Transcript Slide 1

Presented by Philip Johnson at the
Colorado Bar Association Intellectual Property Section
April 28, 2009
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
Overview
1.
Designing a Trademark Survey
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2.
Defining the Universe
Probability versus Non-probability studies
Selecting the Stimulus/Stimuli
Designing the Questionnaire
Method of Data Collection
Pitfalls to Avoid
Specific Types of Trademark Surveys
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Likelihood of Confusion
Secondary Meaning
Genericness
Dilution
› Before the Trademark Dilution Revision Act
› After the Trademark Dilution Revision Act
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Part I: Designing a Trademark Survey
Designing a Trademark Survey
• Defining the universe
• Probability versus non-probability studies
• Selecting the stimulus/stimuli
• Designing the questionnaire
• Method of data collection
• Pitfalls to avoid
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Defining the Universe
• Representative of the target market
– Neither overly broad nor overly narrow
– May have more than one target market
(e.g., consumers and trade)
• In trademark litigation:
– Market for Junior user’s goods or
services for Forward Confusion and
Dilution
– Market for Senior user’s goods or
services for Reverse Confusion
– Market for all users in product segment
for Secondary Meaning
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Probability v. Non-Probability Studies
• Probability studies
• Non-Probability studies
– Random telephone surveys
– Based on statistical principles
– Subject to sampling error
– Mall intercept and online studies
– Not statistically projectable
– Survey expert can take steps to
approach projectability:
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 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
Geographic distribution
Demographic quotas
Random sampling
Minimum number of
observations per cell
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Selecting the Stimulus/Stimuli
• Replicate marketplace conditions
– Present in context
– Mock-ups should be consistent with the category
• Control is generally necessary to measure survey error or “noise”
– Control exhibit should be similar to the “test” exhibit
› With the exception of the potential infringing element(s)
• Difficult to select and design
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Designing the Questionnaire
• Place questions in marketplace context
• Simple and clear, non-leading questions
• Open-ended questions
• Filter questions
• Closed-ended questions should be balanced and non-leading
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Data Collection Methods
Advantages
Telephone Survey
Mall Intercept
Disadvantages
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Projectable sample
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More difficult to show an exhibit/stimulus.
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Relatively fast.
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Easier to reach certain specific populations
(e.g., business professionals).
However, if participants can log onto the
Internet, can show them an exhibit on a
dedicated URL.
Can show an exhibit/stimulus.
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Not statistically projectable (though wellaccepted by courts.)
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A true “shopping” environment
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Difficult to reach certain populations.
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A large proportion of consumers are not
yet reached by online panels.
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Self-selection bias.
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Difficult to reach certain populations.
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Self-administered survey (difficult to
control survey administration.)
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Not well-tested in court.
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Can show an exhibit/stimulus.
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Usually lower cost and faster than other
methods.
Online Survey
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Can reach “pre-targeted” groups of hard to
find consumers.
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Pitfalls to Avoid
• Overloading a survey with extraneous questions
– Instead, focus on key objectives
• Insufficient information for survey expert.
• It is important to:
– Share complaint and response with expert
– Identify key information objectives
– Provide relevant information on target market
• Insufficient time to develop and execute a survey
• Small sample sizes
• Too much attorney influence in survey design and/or reporting
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Part II: Specific Types of Trademark Surveys
Types of Trademark Surveys
• Likelihood of Confusion
• Secondary Meaning
• Genericness
• Dilution
– Before the Trademark Dilution Revision Act
– After the Trademark Dilution Revision Act
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Likelihood of Confusion
NOTE: This is not a formula or recommendation, but only an
example of an approach one might take.
Likelihood of Confusion Surveys
• Eveready Design
• 3 Key Questions
– Source
› “Who or what source…”
– Other Brands/Products
› “What other brands or products…”
– Relationship/Sponsorship/Association
› “Related or sponsored…”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Likelihood of Confusion Case Study:
McDonald’s Corp. v. McSleep Inn
• Proposed motel chain from Quality Inns
Test Cell
Control Cell
• Mall intercept study.
