international trademark association - …...crisps as a brand name, and either 36% or 41%,...

INTELLECTUAL PROPERTY SURVEYS: 2017

Matthew G. Ezell Ford Bubala & Associates

Copyright © 2018 Matthew G. Ezell All Rights Reserved

No Claim to Orig. US Gov. Works

The author sincerely thanks

Jerre B. Swann at Kilpatrick Townsend & Stockton LLP and Dr. AnnaBelle Sartore and Theresa Bavaro at Ford Bubala & Associates.

Without their diligent research and assistance, this paper would not have been possible.

TABLE OF CONTENTS

I. INTRODUCTION 1 II. THE YEAR IN REVIEW: 2017 A. GENERICNESS SURVEYS 2 B. SECONDARY MEANING SURVEYS 7 C. LIKELIHOOD OF CONFUSION SURVEYS 12

D. FALSE ADVERTISING SURVEYS 24

E. FAME 25

F. DAUBERT/ADMISSIBILITY ISSUES 26

G. OTHER SURVEY ISSUES 29 III. BIBLIOGRAPHY—INTELLECTUAL PROPERTY

SURVEYS: 2017—BY CIRCUIT 32 IV. BIBLIOGRAPHY—INTELLECTUAL PROPERTY SURVEYS: 2017—BY ISSUE 38 V. BIOGRAPHICAL INFORMATION 45

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I. INTRODUCTION

This paper is the annual follow-up to fifteen previous papers:1 (1) "Lanham Act Related Surveys: The Year In Review & Emerging Issues" published in the 1999 Practising Law Institute handbook Litigating Copyright, Trademark & Unfair Competition Cases for the Experienced Practitioner (2) "Lanham Act Surveys: 2000" published in the 2000 Practising Law Institute handbook Litigating Copyright, Trademark & Unfair Competition Cases for the Experienced Practitioner (3) "Lanham Act Surveys: 2001" published in the 2001 Practising Law Institute handbook Strategies for Litigating Copyright, Trademark & Unfair Competition Cases (4) "Lanham Act Surveys: 2002" published in the 2002 Practising Law Institute handbook Strategies for Litigating Copyright, Trademark & Unfair Competition Cases (5) "Lanham Act Surveys: 2003" published in American Intellectual Property Law Association annual proceedings, 2003 (6) "Lanham Act Surveys: 2004" published in the Law Education Institute National CLE Conference proceedings, 2005 (7) "Lanham Act Surveys: 2005" presented at a meeting of the Intellectual Property Law Section of the State Bar of Georgia, reprinted in the NAD Annual Conference proceedings, 2006, and in the Law Education Institute National CLE Conference proceedings, 2007 (8) "Intellectual Property Surveys: 2006" published on the INTA website (9) "Intellectual Property Surveys: 2007" published on the INTA website (10) "Intellectual Property Surveys: 2008-2009" published on the INTA website (11) "Intellectual Property Surveys: 2010" published on the INTA website (12) "Intellectual Property Surveys: 2011-2012" published on the INTA website (13) "Intellectual Property Surveys: 2013-Mid 2014" published on the INTA website (14) "Intellectual Property Surveys: Mid 2014-2015" published on the INTA website (15) "Intellectual Property Surveys: 2016" published on the INTA website

The following provides short excerpts of a number of selected opinions referencing survey evidence published in opinions from January 2017 through December 2017,2 which might be of interest to the Lanham Act litigator. The bibliographies to this paper provide citations, by circuit and by survey issue, for all identified opinions published during this time period in which survey evidence was referenced.

1 Copies of the previous papers published by the Practising Law Institute (PLI) are available from the PLI or Westlaw. The previous paper published in the Proceedings of the American Intellectual Property Law Association (AIPLA) is available from the AIPLA. A compilation of all these papers is available at INTA.org. Copies of these papers and the compilation are also available from Ford Bubala & Associates. 2 The primary focus of this paper and prior annual reviews of survey evidence is on surveys related to Lanham Act claims. Notwithstanding this focus, this paper, as well as previous papers, may include reference to surveys in other intellectual property matters as they are identified.

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II. THE YEAR IN REVIEW: 2017 A. GENERICNESS SURVEYS

Booking.com B.V. v. Matal (USPTO), 2017 U.S. Dist. LEXIS 126320, *1-*2, *50-*58 (E.D. Va. 2017)

Plaintiff Booking.com B.V. ("Booking.com " or "plaintiff") filed this civil action challenging the denial by the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") of four trademark applications involving the mark "BOOKING.COM"…For each of the applications, the TTAB found plaintiff's marks ineligible for registration as trademarks because it concluded that BOOKING.COM is generic for the services identified in the applications or, alternatively, that it is merely descriptive and lacks acquired distinctiveness.

… Conversely, plaintiffs have adduced persuasive evidence that the

consuming public understands BOOKING.COM to be a specific brand, not a generic name for online booking services. In particular, plaintiff produced a Teflon survey which revealed that 74.8 percent of respondents identified BOOKING.COM as a brand name…

… The list of terms and product descriptions shown to respondents were • The term at issue:

"BOOKING.COM (Hotel and other lodging reservation services)"

• Three brand names: "ETRADE.COM (Stock and investor broker services)" "PEPSI (Cola and other soft drinks)" "SHUTTERFLY (Photo-sharing and photo gift services)"

• Three common names "SPORTING GOODS (Products used in sports and other physical activity)" "WASHINGMACHINE.COM (Review and sales of washing machines)" "SUPERMARKET (Retail sale of food and other groceries)"

… …The following table displays the proportion of respondents who identified each

trademark as a brand name versus a common name, compared to BOOKING.COM: BOOKING.COM PEPSI ETRADE.COM SHUTTERFLY Brand name 74.8% 99.3% 96.8% 96.8% Common name 23.8% 0.8% 3.0% 3.0% Don't know 1.5% 0.0% 0.3% 0.3%

…The following table displays the proportion of respondents who identified each generic term as a brand name versus a common name, compared to BOOKING.COM:

Genericness Surveys continued

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BOOKING.COM SUPERMARKET SPORTING GOODS

WASHING MACHINE.COM

Brand name 74.8% 0.0% 0.5% 33.0% Common name 23.8% 100.0% 99.5% 60.8% Don't know 1.5% 0.0% 0.0% 6.3%

[Plaintiff's expert] concluded that in his opinion "these results strongly establish

that BOOKING.COM is not perceived by consumers to be a generic or common name." …

Defendants…point to three alleged methodological flaws in [Plaintiff's expert's] survey…First, [Defendant's expert] contends that the survey population is under-inclusive because it was restricted to consumers who search for or make hotel or travel reservations online but plaintiff's trademark applications also reference services offered in person. [Plaintiff's expert's] supplemental expert response explains that the survey focused on consumers who used online reservation services because the USPTO determined that BOOKING.COM was generic for a website service, thus "measuring consumer perception of BOOKING.COM in the online context squarely tested the context in which the chance of consumers understanding a mark ending in '.COM' to be generic was greatest."

Second, although [Defendant's expert] concedes that the survey explained and tested the distinction between dot-com brand names and common names, he contends that this educational component was insufficient because it did not focus specifically on dot-com names and respondents were not tested on their ability to distinguish between dot-com brand names and dot-com common names. Observing that 33% of respondents incorrectly identified WASHINGMACHINE.COM, one of the test terms, as a brand name, [Defendant's expert] contends that the educational portion of the survey was ineffective and respondents were predisposed to think that any dot-com name was a brand name…Without conceding that this is a flaw in the survey design, [Plaintiff's expert] explains that one can control for this predisposition by removing the respondents who answered that WASHINGMACHINE.COM is a brand name. Even with that adjustment, of the remaining respondents, 65 percent identified BOOKING.COM as a brand name.

[Defendant's expert's] third critique is that the responses varied based on the order in which the marks were presented, which he posits is an indication that respondents did not understand the distinction between dot-com brand names and common names and were answering based on context rather than actual knowledge. [Plaintiff] acknowledges that the results exhibit order effects but explains that all Teflon surveys have order effects, irrespective of whether they test dot-com or other marks. "[T]he very reason that [Teflon] surveys include various orderings of the terms," he elaborates, "is because it is well known and expected that responses to terms often vary in this manner" and "providing various orderings is designed to control for this phenomenon."

The Court is persuaded by [Plaintiff's] responses and finds that [Defendant's expert's] critiques do not undermine the veracity of the survey results. "[N]o survey is perfect." [Plaintiff's] decision to limit the survey to online consumers was reasonable, the method used to instruct them on the distinction between generic and brand names was sufficient, and the ordering effects are, as [Plaintiff] explains, both expected and


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appropriately controlled for by the survey design. In short, plaintiff's Teflon survey is reliable. It also provides the only actual evidence of consumers' understanding of BOOKING.COM, because defendants "had an equal opportunity to conduct [their] own survey but chose not to" do so. Numerous courts agree that "direct consumer evidence, e.g., consumer surveys and testimony is preferable to indirect forms of evidence" such as dictionaries, trade journals, and other publications. Even the Federal Circuit, the source of authority upon which the USPTO principally relies, has held that "consumer surveys may be a preferred method of proving genericness." Therefore, the Court declines defendants' invitation to rely on theoretical and indirect sources of consumer understanding, such as dictionary definitions, over plaintiff's Teflon survey.

Frito-Lay North America, Inc., 2017 TTAB LEXIS 300, *1-*2, *65-*66, *69-*70

Princeton Vanguard, LLC ("Defendant") owns a registration on the Supplemental Register for PRETZEL CRISPS, in standard character format, for "pretzel crackers"…Defendant later filed an application to register PRETZEL CRISPS, in standard character format, for "pretzel crackers,"…

… Defendant here has filed its Application Serial No. 76700802 for PRETZEL

CRISPS for "pretzel crackers," with a Section 2(f) claim of acquired distinctiveness, and Registration No. 2980303 for PRETZEL CRISPS for "pretzel crackers," on the Supplemental Register. These constitute admissions that the term "PRETZEL CRISPS" is not inherently distinctive of "pretzel crackers."…

… We noted methodological flaws in both the [Defendant's expert] and [Plaintiff's

expert] surveys that decrease any probative value that could have been assigned to them. Although the [Defendant's expert] and [Plaintiff's expert] surveys have differing results, finding either 55% or 41%, respectively, of consumers perceiving the term PRETZEL CRISPS as a brand name, and either 36% or 41%, respectively, perceiving the term as a common name, that does not indicate the strength of such consumer opinions. The [Defendant's expert] survey results support a finding of genericness. Thus, had we considered the surveys to be relevant and probative, our conclusion would not have changed because we find that -- to the extent they can be understood to measure something -- the survey results overall would support a finding of genericness.

Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 2017 TTAB LEXIS 174, *2-*3, *61-*62, *66-*67, *72-*73 (TTAB 2017) This Opinion is Not a Precedent of the TTAB

Consejo Regulador del Tequila, A.C. ("Applicant") seeks registration on the Principal Register of the certification mark TEQUILA (in typed drawing form) for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant," in Class A…

Luxco, Inc. ("Opposer") opposed the registration of Applicant's certification mark on the grounds that (I) Tequila is a generic term for a type of distilled spirits…

… Both parties submitted surveys in support of their respective positions.


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Opposer submitted a survey "to determine what the meaning of the term TEQUILA is to the relevant public in the United States, that is, consumers of hard liquor." The results of Opposer's survey are not meaningful because of defects with respect to the universe of respondents.

… By selecting an overly broad universe that included respondents without any

knowledge of Tequila, Opposer skewed the results of the survey in its favor. As indicated above, we find that the relevant public is purchasers of Tequila (i.e., spirits distilled from the blue tequilana weber variety of agave plant). Purchasers of hard liquor is too broad a universe because there are purchasers of hard liquor who may not purchase Tequila, may not know anything about Tequila, or may not care at all about Tequila.

… …(n.122 Applicant's survey did not attempt to measure the primary significance

of Tequila; it sought to measure whether it indicates that the product is made in Mexico. …"[A] certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods."…Thus, so long as Tequila is perceived as an indication of regional origin for the goods, it will not be considered to be generic.)

… The evidence recounted above…and Applicant's survey finding that 55.4% of the

respondents believe that Tequila indicates that the product is made in Mexico, counters Opposer's assertion that Tequila is a generic term. Rather, the evidence tends to show that Tequila has significance as a designation of geographic origin…Because Opposer failed to sustain its burden of showing that Tequila is a generic term by a preponderance of the evidence, we dismiss Count I of the opposition on the ground that Tequila is generic.

