“While the absence of a survey demonstrating market confusion and/or secondary meaning is not necessarily fatal, it presents a significant hurdle to overcome…. When a survey is not used, other evidence must bear more weight to persuade the court.”
On August 3, 2021, the U.S. District Court for the Southern District of Florida ruled against plaintiff Vital Pharmaceuticals, Inc.’s claim of trade dress infringement against defendant Monster Energy Co. due in part to plaintiff’s failure to demonstrate secondary meaning or likelihood of confusion. On June 7, 2021, the U.S. District Court for the Central District of California granted defendant lululemon’s motion for summary judgment regarding allegations of trademark infringement, basing its decision in part on plaintiff’s failure to show likelihood of confusion. Similarly, in May 2021, the U.S. District Court for the Southern District of New York ruled against plaintiff Christophe Roberts’ request for preliminary injunction against defendant Puma’s alleged trademark infringement due in part to his inability to show consumer confusion.
In each of these opinions, the court noted the absence of survey evidence (or, in the Vital Pharmaceuticals case, the inadequacy of an “almost comically flawed” survey). These recent rulings underscore the increasingly important role well-designed surveys play in courts’ consideration of evidence of consumer confusion and/or secondary meaning in trademark and trade dress cases.
This article explores when and why consumer surveys are important in these types of cases and provides examples of the consequences of failing to proffer compelling survey evidence.
When Are Consumer Surveys Most Important?
To win a trademark (or trade dress) case, the plaintiff must prove “(1) that it has a protectible [interest] in [a] mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion, thereby infringing upon the [plaintiff’s] rights to the mark.”
When evaluating the likelihood of consumer confusion, courts often consider what are commonly referred to as the Sleekcraft factors: i) strength of the plaintiff’s mark, ii) proximity of the goods, iii) similarity of the marks, iv) evidence of actual confusion, v) marketing channels used, vi) likely degree of purchaser care, vii) defendant’s intent in selecting the mark and viii) likelihood of expansion of the product line.
Following Sleekcraft, subsequent courts have weighed the relative strengths and weaknesses of evidence supporting each factor, and in some cases have rejected arguments based on inadequate evidence supporting even one or two of the factors.
When assessing the “consumer confusion” factor, courts frequently look for survey evidence as one of the most reliable indicators. As multiple courts have noted, although survey evidence is not strictly required, “the absence of surveys is evidence that actual confusion cannot be shown”—indicating that the non-survey evidence was considered insufficient for demonstrating market confusion by actual consumers.
To win a trade dress case, plaintiffs must show that their trade dress is distinctive, and thus protectible (like a trademark, with the burdens of proof outlined above) under the Lanham Act. Distinctiveness can be inherent or acquired via secondary meaning, the latter of which is a “mental [or learned] association by a substantial segment of consumers and potential consumers between the alleged mark and a single source of the product.”
Courts have also outlined various factors used to determine the existence of secondary meaning in trade dress infringement cases. In Levi Strauss & Co. v. Blue Bell, Inc. (1985), the court outlined four factors relevant to a secondary meaning determination: i) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, ii) the degree and manner of advertising under the claimed trademark, iii) the length and manner of use of the claimed trademark and iv) whether use of the claimed trademark has been exclusive.
Survey evidence, which measures “the minds of the public” and inquires as to consumers’ attitudes about the mark in question, can help assess the extent to which consumers associate the mark or trade dress in question with a specific producer of the product(s) at issue. As one court noted, “survey evidence is the most direct and persuasive way of establishing secondary meaning,” and courts have often penalized litigants for failing to provide survey evidence.
Why Do Courts Consider Surveys So Important?
As the court in Amazing Spaces, Inc. v. Metro Mini Storage (2010) articulated, courts have “consistently expressed a preference for ‘an objective survey of the public’s perception…’” Surveys can provide information on the beliefs, attitudes or behavior of individuals from a relevant population. Because surveys can inquire as to the state of mind of the relevant consumers, they are useful in assisting the trier of fact in determining the “factual issues of customer perception” in trademark and trade dress infringement cases, as stated in McCarthy on Trademarks and Unfair Competition.
Specifically, surveys – when properly designed and analyzed – can show how a trademark or trade dress influences respondents’ perceptions or understanding. Relative to individual testimonies or less structured types of documentation, such as media reports or online reviews, a well-designed and carefully administered survey in the right circumstances is less susceptible to being considered “non-systematic, isolated, and personal.”
Survey evidence provides a systematic method of assessing whether a reasonable consumer would believe two marks are affiliated in some way. Without survey evidence, parties risk presenting evidence that may be “too episodic and limited to carry the day.” Courts that have found the failure to muster survey evidence to be “quite significant” may use that determination as the basis for ruling against a finding of confusion or secondary meaning.
What are the Potential Consequences of not Using a Survey?
While the absence of a survey demonstrating market confusion and/or secondary meaning is not necessarily fatal, it presents a significant hurdle to overcome. It is not difficult to find examples of courts ruling against parties for failing to proffer survey evidence.
- In Easy Spirit, LLC v. Skechers U.S.A., Inc. et al. (2021), Easy Spirit sued Skechers for trademark and trade dress infringement over the design of its “Traveltime” shoes. The court ruled against the plaintiff, Easy Spirit, on the actual confusion factor due to its lack of survey evidence, while the defendant Skechers, in contrast, offered a double-blind survey rebutting the existence of the alleged confusion. The court commented that the “failure to present any evidence of actual confusion,” especially when the opposing party has offered competing survey evidence, “tilts this factor in [the defendant’s] favor.”
