USING SURVEY EVIDENCE IN NEVADA LANHAM ACT DISPUTES

USING SURVEY EVIDENCE IN NEVADA LANHAM ACT DISPUTES Robert H. Thornburg Nevada Bar Intellectual Property Law Conference UNLV Boyd School of Law November 1, 2013

Introduction: Surveys are Admissible Trademark survey evidence is admissible under Federal Rule of Evidence 703. • In the Ninth Circuit “surveys in trademark cases may be considered so long as they are conducted according to acceptable principles. ” Prudential Ins. Co. v. Gibraltar Fin. Corp. , 694 F. 2 d 1150, 1156 (9 th Cir. 1982). • The offeror of a trademark survey has the burden to show the survey was conducted according to acceptable survey principles. Ways & Means Inc. v. IVAC Corp. , 506 F. Supp. 697, 704 (N. D. Cal. 1979).

Introduction: The Eight Requirements Acceptable survey principles, under Ninth Circuit law, must show the following: (1) (2) (3) (4) (5) (6) (7) (8) the proper universe was examined; a representative sample was drawn from that universe; the mode of questioning the interviewees was proper; the persons conducting the survey are recognized experts; the data gathered was accurately reported; the sample design was correct; the actual questionnaire given to interviewees was not leading; and the overall interviews were performed with objective statistics in the applicable field. Ways & Means Inc. v. IVAC Corp. , 506 F. Supp. 697, 704 (N. D. Cal. 1979). In sum, a trademark survey must sufficiently “replicate[ ] the real world setting” in which the actual purchasing decision for the good or service occurs. ” YKK Corp v. Jung. Woo Zipper Co. , 213 F. Supp. 2 d 1195, 1203 (C. D. Cal. 2002).

Introduction: Uses of TM Surveys A survey can test a variety of key issues in trademark disputes: Whether a mark or trade dress has achieved secondary meaning. Grupo Gigante SA De CV v. Dallo & Co. , 391 F. 3 d 1088, 1107 n. 1 (9 th Cir. 2004). Note: Surveys have also been used in jurisdictions outside of the Ninth Circuit to test if a purported trade dress is functional. Windmill Corp. v. Kelly Foods Corp. , 1996 US. App. LEXIS 3473, at $14 -15 (6 th Cir. Jan. 26, 1996). Whether a “famous” mark has been diluted by a dissimilar product or service. Avery Dennison Corp. v. Sumpton, 89 F. 3 d 868, 879 -80 (9 th Cir. 1999). Note: In the Ninth Circuit “surveys in trademark cases may be considered so long as they are conducted according to acceptable principles. ” Prudential Ins. Co. v. Gibraltar Fin. Corp. , 694 F. 2 d 1150, 1156 (9 th Cir. 1982).

Introduction: Uses of TM Surveys A survey can test a variety of key issues in trademark disputes: • Whether a mark is generic or identifies a specific source of goods or services. Stuhlbarg Int’l Sales Co. Inc. v. John D. Brush & Co. , 240 F. 3 d 832, 840 (9 th Cir. 2001). • Whether use of a mark creates consumer confusion. Clicks Billiards Inc. v. Sixshooters Inc. , 251 F. 3 d 1252, 1265 (9 th Cir. 2001). Note: In the Ninth Circuit “surveys in trademark cases may be considered so long as they are conducted according to acceptable principles. ” Prudential Ins. Co. v. Gibraltar Fin. Corp. , 694 F. 2 d 1150, 1156 (9 th Cir. 1982).

Introduction: Types of TM Surveys Types of Commonly Used Surveys in the Ninth Circuit • Mall Intercept Surveys are an acceptable survey format. E. J. Gallo Winery v. Gallo Cattle Co. , 967 F. 2 d 1280, 1992 (9 th Cir. 2002). • Telephonic Surveys are an acceptable survey format. Ways & Means Inc. v. IVAC Corp. , 506 F. Supp. 697, 703 -04 (N. D. Cal. 1979). • Central Location Surveys are also an acceptable survey format. Clicks Billiards Inc. v. Six. Shooters Inc. , 251 F. 3 d 1252, 1262 -64 (9 th Cir. 2001) (conducting survey at Plaintiff’s billiards parlor).