San Diego Comic Convention v. Dan Farr Productions, 2017 U.S. Dist. LEXIS 147574, *17-*19, *21 (S.D. Cal. 2017)

Defendants offer the expert testimony of [Defendant's expert] to provide linguistic evidence to support the opinion that the phrase "comic con" is generic.

The Court first briefly highlights that from the face of [Defendant's expert's] report, it does not appear that his testimony is relevant to the crux of Defendants' arguments. Defendants' entire motion for summary judgment and its motion to exclude Plaintiff's expert argue that "Comic-Con" was generic before Plaintiff's first use in 1970. In contrast, [Defendant's expert] was employed to offer linguistic evidence supporting his opinion that the expression "'comic con' was generic at the time the above-captioned law suit was filed, and is currently generic…" Thus, it is unclear how [Defendant's expert's] report would assist the trier of fact in determining that the mark was generic before 1970.

Next, and most importantly, the Court finds that Defendants have failed to establish that [Defendant's expert's] opinions are sufficiently reliable so as to be admissible…Here, within a footnote, [Defendant's expert] states that some of the materials he bases his opinions on were provided to him by counsel for Defendants. However, this is a gross misrepresentation. Based on the page spans provided by [Defendant's expert], of the 2,300 documents he reviewed, only around 400 pages were


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materials he found through his own independent research whilst over 1,800 pages of documents were given to him by counsel for Defendants.

The Court is unable to ignore the fact that the foundation of [Defendant's expert's] conclusions was generated from a narrow field of documents, most of which were provided to him by Defendants. Thus, his opinions are not based on "sufficient facts or data,"…

… Accordingly, the Court GRANTS Plaintiff's motion to exclude the expert report

of [Defendant's expert].

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B. SECONDARY MEANING SURVEYS

Amid, Inc. v. Medic Alert Foundation United States, Inc., 2017 U.S. Dist. LEXIS 37699, **50, **63-**64 (S.D. Tex. 2017)

…MedicAlert did a survey and presented the results, which showed that AMID's claimed trade dress had not acquired secondary meaning.

… AMID presented no evidence on how long it used specific displays, the amount

and manner of advertising, or the results. Instead, AMID generally asserted a "family look" of displays that was protected. AMID presented no evidence of sales volume, consumer surveys, or direct consumer testimony, either from doctors or their patients… MedicAlert, by contrast, introduced reliable evidence from the surveys [Defendant's expert] conducted that AMID's "family look" for its displays had not acquired secondary meaning. Considering all of the factors, the court cannot conclude on this record that AMID's claimed trade dress has acquired secondary meaning.

Booking.com B.V. v. Matal (USPTO), 2017 U.S. Dist. LEXIS 126320, *1-*2, *62-*63 (E.D. Va. 2017)

Plaintiff Booking.com B.V. ("Booking.com " or "plaintiff") filed this civil action challenging the denial by the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") of four trademark applications involving the mark "BOOKING.COM…For each of the applications, the TTAB found plaintiff's marks ineligible for registration as trademarks because it concluded that BOOKING.COM is generic for the services identified in the applications or, alternatively, that it is merely descriptive and lacks acquired distinctiveness.

… Plaintiff also relies on the Teflon survey conducted by [Plaintiff's expert], which

indicated that 74.8 percent of consumers of online travel services recognize BOOKING.COM as a brand. Although primarily used to determine whether a mark is generic, Teflon surveys are also a generally accepted way of measuring secondary meaning…In this Circuit, "survey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning."…Because plaintiff's Teflon survey is the only evidence in the record that speaks directly to how consumers understand plaintiff's mark, it weighs heavily in the secondary meaning analysis and the survey's finding that approximately three out of four consumers recognize BOOKING.COM as a brand indicates strong brand awareness

Frito-Lay North America, Inc., 2017 U.S. Dist. LEXIS 300, *1-*2, *77

Princeton Vanguard, LLC ("Defendant") owns a registration on the Supplemental Register for PRETZEL CRISPS, in standard character format, for "pretzel crackers," …Defendant later filed an application to register PRETZEL CRISPS, in standard character format, for "pretzel crackers"…

…

Secondary Meaning Surveys continued

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[Defendant's expert's] survey concluded that 38.7% of participants associated the term "PRETZEL CRISPS" with "only one company." The parties disagree as to whether this number is sufficient to establish secondary meaning. While the interpretation of the number appears to be within the discretion of the fact finder, we note that it has been stated that numbers in this range are "marginal."

General Mills IP Holdings II, LLC, In re, 2017 TTAB LEXIS 262, *2, *13, *33-*35, *36-*37, *38-*39, *42 (TTAB 2017) This Opinion is Not a Precedent of the TTAB

Applicant requested registration under Section 2(f), 15 U.S.C. § 1052(f), stating…that "consumers have come to identify the color yellow, when used in connection with the goods, comes [sic] from not only a single source, but specifically the Cheerios brand."…

… Applicant…proffered a survey…in which subjects were shown an image of an

unmarked, yellow, rectangular box and were asked "If you think you know, what brand of cereal comes in this box?" Of 419 subjects, 221 (52.7%) identified the brand as CHEERIOS. Correcting this result for "noise," Applicant's expert concluded that 48.3% of respondents associated the yellow box with the CHEERIOS brand. Nearly all respondents who made the association stated that the yellow color of the box was the reason for their response.

… Pointing to its survey results, Applicant contends that its promotional efforts were

successful in inculcating consumers to view yellow packaging as a source indicator. Applicant's survey shows, among relevant customers, a high level of awareness that CHEERIOS brand cereal is sold in a yellow box. However, when we consider the survey in the relevant commercial context, we find, as we explain below, that it does not demonstrate whether the color yellow, alone, distinguishes Applicant's goods from those of others, which is the core function of a trademark. Considering that there are hundreds of breakfast cereals that compete with Applicant's product, that nearly all of them are offered in brightly colored boxes, and that many of them make ornamental use of the color yellow, we believe, as we explain below, Applicant's survey should have taken into consideration the possibility that respondents might be able to name more than one breakfast cereal that is offered in a yellow box, thereby persuasively testing whether respondents were acquainted with such goods from sources other than Applicant. Because of the survey's design, we find that the survey results do not clearly demonstrate association of the color yellow with one particular source of goods.

… Question 1 and the question following it, with their singular use of the word

"brand," ("what brand of cereal comes in this box?"; "What…makes you think the brand is …?") indicate by their terms that a singular answer to the first question is expected. It is likely that subjects believed only a single brand should be named. This likelihood is reinforced by the very small number of subjects who gave a plural answer, and the fact that subjects who knew of several brands nonetheless gave a singular answer to the first question. For this reason, Question 1 likely elicited from the subjects the first brand that came to mind, but unless the subjects spontaneously elaborated, the survey would not


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show whether subjects believed the color yellow was associated only with the maker of the Cheerios brand…

… We are aware that, in Owens-Corning, the Federal Circuit was not moved by the

criticism that the survey at issue "inhibited plural responses from persons who might have believed that more than one manufacturer makes 'pink' insulation." However, the market conditions at issue in Owens-Corning differed significantly from those in the breakfast cereal industry. In Owens-Corning, there were few competitors and the applicant was the only one that used any added color, let alone the color pink…

… …[W]e are not persuaded that customers perceive Applicant's proposed mark, the

color yellow alone, as indicating the source of Applicant's goods.

Kohler Co. v. Honda Giken Kogyo K.K., 2017 TTAB LEXIS 450, *2-*3, *145, *150 TTAB 2017) This Opinion is a Precedent of the TTAB

Honda Giken Kogyo K.K. ("Applicant" or "Honda") seeks registration on the Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the product configuration mark shown below for "engines for use in construction, maintenance and power equipment," in International Class 7:

Color is not claimed as a feature of the mark. Applicant has disclaimed the

exclusive right to use "the design mark's purely functional components, namely levers, bolts, nuts and caps."

…Briggs & Stratton Corporation ("Briggs & Stratton"), and Kohler Company ("Kohler" or "Opposer"), filed…oppositions to registration of Applicant's claimed mark…

… …The key acquired distinctiveness questions in the [Applicant's expert] survey,

however, did not focus respondents on the configuration, appearance, or look of the engine in the photograph; instead, respondents were asked about the association of "the


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engine shown on your screen" or "this engine" with any particular company or companies that make engines.

… …[W]hile the [Applicant's expert] survey may establish that a large portion of

interviewees are aware that Applicant makes engines with the overall appearance of the GX Engine, the survey does not prove that the claimed elements in the applied-for mark are the reason they associate the engine with Applicant…

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255, *1, *3-*4, *10-*11, *16 (E.D. Va. 2017)

…Kroger has moved the Court to preliminarily enjoin Lidl from using its "Preferred Selection" word mark or logo ("Preferred Selection") on its grocery products because consumers will likely confuse it with Kroger's "Private Selection" mark or logo…

… …A survey by [Plaintiff's expert] shows that 54% of frequent Kroger shoppers

recognize the Private Selection mark as coming from a single source…Only 13% of infrequent Kroger shoppers or non-Kroger shoppers associate Private Selection with a single source. Before asking respondents whether the Private Selection logo comes from a particular source, [Plaintiff's expert's] survey referred to the image as a "logo," which may have led to bias in Kroger's favor by pre-identifying the Private Selection mark as a logo associated with a brand.

… …Kroger fails to clearly show that consumers actually link Private Selection with a particular source. [Plaintiff's expert] concludes that 54% of the public identifies Private Selection with a single source, but her calculation includes only those persons who perform at least half of the grocery shopping in their household, have shopped at Kroger in the past month, and plan to shop at Kroger in the upcoming month. By eliminating all other consumers, [Plaintiff's expert's] survey fails to make a clear showing that prospective customers, rather than current customers, link the Preferred Selection mark to a source. For example, Lidl shows that only 13% of infrequent grocery shoppers or infrequent Kroger shoppers associate the mark with a source…

… …Kroger's surveys on secondary meaning and actual confusion suffer from flaws

that prevent the Court from finding that Kroger will likely succeed in showing a likelihood of confusion…

Milk Street Cafe, Inc. v. CPK Media, LLC., 2017 U.S. Dist. LEXIS 125731, *13, *23-*24 (D. Mass. 2017)

CPK offered the only consumer survey in this case…concerning whether the MSC [Milk Street Cafe] trademark has acquired secondary meaning.

… …[G]iven the survey conclusions that MSC mark had secondary meaning only

for 9.2% of the potential café customers and 17.4% of the potential corporate catering customers, this Court does not conclude that this evidence…amounts to a showing that


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the MSC mark acquired secondary meaning. (n.4 To support a finding of secondary meaning, a 50% rate of identification of the mark is considered to be "sufficiently appreciable or significant to indicate secondary meaning." President & Trustees of Colby Coll. v. Colby Coll.-New Hampshire, 508 F.2d 804, 809 (1st Cir. 1975). While lesser percentages have been found to be appreciable or significant, see, e.g., Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 687 (S.D.N.Y. 1963) (42.6%), or at least to raise a question of fact that could be resolved by other circumstantial evidence, see, e.g., Boston Beer, 9 F.3d at 183-183, n.5 (36%); Mark Bric Display Corp. v. Joseph Struhl Co., Inc., No. 98-cv-532ML, 2003 U.S. Dist. LEXIS 12933, 2003 WL 21606318, at *9 (D.R.I. July 9, 2003) (30%), generally "consumer recognition below 25% fails to establish secondary meaning." Yankee Spirits, Inc. v. Gasbarro, No. 96-cv-10967-PBS, 1998 U.S. Dist. LEXIS 22159, 1998 WL 428092, at *9 (D. Mass. May 26, 1998) (collecting cases).)

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C. LIKELIHOOD OF CONFUSION SURVEYS

Black & Decker Corp. v. Positec USA Inc., 2017 U.S. Dist. LEXIS 147463, *1-*3, *4-*13 (N.D. Ill. 2017)

Plaintiffs…tried to a jury claims against Defendants…for trademark infringement …and trade dress infringement…

… …Plaintiffs allege that Defendants infringed their registered trademarks and trade

dress by selling power tools and power tool accessories that used Plaintiffs' "family" of yellow and black registered trademarks and trade dress.

