Robert Sacoff of Pattishall McAuliffe in Chicago started off by underlining his view that surveys absolutely should be allowed. “Canada is one of the countries that doesn’t seem to like trade mark surveys very much, perhaps following the lead of the UK,” he noted. He said Canadian and UK thinking is that judges should use their own common sense, excluding influences of their “own idiosyncratic knowledge or temperament” to determine whether the casual consumer would be likely to be confused.
“Well, I don’t know how you do that,” said Sacoff, “to speak for a whole group of potential people”.
The most common form of survey in the US is a mall intercept, with phone and internet surveys becoming more common. However, they don’t come cheap. “You probably can’t get any kind of survey for less than $25,000-$30,000,” said Sacoff. “And you could very easily be talking about six figures.” He added you are not obliged to disclose the survey results if they are unfavourable.
Great care must be taken when doing surveys. He pointed to the recent Charbucks case as an example of potential pitfalls to avoid. “Pretty much everyone in the trade mark community thought Starbucks should have won this case,” said Sacoff. A centerpiece of the case was a phone survey asking 600 people what they associate the name Charbucks with (Starbucks was the top association). “They didn’t do very well out of that,” said Sacoff. The Second Circuit said the survey was ‘”fundamentally flawed” because its conclusions were drawn from how consumers thought of the term in isolation and not in a real-world context.
Judge Vanessa Gilmore of the Southern District of Texas agreed that a judge is unlikely to represent the group in question and therefore there is a strong need for survey evidence. “I think survey evidence should be given high value and high priority, even more than experts. Anyone can hire an expert to say anything,” she said.
However, Judge Gilmore pointed to a report by the University of Pennsylvania on the role of surveys in trade mark litigation in the US that cited 16.6% of district court cases mentioning surveys as being relied on when determining the case. “It found surveys are not used as much as you think, or hope,” said Judge Gilmore.
She revealed her own research had indicated that confusion rates of 7% to 21% in consumer surveys have been found sufficient to support a conclusion of actual confusion among any real consumer.
Judge Gilmore said she is not strongly influenced if a survey is not done, but revealed she was reversed by an appeals court once because the lack of a survey was seen as negative. “A negative inference was drawn by a failure to do a survey by a defendant.”
Anne Niedermann of the Institut für Demoskopie Allenbach in Germany said the process disadvantages small to medium companies who cannot afford to do a survey. She proposed a solution of surveys being commissioned not by the parties but by the court. Judge Gilmore responded that she couldn’t imagine that being well received in US by lawyers. “They would ask me to butt out of their business,” she said. Sacoff added: “I would run to another court!”
Read an interview with Judge Gilmore here