Introduction: Types of TM Surveys What about on-line trademark surveys? Yes, Nevada accepts trademark surveys conducted online. Source: R&R Partners, Inc. v. Tovar, 47 F. Supp. 2 d 1141 (D. Nev. 2006).

Introduction: Types of TM Surveys R&R Partners, Inc. v. Tovar, 47 F. Supp. 2 d 1141 (D. Nev. 2006). • R&R Partners developed, on behalf of the Las Vegas Convention and Visitors Authority (“LVCVA”), the popular advertising campaign “What Happens in Vegas Stays in Vegas” (WHIVSIV”) as well as the popular trademark “What Happens Here Stays Here” (“WHHSH”) • Both marks were to promote tourisms in the Las Vegas area, and connotes to visitors and tourists. • The LVCVA obtained a Nevada state registration for the mark WHHSH to promote Vegas as a designation for consumers. Later, LVCVA registered the mark with the Nevada Secretary of state for prints and publications, as well as for clothing. • Apparently, LCVCA did not seek state trademark registrations for the popular WHIVSIV.

Introduction: Types of TM Surveys R&R Partners, Inc. v. Tovar, 47 F. Supp. 2 d 1141 (D. Nev. 2006). • Later, Tovar began using WHIVSIV for a line of clothing. Realizing the mark was not registered with the state of Nevada by LVCVA, Tovar obtained a Nevada state registration for the mark for clothing. Likewise, Tovar registered two WHIVSIV marks with the USPTO for clothing. • LCVCA sued Tovar and later moved for summary judgment, stating that Tovar had no rights to the mark WHIVSIV for clothing. • In moving for summary judgment against Tovar, LCVCA relied upon a trademark survey that indicated that one-third of survey participants believed that Tavaro’s shirts were sponsored by Las Vegas or some official representative of the city, like LVCVA. • The survey was not a traditional mall-intercept survey but rather was an internet survey. Tovar criticized the use of an internet survey, as well as the survey expert’s credentials. The District of Nevada disagreed and found the survey admissible. • As such, the court found that there was sufficient evidence of actual confusion, and therefore, there was a likelihood of confusion. Accordingly, LCVCA’s motion for summary judgment was granted.

Introduction: Types of TM Surveys Non-litigation studies (including general market research) are not accepted. • A survey offered by a purported mark holder as evidence of secondary meaning is accorded little weight if developed for another case (or non-litigation purpose). Thane International Inc. v. Trek Bicycle Corp. , 305 F. 3 d 894, 899 (9 th Cir. 2002). See also Coca Cola Co v. Overland Inc. , 692 F. 2 d 1250, 1254 n 11 (9 th Cir. 1982). • Market research studies are given little weight to show brand awareness. Avery Dennison Corp. v. Sumpton, 189 F. 3 d 868, 879 (9 th Cir. 1999).

Introduction: Key 9 th Circuit Cases The Ninth Circuit is unique in that it almost refuses to exclude a survey based upon technical deficiencies. • The Ninth Circuit is unique in its treatment of trademark survey evidence in that it generally allows such surveys into evidence even if there are technical deficiencies. • A trademark survey’s “[t]echnical unreliability goes to the weight accorded the survey, not its admissibility. ” Prudential Ins Co v. Gibraltar Fin. Corp. , 694 F. 2 d 1150, 1156 (9 th Cir. 1982). • A district court’s exclusion of a trademark survey due to reliability may cause reversible error, as the Ninth Circuit has stood firm that discrepancies should be evaluated by the fact-finder. Wendt v. Host Int’l Inc. , 125 F. 3 d 806, 14 (9 th Cir. 1997). • In analyzing the “weight” to accord to a trademark, the Ninth Circuit looks to a variety of factors which includes the overall survey design and experience of the surveyor. E. J. Gallo Winery v. Gallo Cattle Co. , 967, F 2 d 1280, 1292 -93 (9 th Cir. 1992).