…[In a jury trial in 2015, the] jury returned a verdict for Plaintiffs and against Defendants on both claims…

… In their timely motion for a new trial, Defendants argue that a new trial is

warranted because the jury's damages award was excessive, the verdict was against the weight of the evidence, and the trial was fundamentally unfair due to the admission of unreliable and prejudicial expert testimony and other inadmissible evidence. The Court finds it unnecessary to consider Defendants' first two categories of arguments, because it agrees that fundamental unfairness was injected into the trial through the admission of [Plaintiff's expert's] expert survey concerning likelihood of confusion.

… In [Plaintiff's expert's] likelihood of confusion survey, Respondents were shown a

photograph of two rows of boxed power tools, which according to Plaintiffs was taken in a retail Home Depot store. All of the products depicted in the photo were Plaintiffs' DeWalt products, except one, which was a Rockwell product sold by Defendants. Respondents were asked if they believed that all the products were put out by the same company, and, if so, why. Forty-seven percent of respondents said they believed that all the products pictured were put out by the same company. In his report, [Plaintiff's expert] stated that the survey was designed to test whether Defendants' use of trade dress that is similar to Plaintiffs' caused consumers to mistake the source of Defendants' goods.

…The Court denied Defendants' Daubert motion, concluding that Defendants' criticisms of [Plaintiff's expert's] opinions went to their weight rather than their admissibility.

…Despite offering the survey as evidence that Defendants' trade dress caused customer confusion, however, [Plaintiff's expert] testified at trial that his survey did not test causation [i.e., did not conduct a control cell], but instead was merely "observational."…

After considering [Plaintiff's expert's] pre-trial submissions, his trial testimony, and the parties' post-trial briefing, the Court concludes that this is one of those unusual instances in which a proffered consumer survey was "so informally designed and conducted that it fails key tests of professionalism and reliability" and therefore should have been excluded from trial.

… In this case, [Plaintiff's expert's] survey did not employ a reliable methodology for

measuring likelihood of confusion. [Plaintiff's expert] admitted at trial that his survey

Likelihood of Confusion Surveys continued

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was "observational" and not directed at whether Defendants' trade dress caused the consumer confusion, which is the "relevant issue" in this case…

[Plaintiff's expert] chose not to use other survey techniques that have been found acceptable for measuring likelihood of confusion…[Plaintiff's expert's] survey is not an Ever-Ready survey because it includes both Plaintiffs' product and the allegedly infringing product in the same image.

[Plaintiff's expert's] survey is more similar to a "Squirt" survey…which may be appropriate in cases where the defendant's and plaintiff's products are placed side by side in the marketplace…[Plaintiff's expert] admitted at trial that he prepared a Squirt survey but decided not to use it. The survey that [Plaintiff's expert] and Plaintiffs ultimately chose to submit into evidence does not use a side-by-side comparison of two products but instead uses a picture showing one of Defendants' allegedly infringing products among ten of Plaintiffs' products. [Plaintiff's expert] acknowledged that this arrangement was designed to and did cause survey respondents to "overlook the obvious"--that Defendants' product was marked "Rockwell" whereas Plaintiffs' were marked "DeWalt."

Plaintiffs cannot show that [Plaintiff's expert's] survey "mirror[ed] the situation in which the ordinary person would encounter the[ir] trademark" and trade dress. Although [Plaintiff's expert] testified that the photo was "of a store environment," Plaintiffs were unable to authenticate the photo on which the survey was based. Plaintiffs contend that the photo was taken in a Home Depot store, but have been unable to establish who took the photo or where or when it was taken. Defendants contend that the photo was staged, since Rockwell products have never been sold in Home Deport retail stores…

In sum, [Plaintiff's expert's] trial testimony convinces the Court his survey was not designed in a manner that reliably measured the likelihood that consumers would be confused about the origin of Defendants' products…[T]he Court concludes that the admission of the survey and [Plaintiff's expert] testimony about the survey was fundamentally unfair to Defendants. A new trial will be ordered.

Blumenthal Distributing, Inc. v. Herman Miller, Inc., 2017 U.S. Dist. LEXIS 121041, *1-*2, *40-*41 (C.D. Cal. 2017)

Blumenthal Distributing, Inc., d/b/a/ Office Star ("Office Star"), and Herman Miller, Inc. ("Herman Miller"), design and distribute furniture. In this matter, Herman Miller claimed that certain Office Star chairs ("Accused Chairs" or "Hospitality Chairs") infringed its registered and unregistered trade dress rights to two of its office chair designs -- EAMES and AERON.

… …Office Star argues that the survey conducted by [Plaintiff's expert] was flawed

because it failed to distinguish between functional and non-functional features of the individual chairs. However…the appropriate inquiry is whether there was infringement on the trade dress. That is an issue that requires an assessment of the overall appearance of the chairs at issue. The survey provided consumers with images of those chairs.

…[T]he jury could reasonably have found that there was some actual confusion.


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Coty Inc. v. Excell Brands, LLC, 2017 U.S. Dist. LEXIS 151394, *1-*2, *41-*48 (S.D.N.Y. 2017)

…Excell Brands, LLC ("Excell"), seeking to capitalize on the success of Coty's well-known fragrances, produced cheap "versions" of Coty's fragrances, with similar names (for example, "Possession" for "Obsession") and nearly identical packaging. Compounding matters, Excell prominently included on its packaging Coty's own marks, albeit under words to the effect of "Our Version Of" in comparatively smaller text.

… Significantly, Excell's own survey evidence supports a finding of likely customer

confusion in this case. According to…Excell's expert, 19.5% of respondents in an Internet survey identified Calvin Klein as the source of Excell's POSSESSION fragrance, and 15.1% identified Calvin Klein as the source of Excell's SERENITY fragrance. On their face, those results are reasonably favorable to Coty…[T]he universe of participants in [Defendant's expert's] survey was limited to people who had recently shopped at a discount store, flea market, rummage sale, or bazaar…Perhaps not coincidentally, the venues excluded from [Defendant's expert's] survey are the types of venues where potential purchasers of Coty's products are most likely to be found…Finally, [Defendant's expert] made several coding errors -- namely, by treating as "not confused" a number of respondents who were plainly confused as to whether Excell's fragrances were produced by Calvin Klein…In short, [Defendant's expert's] survey provides even stronger evidence of confusion than might appear even at first glance.

…[Plaintiff's expert] used the widely accepted Eveready survey format…to conduct a consumer comparison survey…Specifically, he examined a random selection of "people 18 years old and older who ha[d] purchased a fragrance product for themselves, or for someone else, in the past six months" and showed them versions of the Excell packages to determine if they were confused as to the source…After filtering out the "noise," [Plaintiff's expert] concluded that an average of 54% of the respondents misidentified the source of Excell's products as Calvin Klein.

Excell advances several arguments to undermine the reliability of [Plaintiff's expert's] survey. First, it contends that [Plaintiff's expert] erred by not excluding higher-end consumers to ensure that respondents were actual or potential purchasers of Excell's products. That argument has some force…"[T]he relevant market consists of the consumers of the junior user's products."…[Plaintiff's expert's] failure to exclude higher-end consumers does affect the weight to be given to his survey results, it does not altogether strip them of probative value…

Next, Excell faults [Plaintiff's expert] for failing to provide respondents with relevant sales channel and price information about the products they were asked to examine. Once again, however, there is some overlap in the relevant sales channels. Additionally, sales channel and price information, while relevant to the proximity analysis above, is less relevant to the basic question courts ask under this prong of the Polaroid test: whether the defendant's product confuses consumers as to its source…

Finally, Excell contends that [Plaintiff's expert's] results are relevant only to the two fragrances that he included in his study, OBSESSION and ETERNITY. No doubt, the surveys are more compelling with respect to the fragrances tested than they are with respect to the other fragrances at issue in this litigation. Additionally, the survey itself provides reason to believe that the levels of consumer confusion would vary among the


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fragrances…But [Plaintiff's expert's] results are still relevant, albeit in a more attenuated manner, to the other fragrances, given that they share "common and prominent features" with the tested fragrances…Specifically, each of Excell's products, including those that were included in the survey, adhere a specific pattern: They and Coty's fragrances have similar trade dresses and names (if not in sound, then in association), and they include identical disclamatory legends that prominently feature Coty's house and fragrance marks. This is not by chance; as discussed above, they were all produced to mimic Coty's fragrances. Thus, the Court finds [Plaintiff's expert's] survey to be circumstantial evidence that each of Excell's fragrances at issue here is likely to cause at least some level of confusion as to source in the minds of fragrance shoppers.

CSL Silicones, Inc. v. Midsun Group Inc., 2017 U.S. Dist. LEXIS 201499, *2-*3, *22, *23-*24, *25 (D. Conn. 2017)

CSL brought this action against Midsun in connection with Midsun's alleged improper use of two of CSL's trademarks…[B]oth parties develop and sell silicone-based coating products. One product — associated with the 570 mark for both parties — is used to coat and protect high voltage insulators, such as electrical power lines. The other relevant product — associated with the 579 mark for both parties — is used to protect against corrosion of steel products, such as structural steel, bridges, machinery, and metal roofs, among other areas prone to corrosion.

… …[T]here is no sign from [Defendant's expert's] expert report, deposition

testimony, or Midsun's memorandum in opposition to the instant motion that the survey screened for the relevant potential consumers of the parties' respective products bearing the 579 mark. To the contrary, all indications are that [Defendant's expert] was under the erroneous belief that both the products bearing the 570 mark and the 579 mark are applied in conjunction with high voltage electrical equipment…

… The Court concludes that, as it pertains to the 579 mark, the survey was so flawed

in its methodology that it is without probative value. The participants' responses to the questions posed are wholly irrelevant to the perceptions of the universe of potential consumers of the 579 products…

… For the foregoing reasons, CSL's Motion to Exclude Defendant's Proposed Expert

on Likelihood of Confusion is GRANTED IN PART, specifically, as it pertains to excluding [Defendant's expert] opinion testimony and the evidence regarding market recognition and likelihood of confusion with the parties' respective 579 marks.

Ducks Unlimited, Inc. v. Boondux, LLC, 2017 U.S. Dist. LEXIS 132383, *89-*91 (W.D. Tenn. 2017)

…[Plaintiff's expert's] survey did not test for point-of-sale confusion in the context of sales on Boondux's website or at tradeshows. His survey was limited to testing for point-of-sale confusion in the retail-store context.

…


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Having heard the proof in this case, the Court concludes that [Plaintiff's expert's] decision not to test for point-of-sale confusion in the context of Boondux's website is not reason to conclude that this factor weighs in Defendants' favor. [Plaintiff's expert] survey amounts to lack of evidence one way or the other rather than positive evidence that consumer confusion is not occurring at the point of sale.

Durrset Amigos, Ltd. v. Amigos Meat Distributors L.P., 2017 TTAB LEXIS 411, *27, *30-*32 (TTAB 2017) This Opinion is Not a Precedent of the TTAB

…[Petitioner's expert] conducted two surveys, the first showing a confusion rate of 65.9%, and the second showing 55.7%…

… The first survey suffers from a flaw pointed out by Respondent, namely that the

goods or services sold under the marks were not shown. Similarity between the marks, which would appear to be the only factor confirmed by the survey, is but one factor in the likelihood of confusion analysis. Given the choices from which to select, it is hardly surprising that the survey respondents chose the parties' marks as indicating association, affiliation or connection.

The second survey suffers from the same deficiency in that it focuses on the marks, virtually demanding a confusion response given the wholly unrelated names of the three additional options. That is, it is hardly surprising that when confronted with the Google search engine results, respondents chose Petitioner and Respondent (both using Amigos Foods) as affiliated or connected entities, but not Labatt Food Service, Del Norte Foods or Glazier Food Company.