– “Here is a photograph of a sign for a hotel you might see if you were driving
along the highway. Who or what company do you believe owns or operates
this hotel?”
• 32% believed McDonald’s owned or operated McSleep Inn
• Court accepted survey and enjoined Quality Inns from using name
– “The Court finds and concludes that…the name McSleep Inn is likely to cause an
appreciable number of the public to be confused by believing that McSleep Inn
is sponsored, associated, connected, or endorsed by McDonald’s.”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Likelihood of Confusion Case Study:
Gateway, Inc. v. Companion Products, Inc.
• Gateway registered a black and white cow spots design in association with
computers and computer peripherals as a trademark in 1992
• Companion Products, Inc. sells stuffed animals trademarked as “Stretch Pets,”
including its top-selling black and white cow called “Cody Cow”
• Nationwide survey showed that 39% of consumers erroneously believed that
Gateway manufactured or sponsored Cody Cow
• Citing the survey evidence, the District Court concluded that there was a likelihood
of confusion by the consuming public and this judgment was affirmed on appeal
Cody Cow
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
Control Cell
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Alternative Likelihood of Confusion Survey Designs
• Squirt Test
• Array or Shelf Designs
• Observed Confusion
– E.g., California Cooler case
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Secondary Meaning
NOTE: This is not a formula or recommendation, but only an
example of an approach one might take.
Secondary Meaning
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Secondary Meaning Surveys
• Source
– “Who or what company…”
• Anonymous Source
– “One company only OR more than one company?”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Secondary Meaning Survey Case Study:
Black & Decker Inc. v. Pro-Tech Power Inc.
“If you were on a job site and you saw a power tool that was yellow and
black, would you have a belief as to who or what company makes or
manufactures it?”
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 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Secondary Meaning Survey Case Study:
Black & Decker Inc. v. Pro-Tech Power Inc. (cont.)
• 1990, Black & Decker introduced a line of DeWalt professional power tools
with a new look to distinguish them from its consumer power tools
• Pro-Tech, a Taiwanese-owned power tool company, was inspired by the
“DeWalt look” for its own competing line of power tools
• Survey showed that 85% of professional power tool users reported the
belief that the source is DeWalt and/or Black & Decker
• The Court found that the DeWalt yellow and black color combination is a
protectable trademark and trade dress, stating “that the DeWalt colors
currently enjoy secondary meaning is also beyond debate” and Black &
Decker enjoyed “a level of consumer recognition that parallels the extent to
which the public associates golden arches with the McDonald’s
Corporation.”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Genericness
NOTE: This is not a formula or recommendation, but only an
example of an approach one might take.
Genericness Surveys
• Teflon Survey
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Telephone survey methodology
514 Males and 517 Females, 18 years of age and older, in 20 cities
Used to prove that TEFLON was not a generic name
A mini-course in the generic vs. trademark distinction, followed by a test
• “I’d like to read 8 names to you and get you to tell me whether you think it is
a brand name or a common name; by brand name, I mean a word like
Chevrolet which is made by one company; by common name, I mean a word
like automobile which is made by a number of different companies. So if I
were to ask you, ‘Is Chevrolet a brand name or a common name?,’ what
would you say?”
• “Now, if I were to ask you, ‘Is washing machine a brand name or a common
name?,’ what would you say?” (IF RESPONDENT UNDERSTANDS, CONTINUE.
IF NOT UNDERSTAND, EXPLAIN AGAIN.)
• “Now, would you say ______ is a brand name or a common name?”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Genericness Case Study: Windsurfer
• “Windsurfer” company had introduced a new sport, which they called “sailboarding”
• Bic Corporation began using windsurfer descriptively to promote its brand of sailboarding
• Windsurfer company objected
• “Teflon” telephone survey of 16-40 year olds to determine whether windsurfer had become
generic for the sport.
– “Most products on the market have two names. The one tells us what type of product it is. For
instance, beer, or automobile or coffee. The other is its brand name, such as Budweiser, Chevrolet, or
Maxwell House. I am going to read a few names to you and would you please tell me whether you
think it is a name that tells the type of product or a name that tells us what brand it is?”
