the trial atmosphere within a city of sixty thousand was prejudicial to Kennedy. The court stated no reason for deeming the sample too small, but it was simply unwilling to accept the notion that a random sample of one hundred persons could adequately represent the views of sixty thousand people. Though sample size can always be criticized, minimum samples of two hundred to three hundred respondents seem to achieve a certain amount of face validity in court.2

2.╇ Fred W. Morgan, “Judicial Standards for Survey Research: An Update and Guidelines,” Journal of Marketing 54 (1990): 59–70. M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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2.09╇ STEP 8—COLLECTING THE DATA

Data collection continues to be more challenging. TV executive Diane Sadler-Diaz points out in Burns and Bush Marketing Research: We are facing difficult times. There is a growing reluctance on the part of the public to participate in surveys. One company has tried many different incentives, gimmicks and inducements, but the number of ‘uncooperatives’ just seems to keep rising. I don’t think it is the research industry’s fault; rather, it is a need in people to maintain their privacy. Long ago, people learned that if they didn’t want to talk to a stranger, all they needed to do was not open their door. The same phenomenon has arrived for the telephone call with answering machines acting as guardians to privacy. Gathering survey data is challenging and will continue to be challenging for the long term.3 (as quoted in Burns, 1998)

These words are from a book published in 1998, before the advent of identity fraud, caller ID, and the various Internet scams that besiege all of us on a daily basis. Response rates for survey research have plummeted. Gabriel M. Gelb and Betsy D. Gelb documented this non-response dynamic in “Internet Surveys for Trademark Litigation: Ready or Not, Here They Come” in a 2007 article published in The Trademark Reporter: Today, residents are much more difficult to reach via telephone, due in part to explosive utilization of cell phones, since they are excluded from the databases of firms that sell lists of available numbers to research organizations for random digit dialing. Increasing use of voicemail, Caller ID and cell blocking also make it more difficult to reach landline subscribers. . . . These factors have led to significantly decreased response rates via telephone. A 50% decline in participation in telephone surveys among adults aged 18-34 from 2000 to 2006 has been reported by Pew Research Center for People and the Press; the rate dropped from 31% to 20%. Kohut et al. study [as cited in Gelb and Gelb, 2007]4

While the Gelbs use these numbers to make the case for Internet research, the numbers are hardly impressive when looking at the following data. InfoUSA, a leading consumer panel name provider, reports that the average consumer Internet survey produces a click-through rate of 0.5 percent

3.╇ A.C. Burns and R.F. Bush, Marketing Research, 2nd ed. (Upper Saddle River: Prentice Hall, 1998), 420. 4.╇ Gabriel M. Gelb and Betsy D. Gelb, “Internet Surveys for Trademark Litigation: Ready or Not, Here They Come,” Amicus Brief of the International Trademark Association, The Trademark Reporter 97, 5, (2007): 1073–1088. [â•›50â•›]â•… Trademark Surveys

to 1 percent and your average business-to-business survey produces a clickthrough rate of 0.5 percent to 2 percent. (Click-through relates to the percentage of people who get the survey, open it, and complete it.) The realities of survey participation, unfortunately, have not been considered by Dr. Diamond, author of “Reference Guide on Survey Research.” She supports the guidelines for statistical surveys (for probability surveys) issued by the former U.S. Office of Statistical Standards. Dr. Diamond writes: Response rates of 90% or more are reliable and generally can be treated as random samples of the overall population. Response rates between 75% and 90% usually yield reliable results, but the researcher should check on the representativeness of the sample. Potential bias should receive greater scrutiny when the response rates drop below 75%. If the response rate drops below 50%, the survey should be regarded with significant caution as a basis for precise quantitative statements about the population from which the sample was drawn.5

Clearly, the standards suggested by Dr. Diamond are unrealistic in light of survey sampling in current times. While the standards cited by Dr. Diamond would be applicable only to probability sampling, the response rates for non-probability sampling are not even suggested. The best advice for the survey expert is to seek the highest response rate possible and maintain compliance with the other rules and protocols governing scientific research. [A]╇ Questionnaire Development

Further data considerations include: Developing the precise wording for questions can be challenging. The key to developing good questions is to devise a way of eliciting a true response without influencing the respondent whether subtly or overtly. The wording of each question is critical. Here are some suggestions for the wording of questions as developed by Burns and Bush in Marketing Research. 1. The questions should be directed to one and only one issue or topic. Try to avoid any type of compound questions such as: Do you buy food and personal care items at Wal-Mart? 5.╇ Diamond, “Reference Guide on Survey Research,” 229–276. M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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2. The questions should be brief. Eliminate unnecessary or redundant words. 3. The questions should be interpreted the same way by all respondents. Don’t ask: what kind of a day is it? The answer could be: nice, fair, cloudy, cold, hot, etc. Instead ask: What kind of day is it in terms of temperature? 4. The questions should use the respondent’s core vocabulary. Avoid slang, colloquialisms, technical jargon, etc. In most cases, the simpler the better. 5. The questions should be grammatically simple sentences if possible. The more complex the question, the greater the probability for error. Here are some additional common “should nots” in asking survey questions as developed by Burns and Bush in Marketing Research. 1. The questions should not assume criteria that are not obvious. Don’t ask the respondent to make judgments if you have to assume certain criteria need be applied. 2. The questions should not exceed the respondent’s abilities and experiences. It makes little sense to ask an adult what kind of video game offers the most realism unless you are aware that the adult is a video game player. 3. The questions should not use specific examples to represent a general case. Don’t ask the respondent a question like: “Did you notice any advertising for Budweiser in the last week such as TV commercials?” The intent of the question to probe whether advertising of any sort was observed and the way the question is worded might limit the respondent’s frame of reference to TV commercials. Better: “Did you notice any advertising for Budweiser in the last week in the form of TV, radio, newspaper, magazine, or other media advertising?” 4. The questions should not ask the respondent to recall specifics when only generalities will be remembered. People do not have perfect memories. If the researcher wants to understand if gasoline prices at a convenience store are less expensive than gasoline purchased at a free-standing service station, the question should not be worded: “Do you remember what you paid for gasoline the last time you bought it at a convenience store?” Rather: “The last time you purchased gasoline at a convenience store, do you recall if it was less expensive, more expensive, or generally the same price as gasoline at a free-standing service station?” [â•›52â•›]â•… Trademark Surveys

5. The questions should not require the respondent to answer by generalizing. When asked a question involving a generality, the respondent often will answer what they think “must” have happened as opposed to what “should” happen. Here are two examples: “When you order fish at a restaurant, do you inquire about freshness?” or “When you buy a refrigerator, do you inquire about its service contract?” Both of these questions encourage the respondent to answer YES by entering the realm of generalization. Fish should be fresh and appliances should have service contracts. To avoid this generalization, questions like: “What percentage of the time do you inquire about freshness when you order fish off a menu in a restaurant? Or “In buying a major appliance such as a refrigerator, would you be very likely, somewhat likely, or not likely to inquire about a service contract?” 6. The questions should not ask for details that cannot be related. Survey researchers sometimes ask for information that is almost impossible to be remembered. “Before buying your Honda, what were the other brands you shopped for before making your final decision?” A better way: “Can you think of another brand of car you looked at before buying your Honda?” You can probe that question by asking: “Can you think of another” and so forth. 7. The question should not use words that overstate the condition. A Ray-Ban survey asked: “How much do you think you would pay for a pair of sunglasses that will protect your eyes from the sun’s harmful ultraviolet rays, which are known to cause blindness?” The overstatement deflects the question from sunglasses to blindness. This is not necessary. The correct question should have been: “How much do you think you would have to pay for sunglasses that protect your eyes from the sun’s rays?” 8. The questions should not have ambiguous wording. Be careful in wording questions so as to avoid ambiguities. For example, the question: “Do you discipline a puppy after he has had an accident?” This question contains two ambiguous terms: “accident” and “discipline.” Is an accident wetting the floor, toppling over a plant, or something else? Is discipline a slap on the rear end, using a harsh tone of voice, or hitting the dog’s nose with a newspaper? A better question: “What do you do when your puppy wets the floor?” Language produces ambiguities as well. Foods are named differently in different parts of the country. For example, a carbonated soft drink is called “pop” in much of the United States, but in New England it is referred to as “tonic.” 9. The questions should not be double-barreled. Even experienced survey experts fall into the trap of the double-barreled question. For example here is something very simple: “Do you have a checking or M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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savings account at this bank?” You can avoid this by asking two questions or by asking: “What kind of accounts do you have at this bank?” 10. The question should not lead the respondent to a particular answer. In wording questions, the question itself should not suggest the answer. This is a common criticism of IP surveys and often shows up on rebuttal reports. A question like: “Do you believe cigarettes containing nicotine poison can be harmful to your health?” A better question: “Do you believe smoking cigarettes can be harmful to your health?” 1 1. The question should not have “loaded” wording or phrasing. While a leading question directs the respondent to answer in a particular way, the “loaded” question is more subtle. The loaded question hurries its wording elements to suggest universally held beliefs or rules of behavior. An example of a loaded question: “Do you believe that people should protect themselves from harm by carrying guns?” Clearly, there is the universal belief that people should protect themselves but by answering YES to that question, you are asking them to advocate carrying guns. A better question: “Do you believe that people should be allowed to carry guns?” An important final step before administering the survey is the pre-test. This is the survey’s shakedown cruise. The survey should be administered to a small sample of qualified respondents. Each question should be tested for comprehension so that the respondent fully understands what is being asked and provides the response intended by the developer of the survey. In the final analysis, the survey will be judged by the following two crucial criteria: VALIDITY — The degree to which the survey accurately reflects or assesses the specific concept the researcher is intending to measure. RELIABILITY — The extent to which the survey, test, or experiment yields the same results on repeated trials. [B]╇ Aided vs. Unaided

In performing surveys there are two basic types of questions that can be asked to elicit information. The most powerful information comes through unaided questions. The reason that unaided questions are so powerful is that they capture top-of-mind knowledge. For example, if research were being done on luxury imported cars, the unaided question would be: When you think of luxury imported automobiles, what brand of car comes to mind? [â•›54â•›]â•… Trademark Surveys

The aided question would be: Have you ever heard of the Lexus brand of imported luxury cars?

2.10 STEP 9—TABULATING THE DATA

Before the tabulation can begin, the questionnaires must be screened, and incomplete or otherwise unacceptable questionnaires must be removed. The first step in the tabulation process is data entry, the creation of a computer file that maintains the raw data taken from all the questionnaires that are deemed to be suitable for the analysis. Data entry requires an operation called data coding, which is the identification of codes that pertain to the possible responses to each question on the survey. Typically these codes are numerical because they are easier to register. For example a YES answer may be coded as “1” and a NO answer may be coded as “2.” A data matrix is the coded raw data from the survey. Tabulations should be done independently. The survey expert should enlist the help of a tabulations firm that is familiar with IP surveys and the needs of the survey expert in reporting the data.

2.11 STEP 10—ANALYZING THE DATA

In analyzing the data, the results of the research should be objectively reported. A good technique is to state the question and report the results. Those results then can be used as a test of the hypothesis. The use of a control, or some other control-type device, will help make the case that the observed results support or refute the hypothesis. In addition to the objective answers in the survey, there generally are the “verbatim” answers. These are the actual answers the respondents give to “why” or other probes. These answers can be just as important as the objective answers and need to be coded to draw further conclusions. The analysis of the data should draw findings from both the objective and verbatim answers.

2.12╇ STEP 11—VALIDATING THE DATA

Once the survey has been completed, a final step in the process is to make sure the research vendors have provided valid information. An independent research company should be retained and given the questionnaire and the M A R K ET R E S E A R C H C O N S I D E R AT I O N S â•…

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telephone numbers of the respondents. A sample—a minimum of 25 percent or so depending on the numbers of people interviewed—should be re-contacted and asked such questions as: 1. Do they recall participating in the study? 2. Do they remember where the study took place? 3. Do they recall the nature of the study? Everybody will not be able to be contacted nor will everybody usually recall participating in the survey. Those validation numbers should be very high, however. If they are not, additional people will have to be contacted— perhaps everyone who took the survey. In such cases, it may be necessary to eliminate from the survey those who cannot be validated. The reason for discrepancies often is unprofessional work performed by a research company or research personnel. Some research companies— particularly those operating in shopping malls—pay their personnel on the basis of the numbers of interviews so that there is a tendency for researchers to cheat to make their quotas. Such a practice will doom the research company from doing further work for the survey expert. In most cases, the independent research firm will validate the research and issue a brief report that indicates that the research falls within industryaccepted guidelines. The validation report is then attached as an exhibit to the expert’s research report. 2.13╇ STEP 12—PREPARING THE FINAL RESEARCH REPORT

There is no standard format required for an IP survey report, but the following should be present within the report: 1. A brief opening paragraph introducing the research and the subject of the research. 2. An explanation of the professional qualifications of the survey expert. 3. A statement as to retention of the expert: By whom? When? Level of compensation (by hour or project)? 4. A statement that the expert’s compensation is not dependent on the findings of the study. 5. A statement of the hypothesis or hypotheses. 6. A detailed statement of the methodology. 7. A description of how the research was carried out. This might include an explanation of the protocols (i.e., instructions to [â•›56â•›]â•… Trademark Surveys

iÂ� nterviewers, screening questionnaire, and actual survey Â�questionnaire or questionnaires). 8. The findings of the research. 9. Conclusions from the research. 10. Opinions of the survey expert. Attachments to the survey should be a number of exhibits: 1. The CV of the survey expert. 2. The protocols used such as the instructions to interviewers, screening questionnaire(s), and actual survey questionnaire(s). 3. Any exhibits such as what was shown to the respondents, the research center, if appropriate, and anything else that will explain what went on in the research. 4. The validation report. 5. The tabulation data including verbatim comments in a coded format. REFERENCES Burns, A.C. and Bush, R.F. Marketing Research, 2nd ed. Upper Saddle River, NJ: Prentice Hall, 1998. Diamond, S.S. “Reference Guide on Survey Research.” In Reference Manual on Scientific Evidence, 2nd ed., 229–76. Federal Judicial Center, 2000. Gelb, G.M. and Gelb, B.D. “Internet Surveys for Trademark Litigation: Ready or Not, Here They Come.” In Amicus Brief of the International Trademark Association, The Trademark Reporter® 97, no. 5 (2007): 1073–88.

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CHAPTER 3

Types of Surveys and Protocols

3.01╇ INTRODUCTION

The focus of this chapter is to take the reader through the processes of creating and implementing consumer surveys used in intellectual property litigation. We will begin by discussing the basic principles of market research, and examining the mechanics and structure of the various types of consumer survey instruments that are available. From there we will examine what goes into the design and execution of a survey, including the nature of gathering information, tabulating results, validating the survey, and the reporting process. 3.02╇ THE MARKET RESEARCH PROCESS

Market research can be defined as the process of collecting relevant information and using that information for marketing decision-making. Data is obtained from various sources. Information that was gathered by someone else, for another purpose but can be used for the problem at hand, is called secondary data. Information gathered by the U.S. Census Bureau, trade organizations or trade publications are examples of secondary data. New data gathered for the issue at hand is primary data. Intellectual property surveys would fall into the category of primary data. although the findings may be reinforced by secondary data. The market research process, as used by professional marketers, is a multi-step process:

[A]╇ Step 1—Define the Problem

The crucial first step is the preparation of a well-defined statement of problem or opportunity. By defining the problem carefully, the researcher has the best opportunity to move through the market research process with speed and efficiency. In IP litigation research, an excellent starting point in problem identification usually comes from the complaint that was filed in the case. [B]╇ Step 2—Conduct Exploratory Research

There are no formal rules to conducting exploratory research. As such, exploratory research may include placing some phone calls and speaking with knowledgeable people. In addition, the Internet provides excellent opportunities for exploration. In IP litigation research, a review of any and all relevant court or discovery documents will enable the researcher to gain a better focus on the relevant target market and issues indigenous to the product category in question.

[C]╇ Step 3—Formulating a Hypothesis

The hypothesis is a tentative explanation for some specific outcome. It is a guess or proposition that focuses on a potential causal relationship between some occurrence and something that might have caused that occurrence. In IP litigation surveys, the hypotheses are relatively simple. For example, there is a likelihood of confusion or there is not a likelihood of confusion; there has been or there has not been confusion on the part of the public because of similarities in trade dress; this product or trademark has or has not achieved secondary meaning; this mark or brand is considered to be generic. Proving or disproving the hypothesis is the bottom line to the research endeavor. [D]╇ Step 4—Create the Research Design

To next step in testing the hypothesis is to create the research design—a master plan or a model for executing the marketing research. Two key points are essential for this master plan: (1) Validity—the extent that the research must measure what needs to be measured, and (2) Reliability— the extent to which an experiment, test, or any measuring procedure will yield the same results in repeated trials. Another crucially important [â•›60â•›]â•… Trademark Surveys

consideration is the selection of respondents. In the initial preparation of surveys, where sampling is necessary, the decision pertaining to which consumers to include in the study is of great significance. [E]╇ Step 5—Collect the Data

Two types of data are generally gathered—the aforementioned secondary data and primary data. Secondary data offers two main advantages: (1) it is almost always less costly to gather than primary data; (2) it generally takes less time to uncover it. However, secondary data may be old or outdated and since most of it is free, it might be viewed as “getting what you paid for.” In developing IP studies, secondary data can be of great value in providing important background information that leads to a study or survey. However, what generally is needed in proving or disproving hypotheses with respect to trademark infringement is primary research in the form of some type of survey. [F]╇ Step 6—Interpreting and Presenting the Research Information

The final step is the tabulating of the research data and classifying the findings in a meaningful and understandable way. In the case of surveys, the quantitative responses require tabulation and the qualitative answers—the verbatim comments—require recording and coding. Ideally, the tabulation should be performed by an independent organization with no ownership links to the entity that gathered the data. Such independent tabulation serves to remove any hint of bias in the tabulating and coding of the responses. The presenting of the research findings is usually done in a formal report that explains the research, sources of secondary information, primary research hypotheses, findings, interpretation on the part of the survey expert, and opinions of the survey expert. 3.03╇ SAMPLING TECHNIQUES

There are two basic categories of surveys—probability and non-Â� probability. The probability sample gives every member of the target population an equal chance of being selected. The non-probability sample is an arbitrary grouping that does not permit the use of standard statistical tests. The classic example of the probability sample is the political survey that estimates election outcomes based on a random telephone sample of one T Y P E S O F S U RV E Y S A N D P R OTO C O L S â•…

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thousand five hundred voters. The non-probability sample is often the sample of choice for IP litigation matters because it allows the researcher to focus on a specific relevant target market. The following are common types of probability samples: Simple Random Sample: Every member of the relevant universe has an equal chance of being selected. EXAMPLE: the draft lottery during the Vietnam War era. Stratified Sample: Randomly selected sub-samples are used. EXAMPLE: Doing a survey of upscale suburban neighborhoods to determine buyer behavior with respect to high-priced automobiles. Cluster Sample: A cost-efficient form of a stratified sample where a smaller area is singled out for the sample. EXAMPLE: Doing a sample of all the affluent suburbs of Chicago to determine buyer behavior with respect to high-priced automobiles. The following are common types of non-probability samples: Convenience Sample: a sample selected from readily available respondents: EXAMPLE: a classroom teacher asking students whether they prefer Coke or Pepsi. Quota Sample: a sample where the researcher locates and interviews a prescribed number of people in each of several categories: EXAMPLES: samples based on a prescribed percentage of men and women or people of certain age groupings or people from specific cities of geographic regions. Many IP researchers report doing “random” or “probability” samples based on a pre-selected gender or age group—i.e., 50 percent males and 50 percent females. These are quota samples and by definition are non-probability samples. Judgment Sample: Here the researcher uses his or her judgment to select population members who the researcher believes are good prospects for accurate information. This is the favorite IP survey technique. It allows the researcher to select and screen appropriate members of the relevant universe. It also enables the researcher to screen out potential respondents that may be biased. While, technically, the probability samples are the most desirable, the courts have recognized the merits of the judgment sample as a means of focusing on the relevant target market for the purpose of drawing conclusions about likelihood of confusion for trademarks and trade dress, secondary meaning and public perceptions of genericness. 3.04╇ INTRODUCTION TO SURVEYS

It is important to understand that there is no such thing as the “perfect survey” and there is no such thing as the “totally useless survey.” Every survey, [â•›62â•›]â•… Trademark Surveys

no matter how well-designed and executed, is subject to challenge. For this reason, when one side of a legal dispute—usually the plaintiff—performs a survey, the other side will bring in its own survey expert to critique it. The emergence of the “Daubert Motions” of the past decade or more make Daubert challenges more frequent because one sure way of eliminating the survey is to disqualify the expert. Fortunately, most judges take the Daubert motions and their claims of the “fatally flawed” survey with a grain of salt. The Daubert mechanism was set up to prevent unqualified experts from offering testimony. For example, a behavioral expert most likely has no expertise in the marketing process nor does the marketing expert have sufficient insight into psychology. The Daubert motions that attack survey methodology and the like are generally denied as long the survey expert can provide evidence of experience and qualification to perform IP litigation research. The Daubert challenge can be valuable in “posturing” one’s position and for alerting the judge to what one side believes is a major weakness in the survey evidence.

3.05╇ TYPES OF SURVEYS [A]╇ Mail Surveys

Used often in the past, mail surveys have lost much of their popularity. The format for a mail survey is a printed questionnaire accompanied by an envelope. Those interested in filling out the questionnaire do so and mail it back. The surveys that are mailed in are then tabulated. It is easy to calculate a response rate based on the number of surveys returned divided by the number of surveys that were mailed. The reason why mail surveys have become less popular is that people are beset by all forms of “junk mail,” which often is never opened. Others simply don’t want to bother with taking the time to fill out the questionnaire. When mail surveys are distributed there is a problem with bias as to who will ultimately complete them out versus those who opted not to complete them. Often filling out a survey is a function of time. Banks, for example, regularly do mail surveys to track product usage and to invite customers to offer suggestions for new products. These results often are highly skewed toward older customers because they have the time to complete mailed questionnaires. One technique to combat this type of participation bias is to do a telephone survey to a sample of those who received the mail questionnaire. How well the results of the mail survey correlates with the results of the telephone survey will give an indication of the accuracy of the mail survey. For IP litigation, mail surveys are probably the weakest form of survey methods. T Y P E S O F S U RV E Y S A N D P R OTO C O L S â•…

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Dr. Shari Seidman Diamond, author of “Reference Guide on Survey Research,” a part of the Reference Manual on Scientific Evidence, published by the Federal Judicial Center 2000, has the following comments about mail surveys: In general, mail surveys tend to be substantially less costly that both in-person and telephone surveys. Although response rate for mail surveys often are low, researchers have obtained 70% response rates in some general public surveys and response rates of over 90% with certain specialized populations. Procedures that encourage high response rates include multiple mailings, highly personalized communications and prepaid return envelopes. A mail survey will not produce a high response rate unless it begins with an accurate and up-to-date list of names and addresses for the target population. Even if the sampling frame is adequate, the sample may be unrepresentative of some individuals are more likely to respond than others. For example, if a survey targets a population that includes individuals with literacy problems, these individuals tend to be underrepresented among the respondents in a mail survey. Open-ended questions are generally of limited value on a mail survey because they depend entirely on the respondent to answer fully and not provide the opportunity to probe or clarify unclear answers. Similarly, if eligibility to answer some questions depends on the answer to previous questions, such skip sequences may be difficult for some respondents to follow. Finally, because respondents complete mail surveys without supervision, survey personnel are unable to control the order in which respondents answer questions. If it is crucial to have respondents answer questions in a particular order, a mail survey cannot be depended on to provide adequate data.1

[B]╇ Telephone Surveys

This form of survey is often used in IP litigation. Various lists are readily available that include telephone numbers. These lists can be purchased for as little as $25 per thousand and as high as $100 per thousand or more. Mailing list vendors abound and by selecting the right list, the survey expert has an excellent opportunity to hone in on the relevant target market. Many trade publications make their subscriber lists available for sale or rent. This allows for the assumption that by subscribing to a particular publication, that makes that individual likely to be a member of the relevant target market. However, it is still necessary to do the proper screening to insure membership within the relevant target market. Other sources of telephone

1.╇ Shari S. Diamond, “Reference Guide on Survey Research,” in Reference Manual on Scientific Evidence, 2nd ed. (Federal Judicial Center, 2000) 229–276. [â•›64â•›]â•… Trademark Surveys

research listings include trade associations, alumni associations, or any other listing where the researcher believes there is a strong probability of reaching members of the relevant target market. While telephone interviews are the method of choice for probability sampling, for litigation the telephone interview is also used for non-probability judgment samples. A pure telephone-based probability sample for IP litigation cases is almost always prohibitively expensive and fraught with problems. ANECDOTE: As a consulting expert, co-author James T. Berger was brought in on a high-profile case to critique a probability sample. The suit was brought by a small company—Immersion Technologies against Sony Corporation. The product in question was the Sony Play Station 2 video game. Immersion was responsible for the technology that caused the video game controller to vibrate during play and thus provided additional realism to the user. While other video game makers had no problem paying Immersion the royalties, Sony believed other effects were more responsible for the realism of the games than the vibrating controller. To prove this, Sony commissioned a researcher to do a probability study where households were telephoned to determine if a Play Station 2 game was purchased during a specific time frame or if there was the anticipation of purchasing such a game. The researcher then asked to speak with the person who purchased the Play Station 2 to inquire as to what were the key factors in the purchase decision. Sony’s researcher uncovered a variety of reasons—one of which was the vibrating controller—and concluded that the vibrating controller was only one of many things that added realism to the games but was not that significant of a factor. When Berger examined the surveys, he discovered that a significant portion of those interviewed purchased the game as a gift for a child or grandchild. Those who purchased the games as a gift rarely if ever played the games nor understood the personal appeal of the games. What should have been done was to talk with those people who actually played video games and not those who were responsible for purchasing the game. As it turned out, the court gave little weight to this very costly survey and Immersion Technologies, the plaintiff, ended up with a verdict that included damages of more than $80 million. A far more effective and far less expensive survey effort would have been a judgment survey where those who played the Play Station 2 games would be interviewed. The Teflon protocol, discussed in Chapter 2, lends itself nicely to the telephone survey technique. If the interview can be completed totally verbally without showing any products, logos, symbols, and so forth, the pure telephone technique is an effective and cost-efficient means of gathering data. This technique, however, becomes virtually ineffective when products or images have to be shown. The telephone/Internet hybrid technique that will be discussed later in this chapter often can address the visual problem. T Y P E S O F S U RV E Y S A N D P R OTO C O L S â•…

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Dr. Diamond writes the following about telephone surveys: Telephone surveys offer a comparatively fast and low-cost alternative to in-person surveys and are particularly useful when the population is large and geographically dispersed. . . In evaluating the sampling used in a telephone survey, the trier of fact should consider: 1. (when prospective respondents are not business personnel) whether some form of random digit dialing was used instead of or to supplement telephone numbers obtained from telephone directories, because up to 65% of all residential telephone numbers in some areas may be unlisted. 2. whether the sampling procedure required the interviewer to sample within the household or business, instead of allowing the interviewer to administer the survey to any qualified individual who answered the telephone, and 3. whether interviewers were required to call back at several different times of the day and on different days before dropping a potential respondent from the survey. . . .

The report submitted by a survey expert who conducts a telephone survey should specify: 1. the procedures that were used to identify potential respondents; 2. the number of telephone numbers where no connect was made; and 3. the number of contacted potential respondents who refused to participate in the survey.”2 [C]╇ Mall Intercept Surveys

An extremely popular and long-standing technique for IP litigation surveys is the shopping mall intercept technique. This form of survey is especially applicable when it is necessary for the respondent to view and/or respond to some visual stimuli. The ability to simulate a supermarket or drug store shelf works well for mall intercept research. For this category of research it is first necessary to locate shopping malls with a research company that has an office or interview area within the mall. Most shopping malls do not contain such research facilities. Mall intercept companies will generally have “recruiters” working the aisles of the mall. Such recruiters generally wear nametags and carry clipboards. Based on the screening requirements of the survey, the recruiters will intercept shoppers by asking them if they 2.╇ Diamond, “Reference Guide on Survey Research,” 254.

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are interested in participating in a survey. There is usually some nominal incentive that is offered—like $5.00. If the potential subject is interested, the recruiter will attempt to qualify the individual by asking a series of qualifying or screening questions. The reason for the screening or qualifying questions are to insure the subject is a member of the relevant target market and to eliminate bias. Generally, most mall intercept surveys will seek to exclude persons whose household includes someone who works for an advertising or market company. Depending on the nature of the research, mall intercept surveys also try to eliminate persons whose household includes people who work for marketing channel systems (manufacturers, wholesalers, retailers, dealers) that include products or services being researched. Also, many researchers will screen out the “frequent survey taker,” those who come to the mall to take surveys so they can make money from the incentives. Questions like: “Have you participated in a consumer survey in the last ninety days?” go a long way to eliminating these “survey junkies.” Finally, it is important to determine whether the person is capable of taking the survey, so it is necessary to determine if: (1) the person speaks English; (2) is of a certain age; (3) if wearing eyeglasses, contacts, or a hearing aid if such devices are needed to comprehend questions that will be asked. Once an individual qualifies, he or she is accompanied into the research center where the respondent is assigned to an “interviewer.” In many instances, the recruiter and interviewer is one and the same person. Once the qualified respondent enters the mall research office, the interviewer administers the survey according to the specific instructions provided by the research expert. At the conclusion of the interview, the subject is asked for his or her name and telephone number and given their cash incentive. The reason for obtaining the respondent’s name and phone number is for “validation purposes.” The survey expert generally retains a separate and independent research organization to telephone a sample of respondents who participated in the mall intercept study to verify that they, indeed, recall participating in the study. Dr. Diamond writes the following about mall intercept surveys: Although costly, in-person interviews generally are the preferred method of data collection, especially when visual materials must be shown to the respondents under controlled conditions. When the questions are complex and the interviewers are skilled, in-person interviewing provides the opportunity to clarify or probe, the ability to implement complex skip sequences (in which the respondent’s answer determines which questions will be asked next, and the power to control the order in which the respondent answers the questions. . . Objections to the use of in-person interviews

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arise primarily from their high cost or, on occasion, from evidence of inept or biased interviewers.3 [D]╇ Internet Survey

The emergence and growth of the Internet has added a new dimension to the IP survey field. Web-based surveys enable respondents not only to answer verbal questions but to also view products and graphic images. Therefore, one of the main drawbacks of performing telephone surveys has been addressed in the Web-based survey. This form of survey has other significant advantages as well. For example, tabulations can be performed on a real-time basis so that each time a respondent answers a questionnaire, the results are instantly tabulated, and added to the running tabulation and the verbatim comments are immediately recorded. When the survey is complete, the tabulation is complete as well. Perhaps the main problem with Internet surveys is the old bugaboo—a relevant target market. In order to achieve the appropriate universe, it becomes necessary to make use of relatively expensive consumer panels. These panels consist of individuals who have informed research vendors that they have an appetite to take surveys and expect to be rewarded by some incentives by the research company. One can argue that members of consumer panels are “professional survey takers.” Incentives that are offered often include “points” toward some gift or travel goal and/or the opportunity to have one’s name included in a drawing for a major product such as a big-screen high-definition television or other high-priced consumer electronics product. Despite these incentives, response rates for Internet surveys are abysmally low. This clearly is reflective of the high noise level in e-mail in-boxes. InfoUSA, a leading consumer panel name provider, reports that the average consumer Internet survey produces a click-through rate of 0.5 to 1 percent and your average business-to-business survey produces a click-through rate of 0.5 to 2 percent. (Click-through rate is the percentage of people who get the survey, open it, and complete it. Getting a sufficient number of responses becomes a pure “numbers game” based on your response rate. If your response rate is 2 percent and you need two hundred completed interviews, you will have to send out ten thousand e-mails to obtain a valid number of responses. If your click-through rate is 1 percent it will require twenty thousand e-mails.

3.╇ Diamond, “Reference Guide on Survey Research,” 229–276. [â•›68â•›]â•… Trademark Surveys

Screening and validation is another major problem in performing Internet surveys. Even though the potential respondent is included in some consumer panel, there is no guarantee that person qualifies for the survey. Therefore, screening questions are required and still it is almost impossible to verify whether the survey respondent is answering these questions truthfully. Validation becomes even more of a challenge here because the validation process takes on the complexion of a screening process. Not only must the validation determine if the respondent did or did not take the survey, the validation process must show that the respondent was qualified to take the survey in the first place. If the validating company decides to do a 30 percent or 40 percent sample for its validation and it turns out that a substantial number were not qualified to take the survey in the first place, those unqualified surveys would have to be eliminated. This causes havoc with your real time tabulations in terms of determining which results need to be removed. Completing the loop, additional surveys would have to be done and validated until the researcher reaches his or her quota. Clearly, this is an extremely difficult and risky process and a rebuttal expert can easily tear the results apart. Gabriel M. Gelb and Betsy D. Gelb present the following pros and cons of Internet surveys: Five primary advantages can be listed for Internet surveys, as compared to survey interviews by telephone, mail or in person: 1. Respondents can answer questions in an on-line survey at their convenience, increasingly the likelihood they will give more thought to the issue at hand. . . . 2. Pictures, sound and video clips can be included in the survey… while at the same time offering a geographically broader and more diverse population. 3. The ability to screen large populations quickly makes it easier to reach low incidence populations through specialized panels or subsets of larger panels. 4. The method is faster and cheaper than its traditional mall and telephone counterparts. Since results are digitized, they are tabulated in real time; and it is not unusual for results to be known two or three days after an online survey has been launched. 5. Web-based data collection eliminates the potential of interviewer bias and possibly acting in a fraudulent manner.

The disadvantages of Internet surveys include: 1. The lack of standardization in the way online panel providers recruit and verify the identity of participants can raise concerns. . . . 2. Given the rewards or a chance for rewards can be offered for participation, all general panels contain a certain number of “professional survey takers”. . . . T Y P E S O F S U RV E Y S A N D P R OTO C O L S â•…

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3. The typical online survey requires English reading and writing/ keyboarding skills, although surveys can be administered in other languages if need be. 4. Online respondents can more easily misstate their age and gender because no interviewer hears their voices. 5. Some respondents answering open-ended questions may not type in as complete an answer as a telephone or face-to-face interviewer may obtain. . .4 [F]╇ Hybrid Internet/Telephone Survey

This is a technique that combines the benefits of the telephone and Internet surveys and solves many of the screening/validation problems inherent to the pure Internet survey. The research vendor contracts with the e-mail list vendor and has the e-mail vendor send out e-mails to the members of the panel. In that initial e-mail, the respondent is invited to participate in a survey of he or she qualifies and the details of the qualification are spelled out in that initial e-mail. If the potential subject is interested in participating in the survey, he or she sends an e-mail back with a telephone number and indicates the best time to be contacted. An important aspect of this method is that the respondent must have access to an Internet-connected computer connected to the Internet to participate in the study. A special Website is then created for this purpose. The research organization now has e-mails from potential respondents who indicate they qualify by virtue of the initial e-mail solicitation screener. The research organization also has a telephone number, name, and contact time when that potential respondent will be available and have access to a computer. The researcher then calls the potential respondent, ensures that respondent is available and willing to participate and is sitting at a computer connected to the Internet. The interview begins with the interviewer re-screening the interviewee to verify once again that he or she qualifies. Once this verification process has been completed, the test subject is asked to enter a URL into an Internet browser. The URL consists of a special Website constructed specifically for the survey. The interviewer then directs the interviewee through various screens and asks questions based on what the interviewee observes on the screens.

4.╇ Gabriel M. Gelb and Betsy D. Gelb, “Internet Surveys for Trademark Litigation: Ready or Not, Here They Come,” The Trademark Reporter 97, 5, (2007): 1083–1084. [â•›70â•›]â•… Trademark Surveys

So here we have the best of both worlds—Internet and telephone. This allows photos and images to be communicated to the subject who can provide feedback. At the same time, all the benefits of the telephone interview come into play. The validation process is identical to an ordinary telephone interview in that the independent research company would call a percentage of the interviewees to verify participation. [G]╇ Pre-Recruit Survey

Often there is a need to have a target market with very specialized backgrounds or experiences. Normal mall intercept surveys would not be able to recruit such individuals in adequate numbers. Telephone interviews would not work because it’s often necessary to present an actual product or image that individuals can see and/or touch. The Internet/telephone hybrid technique also may not work because it is necessary to show an actual item or product that one has to see “up close and personal.” Therefore, the technique required is the “pre-recruit.” For example, if the relevant target market is people working in building trades such as electricians, plumbers, decorators, contractors, and so forth, these are individuals who work during the day. What has to be done is make pre-arrangements to have them come into a research facility at a specific time and day. A major problem with the pre-recruit is high cost. One should expect to pay somewhere between $25 and $75 or more per interview depending on the professions of the people being interviewed. Once the interviewees arrive at the research facility, they are checked in and their qualifications are verified. The qualification verification is the screening criteria and once verified, they are interviewed. ANECDOTE: The pre-recruit technique was used by co-author James T. Berger in a pilot study that tested the trade dress of a large power tool product that had a similar appearance—color-wise—to a popular American brand. The alleged infringing product was put on display in a research facility with the brand name covered by black electrical tape. The product was sitting in a room and was covered by a drape. When the workman entered the room and was seated, the drape was removed. The interviewer asked a series of three basic questions: (1) Do you recognize what kind of tool this is?; (2) Who do you think puts it out?; (3) Why? The survey showed a substantial number (more than 50 percent) falsely identified the power tool as being made by the American company alleging trademark infringement. Berger was a consulting expert who only did a pilot study, and he never testified at trial, although he was deposed. [Eventually, another research company used similar methodology and testified at trial.] T Y P E S O F S U RV E Y S A N D P R OTO C O L S â•…

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3.06╇ QUALITATIVE TECHNIQUES

There is an entire body of research known as “qualitative research” that may have significant implications to IP litigation. Unlike quantitative research surveys, qualitative research is not projectable on a target market or population as a whole. Despite this, qualitative research can be an extremely powerful tool. The most popular qualitative techniques are indepth personal interviews and focus groups. In-depth personal interviews are one-on-ones where a series of important questions are asked of people who have a deep insight into buyer behavior and brand loyalty. This type of research provides important “feelings” and other subjective information and can be extremely valuable in supporting the findings of quantitative research surveys. It can also be extremely valuable in refuting the findings of survey results. ANECDOTE: One of the co-authors, James T. Berger, was retained in a Lanham Act Truth-in-Advertising case on behalf of the defendant. The products in question were tarpaulin products that contractors lay on poured cement to aid in the drying process usually in cold weather conditions. The plaintiff alleged that the defendant falsely advertised the thickness or insulation properties of the defendant’s products. A survey was performed by the plaintiff that proved people had the ability to comprehend the claims of packaging and labeling. As a representative of the defendant, Berger went out into the field and did an in-depth personal interview with one of the Midwest’s leading distributors of these tarpaulin products. This distributor sold products produced by both the plaintiff and the defendant. In the process of the interview, Berger discovered that buyers of these products were not at all concerned about the thickness nor insulating abilities of the products. All they cared about was “price and availability.” Berger presented these findings in a report, was deposed, and the case settled soon after. The survey results meant nothing; the key factor was the buyer behavior dynamic, which was obtained in the personal interview. An equally significant qualitative research technique is the “focus group.” Here a group is brought together with a moderator who poses a variety of questions to the group. Individuals provide answers and the group dynamic effect comes into play, in that comments from some members of the group inspire comments from others within the same group. This is a particularly valuable market research technique that can be applied under the right conditions to the IP litigation issues. The key benefit of focus groups is they provide valuable insight into consumer behavior characteristics and motivations. While the survey research may uncover details like product and source recognition, the focus groups can uncover the seemingly important factors regarding why people buy. Also, the surveyors can assess the impact [â•›72â•›]â•… Trademark Surveys

of advertising messages by showing the focus group TV commercials and then asking the individuals to comment on what is being presented and the message(s) they believe the commercials are delivering. Such verbatim comments coming directly from focus groups can often supplement the verbatim comments supplied by surveys to provide a wider understanding of buyer motivation and behavior.

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CHAPTER 4

IP Issues Where Surveys Can be Critical

4.01╇ INTRODUCTION

This chapter introduces and overviews those crucial issues where evidence obtained from surveys can be critical in determining if an infringement has taken place or if there is a likelihood of confusion. These subjects are covered in far more detail in subsequent chapters. Within this chapter, each of the six key trademark issues—Likelihood of Confusion, Secondary Meaning, Genericness, Trade Dress, Distinctiveness, and Dilution are introduced. At the end of some chapters Additional Insights are included, in which appropriate passages from articles focusing on the use of scientific surveys are featured. 4.02╇ DETERMINING TRADEMARK STRENGTH

As we embark on our analysis of the various intellectual property issues where surveys can be critical, it is first necessary to understand the various levels of trademark strength. As we know, a device such as a word, combination of words, logo, or other graphic depiction can only be considered a trademark or a service mark only if it is distinctive and indicative of the source. Such a distinctive device is capable of clearly distinguishing the goods of services for which the mark is used from the goods and services put out by others. Something that is not distinctive merely describes or indicates a character, quality, or ingredient of the category of goods and services. Words such as bank or market only indicate categories and not distinctive entities. However, CHICAGO BANK OF COMMERCE or WHOLE FOODS

MARKET are indeed distinctive. The distinctiveness of such a name, symbol, logo, or other device generally can be put into one of five categories that constitute levels of distinctiveness—from least to most distinctive: • • • • •

Generic Descriptive (including surnames) Suggestive Arbitrary Fanciful

The “strength” of the trademark is a function of where it falls on this spectrum. The highest level on the spectrum is “fanciful” and the lowest is “generic.” Names and symbols that are fanciful, arbitrary or suggestive are considered to be distinctive enough to function as trademarks. On the other hand, if the name or symbol is merely descriptive, such a device can only function as a trademark if it has obtained secondary meaning, which is discussed in greater depth later in this chapter. Generic devices can never function as trademarks. Therefore, if in a dispute, one can prove an alleged trademark is generic, then there is no possibility for proving trademark, trade dress, or secondary meaning infringements Because a trademark is a distinctive word, series of words or symbols that businesses use to identify its products to consumers, it often is presented as an adjective that modifies a generic name or a descriptor of the product—such as GATORADE sports drink or HEAD AND SHOULDERS shampoo. When the trademark is used as an adjective, it should be capitalized. Intellectual property lawyers sometimes advise corporations to use their trademarks only as proper adjectives, not as proper nouns. By this theory, a trademark is not the name of a product, but rather a signifier of the source of the product. Another danger point is when the trademark is used as a verb. This often happens when a trademark so dominates a product category that it becomes the generic name for all types of products or services within the category. [A]╇ Generic Marks

In assessing trademark strength, the lowest level—generic marks—are merely names of products and are incapable of functioning as trademarks. Even if generic marks are heavily advertised and secondary meaning can be proven, generic names or symbols can never become trademarks. On the other hand, there have been many instances where valid trademarks become [â•›76â•›]â•… Trademark Surveys

generic if the consuming public misuses the mark significantly enough to permit the trademark to morph into generic names. [B]╇ Descriptive Marks

Moving up the scale, we find descriptive marks. These are devices that merely describe the services or goods on which the mark is used. If such a device is merely descriptive, it really is not a trademark, as it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks and misdescriptive marks are equally as weak. One of the really significant issues in trademark surveys is that descriptive marks are often difficult to distinguish from suggestive marks. The key test is that suggestive marks require some degree of imagination, thought, or perception to reach a conclusion about the nature of the goods or services. Descriptive marks allow for such conclusions without such imagination, thought, or perception. Proving this distinction can be very difficult. Merely descriptive marks can be registered federally on the Supplemental Register. [C]╇ Suggestive Marks

Moving up the spectrum, there are the suggestive marks. These suggest a quality or character of the goods and services. Although not considered as strong as fanciful or arbitrary marks, suggestive marks are far more common because of the marketing concept of tying the mark to the product in the customer’s mind. As previously mentioned, differentiating suggestive from descriptive marks often is a survey battleground. The concept for suggestive marks, although abstract, is that these types of marks require some imagination, thought, or perception to reach a conclusion regarding the nature and/or source of the goods. Conclusions about descriptive marks allow one to reach a conclusion as to the nature and/or source without any imagination, thought, and/or perception. Putting this thought into practice and proving the relevant target market can reconcile the differences between descriptive and suggestive marks and is one of the most difficult and disputed areas of trademark law. [D]╇ Arbitrary and Fanciful Marks

Arbitrary marks and fanciful marks are considered the strongest of all trademarks. Arbitrary marks utilize a device having a common meaning I P I S S U E S W H E R E S U RV E Y S C A N B E C R I T I C A L â•…

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that has no relation to the goods or services being sold. Fanciful marks include words that have been invented for the purpose of becoming a trademark and have no meaning other than acting as a trademark. 4.03╇ SURVEY BATTLEGROUND

The trademark strength issue surfaces in two key areas of intellectual surveys. The first is the determination of whether a mark is considered generic. If it can be proven that the mark is generic, there is no basis for trademark protection and there can be no confusion. Later in the book, we will discuss the “Thermos” and “Teflon” protocols” as a means of proving that a mark is generic. The sizable issue is whether a mark is descriptive or suggestive. Descriptive marks can become distinctive if it can be established that the descriptive mark possesses secondary meaning. The threshold for proving secondary meaning is quite high. A survey to prove that a descriptive mark possesses acquired distinctiveness (secondary meaning) usually requires somewhere around 50 percent of respondents recognizing the mark comes from a single source. If a mark can be proven to be suggestive, it can be argued that mark is entitled to protection. In doing a survey, one way to show that a mark is suggestive rather than descriptive is to educate the respondent as to the nature of trademarks. A definition of generic followed by examples of generic marks would be followed by a definition of descriptive marks followed by example and finally a definition of suggestive would be presented followed by examples. Then, several marks would be presented including the mark in question and the respondent would be asked whether he or she believes it to be generic, descriptive, or suggestive and then asked why. The combination of the answer and the reason can give weight to the expert’s opinion of whether the mark is descriptive or suggestive. 4.04╇ LIKELIHOOD OF CONFUSION—DIFFERENT LEVELS OF CONFUSION

“Actual confusion is the best evidence of likelihood of confusion,” according to McCarthy: “Convincing evidence of significant actual confusion occurring under actual marketplace conditions is the evidence of a likelihood of confusion.” Examples of actual confusion are documented statements on the part of customers or intermediaries that a user’s presence in the marketplace has caused them to be confused as to the source or origin [â•›78â•›]â•… Trademark Surveys

of the product or service. Clearly, this is the most powerful evidence that confusion exists in the marketplace. Having solid evidence of actual confusion would preclude the need to do any likelihood of confusion survey. According to Bradley L. Cohn, Courts weigh various factors to determine whether confusion is likely. . . The following are the most common factors analyzed by the courts: a. The strength of the plaintiff ’s trademark; b. The similarities of the parties’ mark; c. The similarities of the parties’ respective goods or services; d. The parties’ respective marketing channels; e. The degree of care exercised by consumers when purchasing the parties’ products or services; f. The defendant’s intent in adopting the mark; and, g. Evidence of actual confusion, if any.1

It is not mandatory to prove actual confusion, according to McCarthy. “The test of infringement is the likelihood of confusion, not the proof of actual confusion,” he writes. He adds that a plaintiff can prove liability without showing instances of actual confusion. McCarthy writes that a plaintiff seeking damages must introduce evidence of actual confusion but a plaintiff seeking injunctive relief need only prove a likelihood of confusion. Where the respective trademarks or products or services are not identical, the degree of similarity can be determined through tests for likelihood of confusion Such tests would assess whether consumers will believe products or services originated from the same owner of the trademark. Cohn adds that the test of infringement is whether confusion is “likely” and not whether confusion has occurred. “Thus, evidence of actual confusion is not necessary to provide likelihood of confusion.” He adds that actual confusion evidence if often difficult to obtain because consumers may not yet know they have been deceived. Cohn points out that in a case where the plaintiff must prove that its mark has acquired distinctiveness (secondary meaning) here evidence of actual confusion may be relevant, according to Cohn.2 McCarthy points out that likelihood of confusion is the same thing as “probable confusion.” Another way to describe it, according to McCarthy, is “confusing similarity.”

1.╇ Bradley L. Cohn, “Enforcement Remedies and Defenses in Trademark and Unfair Competition,” in (Illinois Institute for Continuing Legal Education, 2010), 8–7. 2.╇ Cohn, “Enforcement Remedies and Defenses in Trademark and Unfair Competition,” 8–8. I P I S S U E S W H E R E S U RV E Y S C A N B E C R I T I C A L â•…

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Now there are gradations within the likelihood of confusion spectrum. The normal garden-variety of likelihood of confusion is often referred to as “forward confusion.” In such cases, an alleged infringer enters the market with a product, service, trademark, or brand that creates confusion with an established or registered trademark. Surveys that test forward confusion generally focus on the constituency of the alleged infringer. In most cases, consumers of the senior brand and the alleged infringer are the same. When a well-known or famous source enters the market with a brand that allegedly infringers on the brand or trademark of a less famous existing or senior user, a condition called reverse confusion arises. Here the junior user is attempting to hijack the name, brand, or goodwill of the senior user. Surveys needed to prove reverse confusion will have to be directed to the customers or the target market of the senior user. Yet another nuance within the likelihood of confusion spectrum is something called “initial interest confusion.” This kind of situation often surfaces in Internet and Website domain disputes. In these cases, there generally are two similar trademarks and the customer is attracted to the product or trademark before the sale is made. However, prior to the sale being consummated, the customer is educated as to the differences of the two trademarks or products or services. Thus, by the time the sale is made the customer is not confused. However, the courts have ruled that this still can be a cause for likelihood of confusion because the customer was drawn to the junior user, thinking it was the senior user. A survey protocol that might be used to prove initial interest confusion might involve interviewing customers of the junior product to determine if they were attracted to the junior products because of knowledge and belief that the junior product emanated from the senior user prior to the purchase. Also to be probed would be how the buyer first became aware of the junior user’s product and if the knowledge of the senior user affected the purchase of the junior user’s product. 4.05╇ OTHER LIKELIHOOD OF CONFUSION ISSUES

McCarthy identifies a number of other likelihood of confusion issues: [A] Product Confusion or Source Confusion: Product confusion can be likened to trade dress confusion where the confusion lies in the identity of the product. Source confusion is a more appropriate test where the confusion arises over source, sponsorship, affiliation or connection. In doing surveys over product and/or source confusion, a commonly used protocol would be to produce an array of products similar to what one might find in a supermarket or drug store and ask: “Which of these products, if any, do you believe were put out by the same company?” [â•›80â•›]â•… Trademark Surveys

[B] Confusion of Customers and Potential Customers: In doing surveys to test for this type of confusion, it is mandatory to focus on existing and/ or potential customers. These customers can be actual individual or family consumers, professional purchasers or intermediary channel members such as retailers and wholesalers. In doing surveys it is important to screen for the proper target market. Both past and potential customers should encompass the target market. The best way to handle such an issue is to ask two questions: (1) Have you purchased this product in the last ___ years? and (2) Do you anticipate purchasing this product in the next ___ months? There usually is a good chance the survey candidate will answer yes to both questions. However, the candidate will have to answer yes to at least one of the questions. [C] Post-Sale Confusion. Thus arises out of confusion after the product is purchased. For example, a person buys a fake Rolex watch but believes he or she has bought the genuine thing. That person was clearly confused as to the source of the watch when he or she purchased it. [D] Confusion of Non-Purchasers. The fact that goods are offered for sale and members of the marketplace are aware of these offerings can be cause for confusion even if the confused person never purchased the goods in question. Here the loss is not in sales but in damages to reputation and good-will. Cohn also discusses third-party liability for infringement. He points out that liability for trademark infringement may go beyond the marketer using the infringing trademark. He suggests that manufacturers who (1) induce or encourage infringing conduct or (2) continue to supply product to a party if it knows it is encouraging trademark infringement. Cohn calls the party using the infringing mark the “direct infringer” while the party encouraging or facilitating the infringement is referred to as a “contributory infringer.”3 4.06╇ TRADE DRESS ISSUES

The traditional definition of trade dress, according to McCarthy, is limited to the overall appearance of labels, wrappers, and containers used in packaging products. McCarthy suggests that although trade dress might focus on the “totality of elements,” there is reason to believe trade dress might encompass perhaps a single element of the container, package, or label rather than the totality of the elements of the container, package, or label taken together. 3.╇ Cohn, “Enforcement Remedies and Defenses in Trademark and Unfair Competition,” 8–13. I P I S S U E S W H E R E S U RV E Y S C A N B E C R I T I C A L â•…

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The Supreme Court defines “trade dress” as “the total image of a product which may include features such as size, shape, color, or color combinations, textures, graphics or even particular sales techniques.” Over the years, the concept of trade dress has been expanded to include such things as the covers of books, magazines, catalogs, records, or video media; distinctive product displays in a retail store environment; and the décor, menu or atmospherics of a restaurant. Yet another defining area of trade dress is the shape and design of the product itself. As with likelihood of confusion, the key test of trade dress infringement is confusion over the source of the products, but trade dress can encompass far more than the brand or trademark. 4.07╇ SECONDARY MEANING ISSUES

McCarthy points out that in trademark law, “designations are placed in categories in a spectrum of distinctiveness.” If the designation being used is classified as not being “inherently distinctive” then to achieve trademark status, that distinction must be proven so that it is clear that it has attained “acquired distinctiveness” in the minds of consumers. This acquired distinctiveness state is known as “secondary meaning.” McCarthy writes: “Secondary meaning is a new and additional meaning that attaches to a noninherently distinctive word or symbol.” Because of this the public then used that symbol or word as a trademark or service mark to identify and distinguish the word or symbol as coming from a single commercial source. Therefore, if there exists a non-inherently distinctive trade symbol such as some kind of a geographic or personal name designation, it must be proved that distinctiveness has been acquired in the marketplace in order to elevate it to the protectable status of a service mark or trademark. People thus are able to keep in mind both the primary and secondary meaning. The primary meaning continues to describe the business while the secondary meaning identifies and differentiates it as a single commercial source. The crucial point about secondary meaning in trademark survey work is the requirement that the consumer “associate the word or symbol with a single, albeit anonymous source.” The more descriptive and less distinctive the word, symbol, or trade dress, the greater the need for quality and quantity of evidence of secondary meaning to prove that trademark or service mark status has been achieved. Here is where the descriptive vs. suggestive dilemma comes into play. If it can be proven that a descriptive mark is suggestive, then there is the opportunity to then prove secondary meaning. It is not only words that can attain secondary meaning, but also nonverbal designations such as descriptive illustrations or shapes and designs. [â•›82â•›]â•… Trademark Surveys

Evidence can come directly in the form of a consumer survey or subjectively through the inputs of the seller. Other forms of circumstantial evidence can be evidence of sales volume, length of time the trade dress has been used, and the quantity of advertising and promotional spending that has exposed consumers to the word, symbol, or trade dress. 4.08╇ SECONDARY MEANING AND LIKELIHOOD OF CONFUSION

The concepts of secondary meaning and likelihood of confusion are interrelated. McCarthy points out that if buyers are confused they must have recognized the plaintiff ’s word as a trademark and associated it only with the plaintiff. In doing survey work in both the secondary meaning and likelihood of confusion worlds, it is generally necessary to first perform a survey that will establish secondary meaning and then do a subsequent survey to prove likelihood of confusion. Most survey experts prefer to do separate surveys although it is possible to do both a secondary meaning study and likelihood of confusion study within the same survey. Another commonly used protocol is to hire two separate survey experts—one to do the secondary meaning study and the other to do the likelihood of confusion study. Another consideration is the different thresholds for proof required in each type of survey. Generally, the courts are looking at the neighborhood of 50 percent as a threshold of proof for secondary meaning. This is a major challenge. On the other hand, the courts commonly accept 20 percent as a threshold for likelihood of confusion. 4.09╇ PROVING OR DISPROVING WHETHER A TRADEMARK IS GENERIC

Because the function of a trademark is to identify and distinguish goods and services of one seller from those of others, the designation of the product/service denotes the source. A term might very well function as a generic name but at the same time can function as a valid—and strong— trademark for another product. Clearly, because a designation is generic for one thing, it can become a strong, arbitrary brand name for something else as long as the generic name is used as an adjective. McCarthy points out that “The concept of ‘generic name’ and ‘trademark’ are mutually exclusive. Thus, if, in fact, a given term is ‘generic’ it can never function as a mark to identify and distinguish the products of only one seller.” McCarthy adds that unlike a trademark, which identifies the source of the product, a generic term merely identifies the “genus” of which the particular product is a “species.” Therefore, because I P I S S U E S W H E R E S U RV E Y S C A N B E C R I T I C A L â•…

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the generic term is not capable of distinguishing the source of one product from another, it cannot be registered as a trademark. In intellectual property law suits, if one side can offer convincing proof that a mark is considered generic by a large percentage of the relevant target market, that mark, therefore, cannot be a trademark and therefore cannot be infringed upon.