… In sum, Petitioner's evidence of purported actual confusion is not persuasive, and its survey is entitled to little weight on the question of confusion…

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255, *1, *14-*16 (E.D. Va. 2017)

…Kroger has moved the Court to preliminarily enjoin Lidl from using its "Preferred Selection" word mark or logo ("Preferred Selection") on its grocery products because consumers will likely confuse it with Kroger's "Private Selection" mark or logo…

… …Kroger's survey shows a 25% rate of confusion while Lidl's survey shows a 2%

rate of confusion. Lidl also shows that Kroger's Squirt survey failed to show the trademarks as they appear in the marketplace because (1) it did not show the marks on actual products and (2) showed the logos back to back, without any intervening images or questions, despite the fact that consumers encounter grocery items in competing stores with long lapses in between…

… …Kroger's surveys on secondary meaning and actual confusion suffer from flaws

that prevent the Court from finding that Kroger will likely succeed in showing a likelihood of confusion…


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Mars, Incorporated v. The J.M. Smucker Company, 2017 U.S. Dist. LEXIS 161493, *1, *5-*6 (E.D. Va. 2017)

This case arises from a claim for trademark infringement brought by Plaintiffs (collectively, "Mars") against Defendants (collectively, "Smucker"). Both parties manufacture their own line of special dog treats designed for pet owners to hide medication for administration to their pets. Mars produces Pill Pockets…Smucker, conversely, produces Pill Pouches…

… …Smucker has provided survey evidence demonstrating a 0.0% rate of actual

confusion among consumers between Mars's Pill Pockets and Smucker's Pill Pouches. Such survey evidence is commonly presented and relied upon in this District for determining likelihood of confusion…Here, Mars's failure to present any survey to counter Smucker's survey is itself evidence that there is no likelihood of confusion…

Merchant & Gould P.C. v. MG-IP Law, P.C., 2017 TTAB LEXIS 240, *1, *29-*30, *35-*36, *44 (TTAB 2017) This Opinion is Not a Precedent of the TTAB

Merchant & Gould P.C. petitions to cancel MG-IP Law, P.C.'s registration for the mark MG-IP in standard characters for "attorney services; legal services"…

… …Respondent argues that consumers of intellectual property legal services are

sophisticated and unlikely to be confused as to which firm is representing them. Petitioner, in turn, contends that such services are marketed to a variety of consumers, including individuals and small businesses with little knowledge of the legal services market…We must base our decision on the least sophisticated potential purchasers.

… …Petitioner's survey expert…conducted a likelihood of confusion survey,

ultimately concluding that 25.2% of respondents were confused between the parties' logos.

Respondent contends that the survey universe was improper…Respondent also argues that the survey was biased, employing an improper control, leading questions, and an outsize representation of Respondent's logo. Finally, Respondent characterizes the overall results as low.

In support of its arguments, Respondent offers no citation to any cases or scientific sources, instead relying solely on attorney argument…The persuasive value of Respondent's critique is severely undermined by the lack of corroboration from objective authority.

… We have found that Petitioner's mark is entitled to the normal scope of protection

for inherently distinctive marks; the parties' marks are highly similar; the services, customers, and channels of trade are identical; and Petitioner's survey is probative evidence that Respondent's mark MG-IP is likely to cause confusion with Petitioner's mark. These factors weigh heavily in favor of a conclusion that confusion is likely…


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Moroccanoil, Inc. v. Zotos International, Inc., 2017 U.S. Dist. LEXIS 12513, *6, *17, *19 (C.D. Cal. 2017)

Moroccanoil alleges that Zotos' line of products appear to be designed "specifically to mimic and poach the Moroccanoil Trademarks and the Moroccanoil Trade Dress."…

… Moroccanoil provides a [Squirt] survey conducted by [Plaintiff's expert]…

… The Squirt design is "most appropriate where a product with a weak mark is sold

in close proximity to the alleged infringer in the marketplace."…Here, consumers may encounter both marks in close proximity on the Internet on the same websites, such as Amazon, eBay, Sears, Wal-Mart and Sleekhair Beauty…Nonetheless, because the products sold on these websites are non-authorized and it is unclear if a significant number of consumers would encounter the marks in close proximity, the Court gives the survey less weight…

Phelan Holdings, Inc. v. Rare Hospitality Management, Inc., 2017 U.S. Dist. LEXIS 43926, *1-*2, *18-*19 (M.D. Fla. 2017)

This is a trademark infringement action between two casual dining restaurants. Specifically, Plaintiff… alleges that Defendant['s] use of the slogan "You Can't Fake Steak" in its advertising for its LongHorn Steakhouse restaurant chain is confusingly similar to Phelan's Pinchers Crab Shack's restaurant's slogan "You Can't Fake Fresh,"…

… Phelan attempts to show that confusion is likely through a survey conducted by its

survey expert, [Plaintiff's expert], who concluded that there was between 13% and 26% likelihood of confusion between the parties' use of their respective slogans. [Plaintiff's expert's] testimony and opinions, however, fail to create a genuine issue for the jury because [Plaintiff's expert] admitted that she did not test for reverse confusion. Curiously, although Phelan asserts only a reverse confusion claim, [Plaintiff's expert] testified that she tested for only forward confusion. Thus, nothing [Plaintiff's expert] presents is material to Phelan's claim. This is significant because, in a reverse confusion case, it is appropriate to survey the senior user's customer base…

Razer Auto Inc., In re, 2017 TTAB LEXIS 383 (TTAB 2017) *22 This Opinion is Not a Precedent of the TTAB

Applicant…introduced a survey it presumably created by itself through the website SurveyMonkey.com, which purportedly demonstrates that "a significant majority of relevant consumers do not purchase Applicant's types of goods and Registrant's types of goods in a single transaction or a single location." This survey has little probative value because there is no indication that it was executed under established survey protocols; there is little explanation as to how it was conducted, how the participants were chosen, the geographic diversity of the sample group or whether the participants understood the nature of the questions as they applied to trademark principals. Even if we were to accept Applicant's conclusion, the fact that purchasers bought Applicant's and


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Registrant's goods at different times and locations does mean that the goods are not also available at the same locations.

Reserve Media, Inc. v. Efficient Frontiers, Inc., 2017 U.S. Dist. LEXIS 57713, *1-*2, *17-*18 (C.D. Cal. 2017)

…Efficient Frontiers, Inc. ("EFI") is a company that offers software products to companies in the hospitality industry…Reserve Media, Inc…is a startup company focusing on restaurant technology…

…Reserve ultimately filed for declaratory relief seeking a determination that its use of the "Reserve" mark does not infringe on EFI's trademark rights…

… …[T]he court notes a…deficiency identified by Reserve, which is that

[EFI's]expert survey did not show respondents the marks as they appear in the marketplace and instead asked: "How different or similar do you think are the names Reserve versus Reserve Q?" and "How likely do you think the names Reserve and Reserve Q are associated with products or services offered by the same company?" These questions, without any indication of what the marks actually looked like, cannot be used to support EFI's contention that there was evidence of actual confusion…

Sazerac Company, Inc. v. Fetzer Vineyards, Inc., 2017 U.S. Dist. LEXIS 153510, *1-*2, *30-*37, *39 (N.D. Cal. 2017)

…Sazerac claimed that Fetzer's trade dress on its 1000 Stories red zinfandel wine infringed the trade dress of Sazerac's Buffalo Trace bourbon…

… During the course of litigation, Sazerac commissioned a consumer survey from

[Plaintiff's expert]. He found that at least 46% of respondents believed that Fetzer's "1000 Stories" wine shared the same source as Buffalo Trace bourbon, or that Buffalo Trace bourbon sponsored or was otherwise associated with Fetzer's wine. Of that 46%, a majority believed that the parties' goods came from the same source or were affiliated because of the buffalo logo on the 1000 Stories wine label.

I am not persuaded that [Plaintiff's expert's] survey used the proper methodology. He utilized a "Squirt" or two-room survey methodology…The methodology does not remotely approximate the marketplace.

The survey forced respondents to look at only the Buffalo Trace bourbon bottle for at least five seconds and then shortly thereafter exposed respondents to the 1000 Stories wine bottle. This created "demand effects" -- that is, the methodology led "respondents to pick the expected answer" and rendered the survey's results "completely unreliable." It created a situation that's "not terribly likely" to happen in the marketplace. Plaintiff's expert] admitted that he had no research to support the assumption that any consumer would in fact linger on the Buffalo Trace bourbon bottle for five seconds or more…[Plaintiff's expert] also admitted that his survey is valid only if you make the assumption that every person who is interested in 1000 Stories zinfandel is first exposed to the Buffalo Trace bourbon product, and that he had no information that any purchaser of 1000 Stories zinfandel actually has been exposed to the Buffalo Trace bourbon product.


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[Plaintiff's expert's] survey was predicated on his understanding that 1000 Stories' use of the phrase "bourbon barrel aged" was wrongful. Sazerac admits it has no claim over the phrase "bourbon barrel aged."…

In addition, [Plaintiff's expert's] survey used an improper control in that it was not as similar to the allegedly infringing product as possible with only the allegedly infringing aspect removed. He selected Black Sheep wine, which emulates some aspects of the 1000 Stories wine trade dress, including that it is a red zinfandel in a similarly-shaped bottle that features a fuzzy animal on the label. But he did not include the term "bourbon-barrel aged" in the control…

Similarly, [Plaintiff's expert's] use of the word "bourbon" in the question asking who put out the bourbon respondents saw earlier was a leading question.

Despite these flaws, [Plaintiff's expert's] survey also found that only three percent of respondents who found any relationship between the two brands said it was because 1000 Stories "looks similar" or had "similar design or style."

… As opposed to the two room survey methodology employed by [Plaintiff's expert],

[Defendant's expert] used a modified "Eveready" approach. Under the Eveready format, the appropriate universe is selected, exposed to the allegedly infringing product, and then asked a series of questions to determine whether the allegedly infringing product creates any confusion. [Defendant's expert] then modified it to expose respondents at the beginning to an array of 13 bottles that a shopper might see at a grocery or liquor store, and included in that array a bottle of Buffalo Trace bourbon…As he explained, "there's no doubt that showing or giving respondents the opportunity to see Buffalo Trace just before they consider buying 1000 Stories could only raise the obtained likelihood of confusion."…After the respondents were shown the array of products (including both the 1000 Stories/Control bottle and Buffalo Trace bourbon), the "survey continued with the standard Eveready survey questions" that "are routinely asked when the Eveready survey format is used."

…It revealed that there is "absolutely no confusion" between 1000 Stories wine and Buffalo Trace bourbon.

… …[Defendant's expert] modified the Eveready survey to more closely

approximate the conditions of sale of these products in a way that was beneficial to Sazerac. It may not have been ideal, but it is probative and is further support for my conclusion that Sazerac failed to show consumer confusion.

USA Nutraceuticals Group, Inc. v. Monster Energy Company, 2017 TTAB LEXIS 331 (TTAB 2017) *3*4, *51-*53 This Opinion is Not a Precedent of the TTAB

USA Nutraceuticals Group Inc. and Ultra-Lab Nutrition, Inc. ("Opposers") have opposed the registration of Applicant's marks under Section 2(d) of the Trademark Act, on the ground that Applicant's marks so resemble Opposers' BEAST marks used in connection with dietary and nutritional supplements as to be likely to cause confusion… Opposers' arguments in [these] proceedings focus on three marks, namely: THE BEAST; BEAST and UNLEASH THE BEAST…

…


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…[Applicant's expert] conducted an Eveready-type survey…[and] showed the survey respondents Applicant's mark REHAB THE BEAST! WWW.MONSTERENERGY.COM and asked whether the survey respondents associated that phrase with a particular brand or company. Almost 70% of the survey respondent stated that they associate Applicant's mark with a particular brand or company and 66% of those respondents stated that they associate that mark with Applicant. No survey respondents associate the mark with Opposers.

…[W]e find that Applicant's survey has little, if any, probative value in this case because the use of the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM skews the results in Applicant's favor. The essence of the marks at issue is the word "Beast" and its use in Applicant's marks such as REHAB THE BEAST! Applicant's use of the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM turns the attention of the survey respondents away from the "Beast" portion of the mark and directs it to "Monster Energy," particularly because WWW.MONSTERENERGY.COM is a URL which commonly incorporates a trade name. In this case, as shown by the results of Applicant's survey, Applicant's mark MONSTER for energy drinks is well-known, if not famous, and the WWW.MONSTERENERGY.COM portion of Applicant's mark expressly identifies Applicant, thus, leading the survey respondents to identify Applicant as the particular brand or company with whom they associate the mark.

Applicant would have been better served to have used REHAB THE BEAST! so as to focus the attention of the survey respondents as to whether they identify that mark with a commercial impression highlighting the word "Beast" with a single albeit anonymous source.