– “Now, please tell me what kind of products these are; for instance, aspirin is a headache remedy.”
Aspirin
(89%)
Windsurfer
(61%)
Thermos
(53%)
Jello
(71%)
Generic
(Type)
(100%)
Coke
(85%)
Brand
(100%)
(50/50)
• Court ruled that “windsurfer” had become generic – descriptive of the sport.
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution Before the TDRA
NOTE: This is not a formula or recommendation, but only an
example of an approach one might take.
Dilution Before the Trademark Dilution Revision Act
• No Approved Survey Methodology
• Needed to Show Actual Dilution
• Use Likelihood of Confusion to Show Dilution Either by
Blurring or Tarnishment
• Niche fame sufficient for protection
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution by Blurring Case Study:
McDonald’s Corp. v. Arche Technologies, Inc.
“Please take a look at this. Who or what do you associate this with?”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution by Blurring Case Study:
McDonald’s Corp. v. Arche Technologies, Inc. (cont.)
• Arche Technologies, Inc., a personal computer manufacturer adopted a
single golden arch for its logo
• McDonald’s objected based on Lanham Act confusion and state of
California dilution
• Court found confusion unlikely because the products are in different
markets
• A second survey showed that 89% of consumers associated a single golden
arch with McDonald’s
• The court found the “Golden Arch” to be a distinctive mark and to “have
acquired sufficient secondary meaning to be entitled to a broad scope of
protection under California law”
• To avoid dilution of the mark, the court enjoined the Arche Technologies
use
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution by Tarnishment Case Study:
Deere & Co. v. MTD Products, Inc.
• MTD began airing a TV commercial showing a leaping deer (John Deere’s
logo) being chased by an MTD yard man tractor/mower
• Deere conducted a likelihood of confusion study which showed both
confusion and association of the MTD commercial with Deere
• The District Court found that using an animated version of the John Deere
“deer” logo would at a minimum cause dilution by blurring
• The Court of Appeals agreed with dilution ruling and cited elements of
tarnishment as well as blurring
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution After the TDRA
NOTE: This is not a formula or recommendation, but only an
example of an approach one might take.
Dilution After the Trademark Dilution Revision Act
• Need to show there is an association between marks which establishes a
likelihood of dilution
• Fame needs to be shown among the general consumer public – not
“niche” fame
• Survey method shows likelihood of dilution
• Examples of Dilution by Blurring Using New Survey Designs
– Nike v. Nikepal; Perfumebay.com v. eBay
– After first measuring confusion, ask: “What, if anything, came to mind?” when
first heard the allegedly diluting mark
– This approach is consistent with McCarthy’s view of the TDRA’s required
“association” between the marks, which exists if when encountering the junior
user’s mark, a person thinks of the senior user’s famous mark
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution by Blurring Case Study:
Nike, Inc. v. Nikepal International, Inc.
• Nike opposed Nikepal’s attempt to register the mark NIKEPAL in connection
with glass syringes and other laboratory products and services. The TTAB
denied Nike’s opposition to registration of the NIKEPAL mark on the ground
that the parties’ marks were not sufficiently similar
• Nike appealed the TTAB’s decision to the U.S. District Court for the Eastern
District of California
• Telephone survey, 301 cases with Nikepal’s list of current and potential
customers
• The Court reversed the TTAB’s finding of no likelihood of dilution saying the
survey showed that “the vast majority of the survey respondents,
representing a significant segment of Nikepal’s target customer group,
associate[d] Nike and/or its products and services when they encounter[ed]
the mark NIKEPAL, thus perceiving the two marks as essentially the same”
and noted that “over 87% of the people in Nikepal’s own customer pool
associated the stimulus [NIKEPAL] with NIKE.”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution by Blurring Case Study:
Nike, Inc. v. Nikepal International, Inc. (cont.)
• Potential Source Confusion:
“Assume for a moment that you were searching
the Internet and you encountered a web site
called NIKEPAL.COM. Let me spell it for you: N-IK-E-P-A-L. Would you OR would you not have a
belief as to who or what company or companies
puts out or sponsors a site called NIKEPAL?”
