One of the more interesting aspects of market research is the use of surveys to create and refute evidence in intellectual property legal cases — in particular, cases involving trademarks.
As our society becomes more and more service- and brand-oriented, the value of intellectual property focused on such services and brands becomes far more valuable and subject to infringement. Adding to this complexity is the emergence of the Internet with its Websites and search engines. Cyberspace has become a leading delivery system in communicating services and brands. Unlike the offline world, rules, laws and protocols in the cyber environment are evolving as we speak. Because of the need to prove such alleged off-line and on-line service, brand and trademark infringement have actually taken place or are likely to take place, the survey process has evolved into a leading legal tool to prove of disprove these hypothetical infringements.
The use of surveys by intellectual property attorneys is a relatively new phenomenon. Early surveys dealt mainly with real products and focused on pure brand/trademark infringements, trade dress (packaging and product appearance) infringements and the concept of acquired distinctiveness (secondary meaning). Surveys often took the form of mall intercepts, telephone interviews and sometime the pre-recruit form where appropriate targets were contacted in advance and invited to a survey center for interviews. While these forms and protocols continue to be used, the Internet has provided an entire new dimension. Moreover, people are being bombarded in far greater degrees, with unwanted marketing messages in the form of junk mail, Internet spam, telemarketing solicitations and media advertising. Such increasingly high noise levels turn consumers off to participation in research and sharing their opinions. Thus, the process of obtaining information through surveys has become more difficult and challenging.
Adding to this complexity is the increasing use of the “Daubert motion” as a means, more often a ploy, — to attempt to disqualify experts and their findings.
However, despite the constraints and obstacles, I find doing these surveys — creating and critiquing them — to be fascinating and challenging work. To take complex problems dealing with consumers opinions and perceptions and fashion ways to prove or disprove complex hypotheses can be exhilarating.
It is for this reason that I have created this blog. As a lifelong student and 25-year teacher of marketing principles and strategies, I find the study of these surveys, the methodologies of the experts, points and counterpoints of the argumentative process to be both educational and entertaining.
The purpose of this blog is to capture the essence of several rather interesting cases strictly from the ways surveys and survey experts were used by plaintiffs and defendants. My analysis is purely subjective and focused on the survey-related elements of the cases. However, as a former newspaper reporter, I have tried to journalistically present the facts in an objective manner. The format that I will use is:
1. Present the basic issue of the case.
2. Explain how survey experts were used.
3. Report on survey results.
4. Explain rebuttal arguments from adversarial experts.
5. Report on the resolution of the matter.
6. Offer my subjective opinion of the process and results.
Friday, May 29, 2009
Case #1 The King of Rears
Anheuser-Busch, Inc. v VIP Products LLC
U.S. District Court for the Eastern District of Missouri, Eastern Division
October 16, 2008
Judge: Thomas C. Mummert III, U.S. Magistrate Judge
ISSUE: Anheuser-Busch, brewer of Budweiser beer, filed suit against VIP Products, a maker of high-quality durable dog toys, over a product called “Buttwiper,” a dog squeeze toy. Plaintiff’s Budweiser brand has also been extended and licensed to producers of various non-beer products including dog collars and leaches. The key issue is that defendant’s product took the form and shape of a Budweiser beer bottle and was intended to be, according to the plaintiff, “a knock-off of a beer bottle label.” Plaintiff sought an injunction to prevent defendant’s product from being sold and also sought damages.
SURVEY EXPERT. George Mantis, president of the Chicago-based Mantis Group and a well-known survey expert, was retained by the plaintiff. He designed and conducted a mall intercept survey (9 venues; 327 interviews). He sought to prove if the defendant’s product, “Buttwiper,” is likely to cause confusion with the plaintiff’s Budweiser brand.
RESULTS: While the numbers were not reported in the case document, it was apparent that respondents in sufficient percentages revealed substantial levels of confusion.
REBUTTAL ARGUMENTS: The defendant didn’t retain anyone to critique the Mantis survey.
RESOLUTION: Court issued an injunction prohibiting the defendant from marketing the “Buttwiper” product. Court, however, did not rule for the plaintiff for damages resulting from alleged dilution or blurring.
SUBJECTIVE OPINION: A superb survey effort by Mantis — outstanding (textbook) example mall intercept protocol with regard to respondent screening process, use of controls, etc..
U.S. District Court for the Eastern District of Missouri, Eastern Division
October 16, 2008
Judge: Thomas C. Mummert III, U.S. Magistrate Judge
ISSUE: Anheuser-Busch, brewer of Budweiser beer, filed suit against VIP Products, a maker of high-quality durable dog toys, over a product called “Buttwiper,” a dog squeeze toy. Plaintiff’s Budweiser brand has also been extended and licensed to producers of various non-beer products including dog collars and leaches. The key issue is that defendant’s product took the form and shape of a Budweiser beer bottle and was intended to be, according to the plaintiff, “a knock-off of a beer bottle label.” Plaintiff sought an injunction to prevent defendant’s product from being sold and also sought damages.
SURVEY EXPERT. George Mantis, president of the Chicago-based Mantis Group and a well-known survey expert, was retained by the plaintiff. He designed and conducted a mall intercept survey (9 venues; 327 interviews). He sought to prove if the defendant’s product, “Buttwiper,” is likely to cause confusion with the plaintiff’s Budweiser brand.
RESULTS: While the numbers were not reported in the case document, it was apparent that respondents in sufficient percentages revealed substantial levels of confusion.
REBUTTAL ARGUMENTS: The defendant didn’t retain anyone to critique the Mantis survey.
RESOLUTION: Court issued an injunction prohibiting the defendant from marketing the “Buttwiper” product. Court, however, did not rule for the plaintiff for damages resulting from alleged dilution or blurring.
SUBJECTIVE OPINION: A superb survey effort by Mantis — outstanding (textbook) example mall intercept protocol with regard to respondent screening process, use of controls, etc..
Case #2 A ‘Sexy’ Subject
Victoria Secrets Stores Brand Management, Inc. v. Sexy Hair Concepts, LLC
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
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