Introduction: Key 9 th Circuit Cases The Ninth Circuit Does Not Require Survey Evidence in Lanham Act Cases The Committee for Idaho’s High Desert Inc. v. Yost, 92 F. 3 d. 814 (9 th Cir. 1996) Background and Facts: • The Committee for Idaho’s High Desert Inc. (“CIHD”) is a non-profit educational and advocacy group that helps protect grazing, water use, recreation, and endangered species in Southwest Idaho and parts of Nevada. • Incorporated in 1981 under Idaho law, CIHD operated very informally. In 1985, CIHD failed to file an annual report with the Idaho Secretary of State, and forfeited its corporate charter. From 1985 to 1993, the group continued to operate as if CIHD was in good corporate standing. • In 1992, CIHD sued the federal government and others with regard to the Bruneau snail, which lives in the Bruneau Valley. In response the Bruneau Valley Coalition sued to have the snails de-listed as a potential endangered species. • Yost, the director of pubic affairs at Idaho Farm Bureau – discovered that CIHD was not properly incorporated under its name – and within 24 hours of learning CIHD forfeited its charter in 1985, Yost and others incorporated under the name “Committee for Idaho’s High Desert Inc” in 1993. • In 1994, CIHD sued Yost and others for trademark infringement.

Introduction: Key 9 th Circuit Cases The Ninth Circuit Does Not Require Survey Evidence in Lanham Act Cases The Committee for Idaho’s High Desert Inc. v. Yost, 92 F. 3 d. 814 (9 th Cir. 1996) Trial Court Ruling and Appellate Reasoning: • After a four day bench trial in January 1995, the trial court found that CIHD has capacity to bring suit as an unincorporated association, and that Yost and the others who ran to incorporate, should be enjoined from using the name “Committee for Idaho’s High Desert Inc. ” • Yost and the other incorporators appealed. On appeal before the 9 th Circuit, there was a discussion of the strength of the CIHD’s purported rights to the name “Committee for Idaho’s High Desert Inc. ” • The Ninth Circuit stated CIHD had conducted a significant amount of advertising of its name and business activities through public television, radio, newsletters, public hearings, and various meetings, lectures, hikes, school presentations, and slide shows. • The fact there was no survey evidence before district judge was not fatal – despite the Ninth Circuit’s standard that “an expert survey of purchasers can provide the most persuasive evidence of secondary meaning. ” Vision Sports Inc. v. Melville Corp. , 888 F. 2 d 609, 615 (9 th Cir. 1989). • “[S]urvey evidence is only one of the most persuasive ways to prove secondary meaning, and [it is] not a requirement for such proof” in the Ninth Circuit. • As such, the district court’s finding that the mark “Committee for Idaho’s High Desert” had acquired secondary meaning – despite not having the benefit of survey evidence – was not clearly erroneous. • The Ninth Circuit affirmed the four day bench trial finding of a likelihood of consumer confusion.

Introduction: Key 9 th Circuit Cases The Exclusion of Survey Evidence Often Infers a Finding of No Actual Confusion M 2 Software Inc. v. Madacy Entertainment, 421 F. 3 d 1073 (9 th Cir. 2005) Background and Facts: • M 2 Software had registered the mark “M 2” as a trade name for “computer software, featuring business management applications for the film and music industries. . . ” • Madacy later created a division called “M 2 Entertainment” to create full priced CDs featuring a line of sports related music tied to local professional sports teams. • Madacy filed a trademark application later in August 1999 describing its use as in connection with “sound recording featuring music, namely phonographic records, audio tapes, and compact discs featuring music. . . ” • M 2 Software sent a cease and desist letter on December 30, 1999 to Madacy demanding that the company stop using the M 2 trademark. • Licensing discussions ensued but ultimately were unsuccessful. M 2 Software filed suit on March 21, 2000.