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CHAPTER 5

Likelihood of Confusion Issues

5.01╇ INTRODUCTION

The test of “likelihood of confusion” is central to all trademark infringement and unfair competition disputes. Infringement of trademarks, service marks, and trade dress are all subject to a likelihood of confusion inquiry, which is the same for a service mark and a trademark.1 For a federally registered mark, the key issue is whether a junior user’s use is “likely to cause confusion, or to cause mistake, or to deceive.”2 For an unregistered mark, the issue is whether a junior user’s use “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association” with the senior user.3 Likely confusion as to the source of the goods by an “appreciable” number of reasonable buyers results in liability.4 Although the specific meaning of the term “appreciable” is unsettled, courts have made it clear that it does not necessarily mean a majority.5 There are three main routes to proving likelihood of confusion: 1. Survey evidence; 2. Evidence of actual confusion; and/or

1.╇ Lane Capital Management, Inc. v. Lane Capital Management, Inc., 192 F.3d 337, n. 2, 52 U.S.P.Q. (BNA) 2d 1094, n. 2 (2d Cir. 1999). 2.╇ Lanham Act § 32, 15 U.S.C. § 1114(1). 3.╇ Lanham Act § 43(a), 15 U.S.C. § 1125(a). 4.╇ McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. (BNA) 81 (2d Cir. 1979). 5.╇ See, e.g., American Ass’n for Advancement of Science v. Hearst Corp., 498 F. Supp. 244, 206 U.S.P.Q. (BNA) 605 (D.D.C. 1980); Humble Oil & Refining Co. v. American Oil Co., 405 F.2d 803, 160 U.S.P.Q. (BNA) 289 (8th Cir. 1969), cert. denied, 395 U.S. 905, 161 U.S.P.Q. (BNA) 832 (1969).

3. Argument that the trier of fact can make a clear inference as to the likelihood of confusion based on his own comparison of conflicting marks and the context of their use.6 5.02╇ THE “CONFUSINGLY SIMILAR” ANALYSIS

A “confusingly similar” analysis determines whether the concurrent use of conflicting marks is likely to cause confusion.7 However, a finding that the marks are “confusingly similar” does not necessarily result in a finding of likelihood of confusion, and thus infringement. For example, “confusingly similar” marks may be likely to cause confusion between the marks themselves, but not as to source or sponsorship of the marks.8 In other words, a finding of confusing similarity does not necessarily result in a finding of infringement; only a finding of likelihood of confusion results in infringement.9 5.03╇ FORMS OF CONFUSION

The most common form of confusion that creates infringement is “point of sale confusion,” which is purchaser confusion of the source of the products or services at the time of purchase. A majority of courts also recognize “post-sale confusion,” or purchaser confusion of source after the time of purchase.10 “Initial interest confusion” that may not result in or be as a result of a sale may also be actionable.11 Further, something known as “reverse confusion” can be actionable when a junior user who has engaged in a major advertising or marketing effort confuses the consumer so that the consumer believes the junior user’s products or services are those of the senior user.12 In addition, source confusion, the confusion of affiliation, connection, or sponsorship, may also be actionable.13 However, if a junior

╇ 6.╇ Volkswagenwrk AG v. Hoffman, 489 F. Supp. 678, 682 (D.S.C. 1980). ╇ 7.╇ Motorola, Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 400 (C.C.P.A. 1963). ╇ 8.╇ Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983). ╇ 9.╇ In re West Point-Pepperell, Inc. 468 F.2d 200 (C.C.P.A. 1972) (“the test is ‘not whether people will confuse the marks but whether the marks will confuse people’”). 10.╇ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., Rel. #49, (West, 2009) 23:7. 11.╇ McCarthy, McCarthy on Trademarks, 23:6. 12.╇ Id. at § 23:10. 13.╇ Id. at § 23:8. [â•›86â•›]â•… Trademark Surveys

user’s mark merely calls to mind the senior user’s mark, it is not infringement.14 For instance, if DVS Drugstores were to create a new product labeled “dandruff shampoo,” but were to note that it is “comparable to Head and Shoulders,” this would be unlikely to cause confusion and to reach a conclusion of infringement. [A]╇ Product Confusion or Source Confusion

While confusion over products caused by similar marks is clearly an issue in trademark law, the more central issue is confusion over the source of the products or services or over their sponsorship, affiliation, or connection. A common scenario is when a junior user improperly attempts to divert attention to an area where his products are not competitive with the senior user’s products, but may appear to be “related” because of confusion over affiliation, connection, or sponsorship.15 For example, a maker of Hoggin’ Das canned vegetables may be sued for infringement by the maker of HäagenDazs ice cream because of a likelihood of confusion. While it’s unlikely that a consumer would be confused into purchasing the junior user’s canned vegetables when that consumer wants to buy ice cream, that consumer may very well have the mistaken impression that the maker of the ice cream has extended its business into other food products. [B]╇ Confusion of Customers and Potential Customers

Likelihood of confusion requires that the “relevant group” of customers or potential customers are likely to be confused. Such customers may be ordinary consumers, professional purchasers, or channel members, such as retailers and/or wholesalers, that are either in the market or may some day be in the market for the products or services in question, and who pays attention to brands of products and/or services.16 For example, a person living in southern Florida would have no interest in or knowledge of snowblowers, and thus wouldn’t be considered to be in the “relevant group” of consumers for that product. A means of avoiding confusion of customers and potential customers is through a clearly presented point-of-sale disclaimer.17 14.╇ Id. at § 23:11. 15.╇ In re Box Solutions Corp., 79 U.S.P.Q. (BNA) 2d 1953 (T.T.A.B. 2006). 16.╇ Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir. 1997). 17.╇ General Motors Corp. v. Keystone Automotive Industries, Inc., 453 F.3d 351 (6th Cir. 2006). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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[C]╇ Post-Sale Confusion

Post-sale confusion can also be actionable. For example, an individual may purchase a Drollex watch knowing that it is not a genuine Trollex watch. However, members of the public seeing that individual may be confused into thinking the Drollex watch is a genuine Trollex watch, which can damage the reputation of the Trollex brand, potentially causing a loss of sales. [D]╇ Confusion of Non-Purchasers

Damages from confusion may not only include loss of sales, but also injury to a senior user’s reputation and good will. For example, if two retailers sell women’s clothing products under the same name, with the senior merchant’s store being upscale and the junior merchant’s store being secondhand, a belief that the junior merchant’s value-priced merchandise is affiliated with the senior merchant’s upscale merchandise may be construed to cause reputation damage, even if no loss of sale was suffered. [E]╇ In-House and Private Use

If a mark is not seen by the consuming public and is simply being used in a private or in-house manner, this typically does not constitute infringement.18 For example, if a mark is only used on a directory or computer menu that is inaccessible to the product’s user and the general public, confusion cannot be triggered if there is no access to the memory of the computer.19 [F]╇ Hidden Use

A mark used in some “hidden” location that is unlikely to be seen rarely results in a finding of infringement. For example, if a trademark is used on a component part printed on a circuit board that the consumer would not be able to see unless he or she took apart the computer, it would not constitute infringement.20 18.╇ Meta-Film Associates, Inc. v. MCA, Inc., 568 F. Supp. 1346 (C.D. Cal. 1984). 19.╇ 1-800 CONTACTS, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005). 20.╇ Custom Mfg. and Engineering, Inc. v. Midway Services, Inc., 508 F.3d 641 (11th Cir. 2007). [â•›88â•›]â•… Trademark Surveys

[G]╇ Confusion of Senior User’s Customers

When a junior user allegedly infringes on a senior user’s mark, both the junior user’s customers and the senior user’s customers may be confused. In such cases, the senior user’s customers may falsely infer that the senior user has developed new products or services or has expanded its role in the supply or distribution chain.21 [H]╇ Brand-Indifferent Shoppers or Careless Shoppers

Infringement can also affect shoppers who are indifferent as to brands or who are careless in the purchasing of branded products and services.22 Infringement potentially has a pronounced effect on this category of customers, because they may be confused by a minimum level of similarity. [I]╇ Confusion of Investors

An infringing trade name that is likely to confuse investors is potentially as damaging as an infringing trade name that is likely to confuse customers.23 Investors are important stakeholders, and trade name confusion can affect or damage the relationships between businesses and current or potential investors. [J]╇ Confusion of Suppliers

Relationships with suppliers are an important part of a business. There may be severe repercussions for a business if its suppliers are confused as to who is producing products and what products are being produced. Such confusion may affect whether a supplier wants to do business with a particular customer, or a supplier might question whether it will be compensated properly for its goods and/or services. As such, confusion of suppliers may also support a finding of infringement.24

21.╇ See Yarmuth-Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990 (2d Cir. 1987). 22.╇ See, e.g., Fotomat Corp. v. Cochran, 437 F. Supp. 1231 (D. Kan. 1977). 23.╇ See, e.g., Morningside Group Ltd. v. Morningside Capital Group, LLC, 182 F.3d 133 (2d Cir. 1999). 24.╇ See Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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[K]╇ Initial Interest Confusion: Internet “metatags”

Metatags are HTML codes that Internet search engines (such as Google and Yahoo) use to categorize websites. Metatags are embedded into the websites’ code and are not visible to consumers, but they play a role in what websites are displayed when a user searches for particular information. This means that if an infringer includes the name of a senior user’s brand as a metatag on its Web page, the infringer’s Web page may be a result when a consumer performs a search for the senior user’s brand. In this way, a consumer seeking a particular brand on the Internet may instead be presented with an infringing brand.25 This is one of the ways in which the Internet has created new avenues for potential infringement. [L]╇ Initial Interest Confusion: Internet “domain names”

Internet domain names that conflict with an existing trademark may also cause initial interest confusion. Although a disclaimer on the website may eliminate the confusion later on, some courts have found that this is insufficient to remedy the initial interest confusion.26 If a Web user searches for a particular trademark because he or she is interested in accessing the website of the company that owns that trademark, the initial interest confusion takes place when the user clicks on to the infringer’s website. Even if the user eventually realizes that the domain does not belong to the trademark owner, the infringer has successfully enticed the user to choose the infringer’s site and thus has caused initial interest confusion. Other courts do not recognize initial interest confusion with respect to domain names because of the minimal involvement with the alleged infringer’s website, and the ease with which an Internet user can get his or her search back on track.27

25.╇ See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). 26.╇ New York State Society of Certified Public Accountants v. Eric Louis Associates, Inc., 79 F. Supp. 2d 331 (S.D.N.Y. 1999) (The disclaimer defense “ignores the initial confusion caused by defendant’s use of [an infringing domain name”); see also OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (W.D.N.Y. 2000). 27.╇ See, e.g., Chatam International, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549 (E.D.Pa. 2001); Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass 1999); see also J.E. Rothman, “Initial Interest Confusion: Standing at the Crossroads of Trademark Law,” Cardozo L. Rev. 27 (2005): 105, 175 (noting that “[i]t takes seconds to click back to a prior webpage or search results list, or to redirect to another website . . . ”). [â•›90â•›]â•… Trademark Surveys

[M]╇ Product Shape Trade Dress and Trademarks

Courts have been generally unwilling to recognize initial interest confusion with respect to the shapes of products.28 The rationale behind this unwillingness is that in a retail environment, many products may appear similar in shape when viewed from afar.29 [N]╇ Extended Purchase Process

When a consumer is involved in an extended purchase process that takes perhaps several months, initial interest confusion may still occur even if, by the time the buyer finalizes the purchase, the initial interest confusion has dissipated. The consumer may still have initially been deceived, and such deception may have influenced the consumer’s consideration of the senior and junior user’s respective products. [O]╇ Private Label Branded Products

Private label products closely resemble a nationally advertised product. Many private label branders also use trade dress that is similar to a nationally advertised product. Courts have recognized this as trade dress infringement because it “hooks customers” in at the initial point of contact.30 Even though the customer may eventually realize the private label product is not the real thing, the damage is complete when the consumer is induced to consider purchasing the private label product.31 Just as a job seeker who falsifies his or her résumé in order to obtain a job interview has gained an unfair advantage over an honest job seeker, so does the private label brander gain an advantage by using products that closely resemble a nationally advertised product. [P]╇ Bait and Switch

Bait and switch is the archetypal form of initial interest confusion. It occurs when a merchant promotes products that turn out to be either unavailable 28.╇ See Gibson Guitar Corp. v. Paul Reed Smith Guitars, L.P., 423 F.3d 539 (6th Cir. 2005) (finding no infringement with regard to the shape of a guitar). 29.╇ Id. 30.╇ McNeil-PPC v. Guardian Drug Co., 984 F. Supp. 1066 (E.D. Mich. 1997). 31.╇ Id. (If a consumer is confused “at the point when he first reaches for the product on the shelf . . . at that point . . . the damage is done”). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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or of a noticeably different quality than advertised, in an effort to entice the buyer to come into the store.32 In many cases, the buyer is ready, willing, and able to purchase the advertised product. The merchant, however, has no interest in selling the advertised merchandise, and has only used it as a device to interest the buyer as a prelude to a more profitable transaction for the merchant. The advertised product, or the “bait,” creates initial interest confusion, because the customer never would have entered the store without being attracted by the “bait” product. 5.04╇ POST-SALE CONFUSION

Similar in some ways to Initial Interest Confusion, Post-Sale Confusion involves the loss in prestige a senior user suffers as a result of the junior user’s branded product. Even though a knowledgeable buyer may realize that the junior user’s product is a cheap imitation, less sophisticated consumers may divert their sales to the infringer.33 In addition, there may be a ripple effect from the downstream marketing channel members, including viewers of the product, re-purchasers, and/or gift recipients.34 Post-sale confusion can damage the reputation of the trademark owner because consumers’ experiences with the inferior product tarnish their image of the legitimate product.35 ANECDOTE: A series of cases in which co-author James T. Berger was involved focused on a successful new product of the Black & Decker tool company called the “Snakelight” flexible flashlight. This product was highly advertised and came on the market just before a the holiday gift-giving season. The design was relatively simple, involving a flashlight with a flexible neck. It was ideal for freeing the hand of a person doing household or automotive repair work. The product had widespread distribution and was priced at a premium. Soon after it began selling in the U.S. market, a slew of “knockoff ” products started entering the country from the Far East. Some of the knockoff products were identical in appearance to the Snakelight; all, however, were inferior in quality and priced significantly lower. Black & Decker’s law firm was able to prevent those products from entering the 32.╇ See Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376 (7th Cir. 1996). 33.╇ Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). 34.╇ See, e.g., General Motors Corp. v. Keystone Automotive Industries, Inc., 453 F.3d 351 (6th Cir. 2006); Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446 (9th Cir. 1991); Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). 35.╇ Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985 (Fed. Cir. 1993). [â•›92â•›]â•… Trademark Surveys

U.S. market. Entry of these knockoff products would have damaged the sales and reputation of Black & Decker, creator of this innovative product. Knockoffs of premium priced products such as expensive watches and fashion accessories are particularly damaging. Knockoffs of the Rolex and Cartier watches are well-known and extremely commonplace. One can buy them at flea markets and craft fairs. Not only are the appearances of the knockoff watches identical in outward appearance, they may also use the same graphic presentation as the brand names. Post-sale confusion can also occur with regards to service marks. If, for example, an upstart bank uses a name and graphics similar to those of an established bank, customers or potential customers may be confused. An example is a case the co-author James T. Berger was involved in regarding a highly advertised and promoted national mortgage company called AMERIQUEST Mortgage. The case came about when a bank in Fort Worth, Texas, changed its name to AMERICREST. In the ensuing lawsuit, a survey was presented that showed likelihood of confusion. A settlement quickly resulted, and AMERICREST Bank eliminated the confusion by changing its name once again. 5.05╇ CONFUSION AS TO AFFILIATION, CONNECTION, OR SPONSORSHIP

Trademark and unfair competition law are concerned not only with confusion as to source, but also with confusion as to affiliation, connection, and sponsorship. Under the Lanham Act, the criteria for “confusion” are broad, and a federal claim for infringement of a non-registered trademark can result from a use that “is likely to cause confusion, or to cause mistake, or to deceive as the affiliation, connection or association” of the junior user with the senior user.36 Trademark law concerns itself with confusion as to affiliation, connection, and sponsorship because consumers generally believe that approval, in the form of a license, is required for the use of a trademark.37 To prove infringement in this context, a trademark owner must show that consumers may be deceived into believing that the trademark owner approved the infringer’s use of the trademark.38 Even if the product is no longer being 36.╇ 15 U.S.C. § 1125(a). 37.╇ See NFL v. Governor of Delaware, 435 F. Supp. 1372 (D. Del. 1977) (“[A] substantial number of people believe, if not told otherwise, that one cannot conduct an enterprise [involving football games] without NFL approval”). 38.╇ Medic Alert Foundation U.S., Inc. v. Corel Corp., 43 F. Supp. 2d 933 (N.D. Ill. 1999) (Finding no infringement because there was no “confusion as to perceived endorsement”). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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made, confusion can still result. The shape of the classic Ferrari sports car made between 1969 and 1974 was unique. The maker of a replica car that uses this distinct shape is assumed to have the approval of Ferrari. The use of this shape without approval or licensing rights might lead one to believe that Ferrari produced a product that failed to meet its quality standards.39 The connection between the junior and senior users’ depiction of a mark has to be stronger than merely the junior user’s ability to “call to mind.” While a junior user of a form of traveler’s checks uses the slogan, “Don’t Do it Yourself Without Us” may call to mind American Express’ “Don’t Leave Home Without Them,” the connection is too weak to be infringing. While “GHOSTBUSTERS may call to mind Casper, the friendly ghost, the connection is not likely but only possible.40 5.06╇ REVERSE CONFUSION

Reverse confusion occurs when a junior user, generally through highly aggressive sales and marketing strategies and tactics, “hijacks” the senior user’s brand and reputation to the point that consumers believe the goods of the senior user are actually those of the junior user. This is a direct reversal of the traditional forward confusion, in which consumers believe the junior user’s products to be those of the senior user. With reverse confusion, the junior user so dominates the market as to overwhelm the senior user.41 The result is that the senior user loses the goodwill and value of its trademark.42 This can be particularly damaging if the senior user seeks to extend its brand into new product categories or markets. In a reverse confusion case, the survey or other evidence must show that the junior user has attempted to preempt the market, usually by utilizing a higher profile advertising/marketing effort.43 A reverse confusion action is intended to prevent the higher profile company from usurping the business identify of the lower profile senior user. Reverse confusion may occur when a deep-pocketed national marketer finds an obscure local or regional brand and sets its sights on hijacking that brand. In other cases, however, the goal is not to take over the business of the senior user, which may be small and

39.╇ McCarthy, McCarthy on Trademarks, 23:8. 40.╇ McCarthy, McCarthy on Trademarks, 23:9. 41.╇ Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960 (6th Cir. 1987). 42.╇ Banff Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486 (2d Cir. 1988). 43.╇ Commerce National Insurance Services, Inc. v. Commerce Insurance Agency, Inc., 214 F.3d 432 (3d Cir. 2000). [â•›94â•›]â•… Trademark Surveys

of little value. Instead, the junior user simply intends to roll out its product or brand on a national scale, and assumes there is no risk of confusion because the senior user’s scope is so limited.44 ANECDOTE: In the following case, co-author James T. Berger successfully undertook a “reverse confusion” survey. The case was eventually tried by a jury, which found for the defendant. The senior user, a company called Mini Melts, Inc., is a maker of a cryogenically frozen ice cream product sold in sports and entertainment venues, shopping centers, kiosks, and vending machines. The alleged infringer was the mammoth international pharmaceutical company Reckitt Benckiser, Inc., which, among other things, markets a children’s cold product called Junior Strength Mucinex® Mini-Melts.™ Because of the reverse confusion aspects of the case, it was necessary to survey those who could possibly be aware of the senior user. Thus, those who were interviewed were those who purchased food products at sports or entertainment venues or shopping centers at stands, kiosks, or through vending machines. The research method was a multi-venue mall intercept study and the respondent were shown photos of the two products. They were asked: 1. 2. 3. 4. 5. 6.

Which product would you exercise most care in buying? Do you believe these products are put out by the same company? Do you believe the products are owned by the same company? Do you believe these products are sponsored by the same company? Do you believe these products are affiliated with the same company? Do you believe the makers of these products are associated in any way with each other?

The results of the survey were overwhelming. These surveys showed there was no linkage between the products, and the jury found for the defendant, Reckitt Benckiser, Inc. Reverse confusion is unlikely if the goods and/or services of the users are not competitive.45 Hence, one of the tests in the Mini-Melts survey was whether these products were in any way competitive. In this case, clearly, one product was a food dessert product and the other was a proprietary drug product. For both products, advertising and marketing efforts are directed to very different target markets and the research indicated that

44.╇ See, e.g., Attrezzi, LLC v. Maytag Corp., 436 F.3d 32 (1st Cir. 2006) (Maytag launched a national line of appliances branded Jennaire_Attrezzi, even though it knew of the senior user in New Hampshire). 45.╇ See DeCosta v. Viacom Int’l, Inc., 981 F.2d 602 (1st Cir. 1992). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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there was little awareness of the products of the junior user by the senior user and vice versa. 5.07╇ “FAIR USE” AS A DEFENSE TO ALLEGED TRADEMARK INFRINGEMENT

Under trademark law, there are two distinct versions of “fair use,” each of which permits the legal use of another’s trademark. There is little similarity between the two versions. The first version is “classic fair use.” Classic fair use occurs when the junior user is not using a descriptive, geographically descriptive, or personal name designation in a trademark sense, but only to describe the junior user’s goods or services or geographic origin, or to name the person running the business.46 The second version is called “nominative fair use.”47 Nominative fair use identifies the true trademark owner and generally involves “comparative advertising” campaigns.48 When an advertisement compares one product to another—such as Hertz vs. Avis or Pepsi vs. Coke—there is a competitive need to use another’s trademark so as not to confuse the consumer. Another example of the nominative fair use doctrine is a business that advertises: “we repair Apple computers.” Even if the business is not an “Authorized Apple Repair Center,” its use of the word Apple to describe its services is permitted under the fair use doctrine. Parody is another possible variation of the fair use doctrine. In a parody, humor is used as a marketing technique and very popular and well-known brands or trademarks are used to conjure up certain images. “Barbie,” the popular Mattel doll, may be used as shorthand for an airhead obsessed with parties.49 Another example would be the use of “Teflon” to describe politicians to whom scandals do not stick. 5.08 LANHAM ACT REQUIREMENTS

Under the Lanham Act, infringement of a federally registered trademark occurs only if the utilization of the mark is “in connection with the sale,

46.╇ McCarthy, McCarthy on Trademarks, 23:11. 47.╇ McCarthy, McCarthy on Trademarks, 23:11; see also Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002). 48.╇ See New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992). 49.╇ Mattel, Inc. v. MCA Records, Inc., 46 U.S.P.Q. (BNA) 2d (C.D. Cal. 1998) (relating to the song “Barbie Girl”). [â•›96â•›]â•… Trademark Surveys

offering for sale, distribution or advertising of any goods or services.”50 Similarly, for unregistered marks, the use must be “on or in connection with any goods or services,” and must be likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the accused person, product, or service with the plaintiff, senior user, or originator of the “goods, services or commercial activities” with the junior user, defendant, or accused party.51 Non-trademark use of another’s mark is often arguably not infringement because non-trademark use is highly unlikely to cause actionable confusion.52 5.09╇ INTERNET-RELATED ISSUES

Courts have held that merely using another’s trademark in a registered Internet domain name is not infringement by confusion under the Lanham Act.53 The rationale is that the domain name is a use, but is not a use in connection with goods and services and thus is not commercial.54 For example, Lionel Trains is a trademark, but an Internet domain name such as lionelcollectibles.com would be considered fair use and not an infringement. The 1999 federal Anticybersquatting Consumer Protection Act (ACPA) created an exception to this general rule, regulating those who buy up domain names closely related to brand names with the intention of selling them back to the brand holder.55 This type of abuse would otherwise have the potential to be significant and difficult to control. For example, a “.com” site may also be registered by a cybersquatter as a “.net” site or a “.org” site. [A]╇ Pop-up Advertising on the Internet

Pop-up advertising is another possible Internet age area of possible infringement. Pop-up ads are triggered when an Internet user clicks on a particular website. The user may end up on the website from clicking a link within

50.╇ 15 U.S.C. § 1114(1). 51.╇ 15 U.S.C. § 1125(a)(1)(A). 52.╇ See G.B. Dinwoodie & M.D. Janis, “Confusion Over Use: Contextualism in Trademark Law,” 92 Iowa L. Rev. 1597 (2007) (“[N]on-trademark uses are on balance more likely to be justified or non-actionable in any number of ways because they are less likely to implicate the core concerns of trademark law”). 53.╇ McCarthy, McCarthy on Trademarks, 25:76. 54.╇ McCarthy, McCarthy on Trademarks, 25:78. 55.╇ The Anticybersquatting Consumer Protection Act, P.L. 106-113, 113 Stat. 1501 (enacted November 29, 1999). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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another website. Confusion may occur when the user sees the pop-up ad and mistakenly believes that it is sponsored or approved by the website that was being accessed when the pop-up appeared. Courts have held that this is type of confusion is not actionable, because the defendant did not “use” the plaintiff ’s marks in the manner prohibited by federal trademark law.56 [B]╇ Search Engine Banner Ads and Sponsored Links

Search engine banner ads and sponsored links are yet another cyber battleground. Banner ads and sponsored links are revenue generating devices created by Google, Yahoo, and other search engines. When one enters a search term such as “used cars,” a paid advertisement banner may also appear. Advertisers buy specific search terms that will trigger these banners. “Sponsored links” work similarly—an advertiser pays to have its link appear at the time of the search results. An area of specific concern is the word “sponsored.” If an Internet users enters a brand name, like “Kodak camera” as a search term, competitors of Kodak can buy “sponsored links” that will become available to the searcher. Could an Internet user believe that “Canon,” a competitor of Kodak that appears as a “sponsored link” on the “Kodak camera” search, is, in fact, sponsored by Kodak? Research has shown that many Internet searchers mistakenly believe that a “sponsored link,” is, indeed, sponsored by the trademark designated in the initial search. This is yet another area where the legal system has yet to catch up with the realities of the Internet marketplace. 5.10╇ LIKELIHOOD OF CONFUSION VS. ACTUAL CONFUSION

According to Mark D. Robins in Actual Confusion in Trademark Infringement Litigation: Restraining Subjectivity Through A Factor-Based Approach to Valuing Evidence,57 “evidence of actual confusion can present one of the most formidably challenges to an attorney representing a trademark defendant.” Robins explains that when circumstances point to a finding of noninfringement, significant evidence of actual confusion can “dramatically

56.╇ 1-800-CONTACTS, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005). 57.╇ Mark D. Robins, “Actual Confusion in Trademark Infringement Litigation: Restraining Subjectivity Through A Factor-Based Approach to Valuing Evidence,” 2 Nw. J. Tech. & Intell. Prop. 1 (Spring 2004) (available at http://www.law.northwestern.edu/journals/njtip/v2/n2/1). [â•›98â•›]â•… Trademark Surveys

alter the equation.”58 He goes on to point out, however, that plaintiffs’ attorneys often draw a false sense of security from such evidence because often it is not what it appears to be.59 He adds that such evidence of actual confusion might not reflect the realities of the marketplace and points out that such evidence often comes from vague, ambiguous, and non-Â� trustworthy sources.60 Robins also explains that any evidence of actual confusion is strong evidence of likelihood of confusion.61 While a judge may not be convinced by a survey showing likelihood of confusion, he or she would have to consider evidence of actual confusion.62 However, this actual confusion thinking may have its limits. If sophisticated, knowledgeable users are aware of actual confusion that does not mean that casual or unsophisticated users may not be likely to be confused.63 It is not improper for a trademark owner to use undercover investigators to pose as buyers in an effort to produce evidence of actual confusion. The First Circuit found an exception to this rule where a company was doing business only in Japan, and an adversary of that company persuaded retailers in the United States to sell or display the defendant’s merchandise, and undercover shoppers revealed the violation.64 However, these goods were not offered for sale to ordinary customers, thus the undercover buyers were not recognized by the courts as representative buyers.65 Actual confusion may be difficult to prove with regard to new products because there is little opportunity for actual confusion. Realizing how difficult it may be to produce evidence of actual confusion, courts often will state that actual confusion or deception is not essential to the finding of trademark infringement.66 Therefore, a survey showing likelihood of confusion may suffice. While it may be difficult to produce evidence of actual confusion for a “new” product, if a product has been in use for a long period of time and there is no evidence of actual confusion, this might be considered proof

58.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 1. 59.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 1. 60.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 1. 61.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 4–6. 62.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 117–239. 63.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 117–239. 64.╇ McBee v. Delica Co., Ltd., 417 F.3d 107 (1st Cir. 2005). 65.╇ Id. 66.╇ See Lois Sportswear U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 383 (7th Cir. 1976) (citations omitted); E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525, 1529–30 (11th Cir. 1985); Am. Dairy Queen Corp. v. New Line Productions, Inc., 35 F. Supp. 2d 727, 732 (D. Minn. 1998); Krueger Int’l, Inc. v. Nightingale Inc., 915 F. Supp. 595, 610 (S.D.N.Y. 1996). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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that there is no likelihood of confusion as well. In the case of two marks coexisting within a marketplace, the opportunity of actual confusion diminishes if the period where the products actually coexisted was a relatively short time frame. 5.11╇ FACTORS LEADING TO CONFUSION

According to the 1938 Restatement of Torts, there are nine foundational factors to be considered in determining likelihood of confusion for noncompetitive goods: 1. The likelihood that the actor’s goods, services or business will be mistaken for those of the other; 2. The likelihood that one may expand his business so to compete with the other; 3. The extent to which the goods or services of one and those of the other have common purchasers or users; 4. The extent to which the goods or services of the actor and those of the other are marketing through the same channels; 5. The relation between the functions of the goods or services of one and those of the other; 6. The degree of distinctiveness of the trademark or the trade name; 7. The degree of attention usually given to trade symbols in the purchase of goods or services of one and those of the other. 8. The length of time during which the actor has used the designation; 9. The intent of the actor in adopting and using the designation.67 The modern Restatement (Third) of Unfair Competition separates the list of foundational factors into three separate sections, listing six “market factors,” together with “intent” and “actual confusion,” so that the modern restatement presents eight fundamental factors relevant to determination of likelihood of confusion. The eight are: 1. The degree of resemblance between the conflicting designations; 2. The similarity of the marketing methods and channels of distribution; 3. The characteristics of the prospective purchasers and the degree of care they exercise; 4. The degree of distinctiveness of the senior user; 67.╇ Restatement of Torts § 731 (1938). [â•›100â•›]â•… Trademark Surveys

5. Where the goods or services are not competitive, the likelihood that prospective buyers would expect the senior user to expand into the field of the junior user; 6. Where the goods or services are sold in different territories, the extent to which the senior user’s designation is known in the junior user’s territory; 7. The intent of the junior user; and 8. Evidence of actual confusion.68 5.12╇ EXACT IDENTITY NOT NECESSARY FOR CONFUSING SIMILARITY

The degree of resemblance necessary for likelihood of confusion is “incapable of exact general definition.”69 McCarthy notes that “exact similitude” is not required between the senior user and junior user’s marks.70 Small differences between the marks may be considered “de minimis” as opposed to the similarities.71 Few business people would be foolish enough to blatantly replicate the exact identity of a mark and therefore would make some slight modification. “To find trademark infringement only by exact identity, and not where the junior user makes some slight modification, would ‘be in effect to reward the cunning infringer and punish only the bumbling one.’”72 5.13 “SOUND, SIGHT, AND MEANING” TRILOGY 73

In both the 1938 Restatement of Torts and the Restatement (Third) of Unfair Competition, the degree of resemblance between the conflicting designations must be analyzed on the basis of the overall impression created by the designations. This is interpreted to mean: pronunciation, translation of foreign words and verbal translation of pictures, suggestions, connotations or meanings of the designations.74 Marks may have similar sounds even when they are readily distinguishable by sight. An example would be: Son vs. Sun. The sound might be 68.╇ Restatement (Third) of Unfair Competitions §§ 20–23 (1995). 69.╇ McCarthy, McCarthy on Trademarks, 23:20. 70.╇ McCarthy, McCarthy on Trademarks, 23:20. 71.╇ Northam Warren Corp. v. Universal Cosmetic Co., 18 F.2d 774 (7th Cir. 1927). 72.╇ McCarthy, McCarthy on Trademarks, 23:20 (quoting T&T Mfg. Co. v. A.T. Cross Co., 449 F. Supp. 813 (D.R.I. 1978)). 73.╇ Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963). 74.╇ Restatement (Third) of Unfair Competition § 21(a) (1995). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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especially important if the goods are often purchased by verbal command. Proper pronunciation is also a key. Different individuals may read the name different ways, such as “Channel vs. Chanel.” Sometimes courts rule that marks are similar because of “phonetic similarity.”75767778798081828384 Comsat First USA Hog Lycra Neva-Wet Old Forester Porsche Squirt Steinway Trak

Conset75 1st USA76 Hawg77 Lyra78 Never Wet79 Old Foster80 Porsha81 Quirst82 Steinweg83 Trag84

Commonality of appearance is in the eye of the beholder. For this reason, the likelihood of confusion survey is of particular importance. This also includes logo design. The key test is to show the illustration in such a way as to determine if an average end-user or customer is confused as to the source after viewing the illustrations.85 As seen under the “Squirt” doctrine (see Chapter 1), the products would be viewed side-by-side. A corollary-type situation would be to attempt to simulate a marketplace or shopping situation where an array of products are shown comparable to how they would appear on drug store or supermarket shelves. The key question would be: Which products, if any do you believe are put out by the same company?” Similar questions might be: “Which products (or services), if any, do you believe are affiliated with each other?” 75.╇ Communications Satellite Corp. v. Comcet, Inc., 429 F.2d 1245 (4th Cir. 1970). 76.╇ In re 1st USA Realty Professionals, Inc., 84 U.S.P.Q. 1581 (T.T.A.B. 2007). 77.╇ Knorr-Nahrmittel Aktiengesellschaft v. Havland International, Inc., 206 U.S.P.Q. (T.T.A.B. 1980). 78.╇ E.I. Du Pont de Nemours & Co. v. Sunlyra International, 35 U.S.P.Q. 1787 (T.T.A.B. 1995). 79.╇ Neva-Wet Corp. v. Never Wet Processing Corp., 277 N.Y. 163 (1938). 80.╇ Brown-Forman Distillery Co. v. Arthur M. Bloch Liquor Importers, Inc., 99 F.2d 708 (7th Cir. 1938). 81.╇ Dr. Ing. h.c.F. Porsche AG v. Zim, 481 F. Supp. 1247 (N.D. Tex. 1979). 82.╇ SquirtCo v. Seven-Up Co., 480 F. Supp. 789 (E.D. Mo. 1979). 83.╇ Grotrian, Helfferrich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975). 84.╇ Trak, Inc. v. Trag, Inc., 212 U.S.P.Q. 846 (T.T.A.B. 1981). 85.╇ McCarthy, McCarthy on Trademarks, 23:25. [â•›102â•›]â•… Trademark Surveys

“Which products (or services), if any, do you believe are associated with each other?” “Which products (or services), if any, do you believe share the same ownership?” “Which products (or services), if any, do you believe are sponsored by one another?” Similarity may not be limited to the eye and ear. It may also be extended to some form of mental impact or “psychological imagery.”86 Even though the conflicting marks are completely different, the courts have concluded that in some cases a buyer is likely to confuse meanings and, therefore, would be likely to confuse the trademarks. The term TORNADO on a wire fence is confusingly similar to CYCLONE, the well-known designation for a form of wire fence.87 Another judge found that TORNADO on a wire fence was not confusingly similar to TYPHOON.88 A court in Chicago found that BLUE THUNDER speakers were confusingly similar to BLUE LIGHTNING speakers.89 5.14╇ LETTER MARKS

“Letter marks” refers to the arrangement of letters to form a trademark— like NBC, CIT, NCAA, etc. In such cases, the presentation of the letters, or graphic design or type font may be the chief determinant of confusion. Sometimes the combinations of the letters have been found to be confusingly similar. For example:90919293 AO IVC PIP SMI

AOC90 JVC91 IPP92 MSI93

86.╇ Myrurgia, S. A., v. Comptoir de La Parfumerie S. A. Anciennce Maison Tschanz, 441 F.2d 673 (C.C.P.A. 1971). 87.╇ Hancock w. American Steel & Wire Co., 203 F.2d 737 (C.C.P.A. 1953). 88.╇ Tornado Industries, Inc. v. Typhoon Industries, Inc., 20 Misc. 2d 43 (N.Y. Sup. Ct. 1953). 89.╇ Mitek Corp. v. Pyramid Sound Corp., 20 U.S.P.Q. (BNA) 2d 1389 (N.D.Ill. 1991) 90.╇ American Optical Corp. v. Southwest Petro-Chem, Inc., 175 U.S.P.Q. (BNA) 317 (T.T.A.B. 1972). 91.╇ Victor Co. of Japan. Ltd. v. International Video Corp., 167 U.S.P.Q. (BNA) 252 (T.T.A.B. 1970). 92.╇ Postal Instant Press v. Personalized Instant Printing-P.I.P. Corp., 201 U.S.P.Q. (BNA) 732 (E.D. Mo. 1978). 93.╇ Specialty Measurements, Inc. v. Measurement Systems, Inc., 763 F. Supp. 91 (D.N.J. 1991). L I K E L I H O O D O F C O N F U S I O N I S S U E S ╅

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5.15╇ PROVING LIKELIHOOD OF CONFUSION

In ordinary civil litigation, it is the plaintiff who bears the burden of proving whether likelihood of confusion exists.94 Pragmatically, though, it is often the defendant’s task to preempt the matter and prove such likelihood of confusion does not exist. There are three fundamental routes to proving likelihood of confusion: 1. Survey evidence 2. Evidence of actual confusion 3. Argument based on an inference arising from a comparison of the conflicting marks themselves and the context of their usage in the marketplace95 The third route does not require witness testimony as to instances of actual confusion.96 Thus, under this test, the judge and/or jury can find confusion by examination of the conflicting marks and the way they are used in the marketplace. Such a conclusion would be based on whether an ordinary, prudent customer would be confused. Needless to say, the third route is the most challenging. There is a trademark concept called the “rule of doubt,” which states that when the issue of likelihood of confusion is in doubt, the question will be resolved in favor of the senior user.97 The rule of doubt also applies to Patent and Trademark Office (PTO) matters.98 The rule of doubt is sometimes conceptualized as a “newcomer rule,” which is directed at a junior user who does not research prior registrations before venturing forth into the marketplace.99 Section 32(1)(a) of the Lanham Act provides the basic ground rules of likelihood of confusion: Any person who shall, without the consent of the registrant—(a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services or in connection with which such use is likely to cause confusion, or to cause mistake or

╇ 94.╇ David Sherman Corp v. Heublein, Inc., 340 F.2d 377 (8th Cir. 1965). ╇ 95.╇ McCarthy, McCarthy on Trademarks, 23:63. ╇ 96.╇ McCarthy, McCarthy on Trademarks, 23:12. ╇ 97.╇ McCarthy, McCarthy on Trademarks, 23:64; see also William Waltke & Co. v. Geo. H. Schafer & Co., 263 F. 650 (D.C. Cir. 1920); Lambert Pharmacal Co. v. Bolton Chemical Corp., 219 F. 325 (D.N.Y. 1915). 98.╇ See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (Fed. Cir. 1988). 99.╇ McCarthy, McCarthy on Trademarks, 23:65. [╛104╛]╅ Trademark Surveys

to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.”100

The term “colorable imitation,” includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.101 “Counterfeit” is a spurious mark, which is identical with, or substantially indistinguishable from, a registered mark.102 The Lanham Act §2 provides that federal registration of a trademark may be refused if the sought trademark “so resembles” an existing trademark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”103 The standard applied under §2 of the Lanham Act is the same “likelihood of confusion” rule applicable to the test of trademark infringement.104 Thus, likelihood of confusion is dependent on whether the purchasing public would mistakenly assume the applicant’s goods or services originate with, are sponsored by or are in some way associated with the goods or services sold under a cited registration or trademark. 5.16╇ THE PROFESSIONAL BUYER

Trademark cases often involve products and/or services targeted to both ordinary consumers and professional buyers. When, however, the only relevant buyer is the professional or commercial purchaser, “it is reasonable to set a higher standard of care than exists for consumers.”105 5.17╇ INTENT TO DECEIVE

Proof of defendant’s intent to deceive or confuse is not required for infringement of a federally registered mark.106 It is well established, however, that the intent of an alleged infringer to gain an advantage by confusing

100.╇ 15 U.S.C. § 1114 (1)(a) 101.╇ 15 U.S.C. § 1127. 102.╇ Id. 103.╇ 15 U.S.C. § 1052. 104.╇ L.J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755 (1955). 105.╇ McCarthy, McCarthy on Trademarks, 23:101. 106.╇ See Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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consumers is relevant to the issue of likelihood of confusion.107 Of course, the junior user who negligently, ignorantly, or innocently stumbles into confusing the public is still an infringer. The term “bad faith” often appears as a synonym for wrongful intent. “When ‘bad faith’ is relevant as a likelihood of confusion factor, it denotes an intent to ‘free ride’ on another’s mark by confusing customers.”108 5.18╇ THE ISSUE OF DIRECT COPYING

The growth in global trade and outsourcing has increased the prevalence of direct copying. Many domestic products are copied by companies from foreign nations. In some cases, not only is the product a copy, but the packaging design, colors, photos, diagrams, etc. are copied as well. A trademark infringer does not need to actually “copy” a senior user’s mark for there to be an infringement.109 The term “copy” is based on the premise that the junior user knows of another’s trademark and purposely imitates it.110 In the “copying” context, then, trademark infringement falls on the spectrum between patent infringement and copyright infringement.111 If something is in the public domain, one is free to copy it. The problem arises when the copier comes so close to the senior user that it borders on infringement by having customers think there is some connection or affiliation between the junior and senior user. “Functionality” is an important concept in understanding trademark infringement. If what is being copied is a functional aspect of a product, and if such a functional aspect is present in most products of that nature, it would appear that such copying is within the public domain.112 However, if what is being copied is “non-functional,” such as a shape or color or graphic presentation or anything else that identifies the product as being part of the senior user’s trade dress, there very well may be grounds for infringement.113

107.╇ See, e.g., Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463 (3d Cir. 2005); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275 (6th Cir. 1997); Maternally Yours v. Your Maternity Shop, 234 F.2d 538 (2d Cir. 1956). 108.╇ McCarthy, McCarthy on Trademarks, 23:113. 109.╇ McCarthy, McCarthy on Trademarks, 23:121. 110.╇ McCarthy, McCarthy on Trademarks, 23:121. 111.╇ McCarthy, McCarthy on Trademarks, 23:121. 112.╇ See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). 113.╇ See Versa Prods. Co. v. Bifold Co., 50 F.3d 189 (1995). [â•›106â•›]â•… Trademark Surveys

5.19╇ ADDITIONAL INSIGHTS [A]╇ Gilson on Trademarks

The following reference to surveys is taken from Gilson on Trademarks, Volume 2, by Anne Gilson Lalonde, 2009:114 To show actual confusion, a plaintiff may rely on anecdotal instances of consumer confusion or consumer surveys. Consumer surveys are often introduced as evidence of actual confusion. Proper surveys do not simply inquire into whether the defendant’s trademark calls to mind plaintiff ’s trademark nor do they simply determine whether consumers find the marks to be similar. Instead they elicit consumers’ understanding of whether the plaintiff ’s goods are manufactured or approved by the defendant. Some courts conclude that failure to present a survey is itself evidence against a finding of confusion¸ while others refuse to find the lack of a survey to be probative. Courts look to whether the survey shows an appreciable number of consumers were confused. The Eighth Circuit affirmed a lower court finding of likely confusion based in part on the actual confusion demonstrated by a nationwide survey showing that 39% of survey participants erroneously believed in a connection between the parties’ products. . . .

[B]╇ Hierarchy of Confusion

Mark D. Robins, a litigation partner of co-author R. Mark Halligan in the technology and intellectual property group of Nixon Peabody LLP, offers thoughts on a “Hierarchy of Confusion” in Actual Confusion in Trademark Infringement Litigation: Restraining Subjectivity Through a Factor-Base Approach to Valuing Evidence, summarized below:115 Robins observes that while certain types of persons may be deemed relevant in determining the presence or absence of actual confusion, there is relatively little dispute that the confusion of some persons is more probative than that of others. He suggests that those whose confusion generally carries the most weight tend to be actual or prospective purchasers. The problem is that Robins writes that the of prospective purchasers category may often be extremely broad and can encompass categories such

114.╇ Anne Gilson Lalonde, Gilson on Trademarks, (LexisNexis, 2009) Chapter 5, 77. 115.╇ Robins, “Actual Confusion in Trademark Infringement Litigation,” 1 (available at http:// www.law.northwestern.edu/journals/njtip/v2/n2/1). L I K E L I H O O D O F C O N F U S I O N I S S U E S â•…

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as those likely to make a transaction imminently versus those who may make their purchase or their transaction some time in the future. He adds that similarly, the category of those whose views may affect the goodwill of the trademark owner may include those who may have relationships, either existing or prospective, with the trademark owner. “Those who have existing relationships and have made serious mistakes based on confusion may be more relevant than prospective purchasers who are not proximate to a potential transaction,” he writes. He points out that within a given category of persons, there may exist a “hierarchy of incidents that are given differing degrees of weight by courts.” He places “mistaken purchasers” at the most persuasive end of the spectrum. He clarifies by writing “for those whose views may impact the good will of a company, the equivalent to a mistaken purchase would be a mistaken transaction.” Robins points out that according to one commentator, “mistaken purchases are afforded the most weight because they do not present any question about the relevance of the person or setting, because there is typically little vagueness, ambiguity, or doubt about such evidence, and because there are no issues as to the admissibility of such evidence if the confused purchaser testifies.” Robins adds that according to the same commentator, the next most probative types of evidence are those where the confused purchaser has taken some action to illustrate confusion, such as offering complaints to the wrong party, returning merchandise to the wrong party, or seeking product repairs or service from the wrong party. Robins adds that lesser in probative value are misdirected communications, which may be attributable to carelessness, to secretarial or bureaucratic errors, to other circumstances not related to confusion between the marks at issue, or to unknown causes. Still further down on Robins’ hierarchy are incidents of confusion from inquiries about affiliation, which may indicate doubt but also may tend to show some understanding as to the distinctions between the parties. This could motivated by mere curiosity— in marked contrast to a mistaken purchase where the confused person acts to his or her detriment. Finally, Robins points out that the uncertain status are incidents of purported confusion by friends, family, and acquaintances of the trademark owner. These persons may be biased and may not be representative of actual or prospective purchasers or of others whose views would affect the goodwill of the trademark owner. As one court has observed: “Attestations from persons in close association and intimate contact with its (the trade-mark claimant’s) business do not reflect the views of the purchasing public.”

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[C] Confusion on the Internet: Additional Survey Insights

Ray K. Harris, a member of the law firm of Fennemore Craig, Phoenix, AZ, where he practices intellectual property, computer, and Internet law, offers the following insights with respect to customer confusion surveys for trademarks used on the Internet. The following material is excerpted from an article entitled: “Surveying the Boundaries: Recent Developments in Trademark Surveys,” published in the May 2002 issue of The Computer & Internet Lawyer.116 Frequently, a likelihood of confusion survey will pose an open-ended question such as, “Who puts out this product?” with a follow-up question such as “Why do you say that?” Alternatively, the survey may display both parties’ goods or services (together with a third-party good or service as a control and pose a closed-end question such as, “Do you think these products are put out by the same company or by different companies?” followed by “Why do you say that?” An alternative format focuses on whether there is an association between the source of two goods or services based on similarities in the trademark used. Survey evidence demonstrating that 15 percent of consumers are confused may be sufficient. The plaintiff must show more than de minimus confusion, however. Generally figures in the range of 25–50 percent have been viewed as solid support for a finding of likelihood of confusion. Results below 10 percent indicate no confusion is likely. Confusion on the Internet does not necessarily equate to trademark confusion. Internet users may inadvertently arrive on Web sites by guessing the domain name incorrectly. Some courts have recognized this activity is inevitable and does not ‘standing alone’ indicate the confusion required by trademark law. . . .

116.╇ Roy K. Harris, “Surveying the Boundaries: Recent Developments in Trademark Surveys,” The Computer and Internet Lawyer, pp. 17–35.

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CHAPTER 6

Secondary Meaning Issues

6.01╇ INTRODUCTION

In trademark law, proposed marks are categorized along a spectrum of distinctiveness.1 If a proposed mark is not characterized as “inherently distinctive,” then to achieve trademark status it must be shown that the mark has acquired distinctiveness in the mind of buyers.2 This status of acquired distinctiveness is more commonly known as secondary meaning.3 It is a new, supplementary meaning attached to a non-inherently distinctive mark; the public, in turn, uses that word or symbol as a trademark or service mark to identify and distinguish a single commercial source.4 Non-inherently distinctive names or symbols, such as geographic, descriptive, or personal name designations, must acquire secondary meaning in the marketplace in order to achieve protectable status.5 For example, 1.╇ See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 8 (1st Cir. 2008); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 280 (6th Cir.1997). 2.╇ See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 10–11 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); Japan Telecom, Inc. v. Japan Telecom Am. Inc., 287 F.3d 866, 873 (9th Cir. 2002); Equine Tech., Inc. v. Equitechnology, Inc., 68 F.3d 542, 547 (1st Cir. 1995); Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.1993). 3.╇ See Wal-Mart Stores, 529 U.S. at 211 (Even if not inherently distinctive, a mark can be shown to have acquired distinctiveness “if it has developed secondary meaning, which occurs when, ‘in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.’” Quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, n. 11, (1982).). 4.╇ See, e.g., E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 199 (3d Cir. 2008). 5.╇ Two Pesos, 505 U.S. at 771, n. 19; Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1068 (2d Cir. 1995).