Valador, Inc. v. HTC Corp., 2017 U.S. Dist. LEXIS 38929, **4-**5, **10, **18-**29, **31-**32 (E.D. Va. 2017)

…At plaintiff's request, [Plaintiff's expert] performed a survey ostensibly to determine whether there is or likely will be confusion regarding the source of the parties' products using the "Vive" marks…

… …Importantly, the "VIVE" images respondents saw were not the actual images

that plaintiff and defendants use with respect to their "VIVE" marks…Nor did the survey provide the participants with the actual marks as used in commerce.

… …[Plaintiff's expert's] survey, findings, reports, and conclusions must be excluded

pursuant to Rule 702, Fed. R. Evid. …

(1) The Survey Did Not Cover the Proper Universe Here, the choice of the correct or approximately correct survey universe turns on

whether plaintiff is pursuing a forward confusion or reverse confusion theory… It is clear that under either theory of trademark confusion, [Plaintiff's expert]

failed to survey the correct population--or even a "sufficiently close approximation" of the correct population. In designing his survey [Plaintiff's expert] focused on what he believed to be the target audience for the HTC Vive. This was plainly the incorrect universe for a reverse confusion case…


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And to the extent plaintiff alleges forward confusion--that HTC Corporation, HTC America, and Valve sought to trade on Valador's goodwill--[Plaintiff's expert] again failed to survey the correct universe. Put succinctly, [Plaintiff's expert] failed to survey prospective buyers of the HTC Vive…

… (2) The Survey Did Not Replicate Market Conditions

Not only did the challenged survey fail to focus on the correct consumer universe, it also failed to replicate market conditions…

Here, [Plaintiff's expert's] survey is unreliable because it failed to replicate actual market conditions in which consumers might encounter the parties' marks. To begin with, the survey did not show the marks as they appear in commerce. Instead, the survey showed participants two seemingly identical, black-and-white images of the word "VIVE," without any other styling, words, symbols or images that typically accompany the word, "Vive" as either Valador or defendants use that term in the marketplace…

… (3) The Survey Did Not Employ a Control

As courts routinely hold, a survey's lack of a control group or control questions constitutes yet another ground for granting a Rule 702 motion to exclude…

It is apparent here that [Plaintiff's expert's] survey did not include a control to account for potential error, false positives, or background noise. Rather, [Plaintiff's expert] appears to rely solely on the raw confusion rate among all survey respondents without having used a control of any kind…

… (4) The Survey Did Not Employ a Recognized Methodology

There are two common methods for surveying the likelihood of confusion. [Plaintiff's expert] used neither.

The first is the "Eveready" method; the second is the "Squirt" method… [Plaintiff's expert's] survey did not follow either of these standard methodologies,

nor did his survey show respondents the parties' actual marks as they appear in the marketplace…

… (5) The Survey's Questions Were Leading or Suggestive

Here, the survey does precisely what it should not: It improperly suggests to participants a link between plaintiff and defendants. In this regard, Questions 7, 9, and 11 of the survey ask[s] "How likely do you think it is that there will be confusion between" the two products, the two product names, and the two "VIVE" names "if they are used by different companies selling similar products[.]"…

Viacom International, Inc. v. IJR Capital Investments, 2017 U.S. Dist. LEXIS 3948, *1-*2, *15-*16 (S.D. Tex. 2017)

This is a trademark infringement dispute over the name for IJR's proposed restaurant, "The Krusty Krab," which is the same name and spelling of a fictional restaurant in the animated television series, "SpongeBob SquarePants," that airs on Viacom's Nickelodeon network…

…


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The court…finds that the results of [Plaintiff's expert's] expert report weigh in favor of finding a likelihood of confusion…The survey results indicate that thirty percent of respondents who have and expect to patronize restaurants identify Viacom and its brand as the entity that operates, affiliates, connects, approves, or sponsors a restaurant named "The Krusty Krab." (n.5…IJR alleged defects in the methodology and coding of responses. In particular, IJR objected to [Plaintiff's expert's] inclusion of survey responses that referred to Viacom's brands and not to Viacom verbatim. The expert report indicated that the responses were coded for "Viacom" if respondents mentioned Viacom or its brands, including "Nickelodeon," "SpongeBob SquarePants," or a character or place from the show. The court finds that [Plaintiff's expert's] methodology was appropriate.)…The survey respondents consisted of people who patronize restaurants and are thus are examples of "typical buyers exercising ordinary caution." The court finds that the survey results are sufficient to weigh in favor of finding a likelihood of confusion.

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D. FALSE ADVERTISING SURVEYS

Coty Inc. v. Excell Brands, LLC, 2017 U.S. Dist. LEXIS 151394, *1-*2, *71 (S.D.N.Y. 2017)

…Excell Brands, LLC ("Excell"), seeking to capitalize on the success of Coty's well-known fragrances, produced cheap "versions" of Coty's fragrances, with similar names (for example, "Possession" for "Obsession") and nearly identical packaging. Compounding matters, Excell prominently included on its packaging Coty's own marks, albeit under words to the effect of "Our Version Of" in comparatively smaller text.

… …[Plaintiff's expert] conducted a second survey to test whether consumers

viewing the "Our Version Of" legend on Excell's packaging were likely to construe it to mean that a product was the same as, or different from, its Coty counterpart with respect to formula and the longevity of scent. [Plaintiff's expert] found that 20% of respondents believed the legend communicated the message that Excell's fragrances were substantially equivalent to Coty's Fragrances on both dimensions. That percentage "constitutes a substantial percentage of consumers."

Federal Trade Commission v. National Urological Group, Inc., 2017 U.S. Dist. LEXIS 182256, *7, *138-*139 (N.D. Ga. 2017)

…[T]he Federal Trade Commission ("FTC") filed a complaint against Hi-Tech;…[and] alleged that the defendants had made certain unsubstantiated representations about two weight-loss products…

… …[Defendant's expert's] survey did not replicate marketplace conditions. Rather

than show survey respondents the actual, noncompliant product labels, [Defendant's expert] showed them excerpted language from the labels in isolation from the rest of the labels' statements and in an easier-to-read format. [Defendant's expert] even testified that she designed the survey "to focus consumers' attention on those things that we felt were most important."

The survey also contained true/false questions. As explained by [Plaintiff's expert], focusing respondents' attention on certain statements and then asking true/false questions, effectively turned the survey into an "open-book reading comprehension test" rather than an appropriate test of how the consumers would understand warnings from having actually experienced them. [Plaintiff's expert] also explained how inherent within [Defendant's expert's] survey were biases that primed and telegraphed to consumers the researchers' interests, thus skewing the results in the defendants' favor. [Plaintiff's expert] also discussed how the survey encouraged guessing, which results in a tendency to endorse any assertion made in a question, regardless of its content. Accordingly, even assuming that [Defendant's expert] has the requisite survey design expertise, which she admitted she does not, the FTC sufficiently discredited her opinions that the noncompliant warnings successfully communicated the spirit of the warning found in the injunction.

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E. FAME SURVEYS

Dille Family Trust, The v. The Nowlan Family Trust, 2017 U.S. Dist. LEXIS 136647, *2, *46-*49 (E.D. Pa. 2017)

…Plaintiff opposes Defendant's application to register the BUCK ROGERS mark, asserting that it has senior rights…

… …Plaintiff's principal evidence of fame is the testimony of [Plaintiff's expert] who

conducted a survey designed to shed light on the third factor, the extent of actual recognition of the mark. Based upon the survey, [Plaintiff's expert] would testify that "there is a very high level of awareness of 'Buck Rogers'" in the United States, and that Buck Rogers "therefore is a famous mark."…

… The survey included five questions…The first tested for "unaided recall of Buck

Rogers." ("Over the years there have been many science fiction action characters. In the spaces below, please name all the science fiction action characters you can think of."). A mere 1% of respondents included Buck Rogers in the first five (of ten) boxes provided;…The second question tested for "aided recall of Buck Rogers," which presented respondents with a list of science fiction action characters (and one made-up name to test for "acquiescence bias"), and asked them to select any that they recognized. In response, 63% of respondents indicated they recognized Buck Rogers. For comparison, 91% indicated they recognized Captain America, and 87% indicated they recognized Luke Skywalker; on the other hand, 5% indicated they recognized the made-up "Frederick Johnson."…

…Defendant challenges the reliability and fit of the [Plaintiff's expert] survey upon which his opinions are premised. However, it is unnecessary to address these objections because even if the Court were to conclude that [Plaintiff's expert's] testimony was admissible under Rule 702, it would only support a conclusion that BUCK ROGERS has not reached the requisite level of fame to support a federal dilution claim. Plaintiff's survey found -- at best -- 2% unaided recognition, and 63% aided recognition of the science fiction character Buck Rogers…

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255, *17-*18 (E.D. Va. 2017)

Kroger attempts to use its expert's survey on secondary meaning to establish Private Selection as a famous mark…Kroger's own survey shows that less than a third [approximately 31%] of its regular customers associate Private Selection with Kroger. Kroger, therefore, fails to clearly show that Private Selection is so prominent in the American consciousness as to be a household name.

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F. DAUBERT/ADMISSIBILITY ISSUES

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 32731, *6-*8, *9, *14-*15 (W.D. Ky. 2017)

FIMCO requests that the Court, pursuant to the standards set out in Daubert and Federal Rule of Evidence 702, exclude all testimony from Deere's expert, [Plaintiff's expert]…For the following reasons, FIMCO's motion is denied.

…At the request of Deere, [Plaintiff's expert] conducted an investigation and wrote a report based upon his findings. In his Declaration, [Plaintiff's expert] summarized his investigation as follows:

Over several weeks in June 2016, I spoke with a total of 20 salespeople at different dealership locations, and with 18 of those 20 salespeople, I said something very close to the following: "I always thought [or assumed] that yellow/green farm equipment was made by. . ." or "I always thought [or assumed] that the yellow/green coloring looked like…" I would not finish the sentence, but would pause, to see if the sales personnel would finish the sentence. Each time I raised this unfinished sentence (18 of 18 times) the salesperson responded to my partial sentence and pause by stating promptly either "John Deere" or "Deere." (In two of the 20 interviews, I did not put this statement to the salesperson.) I took notes of these conversations, which eventually became part of my Report in this case. …Based upon this investigation, [Plaintiff's expert] opined "that salespeople at

dealerships that sell FIMCO's agricultural equipment perceive the green and yellow colors on agricultural equipment as associated with Deere, or at a minimum, recognize or believe that people generally associate such colors with Deere."

… …Deere argues that [Plaintiff's expert] is properly qualified to testify under

Federal Rule of Evidence 702, that his opinion is not based on hearsay, and that FIMCO's criticisms of [Plaintiff's expert's] survey and testimony go to weight, not admissibility. The Court agrees.

Pursuant to Rule 702, experts must be qualified by "knowledge, skill, experience, training, or education." Here, the Court agrees with Deere that [Plaintiff's expert's] twenty years of experience as a private investigator for an intellectual property investigation firm, which has often involved developing personas, conducting investigations, eliciting candid responses, and evaluating the results of such investigations, qualifies him to testify as to his opinions in this case.

… Furthermore, even outside of the survey context, Rule 703 permits expert

witnesses to offer opinions based on inadmissible facts or data so long as "experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject." Here, [Plaintiff's expert] disclosed the individuals he interviewed, the dates on which he conducted the conversations, the questions asked, the interviewees' responses, and the opinions he formed as a result…

Daubert/Admissibility Issues continued

27

Estes Park Taffy Company, LLC v. The Original Taffy Shop, Inc., 2017 U.S. Dist. LEXIS 88113 *14-*15 (D. Colo. 2017)

It may well be that [Defendant's expert's] methodologies and opinions will not carry the day. It is equally possible that [Plaintiff's expert's] attacks will fail to persuade a trier of fact. For purposes of today and this ruling, I simply know that in the end, cases should be decided on their merits and Rule 702 should not be applied in a hyper-technical manner that unfairly distorts the jury's fact-finding responsibilities. I am not required to decide whether [Defendant's expert's] opinions are correct; rather, my mandate is to determine whether his chosen methodology is reliable and based upon sufficient facts and data…

Hilsinger Company v. Kleen Concepts, LLC, 2017 U.S. Dist. LEXIS 141659, *1, *28-*29, *30, *33 (D. Mass. 2017)

This is an action for trademark infringement. Plaintiff Hilsinger Company has brought suit against defendant Kleen Concepts, LLC, alleging that Kleen's use of the mark "SHIELDME" in connection with the distribution and sale of cleaning products has infringed Hilsinger's "SHIELD" brand…

… …Each party need not conclusively prove that the factual underpinnings of its expert testimony is correct in order for testimony to be admissible. Rather, challenges to the factual underpinnings of an expert's opinion "is a matter affecting the weight and credibility of the testimony--a question to be resolved by the jury." In light of the conflicting evidence presented, neither party's expert will be excluded from testifying on the basis that he or she relied on incorrect assumptions concerning the display of the products.