Introduction: Key 9 th Circuit Cases The Exclusion of Survey Evidence Often Infers a Finding of No Actual Confusion M 2 Software Inc. v. Madacy Entertainment, 421 F. 3 d 1073 (9 th Cir. 2005) Trial Court Ruling and Appellate Reasoning: • Evidence before trial court found scant evidence of sales by M 2, and limited advertising expenditures regarding its “M 2” mark. • While M 2 Software had prepared a likelihood of consumer confusion survey, that survey was excluded as it was not properly conducted. • The survey was excluded twice at the district court level, because the survey creator was not qualified as an expert in designing or analyzing consumer surveys – and likewise the survey was not conducted in accordance with accepted survey principles. • Jury trial commenced on May 13, 2003, which returned a special verdict finding that Madacy was not liable for its use of the mark. M 2 Software appealed. • On appeal, the 9 th Circuit affirmed the exclusion of the M 2 software trademark survey, and then likewise found that there was a lack of actual confusion (affirming this Sleekcraft factor in favor of Madacy). • Likewise, the 9 th Circuit affirmed the trial court order granting partial summary judgment in favor or Madacy – and entry of final judgment following the jury trial.

Introduction: Timing of TM Surveys Kerzner Int’l Ltd. v. Monarch Casino & Resort Inc. , 675 F. Supp. 2 d 1029 (Dec. 14, 2009). • Kerzner owns the popular ATLANTIS resort in the Bahamas, which includes a casino. • Monarch began using the mark ATLANTIS in connection with nightclub and restaurant services in 1992. • In 1996, Monarch used its Reno facility to operate a casino resort under the ATLANTIS name. • Kerzner desired to open a casino under the mark ATLANTIS in Las Vegas, but Monarch demanded that it cease such steps based upon its priority of use based upon its Reno casino. • Kerzner brought forth evidence of consumer awareness of its casino based in the Bahamas operated under the mark ATLANTIS via the report of a survey expert. • The survey showed 37% people surveyed were aware of Kerzner’s resort under the name ATLANTIS located in the Bahamas, with 57. 6 % of those surveyed in Las Vegas aware of it. • As the survey was conducted in 2007, the Court questioned the lack of probative value of the survey to test consumer perceptions of awareness of the mark ATLANTIS in April 1996 (when Monarch began using the mark in Nevada for a casino). • The court ultimately denied Monarch’s motion for summary judgment – but did not seem to reply directly on the survey results.

Surveys in Prelim Injunction Proceedings Survey Evidence Can be Used to Imply “Strong” Trade Dress in Support of a Motion for Preliminary Injunction Shuffle Master Inc. v. Awada, 83 U. S. P. Q. 2 d (BNA) 1054 (D. Nev. 2006): • Both parties were direct competitors in the field of design and manufacture of specialty casino game table assemblies. • Plaintiff Shuffle Master sold a popular four-card poker game table that included a semi-circulate table, based upon four-card hand poker. • While attending a gaming convention in Las Vegas in September 2005, Awada unveiled a new play four poker game table, which was semi-circular and competed with Shuffle Master’s table. • Shuffle Master sued for trade dress infringement, and later moved for preliminary injunction on February 27, 2006. • During the preliminary injunction proceedings, Shuffle Master relied upon a survey of table game managers from casinos across the United States (and not just in Nevada). • That survey showed that 35% of these table game managers believed Shuffle Master’s semi-circulate table assembly was made by a single source. • Based upon this, the trial court found secondary meaning existed in that “Shuffle Master has provided evidence demonstrating that in spite of the large number of gaming tables in the market, none share the appearance of Shuffle Master’s Four Card Poker game until the alleged infringement. ” • Moreover “the survey conducted by Shuffle Master implied that Shuffle Master’s table design is a strong trade dress. ” (emphasis added). • Based in part on this finding, the Court granted Shuffle Master’s motion for preliminary injunction.

