Surveys can be a very useful method of delivering evidence. For law firms involved in trademark litigation, Keegan & Donato Consulting can help ensure that the survey evidence you introduce will be reliable and hold up to scrutiny from courts and opposing experts.
Keegan & Donato Consulting has designed and critiqued hundreds of consumer research studies across a broad range of industries for cases in federal court, state court, the TTAB, the NAD, arbitration hearings, and other specialty venues.
Principals Mark Keegan and Tony Donato offer plaintiffs and defendants more than 25 years of combined experience in trademark surveys and have worked with leading IP litigators across the nation, such as LeClairRyan in Los Angeles, Day Pitney LLP in New York City, Wiley Rein LLP in Washington, DC, and Blank Rome LLP in Philadelphia.
The Role Surveys Play in Trademark Litigation
Surveys can be used to test a wide variety of Lanham Act claims. An expert can help establish whether or not a descriptive mark has acquired secondary meaning; whether or not competing marks are likely to confuse consumers; whether or not a mark is famous; and whether or not one brand’s mark is likely to cause dilution to a competing mark.
While survey evidence is not required in order to prevail on a claim of trademark infringement, courts often give such evidence substantial weight. In many instances, the most persuasive evidence comes from a consumer research study.
The Value of Hiring a Qualified Expert
Rule 702 of the Federal Rules of Evidence requires experts to have scientific, technical, or other specialized knowledge that will help the court understand the evidence, and the expert’s testimony must be based on sufficient facts or data obtained by reliable principles and methods that have been properly applied to the facts of the case.
The following example illustrates the importance of choosing an experienced expert who is capable of explaining his or her methodology in a clear and concise manner and able to withstand cross-examination.
In Valador, Inc v. HTC Corporation, 1:16-cv-1162 – Dist. Court, E.D. VA (2017), the plaintiff, a NASA contractor, alleged that the defendant infringed on plaintiff’s VIVE mark through defendants’ marketing, advertising, and sale of a virtual reality headset, the “HTC Vive,” even though the plaintiff does not label any of its end products or deliverables with its VIVE mark.
To support its claim of likelihood of confusion, the plaintiff hired a consultant who purported to be an expert in marketing, marketing research, and conducting market surveys, but whose qualifications and capabilities turned out to be inadequate.
The Court determined that the expert was “not qualified to present his proffered opinions” and excluded the survey results in their entirety, finding that the survey “(1) failed to evaluate the proper universe of respondents; (2) did not replicate market conditions; (3) neglected to use a control group; (4) eschewed the recognized methodologies for conducting trademark confusion surveys; and (5) asked improperly leading questions. These fundamental flaws, taken together, render the survey so unreliable as to be inadmissible.”
At Keegan & Donato Consulting, we are confident that law firms will find our trademark survey expertise, combined with our analytical skills and extensive knowledge of intellectual property issues, appropriate for meeting the courts’ standards for design, execution and analysis. Get in touch with us today at (914) 967-9421 to find out more about our wide range of services.