… Plaintiff…contends that the primary-purchasing-consideration portion of [Defendant's expert's] survey is flawed because it does not rest on reliable methods.

… Instead of arguing that [Defendant's expert's] methods were reliable, defendant contends that plaintiff has not pointed the Court to any relevant authority demonstrating that [Defendant's expert's] methods are unreliable. However, it is defendant's burden to prove that its expert's testimony is admissible--not plaintiff's to prove the opposite. In the absence of any showing that those methods are scientifically valid, consistent with industry standards, or otherwise reliable, [Defendant's expert's] opinion as to primary purchasing consideration is inadmissible under Fed. R. Evid. 702.

Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, et al, 2017 U.S. Dist. LEXIS 21745, *1-*2, *5, *16, *18-*19 (M.D. Fla. 2017)

…According to Yellowfin Yachts owner…the "sweeping" sheer line distinguishes a Yellowfin from other boats, and a Barker's overall appearance (or "trade dress") is so similar to a Yellowfin's that a buyer in the market for a $125,000 center-console [boat] likely will confuse the two.

…

Daubert/Admissibility Issues continued

28

…A plaintiff's inability to identify and describe a distinctive, aesthetic feature exposes a trade-dress claim too vague to succeed.

… As Yellowfin correctly notes, "shaky but admissible" evidence is ordinarily opposed through cross-examination and the presentation of contrary evidence. But the cartoon "stimuli," the small sample size, and the tipsy respondents fatally undermine the reliability of [Plaintiff's expert's] survey. Daubert requires the exclusion of the survey, and the motion to exclude [Plaintiff's expert's] survey is GRANTED.

29

G. OTHER SURVEY ISSUES

adidas America, Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 122459, *3, *85-*86 (D. Or. 2017)

adidas is a world-famous shoe manufacturer and Skechers is the second largest shoe producer in the United States…

…the parties litigate whether Skechers infringed adidas's trademark rights regarding the Stan Smith Trade Dress, the Three-Stripe Mark, and the Supernova Mark…

… Skechers argues that if found liable, adidas is only entitled to profits based on the

percentage of confusion rates found in its likelihood of confusion surveys. Skechers's expert [Defendant's expert] found that the post-sale confusion rate was 20.5% for the Onix and 6.1% for the Cross Court…

… …There is no support in the law for Skechers's theory that it can reduce its profits

under 15 U.S.C. § 1117(a), by using the rate of confusion results from its likelihood of confusion surveys. The likelihood of confusion surveys in this case only show that some people, who did not actually purchase the disputed footwear, reported that they were confused about the origin of a particular shoe in different contexts. Under 15 U.S.C. § 1117(a), Skechers carries the burden of demonstrating that its "infringement had no cash value in sales," otherwise, its profits from the infringing mark belongs to adidas. The likelihood of confusion surveys have no bearing on the cash value of Skechers's sales of the disputed footwear, nor do they measure the amount of actual confusion in the marketplace among those who purchased the disputed footwear. Moreover, the surveys do not describe any cost attributable to the disputed footwear that Skechers may otherwise deduct from its profits under 15 U.S.C. § 1117(a). Accordingly, the Court grants summary judgment that Skechers cannot use its likelihood of confusion survey results to reduce its profits.

Bimbo Bakeries USA, Inc. v. Sycamore, Wild Grains Bakery, LLC, 2017 U.S. Dist. LEXIS 57805, *3, *10, *11-*12, *18 (D. Utah 2017)

This matter centers on [Plaintiff's] allegations that [Defendant] misappropriated its trade secret for making…bread, and infringed on its trade dress related to the packaging of its bread. The motions concern the qualifications and reliability of the testimony given by [Plaintiff's] and [Defendant's] experts.

… Conducting surveys online for the purposes of a trade dress claim in this case does

not render the surveying method unreliable. As here, where the overall look of the product is at issue, online surveys can be relevant to issues involving the look of the product. (n.26 If the central issue at the heart of the case were the smell or touch of the product then it may be proper to exclude an online survey. In a case where the look of the product is at issue, the party seeking to exclude must show what makes the method of online surveying unreliable.)…To prove that a survey technique is unreliable the party must do more than speculate that there may have been a better way of completing the survey.

Other Survey Issues continued

30

… [Defendant] claims that the use of online panels is highly prone to self-selection

bias because these panelists often complete surveys on a regular basis. [Defendant] says [Plaintiff's expert] should have therefore validated the responses from the panel provider.

This objection is without merit because [Defendant] has failed to explain how people who participate in surveys on a regular basis may skew the results. [Defendant] conclusory statement is not supported by evidence.

… The crux of [Plaintiff's] argument is that [Defendant's expert] did not conduct

surveys of his own. [Defendant's expert] offers criticism to many aspects of [Plaintiff's expert's] survey techniques, but is uncertain whether changes in [Plaintiff's expert's] questions would have changed the results because [Defendant] did not conduct surveys without the claimed flaws. [Plaintiff] argues that [Defendant's expert's] testimony is purely speculative because he did not include his own surveys that applied what he claims to be the correct methodology. Rebuttal experts need not produce extrinsic evidence to be able to testify to perceived surveying flaws.

Fluidmaster, Inc., In re, 2017 U.S. Dist. LEXIS 48792, *3-*4, *87-*90 (N.D. Ill. 2017)

…Defendant Fluidmaster, Inc., a California company, manufactures and designs water supply lines or "connectors" used to transport water from a supply pipe to a plumbing fixture like a toilet or a kitchen sink faucet… Plaintiffs allege that Defendant's product has…design defects.

… …Defendant argues that Plaintiffs' survey selects an unrepresentative sample of

respondents because it measures only ordinary consumer preferences. It is undisputed that the vast majority of Defendant's products are purchased by plumbing professionals for subsequent installation in the end-user's home or business…Because the majority of consumers purchase Defendant's products "indirectly through a plumber," a survey directly measuring the price premium that an ordinary consumer might pay for a "missing attribute" is unrepresentative and irrelevant.

Plaintiffs respond by arguing that professional plumbers are not part of the proposed class definition--only "consumers" are--and so [Plaintiff's expert] plans to survey only ordinary consumers "who have or will purchase" Defendant's products. Plaintiffs argue that these consumers are the correct population to sample "because it is consumers who are the ultimate users of the products and consumers who bear the burden of the defects." Thus, Defendant's concerns are "highly academic" and irrelevant.

The Court disagrees. "For a survey to be valid, 'the persons interviewed must adequately represent the opinions which are relevant to the litigation.'" If [Plaintiff's expert] is seeking to "examine the trade-offs that consumers make among different features when buying a product or service," then she needs to identify a representative sample of those who buy Defendant's products. In the clear majority of cases, that purchaser is a plumber, plumbing professional, or wholesale buyer. Just because end-users will "bear the burden" of any alleged defect does not make their preferences representative if 99 percent of the time a plumber with potentially different preferences is making the purchasing decision. [Plaintiff's expert] does not evaluate whether the preferences of plumbers and ordinary consumers are the same or account for any

Other Survey Issues continued

31

differences if they are not. She simply ignores the majority of typical purchasers in her survey. That significantly undermines the relevance of her survey. (n.23 Plaintiffs argue that [Defendant's expert] "conceded" at his deposition that plumbers did not need to be surveyed. [Defendant's expert] was asked--confusingly--if plumbers "should" be the "target" of a survey if they were "not part of the class definition", which is not the same as asking if a survey that entirely excludes plumbers is reliable. The question seems to presume that the class definition establishes whose preferences matter. It does not speak to the test for admissibility under Rule 702, and the Court is not persuaded that this single answer from [Defendant's expert] satisfies Plaintiff's burden under Daubert.)

Koninklijke Philips Electronics N.V. v. Hunt Control Systems, Inc., 2017 U.S. Dist. LEXIS 138374, *108-*110 (D.N.J. 2017)

The Court did not find [Defendant's expert's] testimony criticizing the surveys of

[Plaintiff's experts] particularly credible…Additionally, [Defendant's expert] did not conduct a survey of his own to show that the other surveys were inaccurate. [Defendant's expert's] criticism of the reports would have been aided, perhaps significantly, by a demonstration that [Plaintiff's expert's] suggested methodology would have given different results on the issue of likelihood of reverse confusion…

Morton & Bassett, LLC v. Organic Spices, Inc., 2017 U.S. Dist. LEXIS 142315, *19-*21 (N.D. Cal. 2017) 3

…[Defendant's expert] asserts that "if a survey shows confusion due to an element of trade dress that is not itself legally protectable, that confusion is, essentially by definition, not evidence of infringement."…Next, he espouses his legal opinion as to whether particular elements of Morton's asserted dress are protectable:

…For what reasons can an element of a trade dress be non-protectable? There are at least two reasons why an element of a given trade dress may be non-protectable; namely the element may be generic and/or it may be functional. An element that is generic is not protectable by definition, since generic trade dress is essentially defined as being open to use by everyone. An element that is functional may be protectable, but if so that protection will normally come from patent law, not trademark law.

… …[Defendant's expert] states his legal conclusions about ultimate issues of law,

which is impermissible under longstanding Ninth Circuit precedent.

3 Background from prior case, Morton & Bassett, LLC v. Organic Spices, Inc., 2016 U.S. Dist. LEXIS 120092: Defendant, selling spices under the name SPICELY, competes directly with Plaintiff…Defendant packages its spices in two different versions of glass jars that are “virtually indistinguishable” from Plaintiff's glass jars…Specifically, Defendant's jars have the same round, clear bottle, opaque white lettering in the same font and in the same size, and with the same solid color cap as Plaintiff's jars…Defendant also mimics Plaintiff's marketing strategy, using slogans such as “Quality You Can See,” in a similar cursive letting and light green color as Plaintiff uses for its slogans… Plaintiff alleges that these intentional similarities cause consumers to mistake Defendant's spices for its own, because the spices are often displayed side-by-side in stores and are often impulse purchases bought without a high degree of care.

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III. BIBLIOGRAPHY INTELLECTUAL PROPERTY SURVEYS: 2017 BY CIRCUIT This appendix contains citations, by issue, for all identified opinions published from January 2017 through December 2017, in which survey evidence was referenced.