Surveys in Prelim Injunction Proceedings Survey Evidence Can Support Actual Confusion Finding in Preliminary Injunction Hearing American Antenna Corp. v. Wilson Antenna Inc. , 690 F. Supp. 924 (D. Nev. 1988) • American Antenna Corp. (“American”) adopted the mark “K-40” for an antenna and packaging (that included a black rectangular box with a three sided window display to allow a customer to view the unique shape of the antenna base. • In about 10 years time, American had sold 1 million “K-40” antennas and spent almost 10 million on advertising. • Wilson, a competitor of American, launched its “KW-1000” antenna which featured “similar design characteristics and is packaged in a box almost identical to American’s K-40 antenna box. ” • American sued Wilson and sought a preliminary injunction hearing. • As part of its evidence in support of preliminary injunction, American submitted a survey to show confusion regarding the K 40 and KW-1000 antennas. • The survey expert said the results indicated “a substantial percentage of potential consumers questioned thought Wilson’s KW-1000 was American’s K-40. ” • Likewise, dealers questioned by the survey expert “believed the KW-1000 to be an improved or enhanced version of the K 40. ” • Moreover, the court found “[t]he boxes are the same color, the same configuration, and virtually the same size. ” • As such, the Court found that American was likely to prevail in that Wilson’s competing line of antennas would cause confusion in the relevant marketplace.

Secondary Meaning Surveys The Ninth Circuit is stern that a secondary meaning survey should occur at, or near, the senior user’s first knowledge of a junior user’s adoption of a mark. • The Northern District of California has stated that while “[i]t is unrealistic to expect a plaintiff to generate market studies until a potential infringer is discovered, ” courts should accept a timely secondary meaning survey after filing a trademark suit. ” STX Inc. v. Trix Stik Inc. , 708 F. Supp. 1551, 1559 (N. D. Cal. 1988). • While survey evidence is not required to establish secondary meaning, they are “the most persuasive evidence of secondary meaning” under a large line of Ninth Circuit cases. Grupo Gigante SA De CV v. Dallo & Co. , 391 F. 3 d 1088, 1107 n 1 (9 th Cr 2004). • Other Ninth Circuit opinions have similarly stated that “survey evidence will often provide the most persuasive evidence of consumer recognition and association. ” Duncan Mc. Intosh Co. v. Newport Dunes Marina LLC, 324 F. Supp. 2 d 1078, 1084 (9 th Cir. 2004). See also Vision Sports, Inc. v. Melville Corp. , 999 F. 2 d 609, 615 (9 th Cir. 1989).

Secondary Meaning Surveys Ninth Circuit requires high level of acknowledgement for secondary meaning surveys: • Ninth Circuit in Vision Sports, suggested that 80% consumer association with a purported trade dress was sufficient to show secondary meaning. See 88 F. 2 d at 615. • In California Cooler Inc. v. Loretto Winery Ltd. , the Ninth Circuit said that a secondary meaning survey which reported that 75% of people questioned stated that Plaintiff’s mark “California Cooler” was a specific “brand of wine cooler” was enough. See 774 F. 2 d 1451, 1456 (9 th Cir. 1985).

Secondary Meaning Surveys Evidence of Secondary Meaning can be based upon other Evidence: The list of evidence the Ninth Circuit will review as evidence of establishing secondary meaning includes: • direct consumer testimony; • exclusivity of use; • manner of use; • length of use; • level of advertising; • amount of sales; and • establishment in the marketplace. Filipino Yellow Pages Inc. v. Asian Journal Publ’n Inc. , 198 F. 3 d 1143 (9 th Cir. 1999).

Secondary Meaning Surveys Evidence of Secondary Meaning can be based upon other Evidence: • Sufficient evidence of long-term use and large-scale advertising often reduces the need for survey evidence to show secondary meaning. Sunburst Prods. , Inc. v. Derrick Law Co. , 1991 U. S. App. LEXIS 352, at *7 n 3 (9 th Cir. Jan. 9, 1991). • Lack of survey evidence is not fatal, especially when dealing with higher end and/or luxury products having a recognized quality. Distillery Cristall v. Pepsico Inc. , 48 U. S. P. Q. 2 d (BNA) 1217 (9 th Cir. 1998). • Proof of copying of a mark or trade dress by an alleged infringer “strongly supports an inference of secondary meaning, ” lessening the need for a survey. Vision Sports, Inc. v. Melville Corp. , 888 F. 2 d 609, 615 (citing Audio Fidelity, Inc. v. High Fidelity Recordings, Inc. , 283 F. 2 d 551, 558 (9 th Cir. 1960)).