COMPUTER SOLUTIONS may be the name used to identify a business that repairs data processing equipment. This would be its “primary meaning.” However, if in most people’s minds, “computer solutions” was a name indentifying a single place where computer equipment is repaired, the primary meaning continues to describe the service, in general, but the new secondary meaning describes a single, commercial source of data processing repair service within a market area. Acquiring secondary meaning requires that customers associate the word or symbol with a single, perhaps anonymous commercial source.6 The more descriptive and, thus, less intrinsically distinctive the word, symbol, or trade dress, the greater the need for both quantity and quality of evidence to establish secondary meaning, and thereby achieve trademark, service mark, or trade dress status.7 The need to show secondary meaning applies to both verbal designations, such as words and names,8 as well as nonverbal designations, such as symbols, logos, shapes, designs, colors, and other trade dress identifiers9,10 Evidence of secondary meaning may be proven directly, for example, via a customer survey, or through circumstantial evidence, such as sales volume, length of time used, advertising, or other promotional activity that exposes customers to the name, symbol, or other verbal or nonverbal designation.11

╇ 6.╇ See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985) (“An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.”); Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir. 1980). ╇ 7.╇ See In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005) (“applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness”); In re Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 1317 (Fed. Cir. 1990) (“the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning”). ╇ 8.╇ E.g., Japan Telecom, Inc. v. Japan Telecom Am. Inc., 287 F.3d 866 (showing secondary meaning of “Japan Telecom”); Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5 (1st Cir. 1981) (showing secondary meaning of “Lite”); S.S. Kresge Co. v. United Factory Outlet, Inc., 634 F.2d 1, 2 (1st Cir. 1980) (showing secondary meaning of “The Mart”). ╇ 9.╇ E.g., Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995) (showing secondary meaning for green-gold color used on dry cleaning product); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25 (1st Cir. 2001) (showing secondary meaning for trade dress of candle store); Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d 423 (5th Cir. 1986) (showing secondary meaning for trade dress of snow cone machine). 10.╇ See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 876 n. 6 (9th Cir.1999) (The test for secondary meaning is the same whether for product configuration, trade dress, or trademark cases.) 11.╇ See In re Merrill Lynch, Pierce, Fenner, and Smith, 828 F.2d 1567, 1570 (Fed. Cir. 1987); Am. Scientific Chem., Inc. v. Am. Hosp. Supply, 690 F.2d 791, 793 (9th Cir.1982); Trademark Manual of Examining Procedure, §§ 1212.01, 1212.03 (7th Ed. October 2010) (“The applicant may present any competent evidence to establish that a mark has acquired distinctiveness.”) [â•›112â•›]â•… Trademark Surveys

When seeking federal registration for a descriptive word or symbol, a geographically descriptive name, or a personal surname, the applicant must show the designation has acquired distinctiveness to obtain a federal registration, according to the Lanham Act.12 J. Thomas McCarthy, one of the preeminent minds in trademark law, notes that secondary meaning “does not denote a scale of measurement, like ‘degrees Celsius,’ ‘miles per hour,’ or ‘grams.’”13 “Rather, ‘secondary meaning’ is a place on a scale of recognition—a particular amount of trademark strength.”14 It is akin to a particular point on a scale—like the point at which water freezes or a passing grade on a test.15 Thus, McCarthy writes that “evidence of secondary” meaning is similar to “evidence of qualifying for an Olympic event.”16 Secondary meaning is mandatory for a non-inherently distinctive designation to achieve trademark or service mark status.17 The key term is “distinctive”; if the designation is not distinctive, it is not a mark.18 6.02╇ SECONDARY MEANING—WHEN IT IS AND IS NOT NECESSARY

Proof of secondary meaning is not required for every type of trademark.19 Marks that are inherently distinctive, such as arbitrary and fanciful marks20,

12.╇ 15 U.S.C.A (“The Lanham Act”) §§ 1052(e), (f) (Registration may be refused for a mark which, “when used on or in connection with the goods of the applicant is merely descriptive . . . .” However, “nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce . . . .”). 13.╇ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., Rel. #49, (West, 2009) 15:1. See also, infra § 6.05. 14.╇ Id. 15.╇ Id. 16.╇ Id. 17.╇ E.g., In re Chippendales, USA, Inc., No. 2009–1370 (Fed. Cir. October 1, 2010); The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357 (Fed. Cir. 2001) (Since the “mark is not inherently distinctive and has not acquired distinctiveness, the board properly held that [plaintiff] did not have a trademark . . . .”); In re Kotzin, 276 F.2d 411 (C.C.P.A. 1960). 18.╇ E.g., Wal-Mart Stores, 529 U.S. 205 (secondary meaning of trade dress required for protectability); Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 1559 (11th Cir. 1991). 19.╇ See Two Pesos, Inc., 505 U.S. 763 (The Supreme Court held that inherently distinctive trade dress is protectable without proof of secondary meaning.); Chevron Chem. Co. v. Voluntary Purchasing Groups, 659 F.2d 695 (5th Cir. 1981), cert. denied, 457 U.S. 1126 (1982). 20.╇ An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. By way of example, the words “Exxon,” “Kodak,” and “Apple” bear no inherent relationship to their underlying products (gasoline, cameras, and computers, respectively). S E C O N DA RY M E A N I N G I S S U E S â•…

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or suggestive marks21, are provided legal protection immediately upon adoption and use.22 If the mark is not inherently distinctive, it can be registered or protected as a mark only if it can be proven that it has become distinctive.23 It is this acquisition of distinctiveness that creates secondary meaning.24 The Supreme Court observed that “[m]arks which are merely descriptive of a product are not inherently descriptive. When used to describe a product, they do not inherently identify a particular source and hence cannot be protected. However, descriptive marks may acquire the distinctiveness which allows them to be protected under the (Lanham) Act. . . .”25 To establish trademark infringement, two basic elements must be proven: (1) validity, which includes public recognition of the mark as identifying the goods or services as plaintiff ’s and distinguishing them from goods and services of others; and (2) infringement, which includes showing defendant’s actions caused a likelihood of confusion among relevant buyers.26 Validity can be proven by showing the mark is inherently distinctive or that the mark became distinctive through acquisition of “secondary meaning.”27 There are a number of previously identified categories of marks that are legally incapable of being inherently distinctive.28 Thus, to function as trademarks these marks must obtain secondary meaning.29 Categories of marks requiring proof of secondary meaning include:

21.╇ A suggestive mark is one that evokes or suggests a characteristic of the underlying good, but does not distinctively describe the underlying product. For example, the word “Coppertone” is suggestive of, but not specifically descriptive of, sun-tan lotion. 22.╇ See Two Pesos, Inc., 505 U.S. 763; Bliss Salon Day Spa v. Bliss World, LLC, 268 F.3d 494 (7th Cir. 2001); A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986); Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 938 n. 6 (7th Cir.1986). See also, infra Chapter 7. 23.╇ See supra, Footnote 2. 24.╇ See supra, Footnote 3. 25.╇ Two Pesos, Inc., 505 U.S. at 769. 26.╇ See Boston Duck Tours, 531 F.3d 1, 8 (1st Cir. 2008) citing Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir.2006) (“To succeed on a claim of trademark infringement, a plaintiff must establish (1) that its mark is entitled to trademark protection, and (2) that the allegedly infringing use is likely to cause consumer confusion.”); Interstellar Starship Services, Ltd. v. Epix Inc., 184 F.3d 1107 (9th Cir. 1999); Mana Prods., Inc., 65 F.3d 1063 at 1068; Security Ctr., Ltd. v. First Nat’l Sec. Ctrs., 750 F.2d 1295, 1298 (5th Cir. 1985). 27.╇ See Two Pesos, 505 U.S. at 768–70; Boston Duck Tours, 531 F.3d 1, 8 (1st Cir. 2008); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 280 (6th Cir.1997); e.g., Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 629 (4th Cir.2003). 28.╇ Barton Beebe, “Search and Persuasion in Trademark Law,” 103 Mich. L. Rev. 2020 (2005). 29.╇ See supra, Footnote 2. Accord T.M.E.P. 1212, et seq. (“If a proposed mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or ‘secondary meaning,’ that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce.”). [â•›114â•›]â•… Trademark Surveys

• • • • • • •

Descriptive marks30 Geographical marks31 Personal name marks32 Corporate, business, or professional names that are descriptive33 Titles of single literary works34 Descriptive titles of literary series35 Trade dress in product shapes36

The foregoing list is not exhaustive; as such, new types of trade symbols, which have not been previously classified by the law, must be tested to determine if they are inherently distinctive or not. Such attempts at categorization are often subject to strong contention because a mark that is determined not to be inherently distinctive requires proof of secondary meaning to attain trademark status, which may be both difficult and costly. Almost any symbol can achieve the buyer association or recognition to obtain secondary meaning except items such as functional features and generic designations, which will never obtain protection no matter how much evidence of secondary meaning is provided.37 30.╇ See In re Omaha Nat’l Corp., 819 F.2d 1117 (Fed. Cir. 1987); In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987); Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133 (S.D.N.Y. 1972) (“A term which is descriptive . . . may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. This is what is known as secondary meaning.” Internal citations omitted.). See generally, T.M.E.P. §§ 1209.01(b) and 1209.02(a). 31.╇ See In re Wada, 194 F.3d 1297 (Fed. Cir. 1999); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957 (Fed. Cir. 1987). See generally, T.M.E.P. §§ 1210.02(b) and 1210.07 (“A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctiveness . . . .”). 32.╇ See In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985); In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 1403 n.3 (C.C.P.A. 1975). See generally, T.M.E.P. § 1211 (“The Trademark Act, in §2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services.” Emphasis in original.) 33.╇ See, e.g., Am. Television and Commc’n Corp. v. Am. Commc’n and Television, Inc., 810 F.2d 1546, 1549 (11th Cir.1987); Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 12 (5th Cir.1974); Book Craft, Inc. v. BookCrafters USA, Inc., 222 U.S.P.Q. 724 (T.T.A.B. 1984). 34.╇ See Sugar Busters, LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999); Twin Peaks Prods., Inc. v. Publ’n Intern., Ltd., 996 F.2d 1366 (2d Cir. 1993). 35.╇ See Fishing Hot Spots, Inc. v. Simon & Schuster, 720 F. Supp. 746 (E.D. Wis. 1989); In re Wielinski, 49 U.S.P.Q.2d 1754 (T.T.A.B. 1998); In re Scholastic, Inc., 23 U.S.P.Q. 2d 1774 (T.T.A.B. 1992). 36.╇ See Wal-Mart Stores, 529 U.S. 205; Traf Fix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). 37.╇ See Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d 974, 977 (9th Cir. 2010); Yurman Design, Inc., v. PAJ, Inc., 262 F.3d 101, 110 (2d Cir. 2001); Filipino Yellow Pages, Inc. v. Asian S E C O N DA RY M E A N I N G I S S U E S â•…

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In addition, when contesting a mark, the senior user is required to prove that secondary meaning existed before the junior user first began using the contested mark.38 6.03╇ RELATIONSHIP BETWEEN SECONDARY MEANING AND LIKELIHOOD OF CONFUSION

Likelihood of confusion and secondary meaning are two separate legal issues; nevertheless, it may be difficult to distinguish the two concepts when evaluating evidence.39 If buyers are confused, it means they recognize a name or symbol and associate it as a single source of the good or service in question.40 To acquire secondary meaning in the minds of buyers, a labeled product, when shown to a consumer, must prompt the reaction, “that is the product I want because I know that all the products that have that label come from a single source and have the same level of quality.”41 If a buyer does not recognize the labeled product as coming from the plaintiff and cannot distinguish it from another product, then that consumer cannot be confused.42 For example, if a buyer does not associate any given symbol with a specific seller, then when faced with two or more sellers who use similar symbols on their products, there can be no confusion.43 If the buyer does not Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999) . See also, infra Chapter 8 of this book. 38.╇ See PaperCutter, Inc. v. Fay’s Drug Co., 900 F.2d 558, 564 (2d Cir. 1990); Restatement (Third) of Unfair Competition, sec. 19, Reporters’ Note, cmt. b (1995) (“The party seeking relief ordinarily is required to establish the existence of secondary meaning at the time of commencement of use by the other party.”). E.g., Am General Corporation v. Daimlerchrysler Corporation, 311 F. 3d 796, 818 (7th Cir. 2002); Tally-Ho, Inc. v. Coast. Cmty. College Dist., 889 F.2d 1018 (11th Cir. 1990). 39.╇ See Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc., 87 F.3d 654, 660 (4th Cir.1996) (“Evidence offered as to actual customer confusion . . . [is] also probative of likelihood of confusion . . . .”); Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983), quoting with approval McCarthy, McCarthy on Trademarks, 15:3. 40.╇ See Interpace Corp., 721 F.2d at 462 (“Secondary meaning exists when consumers seeing a trademark assume that the product it labels came from a particular source. If in fact the product did not come from that source, then there has been buyer confusion.”) 41.╇ See Sno-Wizard Mfg., 791 F.2d at 427; Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970). 42.╇ E.g., supra Footnote 40. Cf. Commerce Nat’l Ins. Servs. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 440 (3d Cir. 2000) (“[E]vidence of actual confusion is one factor in the secondary meaning analysis․”); Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1526 (11th Cir.1991) (noting that “instances of consumer confusion are probative of secondary meaning”). 43.╇ See Sno-Wizard Mfg., 791 F.2d at 427; Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817 (9th Cir. 1980). [â•›116â•›]â•… Trademark Surveys

associate the mark FRESH PRODUCE with one particular food store, there cannot be “confusion” when other food stores use FRESH PRODUCE to describe what they sell. Thus, FRESH PRODUCE only has primary meaning as a descriptive phrase informing of the product being sold and does not have secondary meaning.44 However, if FRESH PRODUCE were perceived in the marketplace as the designation for one grocery store, then it will have achieved secondary meaning and produce that is labeled “FRESH PRODUCE” would be recognized as coming from a single establishment. 6.04╇ OTHER SECONDARY MEANING ISSUES

Proving secondary meaning for literary works, including titles of books, films, and plays, is accomplished in much the same way as for ordinary marks.45 Once the public understands that a title is associated with a literary work, secondary meaning is established.46 For example, if the public associated LITTLE WOMEN with the Louisa May Alcott book, film, or play based on that literary work, then “little women” has achieved secondary meaning. Functionality is another key consideration when evaluating secondary meaning because functional features cannot be protected as trademarks.47 Consumer recognition attached to functional features, called “de facto secondary meaning,” means the evidence has no legal significance.48 For example, a handgun may have a unique or decorative handle that establishes its origin. That decorative aspect of the handle is not functional, but the handle itself is functional. Therefore, that gun may be recognizable as to its source

44.╇ See infra, Chapter 8 of this book. 45.╇ See e.g., Sugar Busters, 177 F.3d at 268–69; Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.1989) (If the title of a work has acquired secondary meaning, “the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors.”); In re Cooper, 254 F.2d 611, 613–16 (C.C.P.A.1958). 46.╇ See Rogers, 875 F.2d at 998; Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 253 (5th Cir.1997), cert. denied, 118 S. Ct. 1795 (1998). 47.╇ See TrafFix Devices, Inc., 532 U.S. 23; Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 164 (1995); New England Butt Co. v. Int’l Trade Comm’n, 756 F.2d 874, 877 (Fed. Cir.1985); In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1337 (C.C.P.A. 1982). See also, T.M.E.P. § 1202.02(a)(ii). See generally, William T. Fryer, III, “Trademark Product Appearance Features, United States and Foreign Protection Evolution: A Need for Clarification and Harmonization,” 34 John Marshall L. Rev. 947–971 (2001). 48.╇ See Am. Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (“AOL’s evidence of association may establish what is called ‘de facto secondary meaning,’” which “does not entitle AOL to exclude others from a functional use of the words.”); In re Seats, 757 F.2d 274 (Fed. Cir. 1995). S E C O N DA RY M E A N I N G I S S U E S â•…

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because of the decorative nature of the handle. However, if the standard look of handgun handles in this category were ivory, than a handgun manufacturer using an ivory handle on its handguns would not be able to achieve secondary meaning. 6.05╇ SECONDARY MEANING AND THE MARK’S “STRENGTH”

The “strength” of a mark is determined in part by where it falls on the ladder with “fanciful” being the highest rung followed by “arbitrary,” “suggestive,” “descriptive” and at the lowest rung, “generic.”49 The higher the mark is on the ladder, the greater the protection courts will give to the mark.50 At the upper end of the spectrum, the strongest marks are those that are considered “fanciful,” while at the bottom end are generic marks, which can never become legally enforceable trademarks.51 “Arbitrary” and “suggestive” marks, in contrast, are considered distinctive enough to function as trademarks.52 Generally, the secondary meaning battleground will focus on descriptive marks and attempts will be made to try to prove that descriptive marks should be granted trademark status through secondary meaning.53 While secondary meaning and trademark “strength” may have different concepts, they possess an important correlation: a non-inherently distinctive term must have, at a minimum, the quantity of strength known as secondary meaning to bring it to life as a trademark. Without secondary meaning, such terms are not “distinctive” and hence not trademarks.54 [When the designation possesses secondary meaning, it becomes a “trademark,” who asks, “[h]ow strong is that trademark?”] Evidence of secondary meaning can be either weak or strong and, combined with other indications of distinctiveness (or a lack thereof), can lead 49.╇ See Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113, 117–18 (2d Cir. 1999) (“There are four categories along the spectrum of possible trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. A generic mark (e.g., ’Magazine’ as a magazine title) receives no trademark protection. The other three categories of marks may be valid trademarks deserving of protection, and the mark’s classification is also relevant in determining the strength of the mark.” Internal citations omitted.). See supra, Footnote 1. See infra, Chapter 7. 50.╇ See Time, 173 F.3d at 118; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.1976). 51.╇ See, e.g., Rudolph Int’l., Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007) (“Generic terms cannot be protected trademarks.” Internal citations omitted.); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002); Filipino Yellow Pages, 198 F.3d at 1146 n. 2. 52.╇ See Wal-Mart Stores, 529 U.S. at 212–13; Bliss Salon Day Spa, 268 F.3d at 496–97; Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir.1995). 53.╇ E.g., Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 (2d Cir.1995); Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072 (2d Cir.1993). 54.╇ See Japan Telecom, 287 F.3d at 872–73; Equine Tech., 68 F.3d at 544, n. 2. [â•›118â•›]â•… Trademark Surveys

to a conclusion on the strength or weakness of the mark as it relates to the usage thereof in the alleged infringement.55 Once secondary meaning is established, the scope of the mark’s protection corresponds directly to the strength of the secondary meaning and consumer association.56 The stronger the distinctiveness in the minds of the purchasing public, the stronger the mark and the greater protection it is given.57 6.06╇ PROVING SECONDARY MEANING

“As a general rule of thumb, the more descriptive the term, the greater the evidentiary burden to establish secondary meaning.”58 It’s impossible to articulate a general rule as to the minimum amount of distinctiveness that is necessary to achieve secondary meaning.59 The establishment of secondary meaning is, therefore, a question of fact.60 The finding of no secondary meaning constitutes issue preclusion, which will preclude relitigating the issue;61 however, the subject may be revisited if a significant period has passed causing a change to the previous situation62. There are two means of proving secondary meaning—direct evidence and circumstantial evidence.63 Direct evidence represents the actual testimony of buyers as to their state of mind.64 Such direct evidence may be the testimony of random buyers in court or “quasi-direct evidence” obtained

55.╇ E.g., Filipino Yellow Pages, 198 F.3d at 1151; Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir.1996). 56.╇ See, e.g., Platinum Home Mortgage Corp. v. Platinum Financial Group, 149 F.3d 722, 727 (7th Cir. 1998) (“In general, the level of trademark protection available corresponds to the distinctiveness of the mark.”). 57.╇ See id. See also, Two Pesos, 505 U.S. at 767–68. 58.╇ McCarthy, McCarthy on Trademarks, § 15:28, cited with approval in Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d. Cir. 2000). 59.╇ See id. E.g., Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526 (C.C.P.A. 1960). 60.╇ See E.T. Browne Drug Co., 538 F.3d at 192; Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d Cir.1992). 61.╇ See Test Masters Educational Services, Inc. v. Singh, 428 F.3d 559, 570–71 (5th Cir.2005), cert. den., 547 U.S. 1055 (2006). 62.╇ See id., at 573. See also, Texas Pig Stands, Inc. v. Hard Rock Café Int’l, Inc., 951 F.2d 684 (5th Cir.1992). 63.╇ See Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810, 819 (8th Cir. 2003); Boston Beer Co., 9 F.3d at 182–83. 64.╇ See Union Mfg. Co., Inc. v. U.S. Int’l Trade Comm’n, 826 F.2d 1071 (Fed. Cir. 1987); Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir. 1983). E.g., Yankee Candle Co., 259 F.3d at 37; Lund Trading ApS v. Kohler Co., 163 F.3d 27, 41 (1st Cir. 1998). S E C O N DA RY M E A N I N G I S S U E S â•…

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through professionally conducted consumer surveys.65 The Ninth Circuit has gone so far as to state, “[a]n expert survey of purchasers can provide the most persuasive evidence of secondary meaning.”66 Courts have long suggested that when a plaintiff has less than a clear case, a survey becomes necessary to prove secondary meaning.67 However, as desirable as a survey might be, it is not a requirement.68 The other traditional manner of proving secondary meaning is through circumstantial evidence.69 Circumstantial evidence may include: advertising the mark to an audience including a wide group of prospective buyers; evidence of the size of the seller; numbers in dollars and/or units of the actual sales made; extent of expenditures in advertising and promotion and the media used to carry the message; extent of any publicity or public relations activities that offered exposure to the mark; and any similar type of wide exposure of the mark in question to the relevant target market.70 One particularly convincing way of proving secondary meaning is a promotion focused on a “look for” instruction to the consumer.71 Such messages may include “look for the ‘red and green package’ or look for ‘the golden arches’ or look for ‘Elsie the cow on the label.’” Courts will usually put together their own criteria. The Seventh Circuit offers the following guidelines for direct and circumstantial evidence: Direct Evidence—(1) direct consumer testimony; and (2) consumer surveys. Circumstantial Evidence—(1) exclusivity, length and manner of use; (2) amount and manner or advertising; (3) amount of sales and the number of customers; (4) established place in the market; and (5) proof of intentional copying.72

65.╇ E.g., Comm. For Idaho’s High Desert v. Yost, 92 F.3d 814 (9th Cir. 1996); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). 66.╇ Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989). 67.╇ E.g., Japan Telecom, 287 F.3d at 875; Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572 (Fed. Cir. 1988). 68.╇ See Comm. For Idaho’s High Desert, 92 F.3d at 822 (“[S]urvey evidence is only one of the most persuasive ways to prove secondary meaning, and not a requirement for such proof.”). 69.╇ See supra Footnote 63. 70.╇ See generally In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999); Echo Travel, Inc. v. Travel Assoc., Inc., 870 F.2d 1264 (7th Cir. 1989); Vaughan Mfg. Co. v. Brikam Int’l, Inc., 814 F.2d 346 (7th Cir.1987); Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357 (2d Cir. 1983); In re Uncle Sam Chem. Co., Inc., 229 U.S.P.Q. 233 (T.T.A.B. 1986). 71.╇ E.g., Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662 (7th Cir.1995) (“Lookfor” advertising is such that “encourages consumers to identify the claimed trade dress with the particular producer.”); First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir.1987); In re Application of Hehr Mfg. Co., 279 F.2d 526 (C.C.P.A. 1960). 72.╇ Echo Travel, 870 F.2d at 1267. [â•›120â•›]â•… Trademark Surveys

The burden of proof in secondary meaning cases rests with the entity seeking to establish legal protection for the mark.73 This would be the plaintiff in an infringement suit, and the applicant in a trademark application.74 In an inter partes opposition proceeding before the Trademark Trial and Appeals Board (TTAB), the party opposing the trademark application has the burden of proving that the applicant’s mark has not achieved distinctiveness.75 If the opposition party has the initial burden of proof and meets its burden, then the burden shifts to the applicant to prove that there is evidence that the mark has achieved acquired distinctiveness (secondary meaning).76 Just because a mark is registered on the Principal Register does not irrefutably establish it has achieved secondary meaning.77 While registration provides prima facie evidence of the validity of the registered mark, the same section of the statute specifies that this evidentiary effect “shall not preclude an opposing party from proving any legal or equitable defense or defect which might have been asserted if such a mark had not been registered.”78 This means that while a registration receives weight as evidence of a trademark, the defendant can overcome a presumption of secondary meaning by proving secondary meaning does not exist.79 If a mark has become “incontestable” through five years of use after federal registration and compliance with the statutory formalities, then lack of distinctiveness of such a mark cannot be raised in litigation.80

73.╇ See Zatarains, 698 F.2d at 791; Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979), cert. denied, 444 U.S. 1016 (1980). 74.╇ See Yamaha Int’l Corp., 840 F.2d at 1578–79 (“The burden of proving secondary meaning is on the party asserting it, whether he is the plaintiff in an infringement action or the applicant for federal trademark registration.” Internal citations omitted.). 75.╇ See, id., at 1576–77. See also, Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021 (Fed. Cir. 1989); General Mills Inc. v. Health Valley Foods, 24 U.S.P.Q. 2d 1270 (T.T.A.B. 1992). 76.╇ See Yamaha Int’l Corp., 840 F.2d at 1577 (“If the opposer does present its prima facie case challenging the sufficiency of applicant’s proof of acquired distinctiveness, the applicant may then find it necessary to present additional evidence and argument to rebut or overcome the opposer’s showing and to establish that the mark has acquired distinctiveness.” Emphasis in original.). 77.╇ Cf., 15 U.S.C. § 1015(a) (Registration of a mark upon the principal register “shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration . . . .”). Emphasis in original. 78.╇ See id. 79.╇ See Liquid Controls Corp., 802 F.2d at 936; Vision Ctr., 596 F.2d at 119. 80.╇ Park’n Fly, Inc. v. Dollar Park And Fly, Inc., 469 U.S. 189 (1985); Brookfield Commc’n v. West Coast Entm’t, 174 F.3d 1036, 1046–47 n.10 (9th Cir.1999). S E C O N DA RY M E A N I N G I S S U E S â•…

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6.07╇ PROOF OF ACTUAL CONFUSION BY COPYING

Since evidence of actual confusion is considered strong evidence of secondary meaning,81 proof that the defendant intentionally substituted the defendant’s products for those of the plaintiff by using the “tool” of a similar mark will be considered “intentionally palming off.”82 “Palming off ” is secondary meaning infringement. Evidence that the defendant knowingly imitated or copied the plaintiff ’s symbol is probative, but not determinative, of consumer confusion because of the link that exists between confusion and secondary meaning.83 Intentional duplication of a plaintiff ’s mark indicates that secondary meaning exists.84 Inferring secondary meaning from evidence of similarity between the marks of the senior and junior users creates a “triple inference”: 1. Proof of similarity of the marks is cause for believing there was copying or intended imitation 2. Proof of knowing imitation is cause to believe there is actual confusion 3. Evidence of actual confusion gives cause to believe there is secondary meaning85 6.08╇ PERCEPTIONS OF DEALERS, EMPLOYEES, CUSTOMERS AND PROFESSIONALS

The relevant buyer for establishing secondary meaning is generally the consumer— testimony of dealers and wholesalers is typically considered of “little value” since they may be biased and do not necessarily reflect the views of the targeted consumers.86 Therefore, such dealer or wholesaler

81.╇ See supra, Footnote 40. 82.╇ See Tools USA & Equip. Co. v. Champ Frame Straightening Equip., 87 F.3d 654 (4th Cir. 1996). 83.╇ See General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006). See also, Irina D. Manta, “In Search of Validity: A New Model for the Content and Procedural Treatment of Trademark Infringement Surveys,” 24 Cardozo Arts & Ent. L.J. 1027 (2007). 84.╇ Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991); Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960). 85.╇ See Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176 (7th Cir. 1989). 86.╇ See Yankee Candle Co., 259 F.3d at 43, n. 14 (“The evidence that Yankee’s retailers and distributors viewed the trade dress as distinctive is not probative of secondary meaning.”); Gimix, 699 F.2d at 907; Sharper Image Corp. v. Target Corp., 425 F. Supp.2d 1056 (N.D. Cal. 2006). [â•›122â•›]â•… Trademark Surveys

testimony is merely “opinion evidence.”87 However, such testimony would be relevant if the products were sold to professionals or in the business-tobusiness marketplace.88 The same “little weight” conclusion is drawn from the testimony of the trademark holder’s employees because of a similar bias.89 Some courts have also shown skepticism of the “random buyer”;90 however, one of the most scientific methods of determining the mental association of the relevant purchasers is to conduct a survey of the purchasers themselves.91 More about Surveys

As previously noted, a scientifically developed survey of relevant purchasers can offer proof of mental association, and oftentimes is introduced into evidence.92 Surveys, however, can be quite expensive and are not mandatory.93 Therefore, in seeking to prove secondary meaning when registering a symbol, there is no obligation on the part of the applicant to introduce survey evidence and the “absence of a consumer survey need not preclude a finding of acquired distinctiveness.”94 A survey should reveal that respondents use the designation or trade dress to identify a single source, and not that the party seeking trademark rights be listed as the first among several sources with which respondents associate the designation or trade dress. Additional Sources of Evidence

Secondary meaning is not the same as popularity—evidence that shows a product is popular is not always sufficient to establish secondary meaning 87.╇ See Echo Travel, 870 F.2d at 1268, n. 7 (internal citations omitted); Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982). 88.╇ See Centaur Commc’n, Ltd. v. A/S/M Commc’n, Inc., 830 F.2d 1217, 1220 (2d Cir.1987); Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1023 (7th Cir.1979). 89.╇ See Self- Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995); Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293 (9th Cir. 1971). 90.╇ See, e.g., Am. Scientific Chem., Inc. v. Am. Hospital Supply Corp., 690 F.2d 791 (9th Cir. 1982). 91.╇ See supra, Footnote 65. 92.╇ See id. See also, Co-Rect Prods., Inc. v. Marvy Advertising Photography, Inc., 780 F.2d 1324, n. 9 (8th Cir. 1985). 93.╇ See Yankee Candle Co., 259 F.3d at 37; Am. Scientific Chem., 690 F.2d at 793 (Court notes that survey evidence can be “prohibitively expensive to produce,” and “is not required to prove secondary meaning.”). 94.╇ Yamaha Int’l Corp., 840 F.2d at 1583; Roux Labs, Inc. v. Clairol, Inc., 427 F.2d 823, 829 (C.C.P.A. 1970). S E C O N DA RY M E A N I N G I S S U E S â•…

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in the trademark for that product.95 Large sales alone may be attributable to other factors besides the drawing power of the trademark.96 The easiest and least expensive way to prove secondary meaning is through the introduction of evidence with respect to the amount and nature of advertising,97 the length of time the mark has been in use,98 and the amount of goods and services sold under that mark. However, such evidence may be highly circumstantial. Simply running advertising does not prove that consumers had exposure to that advertising.99 For instance, while it is possible to run small advertising in publications with high circulation and exposure rates, running such advertising is no guarantee that the target market has seen it. Another form of “circumstantial” evidence that may be used for proving secondary meaning is evidence of the size of the company and its sales figures.100 Sales figures need to be put into proper context for such numbers to have weight as “impressive” or “persuasive” evidence of secondary meaning.101 What may appear to be high sales may actually be considered as marginal in the context of industry leaders. Length of time of the symbol’s use is another form of potential “circumstantial” evidence of secondary meaning.102 There is no fixed rule regarding the length of time a symbol must be used for it to achieve secondary meaning.103 The Lanham Act addresses “exclusive and continuous” use and establishes a length of time at five years preceding an application for ╇ 95.╇ See Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 873 (8th Cir. 1994); Cicena Ltd. v. Columbia Telecomm. Group, 900 F.2d 1546, 1551 (Fed. Cir. 1990); Atlantis Silverworks, Inc. v. 7th Sense Inc., 42 U.S.P.Q. 2d 1904, 1908 (S.D.N.Y. 1997). ╇ 96.╇ See Cicena, 900 F.2d at 1551 (“[S]ales success is not necessarily indicative of secondary meaning, but can be attributed to many other factors—the most likely being that in the public’s eye, the [product] is . . . aesthetically pleasing [and] desirable looking.”). See also, Jeffery A. Handelman, Guide to TTAB Practice, Vol. 1, § 10.16 (Aspen Publ. 2007) ╇ 97.╇ See T.M.E.P. 1212.06(b) (“Large scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used.”). See also, McCarthy, McCarthy on Trademarks, 15:48. ╇ 98.╇ See In re Uncle Sam Chem Co., Inc., 229 U.S.P.Q. 233 (T.T.A.B. 1986). See also, T.M.E.P. 1212.06(a) ╇ 99.╇ See In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999). 100.╇ See Echo Travel, 870 F.2d at 1267 (“In determining whether a mark has acquired secondary meaning, the courts consider several factors . . . [including the] amount of sales and number of customers[, as well as the] established place in the market . . . .”); Zatarains, 698 F.2d at 791; Harlequin Enters. v. Gulf & Western Corp., 644 F.2d 946, 949 (2d Cir.1981). 101.╇ See, e.g., Target Brands, inc. v. Shaun N.G. Hughes, 85 U.S.P.Q. 2d 1676 (T.T.A.B. 2007). 102.╇ See Filipino Yellow Pages, 198 F.3d at 1151; Echo Travel, 870 F.2d at 1267; Papercutter, Inc. v. Fay’s Drug Co., Inc., 900 F.2d 558 (2d Cir. 1990); Saratoga Vichy Spring Co. v. Lehman, 491 F. Supp. 141, 150 (N.D.N.Y.1979), aff ’d, 625 F.2d 1037 (2d Cir.1980). 103.╇ See Mana Prods., 65 F.3d at 1068; Echo Travel, 870 F.2d at 1269 (“In considering the length of use,. . . no particular period of use is required.”); Centaur Commc’n, 830 F.2d at 1220. [â•›124â•›]â•… Trademark Surveys

registration as presumptive evidence of secondary meaning.104 As for how quickly a mark can attain secondary meaning, the courts remain at odds.105 While neither is precedential in nature, one court has indicated that establishment of recognition may be achieved “comparatively over-night,”106 another court has held that “secondary meaning comes gradually and that it cannot be acquired overnight through intensive advertising.”107 We are witnessing more shortened product life cycles and the emergence of “fad” products.108 Some products go from introduction to maturity in a matter of a few weeks or months. Observing massive advertising campaigns for these short-lived products, one court remarked that “a new trademark may achieve wide usage and secondary meaning within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising.”109 In some cases, the creation of secondary meaning can occur prior to the product entering the market through pre-sales publicity.110 Motion pictures that obtain wide pre-release exposure may fit into this category.111 Another possibility is the theory of “secondary meaning in the making.”112 This phenomenon occurs when a party is working on establishing secondary meaning for a product, and another party rushes into the market with a similar product bearing the same mark.113 The courts, however, have generally

104.╇ 15 U.S.C.A. § 1052(f) (“The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”). 105.╇ See Centaur Commc’n, 830 F.2d at 1217. Cf. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133–34 (S.D.N.Y.1972). 106.╇ Premier-Pabst Corp. v. Elm City Brewing Co., 9 F. Supp. 754, 758 (D. Conn. 1935). 107.╇ Litwin v. Maddux, 114 U.S.P.Q. 179, 185 (N.Y. Sup. Ct. 1957). 108.╇ E.g., Jo M.F. Box, “Extending Product Lifetime: Prospects and Opportunities,” Eur. J. of Mktg. (Vol. 17 1983); George S. Day, “The Product Life Cycle: Analysis and Applications Issues,” J. of Mktg. (Vol. 45 Autumn 1981). 109.╇ Platinum Home Mortgage Corp., 149 F.3d at 731, quoting McCarthy, Trademarks, § 15:56. 110.╇ See New West Corp. v. NYM Co. of Calif., Inc., 595 F.2d 1194, 1199–1200 (9th Cir. 1979); George Washington Mint, Inc. v. Washington Mint, Inc., 349 F. Supp. 255 (S.D.N.Y.1972). 111.╇ See, e.g., Paramount Pictures Corp. v. Worldwide Entm’t Corp., 195 U.S.P.Q. (S.D.N.Y 1977). 112.╇ See generally, Jolly Good Indus. Inc. v. Elegra Inc., 690 F. Supp. 227 (S.D.N.Y.1988); The National Lampoon, Inc. v. Am. Broadcasting Cos., Inc., 376 F. Supp. 733 (S.D.N.Y. 1974). 113.╇ See Cicena Ltd. v. Columbia Telecomm. Group, 900 F.2d 1546 (Fed. Cir. 1990) (“A mark with secondary meaning in-the-making should also be protected, at least against those who appropriate it with knowledge or good reason to know of its potential in that regard, or with an intent to capitalize on its goodwill . . . . ‘Piracy should no more be tolerated in the earlier stages of development of good will than in the later.’ Citing Callman, Unfair Competition, Trademarks and Monopolies, 3d ed. (1971) 356.). S E C O N DA RY M E A N I N G I S S U E S â•…

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declined to make explicit rulings for or against this form of “piracy” where the mark has not yet established secondary meaning.114 Survey Thresholds of Proof of Secondary Meaning

However, as a general rule of thumb, the more descriptive, or less distinctive, a mark is, the greater the burden of proof.115 Co-author James Berger, a participant in a number of secondary meaning surveys, places a comfortable 50 percent threshold for a scientifically conducted survey to establish the existence of secondary meaning. 6.09╇ ADDITIONAL INSIGHTS [A]╇ Gilson on Trademarks

The following reference to surveys is taken from Gilson on Trademarks, Volume 1, by Anne Gilson Lalonde, 2009. In a discussion of how many consumers must recognize secondary meaning, Lalonde writes: A number of decisions state that the plaintiff needs to show that the association is made by a ‘substantial’ or ‘significant’ part of the purchasing public. The Seventh Circuit has held that percentages of around 30% could not establish secondary meaning as a matter of law, but that surveys showing such amounts were to be weighed along with other evidence of secondary meaning. Similarly, the First Circuit found a response rate of 36% in a secondary meaning survey to be ‘hardly overwhelming.’116

In a further discussion of consumer surveys, Lalonde writes: A properly conducted survey of the relevant purchasing public may be the best direct evidence on the question of secondary meaning. As one court put it in referring to

114.╇ E.g., Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 684 F.2d 546 (8th Cir. 1982) (Court explicitly declines to adopt theory). 115.╇ See supra Footnote 58. 116.╇ Anne Gilson Lalonde et al., Gilson on Trademarks, § 2.09[5] (2009) (internal citations omitted). See also, Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 568 (5th Cir. 2005) (“Because [plaintiff] failed to show that a significant quantity of the consuming public associated the . . . mark with his business, his evidence was insufficient to establish that the mark had acquired secondary meaning.”); Vais Arms, Inc. v. Vais, 383 F.3d 287, 291 n.6 (5th Cir. 2004). [â•›126â•›]â•… Trademark Surveys

secondary meaning, “Short of a survey, this is difficult of direct proof. Surveys are frequently submitted for this purpose, and are generally admissible in evidence under the state of mind exception to the hearsay rule.” Several courts have been critical of the plaintiff in failing to introduce a survey to prove secondary meaning. On the other hand, some courts have held that secondary meaning surveys were not required in order to succeed on a preliminary injunction motion. Surveys should cover the relevant purchasing public involved. They should not cover retailers or other middlemen who are not members of the ultimate consuming public. The survey must also relate explicitly to the issue of consumer associations with the mark. Surveys on trade dress secondary meaning may ask respondents whether they associate the trade dress with a specific brand or company, and, if so, what brand or company. In such a survey, labels that would give away the brand or maker would first need to be removed. The party asserting rights must prove that secondary meaning existed before the opposing party began using its allegedly infringing trademark. How does a party survey consumer impressions of its mark as of, say, five or ten years ago? One solution is to explain this quandary to the court and ask it to consider the public’s association at the time of the survey as evidence of what it would have been at the earlier time. The Sixth Circuit has held that it will not ignore all post-infringement survey evidence but instead will accept it knowing its limitations.117

[B]╇ Earlier Secondary Meaning Surveys

Vincent N. Palladino, writing in The Trademark Reporter, March-April, 1994,118 in an article entitled “Surveying Secondary Meaning” offers the following insights from several cases: In Sprinklets Water Center, Inc. v. McKesson Corp.,119 the court regarded the results of a brand awareness survey as evidence of secondary meaning. Palladino writes: “Although the technique has superficial appeal, on reflection it seems unsound. The issue in a secondary meaning survey is whether a descriptive term is a trademark. Wherein a brand awareness survey addresses how well known a trademark is. . . .”120 117.╇ Gilson on Trademarks, § 2.09[6][b] (internal citations omitted). See also, General Motors Corp., 468 F.3d at 419 (“This Court has historically favored the use of consumer surveys as proof of secondary meaning.”); Frosty Treats, Inc. v. Sony Computer Ent. Am., Inc., 426 F.3d 1001, 1005 (8th Cir. 2005) (“[D]irect evidence such as consumer testimony or surveys [is] most probative of secondary meaning . . . .”). 118.╇ 84 T.M.R 155 (1994). 119.╇ 806 F. Supp. 656 (E.D. Mich. 1992). 120.╇ 84 T.M.R at 174, n. 79. S E C O N DA RY M E A N I N G I S S U E S â•…

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In Schmidt v. Honeysweet Hams, Inc.,121 the plaintiff conducted a brand name survey of HONEY BAKED HAM. Palladino writes: [t]he survey results indicated that 53% of the survey participants names “Honey Baked Ham” as one of the brand names of ham that, unaided, came to their mind. This percentage is nearly double the percentage of brand name recall for any other brand of precooked sliced ham, e.g. Armour, Swift or Hormel. The survey results also indicate that over 96% of the participants were aware of the brand name “Honey Baked Ham.”122

The court considered these results in finding that HONEY BAKED HAM had acquired secondary meaning, but did not say whether it was the 53 percent or the 96 percent or both led to their conclusion.123 [i] Kubota Corp. et€al. v. DaeDong—USA, Inc.124

Information on this case was presented in “Continuing Commercial Impression and Its Measurement” by Gideon Mark and Jacob Jacoby,125 which was published in New York University School of Law, New York University Law and Economics Working Papers, 2005. Within the article are details of a secondary meaning study performed by Dr. Jacoby, who is a noted survey expert: In the way of background, Kubota Tractor Corporation, a California corporation, is affiliated with the Kubota Corporation of Japan. As the name indicates, Kubota Tractor Corporation manufactures and sells tractors. At or around the time Kubota introduced its tractors into the United States, other competitors included John Deere, Ford/New Holland (originally separate companies and, more recently, simply “New Holland”) and Massey-Ferguson.126 The authors point out that for many years, each of these three tractor brands used a different primary color on the exteriors of their tractors— John Deere used green, Ford/New Holland used blue and MasseyFergusson used red. Since 1969, all Kubota tractors sold in the United States have had their bodies painted a bright orange color.

121.╇ 656 F. Supp. 92 (N.D.Ga. 1986). 122.╇ 84 T.M.R at 175, n. 82, 83. 123.╇ See id. 124.╇ Kubota Corp. v. DaeDong-USA, Inc., No. CIV-F-02–6013. OWW (E.D.Cal. Aug. 19, 2002). 125.╇ Gideon Mark and Jacob Jacoby, “Continuing Commercial Impression and Its Measurement,” N.Y.U. Sch. L. Law and Econ. Working Papers (2005). 126.╇ See id. at 18. [â•›128â•›]â•… Trademark Surveys

In April of 2002, counsel acting on behalf of Kubota contacted Dr. Jacoby with the request that he design and conduct an investigation to determine whether, and if so, to what extent, Kubota’s trade dress had acquired distinctiveness and achieved secondary meaning in the minds of the relevant public. The report of this investigation was then proffered as evidence in Kubota v. Daedong.127 The defendant, another tractor manufacturer, was selling tractors in the United States under the name Kioti, which painted their tractor bodies in what appeared to be virtually the identical shade of orange used on the Kubota tractors.128 Daedong argued that, since Kubota now used a shade of orange that differed somewhat from the shade of orange it had originally used, the secondary meaning survey was unreliable since the survey didn’t establish secondary meaning for the original shade of orange.129 As a consequence, in 2003, Kubota had Dr. Jacoby perform a second survey to determine whether, in the minds of relevant consumers, their new shade of orange “conveyed a continuing commercial impression.” Inasmuch as the second (continuing commercial impression) survey can best be understood in terms of the first (secondary meaning) survey, both are described here.130 In defining the relevant survey “universe,” a key factor is that both parties sold tractors in the 15 to 65 horsepower range. The relevant universe was defined as individuals who either decided or helped decide on the purchase of motorized farm or grounds equipment and either had purchased such equipment or who were likely to buy a new or used tractor in the 15 to 65 horsepower range. Telephone directories were used to locate qualified respondents at farms, campground/RV parks, cemeteries, landscape contractors, land clearing and leveling firms, lawn services, golf courses, municipal governments and home owners with five or more acres. In all, 222 qualified respondents were tested in 12 markets within the continental United States.131 In developing the test stimulus, Dr. Jacoby noted that Kubota manufactures and sells several tractor models in the 15 to 65 horsepower range. If the investigation focused on only one of these, one might have contended that the survey’s findings were not representative of the other models. For this reason, sample of respondents was divided into thirds, with respondents 127.╇ 128.╇ 129.╇ 130.╇ 131.╇

See id. See id. See id., at 19. See id. See id. S E C O N DA RY M E A N I N G I S S U E S â•…

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in each of the three sections being tested on a different Kubota tractor model.132 The authors point out that, generally speaking, data is most informative when points of comparison are available. For this reason, as well as to camouflage the brand of interest, the respondents in each of the three sub-Â� samples were also tested on three other tractor brands in the same 15 to 65 horsepower range—a John Deere tractor, a Ford/New Holland tractor, and a Massey-Ferguson tractor.133 The authors write that it is preferable, in most instances, to offer respondents actual models of the product or package at issue so that, before being asked questions, they have the opportunity to examine these items as they would if they had seen the products in an actual sales environment. However, due to the size of the products in question, it was simply not practical because the products would be too large to be moved to or accommodated in an enclosed research testing facility.134 For this reason, the tractors used in this research investigation were represented by color-faithful photographs showing four different angles—a direct frontal view, a direct side-view, a three-quarter side-view taken from the front, and a three-quarter side-view taken from the rear. The photographs were comparable to those appearing in sales brochures for tractors.135 The authors point out that because this study sought to assess the secondary meaning or acquired distinctiveness of trade dress—i.e., the color of the plaintiff ’s tractors, other source-identifying indicia, such as brand names and other source-identifying marks (e.g., logos) were removed from the photographs.136 In describing the testing protocol, the authors reported that the respondents reviewed the four photos for one of the four tractors, after which they were asked if they thought they knew the source of the tractor and why they thought the tractor came from the source they had indicated. The order in which the photos of the four tractors were shown to each of the respondents was varied so that different respondents saw the sets in different orders. Although all of the respondents saw photos of the same John Deere, Ford/New Holland and Massey-Ferguson tractors, as noted hereinabove,

132.╇ 133.╇ 134.╇ 135.╇ 136.╇

See id. See id., at 20. See id. See id. See id.

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the sample was divided into thirds, with each third seeing photos of a different Kubota model.137 After looking at the four sets of photos for as long as they wanted, respondents were cautioned not to guess when answering the questions. Subsequently, the interviewer asked the following questions for the first sets of photographs: Question 1a: If you know, who puts out the tractor shown in set # __? (If the respondent did not name a manufacturer, the interviewer was instructed to say: By puts out, I mean manufactures. If you think you know, who manufactures the tractor shown in set __?)

If the respondent did not know, the interviewer put away the first set of photos, and repeated Question 1a for the second set of photos.138 For each company named in Question 1a, the interviewer then asked Question 1b: What is it about the tractor shown in photo __ that makes you think it is put out by NAME FROM Q.1a? What else, if anything, makes you say it is put out by __?

To clarify a potentially ambiguous answer, if the respondent said “the color” or equivalent on Question 1b, the interviewer asked Question 1c: What is it about the USE RESPONDENT’S OWN WORDS FROM Q.1b that makes you say this tractor is put out by NAME FROM Q.1a? Anything else?

According to the authors, the interviewer then put away the first set of photos, took out the second set of photos, and repeated the above questions for that set. The questions in the sequence were repeated twice more. In all, each respondent ended up being asked the same questions regarding each of the four photo sets for the four different tractors.139 As previously noted, different respondents saw the sets in different orders to eliminate the possibility of “order bias.” If the respondent had not provided any name in answer to Question 1a, the interviewer took out the first photo set again and asked Question 5a: Looking once again at the tractor shown in photo set #___, do you associate the color of this tractor with tractors put out by any particular company or companies?

137.╇ See id. at 20–21. 138.╇ See id. at 21. 139.╇ See id. S E C O N DA RY M E A N I N G I S S U E S â•…

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Respondents who said “yes” were then asked Question 5b: With what particular tractor company or companies do you associate this color? Any others?

According to the article, the interviewer then removed the first photo set and repeated the Question 5 sequence for the other photo sets to which a name had not been provided in answer to the earlier questions.140 Following are the “Findings,” according to Mark and Jacoby: A large proportion of consumers who are users of, or in the market for, tractors in the 15 to 65 horsepower range use color to identify the different brands of tractors. Selected quotes illustrate this fact. “. . . all manufactures make similar tractors. [I] recognize them by color.” said in response to John Deere photos. “Tractors have always been identified by colors. And Massey’s has always been red;” said in response to Massey-Ferguson photos. “All tractor companies use one color for all their tractors and Massey’s is red;” said in response to Massey-Ferguson photos.141

The fundamental question addressed by the secondary meaning survey, according to the article, was: Had the color orange used on tractor exteriors come to signify Kubota in the minds of consumers forming the relevant universe? According to the article, the data revealed that 68 percent of the sample correctly identified the Kubota tractor and, when asked why, said the color orange was the reason for their making this identification. To place this in perspective, although the 68 percent association between orange and Kubota is not as high as between green and John Deere (94 percent), it compares quite favorably to associations between blue and Ford/New Holland (65 percent) and is significantly greater than the association between red and Massey-Ferguson (43 percent)—this, despite the fact that the latter two brands had been using their colors for a considerably longer period of time than Kubota had been using orange. Illustrative verbatim answers from those identifying Kubota by its color are: “If I see an orange tractor from a distance, I think Kubota.” “Everything Kubota makes is orange and I don’t know of any other manufacturers using orange.” “The orange color, you can spot one anywhere. I always notice their color. “The orange color is distinctive of Kubota. Standard of Kubota.” “They must have the rights to orange. They are all orange.” “Kubota’s trademark color is orange. I know that and this is the color of Kubota.”142

140.╇ See id. at 21–22. 141.╇ See id. at 22. 142.╇ See id. at 22–23. [â•›132â•›]â•… Trademark Surveys

Based upon these findings, it was concluded that the 68 percent association between the color orange and Kubota tractors went well beyond satisfying the requirement for establishing acquired distinctiveness/secondary meaning and likely reached the point of qualifying the connection between orange and Kubota as being “famous” within this market.143 In the 1980s, Kubota slightly changed the shade of orange used on its tractors. Because of this change, defendant argued that even if secondary meaning was established by the first survey, the shade of orange that was the focus of that survey (Orange 2) was not the shade of orange for which secondary meaning had to be determined (Orange 1). Therefore, counsel acting on behalf of Kubota commissioned another investigation to determine whether the slight change in the shade of orange used by Kubota resulted in the same “continuing commercial impression” among relevant consumers. As examination of case law turned up no prior instance where a survey had been proffered to assess continuing commercial impression, the survey was designed de novo.144 Like the previous one, the survey was conducted in 12 different and dispersed continental United States markets. Different respondents again were drawn from the same universe as was defined for the initial secondary meaning survey. The test stimuli were the same as described for the secondary meaning survey with one exception, as described in the testing protocol section that follows.145 The testing protocol involved two phases. In Phase 1, the 227 respondents reviewed photo sets of the same four tractors—John Deere, Ford/ New Holland, Massey-Fergusson, and Kubota. In contrast to the first survey, in which the respondents were shown the Kubota tractors in Orange 2, the set of photographs in Phase 1 of the continuing commercial impression survey used Orange 1. The respondents were then asked the same questions as were asked in the first survey. The purpose of these questions was to see if the respondents could identify the maker of each tractor and, for those identified, to indicate the reason(s) why they thought the tractor came from the source they indicated.146 In Phase 2, the respondents were shown another set of photographs for the same four tractors. The only difference between the sets was that, in Phase 2, the photographs of the Kubota tractor showed its exterior in Orange 2 (as had been the case in the secondary meaning survey).

143.╇ 144.╇ 145.╇ 146.╇

See id. at 23. See id. at 23–24. See id. at 24. See id. S E C O N DA RY M E A N I N G I S S U E S â•…

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Two questions were then asked to determine whether Orange 2 conveyed the same continuing commercial impression as did Orange 1.147 At the start of Phase 2, the respondents were shown the photographs for all four tractors (two photographs per tractor) and told “The shade of the color used for one of these tractors may, or may not, be different than the shade used in the photographs I showed you before. As you look at these photos, do you see any tractor being shown in a different shade than before?” In response, 84 percent of the respondents said that the Kubota shade of orange was the same. For these consumers, seeing Orange 2 shortly after seeing Orange 1 and not detecting a difference, by necessary implication, means that Orange 2 conveyed the same commercial impression as did Orange 1.148 The 16 percent of the respondents who said the Kubota tractor shown in Phase 2 was being shown in a different shade of orange than the Kubota tractor shown in Phase 1 were then asked: “[e]ven if it is being shown in a different shade of the same color, do you think the shade being used here is, or is not, essentially the same as the shade used in the photo I showed you before?” In response, half of these respondents (representing 8 percent of the entire sample) said the shade of orange being used on the photos in Phase 2 was “essentially the same” as the shade of orange used in the Kubota tractor photos in Phase 1. For these consumers, seeing Orange 2 shortly after seeing Orange 1 also conveyed a continuing commercial impression.149 The results were highly conclusive, according to the article’s authors. Based upon finding that (84% + 8% =) 92% of qualified respondents found the two shades of Kubota orange either to be indistinguishable or, if distinguishable, to be essentially the same, it was concluded that the two shades of orange conveyed a continuing commercial impression. Upon information and belief, the continuing commercial impression survey.150

According to Mark and Jacoby, the “findings played a substantial role in plaintiff obtaining a favorable pre-trial settlement.”151

147.╇ 148.╇ 149.╇ 150.╇ 151.╇

See id. See id. at 25. See id. See id, at 25–26. See id., at 25.

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CHAPTER 7

Distinctiveness and Strength of Mark

“Distinctive” is a term familiar to most. Its legal connotation, however, is different from its everyday use. In trademark law, “distinctive” is a key term; a designation must be distinctive to be a mark. “Without achieving distinctiveness, either inherently or through the acquisition of secondary meaning, then a designation does not have the legal status of a ‘trademark’ or ‘service mark.’ No distinctiveness—no mark.”1 Rather than requiring every trademark claimant to prove a designation is distinctive, the law creates a presumption that certain types of designations are trademarks. Specifically, designations that “have been used in a context that we usually identify as trademark usage—such as in large letters on a product label or prominently in an advertisement”—are inherently distinctive designations.2 Such designations are assumed to be intellectual property, while designations that are not inherently distinctive are not. The claimant of a designation that is not inherently distinctive has the burden to prove that the designation is a valid trademark.3 This is called proof of “secondary meaning.”4 7.01╇ TYPES OF DISTINCTIVENESS

Distinctive marks fall into two basic categories—inherently distinctive and noninherently distinctive.5 Included within these categories are symbols 1.╇ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., Rel. #49, (West, 2009). § 11:2 at 11–5. 2.╇ Id. 3.╇ See Ark Plas Products, Inc. v. Value Plastics, Inc., 913 F. Supp. 1246, 1249 (W.D. Ark. 1996). 4.╇ Duraco Products, Inc. v. Joy Plastic Enterprises Ltd., 822 F. Supp. 1202, 1208 (W.D. Pa. 1993). 5.╇ Id.

and shapes as well as words. For inherently distinctive symbols, shapes, and words, there is no need to prove distinctiveness, i.e., secondary meaning. For noninherently distinctive symbols, shapes, and words, there is a need to prove secondary meaning. For further discussion of Secondary Meaning, see Chapter 6. Within these two categories, there are sub-categories generally applicable to word marks.6 The sub-categories are: • • • •

Generic terms; Descriptive terms; Suggestive terms; and Arbitrary or fanciful terms.

Generic terms can never be trademarks.7 Descriptive terms are not inherently distinctive, so their claimants must prove secondary meaning.8 Suggestive, arbitrary, and fanciful terms are considered inherently distinctive.9 Nevertheless, a suggestive, arbitrary, or fanciful mark does not necessarily prove strength of mark. Equally important is the strength of the mark in the marketplace—i.e., the degree of recognition by the relevant customers.10 7.02╇ INHERENTLY DISTINCTIVE MARKS

Suggestive, arbitrary, and fanciful marks are regarded as being inherently distinctive:11 • NIKE sports apparel is an example of a fanciful mark. A fanciful mark is a word created for the express purpose of functioning as a trademark. It could also be any obscure or archaic term not familiar to buyers. • DELTA airlines is an example of an arbitrary mark. An arbitrary mark consists of a commonly used word or symbol that is arbitrarily applied

╇ 6.╇ Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 240–41 (5th Cir. 2010). ╇ 7.╇ Rudolph Intern., Inc. v. Realys, Inc., 482 F.3d 1195, 1197 (9th Cir. 2007). ╇ 8.╇ Id. at 1197–98. ╇ 9.╇ Amazing Spaces, Inc., 608 F.3d at 240. 10.╇ Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc., 616 F. Supp. 2d 622, 637 (N.D. Tex. 2009). “The strength of a trademark involves two components: its inherent or intrinsic distinctiveness and the distinctiveness it has acquired in the marketplace, i.e., its commercial strength.” Id. (citation omitted). 11.╇ Amazing Spaces, Inc., 608 F.3d at 240. [â•›136â•›]â•… Trademark Surveys

to the goods or services in question in a way that is not descriptive or suggestive. • 7-ELEVEN convenience store is an example of a suggestive mark. A suggestive mark is not directly descriptive, but only suggestive. Fanciful and arbitrary marks are protectable and registerable immediately upon use, without any need to prove secondary meaning.12 Regarded as “strong” marks, fanciful and arbitrary marks are provided a wide scope of judicial protection against infringement.13 Although suggestive marks are not as strong, they do not require proof of secondary meaning for protection.14 A primary battleground in trademark infringement litigation is over “suggestive” and “descriptive” words and marks. The claimant of a descriptive mark must prove it has obtained secondary meaning to be protectable and thus registerable. That claimant may also try to prove that the mark is suggestive and therefore protectable. The defendant user of a somewhat suggestive mark will want to prove that it is descriptive and consequently deny the plaintiff protection. 7.03╇ FANCIFUL MARKS

If, in the process of selecting a new name for a company, organization, product, or service, the owner of the company or seller of the product creates a totally new and unique combination of words, letters, symbols, or shapes that has no prior use in the language, then the result is a “coined” or “fanciful” mark.15 Such marks are the strongest of all marks, and they are afforded an expansive scope of judicial protection.16 As a result, the likelihood of confusion of a strong mark with similar marks will be more readily inferred

12.╇ Hot Stuff Foods, LLC v. Mean Gene’s Enterprises, Inc., 468 F. Supp. 2d 1078, 1097 (D.S.D. 2006). 13.╇ Iowa Paint Mfg. Co., Inc. v. Hirshfield’s Paint Mfg., Inc., 296 F. Supp. 2d 983, 990 (S.D. Iowa 2003). “An arbitrary or fanciful mark is considered the strongest type of mark. As a result, this type of mark designation warrants the highest level of protection. A suggestive mark is one that requires some measure of imagination to reach a conclusion regarding the nature of the product. This type of mark also merits the broad trademark protection without any need to establish a secondary meaning.” Id. (internal quotation and citations omitted). 14.╇ Id. 15.╇ See Community First Bank v. Community Banks, 360 F. Supp. 2d 716, 723 (D. Md. 2005). 16.╇ Breakers of Palm Beach, Inc. v. International Beach Hotel Development, Inc., 824 F. Supp. 1576, 1583 (S.D. Fla. 1993). D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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by the courts.17 Coined marks, such as NIKE, have no independent meaning. The courts would find it very likely that consumers would associate goods with the NIKE designation as originating from the same company. While fanciful marks enjoy the highest level of judicial protection, they often have problems from the business, merchandising, or advertising point of view because they are not recognizable by targeted customers. It may take significant effort to present the mark to the marketplace and time to establish the source of the mark. While not as strong and powerful as fanciful marks, descriptive marks are often more effective in communicating product and service attributes.18 Although descriptive marks are attractive to businesses for this very reason, such marks lack distinctiveness and are considered weak marks. Non-word marks such as numbers, container shapes (as trade dress), designs, pictures, and specially created shapes may be considered fanciful as well. Examples of highly successful fanciful marks include: CLOROX bleach;19 EXXON petroleum products;20 KODAK photographic products;21 and GOOGLE search engine. There is a danger of fanciful marks morphing into the popular vernacular. Sometimes adjectives are converted to nouns or verbs. For example, the mark XEROX is often used as a noun (“Make a Xerox”) or verb (“Xerox this document”), instead of as an adjective to specify a type of copy machine. Another famous example is Kimberly Clark’s flagship KLEENEX brand tissues. Consumers often say, “I need a Kleenex” or “Do you have a Kleenex?,” instead of using the word tissue. A more recent example involves the GOOGLE search engine. Many users of the popular search engine Google ask, “Did you Google it?”

17.╇ George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 393 (4th Cir. 2009) (“Generally, the stronger the mark, the greater the likelihood that consumers will be confused by competing uses of the mark.”); see CytoSport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051, 1072 (E.D. Cal. 2009). 18.╇ See Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex., 909 F.2d 839, 846–47 (5th Cir. 1990). “Much of trademark law seems predicated on the assumption that there is an infinite universe of acceptable words for businesses to choose for their names, but that descriptive or generic terms are ‘better’ because they communicate more information to the consumer thus lowering consumer search costs.” Id. at n.18. 19.╇ Community First Bank, 360 F. Supp. 2d at 723. 20.╇ Id. 21.╇ Breakers of Palm Beach, 824 F. Supp. at 1583. [â•›138â•›]â•… Trademark Surveys

7.04╇ ARBITRARY MARKS

Also considered strong marks are words, symbols, and pictures that are commonly used linguistically but which, when used in the context of the goods or services at issue, neither suggest nor describe any ingredient, quality, or characteristic of these goods or services.22 For example, V-8 is a juice product made from eight vegetable ingredients. However, it is not readily apparent that the “V” means vegetable and the “8” means the eight vegetable juices.23 V-8 has arbitrary status, which means that the ordinary meaning of V-8 is applied to the goods in an arbitrary and non-descriptive sense.24 CREST toothpaste, TIDE detergent, and IVORY soap are also arbitrary marks.25 The ordinary meanings of the word marks as applied to the respective goods are arbitrary and do not describe the product. Other examples of arbitrary marks: EARLY TIMES whiskey OMEGA watches SUN computer products APPLE computers26 SHELL petroleum products CHEMICAL bank Arbitrary marks often fall near the borderline of suggestive marks. Nonetheless, arbitrary and suggestive marks “fall within the same legal pigeon hole of classification in that neither category requires proof of secondary meaning.”27 Thus, it is not necessary to make a distinction between them in a legal context.28 7.05╇ SUGGESTIVE MARKS

The third type of inherently distinctive mark is a suggestive mark. Trademark law began to distinguish between suggestive marks and descriptive marks, 22.╇ McCarthy, McCarthy on Trademarks § 11:11 at 11–18. 23.╇ Standard Brands v. Smidler, 151 F.2d 34, 36 (2d Cir. 1945). 24.╇ Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1390–91 (9th Cir. 1993). 25.╇ Breakers of Palm Beach, 824 F. Supp. at 1583 (“’Ivory’ would be generic mark if used to describe a product made of tusks, but would be arbitrary as to soap”). 26.╇ Id. 27.╇ McCarthy, McCarthy on Trademarks § 11:12 at 11–20. 28.╇ L’Erin Cosmetics Co. v. Max Factor & Co., 1984 WL 63635, at *2 (D. Del. Apr. 17, 1984). D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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so that suggestive marks came to form a middle ground between arbitrary/ fanciful marks and descriptive marks. Descriptive marks describe the qualities, ingredients, or characteristics of a product, while suggestive marks merely suggest qualities, ingredients, or characteristics.29 As previously mentioned, the conflict between “descriptive” and “suggestive” is a major intellectual property battleground. A suggestive mark receives the same protection given to arbitrary and fanciful marks.30 There is often is a descriptive element to a suggestive name, however, making it difficult and challenging to distinguish and prove.31 Indeed, a term may be descriptive in some contexts and suggestive in others. In approaching the descriptive-suggestive dilemma, the courts favor the “Degree of Imagination” test.32 Simply put, a term that more directly communicates information about the product or service is a descriptive term. Examples of terms with indirect connections to the product or service under the imagination test include: SPARKLE glass cleaner, IGLOO ice chests, and VENUS beauty salon. Another test involves the extent to which the seller uses the mark on similar merchandise. For example, HEALTHY CHOICE, used on a line of food products, would do well in the product-line extension test. Another example is PEDIGREE dog foods, which is comprised a variety of mixes and blends. With this in mind, the following questions and considerations are helpful in distinguishing between descriptive and suggestive marks:33 1. How much imagination on the buyer’s part is required to cull a direct message from the mark about the qualities, ingredients, or characteristics of the product or service? Professional consumers or experts might be more discriminating than ordinary consumers.