First Circuit

Hilsinger Company v. Kleen Concepts, LLC, 2017 U.S. Dist. LEXIS 141659 (D. Mass. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Milk Street Cafe, Inc. v. CPK Media, LLC., 2017 U.S. Dist. LEXIS 125731 (D. Mass. 2017) (Secondary Meaning)

Second Circuit

CSL Silicones, Inc. v. Midsun Group Inc., 2017 U.S. Dist. LEXIS 201499 (D. Conn. 2017) (Likelihood of Confusion)

Coty Inc. v. Excell Brands, LLC, 2017 U.S. Dist. LEXIS 151394 (S.D.N.Y. 2017) (Likelihood of Confusion) (False Advertising)

Joules Limited v. Macy's Merchandising Group, Inc., 2017 U.S. App. LEXIS 11255 (2nd Cir. 2017) (Likelihood of Confusion)

Lifeguard Licensing Corp. v. Kozak, 2017 U.S. Dist. LEXIS 32395 (S.D.N.Y. 2017) (Genericness)


Scotts EZ Seed, In re, 2017 U.S. Dist. LEXIS 125621 (S.D.N.Y. 2017) (False Advertising)

Singleton v. Fifth Generation, Inc., 2017 U.S. Dist. LEXIS 170415 (N.D.N.Y. 2017) (False Advertising)

Universal Church, Inc., The v. Universal Life Church/ULC Monastery, 2017 U.S. Dist. LEXIS 127362 (S.D.N.Y. 2017) (Likelihood of Confusion)

Third Circuit

American Cruise Lines, Inc. v. HMS American Queen Steamboat Company LLC, 2017 U.S. Dist. LEXIS 130430 (D. Del. 2017) (Likelihood of Confusion)

Dille Family Trust, The v. The Nowlan Family Trust, 2017 U.S. Dist. LEXIS 136647 (E.D. Pa. 2017) (Fame)

33

Dzielak v. Whirlpool Corporation, 2017 U.S. Dist. LEXIS 39232 (D.N.J. 2017) (False Advertising)

Koninklijke Philips Electronics N.V. v. Hunt Control Systems, Inc., 2017 U.S. Dist. LEXIS 138374 (D.N.J. 2017) (Likelihood of Confusion) (False Advertising) (Other)

Parks LLC v. Tyson Foods, Inc. 2017 U.S. App. LEXIS 12717 (3rd Cir. 2017) (Likelihood of Confusion)

Zaletel v. Prisma Labs, Inc., 2017 U.S. Dist. LEXIS 30868 (D.Del. 2017) (Likelihood of Confusion)

Fourth Circuit

Booking.com B.V. v. Matal (USPTO), 2017 U.S. Dist. LEXIS 126320 (E.D. Va. 2017) (Genericness) (Secondary Meaning)

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255 (E.D. Va. 2017) (Secondary Meaning) (Likelihood of Confusion) (Fame)

Mars, Incorporated v. The J.M. Smucker Company, 2017 U.S. Dist. LEXIS 161493 (E.D. Va. 2017) (Likelihood of Confusion)

Valador, Inc. v. HTC Corp., 2017 U.S. Dist. LEXIS 38929 (E.D. Va. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Valador, Inc. v. HTC Corp., 2017 U.S. Dist. LEXIS 39107 (E.D. Va. 2017) (Likelihood of Confusion)

VeriSign, Inc. v. XYZ.COM LLC., 2017 U.S. App. LEXIS 2264 (4th Cir. 2017) (False Advertising)

Fifth Circuit

Amid, Inc. v. Medic Alert Foundation United States, Inc., 2017 U.S. Dist. LEXIS 37699 (S.D. Tex. 2017) (Secondary Meaning)

Buc-ee's, Ltd. v. Shepherd Retail, Inc., 2017 U.S. Dist. LEXIS 155655 (S.D. Tex. 2017) (Fame)

Texas Outhouse Inc. v. Fresh Can, LLC, 2017 U.S. Dist. LEXIS 110037 (S.D. Tex. 2017) (Likelihood of Confusion)

Viacom International, Inc. v. IJR Capital Investments, 2017 U.S. Dist. LEXIS 3948 (S.D. Tex. 2017) (Likelihood of Confusion)

Yeti Coolers, LLC v. RTIC Coolers, LLC, 2017 U.S. Dist. LEXIS 11959 (W.D.Tex. 2017) (Likelihood of Confusion)

34

Sixth Circuit

A.L.S. Enterprises, Inc. v. Robinson Outdoor Products, LLC, 2017 U.S. Dist. LEXIS 11946 (W.D. Mich. 2017) (False Advertising)

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 32731 (W.D. Ky. 2017) (Daubert/Admissibility)

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 169711 (W.D. Ky. 2017) (Likelihood of Confusion) (Dilution) (Fame)

Ducks Unlimited, Inc. v. Boondux, LLC, 2017 U.S. Dist. LEXIS 132383 (W.D. Tenn. 2017) (Likelihood of Confusion)

ECM Biofilms, Inc. v. Federal Trade Commission, 2017 U.S. App. LEXIS 4609 (6th Cir. 2017) (False Advertising)

Leapers, Inc. v. SMTS, LLC, 2017 U.S. Dist. LEXIS 112864 (E.D. Mich. 2017) (Secondary Meaning)

Seventh Circuit

Black & Decker Corp. v. Positec USA Inc., 2017 U.S. Dist. LEXIS 147463 (N.D. Ill. 2017) (Secondary Meaning) (Likelihood of Confusion)

Bodum USA, Inc. v. A Top New Casting, Inc., 2017 U.S. Dist. LEXIS 212249 (N.D. Ill. 2017) (Likelihood of Confusion)

Fluidmaster, Inc., In re, 2017 U.S. Dist. LEXIS 48792 (N.D. Ill. 2017) (False Advertising) (Other)

Eighth Circuit

Eyebobs, LLC v. Snap, Inc., 2017 U.S. Dist. LEXIS 70165 (D. Minn. 2017) (Likelihood of Confusion)

Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., 2017 U.S. Dist. LEXIS 34535 (D.S.D. 2017) (Genericness)

Weems Industries, Inc. v. Plews, Inc., 2017 U.S. Dist. LEXIS 56666 (N.D. Iowa 2017) (Secondary Meaning)

Ninth Circuit

adidas America, Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 122459 (D. Or. 2017) (Secondary Meaning) (Likelihood of Confusion) (Other)

Blumenthal Distributing, Inc. v. Herman Miller, Inc., 2017 U.S. Dist. LEXIS 121041 (C.D. Cal. 2017) (Likelihood of Confusion)

35

Brighton Collectibles, LLC v. Believe Production, Inc., 2017 U.S. Dist. LEXIS 16594 (C.D. Cal. 2017) (Likelihood of Confusion)

Elliott & Gillespie v. Google, Inc., 2017 U.S. App. LEXIS 8583 (9th Cir. 2017) (Genericness)

Morales, et al. v. Kraft Foods Group, Inc., 2017 U.S. Dist. LEXIS 97433 (C.D. Cal. 2017) (False Advertising)

Moroccanoil, Inc. v. Zotos International, Inc., 2017 U.S. Dist. LEXIS 12513 (C.D. Cal. 2017) (Likelihood of Confusion)

Morton & Bassett, LLC v. Organic Spices, Inc., 2017 U.S. Dist. LEXIS 142315 (N.D. Cal. 2017) (Likelihood of Confusion) (Other)

Reserve Media, Inc. v. Efficient Frontiers, Inc., 2017 U.S. Dist. LEXIS 57713 (C.D. Cal. 2017) (Likelihood of Confusion)

San Diego Comic Convention v. Dan Farr Productions, 2017 U.S. Dist. LEXIS 147574 (S.D. Cal. 2017) (Genericness) (Daubert/Admissibility)

Sazerac Company, Inc. v. Fetzer Vineyards, Inc., 2017 U.S. Dist. LEXIS 64304 (N.D. Cal. 2017) (Likelihood of Confusion)


Stone Creek, Inc. v. Omnia Italian Design, Inc., 2017 U.S. App. LEXIS 12393 (9th Cir. 2017) (Secondary Meaning)

Tenth Circuit

Bimbo Bakeries USA, Inc. v. Sycamore, Wild Grains Bakery, LLC, 2017 U.S. Dist. LEXIS 57805 (D. Utah 2017) (Other)

Bimbo Bakeries USA, Inc. v. Sycamore, 2017 U.S. Dist. LEXIS 114075 (D. Utah 2017) (Secondary Meaning) (False Advertising)

Estes Park Taffy Company, LLC v. The Original Taffy Shop, Inc., 2017 U.S. Dist. LEXIS 88113 (D. Colo. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Eleventh Circuit

Federal Trade Commission v. National Urological Group, Inc., 2017 U.S. Dist. LEXIS 182256 (N.D. Ga. 2017) (False Advertising) (Daubert/Admissibility)

Phelan Holdings, Inc. v. Rare Hospitality Management, Inc., 2017 U.S. Dist. LEXIS 43926 (M.D. Fla. 2017) (Likelihood of Confusion)

36

Spire, Inc. v. Cellular South, Inc., 2017 U.S. Dist. LEXIS 146169 (S.D. Ala. 2017) (Likelihood of Confusion)

Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, et al, 2017 U.S. Dist. LEXIS 21745 (M.D. Fla. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

District of Columbia Circuit

There were no citations from the District of Columbia Circuit during the time period of this article.

Federal Circuit

There were no citations from the Federal Circuit during the time period of this article.

Trademark Trial & Appeal Board

Durrset Amigos, Ltd. v. Amigos Meat Distributors L.P., 2017 TTAB LEXIS 411 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 2017 TTAB LEXIS 300 (TTAB 2017) This Opinion Is a Precedent of the TTAB (Genericness) (Secondary Meaning)

General Mills IP Holdings II, LLC, In re, 2017 TTAB LEXIS 262 (TTAB 2017) This Opinion is a Precedent of the TTAB (Secondary Meaning)

Kohler Co. v. Honda Giken Kogyo K.K., 2017 TTAB LEXIS 450 (TTAB 2017) This Opinion Is a Precedent of the TTAB (Descriptiveness) (Secondary Meaning) (Distinctiveness)

Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 2017 TTAB LEXIS 174 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Genericness)

Merchant & Gould P.C. v. MG-IP Law, P.C., 2017 TTAB LEXIS 240 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Razer Auto Inc., In re, 2017 TTAB LEXIS 383 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

USA Nutraceuticals Group, Inc. v. Monster Energy Company, 2017 TTAB LEXIS 331 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

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IV. BIBLIOGRAPHY INTELLECTUAL PROPERTY SURVEYS: 2017 BY ISSUE

This appendix contains citations, by issue, for all identified opinions published from January 2017 through December 2017, in which survey evidence was referenced.

Genericness Surveys

Booking.com B.V. v. Matal (USPTO), 2017 U.S. Dist. LEXIS 126320 (E.D. Va. 2017) (Genericness) (Secondary Meaning)

Elliott & Gillespie v. Google, Inc., 2017 U.S. App. LEXIS 8583 (9th Cir. 2017) (Genericness)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 2017 TTAB LEXIS 300 (TTAB 2017) This Opinion is a Precedent of the TTAB (Genericness) (Secondary Meaning)



Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 2017 TTAB LEXIS 174 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Genericness)

San Diego Comic Convention v. Dan Farr Productions, 2017 U.S. Dist. LEXIS 147574 (S.D. Cal. 2017) (Genericness) (Daubert/Admissibility)

Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., 2017 U.S. Dist. LEXIS 34535 (D.S.D. 2017) (Genericness)

Descriptiveness/Suggestive Surveys

Kohler Co. v. Honda Giken Kogyo K.K., 2017 TTAB LEXIS 450 (TTAB 2017) This Opinion is a Precedent of the TTAB (Descriptiveness) (Distinctiveness) (Secondary Meaning)

Secondary Meaning Surveys

adidas America, Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 122459 (D. Or. 2017) (Secondary Meaning) (Likelihood of Confusion) (Other)

Amid, Inc. v. Medic Alert Foundation United States, Inc., 2017 U.S. Dist. LEXIS 37699 (S.D. Tex. 2017) (Secondary Meaning)

Bimbo Bakeries USA, Inc. v. Sycamore, 2017 U.S. Dist. LEXIS 114075 (D. Utah 2017) (Secondary Meaning) (False Advertising)

38

Black & Decker Corp. v. Positec USA Inc., 2017 U.S. Dist. LEXIS 147463 (N.D. Ill. 2017) (Secondary Meaning) (Likelihood of Confusion)

Booking.com B.V. v. Matal (USPTO), 2017 U.S. Dist. LEXIS 126320 (E.D. Va. 2017) (Secondary Meaning) (Genericness)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 2017 TTAB LEXIS 300 (TTAB 2017) This Opinion is a Precedent of the TTAB (Secondary Meaning) (Genericness)

General Mills IP Holdings II, LLC, In re, 2017 TTAB LEXIS 262 (TTAB 2017) This Opinion is a Precedent of the TTAB (Secondary Meaning)

Kohler Co. v. Honda Giken Kogyo K.K., 2017 TTAB LEXIS 450 (TTAB 2017) This Opinion is a Precedent of the TTAB (Secondary Meaning) (Descriptiveness) (Distinctiveness)

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255 (E.D. Va. 2017) (Secondary Meaning) (Likelihood of Confusion) (Fame)

Leapers, Inc. v. SMTS, LLC, 2017 U.S. Dist. LEXIS 112864 (E.D. Mich. 2017) (Secondary Meaning)

Milk Street Cafe, Inc. v. CPK Media, LLC., 2017 U.S. Dist. LEXIS 125731 (D. Mass. 2017) (Secondary Meaning)

Stone Creek, Inc. v. Omnia Italian Design, Inc., 2017 U.S. App. LEXIS 12393 (9th Cir. 2017) (Secondary Meaning)

Weems Industries, Inc. v. Plews, Inc., 2017 U.S. Dist. LEXIS 56666 (N.D. Iowa 2017) (Secondary Meaning)