Confusion Surveys: Overview • Trademark “[s]urveys are commonly introduced as probative evidence of actual confusion. ” Playboy Enters. Inc. v. Netscape Communications Corp. , 354 F. 3 d 1020, 1026 n. 28 (9 th Cir. 2004). • Surveys are valuable tools to help “bolster” a trademark holder’s infringement claims. Morrison Enterm’t Group Inc. v. Nintendo of Am. , Inc. , 57 Fed Appx. 782, 285 (9 th Cir. 2003).

Confusion Surveys: Overview Proof of likelihood of consumer confusion can also be shown in other ways apart from survey evidence such as: • evidence of consumer telephone calls; • judicial comparison of both marks or dress; and • overall context of both uses in the marketplace. Dr. Seuss Enters. L. P. v. Penguin Books USA Inc. , 109 F. 3 d 1394, 1404 n 14 (9 th Cir. 1997) (affirming grant of preliminary injunction despite lack of survey evidence of actual confusion).

Confusion Surveys: Overview • The 9 th Circuit has thrown out survey results based upon conclusory expert opinions based on only a handful of survey questionnaires. Locomotor USA Inc v. Korus Co. , 1995 U. S. App. LEXIS 401, at *12 -13 (9 th Cir. Jan 6. 1995). • Trademark surveys – while a “significant measure of consumer confusion” - are not dispositive of the issue of likelihood of confusion. Sunburst Products Inc. v. Derrick Law Co. , 1991 U. S. App. LEXIS 352, at *23 (9 th Cir. Jan 9, 1991).

Confusion Surveys: How much ? Sufficient Percentages of Confusion to Warrant a finding of Confusion: • A finding that 27. 7% of respondents were confused – after removal of survey noise (control group) – sufficient to support finding of confusion. Thane International Inc. v. Trek Bicycle Corp. , 305 F. 3 d 894, 902 -03 (9 th Cir. 2002). • The Ninth Circuit has found that 47% of a relevant geographic use of the mark was “eminently trustworthy” in finding actual confusion. E. &J. Gallo Winery v. Gallo Cattle Co. 967 F. 2 d 1280, 1292 -93 (9 th Cir. 1992).

Confusion Surveys: How much ? Survey Evidence Suggesting Less than 10% Infringement Shows Evidence of No Likelihood of Consumer Confusion. • Survey results finding less than 10% confusion warrant a finding that the alleged infringing mark or dress does not create a likelihood of confusion. Cairns v. Franklin Mind Co. , 24 F. Supp. 2 d 1013, 1040 (C. D. Cal. 1998). • A finding of only 6. 7% confusion between two disputed marks was found not only insufficient to show actual confusion during preliminary injunction proceedings, but supported a finding of no confusion. Visa International Service Association v. Eastern Financial Credit Union, 24 U. S. P. Q. 2 d (BNA) 1365, 1368 (9 th Cir. 1992). • A finding of only 22% confusion, along with valid criticism of survey, may support a finding of no confusion. Playboy Enters. Inc. v. Netscape Communications Corp. , 34 F. 3 d 1020, 1026 -27 (9 th Cir. 2004). • There has been at least one case where a finding of 30% consumer confusion was found insufficient to show actual confusion. Prudential Ins. v. Gibraltar Fin Corp. , 694 F. 2 d 1150, 1155 -56 (9 th Cir. 1982).

Confusion Surveys: How much ? The District of Nevada has Suggested that 20% Confusion is Not Enough Fifty-Hope Road Music Ltd. v. A. V. E. L. A Inc. , 688 F. Supp. 2 d 1148 (D. Nev. 2010). • Plaintiffs have trademark rights for Bob Marley’s publicity rights in Nevada. • Defendants were collectors of artwork and images related to entertainment – as well as restoration of old movie posters and historic photographs. • Defendants employed an original photograph that they had purchased of Bob Marley, and used it to create a t-shirt design that it ultimately sold at Target. • Plaintiff engaged a trademark survey expert to conduct a survey of potential purchasers of graphic t-shirts. • After addressing noise in the survey, the expert testified that only 20% of those surveyed were confused. • Based upon this, the Court denied the motion for preliminary injunction.