29.╇ Id. at *2. 30.╇ Black & Decker Corp. v. Dunsford, 944 F. Supp. 220, 224 (S.D.N.Y. 1996). 31.╇ See Bernard v. Commerce Drug Co., Inc., 774 F. Supp. 103, 107 (E.D.N.Y. 1991). 32.╇ Ricks v. BMEzine.com, LLC, 727 F. Supp.2d 936 (D. Nev. 2010). “[C]ourts have employed a number of tests to distinguish suggestive marks from distinctive ones. The most common of these is the ‘imagination’ test, which provides: ‘If the mental leap between the word and the product’s attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.’” Shade’s Landing, Inc. v. Williams, 76 F. Supp. 2d 983, 989 (D. Minn. 1999) (quotation and citation omitted). 33.╇ McCarthy, McCarthy on Trademarks § 11:71 at 11–187; DeGidio v. West Group Corp., 355 F.3d 506, 510–11 (6th Cir. 2004). [â•›140â•›]â•… Trademark Surveys

2. Does the mark directly convey a real and unequivocal idea of some qualities, ingredients, characteristics, or function of the product or service to a reasonably informed potential buyer? 3. Does the mark so directly say something about the product or service that other sellers of like products would want to use the term in connection with their products or services? Would a competitor without prior knowledge of the mark be likely to use it to describe its products or services? 4. Are, in fact, other sellers now using this term to describe their products? If others are already using the term to describe their products, the mark’s descriptiveness may be “weak” and possibly entitled to only narrow protection. 5. Even though the mark may provide information about the goods or services, is it just as likely to conjure up some other, purely arbitrary connotation? For example, SUGAR & SPICE for baked goods or the nursery rhyme. 6. How does the mark fit into the basic concept that descriptive marks do not pinpoint one source by identifying and distinguishing a seller? 7.06╇ EXAMPLES OF SUGGESTIVE MARKS

Examples of trademarks found suggestive and not descriptive: ACTION SLACKS pants BEETLE fishing lures CHICKEN OF THE SEA tuna CLASSIC COLA soft drink COPPERTONE suntan oil CYCLONE wire fence HANDI WIPES dusting cloths HULA HOOP top hoops L’EGGS women’s hosiery MIRACLESUIT body controlled swimsuit ORANGE CRUSH soft drink PLAYBOY magazine Q-TIPS cardboard sticks with cotton at the end ROACH MOTEL insect trap 7-ELEVEN convenience food chains SEVENTEEN Magazine SWEETTARTS candy WINNER’S CIRCLE auto racing equipment WRANGLER western-style boots and jeans D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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7.07╇ DESCRIPTIVE MARKS

Descriptive marks cannot be protected unless secondary meaning has been obtained and proven.34 There are two concepts that protect a merchant’s right to make a non-trademark use of protected descriptive terms:35 (1) Validity. The only aspect of trademark rights in a descriptive term given protection is the “fringe” of secondary meaning, i.e., the parcel of secondary meaning that might surround the original descriptive word. (2) Infringement. When charged with alleged infringement of a descriptive term that has secondary meaning, defendants may raise the defense that they are not using the term as a mark, but merely as a descriptive adjective. A mark is considered descriptive if it describes: ( 1) (2) (3) (4) (5) (6) (7)

The intended purpose, function, or use of the goods The size of the goods The provider of the goods or services The class of users of the goods or services A desirable characteristic of the goods or services The nature of the goods or services The end effect on the user

In the same way that a non-word designation may become generic of a product or service, such symbols may also be considered descriptive of a product or service. For example, something in the shape of a pine tree connotes products functioning as air fresheners, and an image in the shape of a hammer head connotes a tool product. Marks that are “self-laudatory,” which are merely descriptive of one or more of the alleged merits of the product, are considered descriptive and include such words as BLUE RIBBON, PREMIUM, DELUXE, etc.36 Often such self-laudatory descriptions in advertising are considered “puffery.”

34.╇ FM 103.1, Inc. v. Universal Broadcasting of New York, Inc., 929 F. Supp. 187, 194 (D. N.J. 1996). 35.╇ See Ciociola v. Harley-Davidson Inc., 552 F. Supp. 2d 845, 858 (E.D. Wis. 2008). “In order to prevail on a fair use defense, the defendants must show that: (1) they used [the term] in a non-trademark use; (2) the phrase [or image] is descriptive of their goods or services; and (3) they used the phrase [or image] ‘fairly and in good faith’ only to describe their goods or services.” Id. (quotation and citation omitted). For more on fair use, see section 7.11, supra. 36.╇ FM 103.1, 929 F. Supp. at 194. “Self-laudatory advertising does not connote suggestiveness.” Id. at 195 (citation omitted). “Laudatory marks that describe the alleged merit of the [â•›142â•›]â•… Trademark Surveys

7.08╇ TESTS FOR DESCRIPTIVENESS

“To be characterized as ‘descriptive,’ a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristics of the product.”37 If the knowledge is indirect or vague, then the term is most likely being used in a suggestive, rather than descriptive, manner.38 A term used to describe a product through simile or metaphor also may be descriptive. While RUBEROID as an element on roofing materials is descriptive, POPCORN is suggestive.39 A double entendre is a term that has two meanings, one of which could be descriptive and the other suggestive.40 For example, POLY PITCHER describes the polyethylene plastic material of the pitcher, but also suggests “Molly Pitcher,” a Revolutionary War character. The plaintiff ’s burden of proof can be satisfied through circumstantial evidence, including the public’s exposure to newspapers, magazines, trade journals, and other publications.41 Proof that this exposure affected the relevant public’s understanding, however, is unnecessary. 7.09╇ THE NATURE OF THE AUDIENCE

In testing descriptiveness, the relevant target market consists of prospective purchasers. If a product is marketed to buyers with technical knowledge, for example, then those individuals constitute the relevant target market. A term is descriptive if that relevant target market recognizes the term as describing the product. Regarding the design of consumer survey questions, it is also important to know how much information the ordinary, reasonable consumer is assumed to know about the product prior to encountering the term whose descriptiveness is in doubt. ANECDOTE: Co-author James T. Berger was involved in a trademark case in which a wine company sought to trademark a term that was not inherently distinctive. The opposing party asserted the term was descriptive. goods are descriptive because they simply describe the characteristics or quality of the goods in a condensed form.” In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001) (citation omitted). 37.╇ McCarthy, McCarthy on Trademarks § 11:19 at 11–35, 36. 38.╇ Lemme v. National Broadcasting Co., Inc., 472 F.Supp.2d 433, 444 (E.D.N.Y. 2007). 39.╇ McCarthy, McCarthy on Trademarks § 11:19 at 11–37. 40.╇ See, e.g., Todd Christopher Intern. v. Samy Salon Systems, 2007 WL 843009, at *7 (M.D. Fla. Mar. 16, 2007). 41.╇ See G. Heileman Brewing Co., Inc. v. Anheuser-Busch Inc., 676 F. Supp. 1436, 1467 (E.D. Wis. 1987). D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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To convince the TTAB examiner, the registrant commissioned a survey among members of the relevant target market to determine if those members recognized the term and what that term described. To qualify for the survey, prospective respondents had to have purchased wine by the bottle at retail, over the Internet, or through mail order within the last year, or had to intend to purchase wine by the bottle at retail, over the Internet, or through mail order within the next six months. Virtually no one (less than 1 percent) had ever heard of the term as a descriptor of a type of wine. It turns out that the opposing party used the term rarely in its advertising and promotional materials, and the relevant marketplace had no knowledge of the word. The TTAB examiner subsequently removed barriers to the use of the term as a trademark. 7.10╇ EXAMPLES OF DESCRIPTIVE MARKS

The following are examples of descriptive marks: AMERICA’S BEST POPCORN! popcorn BED BATH & BEYOND store BEEF & BREW restaurant BUFFERIN buffered aspirin42 CHAPSTICK lip balm COMPUTERLAND retail stores COZY WARM ENERGY SAVERS pajamas EASYLOAD tape recorders 5 MINUTE glue HOLIDAY INN motel INSTANT MESSENGER real-time Internet communications IVY LEAGUE clothing MARCH MADNESS annual basketball championship tournament OFF THE RACK men’s store PLATINUM home loan mortgage service POCKET BOOK paperback books PRO STYLE hair dryer RAISIN-BRAN cereal SECURITY CENTER storage facility SNAKE LIGHT flexible flashlight TENDER VITTLES cat food43 VISION CENTER optical clinic 42.╇ L’Erin Cosmetics, 1984 WL 63635, at *2. 43.╇ Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133 (S.D.N.Y. 1972). [â•›144â•›]â•… Trademark Surveys

7.11╇ FAIR USE FOR DESCRIPTIVE TERMS

“Fair use” includes two types of non-infringing uses of another’s mark. The first form is “classic fair use.”44 Under this concept, the junior user contends that it is not using a descriptive, geographically descriptive, or personal name designation in a trademark sense. Instead, the junior user is using the designation to describe the goods or services, their geographic origin, or the name of the person involved in running the business. The second form is called “nominative fair use.”45 Here, the defendant is using the mark to identify the plaintiff’s goods or services, and not the defendant’s goods or services. It is called “nominative” because it identifies the real owner of the mark. If there is no likelihood of confusion, the defendant’s use of the plaintiff ’s mark is not an infringement. The rationale behind classic fair use is that a trademark owner runs the risk that others in the marketplace will use a descriptive term in its original or descriptive sense. The junior user is thus entitled to use the descriptive term, in good faith, in its primary and not trademark sense.46 “The policies of free competition and free use of language dictate that trademark law cannot forbid the commercial use of terms in their descriptive sense.”47 The application of the classic fair use defense is often debatable. For example, MOBILE MECHANICS was held an infringement of the MOBIL gasoline trademark, even if the purpose of the former was to describe the mobility of the defendant’s business.48 But one could argue that MOBIL is a fanciful or arbitrary mark and not a descriptive one. The Milwaukee radio station WOKY was allowed to use WOKY LOVES MILWAUKEE where a competing radio station used the slogan I LOVE YOU MILWAUKEE.49 The court found that WOKY LOVES MILWAUKEE was fair use because it described the defendant’s civic involvement. In another example, plaintiffcompany used THIRST AID as a protectable descriptive mark.50 DefendantGatorade created an advertising slogan using THIRST AID. The court found that Gatorade used THIRST AID as an attention-getting symbol in advertising, not as a mere description of its sports drink. Gatorade could not use the fair use defense because of its trademark use of THIRST AID.

44.╇ National Business Forms & Printing, Inc. v. Ford Motor Co., 2009 WL 3570387, at *5–6 (S.D. Tex. Oct. 30, 2009). 45.╇ Id. 46.╇ State Farm Mut. Auto. Ins. Co. v. Sharon Woods Collision Center, Inc., 2007 WL 4207158, at *7 (S.D. Ohio Nov. 26, 2007). 47.╇ McCarthy, McCarthy on Trademarks § 11:45 at 11–120. 48.╇ Mobil Oil Corp. v. Mobile Mechanics, Inc., 192 U.S.P.Q. (BNA) 744 (D. Conn. 1976). 49.╇ M. B. H. Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50 (7th Cir. 1980). 50.╇ Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992). D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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Classic fair use can exist with a certain level of confusion. In the landmark 2004 MICROCOLOR case,51 the United States Supreme Court held that a defendant raising the fair use defense has no burden to negate a likelihood of confusion. The Court also indicated that likelihood of confusion evidence may be factored into the overall analysis to determine if the use is indeed fair. The owner of the trademark, Lasting Impressions (LI), registered its MICROCOLOR mark in 1993. The product consisted of colored ink and pigments used by trained professionals for both cosmetic and medical uses. The plaintiff, KP Permanent Make-Up (KP), claimed that it had used the word “microcolor” since 1990 or 1991 on bottles of pigment and sought a declaratory judgment that KP did not infringe LI’s trademark. LI counterclaimed for infringement. The District Court dismissed the infringement counterclaim on summary judgment, finding that: (1) “microcolor” was a generic name for this type of ink and (2) there was no infringement based on the fair use defense. The Ninth Circuit Court of Appeals reversed, finding that “microcolor” was not proven generic and that the District Court should have considered the likelihood of confusion issue. More specifically, the Ninth Circuit reasoned that a use must not be confusing to be fair. The Supreme Court disagreed. The Court held that a party charged with infringement that uses the fair use defense does not have the burden to prove that confusion is unlikely. Thus, KP did not have to negate likelihood of confusion. In addition to stating that the fair use defense can coexist with some degree of confusion, the Court suggested that likelihood of confusion is still relevant to the fair use analysis. That is, likelihood of confusion (along with other factors, such as commercial justification and strength of mark) may affect whether a given use is fair. 7.12╇ EXAMPLES OF FAIR USE DEFENSES UPHELD BY COURTS

List of marks where the courts have upheld fair use includes: FOOD CENTER grocery store OYSTER HOUSE restaurant PLAYMATE in Playboy magazine SAFARI boots Examples where courts have rejected fair use: BEEFEATER restaurant 51.╇ KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S. Ct. 542 (U.S. 2004). [╛146╛]╅ Trademark Surveys

COTTON TIPS cotton-tipped applicators MINUTE MADE frozen meats 7.13╇ DECEPTIVE AND DECEPTIVELY MISDESCRIPTIVE MARKS

Under the Lanham Act, marks classified as “deceptively misdescriptive” of the product are placed in the same category as descriptive marks.52 Thus, deceptively misdescriptive marks require proof of secondary meaning to qualify as a trademark.53 A mark is misdescriptive if it describes some characteristic or quality of the goods or services that it does not possess. A mark is deceptively misdescriptive if it: (1) misrepresents any fact concerning the goods or services; and (2) consumers are likely to believe the misdescription.54 Deceptive (as opposed to deceptively misdescriptive) marks can never qualify as a trademark.55 For example, the word SILKEASE, for polyester women’s blouses, was held to be deceptive because the work fostered the impression that the blouses were made from silk. Other marks in this category include: CEDAR RIDGE for hardboard siding BAKED TAM for a turkey meat product not containing ham GLASS WAX for a metal and glass cleaner, which did not contain wax TITANIUM for recreational trailers containing no titanium 7.14╇ A REAL CASE TESTING THE DESCRIPTIVE-SUGGESTIVE CONTINUUM

ANECDOTE: Co-author James T. Berger became involved in a case that required a survey to test the descriptive-suggestive dilemma. The case involved two dental practices in Arizona. The plaintiff was an Arizona dental practice named “General Dentistry for Kids.” Berger was brought into the case by the defendant, another dental practice named “Kool Smiles–General Dentistry for Kids,” to determine whether members of the relevant target market—parents of children age 16 and under in Arizona—recognized 52.╇ WLWC Centers, Inc. v. Winners Corp., 563 F. Supp. 717, 719 (D.C. Tenn. 1983). “[B]efore a court can require a showing of secondary meaning for registration of a mark, the mark must be found to be merely descriptive or deceptively misdescriptive.” Id. (quotation and citation omitted). 53.╇ Id. 54.╇ Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1361 (Fed. Cir. 2001). 55.╇ Id. at 1360–61. D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K â•…

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the words “General Dentistry for Kids” to be a generic, descriptive, or suggestive name. The survey methodology chosen was a mall intercept study. Four venues in the state of Arizona were selected, and two hundred interviews were completed. After initial screening, participants who agreed to participate (for a $5 incentive) were brought into research offices in the four malls and were seated at a desk. The interviewer explained the following to the interviewees: Today, we are conducting a survey of generic, descriptive, and suggested brand names. There are a number of ways trademarks can be distinguished from one another. Generic trademarks are common names or goods and/or services or a category of goods and/or services. Examples of trademarks that are considered to be generic are: At this point, the interviewer picked up a stack of flash cards and showed them to the subject, read the words aloud, and left the cards on the table under the heading GENERIC. The names shown and spoken to the subjects (in no particular order) were: BABY OIL, COMPUTER LEARNING CENTER, FIRST AID KIT, SUPER GLUE, and WAREHOUSE FOODS.

Leaving the GENERIC flash cards on the table, the interviewer read to the subject: On the other hand, descriptive trademarks describe the qualities or characteristics of the goods or services for which the trademark is used. Examples of trademarks that are considered to be descriptive are: At this point, the interviewer picked up a stack of flash cards and showed them to the subject, read the words aloud, and left the cards on the table under the heading DESCRIPTIVE. The names shown and spoken to the subjects (in no particular order) were: BEEF & BREW RESTAURANT; OATNUT BREAD; RAISIN-BRAN CEREAL; SUPER-BLEND MOTOR OIL; and THE 88¢ STORE.

Leaving the DESCRIPTIVE and GENERIC flash cards on the table, the interviewer next read to the subject: Finally, suggestive trademarks suggest a quality or characteristic of the goods or services. In doing so, suggestive trademarks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. At this point, the interviewer picked up a stack of flash cards and showed them to the subject, read the words aloud, and left the cards on the table under the heading SUGGESTIVE. The names shown and spoken to the subjects (in no particular order) were: CHICKEN OF THE SEA TUNA, GOBBLE GOBBLE TURKEY MEAT, L’EGGS WOMEN’S HOSIERY, ROACH MOTEL INSECT TRAPS, and RACETRAC CONVENIENCE STORE. [â•›148â•›]â•… Trademark Surveys

Leaving the SUGGESTIVE, DESCRIPTIVE, and GENERIC flash cards on the table, the interviewer next read to the subject: With these definitions and examples in mind, I am now going to show you another set of cards, and I’d like for you to tell me if, in your opinion, the name is generic, descriptive, or suggestive. At this point, the interviewer picked up a stack of flash cards and showed them to the subject. The names shown (in no particular order) were: SMILE HIGH DENTISTRY FOR CHILDREN, SUGARLOAF CHILDREN’S DENTISTRY, GENERAL DENTISTRY FOR KIDS, SPARKLES DENTISTRY FOR KIDS, KIDSMILE, and LITTLE SMILES DENTISTRY FOR CHILDREN.

Results of the survey were as follows: Trademark

Generic

Descriptive

Suggestive

Don’t Know

Smile High Dentistry. . . Sugarloaf Children’s . . . General Dentistry for Kids Sparkles Dentistry. . . Kidsmile Little Smiles Dentistry. . .

32 57 128 20 79 16

80 51 48 97 57 102

76 50 19 73 39 72

12 42 5 10 23 10

“Smile High Dentistry for Children” and “Sparkles Dentistry for Kids” got the highest suggestive score. “Little Smiles Dentistry for Children” and “Sparkles Dentistry for Kids” got the highest descriptive score. “General Dentistry for Kids,” part of the defendant’s name in the instant case, was the big winner in the generic category. Moreover, when the generic and descriptive categories were combined, an overwhelming 88 percent of subjects selected “General Dentistry for Kids” as being either generic or descriptive—thus, convincingly proving the hypothesis that “General Dentistry for Kids” was not a suggestive name. 7.15╇ ADDITIONAL INSIGHT [A]╇ America Online v. AT&T 56

This case, argued October 30, 2000, and decided February 28, 2001, by the Fourth Circuit Court of Appeals offers additional insight into the

56.╇ America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001). D I S T I N CT I V E N E S S A N D S T R E N GT H O F M A R K ╅

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descriptive-suggestive debate. The following text is taken from portions of the decision: America Online, Inc. (“AOL”) commenced this action against AT&T Corporation (“AT&T”) for AT&T’s alleged infringements of three trademarks that AOL claims in connection with its Internet services—”Buddy List,” “You Have Mail,” and “IM.” The district court entered summary judgment in favor of AT&T with respect to each mark, concluding that, as a matter of law, the alleged marks are generic and cannot be enforced as the exclusive property of AOL. For the reasons that follow, we conclude that the question whether “Buddy List” is a valid mark raises disputed issues of material fact and therefore cannot be resolved on summary judgment. With respect to the two other claimed marks, we affirm for the reasons given herein.57 I. Founded in 1985, AOL is now the world’s largest Internet service provider, claiming more than 18 million members who pay a monthly fee for its services. These services include the facility to transmit and receive electronic mail (“e-mail”) and a means to establish real-time communication (“chat”) through “instant messaging.”58 In connection with its chat service, AOL uses “Buddy List” and “IM” to describe features of the service. The “Buddy List” enables the subscriber to create a list of identified screen names employed by other users with whom the subscriber wishes to communicate and displays which of those pre-selected users is currently using the AOL service. If a “Buddy” is identified by the “Buddy List” as online, the subscriber may then click a button labeled “IM,” which are the initials of “instant messaging,” and initiate a real-time chat session with the subscriber so identified on the “Buddy List.” AOL has used “Buddy List” and “IM” since at least 1997. It has promoted these terms extensively, and it asserts now that it has a proprietary interest in them. In addition, with respect to “Buddy List,” AOL obtained a certificate of registration on June 23, 1998, from the Patent and Trademark Office, indicating that the mark has been registeredon the Principal Register and that AOL has used the mark as a service mark since August 31, 1995.59 Also, in connection with its e-mail service, AOL advises its subscribers that they have received e-mail by displaying the words “You Have Mail,” by playing a recording that announces, “You’ve got mail,” and by depicting an icon of a traditional mailbox with the red flag raised. AOL contends that it has used these marks to describe its e-mail service since 1992, that it has promoted them extensively, and that it now has a proprietary interest in them.

57.╇ Id. at 814. 58.╇ Id. at 814–15. 59.╇ Id. at 815. [â•›150â•›]â•… Trademark Surveys

AT&T, a competing Internet service provider, uses marks or phrases similar to those claimed by AOL in connection with its service to subscribers. It uses the terms “Buddy List,” “You have Mail!,” and “I M Here.” In December 1998, AOL commenced this action, seeking preliminary and permanent injunctive relief against AT&T to prohibit it from using marks similar to those asserted by AOL. In its complaint, it alleged that AT&T’s use of similar marks violated the trademark dilution provisions of the Lanham Act [and infringes AOL’s marks]. In addition, it demanded an accounting of AT&T’s profits, damages, punitive damages, attorneys fees, and costs. In its answer, AT&T contended, among other things, that AOL’s asserted marks were “common, generic terms for the e-mail, instant messaging, communication, and related services.” It filed a counterclaim seeking a declaratory judgment that AOL’s marks are not valid trademarks and requesting an order directing the Patent and Trademark Office to cancel the registration for “Buddy List.” The district court denied preliminary injunctive relief and, following discovery, granted AT&T summary judgment on the ground that all three of the claimed marks were generic and therefore incapable of functioning as trademarks. The court also directed that a copy of its order be sent to the Commissioner of Patents and Trademarks “in order to effect the cancellation of the BUDDY LIST mark.” The district court rested its decision on evidence in the record obtained from third-party sources, including Internet dictionaries, published users’ guides to both the Internet and to AOL services, use of the alleged marks by competitors, and use by AOL of the alleged marks in a manner suggesting their generic character. Although AOL proffered survey evidence in support of its contention that the marks “You Have Mail” and “Buddy List” were protected trademarks, the court considered the survey evidence irrelevant because it had concluded that the marks were generic and that words used generically cannot become trademarks by association. AOL’s contentions on appeal break down into two general arguments. First, it argues that the district court erred when it concluded that “Buddy List” is generic, despite the fact that it is a federally registered trademark. It asserts that because the trademark office is an expert agency to whom Congress has delegated power to administer the Lanham Act, its decision to register “Buddy List” should be accorded deference under the doctrine of Chevron v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Second, AOL contends that the district court, in concluding that the marks are generic, failed to apply the “primary significance” test correctly insofar as the court focused on usage of the mark in published sources rather than on the perceptions of the relevant consuming public, which were evidenced by AOL’s surveys.60 II. “Buddy List” AOL’s principal argument for the validity of “Buddy List” as a “suggestive” mark rests on the significance of its having obtained a certificate of registration from the Patent and

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Trademark Office (“PTO”). It argues that the district court erred in failing to give deference to the expert decision of the PTO to register the mark without requiring evidence of secondary meaning.61 To address this argument, we must first recognize the statutory background against which a certificate of registration issues. When the Commissioner of Patents and Trademarks, in furtherance of an application of a registrant, lists a mark on the Principal Register, he issues a certificate of registration which provides the registrant with prima facie evidence of (1) the validity of the mark and its registration; (2) the registrant’s ownership; and (3) the registrant’s “exclusive right” to use the mark on or in connection with the goods and services specified in the certificate of registration. [Therefore,] the registrant obtains prima facie evidence that its mark is not generic in the eyes of the relevant public and that its mark is not “merely” descriptive, but at a minimum is descriptive and has obtained secondary meaning. The Commissioner need not require evidence of secondary meaning if the applied for mark is inherently distinctive by being suggestive, arbitrary, or fanciful. (citations omitted) ... The district court acknowledged that “Buddy List” “has been treated in a suggestive manner” according to some evidence. But it found that “the only reasonable conclusion which could be drawn from the evidence points to generic usage.” Of particular importance to the Court was the fact that “virtually every third party which has used the phrase, including so many of AOL’s competitors, use it as a generic phrase.” AT&T argues further on appeal that AOL received “the maximum benefit of the registration afforded by law.” It maintains that the benefit accorded by AOL’s registration of “Buddy List” was not “sufficient in light of the overwhelming evidence presented by AT&T. AT&T’s ‘compelling’ and ‘overwhelming’ evidence of genericism amply supports the district court’s ruling that no reasonable jury could find ‘buddy list’ anything other than generic.”62 ... [W]e conclude that in deciding whether “Buddy List” was generic, the district court had no obligation to afford Chevron type deference to the decision of the PTO. Rather, it was required to receive the certification of registration for “Buddy List” into evidence and treat that certificate as prima facie evidence of the validity of the mark— and, in this case, as prima facie evidence that it was suggestive.63 While the district court acted appropriately in this case in receiving the certificate of registration of “Buddy List” as prima facie evidence that the mark was suggestive, it thereafter erred in ignoring that evidence. The prima facie evidence provided by the certificate of registration was in this case sufficient to establish a question of material fact that could not be resolved on summary judgment. . .

61.╇ Id. at 816. 62.╇ Id. at 816–17. 63.╇ Id. at 818. [â•›152â•›]â•… Trademark Surveys

But in addition to the evidence provided by the certificate of registration, the district court observed that the record contained other evidence “that BUDDY LIST has been treated in a suggestive manner,” and the court itself recognized that this other evidence “tended to create a factual dispute.” It found this evidence insignificant, however, because the evidence of genericness was “overwhelming,” and it determined that a reasonable jury could only conclude that “Buddy List” was generic. In so weighing the evidence, however, the court violated a basic principle of Rule 56 jurisprudence—that in determining whether a genuine issue of material fact exists, a court must view the evidence in the light most favorable to the nonmoving party. Because we conclude that the validity of “Buddy List” cannot be determined on summary judgment in the context of the record evidence presented in this case, we vacate the district court’s rulings on “Buddy List,” including its order directing the Commissioner to cancel the certificate of registration, and remand for further proceedings. III. “You Have Mail” The district court concluded that the alleged mark “You Have Mail” functions primarily to inform AOL subscribers that they have e-mail, which the court found “is also known as mail.” The court concluded that “when the common word or phrase is used as a mark for its ordinary meaning, the mark is generic.” Accordingly, it ruled that AOL could not enforce “You Have Mail” as a trademark. AOL argues that there is no evidence in the record that “You Have Mail” is “primarily perceived by consumers as ‘the common name’ of a service,” as would meet the test of genericness. . . It also contends that the district court erred in disregarding survey evidence that indicates that “You Have Mail” is associated with AOL. Finally, AOL argues that the Lanham Act does not exclude common phrases from the scope of protection—a principle that it contends the district court misunderstood.64 AOL has not registered “You Have Mail” with the PTO, and therefore it must carry the burden of establishing the validity and its ownership of the mark as part of its larger burden in a trademark infringement action. That burden is to prove that it has a valid, protectable trademark and that the defendant is infringing its mark by creating confusion, or a likelihood thereof, by causing mistake, or by deceiving as to the attributes of its mark. We agree with the district court that AOL did not meet this burden.65 First, the record establishes, without contradiction, that “You Have Mail” has been used to inform computer users since the 1970s, a decade before AOL came into existence, that they have electronic mail in their electronic “mailboxes.” AT&T has noted, for example, that the UNIX operating system, one of the most widely used in the computer industry, has, since before AOL was formed, displayed the phrase “You Have Mail” or “You Have New Mail” whenever a user has received electronic mail. In the context of computer-based electronic communications across networked computers, the phrase

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“You Have Mail” has been used for the common, ordinary purpose of informing users of the arrival of electronic mail in their electronic mailboxes. In addition, books describing how a computer user is informed that he has e-mail on UNIX similarly reveal the functional nature of the phrase. . . ... It is significant in the context of this usage that AOL has never registered “You Have Mail,” nor has it attempted to enforce it as a mark prior to this action. Second, in addition to the long and uninterrupted use by others of “You Have Mail,” AOL’s own use of “You Have Mail” has been inconsistent with its claim that the phrase is a trademark. Rather than describing a service that AOL offers—and indicating that it is describing such a service—AOL simply uses “You Have Mail” when the subscriber in fact has mail in the electronic mailbox. Once the user opens the new message, the phrase “You Have Mail” disappears from the user’s screen. Moreover, if the subscriber does not have mail when he logs on, the screen does not display “You Have Mail.” AOL’s use of the phrase, conditioned on whether mail is present, does not describe AOL’s e-mail service, but rather simply informs subscribers, employing common words to express their commonly used meaning, of the ordinary fact that they have new electronic mail in their mailboxes.66 ... We agree with the district court that when words are used in a context that suggests only their common meaning, they are generic and may not be appropriated as exclusive property. . .67 ... When a word or phrase does not fall within the heartland of common meaning and usage, but is nevertheless close, its distinctiveness is strengthened by the entrepreneur’s use. Thus, words or phrases that are not directly descriptive of a company, product, or service, but rather suggest, through operation of the consumer’s imagination, the company, product or service, can become trademarks. Similarly, well-recognized slogans used without any direct context can, through use, become marks because with such a generalized application, they are not used in the context of their common meaning, but rather suggestively. Witness “Just do it!,” see Nike, Inc. v. “Just Did It.”68 ... In the case before us, the record context of “You Have Mail” permits us to conclude as a matter of law that AOL’s usage of the would be mark falls within the heartland of common meaning and usage and therefore that AOL may not exclude others from using the same words in connection with their e-mail service. . . AOL argues that its survey evidence indicates an association in the public’s eye between “You Have Mail” and AOL and that this association is sufficient to permit a

66.╇ Id. at 819–20. 67.╇ Id. at 820–21 (citation omitted). 68.╇ Id. at 821 (citations omitted). [â•›154â•›]â•… Trademark Surveys

reasonable factfinder to conclude that “You Have Mail” is a trademark descriptive of its e-mail service that has acquired secondary meaning. AOL contends, therefore, that only a jury can decide whether “You Have Mail” is a trademark. Its evidence for secondary meaning consisted of a random survey of 507 Internet users whose households were “very likely paying to be receiving an Internet access service or an online service during the three months following the survey.” The 507 respondents were divided into four groups: Group A, 250 respondents; Group B, 85; Group C, 86; and, Group D, 86. The respondents in Group A were first asked whether they had heard or seen the expression “You Have Mail.” Those who answered affirmatively were then asked whether they associated that expression with one specific Internet or online service provider, or more than one provider. Those who associated the expression with one specific provider were then asked to identify the particular provider with whom they associated the phrase. Respondents in Groups B, C, and D were asked similar questions about different phrases. Instead of being queried for their reaction to “You Have Mail,” respondents in Group B were asked about “New Mail Has Arrived”; respondents in Group C were asked about “Mail Is Here”; and, respondents in Group D were asked about “Mail Call.” The results obtained from the answers given by the respondents in Groups B, C, and D were termed the “Control Condition,” which, according to the design of the survey, was to provide “an important baseline against which to judge the strength of people’s associations with the expression ‘You Have Mail.’”69 Out of the group that heard “You Have Mail,” 41% of the respondents associated the phrase with a single Internet or online service provider, and 37% of the respondents associated the phrase with AOL. In Groups B, C, and D, only 9% of the respondents were able to associate the phrase they heard with a single Internet or online service provider, and only 5% were able to name a specific Internet or online service provider with which to associate the phrase they heard. AOL argues that a reasonable jury could conclude from this evidence that the primary significance to the relevant public of the phrase “You Have Mail” is to denote its source and therefore that the term is not generic. See 15 U.S.C. § 1064(3) (“The primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used”). At this summary-judgment stage of the proceedings, we must accept AOL’s assertion that a portion of the public associates “You Have Mail” with AOL, the most widespread user of the phrase. But this fact does not reveal that the primary significance of the term “You Have Mail” to announce the arrival of new e-mail is not the functional, heartland usage of the phrase. This usage does not distinguish AOL’s e-mail service from that of any other service provider because the phrase “You Have Mail” is used in its commonly understood way—i.e., functionally to convey the common meaning of words—and not distinctively. AOL’s evidence of association may establish what is called “de facto

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secondary meaning,” but such secondary meaning does not entitle AOL to exclude others from a functional use of the words. Stated otherwise, the repeated use of ordinary words functioning within the heartland of their ordinary meaning, and not distinctively, cannot give AOL a proprietary right over those words, even if an association develops between the words and AOL. . .70 We therefore conclude that “You Have Mail” has been and continues to be used by AOL and by others to alert online subscribers that there is electronic e-mail in their electronic mailboxes, and no more. This functional use of words within the heartland of their ordinary meaning cannot give rise to a trademark for the e-mail service when it is no more than the announcement of the arrival of a message. Because AOL has failed to establish its exclusive right to “You Have Mail,” we affirm the district court’s conclusion that AOL may not exclude others from use of those words in connection with its e-mail service.71 IV. “IM” Finally, AOL contends that the district court erred in refusing, based on a finding of genericness, to enforce “IM” as its trademark for its instant messaging service. The district court, reciting undisputed facts, concluded that “IM” is “an initialism” for “instant message,” and that, despite their management’s admonitions against using “IM” as a noun or a verb, AOL employees used “IM” as a noun or a verb in lieu of “instant message,” such as in “They had an IM pending” or “Stop IM’ing me.” The court also pointed to books, dictionaries, and glossaries defining “instant message” with the “IM” designation such as: “instant message, IM for short,” or “instant message (IM).” It noted that Yahoo!, in promoting its pager service, claimed that it was providing “IMs.” Based on these and similar facts, as well as the fact that AOL does not claim any proprietary interest in the phrase “instant messaging,” the district court held that “IM stands for ‘instant message’ (as AOL admits), and because the primary significance of ‘instant message’ is to stand for an ‘instant message,’ the term . . . is generic.” AOL bases its claim to “IM” on its assertions that “IM” has frequently been associated by the media with AOL and that no other online or Internet service provider calls its real-time communications feature “IM.” It argues that because it was one of the first companies to provide “IM,” a jury could conclude that “IM” denotes the source, not the feature. But AOL has offered no evidence to support that contention. It can only contend in a conclusory manner that “IM” is a trademark rather than simply the product at issue. Accordingly, while we do not determine that “IM” is generic, we nevertheless agree with the district court’s decision, based on this record, to deny AOL enforcement of “IM” as its trademark.

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V. In sum, we conclude that the validity of “Buddy List” cannot be resolved on summary judgment in view of genuine issues of material fact. Accordingly, we vacate the district court’s order finding “Buddy List” generic, as well as its order directing cancellation of the certificate of registration for that mark, and remand for further proceedings. With respect to the district court’s rulings denying enforcement of “You Have Mail” and “IM” as the trademarks of AOL, we affirm.

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CHAPTER 8

Issues Involving Generic Marks

8.01╇ BASIC ISSUES OF GENERICNESS

The Genericness Doctrine dictates that a generic name of a product or service can never function as a trademark to indicate origin.1 In effect, “generic” and “trademark” are deemed to be mutually exclusive.2 A term is generic, and thus ineligible for trademark protection, if it refers to the genus of which the particular product or service is a species.3 Put another way, to be properly called an unprotectable “generic name,” the designation must be the name of the product or service that the mark is alleged to identify the source of.4 The overriding rationale is that the function of a trademark is to

1.╇ See, e.g., Rudolph Int’l., Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007) (“Generic terms cannot be protected trademarks.” Internal citations omitted.); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002); Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1146 n. 2 (9th Cir.1999); Kendall-Jackson Winery v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n. 8 (9th Cir.1998); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (“[E]ven proof of secondary meaning . . . cannot transform a generic term into a subject for trademark.”). 2.╇ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., Rel. #49, (West, 2009). § 11:2 at 11–5. E.g., Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 932, 935–37 (7th Cir. 1986). 3.╇ See Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d 974, 977 (9th Cir. 2010); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Yurman Design, Inc., v. PAJ, Inc., 262 F.3d 101, 110 (2d Cir. 2001); Filipino Yellow Pages, 198 F.3d at 1147. 4.╇ See Urgent Care Inc. v. South Mississippi Urgent Care Inc., Case No. 08–60155 (5th Cir. Aug. 13, 2008) (unpublished); New Kids on the Block v. New Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir.1992) (Generic terms do not “relate exclusively to the trademark owner’s product” because they are common words or phrases that “describe a class of goods rather than an individual product.”); Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir. 1990).

identify and distinguish the goods and services of one seller from those sold by others.5 Clearly, a term can be generic for one object but may be a valid trademark for another object if the generic term doesn’t refer to the genus of that object—i.e., the words are used in a manner that is unrelated to their normal meaning.6 For example: APPLE, although generic to the fruit of an apple tree, is a registered trademark for computers and other electronic devices; CATERPILLAR, although generic to the larval form of an insect, is a registered trademark for excavating and earth moving equipment; IVORY, although generic to the animal tusk, is a registered trademark for soap and other personal hygiene products; and SHELL, although generic to outer coverings and casings, is a registered trademark for oil and other petroleum products. However, even the use of a generic name can trigger negative legal consequences if used in a false or deceptive way for a different product or service.7 An example is the former Eastern Airlines, which had originated 5.╇ See 15 U.S.C. § 1127. See also Restatement (Third) of Unfair Competition, § 15 (“[T]rademark rights in a generic designation could significantly impede competition in the market for the goods or services denominated by the generic term.”) See, e.g., Sport. Supply Group, Inc. v. Columbia Cas. Co., 335 F.3d 453, 460 (5th Cir . 2003) (“A trademark . . . distinguishes a producer’s goods. [T]he primary function of a trademark is to serve as a label—a mark that identifies and distinguishes a particular product.”); San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987) (“Because a generic name by definition does not distinguish the identity of a particular product, it cannot be registered as a trademark under the Lanham Act.”). See also Folsom and Teply, “Trademarked Generic Words,” 89 Yale L.J. 1323, 1346 n. 110 (1980) (The public has an interest in the “natural enrichment of the language [and the prevention of the] ‘diminution of the language through private acquisition.’” Citations omitted.). 6.╇ See, e.g., Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft, 213 F. Supp. 2d 612 (E.D. Va. 2002) (term “cosmos” not generic to travel agent services). E.g., Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1156 (7th Cir.1996) (“[C]hanging the order of [generic] terms in a name or phrase may make the difference between genericness and trademark potential.”); Hunt Masters, Inc. v. Landry’s Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001) (The fact that the constituent parts of a phrase are generic is not conclusive to the entire phrase being generic.). 7.╇ E.g., Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866 (9th Cir. 2002) (deceptive use of trademark is defense to alleged trademark infringement); Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) cert. denied 532 U.S. 920 (2001) (Alleged false advertising in violation of Section 43(a)(1)(B) of Lanham Act for use of registered trademark “Better Ingredients. Better Pizza.”); Forschner Group, Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 357 (2d Cir. 1994) (“A manufacturer . . . cannot use a generic term in a manner that constitutes a misrepresentation of manufacturer or source.” Citing Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 102 (2d Cir.1989).); In re Alp of South Beach Inc., 79 U.S.P.Q. (BNA) 2d 1009 (T.T.A.B. 2006) (use of CAFETERIA for a traditional sit-down restaurant found to be deceptive); In re Organik Technologies, Inc., 41 U.S.P.Q. (BNA) 2d 1690 [â•›160â•›]â•… Trademark Surveys

air service between Boston, New York, and Washington and referred to such service as “shuttle” service.8 Although Eastern was unable to assert a registered trademark in the word “shuttle” for airline services, Eastern was able to successfully assert a false advertising claim against an upstart airlines that advertised a “shuttle” service that did not include all the elements of Eastern’s product, such as guaranteed seating, no need for reservations and frequent service. The court found that the upstart’s use of the term “shuttle” was deceptive because the public had come to associate the generic term “shuttle” with the elements of Eastern’s product.9 Public policy dictates that a generic term is free for everybody to use.10 However, advertising that indicates that a competitor is not selling the “genuine” generic product, can be a form of product disparagement.11 For example, Canadian brewer Labatt advertised its “ice beer” product with the slogan, “If It’s Not Labatt’s, It’s Not Ice Beer.”12 This slogan was found disparaging to other breweries, many of which sell Ice Beers like Miller or Anheuser Busch.13 Sometimes a non-generic trademark takes on an entirely new “generic” meaning.14 The culprit - the public takes a well-recognized trademark and uses it outside its normal context in a way that gives it a generic meaning that is new.15 For example, the U.S. Defense Department’s Strategic Defense Initiative became known as the “Star Wars Program.”16 The use of this slogan by public interest groups in commercial advertisements brought protests from the motion picture studio that produced the STAR WARS movies as well as the myriad of STAR WARS licensed products, but the court refused

(T.T.A.B. 1997) (use of ORGANIK deemed deceptive for clothing made from cotton that is neither from an organically grown plant nor free from chemical treatments); In re Juleigh Jeans Sportswear Inc., 24 U.S.P.Q. (BNA) 2d 1694 (T.T.A.B. 1992) (use of LONDON LONDON for clothing having no connection with London held deceptive). ╇ 8.╇ Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 1274–75 (S.D.N.Y.1983) (applying New York law). ╇ 9.╇ Id. at 1279. 10.╇ See, e.g., Door Sys. Inc. v. Pro-Line Door Sys. Inc., 83 F.3d 169 (7th Cir. 1996); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 304 (3d Cir. 1986) (“[S]ome terms so directly signify the nature of the product that interests of competition demand that other producers be able to use them even if the terms have or might become identified with a source and so acquire ‘de facto’ secondary meaning.”). 11.╇ Accord 15 U.S.C. § 1125. 12.╇ Anheuser-Busch, Inc. v. John Labatt Ltd., 89 F.3d 1339, 1345 (8th Cir.1996). 13.╇ Id., at 1346. 14.╇ Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (T.T.A.B. 2007) (Trademark Trial and Appeal Board found that “spam” is commonly used in relation to unsolicited commercial emails.). 15.╇ See Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, n. 12 (2nd Cir. 1999) (“The public may also take a trademark and give it a generic meaning that is new.”). 16.╇ Lucasfilm, Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C.1985). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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to enjoin the new use finding that the term had acquired a double meaning.17 Other brand names such as “Mickey Mouse” and “Teflon” have acquired new generic meanings. MICKEY MOUSE, for example, while a trademarked moniker for a cartoon character created by the Walt Disney Company, is often used as an adjective to describe things that are unimportant or trivial, such as references to easy academic courses.18 Likewise, TEFLON is a brand name for synthetic fluoropolymer products sold by the DuPont Co. However, TEFLON has often been used to describe politicians who are not damaged by unfavorable data, which does not seem to “stick to them.”19 Another example is the term MARCH MADNESS— originally used by the Illinois State High School Association to describe an annual high school basketball tournament,20 the name has become synonymous with the National Collegiate Athletic Association (NCAA) Men’s Division I collegiate basketball tournament.21,22 8.02╇ TESTING FOR GENERICNESS

A trademark, which originally identified a source for a particular product, may nonetheless become generic and, thus, ineligible for further trademark protection through a change of meaning in the public mind.23 Most apropos, the denigration of a trademark into an unprotectable generic name is known as “genericide,” as it is often times the result of actions or omissions on the part of the trademark holder.24 In holding “aspirin” to be generic, distinguished Judge Learned Hand opined “[t]he single question, as I view it, 17.╇ Id., at 933–35 (Trademark rights do not entitle an owner to quash an unauthorized use of a mark by another who is communicating ideas or expressing points of view.). 18.╇ See The American Heritage Dictionary of the English Language (4th Ed. 2000), available at http://www.thefreedictionary.com/Mickey+Mouse. 19.╇ See The American Heritage Dictionary of the English Language (4th Ed. 2000), available at http://www.thefreedictionary.com/teflon. 20.╇ Scott Johnson, et  al., 100 Years of Madness: The Illinois High School Association Boys’ Basketball Tournament, (Illinois High School Association 2006). 21.╇ Eddie Einhorn and Ron Rapoport, How March Became Madness: How the NCAA Tournament Became the Greatest Sporting Event in America (Triumph Books: 2006). 22.╇ E.g., March Madness Athletic Ass’n v. Netfire, Inc. 310 F. Supp. 2d 786 (N.D. Tex. 2003); Illinois High School Ass’n v. GTE Vantage Inc., 99 F.3d 244, 247 (7th Cir. 1996). 23.╇ See America Online, Inc. v. AT & T Corp., 243 F.3d 812 (4th Cir. 2001); Illinois High School Ass’n. v. GTE Vantage, Inc., 99 F.3d 244 (7th Cir. 1996); Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 211 (S.D. N.Y. 2001). See, e.g., Angela Hom, “TiVo and Trademark ‘Genericide,’” 52 Risk Mgmt. 9 (2005); Sung In, “Death of a Trademark: Genericide in the Digital Age,” 21 Rev. Litig. 159 (2002). 24.╇ See, e.g., Blacks Law Dictionary, 7th ed. 550 (2000). See also, Francis Amendola, et  al., “Generic Meaning Acquired through Use,” 87 C.J.S. Trade-marks, etc. § 225 (2008); Julius R. Lunsford, Jr., “Trademarks: Prestige,. Practice and Protection,” 4 GA.L .Rev. 322, 324 (1970). [â•›162â•›]â•… Trademark Surveys

in all these cases, is merely one of fact: What do buyers understand by the word for whose use the parties are contending?”25 In other words, is the word generic or indicative of merely one of the sources of the product?26 The Third Circuit pointed out that it is the consumer, and not the courts who determined if a term is generic.27 There are various categories of products—such as prescription drugs— only sold to or prescribed by professional classes of consumers, e.g., physicians and pharmacists. Such professional consumers may recognize industry-specific product names that regular consumers do not. Many lawyers, for example, readily recognize “Black’s Law” as being a reference to a widely used legal dictionary, whereas the general public would make no such association.28 Even esoteric marks are susceptible to “genericide.”29 Some medical names, like “ANTIBIOTIC,” become generic because it has come to be known as a family of anti-bacterial drugs by both consumers and professionals alike.30 The standard most often applied to determine whether a term is generic is not whether the public determines that the name has some significance as the name of the article, but whether it is the PRINCIPAL significance of the mark to the relevant public.31 According to the U.S. Supreme Court, for the seller to prove trademark significance in a term challenged to be generic, it must prove that the primary significance of the term in the minds of the consuming public is not the product itself but the producer.32 The point is

25.╇ Bayer Co. v. United Drug Co., 272 F. 505, 509 (D.N.Y. 1921). 26.╇ See Abercrombie & Fitch Co., 537 F.2d at 9. 27.╇ See Berner Int’l Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993). 28.╇ E.g., Wikipedia, Black’s Law Dictionary, available at http://en.wikipedia.org/wiki/ Black%27s_Law_Dictionary. 29.╇ See, e.g., Colt Def. LLC v. Bushmaster Firearms, Inc., 486 F.3d 701 (1st Cir. 2007) (“Sometimes, the relevant public will not be the potential purchasing public as a whole but rather ‘a relatively small group of highly trained and knowledgeable customers.’” Citing Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406 (6th Cir.2002) cert. denied 123 S. Ct. 1486 (2003)). (The term “M4” held to be generic for a type of firearm.);â•›Loglan Inst., Inc. v. Logical Language Group, Inc., 962 F.2d 1038 (Fed. Cir. 1992) (In determining genericness, the “relevant public” is the actual and potential purchasers of the goods or services, even if that is a relatively “small group of persons.” The term “Loglan” held to be generic for a type of computing language.); Amer. Cyanamid Co. v. Connaught Labs. Inc., 800 F. 2d 306 (2d Cir 1986) (The term “hib” held to be generic for a type of influenza.); Birtcher Electro Medical Systems, Inc. v. Beacon Labs., Inc., 738 F. Supp. 417 (D.Colo. 1990) (Argon beam coagulator deemed generic irrespective of its lack of recognition within the common public.); Stocker v. Gen. Conference Corp. of Seventh-day Adventists, Cancellation Nos. 17,554; 18,038 (T.T.A.B. 1996). 30.╇ Bayer Co., 272 F.2d at 514. 31.╇ Accord 15 U.S.C. Sec. 1064. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938); Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir.1997); A.J. Canfield Co. v. Honickman, 808 F.2d. 291 (3d Cir. 1986). 32.╇ Kellogg Co., 305 U.S. at 118. I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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that where some consumers may regard the mark to be a trademark while others may regard it as a generic mark, it has to be one or the other.33 Thus, if a consumer survey demonstrated that 75 percent of those interviewed thought the mark to be generic than this is its “principal significance.”34 A key doctrine in testing for genericness is Judge Learned Hand’s ruling, “Whether a word is generic depends on what buyers understand by the word.”35 The Seventh Circuit cited that rule when concluding that “light beer” is a generic name.36 The court, in discussing Judge Hand’s ruling from 1921, said that Judge Hand was referring to a coined word for a commercial product that was alleged to have become generic through common usage. He was not suggesting that the meaning of a familiar basic word in the English vocabulary can depend on the associations the word brings to consumers as a result of advertising.37

8.03╇ TRADEMARKS BECOMING GENERIC MARKS AND VICE VERSA

Users and buyers of products will often use the trademark in a generic sense—XEROX and KLEENEX are good examples. Instead of using the trademark as a noun, people will use the trademark as a verb, for example, requesting, “Please Xerox this document for me.” Or, someone might ask you to “google” a topic or issue, rather than asking you to use Google to conduct the research. KLEENEX, liked XEROX, has become an almost generic describer of any kind of facial tissue. Here, one might ask, “Do you have a Kleenex?” Other trademarks have morphed into the generic word as well, because they are so descriptive—like FRIGIDAIRE, ASPIRIN, YO-YO, ZIPPER, and FIBREGLAS (often spelled generically as fiberglass). It is possible for a designation to be generic in specific parts of the country rather than nationally. YELLOW CAB, for instance, may be deemed generic in downtown New York City where medallion-carrying taxi cabs 33.╇ See, e.g., Rudolph Intern., Inc. v. Realys, Inc., 482 F.3d 1195 (9th Cir. 2007) (A trademark “is a generic term and cannot be a valid trademark” where “the primary significance of the trademark is to describe the type of product rather than the producer.” Citing Filipino Yellow Pages, 198 F.3d at 1147.); Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528 (7th Cir. 2003); King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) (“[A]lthough a substantial majority of the public knows and uses the word ‘thermos,’ only a small minority of the public knows that this word has trademark significance.”) 34.╇ See King-Seeley Thermos, 321 F.2d at 581. 35.╇ Bayer Co., 272 F. at 509. 36.╇ Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990, 997 (7th Cir. 1979), cert. denied, 444 U.S. 1102 (1980). 37.╇ Id. [â•›164â•›]â•… Trademark Surveys

are painted yellow,38 but in other parts of the country, it may designate a specific brand and source of taxi cabs.39 There are also situations where various words generically describe the same product—like SUPER GLUE, INSTANT GLUE, and KRAZY GLUE, all of which are trade names for a type of cyanoacrylate based fastacting adhesive.40 In general, none of the generic designations can be trademarked, as “[a]ll of the generic names for a product belong in the public domain.”41 Similarly, audio-cassette-recorded books may have any number of generic describers—AUDIO BOOKS, BOOKS ON TAPE, TALKING BOOKS, BOOKS ON CASSETTES, etc, none of which may achieve trademark status.42 However, the generic category is “RECORDED BOOKS,” and it is possible to trademark a distinctive word that designates a source, such as VIACOM Recorded Books. Commensurate with the Genericness Doctrine, terms that are currently recognized as a generic designation cannot be appropriated by a supplier for individual trademark use.43 Only on very rare occasions can a mark that was once used generically be elevated to trademark status from the public domain.44 For example, Microsoft Corp. the developer of the Windows

38.╇ Accord 34 R.C.N.Y. §â•‡ 4–01(b) 39.╇ E.g., Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 930 (9th Cir. 2005)(“[T]he unique New York City government regulation of taxicabs is irrelevant to the trademark issues presented by this case, and in particular, deciding the significance of the voluntary use of marks in commerce in different geographic areas.”); Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 376 (1st Cir. 1980) (A term can be generic in one geographic market but not in another.). 40.╇ See Loctite Corp. v. Nat’l Starch & Chem. Corp., 516 F. Supp. 190 (S.D.N.Y 1981) (“The fact that there have been other terms used to denominate the category of cyanoacrylate adhesives also does not disturb our finding as to the generic character of ‘Super Glue.’”). 41.╇ In re Sun Oil Co., 426 F.2d 401 (C.C.P.A. 1970). See also Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855 (C.C.P.A. 1962); In re Candy Bouquet Int’l, Inc., Appl. No. 78058216, n. 5 (T.T.A.B. 2004). 42.╇ In re Recorded Books Inc., 42 U.S.P.Q. (BNA) 2d 1275 (T.T.A.B. 1997). 43.╇ See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 1997) (“A seller must not be permitted to appropriate as the name of its brand a term by which the public knows the product category to which the brand belongs.”); Mil-Mar Shoe Company, Inc., v. Shonac Corp., 75 F.3d 1153 (7th Cir. 1996) (“[A company] cannot appropriate the English language, and by doing so render a competitor inarticulate.” Citing Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609–10 (7th Cir.1986).). 44.╇ See, e.g., Goodyear Tire & Rubber Co. v. H. Rosenthal Co., 246 F. Supp. 724 (D.Minn.1965) (“[W]ords not capable of being adopted as trademarks because they are generic or descriptive may become entitled to legal protection if one producer makes such extensive use of them that the public regards the words used as synonymous with the manufacturer.”); In re Meyer & Wenthe, Inc., 267 F.2d 945, 949 (C.C.P.A. 1959) (“[B]efore [a] word [can] be considered a trade mark, it must have become practically obsolete as a generic name for the article and must be recognized by the public as a trade mark rather than as a generic term of the English language.” Internal citations omitted.); Keller Prods. v. Rubber Linings Corp., 213 F.2d 382, 386 (7th Cir. 1954); Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir.1953),. I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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computer operating system (OS) and owner of the federally registered WINDOWS trademark, argued that “Windows” has received widespread use as a trademark and that the public has come to understand “Windows” to be a trademark rather than a generic name.45 In a 2005 article in The Trademark Reporter, Legal Scholar Mark Levy wrote that “[t]he district court’s conclusion that the issue of the genericness of ‘Windows’ can be determined solely by looking at the world of 1985 when the mark was adopted is unsound.”46 8.04╇ PROVING AND DISPROVING GENERICNESS

When a plaintiff asserts a federally registered trademark, there is a strong presumption that the trademark is valid.47 Therefore, if the defendant contends that the mark is a generic name, the defendant then bears the corresponding burden of proof.48 In contrast, the burden of proof lies with the plaintiff if the mark is not federally registered.49 The following types of evidence have been used to prove genericness: 1. Competitor’s Use—generic use by competitors never contested by the plaintiff.50

Cf. In re Minnetonka, Inc., 212 U.S.P.Q. (BNA) 772, 782 (T.T.A.B. 1981). See generally Wayne S. Osoba, “The Legislative Response to Anti- Monopoly: A Missed Opportunity to Clarify the Genericness Doctrine,” 1985 U. Ill. L. Rev. 197, § II.B. 45.╇ Microsoft Corp. v. Lindows.com Inc., 64 U.S.P.Q. (BNA) 2d 1397, 1398 (W.D. Wash. 2002), later proceedings 319 F. Supp. 2d 1219 (W.D. Wash. 2004). 46.╇ Mark C. Levy, “From Genericism to Trademark Significance: Deconstructing the DeFactor Secondary Meaning Doctrine,” 95 Trademark Rep. 1197 (2005). 47.╇ Accord 15 U.S.C. § 1115(a). See Zobmondo Entm’t LLC v. Falls Media, LLC, 602 F.3d 1108, 1116 (9th Cir. 2010); Yellow Cab Co. of Sacramento, 419 F.3d at 928; KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1068 (9th Cir. 2003) (“Federal registration of a trademark endows it with a strong presumption of validity.”) 48.╇ See Yellow Cab Co. of Sacramento, 419 F.3d at 928 (“[R]egistered marks are endowed with a strong presumption of validity, and a defendant has the burden of showing genericness by a preponderance of the evidence.”); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir.2002) (if the plaintiff establishes the mark was properly registered, the burden shifts to the defendant to show that the mark is generic); Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir. 1982) (citations omitted) (“The general presumption of validity resulting from federal registration includes the specific presumption that the trademark is not generic.”); Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775–76 (9th Cir.1981). 49.╇ See Yellow Cab Co. of Sacramento, 419 F.3d at 928; Filipino Yellow Pages, 198 F.3d at 1146. 50.╇ See Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974–75 (8th Cir. 2006); Nartron Corp., 305 F.3d at 406; King-Seeley Thermos Co., 321 F.2d at 579; Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, 297 (S.D.N.Y. 2000) (“Generic use of a term by a trademark holder’s competitors weighs in favor of genericness. Generic use by competitors which the trademark [â•›166â•›]â•… Trademark Surveys

2. Plaintiff ’s Use—If the party asserting trademark status itself uses the term as a generic name, this is strong evidence of genericness.51 3. Dictionary Definitions—These often can be relevant and sometimes persuasive in determining public usage of the word.52 4. Media Usage—This includes usage in trade journals and newspapers.53 5. Testimony of Persons in the Trade—This evidence involves the understanding of those who are familiar with the marketplace usage of the designation in question and can be helpful as evidence of genericness. However, affidavits, testimony, or declarations from friendly employees and dealers are clearly biased and have little weight.54 8.05╇ CONSUMER SURVEYS TO DETERMINE GENERICNESS