Likelihood Of Confusion Surveys

adidas America, Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 122459 (D. Or. 2017) (Likelihood of Confusion) (Secondary Meaning) (Other)

American Cruise Lines, Inc. v. HMS American Queen Steamboat Company LLC, 2017 U.S. Dist. LEXIS 130430 (D. Del. 2017) (Likelihood of Confusion)

Black & Decker Corp. v. Positec USA Inc., 2017 U.S. Dist. LEXIS 147463 (N.D. Ill. 2017) (Likelihood of Confusion) (Secondary Meaning)

Blumenthal Distributing, Inc. v. Herman Miller, Inc., 2017 U.S. Dist. LEXIS 121041 (C.D. Cal. 2017) (Likelihood of Confusion)

Bodum USA, Inc. v. A Top New Casting, Inc., 2017 U.S. Dist. LEXIS 212249 (N.D. Ill. 2017) (Likelihood of Confusion)

Brighton Collectibles, LLC v. Believe Production, Inc., 2017 U.S. Dist. LEXIS 16594 (C.D. Cal. 2017) (Likelihood of Confusion)

39

CSL Silicones, Inc. v. Midsun Group Inc., 2017 U.S. Dist. LEXIS 201499 (D. Conn. 2017) (Likelihood of Confusion)

Coty Inc. v. Excell Brands, LLC, 2017 U.S. Dist. LEXIS 151394 (S.D.N.Y. 2017) (Likelihood of Confusion) (False Advertising)

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 169711 (W.D. Ky. 2017) (Likelihood of Confusion) (Dilution) (Fame)

Ducks Unlimited, Inc. v. Boondux, LLC, 2017 U.S. Dist. LEXIS 132383 (W.D. Tenn. 2017) (Likelihood of Confusion)

Durrset Amigos, Ltd. v. Amigos Meat Distributors L.P., 2017 TTAB LEXIS 411 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Estes Park Taffy Company, LLC v. The Original Taffy Shop, Inc., 2017 U.S. Dist. LEXIS 88113 (D. Colo. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Eyebobs, LLC v. Snap, Inc., 2017 U.S. Dist. LEXIS 70165 (D. Minn. 2017) (Likelihood of Confusion)

Hilsinger Company v. Kleen Concepts, LLC, 2017 U.S. Dist. LEXIS 141659 (D. Mass. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Joules Limited v. Macy's Merchandising Group, Inc., 2017 U.S. App. LEXIS 11255 (2nd Cir. 2017) (Likelihood of Confusion)

Koninklijke Philips Electronics N.V. v. Hunt Control Systems, Inc., 2017 U.S. Dist. LEXIS 138374 (D.N.J. 2017) (Likelihood of Confusion) (False Advertising) (Other)

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255 (E.D. Va. 2017) (Likelihood of Confusion) (Secondary Meaning) (Fame)

Mars, Incorporated v. The J.M. Smucker Company, 2017 U.S. Dist. LEXIS 161493 (E.D. Va. 2017) (Likelihood of Confusion)

Merchant & Gould P.C. v. MG-IP Law, P.C., 2017 TTAB LEXIS 240 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Moroccanoil, Inc. v. Zotos International, Inc., 2017 U.S. Dist. LEXIS 12513 (C.D. Cal. 2017) (Likelihood of Confusion)

Morton & Bassett, LLC v. Organic Spices, Inc., 2017 U.S. Dist. LEXIS 142315 (N.D. Cal. 2017) (Likelihood of Confusion) (Other)

Parks LLC v. Tyson Foods, Inc. 2017 U.S. App. LEXIS 12717 (3rd Cir. 2017) (Likelihood of Confusion)

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Phelan Holdings, Inc. v. Rare Hospitality Management, Inc., 2017 U.S. Dist. LEXIS 43926 (M.D. Fla. 2017) (Likelihood of Confusion)

Razer Auto Inc., In re, 2017 TTAB LEXIS 383 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Reserve Media, Inc. v. Efficient Frontiers, Inc., 2017 U.S. Dist. LEXIS 57713 (C.D. Cal. 2017) (Likelihood of Confusion)



Spire, Inc. v. Cellular South, Inc., 2017 U.S. Dist. LEXIS 146169 (S.D. Ala. 2017) (Likelihood of Confusion)

Texas Outhouse Inc. v. Fresh Can, LLC, 2017 U.S. Dist. LEXIS 110037 (S.D. Tex. 2017) (Likelihood of Confusion)

USA Nutraceuticals Group, Inc. v. Monster Energy Company, 2017 TTAB LEXIS 331 (TTAB 2017) This Opinion is Not a Precedent of the TTAB (Likelihood of Confusion)

Universal Church, Inc., The v. Universal Life Church/ULC Monastery, 2017 U.S. Dist. LEXIS 127362 (S.D.N.Y. 2017) (Likelihood of Confusion)

Viacom Int'l Inc. v. IJR Capital Investments, LLC, 2017 U.S. Dist. LEXIS 3948 (S.D. Tex. 2017) (Likelihood of Confusion)


Valador, Inc. v. HTC Corp., 2017 U.S. Dist. LEXIS 39107 (E.D. Va. 2017) (Likelihood of Confusion)

Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, et al, 2017 U.S. Dist. LEXIS 21745 (M.D. Fla. 2017) (Likelihood of Confusion) (Daubert/Admissibility)

Yeti Coolers, LLC v. RTIC Coolers, LLC, 2017 U.S. Dist. LEXIS 11959 (W.D.Tex. 2017) (Likelihood of Confusion)

Zaletel v. Prisma Labs, Inc., 2017 U.S. Dist. LEXIS 30868 (D. Del. 2017) (Likelihood of Confusion)

False Advertising Surveys

A.L.S Enterprises, Inc. v.Robinson Outdoor Products, LLC, 2017 U.S. Dist. LEXIS 11946 (W.D. Mich. 2017) (False Advertising)

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Bimbo Bakeries USA, Inc. v. Sycamore, 2017 U.S. Dist. LEXIS 114075 (D. Utah 2017) (False Advertising) (Secondary Meaning)

Coty Inc. v. Excell Brands, LLC, 2017 U.S. Dist. LEXIS 151394 (S.D.N.Y. 2017) (False Advertising) (Likelihood of Confusion)

Dzielak v. Whirlpool Corporation, 2017 U.S. Dist. LEXIS 39232 (D.N.J. 2017) (False Advertising)

ECM Biofilms, Inc. v. Federal Trade Commission, 2017 U.S. App. LEXIS 4609 (6th Cir. 2017) (False Advertising)

Federal Trade Commission v. National Urological Group, Inc., 2017 U.S. Dist. LEXIS ( N.D. Ga. 2017) (False Advertising) (Daubert/Admissibility)

Fluidmaster, Inc., In re, 2017 U.S. Dist. LEXIS 48792 (N.D. Ill. 2017) (False Advertising) (Other)

Koninklijke Philips Electronics N.V. v. Hunt Control Systems, Inc., 2017 U.S. Dist. LEXIS 138374 (D.N.J. 2017) (False Advertising) (Likelihood of Confusion) (Other)

Morales, et al. v. Kraft Foods Group, Inc., 2017 U.S. Dist. LEXIS 97433 (C.D. Cal. 2017) (False Advertising)

Scotts EZ Seed, In re, 2017 U.S. Dist. LEXIS 125621 (S.D.N.Y. 2017) (False Advertising)

Singleton v. Fifth Generation, Inc., 2017 U.S. Dist. LEXIS 170415 (N.D.N.Y. 2017) (False Advertising)

VeriSign, Inc. v. XYZ.COM LLC., 2017 U.S. App. LEXIS 2264 (4th Cir. 2017) (False Advertising)

Fame Surveys

Buc-ee's, Ltd. v. Shepherd Retail, Inc., 2017 U.S. Dist. LEXIS 155655 (S.D. Tex. 2017) (Fame)

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 169711 (W.D. Ky. 2017) (Fame) (Dilution) (Likelihood of Confusion)

Dille Family Trust, The v. The Nowlan Family Trust, 2017 U.S. Dist. LEXIS 136647 (E.D. Pa. 2017) (Fame)

Kroger Co. v. Lidl US, LLC, 2017 U.S. Dist. LEXIS 120255 (E.D. Va. 2017) (Fame) (Secondary Meaning) (Likelihood of Confusion)

Dilution Surveys

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 169711 (W.D. Ky. 2017) (Dilution) (Fame) (Likelihood of Confusion)

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Distinctiveness Surveys

Kohler Co. v. Honda Giken Kogyo K.K., 2017 TTAB LEXIS 450 (TTAB 2017) This Opinion is a Precedent of the TTAB (Distinctiveness) (Descriptiveness) (Secondary Meaning)

Daubert/Admissibility Issues

Deere & Company v. Fimco Inc., 2017 U.S. Dist. LEXIS 32731 (W.D. Ky. 2017) (Daubert/Admissibility)

Estes Park Taffy Company, LLC v. The Original Taffy Shop, Inc., 2017 U.S. Dist. LEXIS 88113 (D. Colo. 2017) (Daubert/Admissibility) (Likelihood of Confusion)

Federal Trade Commission v. National Urological Group, Inc., 2017 U.S. Dist. LEXIS 182256 (N.D. Ga. 2017) (Daubert/Admissibility) (False Advertising)

Hilsinger Company v. Kleen Concepts, LLC, 2017 U.S. Dist. LEXIS 141659 (D. Mass. 2017) (Daubert/Admissibility) (Likelihood of Confusion)

San Diego Comic Convention v. Dan Farr Productions, 2017 U.S. Dist. LEXIS 147574 (S.D. Cal. 2017) (Daubert/Admissibility) (Genericness)


Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, et al, 2017 U.S. Dist. LEXIS 21745 (M.D. Fla. 2017) (Daubert/Admissibility) (Likelihood of Confusion)

Other Survey Issues

adidas America, Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 122459 (D. Or. 2017) (Other) (Secondary Meaning) (Likelihood of Confusion)

Bimbo Bakeries USA, Inc. v. Sycamore, Wild Grains Bakery, LLC, 2017 U.S. Dist. LEXIS 57805 (D. Utah 2017) (Other)

Fluidmaster, Inc., In re, 2017 U.S. Dist. LEXIS 48792 (N.D. Ill. 2017) (Other) (False Advertising)

Koninklijke Philips Electronics N.V. v. Hunt Control Systems, Inc., 2017 U.S. Dist. LEXIS 138374 (D.N.J. 2017) (Other) (Likelihood of Confusion) (False Advertising)

Morton & Bassett, LLC v. Organic Spices, Inc., 2017 U.S. Dist. LEXIS 142315 (N.D. Cal. 2017) (Other) (Likelihood of Confusion)

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V. BIOGRAPHICAL INFORMATION MATTHEW G. EZELL Ford Bubala & Associates Matthew G. Ezell is a partner in the marketing research and consulting firm of Ford Bubala & Associates, located in Huntington Beach, California. As a partner at Ford Bubala & Associates, Matt has been engaged in commercial marketing research and consulting projects in a variety of areas in the consumer product, industrial product, and service sectors of the economy. For seventeen years, Matt has participated in litigation-related consultancies involving intellectual property matters, including matters pending before U.S. federal courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and the International Trade Commission. He has also participated in litigation-related consultancies involving intellectual property matters in Canada. Matt authored the papers entitled Intellectual Property Surveys: Mid 2014 – 2015 and Intellectual Property Surveys: 2016, which are a compendium of excerpts from case opinions covering surveys on genericness, descriptiveness/suggestiveness, secondary meaning, likelihood of confusion, false and/or misleading advertising, fame, and dilution. These papers were published by Ford Bubala & Associates and was also published electronically by the INTA. Matt holds a Bachelor's Degree in Japanese (B.A.) from California State University, Fullerton and a Master's Degree in Linguistics (M.A.) from California State University, Long Beach. Matt also has a Graduate Certificate in Survey Research from the University of Connecticut. Matt is a member of Insights Association (a merger of The Marketing Research Association (MRA) and the Council of American Survey Research Organizations (CASRO)), the American Marketing Association (AMA), the American Association for Public Opinion Research (AAPOR), and the International Trademark Association (INTA). Matt is also a member of the Article Solicitation and Development Sub-Committee of the Trademark Reporter (TMR).

international trademark association - …...crisps as a brand name, and either 36% or 41%,...

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