Genericness Surveys: Generic Surveys Should Test Consumer Associations with a Brand or With a Type of Product • The Ninth Circuit often looks toward survey evidence to determine if a disputed trademark is still protectable and not generic. Stuhlbarg Int’l Sales Co. v. John D. Brush & Co. , 240 F. 3 d 832 (9 th Cir. 2011). • Survey evidence is often the most important evidence available to determine if a trademark has become generic. Big Island Candies Inc. v. Cookie Corner, 269 F. Supp. 2 d 1236, 120 (D. Haw. 2003). • The Ninth Circuit has warned that a genericness survey should question whether the disputed mark creates “consumer awareness” as to a specific brand or source. Stuhlbarg Int’l Sales v. John D. Brush & Co. , 240 F. 3 d 832, 840 (9 th Cir. 2001).

Genericness Surveys: How much? Survey Evidence Must Show Greater Than 50% of Consumers Identify Goods or Service as Coming from Specific Brand or Source • A finding that 75% of survey participants found the name “California Coolers” was a specific brand of wine coolers sufficient to show mark was not generic. California Cooler Inc. v. Loretto Winery Ltd. • A finding that 76% of consumers sampled recognized Coke as a brand name, rather than a general term signifying soda was sufficient to show the name remarks a trademark. Coca-Cola Co v. Overland Inc.

Genericness Surveys: How much? Survey Must ask “What Are You” rather than “Who Are You” when testing for Genericness Big Island Candies Inc. v. Cookie Corner, 269 F. Supp. 2 d 1236, 1237 (D. Haw. 2003) • Plaintiff (Big Island) sued defendants for trade dress infringement regarding a chocolate dipped shortbread cookie design. • Defendant moved for summary judgment that the cookie design could not function as valid trade dress (ie, was generic). • Big Island proffered a survey, where respondents were shown a picture of its cookie wrapped in cellophane with the words BIG ISLAND CANDIES. • Respondent was first asked if they ever saw such a cookie before, and then asked “Who makes this product? ” • Defendants objected to the survey as it asked “Who are you” rather than “what are you? ” • District court found the survey did not accurately test for genericness – as it did not ask whether consumers associated the cookie with a single source. • District court found design was generic.

Dilution Surveys: No Standard Criterion for Testing Dilution • There exists “no standard criteria for surveying dilution. ” Hershey Foods Corp v. Mars Inc. , 998 F. Supp. 500, 518 (M. D. Pa. 1998). • It is almost impossible to determine the requisite “whittling away” found when dilution supposedly occurs. Quill Natural Spring Water Ltd. v. Quill Corp. , 1994 WL 559237, at *12 -14 (N. D. Ill. Oc. 7, 1994).

Dilution Surveys: The Ninth Circuit’s Discussion regarding the use of Dilution Surveys Nissan Motor Co v. Nissan Computer Corp. , 378 F. 3 d 1002 (9 th Cir. 2004). • Plaintiff appealed grant of defendant’s motion for summary judgment as to trademark dilution caused by defendant’s use of mark NISSAN for computer services. • Years prior to the suit, plaintiff had conducted three Allison-Fisher surveys finding that it enjoyed 55% awareness for consumers in 1985, 60% consumer awareness in 1986, and 65% awareness in 1991. • Plaintiff attempted, during discovery, to use these three surveys to establish famousness in bringing a trademark dilution claim. • The court stated that it could not “assay as a matter of law, on this record, that the survey, expert, and advertising evidence [would] permit only the conclusion that the NISSAN mark was famous as of 1991. ” • However, based upon the evidence provided, the Ninth Circuit did find sufficient genuine issues that existed as to trademark dilution to remand to the trial court for further considerations.

QUESTIONS? Robert H. Thornburg rthornburg@addmg. com 305 -374 -8303