- In Focus Products Group International, LLC v. Kartri Sales Company, Inc. (2021), the plaintiff, Focus Products Group (FPG), alleged trade dress and patent infringement over shower curtains sold under defendant Kartri’s Hookless brand. The court ruled against FPG’s motion for summary judgment in part because the company failed to present survey evidence, opining that even though “no one factor is necessary to establish secondary meaning, [survey evidence] is indeed often an important, if not a decisive” factor. The court found FPG’s non-survey evidence inconclusive and “far less reliable and probative than a well-drawn survey.”
- In Disney Enterprises, Inc. et al. v. Avi Lieberman et al. (2018), Disney sued the party services business Characters for Hire (CFH) for copyright and trademark infringement over CFH’s use of costumed characters. The court ruled against Disney’s motion for summary judgment, noting that “the absence of surveys is evidence that actual confusion cannot be shown.”
- In National Products, Inc. v. Arkon Resources, Inc. (2017), National Products filed complaints against Arkon Resources for alleged trademark and trade dress infringement over the hourglass-shaped design of a mounting arm. The court excluded the National Products expert’s report for failing to offer survey evidence regarding secondary meaning, rendering the report unhelpful to the trier of fact and “woefully short of the standards set forth in Rule 702.”
- In Mars, Incorporated et al. v. The J.M. Smucker Company (2017), Mars alleged trademark infringement over the defendants’ dog treats that resembled “pill pouches.” While the plaintiff relied on non-survey evidence of consumer confusion, the defendants provided survey evidence showing a lack of consumer confusion. The court emphasized that the plaintiff’s evidence was insufficient, noting that “Mars’s failure to present any survey to counter Smucker’s survey is itself evidence that there is no likelihood of confusion.” In granting the defendant’s motion for summary judgment, the court noted that “the lack of such a survey can greatly hinder the plaintiff’s case since the plaintiff has the burden of proof.”
Other recent decisions clearly illustrate how the absence of survey evidence puts more pressure and weight on other evidence not specifically designed to elucidate relevant consumer perceptions.
- In Aliign Activation Wear, LLC v. lululemon athletica inc. et al. (2021), Aliign alleged that lululemon infringed its trademark by selling yoga mats and apparel under the “Align” brand. Instead of survey evidence, Aliign offered a single email from a consumer who asked to confirm whether a pair of yoga pants sold on a resale website was made by Aliign. The court described the email as “insufficient” to survive summary judgment since it did not show that “an appreciable number of people will be confused as to the source of the product.”
- In Roberts v. Puma North America, Inc. (2021), plaintiff Christophe Roberts accused Puma of selling apparel that infringed his “Roar Mark” teeth design. In attempts to demonstrate consumer confusion, Roberts submitted evidence that some of his social media followers, certain online media, and two of his customers believed a Puma T-shirt worn by Jay-Z was affiliated with Roberts. The court ruled against Roberts on the consumer confusion factor, finding that confusion among Roberts’ social media followers was irrelevant and that Roberts had failed to show confusion as to the majority of Puma’s teeth designs.
- In Root Causes Medicine, LLC et al. v. Petersen d/b/a Root Cause Medical Clinic and HealthNow Medical Center, Inc. (2021), the defendant relied solely on non-survey evidence such as blog posts, YouTube ads, newsletters and sales data to demonstrate secondary meaning. The court ruled that such evidence reflected only a descriptive use of the term and was insufficient to show secondary meaning, finding that “Defendants’ failure to cite consumer survey evidence weighs heavily in Plaintiffs’ favor,” and explaining that “in a borderline case where it is not at all obvious that [a] designation has been used as a mark, survey evidence may be necessary to prove trademark perception.”
- In Caster Connection, Inc. v. Colson Group Holdings, LLC (2020), despite having years to conduct a survey, the plaintiff relied on declarations from three customers to demonstrate that the at-issue mark had acquired secondary meaning. The court opined that “a lack of a consumer survey is not per se fatal to a request for preliminary injunction, but in its absence, the other factors must strongly support a claim for secondary meaning,” and in this case, the other non-survey evidence plaintiff relied on did not meet that burden.
In Lieu of Strong Surveys, Have Compelling Evidence
In many cases, including recent ones, courts have clearly indicated that they consider well-designed and carefully administered surveys to be among the best evidence of consumer confusion and secondary meaning in trademark and trade dress cases. Parties that fail to offer relevant consumer survey evidence do so at their peril. They are often ruled against, with the court citing their lack of survey evidence as a contributing factor in its decision. When a survey is not used, other evidence must bear more weight to persuade the court.
For these reasons, plaintiffs and defendants alike would do well to consider whether other, non-survey evidence is strong enough for that uphill battle. The recent court record strongly suggests that litigants must provide a compelling reason for failure to employ survey evidence, which is a well-established and convincing methodology.
Analysis Group Managing Principal Rebecca Kirk Fair contributed to this article.
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2 comments so far.
Charles L. Mauro CHFPSeptember 24, 2021 07:49 am
Interesting article. However, you missed a new and very important survey methodology now being utilized in Design Patent litigation known technically as the Empirical Ordinary Observer Test. Our research team developed and validated the EOOT over the past 4 years. The EOOT methodology has recently been accepted by the court in a major design patent case and has passed very aggressive Daubert challenges. The point is simply that surveys are also starting to impact Design Patent cases as well.
Charles L. Mauro CHFP
President / Founder
Mauro Usability Science