Surveying the Evidence
Use of Surveys in Non-Traditional Trademarks
Non-traditional trademarks can pose unique challenges when designing and using surveys. Doing them right can save time and money, and please the judge, as Maura O’Malley finds out.
Designing surveys for non-traditional marks can be more complex and carry greater risk than designing for their traditional counterparts.
Today’s session The Use of Surveys in Litigation Involving Non-Traditional Trademarks (9:00 am – 10:00 am) will explore aspects of survey design and use, such as proving acquired distinctiveness, use of control groups, and sample populations. This session is part of the inaugural In-House Practitioners Series, specifically designed for brand legal professionals navigating the complexities of in-house trademark practice.
Session moderator Jonathan Thomas (Kilpatrick Townsend & Stockton LLP, USA) uses surveys in complex high stakes litigation. He will be joined by testifying survey expert Jackie Chorn (NERA, USA), in-house counsel Michael Friedman (Whirlpool, USA), and former examining attorney at the U.S. Patent and Trademark Office (USPTO), Jason Blair, who is now at Dykema Gossett PLLC (USA).
Mr. Blair says: “Courts generally struggle with the nuances of trademark law to begin with, and when it comes to non-traditional marks, surveys can be an important tool for informing a judge or examiner exactly how consumers perceive things like trade dress, color, shape, sound, or scent.”
Mr. Thomas explains that surveys can deliver powerful evidence in proving likelihood of confusion in trademark disputes. It is a multifactorial test where, if you can prove enough of the other factors, you don't have to prove actual confusion.
“Every judge I’ve appeared before has pointed out the lack of a consumer confusion survey, even though it's not actually required,” he says.
He continues that the reason judges love surveys—if they're done properly—is that a well-designed survey will encompass all the factors of a likelihood of confusion test.
Mr. Thomas points out that the session will not just explore the use of surveys in lawsuits at the U.S. Federal Court, but how they can be used to prove acquired distinctiveness to obtain federal trademarks at the USPTO for non-traditional marks.
“Survey evidence can be a reality check for brands/companies, and I often think a lot of money and hassle could be saved if they would invest in the evidence before filing suit.”
- Jackie Chorn | NERA Economic Consulting (USA)
Non-Traditional vs Traditional
Discussing the challenges and potential pitfalls unique to non-traditional trademarks, Mr. Blair notes that in a litigation context, traditional trademark surveys usually look at likelihood of confusion.
When it comes to non-traditional marks, however, surveys often focus on whether consumers recognize the non-traditional element (shape/color/sound/smell) as a functioning trademark.
But, Mr. Blair asks, what will you do if the survey shows that consumers don’t even recognize the non-traditional element you are looking to protect as a trademark at all?
The use of surveys for these types of marks comes with a number of caveats. Ms. Chorn works at the economic consulting firm NERA and has designed and conducted consumer perception surveys for a variety of litigation matters. She points out that non-traditional marks can be much harder to survey and protect than traditional trademarks.
She explains that when assessing whether a trademark has acquired distinctiveness or is likely to cause confusion, it is fairly easy to isolate the element you most want to test. However, in surveys for non-traditional marks, the design of a proper control and identification of elements that require testing is sometimes a challenge.
Using an example of trade dress, it is imperative, she stresses that trade dress is well defined and “not written in a manner that is so broad that it excludes the characteristics consumers are most likely to associate the company/brand with. Other times, when many elements are alleged to be source identifying, the design of a proper control can be a challenge.”
Ms. Chorn also warns that there are many times when companies want a litigation survey to test more than it should or can.
“Surveys for litigation are designed to test allegations relevant to the case, they’re not a marketing survey,” she points out.
“Pushing a survey expert to gather data that is not responsive to the allegations is a recipe for disaster for both the expert and the company that retained them. Nobody wants their survey expert to do shoddy work that ultimately ends up getting excluded,” she adds.
She also believes it is wise to think about survey evidence before you’ve filed a complaint. “While attorneys like to make us seem like hired guns during deposition and trial, I can honestly attest to the fact that surveys are not guaranteed to work in your favor and I give unfavorable results to clients as often, if not more, than I do favorable results.”
She continues that simply because a brand thinks they have a strong mark does not mean that consumers have the same perception.
“Survey evidence can be a reality check for brands/companies, and I often think a lot of money and hassle could be saved if they would invest in the evidence before filing suit.”
They are also extremely expensive, says Mr. Thomas. An “all in survey,” conducted properly using a reputable survey designer and testifying experts is going to be a minimum of six figures.”
Mr. Thomas adds although it's expensive and time consuming, “It plays a vital role in the entire spectrum of a well-designed trademark program.”
Ms. Chorn agrees, saying that many companies find surveys “price prohibitive,” but that in the context of litigating, “the survey could actually save you quite a bit down the road."
“Every judge I’ve appeared before has pointed out the lack of a consumer confusion survey, even though it's not actually required.”
- Jonathan Thomas | Kilpatrick Townsend & Stockton LLP (USA)
Design
Ms. Chorn says that the utility of survey evidence lies in the details of how the survey was conducted. For example, did the survey have the right population, a representative sample, utilize a proper control to account for noise, or did the survey introduce bias in some manner.
All of these elements will help determine how useful the survey is to the trier of fact, she adds.
One limitation she sometimes observes with surveys is the difficultly in reaching the target populations.
“At times, survey populations are so niche that it can be nearly impossible to conduct a survey. With the advent of online survey methodologies, niche populations are now easier to reach than ever before,” she explains.
Ms. Chorn continues that there is often a lot of focus on whether a mark is “top-of-mind or not, but really the survey should attempt to approximate how consumers encounter the mark in the marketplace.”
If consumers are likely to encounter the mark in proximity (and this can be a tricky point), then presenting the marks proximately in a survey context will accurately assess the likelihood of confusion that will exist in the marketplace, she reflects.
Mr. Thomas says the most important thing with the survey at the end of the day is that it has to be designed properly, “or you're wasting your money.”
You want to ensure, Mr. Thomas continues, that the survey withstands a “Daubert challenge,” a way to challenge the admissibility of expert testimony, particularly in cases where the evidence relies on scientific, technical, or specialized knowledge.
“This session will not be a ‘sit there and go through the slide deck’ type of presentation. Be prepared for some lively discussion!” notes Mr. Blair.
“Surveys can be an important tool for informing a judge or examiner exactly how consumers perceive things like trade dress, color, shape, sound, or scent.”
- Jason Blair | Dykema Gossett PLLC (USA)