Surveys have become the legal standard for proving or disproving genericness.55 Due to a lack of any direct evidence, Judges, who are now accustomed to survey evidence, often expect to receive surveys to assist them in

holder has not challenged strongly supports a finding of genericness.”); Brandwynne v. Combe Int’l Ltd., 74 F. Supp. 2d 364, 381 (S.D.N.Y.1999). 51.╇ See Colt Def. LLC, 486 F.3d at 711; Schwan’s IP, LLC, 460 F.3d at 974–75; Nartron Corp., 305 F.3d at 406; Retail Servs, Inc. v. Freebies Publ’g, 364 F.3d 535 (4th Cir. 2004); Pilates, Inc. 120 F. Supp. 2d at 297 (“A plaintiff ’s own generic use of its marks supports a finding of genericness. . . .”) 52.╇ See Schwan’s IP, LLC, 460 F.3d at 974–75; Steak n Shake Co. v. Burger King Corp., 323 F. Supp. 2d 983, 992 (E.D. Mo. 2004) (noting that a court may consider “dictionaries, newspapers, consumer surveys, advertisements, and other publications”). Cf. Creative Gifts, Inc. v. UFO, 235 F.3d 540, n. 5 (10th Cir. 2000). 53.╇ See Harley Davidson, Inc., 164 F.3d at 811 (Media use of a term in a generic sense is strong evidence of genericness.); Murphy Door Bed Co., 874 F.2d at 102; Steak n Shake Co., 323 F. Supp. 2d at 992; Pilates, Inc. 120 F. Supp. 2d at 297. 54.╇ E.g., Self-Realization Fellowship Church v. Ananda Church of Self- Realization, 59 F. 3d 902 (9th Cir., 1995); In re Merrill Lynch, Pierce, Fenner, and Smith, 828 F.2d 1567, 1571 (Fed.Cir.1987) (“Evidence of the public’s understanding of [a] term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.”) 55.╇ See, e.g., Stuhlbarg Int’l Sales Co. Inc., v. John D. Brush & Co., 240 F.3d 832 (9th Cir. 2001); Schering Corp. v. Pfizer, Inc., 189 F.3d 218 (2d Cir. 1999) (“Surveys are . . . routinely admitted in trademark and false advertising cases to show . . . genericness of a name . . . which depend[s] on establishing that certain associations have been drawn in the public mind.”); Coca-Cola Co., 692 F.2d at 1254; Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670 (S.D.N.Y. 1963). See also Robert H. Thornburg, “Trademark Survey Evidence: Review of Current Trends in the Ninth Circuit,” 21 Santa Clara Computer & High Tech. L. J. 715 (2005); Neal Miller, “Facts, Expert Facts, and Statistics,” 40 Rutgers L. Rev. 101 (1987). For a comprehensive discussion of consumer surveys, see Susan S. Bellifemine, “Primary Significance: Proving the Consumer’s Perception,” 14 Seton Hall L. Rev. 315 (1984). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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resolving disputes regarding genericness.56 A litigant who does not introduce a survey to support a generic challenge may be viewed as less than serious by some judges. One judge said: One of the best indications of a term’s character is consumer regard of the term either as common descriptive name for the item or one that distinguishes the goods of one producer from those of another. Neither side in this case has produced any consumer surveys or similar evidence. Both sides are at fault for such laxness.”57

There are two well-recognized survey models to test for genericness58: [A] The Thermos Survey—This type of survey originated from the American Thermos Products Co. v. Aladdin Industries, Inc., case that was decided in 1963, and was first used to prove that “thermos” was a generic name.59 Such a survey usually begins with a series of questions, essentially placing the consumer into an imaginary retail situation and then asking how that respondent would request a particular product.60 A portion of the “Thermos Survey” is partially recreated below: Q — Are you familiar with the type of container that is used to keep liquids, like soup coffee, tea, or lemonade, hot or cold for a period of time? Q — If you were going to buy one of those containers tomorrow — that is the type that keeps food or beverages hot or cold — what type of store would you select to make that purchase? Q — What would you ask for—that is, what would you tell the clerk you wanted?61

56.╇ See Thornburg, supra note 55, at 835 (“Despite their costs, survey evidence has become a mainstay in trademark disputes within the Ninth Circuit. . . . [C]urrent trends suggest that district courts within the Ninth Circuit prefer multiple-surveys that are litigation specific, conducted within several geographic areas and at large metropolitan areas throughout the country.”) See also Berner Int’l Corp. v. Mars Sales Co., 987 F. 2d 975 (3d Cir. 1993) (“[D]irect consumer evidence, e.g., consumer surveys and testimony is preferable” in determining Genericness. . . . Judges . . . often expect to receive evidentiary assistance by surveys in resolving generic disputes.” Internal citations omitted.); Heroes Inc. v. Boomer Esiason Hero’s Found. Inc., 43 U.S.P.Q. (BNA) 2d 1193 (D.D.C. 1997). 57.╇ Gimix, Inc. v. JS&A Group, Inc., 213 U.S.P.Q. (BNA) 1005, 1006 (N.D. Ill. 1982). 58.╇ See E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 195 (3d Cir. 2008) (“Plaintiffs seeking to establish the descriptiveness of a mark often use one of two types of survey evidence.” Court identifies and discusses “Teflon Survey” and “Thermos Survey.”). 59.╇ 207 F. Supp. 9 (D.Conn. 1962), aff’d, 321 F.2d 577 (2d Cir. 1963). 60.╇ See id., 207 F. Supp. at 21. See also E.T. Browne Drug Co., 538 F.3d at 195–98; Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 490–491 (S.D.N.Y. 1968); In re Network Assoc. Tech., Inc., 2005 WL 363395, at *4–7 (T.T.A.B. 2005) (unpublished). See also Hans Zeisel & David Kaye, Prove It with Figures: Empirical Methods in Law and Litigation, 148–50 (Springer: 1997). 61.╇ 207 F. Supp. at 22, endnote 8. [â•›168â•›]â•… Trademark Surveys

When testing approximately three thousand respondents, 75 percent responded “thermos” and 11 percent answered “vacuum bottle.”62 In response to a follow-up question, 12 percent indicated that “Thermos” had some trademark significance.63 of the main drawbacks of this protocol is that when a very strong trademark has brand loyalty, respondents may answer with what they believe to be the trademark and not mention the generic name.64 They might have indicated “Thermos brand.” Consequently, in the American Thermos case, it became necessary to probe deeper and ask such questions as: Can you think of other words that you would use to ask for a container that keeps liquids hot or cold? Do you know the names of any manufacturers who make containers to keep liquids hot or cold? Can you name any trademarks or brand names that are used for these containers?65

Unfortunately, the probes weaken the findings and uncover a new set of problems in defending the survey. [B] The Teflon Survey—The other popular genericness survey protocol, the “Teflon Survey,” was first used by the Du Pont company in 1975 to prove that TEFLON was not generic.66 This interesting protocol actually is an educational process for the respondent in distinguishing between generic versus branded products and includes a test.67 The Teflon Survey was first executed by a major market research company, Burke Marketing Research Inc., and carried out via a telephone survey to more than one thousand men and women.68 Here is how a portion of the telephone interview unfolded: I’d like to read 8 names to you and get you to tell me whether you think it is a brand name or a common name; by brand name, I mean a word like Chevrolet, which is

62.╇ 207 F. Supp. at 21–22. 63.╇ Id. at 22. 64.╇ See, e.g., G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 676 F. Supp. 1436 (E.D.Wis. 1987); In re DC Comics, Inc., 689 F.2d 1042 (C.C.P.A. 1982); In re Minnetonka, Inc., 3 U.S.P.Q. (BNA) 1714 (T.T.A.B. 1987). Vincent N. Palladino, “Genericness and the Trademark Clarification Act of 1984: Five Years Later,” 79 TMR 657, 662–64 (1989); Jerre B. Swann & Vincent N. Palladino, “Surveying ‘Genericness’: A Critique of Folsom and Teply, 78 TMR 179, 180 (1988). 65.╇ 207 F. Supp. at 22, endnote 8. 66.╇ See E. I. DuPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975). See also Ty, Inc., 353 F.3d at 530–31. See generally Auto. Club of S. Cal. v. The Auto Club, Ltd., 2007 WL 704892, at *4 (C.D.Cal. 2007) (unpublished); UGG Holdings, Inc. v. Severn, 2005 WL 5887187, at *5 (C.D.Cal. 2005) (unpublished); Arrow Trading Co., Inc. v. Victorinox A.G. and Wenger, S.A., 2003 WL 21509858, at *14 (T.T.A.B. 2003) (unpublished). 67.╇ See, e.g., E.T. Browne Drug Co., 538 F.3d at 195. See also Zeisel, supra note 60, at 150–52. 68.╇ E. I. DuPont de Nemours & Co., 393 F. Supp. at 519, 525. I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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made by one company; by common name, I mean a word like automobile, which is made by a number of different companies. So, if I were to ask you. “Is Chevrolet a brand name or a common name?” what would you say? Now, if I were to ask you, “Is washing machine a brand name or common name?” what would you say? (If the respondent understands continue, if he/she does not understand, explain again,) Now, would you say ____ is a brand name or a common name?69 The eight names provided included: STP, THERMOS, MARGARINE, TEFLON, JELLO, REFRIGERATOR, ASPIRIN and COKE.70

The results: Name

Brand/%

Common/%

Don’t know/%

STP THERMOS MARGARINE TEFLON JELLO REFRIGERATOR ASPIRIN COKE

90 51 9 68 75 6 13 76

5 46 91 31 25 94 86 24

5 3 1 2 1

The Teflon protocol can be adapted to other situations.71 In addition to the basic survey, specific products within the same category can be added.72 In addition to a telephone survey,73 the Teflon protocol works nicely in

69.╇ See Vincent N. Palladino, “Assessing Trademark Significance: Genericness, Secondary Meaning and Surveys,” 92 TMR 857, 873 (2002); E. Deborah Jay, “Genericness Surveys in Trademark Disputes: Evolution of Species,” 99 TMR 1118, 1127–43 (2009). 70.╇ See Jay, supra note 69, at 1126 (Teflon Survey “began by explaining the difference between a ‘brand name’ and a ‘common name,’ and it then provided respondents with an example of each (e.g., Chevrolet and automobile). After confirming the survey respondents’ understanding of the difference between a brand name and a common name, interviewers read a list of eight words, including the word at issue, or the “test” word (TEFLON), and seven other words that served as “controls” (STP, COKE, JELLO, THERMOS, MARGARINE, REFRIGERATOR, and ASPIRIN).” 71.╇ See. See also, March Madness Athletic Ass’n, 310 F. Supp. 2d at 804–09; SportsChannel Assocs. v. Comm’r of Patents and Trademarks, 903 F. Supp. 418, 426–27 (E.D.N.Y. 1995); In re Callaway Golf Co., 2001 WL 902004, at *7 (T.T.A.B. 2001) (unpublished). 72.╇ E.g., Great Am. Rest. v. Domino’s Pizza, LLC, 2008 WL 1808532, at *3 (E.D.Tex. 2008); UGG Holdings, Inc. v. Severn, 2005 WL 5887187, at *5. 73.╇ E.g., March Madness Athletic Ass’n, 310 F. Supp. 2d at 803 (“Approximately 700 adults were contacted by phone. . .”); SportsChannel Assocs., 903 F. Supp. at 421 (random-digit dial telephone survey). [â•›170â•›]â•… Trademark Surveys

person-to-person mall intercept interviews74 using flash cards. The initial eight brands provide a good benchmark for comparing the specific products and/or brands in question.75 In addition, using a screening mechanism ensures members of the relevant target market are questioned.76 The Teflon protocol can also work as an Internet survey.77 Through the various Internet survey devices such as Survey Monkey, Zoomerang and others, the Teflon protocol can be presented beautifully with real time tabulations. (3) Single Source Cases—Potentially the most difficult type of case to resolve by survey evidence is one where there is but one seller of the alleged generic product.78 “It is very difficult to probe the public mind as to the generic or brand significance of a term when they have never had occasion to consider the difference because there has always been one seller of that thing.”79 Suffice to say, using a scientific survey in single source cases would be most challenging. 8.06╇ GENERICIDE

When a trademark becomes so strong that it develops into a colloquial or generic descriptor of its general class of product, it runs the risk of losing its trademark status and being reduced to a generic name.80 For example: “Can you hand me a KLEENEX.” “Can you GOOGLE this word.” 74.╇ E.g., Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926, 934 (M.D.Tenn. 2001) (respondents interviewed in various shopping malls in different states); G. Heileman Brewing Co., 676 F. Supp. at 1487. 75.╇ See Jay, supra note 69, at 1126. See also Arthur J. Greenbaum, et  al., “A Proposal for Evaluating Genericism after ‘Anti-Monopoly,’” 73 TMR 101 (1983). 76.╇ See March Madness Athletic Ass’n, 310 F. Supp. 2d at 803; SportsChannel Assocs., 903 F. Supp. at 421; Intel Corp. v. Advanced Micro Devices, Inc., 756 F. Supp. 1292, 1296 (N.D. Cal. 1991). See also Jay, supra note 69, at 1134 (“A Teflon Survey includes additional qualifying questions at the beginning to ensure that respondents comprehend the common name/brand name dichotomy.”) 77.╇ C.f., In re Hotels.com, L.P., 91 U.S.P.Q. (BNA) 2d 1532 (Fed. Cir. 2009); In re Steelbuilding. com, 415 F.3d 1293 (Fed. Cir. 2005). 78.╇ See Osoba, supra note 44. E.g., Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 611 F.2d 296 (9th Cir. 1979). 79.╇ McCarthy, McCarthy on Trademarks, § 12:17 at 12–55. 80.╇ See Lanham Act § 14, 15 U.S.C. § 1064 (2000) (A registered trademark is subject to cancellation at any time “if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered. . . .”). See also Sung In, “Death of a Trademark: Genericide in the Digital Age,” 21 Rev. Litig. 159 (2002); Rohan Massey, “Generically Unfair: de-German Domain Name Disputes,” 13 Ent L Rev 46 (2002); Vanessa B. Pierce, “If It Walks Like a Duck and Quacks Like a Duck, Shouldn’t It Be A Duck?: How a ‘Functional’ Approach Ameliorates the Discontinuity Between the ‘Primary Significance’ Tests for Genericness and Secondary Meaning,” 37 N.M.L. Rev. 147, 154 (2007). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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“Please XEROX these two pages.” “I just bought a FIBERGLASS fishing rod.” “I just cut my hand and need a BANDAID.” “Please wrap this package with SCOTCH TAPE.” “The food is wrapped in CELLOPHANE.” When trademarks are genericized, legal protection is at risk.81 The owner of the trademark has to work diligently to prevent such an occurrence by rigidly working to prevent misuse of the trademark by educating businesses and consumers on appropriate trademark use, avoiding using the trademark in a generic manner, and systematically and effectively enforcing its trademark rights.82 A good technique is to adopt a generic descriptor such as SCOTCH brand cellophane tape, KLEENEX tissues, WINDOWS operating system, or FIBRE-GLAS insulation.83 Whether or not a mark is popularly identified as genericized, the owner may still be able to enforce the owner’s right to the mark as long as the trademark exclusively continues to identify the owner as the source of the good or service.84 The problem is, if it can be proven that the mark became generic, there is generally no hope of further trademark protection.85

81.╇ See, e.g., King-Seeley Thermos Co., 321 F.2d at 581; DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir. 1936). See also Anne Gilson Lalonde et al., Trademark Protection and Practice, § 2.02 (2006). 82.╇ See Pierce, supra note 80, at 156 (“[T]he owners of popular trademarks like Xerox, Mace, and Day-Glo [] spend millions of dollars in advertising and educational efforts in an attempt to prevent their trademarks from becoming generic.” While these efforts ostensibly help to educate the public, “they in no way immunize the trademark holder from loss.” Id., footnote 77.) Se, also Shawn M. Clankie, Brand Name Use in Creative Writing: Genericide or Language Right?, Perspectives on Plagiarism and Intellectual Property in a Postmodern World, (SUNY Press: 1999). 83.╇ See, e.g., Ty Inc., 353 F.3d at 532 (“[A] trademark owner [can] sponsor a generic term precisely in order to avoid its mark becoming generic.”); CPC Int’l v. Balzola Foods Corp., 224 U.S.P.Q. (BNA) 85, 89 . (S.D.Fla. 1984). See, e.g.,, Ralph H. Folsom & Larry L. Teply, “Trademarked Generic Words,” 89 Yale L.J. 1323, 1227 and 1330 (1980) (Noting that federal case law “suggests that every instance of trademark degeneration is traceable to acts of omission or commission on the part of the trademark holder.” A trademark holder therefore “has both the ability and responsibility to shape the public’s use and understanding of its trademark.” Quoting Hearings on H.R. 3685 Before the Subcomm. on Courts, Civil Liberties, and the Admin. of Justice of the H. Comm. on the Judiciary, 96th Cong. 10 (1979).). 84.╇ E.g., Stix Prods., Inc., 295 F. Supp. 479; Coca-Cola Co., 692 F.2d 1250. See also Pierce, supra note 80, at 148 (“If a term functions as a trademark—if it indicates a source and distinguishes goods—it is a trademark, notwithstanding any external label that has been attached to it.”)_ 85.╇ See General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 625 (8th Cir.1987) (“A mark [] designated as generic . . . is precluded from trademark protection under any circumstances.” Internal citations omitted.). See also Pierce, supra note 80, at 148 (“Once a term has been designated as generic for particular goods, its status as generic is basically fixed, precluding it from ever attaining trademark status for those goods.”) [â•›172â•›]â•… Trademark Surveys

Therefore, if you are the alleged infringer, your goal is to prove the trademark has become generic. If you are trying to defend it, then your goal is to prove the trademark has not become generic. The Teflon protocol works equally well in both cases. 8.07╇ PRECAUTIONS TO PREVENT GENERIC USE

Many times, fault for letting a product become a generic name can be blamed on the seller who brings out a new and unfamiliar product and does not give the product an easily recognized generic name in addition to the arbitrary, fanciful, or suggestive term the seller considers its trademark.86 In such cases, and only after years of use, will the seller realize that the name he has given the product has become the generic name.87 Examples are CELLOPHANE88, THERMOS89 and ASPIRIN90. XEROX is an example of a brand name that came very close to losing trademark protection because the term had taken on generic usage by the public.91 Marketers can guard against this by using the brand name as an adjective and the generic name as the noun.92 Examples: SCOTCH brand cellophane  tape; KLEENEX facial tissues; BAND-AID bandages; BIG MAC hamburger 8.08╇ EXAMPLES OF GENERIC AND NON-GENERIC TERMS

The following terms are held as generic. ALE HOUSE93 ART DECO94

86.╇ Lanham Act § 45, 15 U.S.C.A. § 1127 (“A mark shall be deemed to be ‘abandoned’ if . . . any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is use. . . .”). See, e.g., BellSouth Corp. v. DataNational Corp., 60 F.3d 1565 (Fed. Cir. 1995); AmCan Enters., Inc. v. Renzi, 32 F.3d 233 (7th Cir. 1994); Filipino Yellow Pages, 198 F.3d at 1147; Pilates, Inc., 120 F. Supp. 2d 286. 87.╇ See Murphy Door Bed Co., 874 F.2d at 101; King-Seeley, 321 F.2d at 579. 88.╇ DuPont Cellophane Co., 85 F.2d 75. 89.╇ King-Seeley Thermos Co., 321 F.2d 577. 90.╇ Bayer Co., 272 F. 505. 91.╇ See also Clankie, supra footnote 82, at 255–57. 92.╇ Id. 93.╇ Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137 (4th Cir. 2000). 94.╇ In re Ricc-Italian Silversmiths, Inc., 16 U.S.P.Q. (BNA) 2d 1727 (T.T.A.B. 1990). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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BABY OIL95 BATH OIL BEADS96 COLA97 E-TICKET98 GOLD CARD99 MATCHBOX100 MONOPOLY101 SHREDDED WHEAT102 SUPER GLUE103 YO-YO104 The following terms, have been held to be non-generic: BEER NUTS105 CALIFORNIA COOLER106 CHICKEN TENDERS107 FIRST FEDERAL108 HONEY BAKED HAM109 LEVI’S110 POLAROID111 TEFLON112 THE UNCOLA113

╇ 95.╇ Johnson & Johnson v. Carter-Wallace, Inc., 487 F. Supp. 740 (S.D.N.Y. 1979). ╇ 96.╇ In re Calgon Corp., 157 U.S.P.Q. (BNA) 415 (T.T.A.B. 1967). ╇ 97.╇ Dixi-Cola Labs. v. Coca-Cola Co., 117 F.2d 352 (C.C.A. 4th Cir. 1941). ╇ 98.╇ Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q. (BNA) 2d 1385 (T.T.A.B. 1999). ╇ 99.╇ Am. Express Co. v. Mastercard Int’l, Inc., 685 F. Supp. 76 (S.D.N.Y. 1988). 100.╇ J. Kohnstam, Ltd. v. Louis Marx & Co. et al., 280 F.2d 437 (C.C.P.A. 1960). 101.╇ Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir. 1982). 102.╇ Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). 103.╇ Loctite Corp. v. Nat’l Starch & Chem. Corp., 516 F. Supp. 190 (S.D.N.Y 1981). 104.╇ Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965). 105.╇ Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934 (10th Cir. 1983). 106.╇ California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451 (9th Cir. 1985), 107.╇ Burger King Corp. v. Pilgrim’s Pride Corp., 705 F. Supp. 1522 (S.D.Fla. 1988). 108.╇ First Fed. Sav. & Loan Ass’n of Council Bluffs v. First Fed. Sav. and Loan Ass’n of Lincoln, 929 F.2d 382 (8th Cir. 1991). 109.╇ Schmidt v. Quigg, 609 F. Supp. 227 (T.T.A.B. 1984). 110.╇ In re Arthur Holland, Inc., 192 U.S.P.Q. (BNA) 494 (T.T.A.B. 1976). 111.╇ Marks v. Polaroid Corp., 129 F. Supp. 243 (D.Mass. 1955). 112.╇ E. I. DuPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975). 113.╇ Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A. 1974). [â•›174â•›]â•… Trademark Surveys

Some geographic terms have become so widely used they have become generic.114 For example: CHINA plates and bowls BOSTON baked beans115 IRISH coffee KEY LIME pie PEKING duck PHILLY steak sandwich SWISS cheese116 WORCESTERSHIRE sauce117 8.09╇ THE DIFFERENCE BETWEEN HIGHLY DESCRIPTIVE AND GENERIC TERMS

Although challenging to define with absolute certainty, there is a boundary between highly descriptive terms and generic terms.118 The difference is crucial no matter how difficult is to determine, because if the term is held to be generic it can never achieve trademark status, and, if it is descriptive, the term can be given trademark protection upon proof of secondary meaning.119

114.╇ See Boden Prods., Inc. v. Doric Foods Corp., 552 F. Supp. 493, 497 (N.D.Ill. 1982) (“There may be some products where the geographic label has lost its meaning entirely and represents a type of product and is thus generic.”). 115.╇ See In re Nantucket, Inc., 677 F.2d 95, 102 n.2 (C.C.P.A. 1982) 116.╇ See 7 C.F.R. § 58.712; Schweizerishe Kaeseunion Bern v. Saul Starck, Inc., 293 N.Y.S. 816 (Sup. Ct. 1937). 117.╇ Lea v. Deakin, 15 F. Cas. 95, No. 8154 (C.C.N.D. Ill. 1879). 118.╇ See In Re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987) (“Whether a term is classified as ‘generic’ or as ‘merely descriptive’ is not easy to discern when the term sits at the fuzzy boundary between these classifications.”); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir.1983) (“The labels are more advisory than definitional, more like guidelines than pigeonholes”). See also Express Servs., Inc. v. Careers Exp. Staffing Servs., 176 F.3d 183, 185–187 (3d Cir. 1999); In re Townsend Eng’g Co., Ser No. 75/363,944 (T.T.A.B. 2000) (unpublished). 119.╇ See Express Servs., 176 F.3d at 186 “‘generic’ and ‘descriptive’ are separate categories. Moreover, these categories have different implications for trademark analysis. If a term is generic, it is not entitled to trademark protection, whereas a descriptive term may be entitled to some protection if it has acquired a secondary meaning. See also Steven D. Anderman, The Interface between Intellectual Property Rights and Competition Policy, at (Cambridge University Press 2007) (“Perhaps of even greater significance than the distinction between suggestive and descriptive terms is the porous boundary between descriptive and generic terms because generic terms can never attain trademark status.”) I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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In one case, Sun Oil Co. was attempting to use CUSTOM BLENDED as a trademark for a grade of gasoline being sold at the pump.120 The majority opinion by the Court of Customs and Patent Appeals held the mark to be unregisterable because it was “merely descriptive121; however, Acting Chief Judge Rich, in a concurring opinion, said he believed the name to be more than merely descriptive but ‘generic of that genus of gasoline.’122 Therefore, according to Judge Rich, the generic name, CUSTOM BLENDED, could never achieve trademark status, “even though at some times, or to some people, or in some places, it has a de facto secondary meaning.”123 In the 1980s, the Trademark Trial and Appeals Board (T.T.A.B.) created a category of terms that was so highly descriptive as to be incapable of trademark status. Among those terms, include LAW & BUSINESS124, AMERICA’S FRESHEST ICE CREAM125, INDUSTRIAL RELATIONS COUNSELORS.126 8.11╇ ABBREVIATIONS, MISSPELLINGS, AND COMPOSITE GENERIC TERMS

An abbreviation of a generic name, which still conveys to the buyer the original generic connotation of the abbreviated name, is still “generic.”127 In two examples, “B and B” was held to be generic for a mixture of brandy and Benedictine liqueur128, while MOGAS was held to be generic as an abbreviation of motor and gasoline129. In computer technology, RAM (remote access memory) and ROM (read only memory) are considered generic names for computer components.130 The use of “‘e- for things like

120.╇ In re Sun Oil. Co., 426 F.2d 401 (C.C.P.A. 1970). 121.╇ Id., at 403. 122.╇ Id., at 403–4. 123.╇ Id., at 403. 124.╇ In re Harcourt Brace Jovanovich, Inc., 222 U.S.P.Q. (BNA) 820 (T.T.A.B. 1984). 125.╇ In re Carvel Corp., 223 U.S.P.Q. (BNA) 65 (T.T.A.B. 1984). 126.╇ In re Indus. Relations Counselors, Inc., 224 U.S.P.Q. (BNA) 309 (T.T.A.B.1984) 127.╇ See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1359–61 (11th Cir. 2007) (“Abbreviations of generic words may become protectable if the party claiming protection for such an abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public.”); G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 993–94 (7th Cir.1989);â•›Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506 (C.C.P.A.1956) . 128.╇ Martell & Co. v. Societe Anonyme de la Benedictine, 116 F.2d 516 (C.C.P.A. 1941). 129.╇ Exxon Corp. v. Motorgas Oil & Refining Corp., 219 U.S.P.Q. (BNA) 440 (T.T.A.B. 1983). 130.╇ Intel Corp. v. Radiation Inc., 184 U.S.P.Q. 54 (T.T.A.B. 1974). [â•›176â•›]â•… Trademark Surveys

‘e-commerce’ and ‘e-ticket’ also has been held to be generic as is Internet and ‘net.’131 The following are two examples of generic abbreviations: “HOMO” for homogenized milk132 and “IM” for instant messaging.133 There are also technical abbreviations held to be generic, such as “PLPA,” which is a generic abbreviation for the amino acid DL-phenylalanine as used as a food supplement134, and “PVP,” which is a generic abbreviation of the term “polyvinylpyrrolidone”135. In general, misspellings of generic names that do not change the generic significance to the buyer remain generic names.136 Examples include: JYMBAR137 for a climbing exercise bar, SAFE T PLUG for safety plug138, LITE for light beer139, and GLUE STIK for glue stick140. However, when the misspelling is not an obvious misspelling and adds a fanciful element to the word, it is registerable—such as MUFFUNS.141 Using a generic mark within a different context and combined with a prefix or suffix, such as combining “ize” with nylon or vinyl to create NYLONIZE or VINYLIZE, respectively, will not usually change the nature of the word from being generic.142 In addition, adding to a company name INC., CORP., CO. or LTD cannot transform a generic name into a protectable trademark.143

131.╇ See Interstellar Starship Servs., Ltd. v. EPIX, Inc. 983 F. Supp. 1331 (D. Or. 1997), rev’d, 184 F.3d 1107 (9th Cir. 1999), 125 F. Supp. 2d 1269 (D. Or. 2001), aff’d, 304 F.3d 936 (9th Cir. 2002) Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q. 2d 1385 (T.T.A.B. 1999). 132.╇ Foremost Dairies, Inc. v. the Borden Co., 156 U.S.P.Q. 153 (T.T.A.B. 1967). 133.╇ America Online, Inc. v. AT&T Corp., 64 F. Supp. 2d 549 (E.D.Va. 1999), aff’d. in part, vacated and remanded in part, 243 F.3d 812 (4th Cir. 2001). 134.╇ Aminolabs, Inc. v. Natural Organics, Inc., 228 U.S.P.Q. 783 (C.D.Cal. 1985). 135.╇ In re General Aniline & Film Corp., 136 U.S.P.Q. 306 (T.T.A.B. 1962). 136.╇ See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345 (Fed. Cir. 2001); Leon Finker, Inc. v. Schlussel, 469 F. Supp. 674, 679–80 (S.D.N.Y.), aff’d, 614 F.2d 1288 (2d Cir. 1979); C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976); American Aloe Corp. v. Aloe Creme Laboratories, Inc., 420 F.2d 1248 (7th Cir. 1970); In re Hubbard Milling Co., 6 U.S.P.Q. 2d 1239 (T.T.A.B. 1987). See also T.M.E.P § 1209.03(j) (“A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark.”) 137.╇ AMF Inc. v. Battle Creek Equip. Co., 167 U.S.P.Q. 375 (T.T.A.B. 1970). 138.╇ Harvey Hubbell, Inc. v . Dynamic Instrument Corp., 165 U.S.P.Q. 412 (T.T.A.B. 1970). 139.╇ Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 81 (7th Cir. 1977), cert. denied 434 U.S. 1025 (1978). 140.╇ In re Dennison Mfg. Co., 229 U.S.P.Q. 141 (T.T.A.B. 1986). 141.╇ In re Grand Metro. Foodservice, 30 U.S.P.Q. 2d 1974 (T.T.A.B. 1994). 142.╇ Dranoff-Perlstein Assoc. v. Sklar, 967 F.2d 852, 859 (3d Cir. 1992); Scholler Bros., Inc. v. Bick, Inc., 110 U.S.P.Q. (BNA) 431 (Comm’r Pat. 1956). 143.╇ Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007); In re Patent & Trademark Servs. Inc., 49 U.S.P.Q. (BNA) 2d 1537 (T.T.A.B. 1998). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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Combining generic words into a single word has been ruled to be protectable.144 For example, TUMBLEBUS, was deemed not generic for a mobile bus with a gymnasium for children’s physical education145, as was SUPERWATERFINISH for kraft paper products.146 Repeating a generic name, however, will not in and of itself turn that name into a protectable mark; one example of this is a company that wanted to name itself CHAIRS! CHAIRS! CHAIRS!.147 While some generic combinations, like AMERICAN AIRLINES or GENERAL MOTORS, can result in protectable trademarks, others cannot.148 Some examples of marks that combined generic labels that do not form protectable names include RECORDEDBOOKS,149 MEDICAL DISPOSABLES,150 ARIZONA REALTY,151 SCREENWIPE.152 8.12╇ LOGO REGISTRATIONS OF GENERIC NAMES

Logos pose different problems and opportunities. Federal registration of a logo or design that uses a generic name is plausible so long as the word is displayed in very distinctive lettering or is accompanied by a distinctive design.153 However, the design does not give exclusive rights to

144.╇ See Courtenay Commc’ns Corp. v. Hall, 334 F.3d 210, 216 (2d Cir.2003) (“[A]lthough [a] composite trademark owner [is] not allowed to restrict others’ use of the generic elements of the composite mark. . ., the use of the generic words plus distinctive elements . . . [can] be protectable.”); In re Dial-A-Mattress Operating Corp., 240 F.3d at 1345; In re The Am. Fertility Soc’y, 188 F.3d 1341, 1345 (Fed. Cir. 1999); In re Gould Paper Corp., 834 F.2d 1017, 1018 (Fed. Cir. 1987); U.S. Lines, Inc. v. Am. President Lines, Ltd., 219 U.S.P.Q. (BNA) 1224 (T.T.A.B.1982). 145.╇ Tumblebus, Inc. v. Cranmer, 399 F.3d 754 (6th Cir. 2005). 146.╇ In re Chesapeake Corp. of Virginia, 164 U.S.P.Q. (BNA) 395 (C.C.P.A. 1970). 147.╇ See McCarthy, McCarthy on Trademarks, § 12:39 at 12–132.3. 148.╇ See, e.g., Surgicenters of Am., Inc. v. Med. Dental Surgeries Co., 601 F.2d 1011 (9th Cir. 1979). 149.╇ In re Recorded Books Inc., 42 U.S.P.Q. (BNA) 2d 1275 (T.T.A.B. 1997). 150.╇ In re Medical Disposables Co., 25 U.S.P.Q. (BNA) 2d 1801 (T.T.A.B. 1992). 151.╇ Arizona Int’l, Ltd. v. Merrill Lynch Realty Operating, Ltd. Partnership, 22 U.S.P.Q. (BNA) 2d 1156 (D. Ariz. 1991). 152.╇ Gould Paper Corp., 834 F.2d 1017. 153.╇ See Courtenay Commc’ns Corp., 334 F.3d at 216 (Marks with generic words can be legally protected if they “combine generic words with distinctive lettering, coloring, or other design elements.”); In re Miller Brewing Co., 226 U.S.P.Q. (BNA) 666 (T.T.A.B. 1985) (“LITE” held to be protectable when used with distinctive lettering); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560 (Fed.Cir.1987) (“SWEATS” next to droplets is a protectable mark); In re Venturi, Inc., 197 U.S.P.Q. (BNA) 714 (T.T.A.B.1977) (“THE PIPE” is protectable with distinctive design elements and words “The” and “Pipe” expressly disclaimed). [â•›178â•›]â•… Trademark Surveys

the wording.154 The only exclusive right held is that of the graphic depiction.155 Examples offered are: 1. The distinctive depiction of LITE, by the Miller Brewing Company156; and 2. The registerable display of the word, MUFFUNS.157 8.13╇ FOREIGN PREFIXES FOR GENERIC NAMES

Some commercial entities utilize marks that precede a generic name with a foreign prefix, such as “Le,” “La,” “El,” “Das,” etc. In 1988, the Trademark Trial and Appeal Board gave the green light to this idea by permitting the name “La Yogurt” to be registered.158 The rationale is that LA YOGURT would likely be perceived as the combination of something foreign with an English term that formed a product that was not generic as a whole.159 However, LE RESTAURANT,160 LE CROISSANT SHOP161 and LA LINGERIE162 were held to be non-registerable. Pursuant to the doctrine of foreign equivalents, marks with words from common foreign languages must be deemed generic if their accepted foreign use is generic.163 Some foreign words that have been held to be generic in the United States include CAFÉ (for coffee),164 FRUTTA FRESCA (fresh fruit),165 and VINKA (wine in Polish).166

154.╇ See, e.g., Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 119 (2d Cir.1999); GMT Prods., L.P. v. Cablevision of New York City, Inc., 816 F. Supp. 207 (S.D.N.Y.1993) (Court found “The Arabic Channel” to be generic, but concluded the plaintiff successfully registered mark, which includes a graphic design, on the condition that it disclaim exclusive rights to use of the words the, Arabic, and channel.); Real News Project, Inc. v. Indep. World Television, Inc., No. 06 Civ. 4322 (S.D.N.Y. 2008); Florist’s Transworld Delivery Ass’n v. Teleflora, Inc., 208 U.S.P.Q. (BNA) 858 (T.T.A.B. 1980). 155.╇ Id. 156.╇ Miller Brewing Co., 226 U.S.P.Q. (BNA) 666. 157.╇ In re Grand Metro. Foodservice Inc., 30 U.S.P.Q. (BNA) 2d 1974 (T.T.A.B. 1994). 158.╇ In re Johanna Farms, Inc., 8 U.S.P.Q. (BNA) 2d 1408 (T.T.A.B. 1988). 159.╇ Id., at 1413. 160.╇ See id. at 1416. 161.╇ In re France Croissant Ltd., 1 U.S.P.Q. (BNA) 2d 1238 (T.T.A.B. 1986). 162.╇ In re Bonni Keller Collections, 6 U.S.P.Q. (BNA) 2d 1224, (T.T.A.B. 1987). 163.╇ See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369 (Fed. Cir. 2005); In re Thomas, 79 U.S.P.Q. (BNA)2 d 1021 (T.T.A.B. 2006). 164.╇ Nestle’s Milk Prods., Inc., v. Baker Imp. Co., Inc., 182 F.2d 193 (C.C.P.A. 1950). 165.╇ In re Sambado & Son Inc., 45 U.S.P.Q. (BNA) 2d 1312 (T.T.A.B. 1997). 166.╇ Ex parte Monarch Wines Co., 117 U.S.P.Q. (BNA) 454 (Comm’r Pat. 1958). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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8.14╇ ADDITIONAL INSIGHTS [A]╇ Gilson on Trademarks

The following reference to surveys is taken from Volume 1 of Gilson on Trademarks, by Anne Gilson Lalonde167: Another test of genericness is the Learned Hand purchaser-understanding test, which was codified by the Trademark Clarification Act of 1984.168 The issue was a rigorous battle over whether the well-known board game, MONOPOLY, had become generic.169 The Patent and Trademark Office rejected a trademark application from Anti-Monopoly, Inc. because of Parker Brothers’ (which was owned by General Mills) registration for MONOPOLY. Anti-Monopoly then brought suit charging that MONOPOLY was an invalid trademark and sought cancelation of the registration. Ultimately, the Ninth Circuit ruled that the trademark, MONOPOLY, was an unprotected generic term.170 The rationale for the ruling: MONOPOLY had become a generic term because in the minds of the consuming public, the designation MONOPOLY “primarily denotes a product, not the product’s producer.”171 The result was derived in large measure from the court’s analysis of survey evidence offered by each of the parties in the dispute. General Mills based its survey, characterized as a “brand-name survey” on a TEFLON-type survey.172 The court rejected that survey as irrelevant, and reasoning that the game was, in fact, made by one company, and held that the survey provided the court no information about the primary meaning of MONOPOLY in the minds of consumers.173 The court instead found that Anti-Monopoly’s THERMOS-type survey had more compelling evidence of genericness.174 There, 53 percent of the interviewees stated that they were familiar with “business board games of the kind which players buy, sell, mortgage and trade city streets . . . and win by bankrupting all other players.”175 Of the 53 percent, 80 percent states that they would ask a sales clerk for MONOPOLY if they wanted to purchase such a game.176 167.╇ 168.╇ 169.╇ 170.╇ 171.╇ 172.╇ 173.╇ 174.╇ 175.╇ 176.╇

Anne Gilson Lalonde et al., Gilson on Trademarks, § 2.02 (2006). S. Rep. No. 98–627 (98th Cong., 2d Sess.) (1984). Anti-Monopoly v. General Mills Fun Group, 684 F. 2d 1316 (9th Cir. 1982). See id, at 1326. See id. See id. at 1323. See id. See, id. at 1323–24. See, id. at 1323. See id.

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The Ninth Circuit held that the district court clearly erred in rejecting Anti-Monopoly’s Thermos study—65 percent of interviewees who had recently purchased a MONOPOLY game, or who intended to purchase one in the near future, chose the statement, “I want a ‘Monopoly’ game because I am interested in playing ‘Monopoly.’ I don’t much care who makes it” as the statement that best expressed their reason for purchasing or intending to purchase MONOPOLY. Some 32 percent chose instead this statement: “I would like Parker Brothers” “Monopoly Game” primarily because I like Parker Brothers’ products.” The court reasoned: In our earlier opinion we made it clear that what was relevant was the sense in which a purchaser used the word ‘Monopoly’ when asking for a game by that name. The survey was a reasonable effort to find that out and was modeled closely on what we said in our opinion.177

Furthermore, the court dismissed as irrelevant General Mills’s own TEFLON-type study showing that 68 percent of persons interviewed stated they would purchase TIDE detergent because they like that product rather than because they like Proctor and Gamble products.178 The court concluded that instead of demonstrating the inapplicability of the motivation survey to trademark significance, if this were indeed true, Proctor and Gamble may have cause for alarm.179 The Ninth Circuit Court concluded that, “as applied to a board game, the word ‘Monopoly’ has become ‘generic’ and the registration of it as a trademark is no longer valid.”180 The case was remanded to the District Court to “determine whether Anti-Monopoly is taking reasonable care to inform the public of the source of its product, and if it finds that this is not so may enjoin the sale of anti-monopoly (sic) save upon appropriate conditions.”181 [B]╇ Thornburg on Surveys

The following insights on Genericness are offered by Robert H. Thornburg in “Trademark Surveys: Development of Computer-Based Survey Methods,” published in the John Marshall Review of Intellectual Property Law in 2005:182 177.╇ See id. at 1325. 178.╇ See id. at 1326. 179.╇ See id. 180.╇ Id. 181.╇ Id. 182.╇ Robert H. Thornburg, “Trademark Surveys: Development of Computer Based Survey Methods,” 4 J. Marshall Rev. In. Prop. L. 91 (2005). I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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Consumer surveys have become almost de rigueur in litigation over genericness.183 Judges often expect to receive evidentiary assistance by surveys in resolving generic disputes.184 A mark is “generic” when it is a common descriptive name for a class of product, not connected to any specific brand, and not afforded trademark protection.185 The Third Circuit has discussed what makes an identifier generic: When a producer introduces a product that differs from an established product class in a significant, functional characteristic, and uses the common descriptive term of that characteristic as its name, that new product becomes its own genus, and the term denoting the genus becomes generic if there is no commonly used alternative that effectively communicates the same functional information.186

When performing a trademark survey to test for genericness, the survey is trying to quantify for the court the context of how the disputed mark is perceived by consumers.187 However, the most important inquiry required of a genericness survey is to ascertain whether a mark services a dual use, and more particularly, whether it operates in consumers’ minds as both a form of a product as well as a particular source for that product.188 The most successful products and their accompanying trademarks oftentimes fall victim to their own success and are forced into a genericness fight with a competitor. Trademarks like Band-Aid®, Post-It®, Jell-O®, and Xerox® have all fallen victim to some sort of genericness claim, in that they were alleged to represent products just as much as a source of those products.189 By far, the most frequently used survey format for genericness surveys is the “Teflon” type survey. Most genericness surveys provide an alternative to allow participants to answer that they view a name as both a product and a good. In addition, it is important to allow for follow up questions for answers that essentially respond, “I don’t know.” Unlike surveys for likelihood of confusion or secondary meaning, the percentage of individuals who identify the name with a product, rather than a particular good, must be greater than 50 percent.190

183.╇ See id. at 109 (internal citations omitted). 184.╇ See id. 185.╇ See id., citing Harlem Wizards Entm’t Basketball, Inc. v. NBA Prop., Inc., 952 F. Supp. 1084, 1092 (D.N.J. 1999). 186.╇ Id., citing A.J. Canfield Co. v. Honickman, 808 F.2d 291, 293 (3d Cir. 1986). 187.╇ See id. 188.╇ See id. 189.╇ See id. 190.╇ See id. [â•›182â•›]â•… Trademark Surveys

Most reported genericness surveys seek to qualify whether consumers associate a word with a brand or source, rather than merely a type of product. In J & J Snack Foods, Corp. v. Nestle USA, Inc., the defendants submitted as evidence a genericness survey for plaintiff ’s registered mark BREAK & BAKE.191 The report essentially asked questions regarding the descriptiveness of the plaintiff ’s mark.192 Essentially, the survey questions sought to elicit the opinion of the survey participants as to whether they believed that BREAK & BAKE was a common name or a brand name. The result of the survey found that 20 percent believed the name belonged to Pillsbury and 18 percent thought it belonged to a non-existent company called BREAK & BAKE. Despite such figures essentially showing that 60 percent of participants did not believe that BREAK & BAKE belonged to a particular brand or company, the court declined to find that the mark was generic.193 Genericness surveys must do more than ask participants ‘What is the product.’ In Big Island Candies, Inc. v. Cookie Corner, for example, the court entertained a genericness survey provided by Big Island Candies (hereinafter ‘BIC’) which asked participants ‘Who are you’ type questions.194 Specifically, the question was phrased as ‘Who makes this product?’ The court pointed out that the survey’s apparent author was the BIC president, rather than an independent survey expert, which led the court to cast doubts on its reliability. Thus, the court placed no weight on the survey.195 The trademark survey must create lines of questions that specifically ask whether a consumer associates a name as a product or a brand. Often, such survey evidence is used with other forms of evidence to show genericness. Another type of evidence used in genericness cases is general market research, but such evidence as proof of genericness is far less reliable than a survey.196

191.╇ See id. at 109–110, discussing J & J Snack Foods, Corp. v. Nestle USA, Inc., 149 F. Supp. 2d 136 (D.N.J. 2001). 192.╇ See id. at 110 (internal citations omitted). 193.╇ See id. 194.╇ See id., discussing Big Island Candies, Inc. v. Cookie Corner, 269 F. Supp. 2d 1236, 1250 (D. Haw. 2003). 195.╇ See id. (internal citations omitted). 196.╇ See id. I S S U E S I N V O LV I N G G E N E R I C M A R K S â•…

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CHAPTER 9

Trade Dress Issues

The traditional definition of “trade dress” is the appearance of the product, including packaging, labels, wrappers, and containers. While most instances of trade dress involve these traditional examples, the notion has been extended to include “a totality of elements.” This extension goes beyond packages and containers and includes “a combination of elements in which a product or service is presented to the public.” Included are such objects as: the cover of a book, magazine, or catalog; a distinctive display of products in a retail store environment; or a distinctive décor, menu, or style of a restaurant. Other elements included are shapes and designs of the products themselves. As with trademarks, the elements of trade dress must be used in such a way as to denote the product source. Many types of designations protectable as trade dress are also registrable as trademarks. 9.01╇ TRADE DRESS RELATES TO THE TANGIBLE, NOT THE ABSTRACT

Trade dress relates to the tangible elements of product presentation, not abstract elements and, therefore, would not cover marketing strategies and themes. Examples of what trade dress would not cover: • A Scandinavian marketing theme for promoting premium ice cream; • A concept for advertising medical insurance; • A concept for a television reality show centered on the idea of switching spouses from disparate families and watching the result;

• A design for a line of outdoor institutional furniture; • The idea of holding a home builders’ show at the St. Louis Convention Center; • A television infomercial selling kitchen knives. 9.02╇ GENERIC TRADE DRESS

A number of courts have held that the generic bar to giving trademark status to words and symbols also applies to a modified form of “generic trade dress.”1 Included in this area would be greeting cards featuring animals, plants, and people cut to the shape of the featured image in the photo. Other things that would be considered generic and would not be protectable include the use of rainbows; Christmas-type symbolism such as evergreen trees, holly and candles; a pumpkin theme for Halloween; and a heartshaped symbol for Valentine’s Day. 9.03╇ EXAMPLES OF PROTECTABLE TRADE DRESS

The following examples of trade dress have been deemed to be protectable; • The distinctive shape of the HUMMER vehicle and the Cadillac Escalade grill2 • The shape of the LIFESAVER candy with the hole3 • The inverted Y-design on JOCKEY underwear4 • The back pocket stitching pattern of LEVI’s jeans5 • The three stripes on ADIDAS’s “Superstar” model athletic shoes6 • The polka dot background used on the container of SWIFTS kitchen cleanser7

1.╇ See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Home Builders Ass’n v. L & L Exhibition Mgt., Inc., 226 F.3d 944 (8th Cir. 2000); Nora Beverages, Inc. v. Perrier Group of America, Inc., 164 F.3d 736 (2d Cir. 1998). 2.╇ General Motors Corp. v. Hot Carts, Inc., C.A. No. 04–72939, 2005 U.S. Dist. LEXIS 26321 (E.D. Mich. Sept. 212, 2005). 3.╇ Nabisco Brands, Inc. v. Conusa Corp., 772 F. Supp. 1287 (M.D.N.C. 1989, aff’d 892 F.2d 74 (4th Cir. 1989). 4.╇ In re Jockey Int’l, Inc., 192 U.S.P.Q. (BNA) 579 (TTAB 1976). 5.╇ Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986). 6.╇ Adidas America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or. 2008). 7.╇ In re Swift & Co., 42 C.C.P.A. 1048, 223 F.2d 950 (1955). [â•›186â•›]â•… Trademark Surveys

9.04╇ SECONDARY MEANING FOR TRADE DRESS PROTECTION

The enigma regarding secondary meaning and the likelihood of confusion is reminiscent of the old philosophical riddle: “If a tree falls in the forest and no one is around to hear it, does it make a sound?” The test for trade dress to achieve secondary meaning is similar to the test for a trademark. In 1992, the U.S. Supreme Court held that a trade dress that is inherently distinctive is protectable under the Lanham Act without showing that it has acquired secondary meaning.8 However, in the 2000 Wal-Mart decision, the Court held that product design trade dress could never be inherently distinctive and always required proof of secondary meaning.9 This clearly presents a dilemma. Many products have the same package and container shape configurations, which would make trade dress secondary meaning especially hard to prove. Only something so distinctive—like the shape of a Coca-Cola bottle—could meet this test. 9.05╇ COMMON TESTS FOR INHERENTLY DISTINCTIVE PACKAGING TRADE DRESS

[A] The Abercrombie Test—The basic principle under the Abercrombie10 test is that if the trade dress features that one seeks to protect are arbitrary, serve no function, describe the product, and assist in the effective packaging of the product, then the trade dress is inherently distinctive. For example, a ketchup bottle in the shape of a tomato would be non-functional and inherently distinctive. Therefore, the tomato-shaped bottled would serve to identify a single source for the product and would be protectable. [B] The Seabrook Test—Under the Seabrook11 test of inherent distinctiveness of non-verbal symbols such as trade dress, one asks (1) whether the design or shape is a common, basic shape or design; (2) whether the design is unique or unusual in a particular field; and (3) whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods that consumers view as mere ornamentation. The LEVI’s design on the back pocket of denim jeans passes the Seabrook test: it is not a common shape or design; it is unique in its field; and it is not a mere refinement of something that is commonly possessed by ╇ 8.╇ Two Pesos, 505 U.S. 763. ╇ 9.╇ Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000). 10.╇ Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002). 11.╇ Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977). T R A D E D R E S S I S S U E S â•…

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products in this field. On the other hand, a plastic gallon container for milk would not pass the Seabrook test: it is a common shape; it is not unique in its field; and it is a mere refinement of a commonly-adopted container. 9.06╇ UNFAIR COMPETITION IN TRADE DRESS RELATING TO LIKELIHOOD OF CONFUSION

The test of trade dress infringement is whether there is a likelihood of confusion resulting from the impression of the defendant’s alleged trade dress infringement. This is an almost identical test to likelihood of confusion for a trademark, logo, symbol, etc. It is viewed from the eye and mind of an ordinary consumer purchaser. If the accused trade dress bears little similarity to the senior user’s trade dress, no infringement has occurred. A court will compare the non-functional elements of the trade dress that indicate to a prospective purchaser the source of the product. Such elements may include: size, shape, color, design, texture and/or word and symbol marks of both the product and its package. 9.07╇ TRADE DRESS SURVEY DYNAMICS

Surveys can be difficult in proving trade dress. Therefore, any trade dress survey MUST focus on the non-functional aspects of the trade dress. Co-author James T. Berger has done considerable scientific survey work with respect to trade dress infringement, in which he utilized both the Eveready12 and Squirt13 protocols. These protocols can be applied to trade dress infringement. In one case, the author’s client had a professional power tool product with an almost identical appearance as the established maker of the product. The relevant target market was professional workers who either purchased or used the product. Individuals falling under the criteria of “tradesmen” were then invited into a research facility to view the product. With black tape covering the brand name of the product, all that was visible was the product itself and the color scheme. The key question in this survey was: “Who do you believe puts out this product?” It was clear from the results that those who were interviewed could identify the source of the product. Another case involved a hot sauce product that had a distinctive appearance based on a transparent bottle and green cap. In this instance, a variety

12.╇ Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 381 (7th Cir. 1976). 13.╇ Squirt Co. v. Seven Up Co., 628 F.2d 1086 (8th Cir. 1980). [╛188╛]╅ Trademark Surveys

of hot sauce products were presented to consumers in a mall intercept environment. The brand names of the products were covered by black tape. The key question in the survey was: “Which of these products, if any, do you believe were put out by the same company?” In answer to the question, a significant number selected the two products with the transparent bottles and green caps. In yet another case for trade dress infringement, those participating in the mall intercept survey were given a section of a magazine for review. Within this section was an ad for a well-known brand of vodka with a very distinctive (non-functional) label. Under a drape were five vodka brands without any alteration of the labels. The respondents were asked to view the magazine and put it aside. The drape was then removed revealing the five vodka bottles. None of the five vodka bottles was a product depicted in the magazine. The alleged infringing product had a label that was quite similar to the well-known brand advertised in the magazine. The question was: “Which, if any, of these products do you believe you saw advertised in the magazine we just showed you.” A significant number of respondents selected the alleged infringing product. In another example of a color-based test, a line of stationary woodworking products was presented that were well known for the color of the products. The alleged infringer produced products that had the same color. Members of the relevant target market were selected and shown an array of six different stationary power tools—all the same kind of tool and photographed at approximately the same angle, and there were no brand names visible on the products. The respondents were asked to focus on each product individually, and were asked who they believed put out each product and why. Most people were able to properly identify the products, and the reason they most often gave was the color. In the case involving the two products with the same color, a majority of people identified the alleged infringing product as being put out by the plaintiff. In this very unique survey, trade dress was used to test for both likelihood of confusion and secondary meaning. 9.08╇ ADDITIONAL INSIGHTS—FUNCTIONALITY [A]╇ Thornburg on Functionality

A key aspect of trade dress surveys is functionality. According to author Robert H. Thornburg: As a general matter, the doctrine of “functionality” seeks to prevent the overreach of perpetual trademark protection for product configurations that do not promote T R A D E D R E S S I S S U E S â•…

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competition by protecting the source’s reputation and goodwill, but rather function solely to inhibit legitimate competition regarding a useful utilitarian product feature [citation omitted]. Functionality often arises in the context of trade dress under Section 43(a) of the Lanham Act, which protects non-registered product configurations that serve as source identifiers [citation omitted]. The Supreme Court articulated in Qualitex Co. v. Jacobson Products Co. that the essential issue regarding functionality of a product feature is whether the grant of exclusive protection accorded under the Lanham Act would create a “significant” non-reputation related competitive advantage.14

Thornburg wrote that in order to determine whether a product feature is a functional non-protectable trade dress feature, courts engage in a twopart test outlined in Inwood Laboratories v. Ives Laboratories.15 The Inwood test asks (i) whether the asserted product feature is “essential” to the use or purpose of the product, and (ii) whether the feature affects the cost or quality of the product. While the issue of whether a product feature affects the cost or quality of the product is an issue readily calculated through financial evidence, the first question of Inwood regarding the essential nature of a feature is more elusive. Thus, according to Thornburg, trademark surveys seek to answer the question of whether consumers associate a product feature as being essential to the function of the product. However, he adds, while the first prong can often be dismissed as a product feature that is not essential, courts frequently rely heavily upon the issue of whether a feature affects the costs or quality of the product.16 Framing Appropriate Functionality Questions

“Because of the growing trend of limiting the admissibility of surveys regarding issues of functionality and moving toward surveys directed solely to the essential need for a product feature, trademark experts have struggled with insufficient case law to formulate functionality questions,”17 according to Thornburg, adding that only a few cases such as OddzOn Products v. Just Toys18 have provided direction. Thornburg maintains that, first, a proper functionality survey should ask survey participants whether they believe there is overall similarity apart from the fact that both product configurations contain a common design required for such products to function for

14.╇ Robert H. Thornburg, “Trademark Surveys: Development of Computer-Based Survey Methods,” John Marshall Review of Intellectual Property Law (2005), at 110. 15.╇ Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982). 16.╇ Thornburg at 111. 17.╇ Id. at 112. 18.╇ OddzOn Prods. V. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997). [â•›190â•›]â•… Trademark Surveys

their intended purpose. Another potential question, he suggests, is to ask a survey participant “whether a product feature would affect a purchasing decision,” in order to ascertain whether the decision was based on ornamental appeal or technical differences.19 “A question format that asks the participant to ascertain whether the exclusivity of a product feature would allow a manufacturer to compete unfairly in the marketplace would simply be too direct,” writes Thornburg.20 However, he suggests, as articulated in OddzOn, asking the “Why” question after asking why a consumer prefers a product feature will often filter out whether consumer appeal is based on aesthetic reasons.21 Thus, Thornburg points out that as asserted in Spotless Enterprises, Inc. v. A&E Products Group L.P.,22 the key is to ask questions regarding the aesthetic qualities of the products.23 A trademark survey, Thornburg suggests, can certainly ask a consumer participant whether the cost difference between two disputed product configurations would create an issue in purchasing either product, which serves to assess the second Inwood factor. However, as previously discussed, Thornburg adds that the cost factor of the Inwood test need not be tested in a functionality survey as a financial expert may better discuss this aspect during trial.24 [B]╇ More Insight on Functionality—Mitchell Wong

Mitchell M. Wong, writing in the 1998 Cornell Law Review, provided the following insight on functionality in “The Aesthetic Functionality Doctrine and the Law of Trade-Dress Protection.”25 He explains two theories for functionality: (1) the “Identification” Theory, and (2) the “Competition” Theory. The “Identification” Theory

According to Wong, the “identification” theory of functionality was the original understanding of functionality, which found expression in the Restatement (First) of Torts.26 The Ninth Circuit’s seminal opinion in

19.╇ Thornburg at 112. 20.╇ Id. 21.╇ Id. 22.╇ Spotless Enters., Inc. v. A&E Prods. Group L.P., 294 F. Supp. 2d 322, 347 (EDNY 2003). 23.╇ Thornburg at 112. 24.╇ Id. 25.╇ Michael M. Wong, “The Aesthetic Functionality Doctrine and the Law of Trade Dress Protection,” Cornell Law Review, 1998. 26.╇ Restatement (First) of Torts § 742 & cmt. A (1938). T R A D E D R E S S I S S U E S â•…

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Pagliero v. Wallace China27 illuminated the shadowy contours of this theory, writes Wong: “Functional” . . . might be said to connote other than a trade-mark purpose. If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. On the other hand, where the feature, or more aptly, design, is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for purposes of identification and individuality and, hence, unrelated to basic consumer demands in connection with the product, imitation may be forbidden [even] where the requisite showing of secondary meaning is made.28

Wong points out that under the identification theory, trademark law provides protection for a very narrow range of designs. Specifically, a feature can be trademarked only if it serves to identify the manufacturer or sponsor of the product, he writes. If a feature renders a product desirable for any reason other than association with a source or sponsor, then it is “functional” (i.e., serves a function other than identification of source). Consequently, such a feature may not receive trademark protection under this theory.29 According to Wong, this understanding of functionality is reflected in four interrelated tests currently used by the courts. Because the case law has not formally named these tests, Wong identifies them as “indicia of source,” “commercial success,” “actual benefit,” and “consumer motivation.”30 He points out that a caveat regarding the description of these tests is appropriate because the tests rarely exist in the pristine forms that Wong presents. He adds that courts often have labeled a test by one name and then applied completely different standards. He further writes that the problem of identifying separate tests is made more difficult because they do not always appear as bright-line standards in the case law. Rather, Wong adds, the courts often use them as factors to weigh functionality of a product feature. These factor-based balancing tests, however, vary in the requisite evidence and in the difficulty of proof, he writes.31 Following are Wong’s four tests under the identification theory: 1.╇ The “Indicia of Source” Test

According to Wong, the “indicia of source” test asks whether a feature serves only to identify a source or sponsor of the product. If the feature’s 27.╇ 28.╇ 29.╇ 30.╇ 31.╇

198 F.2d 339 (9th Cir. 1952). Id. at 343 (citations omitted). Wong at 1133. Id. Id. at 1133–34.

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sole effect is to identify a source or sponsor, Wong writes, the feature then is nonfunctional, and therefore, may be trademarked. He adds that if the feature provides any additional utility (e.g., enhances the efficacy of the product), then the feature is functional and may not warrant trade dress protection. The indicia of source test seeks to confine the role of trademark protection to acting only as a “trademark” (i.e., a mark used to facilitate trade). Thus, according to Wong, it ensures that trade-dress protection is not vested in any manner incongruous with the primary purpose of trade dress law.32 He cites for example, the International Order of Job’s Daughters v. Lindeburg & Co.33 case where the defendant marketed jewelry bearing emblems which were created by the plaintiff organization as logos. On appeal, the court observed that consumers purchased the jewelry for the attractiveness of the design and not because the consumers made any association between the jewelry’s design and the plaintiff. Accordingly, Wong points out that the court held that the jewelry design was functional and gave judgment for the defendant.34 In another case cited by Wong—Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing, Inc.35—he points out that the defendant marketed cloth badges bearing the plaintiff organization’s logo. Unlike Job’s Daughters, Wong writes, the court found the badges to be nonfunctional. According to Wong, the key difference between these two cases was the Boston Hockey court’s factual finding that the “the embroidered symbols [we]re sold not because of any . . . aesthetic characteristic but because they [we]re the trademarks of the hockey teams.”36 Thus, under the “indicia of source” test, a design must strictly be found to identify a specific source in order to qualify for trade-dress protection, writes Wong.37 2.╇ The “Actual Benefit” Test

The “actual benefit” test, according to Wong, focuses on whether a feature confers any benefit (such as mechanical utility or aesthetic pleasure) other

32.╇ 33.╇ 34.╇ 35.╇ 36.╇ 37.╇

Id. at 1134–35. 633 F.2d 912 (9th Cir. 1980). Wong at 1135. 510 F.2d 1004 (5th Cir.). Id. at 1013. Wong at 1136. T R A D E D R E S S I S S U E S â•…

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than information about, or in association with, a source. If the feature provides any such additional value, Wong writes, it is deemed to be functional, and thus, unfit for trademark protection. He adds that, on the other hand, a feature that provides no value beyond source information or association is nonfunctional and may therefore receive trademark protection.38 Wong points out that the actual benefit test is focused on preventing valuable intellectual creations from receiving perpetual monopolies via trademark law. For example, he cites In re Owens-Corning Fiberglas Corp.,39 where the plaintiff sold insulation dyed pink, but the plaintiff unsuccessfully sought to register the color pink with the Trademark Office for use on its insulation. On appeal, the circuit court held that the color pink, when applied to insulation, was not functional because there was no benefit to be derived from the use of that color. Wong points out that, in contrast, the plaintiff in Fisher Stoves, Inc. v. All Nighter Stove Works, Inc.,40 manufactured a black, wood burning stove. The plaintiff sought damages and an injunction against the defendant for selling stoves which, among other things, were also black. The court declined to grant the relief sought because the coloration provided an actual functional benefit of enhancing heat dispersion, writes Wong.41 Wong suggests that the difference between the indicia of source test and the actual benefit test is most clearly revealed in Vuitton et Fils S.A. v. J. Young Enterprises.42 There, the plaintiff, a prestigious garment manufacturer, marketed a line of luggage that was decorated with a repeating pattern made from its logo. According to Wong, the defendant (imitator) argued that the pattern was not used for identification, but for decorative purposes. Therefore, the defendant insisted that the pattern was functional and, therefore, unprotectable. The Ninth Circuit agreed that the logo pattern did more than merely identify the source. According to Wong, this finding would have rendered the pattern functional under the indicia of source test. However, the court found that the pattern was not functional because the actual benefit of the pattern was to identify the maker. Thus, it is easier to obtain a finding of functionality under the indicia of source test than under the actual benefit test, Wong writes.43

38.╇ 39.╇ 40.╇ 41.╇ 42.╇ 43.╇

Id. at 1136–37. 774 F.2d 1116 (Fed. Cir. 1985). 626 F.2d 193 (1st Cir. 1980.) Wong at 1137. 644 F.2d 769 (9th Cir. 1981). Wong at 1137–38.