• IF YES: “Who or what company is that? What
makes you say that?”
• “And, do you OR do you not know of any products
or brands that you believe come from or are
associated with NIKEPAL?”
• IF YES: “What products or brands are those?
What makes you say that?”
Net “Nike” Mentions
ALL RESPONDENTS
Total
(301)
100%
Net “Nike” Mentions
87%
Name Nike For Source
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Do Not Name Nike For
Source, But Name Nike
For Association
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• Dilution Question:
• “What, if anything, came to your mind when I
first said the word NIKEPAL?”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution By Blurring Case Study:
Perfumebay.com, Inc. v. eBay, Inc.
• eBay claimed likelihood of dilution under California law
• The District Court held that conjoined forms of “perfumebay” created a
likelihood of confusion, and that the Perfumebay marks did not engender a
likelihood of dilution
• The Ninth Circuit reversed the District Court’s finding of no likelihood of
dilution on appeal referencing two consumer surveys:
– The first survey showed that 3rd party usage of the term “bay” in connection
with a website, or as part of a website name, could result in initial interest
confusion and actual confusion
– The second survey, conducted by telephone, found that 52% of a California
sample and 64% of a nationwide sample responded that eBay would come to
mind when they saw the term “bay” utilized by a website
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Dilution By Blurring Case Study:
Perfumebay.com, Inc. v. eBay, Inc. (cont.)
• Survey Questions
– “Assume for a moment that you were shopping or browsing online for such
products and you encountered a website that used the word BAY (SPELL ‘BAY’
FOR RESPONDENT SLOWLY, LETTER BY LETTER: B-A-Y) as part of its name or in
its Internet address. What, if anything, comes to your mind?”
– “Specifically, thinking about encountering the name BAY (SPELL ‘BAY’ FOR
RESPONDENT SLOWLY, LETTER BY LETTER: B-A-Y) on the Internet, what website
or company, if any, comes to mind? What makes you say that?”
– “Are there any other websites or companies that come to mind?”
IF YES: “Which is that? What makes you say that?”
• The court explained that Perfumebay’s use of the marks may result in
consumers no longer associating the usage of the “Bay” suffix with eBay’s
unique services, and specifically, the sale of products on an Internet-based
marketplace
• “The uniqueness of eBay’s mark is diluted in direct proportion to the extent
consumers, particularly Internet users, disassociate the eBay mark with
eBay’s services.”
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Final Thoughts
Any Questions?
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Appendix: About LJS and Philip Johnson
About Leo J. Shapiro & Associates
• Fifty-year-old research and consulting firm
• Rooted in principles of social science and behaviorism developed at
University of Chicago
• Research professionals trained in social sciences, business and marketing
• Specialized expertise in:
– Consumer behavior
– Healthcare and pharmaceutical
– Law
• Legal research:
– Jury research and consulting
– Trademark surveys
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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About Phil Johnson, C.E.O. of LJS
Phil Johnson is the Chief Executive Officer of Leo J. Shapiro &
Associates, and has been with the firm since 1971. He has designed and
administered a wide range of studies measuring consumer behavior
and opinion. In recent years, he has concentrated his efforts in the
areas of study design and development of research techniques,
particularly in the area of intellectual property litigation. His area of
expertise is in the use of survey research as a tool in litigation, including
jury selection and trademark disputes.
Mr. Johnson has offered survey-based expert opinion in Federal, State,
and government forums including The Federal Trade Commission, The
Food and Drug Administration, the Patent and Trademark Office, and
the Trademark Trial and Appeal Board. He also conducts seminars and
classes on the utilization of survey methodologies in the corporate and
intellectual property fields.
He holds an undergraduate degree in Psychology from Loyola
University and an M.B.A. from the Graduate School of Business at the
University of Chicago.
 2009 – ALL RIGHTS RESERVED BY LEO J. SHAPIRO & ASSOCIATES, 153 W. Ohio St., Chicago IL / 312-321-8111 / ljs@ljs.com
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Presented by Philip Johnson at the
Colorado Bar Association Intellectual Property Section
April 28, 2009