Posts Tagged: "trademark surveys"

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.

Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms. While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.

A few years ago, internet surveys in intellectual property (IP) litigation were novelties—but not anymore. In fact, the internet survey has more than come of age, it has become the preferred methodology for many types of IP litigation-related surveys—especially trademark-related matters. The biggest reason for the rise of the internet survey is the demise of the other more established conventional methodologies. At the same time, the internet continues to add new technological features that enhance its ability to reach populations and probe relevant target markets.

Surveys to prove or disprove trademark infringement or likelihood of confusion have been used by attorneys for many years. Unfortunately, many attorneys using surveys can weaken a survey’s impact by failing to avoid some crucial pitfalls. Here are 10 important things to avoid and correct when developing surveys for litigation purposes.