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3.╇ The “Consumer Motivation” Test

Wong points out that the “consumer motivation” test determines a feature’s functionality by asking whether the feature could persuade a consumer to purchase a product for reasons other than the reputation of a sponsor or a source. If the feature entices consumers to purchase, then it is functional and, hence, may not be trademarked, Wong explains. If the feature does not have such an effect on the consumer, then it is nonfunctional and may be protected. This test operates by indirectly measuring a feature’s non-sourcerelated effect on market demand, according to Wong. A feature that affects market demand for a product for reasons other than the maker’s reputation is presumed to be an aspect that ought not be monopolized by trademark, writes Wong.44 “Proving functionality under the consumer motivation test is more difficult than under the actual benefit test,”45 writes Wong, adding that the distinction between these two tests is best exemplified in Ives Laboratories v. Darby Drug Co.46 In that case, the plaintiff sold a particular prescription vasodilator, a medication that takes the form of a white, crystalline powder. The product, however, was packaged by the plaintiffs in both light-blue and light-blue-and-red capsules. The defendant sought to sell the same drug in capsules bearing the same colors. According to Wong’s interpretation, the trial court found that patients associated those specific colors with the plaintiff ’s drug, and consequently, would sometimes experience anxiety when offered the drug in differently colored capsules. Under the indicia of source test, according to Wong, the colors used by the plaintiff would have been deemed functional because they communicated the identity of the drug as well as the source. Moreover, Wong asserts that under the actual benefit test, the evidence would have suggested that the colors were functional because they produced the actual benefit of allaying patient anxiety.47 However, Wong points out that the appeals court held that the colors were not functional, and therefore reversed the lower court. In doing so, it articulated an even more stringent standard than the actual benefit test, writes Wong. Specifically, the court credited testimony which indicated that “when the doctor or druggist explain[ed] that the different color or different shaped capsules are the same generic drug, patients do not refuse to

44.╇ Id. at 1138–39. 45.╇ Id. at 1139. 46.╇ 638 F.2d 538 (2d Cir. 1981), rev’d sub nom., Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844 (1982). 47.╇ Wong at 1139. T R A D E D R E S S I S S U E S â•…

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accept and use it.”48 Therefore, under the more demanding consumer motivation test, Wong writes that a mere finding of an actual benefit (e.g., patient relief) is immaterial if the actual benefit does not affect consumer behavior.49 4.╇ The “Commercial Success” Test

Wong presents the “commercial success” test as a way to determine whether a feature is “an important ingredient in the commercial success of the product” for reasons other than source identification. Wong’s interpretation is that if the feature aids the manufacturer, the feature is functional and may not be trademarked. However, Wong points out that if the feature does not contribute to the product’s commercial success beyond source identification, the feature is not functional and, thus, may obtain trademark protection.50 “Of the four tests under the identification theory, the commercial success test imposes the heaviest burden upon the party seeking to demonstrate functionality,” writes Wong.51 Unlike the consumer motivation test, Wong points out that the commercial success test is not concerned with whether a feature might have attracted consumer’s interest, but whether the market actually did find (or could find) the feature to be appealing. Thus, the evidence presented for the commercial success test ought to focus on market data as opposed to consumer appeal, writes Wong.52 Wong explains that, for example, in Ives, the court complained that the defendant imitators had failed to “offer any survey of patients’ attitudes with respect to [their choice of brand],” whereas “there was evidence that many generic drugs . . .are successfully marketed in capsules or tablets that do not copy [plaintiff ’s] trademarked product.”53 Thus, Wong suggests the evidence sought by the Ives court was clearly empirical in nature.54 Similarly, Wong points out that in Keene Corp. v. Paraflex Industries,55 the plaintiff attempted to enjoin the defendant from copying one of its luminaire designs. In affirming the trial court’s denial of the injunction, the Third Circuit agreed with the lower court’s empirical finding that the design was 48.╇ 49.╇ 50.╇ 51.╇ 52.╇ 53.╇ 54.╇ 55.╇

Ives at 545 (emphasis added). Wong at 1139. Id. at 1140. Id. Id. Ives, 638 F.2d at 545. Wong at 1140. 653 F.2d 822 (3d Cir. 1981).

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functional because it was “’a sufficiently significant criterion in a sufficiently number [sic] of elections so that the design of a particular wall mounted luminaire has aesthetic or architectural functionality.’”56 Thus, the commercial success test is concerned with the presentation of empirical data on consumer response to a product sign, writes Wong.57 The “Competition” Theory

Wong writes that the “competition” theory of functionality is currently the prevailing theory in the courts and is embraced by the Restatement (Third) of Unfair Competition.58 The competition theory is best explained in the Seventh Circuit’s rejection of the identification theory: [It is an error] to . . . define nonfunctional as serving primarily to identify the manufacturer. Understood literally, this would mean that if a particular design feature had two equally important purposes, one to please consumers and the other to identify the manufacturer, it would be functional. But a trademark, especially when it is part of the product, rather than being just the brand name, is bound to be selected in part to be pleasing; so this definition of functionality could rule out trademark, protection for design features. [T]he fact that a design feature is attractive does not, to repeat, preclude its being trademarked. If effective competition is possible without copying that feature, then . . . it is not a functional feature.59

Thus, according to Wong, the competition theory holds that a feature is functional if giving trademark protection to that feature would enable the holder of the trademark to prevent others from competing in the marketplace. The competition theory permits a broader scope of product features to be trademarked than does the identification theory, according to Wong, because the competition theory’s tests for functionality are based on the concerns of trademark law that favor competition. In other words, the competition theory exists to safeguard market competition for intellectual products. Thus, any mark that does not weaken such competition is not functional, according to Wong, and, hence, may receive trademark protection. Consequently, the competition theory allows more features to be trademarked than the identification theory. The competition theory of 56.╇ 57.╇ 58.╇ 59.╇

Id. at 826 (quoting district court opinion). Wong at 1140–41. Restatement (Third) of Unfair Competition § 17 (1995). W.T. Rogers Co. v. Keene, 778 F.2d 334, 341–43 (7th Cir. 1985). T R A D E D R E S S I S S U E S â•…

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functionality currently embraces six tests, which differ from those used under the identification theory, according to Wong. He identifies these six tests as (1) “comparable alternatives,” (2) “essentiality to usage,” (3) “relation to usage,” (4) “ease of manufacture,” (5) “effective competition,” and (6) “de facto/de jure functionality.”60 Six Tests Under the Competition Theory 1.╇ The “Comparable Alternatives” Test

Wong writes that the test for “comparable alternatives” asks whether trade dress protection of certain features would nevertheless leave a variety of comparable alternative features that competitors may use to compete in the market. If such alternatives do not exist, Wong surmises, the feature is functional; but if such alternatives do exist, then the feature is not functional. Wong adds that the comparable alternatives requirement may necessitate more than the mere existence of one alternative, and may instead require a number of alternatives from which competitors may choose.61 “This test represents the notion that market competition for a product is unduly frustrated if protection for one of its features precludes the marketing of equivalent products,” writes Wong.62 Conversely, he writes, features that have no such preclusive effect do not improperly inhibit competition. In order to remove obstacles to a free market, Wong writes, the comparable alternatives test for functionality seeks to safeguard the existence of competition among similar products. The comparable alternatives test is the conceptual soul of the competition theory, writes Wong, because it ensures that goods are differentiated only in insignificant ways and in a manner that would not adversely affect market competition. As such, every test under the competition theory emanates from this principle.63 2.╇ The “Essential to Usage” Test

“As its name implies, the ‘essential to usage’ test asks whether a feature is essential to the usage of a product,” writes Wong.64 Thus, he suggests this 60.╇ 61.╇ 62.╇ 63.╇ 64.╇

Wong at 1143–44. Id. at 1144–45. Id. at 1145–46. Id. at 1146. Id.

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test is a variant of the actual benefit test. However, for a finding of functionality, the essential to usage test requires a higher level of utility than the actual benefit test. Wong adds that some courts have recast the inquiry (somewhat circularly) by defining an “essential” feature as one that is “dictated by the functions to be performed.”65 Under this test, Wong writes that a feature is functional if it confers a benefit that is indispensable to the product’s use. If the feature is not essential, the feature is nonfunctional and may consequently receive trade dress protection, he writes.66 3.╇ The “Relation to Usage” Test

The “relation to usage” test is a creation of the Third Circuit, according to Wong. This test asks whether the feature is related to the utilitarian function the product or feature. If the feature is highly related to the product’s intended use, then it is functional. However, if a feature is not as related, it is nonfunctional, Wong writes.67 The “relation to usage” test is another close variant of the actual benefit and essential to usage tests, writes Wong. More specifically, he adds, this test straddles the boundaries established by the actual benefit test on one side and the essential to usage test on the other. The relation to usage test is less sensitive than the actual benefit test because it requires more than any mere benefit beyond source identification to find functionality, according to Wong. However, he points out the relation to usage test is more sensitive than the essential to usage test in that it will regard a feature as functional even if it is not wholly essential to the product’s usage.68 4.╇ The “Ease of Manufacture” Test

The “ease of manufacture” test for functionality asks whether a competitor can manufacture the disputed feature at the same or at a lower cost if trademark protection were imposed on that feature, Wong writes. If a competitor cannot so manufacture the feature, then the feature is functional, he adds. For example, Wong cites that in Smith, Kline & French Laboratories v. Clark & Clark,69 the court refused to protect the round shape of pills because of 65.╇ 66.╇ 67.╇ 68.╇ 69.╇

Id. (quoting Stormy Chime Ltd. v. Progroup, Inc., 809 F.2d 971, 975 (2d Cir. 1987)). Id. at 1146–47. Id. at 1147–48. Id. at 1148. 157 F.2d 725, 730 (3d Cir. 1946). T R A D E D R E S S I S S U E S â•…

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the economy of manufacturing pills in that particular shape. Similarly, in Aromatique, Inc. v. Gold Seal, Inc., the court held that the plastic “flower” created by the sealing of a cellophane wrapper over a gift basket was “functional” because it was “one of the most common . . . shapes in packaging” and therefore, protection of the feature would “unduly impair competition.”70 “This rarely invoked test is analogous to the comparable alternatives test in that it asks whether financially comparable methods of manufacturing a product without duplicating the controversial feature exist,” Wong writes. “If such alternatives are available, then the feature is nonfunctional because the infringer could have employed a different method of manufacture so as to avoid confusion. On the other hand, if a feature could not be manufactured in an alternative manner that is equally or less costly, then the feature is merely a consequence of economic considerations, and the cost advantages inherent to the feature’s manufacturing process warrant finding the feature to be functional.”71 5.╇ The “Effective Competition” Test

According to Wong, “The ‘effective competition’ test asks, in amorphous terms, whether trade-dress protection for a product’s feature would hinder the ability of another manufacturer to compete effectively in the market for the product. If such hindrance is probable, then the feature is functional and unsuitable for protection.”72 He adds that If the feature is not a likely impediment to market competition, then the feature is nonfunctional and may receive trademark protection. In form and in essence, writes Wong, the effective competition test is simply a direct application of the competition theory of functionality in the form of a test.73 6.╇ The “De Facto/De Jure” Test

“The ‘de facto/de jure’ test for functionality is not a conceptually distinct ‘test’ as much as it is a method of applying the effective competition test,” Wong writes.74 On matters over which it does not have exclusive 70.╇ 71.╇ 72.╇ 73.╇ 74.╇

28 F.3d 863, 874 (8th Cir. 1994). Wong at 1148–49. Id. at 1149 (citations omitted). Id. at 1149–50. Id.

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jurisdiction, the Federal Circuit applies the substantive law of the forum from which an appeal is taken, according to Wong. Thus, the Federal Circuit does not apply its own law on functionality in all the cases that come before it, he writes. However, in trademark cases over which it does exercise exclusive jurisdiction, the Federal Circuit has favored the de facto/de jure approach in determining functionality, which was first articulated in In re Morton-Norwich Products, Inc.75 In Morton-Norwich, the appellant appealed from a decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board that denied the appellant trademark protection for the shape of its spray bottles. The appellant argued that the limitless variety of spray-bottle designs, coupled with the distinctiveness of its own bottle’s design, permitted the spray bottle’s shape to be trademarked. Without elaboration, the Board took the contrary position that the spray bottle’s design was functional.76 The Federal Circuit disagreed, distinguishing between the lay definition and the legal definition of the term “functional”: [T]he label “functional” has dual significance. It has been used, on the one hand, in lay fashion to indicate “the normal or characteristic action of anything,” and, on the other hand, it has been used to denote a legal conclusion [i.e., that a feature is unprotectable]. . . . [I]f the designation “functional” is to be utilized to denote the legal consequence, we must speak in terms of de facto functionality and de jure functionality, the former being the use of “functional” in the lay sense, indicating that although the design of a product, a container, or a feature of either is directed to performance of a function, it may be legally recognized as an indication of source. De jure functionality, of course, would be used to indicate the opposite-such a design may not be protected as a trademark.77

“Thus, under the Federal Circuit’s analysis, a feature is de facto functional if it imparts any utility to the product,” writes Wong. “However, such a feature might still be protectable despite its utilitarian benefits.”78 Wong points out that the feature is de jure functional, i.e., unprotectable by trademark, only if it is superior to alternative features, thereby enabling the trademark holder to foreclose competition over the market for the feature. In short, Wong writes, the de jure functionality inquiry is congruent to the effective competition test and implicates all the tests under the competition theory.79

75.╇ 76.╇ 77.╇ 78.╇ 79.╇

Id. at 1150 (citing In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982)). Morton-Norwich, 671 F.2d at 1341–42. Morton-Norwich, 671 F.2d at 1337 (quoted by Wong at 1150–51). Wong at 1151. Id. T R A D E D R E S S I S S U E S â•…

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According to Wong, the de facto/de jure analysis is not as much a test as it is an approach to the effective competition test which requires a somewhat formalistic recitation of whether the design in question is de facto functional. “If the design is not found to be de facto functional, then no further investigation need be made to conclude that the design itself is protectable.”80 He points out, however, if the design is found de facto functional, then the fact finder must determine whether the feature is de jure functional by asking whether protection of the feature injures effective competition. Thus, Wong writes the de facto/de jure approach simply incorporates the effective competition test as the second step in a twotiered inquiry.81

80.╇ Id. 81.╇ Id. at 1151–52. [â•›202â•›]â•… Trademark Surveys

CHAPTER 1 0

Dilution Issues

The origin of dilution as a trademark protection issue came from the German court system and was first introduced into the United States during in the 1920s and the 1930s through the writings and congressional testimony of Frank Schechter. Early attempts to incorporate the concept of dilution into the federal trademark laws did not actually materialize until 1996 with the passage of the Federal Trademark Dilution Act of 1995 (effective January 16, 1996) (the “1996 Act”). Prior to 1996, dilution fell under the purview of various state dilution laws. The 1996 federal law was substantially revised and superseded by the Federal Trademark Dilution Revision Act of 2006 (effective October 6, 2006) (the “2006 Act”). The term “dilution,” as defined in the Lanham Act, means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless or the presence or absence of: (1) competition between the owner of the famous mark and the other parties; or (2) likelihood of confusion, mistake or deception.1 There are two basic forms of dilution—“blurring” and “tarnishment.” The applications each form are significantly different. There is yet another wrinkle in the dilution spectrum and that is “free riding,” which is based on a junior user taking a “free ride” on the senior user’s trademark. Dilution is not a simple concept. In the treatise McCarthy on Trademarks and Unfair Competition,2 McCarthy writes, “[b]ecause it is largely a theoretical and almost ephemeral concept, the legal theory of ‘dilution’ is exceedingly difficult to explain and understand. Misunderstanding is rampant.”3

1.╇ Lanham Act § 45, 15 U.S.C. § 1127 (2006). 2.╇ McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, Thomson Reuters/ West (2010). 3.╇ Id. § 24:67 (citations omitted).

10.01╇ BLURRING

The vast majority of dilution cases deal with “blurring.” Blurring can best be described as when customers or prospective customers see a plaintiff ’s famous mark used by others, in a non-confusing way, to identify other sources for various goods and/or services, which dilutes or weakens the ability of the famous mark to clearly identify and distinguish only one source. McCarthy writes: Dilution theory states that dilution by blurring is the classic, or “traditional,” injurious impact on a famous mark as envisioned by its original proponents. The theory says that if customers or prospective customers see the plaintiff ’s famous mark used by other persons to identify other sources for many different goods and services, then the ability of the famous mark to clearly identify and distinguish only one source might be “diluted” or weakened. This diminution of the strength of the famous mark could occur even though no confusion as to source, sponsorship, affiliation or connection has occurred.4 Dilution by blurring is a state of mind of the ordinary consumer separate and distinct from the perception which occurs when the consumer is likely to be confused as to source or affiliation. Dilution by blurring is not just another name for the injury to a trademark caused by confusion and mistake [citation omitted]. Dilution is a name for a kind of erosion of the strength of a mark that could occur in the absence of consumer confusion.5

For example, assume that FAIRMONT is the name of a famous chain of hotels with a major presence in Chicago and an entrepreneur opens a Michigan Avenue jewelry emporium called THE FAIRMONT. People might think the jewelry entrepreneur chose the name to denote the upscale nature of its jewelry, as one indentifies the hotel for it upscale high-class reputation. There is no likelihood of traditional infringement because a hotel and a jewelry emporium are clearly different types of businesses, hence there would probably be no confusion as to the source, sponsorship, ownership, affiliation, association, or other connection between the famous hotel and the jewelry store. The question is, should the law allow the hotel chain to prevent the use of the word FAIRMONT to identify the jewelry emporium even though there is clearly no confusion as to source or affiliation? The dilution principle says yes. The idea that FAIRMONT may identify a jewelry emporium in the same city where the hotel is located weakens the FAIRMONT name for the hotel. If the jewelry emporium were allowed

4.╇ Id. § 24:69. 5.╇ Id. [â•›204â•›]â•… Trademark Surveys

to use the FAIRMONT name, perhaps a women’s apparel retailer or a book store could use it as well. If it is acceptable for the jewelry emporium to use FAIRMONT, why not a drug store, bank, or restaurant. In the 1989 “Lexis v. Lexus” case that tested the New York antidilution statute, the Second Circuit presented six factors to consider for dilution by reason of blurring: (1) similarity of the marks; (2) similarity of the products covered by the marks; (3) sophistication of consumers; (4) predatory intent; (5) renown of the senior mark; and (6) renown of the junior mark.6 In the famous Nabisco v. PF Brands case involving “goldfish” crackers, the court listed 10 factors to be considered for blurring: (1) the degree of distinctiveness of the senior user’s mark; (2) the similarity of the marks; (3) the proximity of the products and the likelihood of bridging the gap between the respective products identified by the senior and junior marks; (4) interrelationship between the distinctiveness of the senior mark, the similarity of the junior mark, and the proximity of the products; (5) shared consumers and geographic scope; (6) sophistication of consumers (the more sophisticated and knowledgeable the consumers, the less they would be subject to dilution and vice versa); (7) actual confusion; (8) adjectival or referential quality of the junior user (the more descriptive the mark, the less likely the mark will dilute the famous mark); (9) harm to the junior user and delay by the senior user (the junior user might have developed substantial equity in the mark over the years); and (10) effect of the senior’s prior laxity in protecting the mark.7 10.02╇ TARNISHMENT

“Tarnishment” takes the dilution issue to a new level. Here we are talking about the unwholesome degrading of goods and services that produces an injury to the famous mark. Dilution through tarnishment is far more unusual than dilution through blurring. “Free speech” is often used as a defense to trademark infringement because a famous mark is often subject to humorous parody or to non-malicious humorous ridicule. McDonald’s restaurants, for example, have been ridiculed for years by late-night talk show hosts with no attempt by McDonald’s to take action against those poking fun at McDonald’s.

6.╇ Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989). 7.╇ Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999). D I LU T I O N I S S U E S ╅

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The tarnishment arguments imply an intentional or premeditated degrading of a famous mark. While such premeditated malicious acts that intend to degrade a famous mark are probably fairly easy to prove, they occur rarely. For this reason, the vast majority of dilution situations will focus specifically on blurring. Tarnishment may occur when the effect of the defendant’s unauthorized use of the famous mark is to purposely dilute the mark by tarnishing or degrading positive associations of the mark and thus damaging the reputation of the senior user’s famous mark. The essence of tarnishment is the displacement of positive associations with negative associations of the mark that, like a claim for blurring, reduces the value of the mark to the trademark owner. One of the most famous of the tarnishment cases is when a defendant sold posters entitled ENJOY COCAINE in a script reminiscent of Coca-Cola’s famous logo.8 The defendant argued that this was merely a “parody,” but the court granted Coca-Cola a preliminary injunction. In another case, which relied in part on Coca-Cola, the court stated: “For tarnishment to exist, there must be a partially unwholesome association. Where the association is essentially a harmless, clean pun, which merely parodies or pokes fun at the plaintiff ’s mark, infringement is not likely.”9 Other examples of cases where courts found dilution by tarnishment are the following: • The linking of CANDY LAND, the children’s board game, with “candyland.com,” a website showing sexually explicit photos;10 • The famous BUDWEISER mark being tarnished by the use of BUTTWEISER t-shirts;11 and • TOYS “R” US being tarnished by the sexually explicit website, ADULTS “R” US.12 The landmark case for dilution by tarnishment is the Victoria’s Secret case,13 which applied the 2006 Act. The defendant was a small store selling

╇ 8.╇ Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). ╇ 9.╇ Jordache Enters. V. Hogg Wyld, Ltd., 625 F. Supp. 48, 57 (D.N.M. 1985) (citations and internal quotation marks omitted). 10.╇ Hasbro, Inc. v. Internet Ent. Group, Ltd., 1996 U.S. Dist. LEXIS 11626 (W.D. Wash. Feb. 9, 1996). 11.╇ Anheuser-Busch, Inc. v. Andy’s Sportswear, Inc., 1996 U.S. Dist. LEXIS 15583 (N.D. Cal. Aug. 28, 1996). 12.╇ Toys “R” Us, Inc. v. Akkaoui, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29, 1996). 13.╇ V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008), aff’d, 605 F.3d 382 (6th Cir. 2010). [â•›206â•›]â•… Trademark Surveys

men’s and women’s lingerie, adult video and sex toys, and the courts determined that the defendant had tarnished the plaintiff ’s mark. However, the “free speech” discussion that arose in the case centers on the ability to poke fun at a famous mark through parody. There is also the issue of tarnishing a famous mark, not through a malicious action but by taking the famous mark and stretching it into something unrelated to the mark to the advantage of the junior user. A famous case on this topic involves the use of STEIN WAY to describe a clip-on beer can handle.14 Taking issue with this alleged tarnishment was the prestigious maker of STEINWAY pianos. Another category of dilution by tarnishment is the “knockoff ” product. This is where a replica of the famous, branded product is selling for a low price and is therefore covered under the tarnishment rule. Stores, street vendors, and kiosks selling knockoff ROLEX and CARTIER watches using the famous logos watches would fit into this category. 10.03╇ CYBERSQUATTING

Since the emergence of the Internet and the use of search engines to locate sources, the dilution doctrine has been used to ban a new form of trademark misuse, known as “cybersquatting.” This activity involves the purchase of Internet search words that closely resemble the trademarks, service marks or trade names of well-known marks or brands, and selling these names back to the legitimate owner for a price. For example, someone might purchase “Sony.net” and sell it back to Sony. Passage in 1999 of the Federal Anti-Cybersquatting Act (ACPA) made dilution by cybersquatting readily actionable. 10.04╇ DIFFERENCES BETWEEN DILUTION AND LIKELIHOOD OF CONFUSION

“Dilution law does not protect consumers from being deceived. Traditional trademark law rests primarily on a policy of protection of customers from mistake and deception, while antidilution law more closely resembles an absolute property right in a trademark.”15

14.╇ Steinway & Sons v. Robert Demars & Friends, 1981 U.S. Dist. LEXIS 15169 (C.D. Cal. Jan. 28, 1981). 15.╇ McCarthy, McCarthy on Trademarks, § 24:72 (emphasis removed). D I LU T I O N I S S U E S â•…

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A plaintiff who is unable to get a trademark infringement verdict through likelihood of confusion might try to use the dilution argument, suggests McCarthy, who points out that “[f]or dilution to occur, the relevant public must make some connection or association between the mark and both parties [citation omitted]. But that connection or association is not the kind of mental link between the parties that triggers the classic likelihood of confusion test. Rather, the assumption is that the relevant public sees the junior user’s use, and intuitively knows, because of the context of the junior user’s use, that there is no connection between the owners of the respective marks. However, even with those who perceive distinct sources and no affiliation, the dilution theory says that the ability of the senior user’s mark to serve as a unique identifier of the plaintiff ’s goods or services may be weakened because the relevant public now also associates that designation with a new and different source. Hence, the unique and distinctive link between the plaintiff ’s mark and its goods and services is ‘blurred’ [citation omitted].”16 In cases where traditional likelihood of confusion of source or sponsorship is found, a court typically, as almost an afterthought, makes an assumption of dilution. Both dilution by blurring and tarnishment can apply. McCarthy writes: “One could argue that tacking on a finding of dilution is only a harmless redundancy, since recourse to the dilution theory is unnecessary in such cases. The apparent purpose of such findings is sometimes to provide a backstop should the court of appeals reverse the finding of a likelihood of confusion. The wiser course would be to stop and not tack on a redundant finding of ‘dilution.’ The negative fallout of such tag-on findings of dilution is that they pollute and deform the case law precedent by spreading further misunderstanding about what ‘dilution’ is an how it can be proven. A number of cases have held that after a traditional claim of infringement by a likelihood of confusion is found, the court should not go further to consider whether there is or is not dilution.”17 10.05╇ THE “ASSOCIATION” ASPECTS OF DILUTION

If a survey reveals there is evidence of likelihood of confusion, there should also be evidence that the junior mark will “associate” or “call to mind” the senior’s mark. This is because it is essential in proving a likelihood of confusion that the junior mark calls to mind the senior mark based on the

16.╇ Id. 17.╇ Id. (citations omitted). [╛208╛]╅ Trademark Surveys

perception of a substantial number of people within the relevant target market. Merely calling another mark to mind is not the same as confusion. The “association” requirement as an ingredient in the antidilution law means that an ordinary person who encounters the junior user’s mark will think of the senior user’s famous mark. Thus, association means that the accused mark calls to mind or conjures up the senior user’s famous mark. Survey evidence of likelihood of confusion is not evidence of the conclusion that there has been dilution. “This is because proof of likelihood of ‘association’ is not automatically proof of likelihood of blurring. ‘Association’ is only one ingredient of the commercial tort of dilution. A very different kind of evidence is required to reach the ultimate conclusion that there is a likelihood of dilution.”18 10.06╇ DILUTION WHERE GOODS AND SERVICES ARE COMPETITIVE

There are states—Illinois and Florida, for example—that maintain that dilution is not applicable between competing parties. These states confine dilution to situations where the marks are similar but the products and services in question are not. Other states—New York, for example—maintain that dilution is applicable when the parties are competitive. The 2006 Act is capable, according to McCarthy, of applying to competitive situations. However, there is considerable controversy over the use of the dilution laws for competitive products.19 10.07╇ THE “FAMOUS” ISSUE

The 1996 Act, which was superseded by the 2006 Act, calls into question the mandatory requirement that the mark that has allegedly been diluted has achieved “fame” or “became famous.” The courts may consider the following criteria of fame: (1) the degree of inherent or acquired distinctiveness of the mark; (2) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading area with which the mark is used; (5) the channels of trade for the goods or services with which the mark is used;

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(6) the degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought; (7) the nature and extent of the use of the same or similar marks by third parties; (8) whether the mark was registered under the Trademark Registration Act of March 3, 1881, or the Trademark Registration Act of February 20, 1905, or on the principal register of the U.S. Patent and Trademark Office.20 10.08╇ EXCLUSIONS TO THE DILUTION STATUTE

The following situations are not actionable as dilution by either blurring or tarnishment: 1. Any fair use, including a nominative or descriptive fair use or facilitation of such fair use of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with: a. Advertising or promotion that permits consumers to compare goods and services; or b. Identifying and parodying, criticizing, or commenting upon the famous mark’s owner, or the goods or services of the famous mark’s owner; 2. All forms of news reporting and news commentary; and 3. Any noncommercial use of the mark.21 10.09╇ BURDEN OF PROOF AND REMEDIES

In civil actions for trade dress dilution under the dilution statute regarding trade dress that is not registered on the Principal Register, the party who asserts trade dress protection has the burden of proving that: 1. Any claimed trade dress, taken as a whole, is not functional but material and is famous; and 2. If the claimed trade dress includes any mark or marks registered on the Principal Register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of the registered marks.22 20.╇ Id. §§ 24:79 and 24:79.50. 21.╇ Id. § 24:98 (citing Lanham Act § 43(c), 15 USC 1125(c)). 22.╇ Id. § 24:98. [â•›210â•›]â•… Trademark Surveys

In an action brought under this section of the law, the owner of a famous mark shall be entitled to injunctive relief. The owner of a famous mark may also be entitled to other relief, subject to the discretion of the court and the principles of equity, if: 1. The mark or trade name likely to cause dilution by either blurring or tarnishment was first used in commerce by the junior user after October 6, 2006. 2. In a claim arising: a. By reason of dilution by blurring when the junior user willfully intended to trade on the recognition of the famous mark; or b. By reason of dilution by tarnishment, the junior user willfully intended to harm the reputation of the famous mark.23 10.10╇ REQUIREMENTS FOR AN INJUNCTION BASED ON DILUTION BY BLURRING

To establish a prima facie case for injunctive relief for dilution by blurring under the 2006 Act, the plaintiff, or senior user, must plead and prove that: (1) the plaintiff is the owner of the mark, which qualifies as a “famous” mark; (2) the defendant, or junior user, is making use of the challenged designation as a mark or a trade name; (3) in interstate commerce; (4) the junior user’s use began after the senior user’s mark became famous; (5) the junior user’s use of the mark is likely to cause dilution by blurring by creating; (6) a likelihood of association with the senior user’s famous mark arising from the similarity to the senior user’s famous mark; and (7) that the junior user’s mark is likely to impair the distinctiveness of the senior user’s famous mark.24 10.11╇ ADDITIONAL HIGHLIGHTS OF THE 2006 ACT

The following are additional highlights of the Trademark Dilution Revision Act of 1996, as revised by the Federal Trademark Dilution Revision Act of 2006:25 1. A Famous Mark Can Be Diluted Without Any Likelihood of Confusion—Both the 1996 and the 2006 Acts put into law the 23.╇ Id. 24.╇ Id. § 24:99 (citing Lanham Act § 43(c), 15 USC 1125(c)). 25.╇ Id. § 21:101. D I LU T I O N I S S U E S â•…

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2.

3.

4.

5.

6.

7. 8.

principle that no one can make diluting use of a famous mark, even though there may be no likelihood of consumer confusion of source, sponsorship or approval under traditional trademark infringement law. The 2006 Revision Changes the Rule from Actual Dilution to “Likelihood” of Dilution—In the landmark 2003 Victoria’s Secret case,26 the U.S. Supreme Court held that violations of the dilution law required actual dilution. However, the 2006 Act replaced “actual dilution” with a softened requirement of “likelihood of dilution.” The 2006 Revision Contracts and Expands the Definition of “Famous”—This revision eliminated the “niche fame” requirement. Marks could no longer be categorized as famous if they were only famous to a “niche” segment of the target market. In addition to covering inherently distinctive marks, the 2006 revision expanded this concept to marks that have achieved distinction through the acquisition of secondary meaning. The 2006 Revision Defines Dilution by Blurring and Gives Factors to be Considered—The revised law defines blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” The 2006 Act also provides six factors to consider to determine if there is a likelihood that the accused mark will impair the distinctiveness of the famous mark. The 2006 Revision Explicitly Includes Dilution by Tarnishment—The revised law defines dilution by tarnishment as “an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Trademark or Trade Name Use by the Infringer Is Required—Both the 1996 and 2006 Acts require that the accused designation must be used as a “mark or trade name.” This means that non-trademark uses, for example in the content of expressive works, are not reached by the Act. The 1996 Act’s requirement that the accuser’s use of the mark must also be a “commercial” use was continued in the 2006 Act, but only as a separate “noncommercial” usage defense. There is No Register of “Famous” Marks—There is no place for locating whether a particular name is “famous.” Fame must be determined on a case-by-case basis Federal Act Can Be Applied as Between Competitors—The law is not limited to the traditional non-competitive setting.

26.╇ V Secret Catalogue, 558 F. Supp. 2d 734. [╛212╛]╅ Trademark Surveys

9. Federal Registration is Not Needed—To invoke the Act, the senior user’s name or mark does not have to be federally registered. This means that a mark could theoretically be dubbed “famous” without a federal registration. 10. Likelihood of Confusion and Dilution May Be Alleged in the Alternative—Usage of the mark may cause a likelihood of confusion among some members of the relevant target market, and, in other people’s minds, it may cause a likelihood of dilution by blurring. In such matters, the plaintiff need not choose between likelihood of confusion under one law and likelihood of dilution under another law. 10.12╇ DILUTION OF TRADE DRESS ISSUES

The 2006 Act removed any question that trade dress qualified for protection as a mark under the Act, but included a special rule for trade dress, which provided that, in a civil action for trade dress dilution, the person who asserts trade dress protection has the burden of proving that: (a) the claimed trade dress is not functional and is famous (e.g., the shape of a Coca-Cola bottle); and (b) if the claimed trade dress includes any mark or marks that are registered on the Principal Register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.27 10.13╇ WHAT IS “FAMOUS”?

Since the definition of what is “famous” is the crux of the dilution issue, the key question is what exactly does “famous” mean? Under the 2006 Act, to be “famous,” a mark must be widely recognized by the general consuming public of the United States as a designation indicating a single source of goods and services.28 McCarthy writes: “That is a difficult and demanding requirement.”29 “Fame” for infringement cases can be differentiated from fame for dilution cases. “The standard for the kind of ‘fame’ needed to trigger anti-Â� dilution protection is more rigorous and demanding than the ‘fame’ which is sufficient for the classic likelihood of confusion test.”30 McCarthy adds 27.╇ 28.╇ 29.╇ 30.╇

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that the “fame” required in dilution is an “on-off ” test—meaning that the mark either is or is not famous. Moreover, when a mark acquires secondary meaning to achieve trademark status in a non-inherently distinctive designation, it is not nearly enough to achieve the status of a “famous mark” under the antidilution law.31 At the highest level are marks that are considered “famous,” and these marks would score between fifty and one hundred points on McCarthy’s one-hundred-point “strength thermometer” scale. The next gradation contains “strong” marks, which would encompass anything from ten to fifty points on the strength thermometer. At the lowest level are “distinctive” marks, which would fall between one and ten on the thermometer scale. There are “famous” marks that are not necessarily distinctive, and McCarthy gives as an example “DELL” for computers and “AMERICAN” for airlines.32 The 2006 Act provides the following four statutory factors to determine whether a mark is “famous”: (1) the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised by the owner or a third party; (2) the amount, volume, and geographic extent of the sales of goods or services offered under one mark; (3) the extent of actual recognition of the mark; (4) whether the mark was registered under the Trademark Registration Act of March 3, 1881, or the Trademark Registration Act of February 20, 1905, or on the Principal Register.33 Examples of marks that have been held famous under the 2006 Act include: AMERICA’S TEAM; BIG GULP; BURBERRY; LOUIS VUITTON MULTICOLORE; NIKE; PEPSI; STARBUCKS; and VICTORIA’S SECRET.34 Marks held famous under the 1996 Act include: AOL; AUDI; BARBIE; BUDWEISER; CAMEL; CANDYLAND; THE GREATEST SHOW ON EARTH; JEWS FOR JESUS; POLO; PROZAC; “TOYS ‘R US”; TYLENOL; and WINSTON.35 Marks held not to be famous under the 2006 Act include: BIO-SAFE (septic system cleaner); TOP (roll your own cigarette tobacco); CHARLOTTE (women’s clothing accessories); and the University of Texas “longhorn” logo.36 Marks held not famous under the 1996 Act include: AVERY DENNISON (office supplies); BLUE MAN GROUP (entertainers); CLUE (board game);

31.╇ 32.╇ 33.╇ 34.╇ 35.╇ 36.╇

Id. Id. Id. § 24:106. Id. § 24:107. Id. § 24:108. Id. § 24:109.

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COLUMBIA (health care management); TREK (bicycles); and WE (magazine).37 10.14╇ THE ISSUE OF “NICHE” FAME

The question of “niche” fame arises with respect to marks that are “famous” but only to a relatively small part of a population or geographic area. The 2006 Act states that “in order to be ‘famous,’ a mark must be ‘widely recognized by the general consuming public of the United States’ as a designation indicating the source of goods and services.”38 Fame in one geographic region is not sufficient. Various circuits have given other interpretations of the 1996 Act, and various state laws address the “niche” issue.39 10.15╇ THE “VICTORIA’S SECRET” DECISION

The Victoria’s Secret40 case is largely responsible for the enactment of the 2006 Act. The dispute arose in 1998 when Victor and Cathy Moseley opened a store named “VICTOR’S SECRET” in Elizabethtown, Kentucky. This retail store, located in a strip mall, sold men’s and women’s lingerie, adult videos and sex toys. After being contacted by Victoria’s Secret, Moseley changed the name to “VICTOR’S LITTLE SECRET.” After the Sixth Circuit’s decision affirming the original holding of the District Court was reversed and remanded by the U.S. Supreme Court, the District Court granted summary judgment for dilution by tarnishment using the standards of the 2006 Act, but did not find dilution by blurring. The District Court’s holding was again affirmed by the Sixth Circuit. 10.16╇ PROVING LIKELIHOOD OF INJURY TO THE FAMOUS MARK

According to McCarthy, evidence of the likelihood of impairment of the distinctiveness of the famous mark could fall into two categories: expert testimony and survey evidence.41 McCarthy adds that candidates for expert 37.╇ 38.╇ 39.╇ 40.╇ 41.╇

Id. § 24:110. Id. § 24:105. Id. V Secret Catalogue, 558 F. Supp. 2d 734. McCarthy, McCarthy on Trademarks, § 24:121. D I LU T I O N I S S U E S â•…

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witnesses could include the following: (a) a marketing or advertising expert to testify as to the possible loss of a brand or mark’s selling power because of the diluting impact of the junior user; (b) an expert in licensing to testify about the lessening of a brand’s extension potential, and/or (c) an expert of the valuation of trademarks to testify that the senior user’s trademark could be lessened in value as a result of the dilution.42 McCarthy presents four types of dilution surveys: [A] Type A Survey: The relevant target market would include those who were aware of the plaintiff ’s mark but with respect to knowledge of the defendant’s mark, the participants would be divided into two groups: (1) Group A—those who knew the accused mark, and (2) Group B—those who did not. Using the Victoria’s Secret case as a model, both of these groups would be asked “what kinds of products do you associate with the mark VICTORIA’S SECRET?” Group A would consist of people living in the vicinity of Elizabethtown, Kentucky. If, hypothetically, 92 percent of the group outside Elizabethtown (KY) (Group B) knew of VICTORIA’S SECRET and accurately identified it as a retailer of lingerie and wearing apparel, and 82 percent of Group A properly identified VICTORIA’S SECRET, the hypothesis is that the 10 percent difference is due to the exposure of the defendant’s use of the mark, VICTOR’S LITTLE SECRET, which has diluted the selling power of the plaintiff ’s mark.43 [B] Type B Survey: This survey is a variation of the Type A Survey. In this variation, persons in the same two groups are asked which products they associate with the mark, VICTORIA’S SECRET. The thinking is that if the survey shows that people are aware of the accused user, use of the mark with products sold under the famous trademark, that indicates there is more than one source identified by the famous mark. Thus, it would produce evidence of blurring.44 [C] Type C Survey: This survey is another variation of the same VICTORIA’S SECRET model. In this variation, people are asked to name the positive (and perhaps negative) attributes they associate with the famous mark. If those who are aware of the accused user name fewer positive and more negative attributes than those who know only the famous mark, this then produces evidence of dilution by tarnishment. Dilution evidence would be shown if those who knew of the accused mark responded with attributes like “tawdry” or “tasteless” while those who knew only the famous mark would respond with words like “classy” or “tasteful.”45 42.╇ 43.╇ 44.╇ 45.╇

Id. Id. Id. Id.

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[D] Type D Survey: Still another variation would involve using a ratings scale. People would be asked to rate a particular quality or attribute of the famous mark on a scale of one to nine, with one being the lowest. If there were significant variations in the ratings between Group A, the group that was aware of the accused mark, and Group B, those that were not, then there would be evidence of tarnishment. If the participants people were asked to rate VICTORIA’S SECRET with respect to “tastefulness,” and Group A rated it at 7.8 and Group B rated it at 8.8, that would be a significant difference indicative of dilution.46 10.17╇ ACTUAL POST-2006 CASES

The Practicing Law Institute’s In Brief newsletter dated June 4, 2009, has an article entitled “Hal Poret: Trademark Dilution Revision Act Breathes New Life Into Dilution Surveys.”47 The article states: “The passage of [the 2006 Act] has certainly revived the doctrine of dilution as a viable source of federal protection for owners of famous marks and has sparked renewed interest in dilution surveys.”48 Two cases where dilution surveys have been considered by the courts since 2006 are reported in the aforementioned PLI article:49 Nike, Inc. v. Nikepal International, Inc.50 In the Nikepal case, a U.S. District Court ruled that the mark, NIKEPAL, for laboratory services was likely to dilute the famous mark, NIKE, for shoes and apparel. A telephone survey was executed and when asked over the phone what came to their mind when they read the word, Nikepal, 87 percent of participants answered NIKE. Jada Toys, Inc. v. Mattel, Inc.51 In the Jada Toys case, a survey was conducted and offered to the court contending that plaintiff ’s HOT RIGZ mark for toy vehicles would dilute the defendant’s HOT WHEELS mark for toy vehicles. The court accepted the survey results that showed sufficient evidence of an association between HOT RIGZ and HOT WHEELS and likelihood of dilution by blurring.

46.╇ Id. 47.╇ Poret, Hal, Hot Topics in Trademark Surveys, Practicing Law Institute’s Course Handbook, Advanced Seminar on Trademark Law 2009, PLI Patents, Copyrights, Trademarks, and Literary Property Course Handbook, PL Order No. 19111 (2009). 48.╇ Id. At 143. 49.╇ Id. At 148–49. 50.╇ Nike, Inc. v. Nikepal Intl, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. Sept. 7, 2007). 51.╇ Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). D I LU T I O N I S S U E S â•…

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10.18╇ THE NIKEPAL PROTOCOL

The development of the Nikepal protocol came as a result of a survey conducted by Phillip Johnson of Leo J. Shapiro and Associates, a Chicagobased market research firm. The survey determined that a significant number of Nikepal’s potential laboratory customers actually associated Nike with Nikepal. Nike retained Johnson to design a survey to measure the likelihood of dilution of the Nike brand as a result of Nikepal’s use of the NIKEPAL mark.52 In designing his study, Johnson used a universe of survey participants randomly selected from lists of companies that a deposition in the case identified as the sources for Nikepal’s current and prospective customers. The survey was conducted by telephone and respondents were asked about their perception of a website called Nikepal.com. In designing the survey, Johnson chose one of the ways the Nikepal mark was used in commerce, which allowed him to reasonably recreate a purchasing context while obtaining a controlled and accurate measurement. Johnson testified that he believed his survey replicated the circumstances in which people typically encountered the Nikepal mark.53 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?”54 Many survey respondents who were not actually confused about the source of the Nikepal website nonetheless identified Nike. Johnson testified that his survey revealed that the vast majority of respondents, 87 percent, associated Nikepal with Nike; that is, when they encountered the mark NIKEPAL, they thought of Nike and its offerings.55 10.19╇ ADDITIONAL INSIGHTS [A]╇ Gilson on Trademarks

“Survey evidence of fame is very powerful and courts may comment unfavorably on its absence in dilution cases,” writes Gilson in her treatise,

52.╇ 53.╇ 54.╇ 55.╇

Nike, supra, 2007 U.S. Dist. LEXIS 66686 at *11–12. Id. at *12. Id. at *12–13. Id. at *13.

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Gilson on Trademarks.56 She adds that in one case where consumer surveys were successfully used, the plaintiff proved that 92 percent of the primary purchasers of its products recognized its trademark, CRAYOLA, a virtually universal recognition. While no court has yet decided just what constitutes “wide recognition by the general consuming public of the United States” under the 2006 Act, writes Gilson, it is unlikely that judges will require marks to be universally recognized in order to find them to be famous.57 Gilson adds that consumer surveys showing fame in a dilution case must be directed specifically toward that end and not conducted to survey a different use. For example, she writes that the use of market research studies of the associations consumers have with the brand, has its pitfalls in a dilution case. She pointed out that, “[t]he Ninth Circuit rejected three market research surveys as ‘proving only the near tautology that consumers already acquainted with Avery and Avery Dennison.’ The respondent universe used in one of those studies was formed using an Avery Dennison client list, and the other two surveyed ‘users and purchasers of the office products’ and ‘office supply consumers.’”58 Gilson writes that “surveys lend themselves to proving trademark fame in dilution litigation, but it may even be possible for a court to take judicial note of fame.”59 Under Rule 201 of the Federal Rules of Evidence, Gilson writes that a judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court, or (2) capable of accurate and ready determination by sources whose accuracy cannot reasonably by questioned. She asks, “Could anyone dispute that, under either test, COCA-COLA is ‘famous’ under federal dilution law?”60 She points out that in addition to surveys and other evidence, expert testimony by, for example, a marketing professor or an advertising executive familiar with brand names, could also establish fame under federal dilution law.61

56.╇ Anne Gilson Lalonde, Gilson on Trademarks, Vol. 2 (2009), § 5A.01(4)(d), citing the following cases: TCPIP Holding Co., 244 F.3d 88, 99 (2d Cir. 2001) (“Nor did TCPIP submit consumer surveys, press accounts, or other evidence of fame.”); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 (1st Cir. 1998) (“Consumer surveys could be used as evidence of such fame, but consumer surveys are absent from this case.”); BigStar Ent., Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185, 218 (S.D.N.Y. 2000) (noting the “absence in this record of any consumer surveys documenting the extent of actual public identification of plaintiff ’s marks” in finding the marks not famous). 57.╇ Id. at 5A.01(d). 58.╇ Id. Quoting Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999). 59.╇ Id. 60.╇ Id. 61.╇ Id. D I LU T I O N I S S U E S â•…

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[B]╇ “The Most Difficult Format”—Thornburg

According to Robert H. Thornburg in his book, Trademark Surveys: Development of Computer-Based Survey Methods,62 “[a]part from surveys testing functionality of trade dress, dilution surveys represent the most difficult format of surveys to survive admissibility at trial.” He adds, “Put simply, ‘[t]here is no standard criteria for surveying dilution.’ The main problem regarding preparation of a proper dilution survey rests in trying to detect the requisite ‘whittling away’ found when dilution actually occurs [citation omitted]. The most typical forms of dilution evidence come from misdirected mail, telephone calls, or customer complaints rather than through survey form [citation omitted]. However, it seldom remains that there exists direct evidence of dilution and therefore the use of surveys is desirable [citation omitted].”63 The Association Test

Thornburg points out that “[t]he most common way of attempting to ascertain whether dilution is occurring is to ask a participant in a survey what comes to mind when they see a particular product or what they associate it with.”64 He adds that this form of dilution survey essentially follows the format adopted by the Seventh Circuit in Exxon Corp. v. Exxene Corp.65 He explains that Exxon submitted a survey that essentially inquired whether there was an association between the names “Exxon” and “Exxene,” and the court found that it was acceptable despite Exxon’s efforts to discredit the survey.66 He also suggests that perhaps one of the most frequently accepted forms of dilution survey after Congress passed the Federal Trademark Dilution Act was found in Wawa, Inc. v. Haaf.67 Thornburg explains that the Wawa case focused on whether the convenience store chain HAHA diluted the popular WAWA chain of stores. The court accepted a dilution survey that asked the following two questions: (1) What do you think of when you see

62.╇ Thornburg, Robert H., “Trademark Surveys: Development of Computer-Based Survey Methods,” 4 J. Marshall Rev. Intell. Prop. L91 (2005), at 112. 63.╇ Thornburg Trademark, at 112–13. 64.╇ Id. at 113 65.╇ Exxon Corp. v. Exxene Corp., 696 F.2d 544 (7th Cir. 1982). 66.╇ Thornburg, Trademark, at 113. 67.╇ Wawa, Inc. v. Haaf, 1996 U.S. Dist. LEXIS 11494 (E.D. Pa. Aug. 7, 1996). [â•›220â•›]â•… Trademark Surveys

or hear the name of this store? What else?; and (2) Do you associate this store with anything else?68 In this survey, because 29 percent of survey participants answered both questions with WAWA, the court found that the dilution survey provided credible evidence of trademark dilution. “Apart from the general admissibility of this association format for testing dilution, the inherent problem with this form of survey is that it does not necessarily show direct evidence of actual dilution,” writes Thornburg.69 He adds that in order for a junior mark to dilute a more established mark, the junior mark must not only call to mind the senior mark, but must also blur its distinctiveness or tarnish its reputation. Thus, Thornburg writes, the essential inquiry is whether an alleged diluting mark reduces the capacity of a plaintiff ’s mark to identify and distinguish the plaintiff ’s products or services. This is exactly what a well-designed and articulated dilution survey must achieve, he writes.70 Tarnishment Surveys

“Apart from the general association tests designed to inquire about dilution, trademark experts have also attempted to create specific survey question formats designed to inquire whether a defendant’s mark tarnishes the reputation of a famous mark,” writes Thornburg.71 He points out that the most prevalent example of a tarnishment survey is found in Anheuser-Busch, Inc. v. Balducci Publications.72 The Balducci case addressed a parody of an Anheuser-Busch ad for MICHELOB DRY beer that used the expression MICHELOB OILY as a social commentary regarding environmental concerns of contaminating formerly pristine lakes and rivers. Thornburg points out that in conducting the tarnishment survey, a universe sample of three hundred beer drinkers was shown the MICHELOB OILY advertisement while one hundred were shown a regular MICHELOB DRY ad. While the format of the question was not disclosed in the written opinion, 22 percent answered that they were less likely to buy MICHELOB beer in the future. Thornburg writes that based upon this finding, the court found that the

68.╇ 69.╇ 70.╇ 71.╇ 72.╇

Thornburg, Trademark, at 113. Id. Id. Id. at 114. Anheuser-Busch, Inc. v. Balducci Pubs., 28 F.3d 769 (8th Cir. 1994). D I LU T I O N I S S U E S â•…

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survey was admissible evidence that the parody tarnished Anheuser-Busch’s MICHELOB trademarks.73 Unsuccessful Association Test

In a presentation by William G. Barber, Barber writes that “by far the most frequent survey design offered on the issue of dilution to date has been to expose respondents to the defendant’s allegedly diluting mark, and ask them what it calls to mind (or what they associate it with). If they mention the plaintiff (or its mark or products), so the theory goes, this evidences dilution.”74 He points out that association tests have received mixed reactions by courts over the years.75 One of the first reported decisions mentioning such a survey was Exxon Corp. v. Exxene Corp.76 In that case, Exxon challenged the defendant’s use of the name “Exxene” in connection with coatings for windshields, goggles, and masks, relying on several grounds including dilution under Illinois law. Exxon submitted a survey in which almost half of the people who responded found an “association” between the names Exxon and Exxene. Despite this evidence, the jury returned a verdict for Exxene on Exxon’s dilution claim, finding that the words “Exxon” and “Exxene” neither look nor sound the same. The Seventh Circuit affirmed, stating “Exxene made vigorous efforts to discredit the survey in the jury’s eyes and we cannot say that no reasonable jury could have rejected the survey results.”77 Barber points out that an interesting example of an association test can be found in the “Dom Perignon” case, where two judges in the same case reached differing conclusions on the probative value of that type of survey design. In this case, the exclusive distributor of DOM PERIGNON champagne sued a company marketing popcorn under the mark “DOM POPINGNON Champagne,” which was packaged in a champagne-style bottle bearing a label remarkably similar to the DOM PERIGNON label. Barber writes, the plaintiff initially moved for summary judgment on both infringement and dilution, based partially on a pilot survey of fifty respondents, at least 25 years old, who had visited a gourmet food store 73.╇ Thornburg, Trademark Surveys: Development of Computer-Based Survey Methods (already cited), 114. 74.╇ Barber, William G., Surveys Under the Trademark Dilution Revision Act of 2006: Old Dogs or New Tricks, presented before the American Intellectual Property Law Association, Spring, 2007. 75.╇ Barber, Surveys, at 1. 76.╇ Exxon, 696 F.2d 544. 77.╇ Id. at 550. [â•›222â•›]â•… Trademark Surveys

within the prior 12 months. Respondents were shown the defendant’s product and asked: (1) What was the first thing that came to mind when you looked at the product? (If they answered champagne or wine, they were then asked whether they had a particular brand in mind.) (2) Do you think the company that makes or distributes this product had to get authorization—that is permission—from anyone to market this product? (3) From whom did they have to get authorization or permission to market the product?78 Barber reports that 28 percent of the respondents answered DOM PERIGNON in response to question (1), and 46 percent of the respondents answered DOM PERIGNON in response to question (3).79 Barber points out that in considering the plaintiff ’s motion for summary judgment, the judge suggested that plaintiff ’s survey—wherein 28 percent of respondents indicated that seeing DOM POPINGNON made them think of DOM PERIGNON—provided evidence of the kind of mental association required to constitute blurring under the New York dilution law. However, the judge denied summary judgment, reasoning that the defendant had raised genuine issues of fact with respect to the reliability of the survey results, and that the plaintiff had produced no evidence of tarnishment of its marks by defendant’s popcorn product.80 A different judge presided at trial, Barber observed, and was apparently not as impressed with the plaintiff ’s surveys with regard to the dilution issue. Although the trial judge found in favor of the plaintiff on the issue of likelihood of confusion—citing extensively from the plaintiff ’s surveys— he held that the plaintiff presented no evidence showing dilution.81 The judge ruled “although defendants’ marks bear a close similarity to [the plaintiff ’s] marks, [the plaintiff] cannot identify evidence in the record to establish that the selling power of its marks has been thereby diminished. Nor has [the plaintiff] demonstrated through competent evidence that the DOM POPINGNON mark has tarnished DOM PERIGNON. The court declines [the plaintiff ’s] invitation to speculate on this matter.”82

78.╇ Barber, Surveys at 2. 79.╇ Id. 80.╇ Id. at 2–3. 81.╇ Id. at 3. 82.╇ Id. (quoting Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F. Supp. 232, 251 (S.D.N.Y. 1994). D I LU T I O N I S S U E S â•…

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[C]╇ The “Looking Glass” Proposals

In a presentation by Richard Lehv, Lehv wrote: “Three market researchers, writing in the Trademark Reporter, suggest that a dilution survey should attempt to measure the impact of the defendant’s mark on ‘the strength, favorability and uniqueness of brand associations.’ Joel H. Stekel, Robert Klein, and Shelley Schussheim, “Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of 2005,” 96 Trademark Rep. 616 (2006). The authors also suggest that dilution is a ‘gradual’ process that ‘can only happen over time.’”83 Lehv describes the possible ways to administer test and control stimuli, as set forth in Dilution Through the Looking Glass: • Send consumers a series of mailings, each of which includes an advertisement from the defendant. The test stimulus corresponds to one that is allegedly diluting. The control stimulus should be objectively neutral, as perhaps demonstrated by a pretest. Measures can then be obtained via a telephone interview under the guise of researching consumer reactions to ads and products they contain. • Enlist consumers to reportedly visit a website on which the defendant’s trademark is displayed over a period of time. A control group could be entitled to visit the identical website, with the only difference being that the defendant/s mark has been redacted. Measures could then be collected from an email or online interview; and/or • Place posters in two demonstrably equivalent and frequently visited public places that display the defendant’s trademark (e.g., a church). One poster would contain the allegedly diluting mark and other would not. After a period of time, random samples of (frequent) visitors to the public places would be questioned to elicit the strength, favorability of brand associations.84 “Most surveys are done with one exposure to the test and control stimuli. Assuming that dilution is in fact a ‘gradual’ process that ‘can only happen over time,’ is it practical to conduct a survey that requires multiple exposures to the test and control stimuli?” asks Lehv.85

83.╇ Lehv, Richard, The Trademark Dilution Revision Act of 2006, New Opportunities and Challenges for Surveys, American Intellectual Property Law Association, Spring Meeting, 2006, at 3 (quoting Stekel, Joel H., et al., Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of 2005, 96 Trademark Rep. 616 (2006)). 84.╇ Lehv at 3 (citing Stekel at 636). 85.╇ Lehv at 3. [â•›224â•›]â•… Trademark Surveys

CHAPTER 1 1

Implications of Daubert Rulings on Trademark Surveys

A series of court rulings have significantly changed the playing field for parties in intellectual property lawsuits and their use of experts in performing surveys, writing reports, and testifying in deposition and trial. There are three major court decisions used by the courts. The first case was the Daubert v. Merrell Dow Pharmaceuticals in 1993, followed by General Electric Co. v. Joiner in 1997, and finally Kumho Tire Co. v. Carmichael in 1999. These three cases, known as the “Daubert trilogy,” are more often simply referred to as “Daubert.” “Daubert” motions result when there is an attempt made to exclude the work product or testimony of an expert. The Daubert standard is a rule of evidence with respect to the admissibility of expert witnesses’ work product and/or testimony in U.S. federal court proceedings. If an attorney believes the Daubert standard has been violated, he/she may raise a Daubert motion, which is a special case motion in limine raised prior to or during trial to exclude the presentation of “unqualified” evidence to a jury. The initial Daubert v. Merrell ruling was directed to assessing the admissibility of scientific expert testimony. The General Electric v. Joiner ruling held that an abuse-of-discretion standard of review was the proper standard for appellate courts for use in reviewing a trial court’s decision on whether expert testimony should be admitted. The Kumho Tire v. Carmichael ruling held that the judge should function as a gatekeeper for all expert testimony, including scientific and non-scientific. To help judges determine the merits of Daubert motions, the Court put forth five guidelines or criteria that judges may use to determine whether scientific evidence is likely to be valid and therefore admitted: 1. Whether the research technique has general acceptance or is widely known or whether the technique has attracted only minimal support;

2. Whether standards and controls governing the application of the scientific methodology exist; 3. Whether the expert’s methods or techniques can be tested, and, if so, whether such methods or techniques have been tested; 4. Whether the theory or technique has been subjected to peer review and publication; and 5. Whether the scientific technique has a known or potential rate of error. 11.01╇ IMPLICATIONS AND ABUSES

The Daubert rationale is based on the assumption that juries do not understand the principles and nuances of scientific research as it relates to intellectual property issues. Some college professors with excellent teaching credentials can offer certain opinions that are subjective in nature and not based on scientific survey evidence. If such opinions are material to the case in question, and permit the drawing of highly subjective opinions, a judge should be able to question the value of such testimony and can thus act as a “gatekeeper” in keeping these unfounded opinions away from an impressionable jury. What has happened is that the Daubert motion has become an opportunity for attorneys to file costly Daubert motions and rebuttal motions that, in most cases, are not in the opinion of most judges, justified. Those motions generally focus on issues disputed in the case. If the findings are particularly damaging to one side, the rationale is to file the Daubert motion on the chance the judge will eliminate the expert and his or her findings. 11.02╇ WHY DAUBERT MOTIONS ARE DENIED

Most judges view Daubert motions skeptically and carefully evaluate both the qualifications of the expert and his/her findings. It is very hard to exclude an expert who has had experience testifying and whose work has been accepted by the courts. Scientific research covers a wide area and many issues and, in complex litigation, interpretations vary from expert to expert. Moreover, there is not just one method of conducting a survey as this book illustrates. Since judges are not survey experts trained to perform scientific research, it becomes very difficult to exclude an experienced survey research expert. In such cases, there generally is a survey and a report by the survey expert, and a rebuttal report by another survey expert retained to analyze and provide a critique of the initial survey. It is not unusual to see [â•›226â•›]â•… Trademark Surveys

both sides file Daubert motions against the experts on either side. In their wisdom, most judges in cases such as this will not exclude any credible research effort and will generally suggest the survey expert and the critiquing expert be subjected to “rigorous cross examination.” Another important consideration is the background of the survey expert. As previously discussed in this book, Prof. Shari Seidman Diamond, spells out the required criteria for experience and education for a survey expert. Some survey experts come from the social sciences with experience in psychology and sociology, while others come from the business and marketing disciplines. The Daubert standards discussed earlier in this chapter are also subject to debate. Complex litigation often requires creative solutions that involve the use of techniques never used previously. For example, the emergence of the Internet as a research tool opens up a myriad of possibilities that were heretofore unavailable. Houston researcher and survey expert Gabriel Gelb has performed a number of highly effective surveys through Internet technology. Such a technique might be argued as “not widely known and has attracted minimal support.” One might compare the Internet to the telephone as a new technology with major research implications. This argument can be extended to the “peer review and publication” issue. Here we have a “chicken or the egg” situation. Clearly, a novel creative technique will be applied prior to being subjected to any peer review. Does that mean the technique lacks merit? Scientific research is a discipline that requires an understanding of the complex issues relating to the specific case, an understanding of relevant target markets and a pragmatic willingness to try new or advanced methodologies to obtain accurate answers and data. The key aspect is that: such research should be scientific in nature and utilize those key principles of scientific research. 11.03╇ THE “JUNK SCIENCE” ISSUE

At times, a Daubert motion seeking to exclude the work of a survey expert will allege that the work is “junk science.” This unfortunate choice of words is highly inflammatory and can easily be wrongly interpreted by judges and juries. Most people are familiar with a process called “lying with statistics.” There are many techniques statisticians use to display statistical evidence to distort or skew the findings. It is that sentiment that may confuse or taint judges and juries. 11.04╇ THE POSTURING ARGUMENT

On the other hand, attorneys often contend that the filing of the Daubert motion is a posturing tactic. It enables the attorney to set the stage for I M P L I C AT I O N S O F D AU B E RT R U L I N G S O N T R A D E M A R K S U RV E Y S â•…

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cross-examination and concisely sets forth the arguments against the expert and his/her findings. Thus, attorneys argue, the filing of the Daubert motion becomes a valuable pre-trial positioning device. 11.05╇ ADDITIONAL INSIGHTS INTO DAUBERT

Gary T. Ford, a professor of Marketing at Kogod School of Business at American University, Washington, DC, wrote “The Impact of the Daubert Decision on Survey Research Used in Litigation,” published by the American Marketing Association Journal, Fall, 2005, and offers the following insights: The bottom-line concern for expert witnesses who are sponsoring a survey, intended to be used in evidence, is whether the Daubert decisions have made it more difficult to have a survey admitted. Although no statistical study has quantified survey admissibility rates pre- and post-Daubert, (evidence on this point . . . the answer to this question is undoubtedly yes. This is due to two factors. First, opposing counsel and trial judges have an extensive list of specific criteria by which to evaluate the methodology of the proffered survey and challenge it. Second, trial judges are well aware of their responsibility for thoroughly evaluating the reliability and relevance of proposed survey evidence and are aware that their decisions can and will be reversed if they admit a survey that is severely flawed. Accordingly, it appears to be without question the net result of the Daubert decisions is that some (perhaps weak) survey research evidence that historically would have been admitted is being excluded. This is important because, by definition, excluded surveys are given no weight whereas admitted surveys are given some weight. No witness wants his or her survey to be rejected because this may influence future opportunities as an expert witness.”1

David E. Bernstein, professor, George Mason University School of Law, writing in an article in the Iowa Law Review, entitled “Expert Witnesses, Adversarial Bias, and the (Partial) Failure of the Daubert Revolution,” writes: “Post-Daubert courts became increasingly (but not universally) strict about admitting causation testimony. This trend accelerated after the Supreme Court’s decision in General Electric Co. v. Joiner. In Joiner, the plaintiff ’s experts relied on rodent studies and sketchy epidemiological data to show that exposure in PCBs caused the decedent’s lung cancer. The Supreme Court deemed these studies unreliable and, reversing the Eleventh Circuit, upheld their exclusion by the district court to admit opinion evidence that is connected

1.╇ Gary T. Ford, “The Impact of the Daubert Decision on Survey Research Used in Litigation,” American Marketing Association Journal, Fall, 2005. [â•›228â•›]â•… Trademark Surveys

to existing data only by the ipse dixit of the expert. The decision sent a powerful signal to lower courts that they should exclude speculative, unreliable expert testimony on causation. Some courts nevertheless remained very reluctant to exclude speculative causation testimony, because such exclusion inevitably resulted in granting summary judgment to the defense.”

In his conclusion, Professor Bernstein offers further insight on the Rule 702 requirement that all expert testimony be subject to a stringent reliability test: The implicit rationale for the reliability test is to preserve the perceived advantages of the adversarial system, while mitigating the harms of the courts; truth-seeking function by the inevitable and strong biases that accompany adversarial expert testimony. These biases include the conscious biases of hired guns, the unconscious biases of other paid experts, and the selection biases that result from the fact that attorneys “shop” for their experts from a large pool of qualified individuals. . . . The problem with the Daubert revolution, then, is not that it was too radical, but that it was not radical enough. Rule 702 attempts to solve the problem of adversarial bias through a reliability test, but it leaves intact the general adversarial structure that creates the underlying reliability problem. . . .”2

Dr. Thomas G. Gutheil and Dr. Harold J. Bursztajn, co-directors, Program in Psychiatry and the Law, Massachusetts Mental Health Center, Harvard Medical School, Boston, MA., wrote in the Journal of the American Academy of Psychiatry and the Law, 2005, an article entitled “Attorney Abuses of Daubert Hearings: Junk Science, Junk Law, or Just Plain Obstruction?” They explain: Abuses and Misuses of Daubert Hearings: . . . We do not suggest that hearings on reliability and relevance are inherently inappropriate. Daubert challenges may, in fact, reflect attorneys’ confidence in their own experts’ views and justified suspicion of the experts’ opinions on the other side. Thus, in a best-case scenario, the challenge leads to achievement of a just and favorable outcome, obviating the expense and uncertainty inherent in a trial. Moreover, when an opposing expert is proffering innovative testimony, the ethics of practice, concerns about legal malpractice, and concerns about claims of ineffective assistance of counsel may require such a challenge. In contrast to these valid concerns, when the attorney feels that a case is weak or that the client is unattractive to potential jurors, the attorney may want to see if the opposing expert can be “knocked out of the box” from the start by a Daubert challenge. While this ploy poses uncertainties of its own, the effort may be economically justifiable to the retaining attorney.

2.╇ David E. Bernstein, “Expert Witnesses, Adversarial Bias and the (Partial) Failure of the Daubert Revolution,” George Mason University Law and Economics Research Paper Series, (2008). I M P L I C AT I O N S O F D AU B E RT R U L I N G S O N T R A D E M A R K S U RV E Y S â•…

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Delay: The Daubert hearing is not unique in being subject to abuse. Many other valuable safeguards of the fundamental fairness of the legal system exist, such as insuring that a defendant is competent to stand trial before facing the rigors of the adversary system. Yet, in our experience in Massachusetts courts, a motion to invoke this useful safeguard can be and has been used as a delaying tactic to permit the attorneys to prepare the case more thoroughly, to set the stage for a later insanity plea, or even to foster the hope that witnesses will become less sure about recalled testimony. Similarly, a Daubert hearing may be requested by one side or the other—even when the relevant science is basic, established, and non-controversial—as a comparable delaying tactic designed to secure some advantage by the delay, although, as the law evolves, such challenges to established science may become less common. In our experience, challenging the use of even absolutely standard psychological testing is a common ploy in this category. The Dry Run: By providing a picture of the expert in action under cross-examination, expert depositions commonly serve as “dry runs” for trial preparation. However, Daubert hearings have the advantage of providing a second opportunity to probe the expert, as well as to obtain an otherwise unavailable assessment of the trial judge’s attitudes toward the case. In those jurisdictions where depositions do not occur or are not allowed in civil or criminal cases, thus depriving attorneys of the opportunity to perform a dry run of the cross-examination of the opposing expert, a Daubert hearing may serve the purpose of obtaining an equally valuable advance look at the opposing experts’ opinions, bases, methodology, and courtroom demeanor. The resultant data can be put to very good use by the attorney in case preparation, mastery of the relevant literature, and the like. Impeachment: Laying a Foundation: Just as moving for an unnecessary examination for competence to stand trial may aid the attorney in laying a foundation (if only in the public’s mind) for a later insanity plea, moving for an unnecessary Daubert hearing may lay the foundation for later efforts to impeach the expert’s reasoning on scientific grounds. Even if the expert’s opinion is ultimately not excluded, the knowledge gained in the process (the dry run suggested in the prior section) may be helpful to the attorney in designing more effective cross-examination for trial. Rattling the Expert: The motion for a Daubert hearing may constitute no more than an attempt at simple harassment of the experts, designed to shake their confidence in their own testimony by a threshold challenge to their approach, methodology, reasoning, and professional acceptance of the experts’ theory of the case. Fatigue Factors: In a related manner, a mid-testimony hearing may be attempted on a specious issue, to overextend the expert’s time on the witness stand, perhaps interrupting the flow of case-related testimony that the jury hears. This approach may generate sufficient distraction and breach of concentration in the jury to obscure the gist and impact of the expert’s testimony. Economic War: Because a Daubert hearing involves costs for the time and participation of the parties and assistants (e.g., stenographers), the hearing may be requested by a large, rich firm, to drive up the costs for an opposing small, poor firm and thus to [â•›230â•›]â•… Trademark Surveys

discourage or render more difficult the latter’s participation in the suit. Similarly, because of cost restrictions from the client or insurers, a law firm unable or unwilling to hire its own reputable expert may be forced to put its efforts into attempting to disqualify the other side’s expert through Daubert challenges. Theoretically, such an approach may also serve to create a record designed to refute a later claim for legal malpractice in this situation. An attorney’s specious introduction of standards for reliability and relevance (that no expert could meet) in this setting may also constitute an attempt to excuse his or her failure to retain an appropriate expert. Shooting the Messenger: A highly unusual twist in the Daubert question has occurred with one of us (H.B.) when an attorney hired several experts, but one of them did not present a favorable opinion after review. The attorney presented that expert’s opinion to the other side in a distorted way that invited a Daubert challenge, which was feebly and ineffectively resisted by that attorney. The attorney then used the successful challenge to rationalize not paying the expert for work already done, based on the alleged failure of the opinion to meet the standard. Conclusions: While Daubert challenges to expert testimony may ultimately succeed in elevating the scientific level of expert opinion presented to the jury, the pre-trial hearings may also serve less idealistic purposes, as described herein. Familiarity with the taxonomy we have outlined and anticipation and early recognition of the potential abuses noted may be among the keys to prevention. Educating the retaining attorney regarding the basis for responding to a Daubert challenge and being prepared oneself may successfully thwart the opposing attorney’s attempted abuse. This education may involve a clinically knowledgeable literature search, outside consultation for the attorney-expert dyad, or helping the legal system distinguish between valid and pseudoDaubert issues. Finally, trial judges with their focus on gate keeping may be misled by opposing attorneys in the manner described herein. The expert witness may assist the retaining attorney in crafting effective responses and in maintaining a critical perspective in a fallible justice system. Expert participation in continuing legal education represents another potentially beneficial, but underutilized, approach.3

3.╇ Dr. Thomas G. Guthell and Dr. Harold J. Bursztajn, “Attorney Abuses of Daubert Hearings: Junk Science, Junk Law or Just Plain Obstruction,” Journal of the American Academy of Psychiatry and the Law, 2005. I M P L I C AT I O N S O F D AU B E RT R U L I N G S O N T R A D E M A R K S U RV E Y S â•…

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CHAPTER 1 2

Practical Considerations When Using Survey Experts

This chapter focuses on the practical considerations of retaining and working with a survey expert. Subjects to be covered include: (1) (2) (3) (4) (5)

Determining the need for a survey expert: How to find an appropriate survey expert; How and when to retain the survey expert; Compensation considerations; Setting up guidelines for appropriate contact and correspondence between lawyers and experts; (6) Interplay between lawyer and expert in developing the report. Included will be a discussion of discovery issues and the delineation between the consulting and the testifying expert. 12.01╇ DETERMINING THE NEED FOR A SURVEY EXPERT

When attempting to prove or disprove confusion in the marketplace, there is a very good chance that a survey can be beneficial to your case. It is much easier to persuade a judge and/or jury by your findings with a properly executed survey and utilization of correct procedures and methodologies. A scientific survey functions in the same way as a scientific experiment. There is (1) a hypothesis and (2) the survey is, in effect, the experiment devised to test that hypothesis and to either prove or disprove the hypothesis and thus allow the expert to furnish an opinion based on the results of the survey. If an experiment shows that the hypothesis either has or does not have support, and such experiment is replicated at different times and

various locations, then the survey can provide powerful evidence. The degree to which the scientific study accurately reflects or assesses the specific concept the researcher is attempting to measure is validity. The extent to which the experiment, test, or any measuring procedure yields the same results in repeated trials is reliability. In litigation where one side performs a survey and the other side does not, the side that has performed the survey usually holds an advantage. When one side does not perform a survey yet wants to discredit the findings of the other side’s survey, one commonly used technique is the rebuttal expert who will write a critique on the submitted survey. The common critique of a rebuttal expert is often a scathing document attempting to illustrate that the original survey is “fatally flawed” and, therefore, dismissed by the court. Almost invariably, the critique and the eventual deposition results in the filing of a Daubert motion, which more often than not is denied by the judge as long as the survey expert can produce that he/she is qualified. ANECDOTE: In a case in which Mr. Berger was involved, where a U.S. power tool company believed infringement occurred when a foreign competitor entered the U.S. market with a product looking similar to one of its registered product designs in terms of paint and appearance, it took only a survey to win the case. Tradespeople were hired by a research facility, where they viewed the competing product and asked who made it. A significant number named the U.S. manufacturer, thus proving the confusion. There are times when one should consider not doing a survey. After all, a survey is like any other form of scientific market research in that it is a function of time and money. One should make sure there is sufficient time to do the work and that the lawyer’s client can afford the cost. Often surveys can be very costly. One rule of thumb is to determine the potential exposure (what, in financial terms, does one risk losing) if you were to lose the case, and then figure in the cost of the survey, including the cost of retaining an expert and the fees charged by the law firm in working with the expert. If all of the costs related to preparing and performing the survey exceed the client’s exposure from an unfavorable ruling, it is unwise to undertake the survey. On the other hand, if the risk exposure is great and the survey cost is considerably less, it probably would make sense to undertake the survey. There also is the possibility that the outcome of the survey may not be black or white but some shade of gray. In this case, where the results of the survey are mixed, it may or may not provide significant value. If the other side has done a survey, if nothing else, the law firm should hire an expert to analyze that survey and submit a critique, which can be accomplished for a relatively low cost. If the opponent’s survey is inadequate, it can then work in your favor. It is possible that the inadequate survey’s findings support the other side’s position. In these types of cases, the side undertaking the survey [â•›234â•›]â•… Trademark Surveys

could discredit the survey expert’s report. Every survey—no matter how well done—is subject to criticism. ANECDOTE: A law firm that retained co-author James T. Berger had a case involving a drug product and filed an action alleging confusion. An Internet survey was required to test the hypothesis. Before executing the survey, the opponent offered a very attractive settlement. In fact, the cost of the settlement was less than the cost of executing the survey. Since the burden of proof is on the plaintiff, this is the first pressure point for determining the requirement of a survey expert. If the key issue surrounding the case is likelihood of confusion, it will be necessary to prove to the court such a likelihood of confusion exists and how members of a relevant target market view this alleged confusion and why. A properly conducted scientific survey can go a long way in proving this type of allegation. If the plaintiff believes the case will be ongoing and there is a strong possibility that the matter will go to trial, the early-on retention of a survey expert is highly advisable. Even though discovery deadlines are comfortably in the future, the earlier one retains the expert the wiser. Early retention of a survey expert provides a major benefit—the possibility for market-focused objectivity and creativity. Since many IP litigation matters focus on marketing-oriented issues such as brands, packaging, labeling, and buyer behavior, the survey expert—if he or she possesses marketing or marketing communications expertise—can provide an entirely different perspective on the case. A letter-of-the-law legal issue may be irrelevant when analyzed based on the realities of the market. Favorable research results are often possible in even the most challenging IP litigation surveys if the attorney is willing to take a broader view of the problem and the marketplace and keep an open mind to the survey expert’s creative approaches. Even in what looks like an impossible task, based on the facts of the case or complaint, survey, various and creative approaches may materialize by looking beyond the legal issues and focusing  on the marketing issues. By using this kind of approach, the realities of the market can totally overshadow what may appear to be an airtight legal case. Here are some examples. ANECDOTE: In a case in which co-author James T. Berger was retained as an expert, two hostile companies locked in a bitter dispute sold the same type of commodity industrial products. Plaintiff filed a suit alleging a “truth in advertising” violation. The plaintiff said the defendant was making false claims about the insulating ability of the defendant’s products. The dispute focused on scientific test results where one of the parties alleged a higher degree of performance based on laboratory test results. However, the laboratory conditions did not simulate real world conditions. When the expert P R A CT I C A L C O N S I D E R AT I O N S W H E N U S I N G S U RV E Y E X P E RTS â•…

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examined the realities of the market, he found that buyers of the product were not interested in performance capabilities of the product and, indeed, regarded them both as the same type of commodity product. Moreover, the expert discovered that buyers did not use the product under the exact same conditions as used in the lab tests. In fact, virtually all of the buyers were more interested in price and availability for this commodity product rather than anything else. Thus, the claims and counterclaims by both parties had no relevance to the realities of the market. In fact, the plaintiff produced a survey where subjects were required to analyze the labeling claims and draw a conclusion based on these labeling claims. In reality, the labeling claims had no relevance whatsoever to the buyer behavior decision. In this case, the real issue was an attempt by one party to accomplish in the legal environment what it could not accomplish in the competitive marketplace. ANECDOTE: In another case, a Chinese toymaker’s Los Angeles law firm with a line of collectable model cars wanted to prove likelihood of confusion and retained co-author James T. Berger as a survey expert. The problem was the alleged infringing mark was one of three or four brand designations printed on the package. How then do you prove whether that designation is a “brand” or a “common name?” The solution was to take a famous telephone survey protocol and adapt it to the mall intercept environment. This also enabled the opportunity to present an unusual spelling of the brand name. The protocol is the well-known “Teflon Protocol.” When used in telephone interviews, this test guides the interviewee through a process where a number of well-known common and brand names are first presented such as jello, aspirin, coke, refrigerator, etc. Next, the interviewee is given names relevant to the product category and asked if such names are “common” or “brand names.” In the shopping mall research centers, the interviewer used flash cards to present the product names in both the first and second parts of the survey. The survey results proved that a significant portion of respondents identified plaintiff ’s brand as a “brand” name. ANECDOTE: A third example related to a case in which the plaintiff alleged that the defendant was creating confusion through the use of a “sponsored” site on Internet search engines and retained co-author James T. Berger to conduct a rather unusual scientific survey. The respondent selection process utilized the basis of age and computer experience for searching the Internet. Interviewees, initially provided with a color photocopy of the first page of a Google search with the sponsored sites shown on the page, were directed to choose one website designation, open the site, and carefully examine it. Once that task was complete, questions followed. Next, the same thing transpired with another site. Finally, after this process was complete, questions addressed to the interviewee included: if he or she believed that the defendant’s “sponsored” site was in [â•›236â•›]â•… Trademark Surveys

fact sponsored, associated, etc. with the plaintiff ’s site, and the results showed overwhelmingly that the defendant was creating confusion. ANECDOTE: A final example focuses on a product category where brand names are not recognized. The plaintiff produced a product with a unique design and the defendant in fact “knocked off ” the product. The defendant, to perform a survey, retained co-author James T. Berger. In the complaint, the plaintiff alleged that its product, through its unique design, had acquired “secondary meaning.” Since the marketplace was unable to recognize brand names for the product category, it was virtually impossible to prove secondary meaning. The defendant did a mall intercept survey showing a display that included the plaintiff ’s products as well as various competitive products. The interviewees, after shown an array of products, were to provide the product name and product maker. As a “control,” one of the products on display had, in fact, a highly recognizable look. The research conclusively proved that plaintiff ’s product was unrecognizable by the marketplace by its product name or by the name of the maker of the product. Therefore, the plaintiff was unable to prove secondary meaning. These are all examples of “non-cookie cutter” research that requires both creativity and an understanding of the dynamics of the market on the part of the survey expert. Not only is this research valid, its methodology is so obvious that any judge or jury could easily understand the proven attempt. For that reason, all of these cases settled before trial and the results were favorable to the parties using these creative research techniques 12.02╇ HOW TO SELECT A SURVEY EXPERT

Shari Seidman Diamond, Ph.D., offers the following advice about who qualifies as a survey expert: Experts prepared to design, conduct and analyze a survey generally should have graduate training in psychology, sociology, marketing communications sciences, statistics, or a related discipline; that training should include courses in survey research methods, sampling, measurement, interviewing, and statistics. In some cases, professional experience in conducting and publishing survey research may provide the requisite background. In all cases, the expert must demonstrate an understanding or survey methodology, including sampling, instrument design (questionnaire and interview construction) and statistical analysis. Publication in peer-reviewed journals, authored books, membership in professional organizations, faculty appointments, consulting experience, and membership on scientific advisory panels for government agencies or private foundations are indications of a professional’s area and level of expertise. In addition, if a survey involves highly technical subject matter (e.g., preferences of P R A CT I C A L C O N S I D E R AT I O N S W H E N U S I N G S U RV E Y E X P E RTS â•…

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electrical engineers for electrical, including the bases for those preferences), or involves a special population (e.g., disabled adults with limited cognitive skills); survey experts must demonstrate sufficient familiarity [with] said topic or population. If the survey expert is unable to demonstrate those abilities, then obtain them from an individual on the research team with suitable expertise to design a survey instrument that communicates clearly with relevant respondents.1

Dr. Diamond also refers to another kind of survey expert, which she refers to as a “secondary expert.” These experts will testify about surveys conducted by others. This type of expert, known as a rebuttal expert or a survey-critiquing expert and explained by Dr. Diamond as a “secondary expert” The secondary expert’s role is to offer support for a survey commissioned by the party who calls the expert, to critique a survey presented by the opposing party. Alternatively, to introduce findings or conclusions from a survey not conducted in preparation for litigation or by any of the parties in the litigation. . . .

Dr. Diamond adds that the secondary expert who provides an opinion about the adequacy and interpretation of a survey not only should have general skills and experience with surveys and be familiar with all issues addressed in Dr. Diamond’s “Reference Guide on Survey Research” but also should be familiar with the basic purposes and mechanics of the primary survey. Based on Dr. Diamond’s survey expert criteria, any number of types of individuals from various disciplines might qualify as survey experts. An attorney has access to a number of ways to locate an appropriate survey expert: 1. Experience. If an attorney had a successful experience with an expert that might be an excellent starting point for selecting another expert. Depending on the nature of the case and the specific levels of expertise required, the attorney may ask his former expert if he/she can recommend another. 2. Recommendations from colleagues. While an attorney may not have any experience with matters involving experts, conceivably a partner or associate with his or her law firm has had such experience,

1.╇ Shari S. Diamond, “Reference Guide on Survey Research,” in Reference Manual on Scientific Evidence, 2nd ed. (Federal Judicial Center, 2000).

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or perhaps other lawyers that the attorney interacts may have recommendations. 3. Case law. A review of recent court cases where survey experts provided testimony might also be a way to locate a survey expert. 4. The Internet. By accessing “Google,” “Yahoo,” and other Internet search engines, an attorney may search under such titles as “Intellectual Property Expert Witness,” or “Survey Expert Intellectual Property.” A large number of results garnered from these searches include both individuals and clearing house organizations that have stables of experts. A word to the wise attorney: While the clearinghouse will save time in the search for an expert, it carries a high price tag for the client. The clearinghouse will generally mark up the hourly rates of its experts by 25 to 33 percent. Finding an expert on one’s own is a far more cost-efficient alternative. A few final considerations, when screening a potential expert, the first thing to do is a conflicts check to ensure the expert is not currently involved with the adversary in the case or the adversary’s law firm. Finally, while Dr. Diamond presents one function of the “secondary expert” to offer support for a survey commissioned by the party who calls the primary expert, this can be a dangerous use of a survey expert. Like so many things in life, no two professionals will interpret things exactly the same way. A properly deposed and/or cross-examined primary or secondary expert might find himself or herself contradicting each other. Such a scenario not only badly weakens a case; it might also provide the opportunity for the adversary to usurp one of the experts to testify on the adversary’s behalf. 12.03╇ HOW AND WHEN TO RETAIN THE SURVEY EXPERT

Once a qualified survey expert has been located and that person clears all conflicts, the expert should present a draft of a retention agreement. The law firm may have its own retention contract. Such a retention agreement spells out the nature of the assignment, payment terms, amount of retainer, submission of invoices, and an expected period for payment (i.e., 30 days). It is important that the expert obtain such an agreement, and the expert should not begin doing any billable work until they have received a retainer check, as some matters settle very quickly so the expert should make sure he or she receives payment for the initial research time spent on the case.

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Another danger area for the expert involves the possibility that the expert may unknowingly provide uncompensated information and advice. Often, an attorney, in an effort to orient the expert on the case, will send a copy of the complaint or other documentation related to the case. The expert may opt to review such documents before presenting any ideas on how to develop a survey. If there is no retainer, the lawyer might very well hire another expert and use the valuable information imparted by the erstwhile expert. This is the “tire kicker” syndrome where an attorney on the case uses advice and expertise of one expert, without compensation. While engagement letters vary, in many cases if the matter settles before the funds in the retainer agreement are exhausted, the expert refunds to the lawyer the unused monies. Once a decision is made to retain an expert in a matter, the attorney should do so as quickly as possible. The expert can provide valuable insight into the case from the perspective of his or her area of expertise. The sooner there is retention of the expert, the greater the benefit that the expert will provide. Once the expert is retained, the attorney should provide hard copy or electronic documents that will give the expert as many of the relevant facts in the case as possible. 12.04╇ COST AND COMPENSATION CONSIDERATIONS

The cost of doing a survey is a function of a number of details. The paramount factor is to make sure you are interviewing members of the relevant universe. For example, if the product in question is a packaged good available on supermarket or drug store shelves, one can safely develop a questionnaire directed to members of the general population. As discussed in a previous chapter, the shopping mall is an ideal venue for such research for relative speed and low cost. If the object happens to be a specialty good, which targets specific consumers, employment of a telephone interview protocol is fast and relatively inexpensive. On the other hand, if the particular object or product in question targets a specific market segment, then face-to-face interviews are required. The researcher and his or her research firm will need to recruit appropriate members of this target market and make arrangements for appropriate subjects to come into a research center at a specific date and time. Targeting this type of subject can be time-consuming and very expensive. In other cases, the face-to-face in-person interview is simply possible or practical. Here, utilization and employment of creative solutions involving scheduling times for an Internet-type protocol or the express

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mailing of materials for subjects to review while on the telephone with an interviewer. [A]╇ Mall Surveys

In addition to the costs of retaining the research company operating in the mall, there is generally some small monetary incentive involved. Depending on the length of the interview, the target and the time constraints, a good rule of thumb is $5. Most mall research centers will charge anywhere from $20 to $30 per interview in addition to the incentive fee. Therefore, an attorney can figure a four- or five-venue survey of 250 people at from $6,250 to $8,750. In addition, there is the cost of the research professional. When co-author James T. Berger, a survey expert, contracts to perform such studies, he prefers to be on hand to personally do the training and ensure the following of all protocols. He would observe both the recruiting and the interviewing efforts as well. You can count on daily fees for a research/ survey professional at anywhere from $3,000 to $5,000 per day (based on the expert’s hourly rate) plus the travel-related expenses that usually run about $500 per venue. In calculating the total cost, one can safely figure a four- or five-venue mall study encompassing 250 participants to run from $20,250 to $30,750. Add to the costs the time involved in creating the questionnaire, tabulations, validations, and preparation of the research report on the survey and its results. The development of most questionnaires requires approximately ten hours of the expert’s time ($3,000 to $5,000). Tabulation and validation costs run in the region of $1,500. The cost of developing the expert’s report is in the range of 20 hours ($6,000 to $10,000.) Tallying these variables, one can figure that the costs of creating, executing and reporting on a mall survey to be from $31,000 to $46,000 depending primarily on the hourly rate of the survey expert and the need of the survey expert to visit each venue.

[B]╇ Telephone Surveys

This is perhaps the least expensive research alternative. Research companies operate call centers where they can interview randomly selected consumers, or consumers whose telephone numbers and/or addresses were obtained by purchasing mailing lists. Generally, there are no incentives needed and a good rule of thumb is $20 per completed telephone interview.

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(This may be more expensive depending on the screening criteria, which might produce a lower incidence and percentage of completed calls.) There is no need for the survey expert to be present at a call centers. Therefore, one can figure a telephone survey of 250 participants to cost $5,000 plus the cost of the expert creating the survey ($3,000 to $5,000), the tabulations and validations ($1,500) and the cost of developing the report ($6,000 to $10,000). Thus, the total cost for this survey alternative will range from $15,000 to $25,000, depending on the survey experts’ hourly rate. [C]╇ Basic Non-Personal Internet Survey

The basic non-personal Internet survey can be even less expensive than the telephone survey. There is a cost associated in constructing the Internet survey due to the appropriate visuals. This usually involves the creation of a special website. This process can run from $2,500 to $4,000. The second significant cost with this survey method is linking into one or more consumer panels that will deliver members of the relevant target market. This can be a significant cost—between $5,000 and $10,000. The third relevant cost is some form of incentive. This can be, for example, a cash award for taking the survey, or the opportunity to have one’s name including in a drawing for a significant prize, like a big-screen high definition TV. If there is a cash incentive offered, then there is a fulfillment charge because someone has to process the data and send the checks to the participants. The incentive charges, including fulfillment, can range from $3,000 to $5,000. Therefore, one can figure a non-personal Internet survey of 250 participants to cost $11,500 to $19,000 plus the cost of the expert creating the survey ($3,000 to $5,000), the validations ($750) and the cost of developing the report ($6,000 to $10,000). Thus, the total survey cost for this alternative will range from $20,000 to $35,000, depending on the hourly rate of the survey expert, the E-mail panel list costs and the incentive/fulfillment costs. There is a problem in using Internet panels. There is almost a self-Â� screening process that occurs. Respondents are asked specific questions with respect to their buying behavior and if they answer truthfully they will be disallowed from taking the survey and qualifying for the incentive. Hence, some respondents do not tell the truth and participate in a survey for which they are not qualified to take. These respondents need to be eliminated from the survey. In such surveys, respondents should be asked to volunteer their names and phone numbers. It is mandatory to validate such surveys and see if the “cheating” took place. If so, it is important to recognize the extent of the cheating, the flawed results should be eliminated and the new respondents should replace the unqualified ones. [â•›242â•›]â•… Trademark Surveys

[D]╇ Internet/Telephone Hybrid Survey and Basic Non-Personal Internet Survey

This methodology involves creating an e-mail recruitment piece sent to a consumer panel. This recruitment e-mail will denote the offer and screening criteria. If the consumer panel member agrees to participate, he or she would then answer the e-mail and provide a telephone number and a specific time available for telephone contact. A mandatory criterion for this category of survey is the ability of the respondent to sit at a computer with access to the Internet. For this survey, there is the same cost of creating the survey in an Internet form with the appropriate visuals prepared in the form of a special website. This process can run from $2,500 to $4,000. The second significant cost is the tying into one or more consumer panels that can deliver members of the relevant target market. This is similar to the costs incurred for the non-personal Internet survey. Included within this cost would be the “renting” of the survey panel and the blast e-mailing of the recruiting “teaser” inviting people to participate. The third cost involves some form of cash and/or lottery drawing incentive that would be similar to the non-personal Internet survey. There would also be a fulfillment expense. The fourth cost is would be a $25 per interview charge—approximately $6,500. Therefore, one can figure a non-personal Internet survey of 250 participants to have an expenditure of $17,500 to $25,000 plus the fees of the expert creating the survey ($3,000 to $5,000), the tabulations and validations ($1,500) and the cost of developing the report ($6,000 to $10,000). Thus, the total price tag for this type of survey alternative will range from $27,000 to $42,000, depending on the hourly rate of the survey expert, costs of the e-mail panel list, and the incentive/fulfillment costs. This is a relatively expensive type survey to perform. If there were no need for the target market to view images, it simply could be a telephone survey. If the relevant target market were ordinary consumers, a mall intercept survey would be the best alternative. However, if images are required for viewing and a relevant target market is not readily available, either the nonpersonal or the personal Internet surveys will work. A further benefit of this approach is the “re-screening” process. The “cheating” flaw that is possible with the pure Internet survey is eliminated when the live researcher re-screens all the respondents.

[E]╇ Pre-Recruit Surveys

Occasionally, there is a need for the survey expert’s services to develop surveys where recruitment of a precise target market is required. For example, P R A CT I C A L C O N S I D E R AT I O N S W H E N U S I N G S U RV E Y E X P E RTS â•…

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in doing a survey for a law firm representing a power tools company, it was necessary to interview professional tradesmen. The problem here is that participants may not be readily available during the workday; therefore, to ensure the attainment of enough qualified participants, schedule interviews on weekends or evenings during the week. Another problem is the high cost of participants’ time. For example, how would you pay for a physician specialist or design architect? In addition, simply showing a twoÂ�dimensional image on a screen may not sufficient for this type of survey. Thus, the research company has to recruit them and schedule them, and line them up to come into the research center at a specific time. Recruiting qualified participants is time-consuming and a rather large incentive may be vital to getting them into the research center. Costs for this method of recruiting may run from $30 to $40 and the incentive costs can run from $40 to $60 or more. All other costs would remain the same as for a mall study. So, one can figure the costs for a four- or -five venue pre-recruit study of 250 participants where members of a specific target market have to be brought into a research center to be in the range of $17,500 to $25,000. Added to this would be the additional fees related to the expert’s daily fees, travel expenses, plus the preparation of the questionnaire, tabulations/ validation, and report. Thus the total cost of such a survey can range from $41,500 to $63,000. In the final scenario, when you perform the interviews and are unable to get the participants into a research facility, there is no basic way to approximate costs. The incentives would be a function of the target market. For example, if you were to survey heart surgeons, what kind of incentive would you provide? It probably would have to be a substantial donation to a charity. Then, you would have to figure a way to communicate—especially if you want to ask specific questions. In addition to the customized website, it is also possible to send them visual materials via overnight mail and then perform a telephone interview. Instructions may also include that the participant not open the package in advance of the interview. These scenarios become extremely complex and costly. [F]╇ Other Considerations

Cost estimates are a function of the survey expert’s hourly rate, which can range from $250 to $1,000. Actual costs may vary depending on the specific problem or opportunity studied, and the accessibility of the relevant target market. Even the least expensive of all of these survey alternatives are costly and are dependent on the nature of the litigation and the characteristics of the target market. In some cases, costs can be enormous. Before embarking [â•›244â•›]â•… Trademark Surveys

on any of these journeys, the intelligent IP attorney will have his or her survey expert do an inexpensive local test to determine: (1) the merits of the questionnaire; (2) the time and expenses that will be required to recruit respondent; and (3) most importantly, what are the approximate results that the survey can be expected to generate. 12.05╇ GUIDELINES FOR APPROPRIATE CONTACT BETWEEN LAWYER AND EXPERT

It is first important to understand there are two species of marketing communications and/or survey experts. The “consulting expert” can work with attorneys where correspondence is privileged and there is confidential information. Acting as a consultant, an expert’s files are not subject to discovery. In fact, a consulting expert can actually perform survey pilot studies, etc.; however, when the consulting expert becomes a “testifying expert” the expert’s work then becomes discoverable and the expert and attorney have to be judicious in their correspondence. Once the expert becomes a testifying expert, carefully guarding all correspondence between testifying expert and attorney becomes mandatory. E-mails and FAXs are all discoverable as is any other kinds of written correspondence. Experts are not required to keep drafts of earlier work and it is most desirable for experts to write over drafts so there is only one final report and no paper trial of drafts. This also prevents materials from older drafts erroneously appearing in final reports. The expert should shred older drafts of reports and simply work on the current version. The best way for attorney and expert to correspond is via telephone. In their invoicing, experts should only provide as much detail as required about tasks, dates, etc. because all of this information is subject to discovery. 12.06╇ DEVELOPING THE EXPERT’S REPORT

A testifying expert’s key document is his or her research report. The expert based on his or her work on the case drafts this report from the findings from his/her survey. The results of the survey, including hypotheses, methodologies, tabulations, findings and opinions are all included in this report. The attorney has a major interest in this report because it will become valuable evidence in supporting his/her case. The expert, retained by the law firm, has his/her time paid for by the law firm; however, the expert may find himself or herself in a rather precarious position in this situation as it is his or her obligation to present scientific evidence in a scientific manner. P R A CT I C A L C O N S I D E R AT I O N S W H E N U S I N G S U RV E Y E X P E RTS â•…

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Moreover, that expert may be called upon to defend his or her findings and opinions in deposition and/or—if the case goes to court—trial testimony. The attorney, generally, is looking for very specific language in the expert’s report. That language may be very “legalistic” in nature. The expert, who generally is not an attorney, might make his or her report suspect if such legal language shows up in the report. Therefore, it is most important for the expert and the attorney to agree: (1) with the findings; (2) how the expert will opine on those findings; (3) the language used by the expert in the expert’s report. As previously mentioned, the expert retained by the attorney, after designing and executing a survey, is committed to the findings that optimistically support the attorney’s case. The attorney might very well see something in the research that supports the attorney’s case but that the expert who did the survey might have overlooked. In such a case, the attorney should point this out to the expert and determine if the expert is comfortable reporting and opining on those findings. In no case should the attorney “write the report” or convince the expert to put something into the report that the expert does not believe belongs in the report. The general procedure for developing the expert report is as follows. The expert presents his or her findings and then drafts the report. The attorney reviews the report and often will suggest alternate language or alternate emphasis. Such suggestions are always subject to the expert’s approval. If the expert agrees with the changes, the expert will then express those changes in new language that the expert creates. It is important to understand that the expert is not an attorney and the expert has no credentials to comment on the legal issues of any case. Such an effort to have the expert opine on legal issues might set the stage for a successful Daubert motion. In deposition and trial testimony, if the survey expert is to present legal opinions, the expert should respectfully decline offering those opinions. Since the process of finalizing an expert’s report might go through several drafts, the expert is not required to keep copies of any or all of those drafts. The intelligent way, as previously stated, would be to write over each draft, making the revisions only within the core document. Once there is submission of the final report, that will be the only report in the possession of the expert. Maintaining copies of the individual drafts would be a terrible mistake because a deposing attorney might question each revision and ask for the rationale behind these revisions. Opposing counsel would like nothing more than to have the court believe that the other attorney was the author of the expert’s report. In developing the final report, both the expert and the attorney should show respect for one another and realize the important implications of the information and language used in this report. [â•›246â•›]â•… Trademark Surveys

APPENDIX A

Teflon Survey

Date: _____________ Job No: ()()()-()()()

Interviewer: _____________

Teflon Telephone Survey Sunglasses SCREENER— Good afternoon/evening, my name is ____________ and I am calling for Mid-America Research, a marketing research firm in Chicago. Be assured I am not selling anything. I just want to know your opinion. S-1

S-2

Which of the following, includes your age? READ AND RECORD Less than 18 years TERMINATE 18 to 30 years () 31 to 40 years () 41 to 50 years () 51 to 60 years () Over 60 years () Refused TERMINATE Have you purchased a pair of sunglasses within the last year, or do you intend to purchase sunglasses in the near future? YES NO

()

TERMINATE

S-3

Are you, or any member of your immediate family, employed by a marketing communications agency, advertising agency or market research firm? YES NO

TERMINATE CONTINUE

() ()

QUESTIONNAIRE

The research we are conducting today is on common names and brand names. Most products or services have both common names and brand names. Common names tell what kind of product it is. For example, beer, autoÂ� mobile or instant coffee. Brand names tell what brand it is. For example, Budweiser, Chevrolet, or Maxwell House. 1. If I were to ask you “Do you understand the name washing machine to be a common name or a brand name” what would you say? CONTINUE TERMINATE TERMINATE

1. Common name: 2. Brand name: 3. OTHER:

2. I am going to read you some names and ask you to tell me whether you understand each name to be a common name, that is, the name that tells what type of product it is, or a brand name, that is the name that tells what brand it is. For any of the names, if you don’t have an opinion or don’t know, that is an acceptable answer. For each of the following 10 names, would you please tell me whether you understand the name to be a common name or a brand name. If you don’t know, please say “Don’t Know:” START AT THE “X’d PRODUCT ON THE LIST, CONTINUE TO THE LAST PRODUCT AND RETURN TO THE TOP, THEN CONTINUE DOWN TO INCLUDE THE PRODUT ABOVE THAT ‘X’d. Product

Common Name Brand Name

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() () ()

() () ()

Both

Don’t Know

() () ()

() () ()

Product Teflon Jell-O Refrigerator Aspirin Coke Gas Station American Airlines

Common Name Brand Name () () () () () () ()

() () () () () () ()

Both

Don’t Know

() () () () () () ()

() () () () () () ()

With respect to ____________ 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. If you don’t know, please “Don’t Know. START AT THE “X”d PRODUCT OF THE TWO, THEN CONTINUE TO THE OTHER.

Product (Product A) (Product B) (Product C) (Product D)

Common Name

Brand Name

Both

Don’t Know

() () () ()

() () () ()

() () () ()

() () () ()

Name: _________________________â•…â•… Town: __________ Telephone Number: ________________

THANK YOU FOR YOUR TIME

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APPENDIX B

Internet Eveready Survey

INTERNET SURVEY

We are conducting a short survey. We are not selling anything. This is strictly a marketing research study and you will not be contacted by anyone who wants to sell you anything. If you chose to participate and you qualify to participate, we will give you (INCENTIVE details). Can you participate at this time? ______YES

_____NO

If YES, click NEXT. If NO, THANK YOU FOR YOUR TIME. Before we get started, I would like to ask you a series of questions to see if you qualify. A.╇ Are you 18 years old or older? ___YES╅╅╅ ___NO If YES, click NEXT. If NO, THANK YOU FOR YOUR TIME. B.╇ H  ave you or anyone in your household ever purchased any device designed to XXXXXXXXX? ____YES

____NO

Click NEXT C.╇ D  o you or anybody in your household anticipate purchasing any device to XXXXXXXXXXX in the next 12 months? ____YES ____NO

If YES to either B or C, click NEXT. If NO to BOTH B and C, THANK YOU FOR YOUR TIME. D.╇ Do you—or anyone in your household—work for: ___A marketing research firm? ___An advertising agency? ___Any dealer, wholesaler or retailer that sells XXXXXXXXX? If YES, to any of these, terminate. THANK YOU FOR YOUR TIME. If NO, click NEXT. E.╇ D  o you usually wear eyeglasses or contact lenses for normal computer viewing? ____YES

_____NO

If NO, click NEXT. If YES—Are you wearing them now? ____YES

_____NO

If YES, click NEXT. If NO,—Can you get them? ___YES

_____ NO

If YES, click NEXT. If NO, THANK YOU FOR YOUR TIME. SHOW IMAGE

HAVE YOU EVER SEEN THIS PRODUCT BEFORE? ___YES

___NO

____DON’T KNOW

1.╇ DO YOU KNOW THE NAME OF THIS PRODUCT/ ___YES

___NO

____DON’T KNOW

a.╇ IF YES, WHAT IS THE NAME OF THE PRODUCT? _______________________________________________ WHY DO YOU SAY THAT? _____________________________________________________ ___________________________________________________ [╛252╛]╅ Trademark Surveys

2.╇ DO YOU KNOW WHO PUTS THIS PRODUCT OUT/ ___YES

___NO

____DON’T KNOW

a.╇ I F YES, WHAT IS THE NAME OF THE COMPANY THAT PUTS THIS PRODUCT OUT? ________________________________________________ WHY DO YOU SAY THAT? _____________________________________________________ _____________________________________________________ 3.╇ D  O YOU BELIEVE THIS PRODUCT COMES FROM A SINGLE MANUFACTURER OR MORE THAN ONE MANUFACTURER? _____SINGLE SOURCE _____MORE THAN ONE SOURCE a.╇ WHY DO YOU SAY THAT? _______________________________________________ _______________________________________________ _______________________________________________ _______________________________________________ _______________________________________________ THANK YOU VERY MUCH

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APPENDIX C

Squirt with Product Array Mall Intercept Questionnaire

Venue _____________________________________ TAKE THE PARTICIPANT TO THE INTERVIEWING AREA. ALLOW THEM TO SIT DOWN. ON THE TABLE IN FRONT OF THEM IS AN ARRAY OF TOY AND GAME PRODUCTS WITH FULL BRAND IDENTIFICATION BUT DESIGNATED BY LETTERS A,B,C,D,E,F.

READ CLEARLY: Today, we are conducting a survey dealing with consumer recognition of toy and game products. Please examine these products and let me know when you have completed your examination. PLEASE PAY SPECIAL ATTENTION TO THE NAMES OF THE PRODUCTS. ALLOW THE INTERVIEWEE TO LOOK AT THE PRODUCTS SITTING ON A TABLE IN FRONT OF THEM. LEAVE PRODUCTS ON THE TABLE FOR THE DURATION OF THE INTERVIEW.

1.╇Do you believe that any or these products are put out by the same company? If you don’t know, please say DON’T KNOW. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK A. and B.â•… IF “NO” OR DON’T KNOW GO TO QUESTION 2

a.╇ P  lease identify, by letter, which of these products you believe were put out by the same company? ___________________________________ b.╇ WHY DO YOU SAY THAT? _____________________________________________ _____________________________________________ _____________________________________________ 2.╇Do you believe that any of these products are associated with one or more of the other products on the table? If you don’t know, please say DON’T KNOW. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK A. AND B. IF NO OR DON’T KNOW GO TO QUESTION 3.

c.╇ P  lease identify, by letter, which of these products you believe associated with one another? _____________________________________________ d.╇ WHY DO YOU SAY THAT? _____________________________________________ _____________________________________________ _____________________________________________ 3.╇ D  o you believe that any of these products are affiliated with one or more of the other products on the table? If you don’t know, please say DON’T KNOW. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK A. AND b. IF NO OR DON’T KNOW GO TO QUESTION 4

a.╇Please identify, by letter, which of these products you believe are affiliated with other products on the table? _____________________________________________

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b.╇ WHY DO YOU SAY THAT? _____________________________________________ _____________________________________________ _____________________________________________ 4.╇Do you believe that any of these products are sponsored by one of more of the other products on the table? If you don’t know, please say DON’T KNOW. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK A. and B. IF NO TERMINATE by saying THANK YOU VERY MUCH.

a.╇ P  lease identify, by letter, which of these products you believe are sponsored by other products on the table? _____________________________________________ b.╇ WHY DO YOU SAY THAT? _____________________________________________ _____________________________________________ _____________________________________________ THANK YOU VERY MUCH Interviewer’s Name _____________________ Date _____________

S Q U I RT W I T H P R O D U CT A R R AY M A L L I N T E R C E P T Q U E S T I O N N A I R E â•…

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APPENDIX D

Mall Intercept Survey Screening Questionnaire

VENUE

RECRUIT PEOPLE (AGE 18 OR OVER). IF RESPONDENT DOES NOT SPEAK ENGLISH, TERMINATE AND CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON LAST PAGE OF THIS SCREENING QUESTIONNAIRE.

Hello, my name is ____________. I am from __________ Research. -╅ I am conducting a very short survey. -╅We do not sell anything. This is strictly a marketing research study. -╅If you are willing to participate, we will pay you a $____ participation fee. A.╇ W  e want to interview people who have purchased a toy or game product for children age 12 or younger in the last year, or are likely to purchase a toy or game product for children age 12 years or younger in the next 6 months. B.╇ How old are you? _____________ IF UNDER 18 YEARS OLD TERMINATE.

A.╇ H  ave you, in the last year, purchased a toy or game product for children age 12 or younger? Yes ____ No _____ B.╇ D  o you expect to purchase a toy or game product for children age12 or younger in the next 6 months? Yes ____ No _____ IF HE OR SHE HAS NOT PURCHASED TOYS OR GAMES FOR CHILDREN 12 YEARS OLD OR YOUNGER OR DOES NOT ANTICIPATE PURCHASING TOYS OR GAMES FOR CHILDREN 12 YEARS OLD OR YOUNGER IN THE NEXT 12 MONTHS TERMINATE. CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON LAST PAGE OF THIS SCREENING QUESTIONNAIRE.

A.╇Have you been interviewed for any consumer survey during the past three months? Yes ____ No _____ IF “YES” TO RECENT INTERVIEW, TERMINATE. CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON LAST PAGE OF THIS SCREENING QUESTIONNAIRE.

B.╇ D  o you—or does anyone in your household—work for or are affiliated with: ___A marketing research firm? ___An advertising agency? ___A retail store that sells toy or game products? IF “YES” TO ANY OF THE ABOVE, TERMINATE. CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON THE LAST PAGE OF THIS SCREENING QUESTIONNAIRE.

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C.╇Do you usually wear eyeglasses or contact lenses when reading? If “YES,” ASK╇ Do you have glasses or contact lenses with you today? I would ask you to use them now. D.╇Do you usually use a hearing aid while engaged in normal conversation? IF “YES,” ASK╇ Do you have your hearing aid with you today? I would really appreciate if you would use it now. IF RESPONDENT USUALLY WEARS GLASSES OR CONTACTS OR USUALLY USES A HEARING AID FOR NORMAL CONVERSATION, BUT DOES NOT HAVE THESE DEVICES WITH THEM OR REFUSES TO USE THEM, TERMINATE. CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON LAST PAGE OF THIS SCREENING QUESTIONNAIRE.

E.╇The rest of the interview will take only a few minutes. However, I’d like you to accompany me into the interview area. ESCORT RESPONDENT TO THE INTERVIEWING AREA. IF RESPONDENT REFUSES TO COMPLETE INTERVIEW, TERMINATE. CIRCLE NEXT AVAILABLE NUMBER UNDER RECORD OF TERMINATIONS ON PAGE 3 OF THIS SCREENING QUESTIONNAIRE. WHEN SCREENER AND RESPONDENT ENTER THE RESEARCH CENTER, SAY:

F.╇As I mentioned before, my name is _________________. What is your name? RECORD RESPONDENT’S NAME BELOW. THEN, HAND SCREENING QUESTIONNAIRE TO OTHER INTERVIEWER, IF OTHER INTERVIEWER IS CONDUCTING THE IN-OFFICE PORTION OF THE INTERVIEW.

Respondent’s name__________________________________ Respondent’s Phone Number __________________________ Date _____________________

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R E C O R D O F T E R M I N AT I O N S

A.╇ DOES NOT SPEAK ENGLISH

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

B.╇ IS UNDER 18 YEARS OLD

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

C.╇HAS NOT OR WILL NOT PURCHASE TOYS OR GAMES FOR CHILD 12 & UNDER

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

D.╇ RECENT INTERVIEWS

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

E.╇DISQUALIFIED OCCUPATION

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

F.╇NO EYEGLASSES/LENSES/ HEARING AID

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

G.╇REFUSED REMAINDER OF INTERVIEW

1â•… 2â•… 3â•… 4â•… 5â•… 6â•… 7â•… 8â•… 9â•… 10

SCREENER CERTIFICATE

I hereby certify that all the information was obtained by me from the respondent named above and was recorded accurately. The interview was completed: ON (DATE) _______________ SCREENER’S NAME (PRINT) _________________________ SCREENER’S SIGNATURE ___________________________

STAPLE SCREENING QUESTIONNAIRE, IN-OFFICE QUESTIONÂ� NAIRE AND RESPONDENT COMPLETION FORM TOGETHER. MAKE SURE YOU HAVE RECORDED THE LOCATION OF THIS INTERVIEW AND THE GENDER AND AGE OF RESPONDENT ON FRONT OF THIS SCREENING QUESTIONNAIRE. BE SURE YOU HAVE WRITTEN RESPONDENT’S NAME AT THE TOP OF THIS PAGE.

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APPENDIX E

Mall Intercept Survey Interviewer Instructions

A.╇ Research Objectives

To learn if people who purchase women’s apparel do so at a department store or online. The purpose of the study is to determine the levels of affiliation between the various products. B.╇ Important Information

THE SURVEY QUESTIONNAIRE IS A RELATIVELY SHORT QUESTIONNAIRE. BE SURE TO READ EVERY QUESTION EXACTLY AS WRITTEN ON THE SURVEY QUESTIONNAIRE.

Record all answers to open-ended questions verbatim, exactly as stated by the respondent. Any instructions WHICH ARE IN ALL CAPITALIZED LETTERS and are in a box are for your own guidance and should NOT be read to the respondent. C.╇ Sample

This survey is to be conducted among women, 18 years old and over, who purchase apparel and/or accessory products either in stores or online. (Screener Questionnaire [SQ] QUESTION A.)

To qualify for the interview, the respondent must indicate that she: • Is 18 years old or over (SQ QUESTION B) • Purchases or intends to purchase apparel or accessory products in retail stores or online. However, no interview may be conducted with anyone who: - Does not speak English. - Was interviewed for another survey during the past three months (SQ QUESTION C) - Works for, or has a household member who works for, an advertising agency or retail stores that sell women’s apparel or accessory products. (SQ QUESTION D) - Usually wears eyeglasses, contact lenses, or a hearing aid and does not have them along or refuses to use them. (SQ QUESTIONS E, F) If a respondent does not qualify for an interview based on the qualifications above, thank him or her for his or her time. Circle the next available number adjacent to the reason for termination, located on the last page of the SQ. The first termination should result in a circle around the number one (1), the next termination should result in a circle around number two (2) and so on. D.╇ Recruiting Respondents

Respondents are to be recruited from the mall. A qualified respondent must be taken into the interviewing area for the Survey Questionnaire. E.╇ Screening Questionnaire (SQ)

You need NOT record answers to the qualification questions on the SQ. Re-use the SQ until you find a qualified respondent. If the respondent does NOT meet the qualifications for a full interview, the only information to be recorded is a circle adjacent to the appropriate reason for termination (on the last page of the SQ). If a respondent is qualified and ready to proceed into the interview: - Record the respondent’s name on the last page of the SQ. - Have the research center’s screening person sign his/her name on the last page of the SQ. Then have the respondent sit down in the interview area. If another interviewer is going to complete the Survey Questionnaire, introduce the respondent to that interviewer.

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Do not—under any circumstances—give the Survey Questionnaire to the respondent. (THE RESPONDENT SHOULD NEVER BE ABLE TO READ THE CONTENT OF THE IN-OFFICE QUESTIONNAIRE.) NOTE: WE WILL VALIDATE UP TO 100 percent OF THE INTERVIEWS IN THIS STUDY F. Survey Questionnaire

At the mall research center, request respondent to sit down and make himself or herself comfortable. Read all questions and instructions exactly as written. Before the interview begins, obtain the name (correct spelling) and phone number of the respondent. G. Recording Answers

If the respondent’s answer to a question is fairly long and he or she is speaking too rapidly, request the respondent slow down by saying: “I want to record your answer correctly, word for word. Could you speak a little slower, so that I can record everything you are saying.” Please record all answers in pencil. In the event you make a mistake when recording an answer, cross out the incorrect information and add the correct response. Do not erase. After you have completed each interview, you should always—ALWAYS— review the entire Survey Questionnaire to make sure you have: - Provided an answer to every question which should have been asked. - Recorded any open-ended questions fully in the exact words spoken by the respondent. H. Respondent Completion Form

After the interview is completed, request the respondent to sign the Respondent Completion Form and to indicate his/her address and telephone number. (The Respondent Completion Form should be signed right after the respondent has completed the interview.) The Respondent Completion Form should have a list of all the completed interviews. The name on the last page of the Survey Questionnaire and the telephone number should match the name and telephone number on the

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Respondent Completion Form. The SQ should be stapled to the In-Office Questionnaire. SIGN THE INTERVIEWER CERTIFICATE ON THE LAST PAGE OF THE IN-OFFICE QUESTIONNAIRE AND FILL IN THE DATE THE INTERVIEW WAS COMPLETED.

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APPENDIX F

Internet Survey

Methodology: Internet survey using an Internet panel. To qualify one must be an adult age 21 or over. 1. In the last 12 months, which kinds of products have you purchased at retail, mail order, or over the Internet? (check all that apply). SS Office supplies SS Clothing SS Airline tickets SS Electronic products SS Wine SS Furniture SS Books SS Pet Supplies SS Energy drinks SS Vitamins SS Kitchen gadgets 2. In the next 12 months, which product do you anticipate purchasing at retail, by mail order, or over the Internet? (Check all that apply) SS Office supplies SS Clothing SS Pet supplies SS Electronic products SS Wine SS Furniture SS Books SS Airline tickets

SS SS SS

Energy drinks Vitamins Kitchen gadgets

IF (product being surveyed) IS NOT MENTIONED AS AN ANSWER IN QUESTION 1 OR 2 TERMINATE. 3. If you saw a product with the label XXXXXX, what kind of product do you think it is? Rotate Order SS Office product SS Clothing SS Airline ticket SS Electronics product SS Wine SS Furniture SS Book SS Vitamin product SS Energy drink SS Pet product SS Kitchen gadget SS Don’t know WHY __________________________________________ 4. Do you believe XXXXXX refers to a geographic area or region?  YES  NO  Don’t know a. If YES, what geographic region or area do you believe XXXXX refers to? ____________________________________________ b. WHY↜_______________________________________ 5. If you saw a product with the label (CONTROL) XXXXXX what kind of product do you think it is? Rotate Order SS Office product SS Clothing SS Airline ticket SS Electronics product SS Wine SS Furniture [â•›268â•›]â•… Trademark Surveys

SS SS SS SS SS SS

Book Pet product Energy drink Vitamin product Kitchen gadget Don’t know

WHY __________________________________________ 6. Do you believe (CONTROL) XXXXXX refers to a geographic area or region?  YES  NO  Don’t know c.╇If YES, what geographic region or area do you believe (CONTROL) XXXXXX refers to? ____________________________________________ d.╇ WHY↜_______________________________________ 7. Do you think (CONTROL) XXXXXX is a: (check all that apply) SS Brand Name SS Generic or common name SS Descriptive term SS Don’t know WHY __________________________________________ 8. Do you believe (CONTROL) XXXXXX is a: (check all that apply) SS Brand Name SS Generic or common name SS Descriptive term SS Don’t know WHY __________________________________________ 9. Have you ever heard of a geographic area called XXXXXXXX?  Yes  No  Don’t know a. If YES, where is it _______________________________ 10. Have you ever heard of a geographic area called (CONTROL) XXXXXXX?  Yes  No  Don’t know b. If YES, where is it _______________________________

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OPTIONAL (for validation purposes) Name _____________________________________________ Telephone Number ____________________________________ THANK YOU VERY MUCH

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APPENDIX G

Restaurant Mall Intercept Questionnaire

Venue _____________________________________ TAKE THE PARTICIPANT TO THE INTERVIEWING AREA. ALLOW THEM TO SIT DOWN. SHOW THEM THE FIVE PHOTOGRAPHS EACH DESIGNATED BY A LETTER—A, B, C, D, E, F.

READ CLEARLY: Today, we are conducting a survey dealing with consumer recognition of XXXXXXX restaurants located in food courts of malls, airports, and train stations. Please closely examine these photographs and let me know when you have completed your examination. For the questions I am about to ask, please refer to the letters on the photos. ALLOW THE INTERVIEWEE TO LOOK AT THE PHOTOS IN FRONT OF THEM. LEAVE PHOTOS ON THE TABLE FOR THE DURATION OF THE INTERVIEW.

1. Do you believe that any two or more of these restaurants, which you see pictured in front of you, are owned by a single company, based on the overall appearance of the restaurants. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK QUESTION 2. IF “NO” OR DON’T KNOW GO TO QUESTION 3

2. Please identify, by letter, which of these restaurants that you believe are owned by a single company based on the overall appearance of the restaurants. _______________________________________________ a. WHY DO YOU SAY THAT? _______________________________________________ _______________________________________________ _______________________________________________ b. WHAT SPECIFIC SIMILARITIES DO YOU NOTICE? (PROBE) _______________________________________________ _______________________________________________ _______________________________________________ 3. Do you believe that any two or more of these restaurants, which you see pictured in front of you, are associated with one or more of the other restaurants based on the overall appearance of the restaurants. YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK QUESTION 4. IF NO OR DON’T KNOW GO TO QUESTION 5.

4. Please identify, by letter, which of these restaurants you believe are associated with one another based on the overall appearance of the restaurants. _______________________________________________ a. WHY DO YOU SAY THAT? (PROBE) _______________________________________________ _______________________________________________ _______________________________________________ 5. Do you believe that any two or more of these restaurants pictured in front of you, are affiliated with one or more of the other restaurants presented here based on the overall appearance of the restaurants? YES _____ [â•›272â•›]â•… Trademark Surveys

NO _____

DON’T KNOW _______

IF “YES,” ASK QUESTIONS 6. IF NO OR DON’T KNOW GO TO QUESTION 7.

6. Please identify, by letter, which of these restaurants that you believe are affiliated with other restaurants pictured here based on the overall appearance of the restaurants. _______________________________________________ a. WHY DO YOU SAY THAT? (PROBE) _______________________________________________ _______________________________________________ _______________________________________________ 7. Do you believe that any two or more of these restaurants, which you see pictured in front of you, is sponsored by one of more of the other restaurants pictured here based on the overall appearance of the restaurants? YES _____

NO _____

DON’T KNOW _______

IF “YES,” ASK a. and b. IF NO, Go to QUESTION 8.

a. Please identify, by letter, which of these restaurants you believe are sponsored by other restaurant pictured here based on the overall appearance of the restaurants. _______________________________________________ b. WHY DO YOU SAY THAT? (PROBE) _______________________________________________ _______________________________________________ _______________________________________________ 8. Do you believe that any two or more of these restaurants pictured in front of you, are authorized by one or more of the other restaurants presented here based on the overall appearance of the restaurants? YES _____ NO _____ DON’T KNOW _______ IF “YES,” ASK QUESTION 9. IF NO OR DON’T KNOW, “THANK YOU VERY MUCH.”

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9. Please identify, by letter, which of these restaurants that you believe are authorized by other restaurants pictured here based on the overall appearance of the restaurants. _______________________________________________ b. WHY DO YOU SAY THAT? (PROBE) _______________________________________________ _______________________________________________ _______________________________________________ THANK YOU VERY MUCH Interviewer’s Name ____________________________ Date __________________

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TABLE OF C A S E S

1-800 CONTACTS, Inc. v. WhenU.Com, Inc. (2005). . . . . . . . . . . . . . . . 88n19, 98n57 Abercrombie & Fitch Co. v. Hunting World, Inc. (1976). . . . . . . . . . . . . . . . . .å°“ . . 118n50 Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc. (1991) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 92n34 Advertise.com, Inc. v. AOL Advert., Inc. (2010). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 115n37 A. J. Canfi eld Co. v. Honickman (1986). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 114n22 Am. Dairy Queen Corp. v. New Line Productions, Inc. (1998). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 99n68 Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co. (1974). . . . . . . . . . . . . . . . . .å°“ 115n33 Am. Scientific Chem., Inc. v. Am. Hospital Supply Corp. (1982). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . 112n11, 123n90, 123n93 Am. Television and Commc’n Corp. v. Am. Commc’n and Television, Inc. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 115n33 Am General Corporation v. Daimlerchrysler Corporation (2002). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . 116n38 Amazing Spaces, Inc. v. Metro Mini Storage (2010) . . . . . . . . . . 136n6, 136n9, 136n11 America Online, Inc. v. AT&T Corp. (2001). . . . . . . . . . . . . . . 117n48, 149n57, 149–57 American Ass’n for Advancement of Science v. Hearst Corp. (1980). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 85n5 American Optical Corp. v. Southwest Petro-Chem, Inc. (1972). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 103n92 American Thermos Products Co. v. Aladdin Industries, Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 168–69 Ameritech, Inc. v. American Information Technologies Corp. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 94n41 Anheuser-Busch, Inc. v. Balducci Publications,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 221–22 Ark Plas Products, Inc. v. Value Plastics, Inc. (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 135n3 Aromatique, Inc. v. Gold Seal, Inc. (1994). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 124n95, 200 Arrow Fastener Co. v. Stanley Works (1995). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 118n53 Atlantis Silverworks, Inc. v. 7th Sense Inc. (1997). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 124n95 Attrezzi, LLC v. Maytag Corp. (2006). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 95n44 Audio Fidelity, Inc. v. High Fidelity Recordings, Inc. (1960). . . . . . . . . . . . . . . . 122n84 Avery Dennison Corp. v. Sumpton (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 112n10

Banff Ltd. v. Federated Dep’t Stores, Inc. (1988). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 94n42 Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona (2003) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 114n27 Bernard v. Commerce Drug Co., Inc. (1991). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 140n31 Big Island Candies, Inc. v. Cookie Corner,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 183 Black & Decker Corp. v. Dunsford (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 140n30 Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co. (1982). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 126n114 Bliss Salon Day Spa v. Bliss World, LLC (2001). . . . . . . . . . . . . . . . . .å°“ . 114n22, 118n52 Bonito Boats, Inc. v. Th under Craft Boats, Inc. (1989) . . . . . . . . . . . . . . . . . .å°“ . 106n114 Book Craft, Inc. v. BookCraft ers USA, Inc. (1984). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 115n33 Boston Beer Co. v. Slesar Bros. Brewing Co. (1993). . . . . . . . . . . . . . . . . 111n2, 119n63 Boston Duck Tours, LP v. Super Duck Tours, LLC (2008). . . . . . 111n1, 114nn26–27 Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing, Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 193 Breakers of Palm Beach, Inc. v. International Beach Hotel Development, Inc. (1993). . . . . . . . . . . . . . . 137n16, 138n21, 139nn25–26 Brookfield Communications, Inc. v. West Coast Entertainment Corp. (1999) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 90n25, 121n80 Brown-Forman Distillery Co. v. Arthur M. Bloch Liquor Importers, Inc. (1938). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 102n82 Carter-Wallace, Inc. v. Procter & Gamble Co. (1970). . . . . . . . . . . . . . . . . .å°“ . . . . . 116n41 Centaur Commc’n, Ltd. v. A/S/M Commc’n, Inc. (1987) . . . . . . . . 123n88, 124n103, 125n105 Cerveceria Centroamericana, S.A. v. Cerveceria India Inc. (1989). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 121n75 Champions Golf Club, Inc. v. The Champions Golf Club, Inc. (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 89n24 Chatam International, Inc. v. Bodum, Inc. (2001). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 90n27 Chevron Chem. Co. v. Voluntary Purchasing Groups (1981, 1982). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 113n19 Cicena Ltd. v. Columbia Telecomm. Group (1990) . . . . . . . . . 124nn95–96, 125n113, 125n113 Ciociola v. Harley-Davidson Inc. (2008) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . 142n36, 142n36 Co-Rect Prods., Inc. v. Marvy Advertising Photography, Inc. (1985). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 123n92 Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc. (1991) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 113n18 Coca-Cola Co. v. Gemini Rising, Inc., 206 Coca-Cola Co. v. Overland, Inc. (1982). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 123n87 Comm. for Idaho’s High Desert, Inc. v. Yost (1996) . . . . . . . 119n55, 120n65, 120n68 Commerce National Insurance Services, Inc. v. Commerce Insurance Agency, Inc. (2000). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 94n43 Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc. (2000) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . 116n42, 119n58 Communications Satellite Corp. v. Comcet, Inc. (1970). . . . . . . . . . . . . . . . . .å°“ . . 102n77 [â•›276â•›]â•… Table of Cases

Community First Bank v. Community Banks (2005). . . . . . . . . . . . . . 137n15, 138n19 Custom Mfg. and Engineering, Inc. v. Midway Services, Inc. (2007). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 88n20 CytoSport, Inc. v. Vital Pharmaceuticals, Inc. (2009). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 138n17 Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center (1997). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 106n109, 111n1, 114n27 Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc. (2009). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 136n10 Daubert v. Merrell Dow Pharmaceuticals, Inc. (1993). . . . . . . . 3, 23–27, 225, 228–29 David Sherman Corp v. Heublein, Inc. (1965). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 104n96 DeCosta v. Viacom Int’l, Inc. (1992). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . 95n45 DeGidio v. West Group Corp. (2004). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 140n34 Dorr-Oliver, Inc. v. Fluid-Quip, Inc. (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 92n32 Dr. Ing. h.c.F. Porsche AG v. Zim (1979) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 102n83 Dranoff -Perlstein Assocs. v. Sklar (1992). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 119n60 Duraco Products, Inc. v. Joy Plastic Enterprises Ltd. (1993). . . . . . . . . . . . . . . . . .å°“ 135n3 E. I. DuPont de Nemours and Company, Plaintiff, v. Yoshida International, Inc., Defendants (1975). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 21–22 E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc. (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 99n68 Echo Travel, Inc. v. Travel Assoc., Inc. (1989). . . . . . . . . . . . . 120n70, 120n72, 123n87, 124n100, 124n102, 124n103 E.I. Du Pont de Nemours & Co. v. Sunlyra International (1995). . . . . . . . . . . . 102n80 Entrepreneur Media, Inc. v. Smith (2002). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 118n51 Equine Tech., Inc. v. Equitechnology, Inc. (1995). . . . . . . . . . . . . . . . . .å°“ . 111n2, 118n54 Estee Lauder, Inc. v. Th e Gap, Inc. (1997). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 87n16 E.T. Browne Drug Co. v. Cococare Products, Inc. (2008). . . . . . . . . . . . 111n4, 119n60 Exxon Corp. v. Exxene Corp.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 220, 222 Exxon Corporation, Plaintiff-Appellant, v. Texas Motor Exchange of Houston, Inc., Defendants-Appellees (1980). . . . . . . . . . . . . . 17–20 Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts (1991) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 122n84 Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc.,(1999) . . . . . . . . . . . . . . . . . .å°“ . . . . 115n37, 118n51, 119n55, 124n102 First Brands Corp. v. Fred Meyer, Inc. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 120n71 Fisher Stoves, Inc. v. All Nighter Stove Works, Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 194 Fishing Hot Spots, Inc. v. Simon & Schuster (1989). . . . . . . . . . . . . . . . . .å°“ . . . . . . 115n35 FM 103.1, Inc. v. Universal Broadcasting of New York, Inc. (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 142n35, 142n37 Fotomat Corp. v. Cochran (1977) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . 89n22 Freedom Card, Inc. v. JPMorgan Chase & Co. (2005). . . . . . . . . . . . . . . . . .å°“ . . 106n109 Frosty Treats, Inc. v. Sony Computer Ent. Am., Inc. (2005). . . . . . . . . . . . . . . 127n117 Frye v. United States (1923). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 23 Table of Casesâ•… [â•›277â•›]

G. Heileman Brewing Co., Inc. v. AnheuserBusch Inc. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 143n42 General Electric Co. v. Joiner,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 225 General Mills Inc. v. Health Valley Foods (1992). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 121n75 General Motors Corp. v. Keystone Automotive Industries, Inc. (2006). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 87n17, 92n34, 127n117 General Motors Corp. v. Lanard Toys, Inc. (2006) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . 122n83 George & Co. LLC v. Imagination Entertainment Ltd. (2009). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 138n17 George Washington Mint, Inc. v. Washington Mint, Inc. (1972). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n110 Giant Food, Inc. v. Nation’s Foodservice, Inc. (1983). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 86n8 Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP (2005). . . . . . . . . . . . . . . . . 91n28 Gimix, Inc. v. JS & A Group, Inc. (1983). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 119n64, 122n86 Grotrian, Helff errich, Schulz, Th . Steinweg Nachf. v. Steinway & Sons (1975). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 102n85 Gruner + Jahr USA Publishing v. Meredith Corp (1993) . . . . . . . . . . . . . . . . . .å°“ . 118n53 Hancock w. American Steel & Wire Co. (1953). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 103n89 Hasbro, Inc. v. Clue Computing, Inc. (1999). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n27 Heartland Bank v. Heartland Home Finance, Inc. (2003). . . . . . . . . . . . . . . . . .å°“ . 119n63 Hoover Co. v. Royal Appliance Mfg. Co. (2001) . . . . . . . . . . . . . 113n17, 147nn55–56 Hot Stuff Foods, LLC v. Mean Gene’s Enterprises, Inc. (2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 137n12 Humble Oil & Refining Co. v. American Oil Co. (1969). . . . . . . . . . . . . . . . . .å°“ . . . . 85n5 Ideal Industries, Inc. v. Gardner Bender, Inc. (1979). . . . . . . . . . . . . . . . . .å°“ . . . . . . 123n88 In re Application of Hehr Mfg. Co. (1960). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 120n71 In re Bongrain Intern. (Am.) Corp. (1990). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112n7 In re Boston Beer Co. L.P. (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 120n70, 124n99 In re Box Solutions Corp. (2006) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . 87n15 In re Chippendales, USA, Inc. (October 1, 2010). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 113n17 In re Etablissements Darty et Fils (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 115n32 In re Gyulay (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 115n30 In re Hehr Mfg. Co. (1960). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 119n59 In re Hyper Shoppes (Ohio) Inc. (1988) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 104n100 In re Kotzin (1960). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 113n17 In re Merrill Lynch, Pierce, Fenner, and Smith (1987). . . . . . . . . . . . . . . . . .å°“ . . . . 112n11 In re Morton-Norwich Products, Inc.(1982). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 117n47 In re Nett Designs, Inc. (2001). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 143n37 In re Omaha Nat’l Corp. (1987) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . 115n30 In re Owens-Corning Fiberglas Corp. (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 112n6 In re Scholastic, Inc. (1992) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 115n35 In re Seats (1995). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 117n48 In re Soccer Sport Supply Co., Inc. (1975). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 115n32 In re Societe Generale des Eaux Minerales de Vittel S.A. (1987) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 115n31 [â•›278â•›]â•… Table of Cases

In re 1st USA Realty Professionals, Inc. (2007). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 102n78 In re Steelbuilding.com (2005) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 112n7 In re Uncle Sam Chem. Co., Inc. (1986). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 120n70, 124n98 In re Wada (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 115n31 In re West Point-Pepperell, Inc. (1972). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 86n9 In re Wielinski (1998). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 115n35 International Order of Job’s Daughters v. Lindeburg & Co., . . . . . . . . . . . . . . . . . .å°“ . . . 193 Interpace Corp. v. Lapp, Inc. (1983) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 116nn39–40 Interstellar Starship Services, Ltd. v. Epix Inc. (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . 114n26 Investacorp, Inc. v. Arabian Inv. Banking Corp. (1991). . . . . . . . . . . . . . . . . .å°“ . . . . 116n42 Inwood Laboratories v. Ives Laboratories, Inc. (1982). . . . . . . . . . . . . . . . . .å°“ 111n3, 190 Iowa Paint Mfg. Co., Inc. v. Hirshfield’s Paint Mfg., Inc. (2003). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . 137n13, 137n13 Ives Laboratories v. Darby Drug Co.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 195, 196 J & J Snack Foods, Corp. v. Nestle USA, Inc., . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 183 Jada Toys, Inc. v. Mattel, Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 217 Japan Telecom, Inc. v. Japan Telecom Am. Inc. (2002). . . . . . . . . . . . . . . 111n2, 112n8, 118n54, 120n67 Jolly Good Indus. Inc. v. Elegra Inc. (1988). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 125n112 Keene Corp. v. Paraflex Industries,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 196–97 Kennedy v. Alabama (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 49 Knorr-Nahrmittel Aktiengesellschaft v. Havland International, Inc. (1980). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . 102n779 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 146n52 Krueger Int’l, Inc. v. Nightingale Inc. (1996). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 99n68 Kubota Corp. v. DaeDong-USA, Inc. (Aug. 19, 2002) . . . . . . . . . . . . 128n124, 128–34 Kumho Tire Company, Ltd., Petitioners, v. Patrick Carmichael (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 25–27, 225 Lambert Pharmacal Co. v. Bolton Chemical Corp. (1915). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 104n99 Lane Capital Management, Inc. v. Lane Capital Management, Inc. (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 85n1 Lemme v. National Broadcasting Co., Inc. (2007). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 143n39 L’Erin Cosmetics Co. v. Max Factor & Co. (April 17, 1984). . . . . . . . 139n28, 144n43 Levi Strauss & Co. v. Blue Bell, Inc. (1980). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 112n6, 116n43 “LEXIS vs. LEXUS” case, . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 205 Liquid Controls Corp. v. Liquid Control Corp. (1986) . . . . . . . . . . . . 114n22, 121n79 Litwin v. Maddux (1957) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 125n107 L.J. Mueller Furnace Co. v. United Conditioning Corp. (1955). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 105n106 Lois Sportswear U.S.A., Inc. v. Levi Strauss & Co. (1986). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 99n68 Lund Trading ApS v. Kohler Co. (1998). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 119n64 Table of Casesâ•… [â•›279â•›]

M. B. H. Enterprises, Inc. v. WOKY, Inc. (1980) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 145n50 Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc. (1995). . . . . . . . . 111n5, 114n26, 124n103 Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc. (1955) . . . . . . . . . . . 92nn33–34, 105n108 Maternally Yours v. Your Maternity Shop (1956). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 106n109 Matt el, Inc. v. Azrak-Hamway Int’l, Inc. (1983). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 120n70 Mattel, Inc. v. MCA Records, Inc. (1998). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 96, 96n50 McBee v. Delica Co., Ltd. (2005). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . 99n66 McGregor-Doniger, Inc. v. Drizzle, Inc. (1979) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 85n4 McNeil-PPC v. Guardian Drug Co. (1997). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 91n30 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . 205 Medic Alert Foundation U.S., Inc. v. Corel Corp. (1999). . . . . . . . . . . . . . . . . .å°“ . . . 93n38 Meta-Film Associates, Inc. v. MCA, Inc. (1984). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 88n18 Miller Brewing Co. v. Falstaff Brewing Corp. (1981). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 112n8 Mitek Corp. v. Pyramid Sound Corp. (1991) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 103n91 Mobil Oil Corp. v. Mobile Mechanics, Inc. (1976). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 145n49 Morningside Group Ltd. v. Morningside Capital Group, LLC (1999). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . 89n23 Morton-Norwich Products, Inc. In re,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . 201 Motorola, Inc. v. Griffiths Electronics, Inc. (1963) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 86n7 Myrurgia, S. A., v. Comptoir de La Parfumerie S. A. Anciennce Maison Tschanz (1971). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 103n88 Nabisco v. PF Brands,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 205 National Business Forms & Printing, Inc. v. Ford Motor Co. (Oct. 30, 2009). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 145nn45–46 National Lampoon, Inc. v. Am. Broadcasting Cos. (1974) . . . . . . . . . . . . . . . . 125n112 Neva-Wet Corp. v. Never Wet Processing Corp. (1938). . . . . . . . . . . . . . . . . .å°“ . . . 102n81 New England Butt Co. v. Int’l Trade Comm’n (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . 117n47 New Kids on the Block v. News America Pub. (1992) . . . . . . . . . . . . . . . . . .å°“ . . . . . 96n48 New West Corp. v. NYM Co. of Calif., Inc. (1979) . . . . . . . . . . . . . . . . . .å°“ . . . . . 125n110 New York State Society of Certified Public Accountants v. Eric Louis Associates, Inc. (1999) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 90n26 NFL v. Governor of Delaware (1977). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . 93n37 Nike, Inc. v. Nikepal International, Inc.,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 217 Norm Th ompson Outfi tt ers, Inc. v. General Motors Corp. (1971). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 123n89 Northam Warren Corp. v. Universal Cosmetic Co. (1927). . . . . . . . . . . . . . . . . .å°“ 101n73 OBH, Inc. v. Spotlight Magazine, Inc. (2000). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 90n26 Official Airline Guides, Inc. v. Goss (1993). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 139n24 Owens-Corning Fiberglas Corp., In re, . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 194 Pagliero v. Wallace China,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 192 PaperCutter, Inc. v. Fay’s Drug Co. (1990). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . 116n38 Papercutter, Inc. v. Fay’s Drug Co., Inc. (1990). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 124n102 [â•›280â•›]â•… Table of Cases

Paramount Pictures Corp. v. Worldwide Entm’t Corp. (1977). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 125n111 Park’n Fly, Inc. v. Dollar Park And Fly, Inc. (1985). . . . . . . . . . . . . . . . . . . . . . . . . 121n80 Payless Shoesource, Inc. v. Reebok Int’l Ltd. (1993). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 92n35 Platinum Home Mortgage Corp. v. Platinum Financial Group (1998). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . 119nn56–57, 125n109 Plough, Inc. v. Kreis Laboratories (1963). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 101n75 Postal Instant Press v. Personalized Instant Printing-P.I.P. Corp. (1978). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 103n94 Premier-Pabst Corp. v. Elm City Brewing Co. (1935). . . . . . . . . . . . . . . . . .å°“ . . . 125n106 Qualitex Co. v. Jacobson Prods. Co., Inc. (1995) . . . . . . . . . . . . . . . . . .å°“ . . 112n9, 117n47 Ralston Purina Co. v. Thomas J. Lipton, Inc. (1972). . . . . . . . . . . . . . . 115n30, 115n30, 125n105, 144n44 Ricks v. BMEzine.com, LLC (2010) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 140n32, 140n32 Rogers v. Grimaldi, . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 117nn45–46 Roux Laboratories, Inc. v. Clairol Inc. (1970). . . . . . . . . . . . . . . . . .å°“ . . . 119n59, 123n94 Rudolph International, Inc. v. Realys, Inc. (2007). . . . . . . . . . . . . . . . . .å°“ . 118n51, 136n7 Sands, Taylor & Wood Co. v. Quaker Oats Co. (1992). . . . . . . . . . . . . . . . . .å°“ . . . . 145n51 Saratoga Vichy Spring Co. v. Lehman (1979, 1980) . . . . . . . . . . . . . . . . . .å°“ . . . . 124n102 Schwinn Bicycle Co. v. Ross Bicycles, Inc. (1989). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . 122n85 Security Ctr., Ltd. v. First Nat’l Sec. Ctrs. (1985). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 114n26 Self- Realization Fellowship Church v. Ananda Church of Self-Realization (1995). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 123n89 Shade’s Landing, Inc. v. Williams (1999) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 140n32 Sharper Image Corp. v. Target Corp. (2006). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 122n86 Smith, Kline & French Laboratories v. Clark & Clark, . . . . . . . . . . . . . . . . . .å°“ . . . 199–200 Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co. (1986). . . . . . 112n9, 116n41, 116n43 Specialty Measurements, Inc. v. Measurement Systems, Inc. (1991). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 103n95 Spotless Enterprises, Inc. v. A&E Products Group L.P., . . . . . . . . . . . . . . . . . .å°“ . . . . . . . 191 Sprinklets Water Center, Inc. v. McKesson Corp., . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 127 SquirtCo, Cross-Appellee, v. The Seven-Up Company, a Missouri Corporation and U.S.A., Inc., a Missouri Corporation, Cross-Appellants (1980). . . . . . . . . . 14–17 SquirtCo v. Seven-Up Co. (1979). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . 102n84 S.S. Kresge Co. v. United Factory Outlet, Inc. (1980). . . . . . . . . . . . . . . . . .å°“ . . . . . . 112n8 Standard Brands v. Smidler (1945). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 139n23 State Farm Mut. Auto. Ins. Co. v. Sharon Woods Collision Center, Inc. (2007). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 145n47 Sugar Busters, LLC v. Brennan (1999) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 115n34, 117n45 Sunbeam Prods., Inc. v. West Bend Co. (1997, 1998). . . . . . . . . . . . . . . . . .å°“ . . . . . 117n46 Sunmark, Inc. v. Ocean Spray Cranberries, Inc. (1995). . . . . . . . . . . . . . . . . .å°“ . . . 118n52 Tally-Ho, Inc. v. Coast. Cmty. College Dist. (1990). . . . . . . . . . . . . . . . . .å°“ . . . . . . . 116n38 Target Brands, inc. v. Shaun N.G. Hughes (2007) . . . . . . . . . . . . . . . . . .å°“ . . . . . . 124n101 Table of Casesâ•… [â•›281â•›]

Test Masters Educational Services, Inc. v. Singh (2005, 2006). . . . . . . . . 119nn61–62, 126n116 Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc. (1992). . . . . . . . . . . . . . . . . .å°“ 119n62 Thomas & Betts Corp. v. Panduit Corp. (1995) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . 120n71 Time, Inc. v. Petersen Publ’g Co. (1999). . . . . . . . . . . . . . . . . .å°“ . . . 118n49, 118nn49–50 Todd Christopher Intern. v. Samy Salon Systems (2007). . . . . . . . . . . . . . . . . . . 143n41 Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc. (1996) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . 116n39, 122n82 Tornado Industries, Inc. v. Typhoon Industries, Inc. (1953). . . . . . . . . . . . . . . . 103n90 Traf Fix Devices, Inc. v. Mktg. Displays, Inc. (2001) . . . . . . . . . . . . . . . 115n36, 117n47 Trak, inc. v. Traq, Inc. (1981). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . 102n86 Twin Peaks Prods., Inc. v. Publ’n Intern., Ltd. (1993). . . . . . . . . . . . . . . . . .å°“ . . . . . 115n34 Two Pesos, Inc. v. Taco Cabana, Inc., (1992). . . . . . . . . . . . . . . . 111n2, 111n5, 113n19, 114n22, 114n27, 119n57 Union Carbide Corp. v. Ever-Ready & Gilbert (1976). . . . . . . . . . . . . . . . 11–14, 99n68 Union Mfg. Co., Inc. v. U.S. Int’l Trade Comm’n, (1987). . . . . . . . . . . . . . . . . .å°“ . . 119n64 Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex. (1990). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 138n18 V Secret Catalogue, Inc. v. Moseley,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 206–7, 212, 215 Vais Arms, Inc. v. Vais (2004). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . 126n116 Vaughan Mfg. Co. v. Brikam Int’l, Inc. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . 120n70 Versa Prods. Co. v. Bifold Co. (1995). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 106n115 Victor Co. of Japan. Ltd. v. International Video Corp. (1970). . . . . . . . . . . . . . . . 103n93 Victor Moseley and Cathy Moseley v. V Secret Catalogue Inc. (2003) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . 27–29 Vision Ctr. v. Opticks, Inc. (1979, 1980) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . 121n73 Vision Sports, Inc. v. Melville Corp. (1989). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . 120n66 Volkswagenwerk AG v. Hoffman (1980) . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 86n6 Vuitton et Fils S.A. v. J . Young Enterprises,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 194 Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000) . . . 111, 111nn2–3, 111nn2–3, 113n18, 115n36, 118n52 Wawa, Inc. v. Haaf,. . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ . 220–21 W.E. Bassett Co. v. Revlon, Inc. (1970). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . .å°“ 116n41 William Waltke & Co. v. Geo. H. Schafer & Co. (1920). . . . . . . . . . . . . . . . . .å°“ . . . 104n99 WLWC Centers, Inc. v. Winners Corp. (1983). . . . . . . . . . . . . . . . . .å°“ . . . . . . 147nn53–54 Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd. (1988). . . . . . . . . . . . . . . . . .å°“ . . . . . . 120n67, 121nn74–76, 123n94 Yankee Candle Co. v. Bridgewater Candle Co. (2001). . . . . . . . . . . . . . 112n9, 119n64, 122n86, 123n93 Yarmuth-Dion, Inc. v. D’ion Furs, Inc. (1987). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . 89n21 Yurman Design, Inc., v. PAJ, Inc. (2001). . . . . . . . . . . . . . . . . .å°“ . . . . . . . . . . . . . . . . . 115n37 Zatarains, Inc. v. Oak Grove Smokehouse, Inc. (1983). . . . 120n65, 121n73, 124n100 [â•›282â•›]â•… Table of Cases

INDEX

Abbreviations, 176–78 Abercrombie Test, 187 Abuse of discretion, 27 Acquired distinctiveness, 111. See also Secondary meaning Actual benefit test, 193–94 Actual confusion, 78–79 Administrative efficiency of survey research, 42 Advertising pop-up, 98–99 truth in, 6, 8, 72, 235 Advertising campaigns, comparative, 96 Affiliation, confusion as to, 93–94 America Online, Inc. v. AT&T Corp., 149–57 American Thermos Products Co. v. Aladdin Industries, Inc., 168–69 Ameriquest Mortgage, 93 Anheuser-Busch, Inc. v. Balducci Publications, 221–22 Anticybersquatting Consumer Protection Act of 1999 (ACPA), 97 Anti-Monopoly v. General Mills Fun Group, 180–81 Arbitrary marks, 77–78, 118, 136–37, 139 Aromatique, Inc. v. Gold Seal, Inc ., 200 Association test, 220–21 unsuccessful, 222–23 AT&T, 6 “Bad faith,” 106 Bait and switch, 91–92 Big Island Candies, Inc. v. Cookie Corner, 183 Black & Decker, 4, 92–93 Blurring, dilution by, 203–5, 212 requirements for injunction based on, 211, 212

Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing, Inc., 193 Brand-indifferent shoppers, 89 BREAK & BAKE, 183 “Buddy List,” 150–53, 157 Burden of proof, 10 Case analysis, 39 Causal research, 38, 40 Chi Square analysis, 34 Cicena Ltd. v. Columbia Telecomm. Group, 125n113 Ciociola v. Harley-Davidson Inc., 142n36 Circumstantial evidence, 120, 124 Cluster sampling, 47, 62 Coca-Cola Co. v. Gemini Rising, Inc., 206, 206 Colorable imitation, 105 Commercial source, 111 Commercial success test, 196–97 Comparable alternatives test, 198 Comparative advertising campaigns, 96 Competition theory, 197–98 six tests under the, 198–202 Competitor’s use, 166 Computer-assisted interviewing, 43 Confusing similarity. See also Likelihood of confusion exact identity not necessary for, 101 “Confusingly similar” analysis, 86 Confusion. See also Likelihood of confusion factors leading to, 100–101 forms of, 86–96 hierarchy of, 107–8 intent to confuse, 106–7 Connection, confusion as to, 93–94

“Consulting expert,” 245. See also Survey expert Consumer motivation test, 195–96 Consumers. See Customers Control group, 36–38, 40 Control methodology, 34–38 Control questions, 37–38 Convenience sampling, 47, 62 “Copying,” 106 “Counterfeit,” 105 Cross-sectional studies, 40 CUSTOM BLENDED, 176 Customers. See also Shoppers perceptions of, 122–26 and potential customers, confusion of, 81, 87 purchasers vs. users of a product, 9–10 Cybersquatting, 97, 207 Data coding, 55 Data collection, 50–51, 61 aided vs. unaided questions, 54–55 modes of, 42–44 questionnaire development, 51–54 Data collection forms, designing, 42 challenge of base rates, 44 Data entry, 55 Data matrix, 55 Database marketing data, 41 Daubert challenges, 63, 229–31 Daubert hearings, abuses and misuses of, 229 Daubert motions, ix–x, 63, 225–26 and the “junk science” issue, 227 and the posturing argument, 227–28 why they are denied, 226–27 Daubert rulings, 24–27, 228–31 implications and abuses, 225–26 Daubert v. Merrell Dow Pharmaceuticals, Inc., 3, 23–27, 63, 225, 228–29 “De facto/de jure” test, 200–202 Dealers, perceptions of, 122–26 Deceptive and deceptively misdescriptive marks, 147 Descriptive marks, 77, 142 examples, 144 Descriptive studies/research, 38, 40 types of, 40 Descriptive terms, fair use for, 145–47 Descriptiveness degrees of, 5 and nature of audience, 143–44 [â•›284â•›]â•… Index

tests for, 143 Descriptive-suggestive continuum, 78, 82, 140, 149–50 a real case testing the, 147–49 Dictionary definitions (used to prove genericness), 167 Dilution, 203 “association” aspects of, 208–9 forms of, 203. See also Blurring where goods and services are competitive, 209 Dilution law, 28–29. See also Federal Trademark Dilution Act of 1995; Trademark Dilution Revision Act of 2006 Dilution surveys, types of, 216–17 Direct copying, 106 Direct evidence, 120 Distinctive marks, 113 inherently, 113–14, 136–37 Distinctiveness, 135 acquisition of, 114 types of, 135–36 “Dom Perignon” case, 222–23 Domain names, Internet, 90, 97 Doubt, rule of, 104 “Dry runs” for trial preparation, 230 “Ease of manufacture” test, 199–200 Eastern Airlines, 160–61 “Effective competition” test, 200 E.I. DuPont de Nemours and Company v. Yoshida International, Inc., 21–22 Employees, perceptions of, 122–26 “Essential to usage” test, 198–99 Eveready Format, 11–12, 16–17 “Exclusive and continuous” use, 124 Experience surveys, 39 Experimental research, 34 Expert witnesses and expert testimony, 215–16. See also Daubert rulings rattling the expert, 230 Exploratory research, 38, 39 methods for conducting, 39–40 Extended purchase process, 91 Exxon Corp. v. Exxene Corp., 220, 222 Exxon v. Texas Motor Exchange of Houston, Inc., 17–20 Fad products, 125 Fair use, 210

classic vs. nominative, 96, 145 for descriptive terms, 145–47 Fair use defense, 142n36 as defense to alleged trademark infringement, 96 upheld in courts, examples of, 146–47 FAIRMONT, 204–5 “Fame”/”famous” criteria of, 209–10, 214 definition and nature of, 212–15 “Famous” mark(s), 212 proving likelihood of injury to the, 215–17 Fanciful marks, 77–78, 136–38 examples, 138 Federal Trade Commission (FTC), 2 Federal Trademark Dilution Act of 1995 (FTDA/”1996 Act”), 28, 203, 209, 211–15 burden of proof and remedies, 210–11 exclusions to, 210 Federal Trademark Dilution Revision Act (TDRA). See Trademark Dilution Revision Act of 2006 Fiberglass insulation products, 5 Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 194 Focus groups, 39, 72–73 Forward confusion, 80 “Free riding,” 106, 203 “Free speech” defense, 205–6 Frye v. United States, 23 Functionality, 106, 117 defined, 201 Mitchell Wong on, 191–202 Thornburg on, 189–91 Functionality questions, framing appropriate, 190–91 Gatorade, 145 General Electric Co. v. Joiner, 225 Generic marks, 76–77 (dis)proving whether a trademark is generic, 83–84 trademarks becoming, and vice versa, 164–66 Generic names foreign prefixes for, 179 logo registrations of, 178–79 Generic terms composite, 176–78

vs. highly descriptive terms, 175–76 and non-generic terms, examples of, 173–75 Generic use, precautions to prevent, 173 Genericide, 162–63, 171–73 Genericness, 5–6 basic issues of, 159–62 consumer surveys to determine, 167–71 proving and disproving, 22, 166–67 testing for, 162–64 Genericness Doctrine, 159, 165 Geographic terms that have become generic, 175 Gilson on Trademarks (Lalonde), 107, 126–27, 180–81, 218–19 GOOGLE search engine, 138 Hi-C® fruit drinks, 2 Hidden use of trademark, 88 “Hierarchy of confusion,” 107–8 HONEY BAKED HAM, 128 Hypotheses, 34, 38 developing/formulating, 34, 38, 39 Identification theory of functionality, 191–92, 197–98 tests under, 192–97 “IM” (instant messaging), 150, 156, 157 Impeachment of expert testimony, laying a foundation for, 230 Incidence rate, 48 Indicia of source test, 192–94 Infringement, 142 In-house use of trademark, 88 Initial interest confusion, 80, 86, 90, 92 Intellectual Property (IP) surveys. See Surveys Intent to deceive, 105–6 Internal data, 41 International Order of Job’s Daughters v. Lindeburg & Co., 193 Internet, ix, 207 confusion on, 90, 97–98, 109 pop-up advertising on, 98–99 Internet Eveready Survey, 251–53 Internet surveys, 68–70 advantages, 69 basic non-personal, 242, 243 disadvantages, 69–70 Indexâ•… [â•›285â•›]

“Internet Surveys for Trademark Litigation” (Gelb and Gelb), 50 Internet/telephone hybrid surveys, 65, 70–71, 243 Investors, confusion of, 89 Inwood Laboratories v. Ives Laboratories, 190 Inwood test, 190, 191 Iowa Paint Mfg. Co., Inc. v. Hirshfield’s Paint Mfg., Inc., 137n13 Ives Laboratories v. Darby Drug Co., 195, 196

secondary meaning and, 116–17 unfair competition in trade dress relating to, 188 Likelihood of confusion issues, 80–81, 85–86. See also specific issues Likelihood of confusion survey, 3–4 Likelihood of dilution, 212 Longitudinal studies, 40 “Looking glass” proposals, 224 Lucent Technologies, 6

J & J Snack Foods, Corp. v. Nestle USA, Inc., 183 Jada Toys, Inc. v. Mattel, Inc., 217 Judgment sampling, 47, 62

M. B. H. Enterprises, Inc. v. WOKY, Inc., 145 Mail intercept surveys, 66–68 Mail surveys, 63–64 Mall Intercept Survey Interviewer Instructions, 263–66 Mall Intercept Survey Screening Questionnaire, 259–62 Mall surveys, 241 “Manual for Complex Litigation” (Federal Judicial Center), 3 Market research determining the objectives of, 33–38 establishing the need for, 32 Market research process, 59. See also Data collection analyzing data, 55 conducting exploratory research, 60 creating the research design, 60–61 defining the problem, 32–33, 60 determining research design, 38–40 determining sample plan and size, 45. See also Non-probability samples; Probability samples formulating a hypothesis, 60 identifying secondary data information types and sources, 41–42 interpreting and presenting research information, 61 preparing research report, 56–57 questionnaire development, 51–54 tabulating data, 55 validating data, 55–56 Mattel, Inc. v. MCA Records, Inc., 96 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 205 Media usage (used to prove genericness), 167 Metatags, Internet, 90 MICHELOB beer, 221–22 Mickey Mouse, 162

Keene Corp. v. Paraflex Industries, 196–97 Kennedy v. Alabama, 49 KLEENEX, 164 Knockoff products, 92–93, 237 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 146 Kubota Corp. et al. v. DaeDong–USA, Inc., 128–34 Kumho Tire Company, Ltd. v. Patrick Carmichael, 25–27, 225 Lanham Act of 1946, 37, 113, 114 criteria for confusion under, 93 “deceptively misdescriptive” marks and, 147 on “exclusive and continuous” use, 124 Gerald Ford on, 2 Internet domain names and, 97 likelihood of confusion and, 104–5 requirements of, 96–97 secondary meaning and, 124–25 trade dress and, 187 truth-in-advertising and, 72 Lasting Impressions (LI), 146 Lawyer and survey expert, guidelines for appropriate contact between, 245 Letter marks, 103 “LEXIS vs. LEXUS” case, 205 Likelihood of confusion. See also Confusion vs. actual confusion, 98–100 different levels of confusion, 78–80 vs. dilution, 207–8 factors to be considered in determining, 100–101 proving, 104–5 [â•›286â•›]â•… Index

MICROCOLOR, 146 Microsoft. See Windows computer operating system Mini Melts, 95–96 Misspellings, 176–78 Mobil Oil Corp. v. Mobile Mechanics, Inc., 145 Monopoly, 180–81 Morton-Norwich Products, Inc. In re, 201 “Most difficult format,” 220–23 Nabisco v. PF Brands, 205 New PASO Survey, 267–70 Newcomer rule, 104 “Niche” fame, 215 Nike, 136, 138, 218 Nike, Inc. v. Nikepal International, Inc., 217 Nikepal protocol, 218 Nominative fair use, 96, 145 “Non-functional” material, copying, 106 Non-probability samples, 45–48, 61–62 types of, 62 Non-purchasers, confusion of, 81, 88 Nth sampling, 46 Observational research, 34 OddzOn Products v. Just Toys, 190, 191 Owens Corning, 5 Owens-Corning Fiberglas Corp., In re, 194 Pagliero v. Wallace China, 192 “Palming off,” 122 Parker Brothers, 180 Patent and Trademark Office (PTO), 104 Patent infringement, 6 Person-based research, advantages and disadvantages of, 42 Phonetic similarity, 102 Pink Panther, 5 Piracy, 125 Plaintiff ’s use (used to prove genericness), 167 Point of sale confusion, 86 Pop-up advertising on Internet, 98–99 Post-sale confusion, 81, 86, 88, 92–93 Pre-recruit surveys, 71, 243–44 Pre-test, 54 Primary data, 41 Primary meaning, 112 Private label branded products, 91–92 Private use of trademark, 88

Probability samples, 61 types of, 46–49, 62 Probable confusion, 79. See also Likelihood of confusion Product confusion, 80, 87 Product shape trade dress and trademarks, 91 Professional buyers, 105 Professionals, perceptions of, 122–26 Projective techniques, 39 Published sources, 41 Purchaser confusion of source after time of purchase. See Post-sale confusion Purchasers. See also Customers; Shoppers vs. users of a product, 9–10 Qualitative research and qualitative techniques, 72–73 Questionnaire development, 51–54 Questions aided vs. unaided, 54–55 asked by a person, 43 control, 37–38 framing appropriate functionality, 190–91 QUIRST, 14–16 Quota sampling, 48–49, 62 Ralston Purina Co. v. Thomas J. Lipton, Inc., 115n30 Reckitt Benckiser, Inc., 95 “Reference Guide on Survey Research” (Diamond), 1, 51, 64, 238 Referral sampling, 48 “Relation to usage” test, 199 “Relevant group” of customers/ consumers, 87 Reliability, 60, 234 Restatement of Torts (1938), 100, 101 Restatement (Third) of Unfair Competition, 100, 101 Restaurant Mall Intercept Questionnaire, 271–74 Reverse confusion, viii, 80, 86, 94–96 Ricks v. BMEzine.com, LLC, 140n32 Sampling error, 45–46 Sampling techniques, 61–62 Scientific knowledge, admissibility of, 26 criteria for determining, 225–26. See also Daubert rulings Indexâ•… [â•›287â•›]

Seabrook Test, 187–88 Search engine banner ads, 98 Secondary data, 41 Secondary data analysis, 39 “Secondary expert,” 238, 239 Secondary meaning, 76, 111–13 categories of marks requiring proof of, 114–15 and likelihood of confusion, 83 in the making, 125 and the mark’s “strength,” 118–19 proving, 119–21 sources of evidence for, 123–26 survey thresholds of proof of, 126 when it is (not) necessary, 113–16 Secondary meaning issues, 82–83, 111–13, 117–18. See also specific issues proof of actual confusion by copying, 122 Secondary meaning surveys, 5 earlier, 127–34 Segmentation dynamics, 42 Self-administered surveys, 43–44 Senior user’s customers, confusion of, 89 Shoppers. See also Customers; Purchasers careless and brand-indifferent, 89 Simple random sample, 46, 62 Single source cases, 171 “Skip interval,” 46 Smith, Kline & French Laboratories v. Clark & Clark, 199–200 Snakelight flexible flashlight, 4, 92 Sony Play Station 2 video system, 9–10, 65 “Sound, sight, and meaning” trilogy, 101–3 Source confusion, 80, 87 Sponsored links, 98, 236–37 Sponsorship, confusion as to, 93–94 Spotless Enterprises, Inc. v. A&E Products Group L.P., 191 Sprinklets Water Center, Inc. v. McKesson Corp., 127 SQUIRT, 14–17 Squirt with Product Array Mall Intercept Questionnaire, 255–57 Squirtco v. Seven-Up & U.S.A., Inc., 14–17 Standardization, 42 “Star Wars Program,” 161–62 Stratified sampling, 46–47, 62 Suggestive marks, 77, 118, 137, 139–41. See also Descriptive-suggestive continuum examples, 141 Sun Oil Co., 176 [â•›288â•›]â•… Index

Suppliers, confusion of, 89 Survey battleground, 78 Survey data collection. See Data collection Survey expert cost and compensation considerations, 240–45 and the “dark side” of surveys, 9–10 determining the need for a, 233–37 developing the report of the, 245–46 guidelines for appropriate contact between lawyer and, 245 how and when to retain a, 239–40 how to select a, 237–39 questions confronted by the, 32–33 use as a consultant, 8–9 who qualifies as a, 7–8, 237–39 Survey research, advantages of, 42 Surveys, IP, 62–63, 123 are all subject to criticism, 234–35 courts’ reluctance to accept evidence from, 2 evolution of the use of, 1–3 non-litigation use of, 6–7 notable cases with implications for, 10–29 qualifications for conducting, 7–8 reasons for widespread use of, 1–2 types of, 63–71 use in litigation, 3–6 Syndicated sources, 41 Systematic sampling, 46 Tarnishment, 203, 205–7, 212 Tarnishment surveys, 221–22 Technical knowledge, admissibility of, 26. See also Daubert rulings Teflon, 21, 162 Teflon protocol, 22, 37, 65 Teflon Survey, 22, 169–71, 247–49 Telephone surveys, 64–66, 241–43. See also Internet/telephone hybrid surveys “Testifying expert,” 245. See also Survey expert Testimony of persons in the trade, 167 Tex-on, 19, 20 Texxon Motor Centers, 17, 18 Texxon Motor Exchange, 17, 18 Thermos Survey, 168–69, 181 THIRST AIDS, 145 Time, Inc. v. Petersen Publ’g Co., 118n49 Tractors, 128–34

Trade dress defined, 82, 185 examples of protectable, 186 examples of what it would not cover, 185–86 generic, 186 relates to the tangible, not the abstract, 185–86 tests for inherently distinctive packaging, 187–88 unfair competition in, relating to likelihood of confusion, 188 Trade dress confusion survey, 4–5 Trade dress issues, 81–82 dilution of, 213 Trade dress protection, secondary meaning for, 187 Trade dress survey dynamics, 188–89 Trademark Dilution Revision Act of 2006 (TDRA/2006 Act), 28–29, 203, 206, 209, 211, 213–15, 219 highlights of, 211–13 and post-2006 cases, 217–18 Trademark infringement, elements that must be proven to establish, 114 Trademark strength, determining, 75–78

Trademark Trial and Appeals Board (TTAB), 121, 144, 176 “Triple interference,” 122 Truth-in-advertising, 6, 8, 72, 235 Union Carbide v. Ever-Ready & Gilbert, 11–14 V Secret Catalogue, Inc. v. Moseley, 206–7, 212, 215 Validity, 60, 142, 234 Victor Moseley and Cathy Moseley v. Secret Catalogue Inc., 27–29 Victoria’s Secret and Victor’s Secret (novelty store), 27–28, 206–7, 216, 217 Vuitton et Fils S.A. v. J . Young Enterprises, 194 Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 111nn2–3, 187 Wawa, Inc. v. Haaf, 220–21 Windows computer operating system (OS), 5, 165–66 XEROX, 138, 164, 172, 173 “You Have Mail,” 153–56

Indexâ•… [â•›289â•›]