Specialization in Likelihood of Confusion, Generic, Descriptive and Dilution Matters

Illuminor provides consulting and expert witness services to law firms and corporations that are involved in infringement matters, especially those that center on claims of likelihood of confusion, descriptiveness, dilution or genericness. Often a key component in such cases is the introduction of third-party use (or lack of use) of the mark or ones similar to it.

Research projects completed by Illuminor generally gather information from two of the main sources the public uses to learn about a product or service: the Internet and magazines, newspapers and other printed sources such as professional journals, directories and trade publications available through the proprietary database system such as NEXIS. One of the key advantages of using online publication databases such as NEXIS (and to a lesser extent the Internet) verses obtaining information from consumer surveys is that database research is highly replicable. In addition, NEXIS and publication-based research, and some Internet-based research, have the added value of being highly verifiable. Consistency, reliability and the ability to replicate are substantial advantages offered by database searching that are not available through traditional mall-intercept, consumer or telephone surveys.

In an ideal scenario, direct evidence of consumer confusion is the best evidence of trademark or service mark infringement. But obtaining evidence of actual consumer confusion is costly and, at times, nearly impossible. The U.S. Patent and Trademark Office (USPTO), the governmental body charged with registering trademarks and service marks, has developed procedures to comply with the Lanham Act's §2(d) provisions regarding likelihood of confusion.

The USPTO receives over 250,000 trademark or service mark applications each year all of which must be evaluated in light of §2(d) as well as other criteria. Because the USPTO is not equipped to annually conduct hundreds of thousands of consumer surveys it, like most courts, relies on a list of criteria to determine if there is a likelihood of confusion. The USPTO relies primarily on the "Du Pont Factors". (If the USPTO were required to complete a consumer survey to determine likelihood of confusion for every mark for which registration was sought the time to obtain a registration would stretch into years and the costs associated with the registration process could balloon into the tens or hundreds of thousands of dollars. Using the Du Pont Factors as a guide allows the USPTO to evaluate the likelihood of confusion issue without placing an undue burden on either the USPTO or the applicant.)

The most widely recognized trademark association in the world is the International Trademark Association (INTA). One of INTA's most prestigious publications is The Trademark Reporter (TMR) which provides scholarly articles related to trademark issues. The November-December, 2009 issue of TMR contained an article that discussed consumer surveys and confusion. In that article it stated:

"Likelihood of confusion is based on a case-by-case assessment and weighing of this non-exclusive list of factors. Plaintiffs are not required to prevail on every factor. As long as the balance of the evidence indicates that confusion is likely, a plaintiff can establish trademark infringement.

Most importantly, the similarity of the parties' trademarks and relatedness of their goods and services is necessary - though not sufficient - for a trademark plaintiff to prevail. In other words, unless judges find the marks to be sufficiently similar or the goods and services sufficiently related, plaintiff cannot win.

The oft-recommended alternative to presenting actual confusion evidence is to introduce a consumer survey, whereby survey professionals conduct consumer studies to measure whether an appreciable number of relevant consumers are likely to be confused by the unauthorized use of an [sic] mark. Like actual confusion evidence, a consumer survey is not necessary to establish a likelihood of confusion. (Emphasis added)

While courts' predilection for survey evidence in this context is well-established, many litigants are reluctant to pursue this approach. The reasons for not presenting a survey typically include time constraints, the cost of a survey, technical difficulties in establishing likelihood of confusion, and other factors. Furthermore, many surveys suffer from multiple methodological problems and are never admitted into evidence.

Thus, many trademark plaintiffs proceed without introducing either incidences of actual confusion or survey evidence."(Empahsis added)(TMR Vol 99, Pages 1418-1421)

Many cases and many USPTO decisions that have addressed issues of genericness and likelihood of confusion have relied on NO consumer surveys. For instance, in Harley Davidson V Grottanelli (164 F.3d 806; 1999 U.S. App. LEXIS 565; 49 U.S.P.Q.2D (BNA) 1458) the court relied on articles from Newsweek, Outlaw Biker, Street Chopper and The Oxford Dictionary of Modern Slang to determine that the word "hog" refers to Harley Davidson motorcycles but decided (without any consumer surveys) that "hog" was a generic term referring to large motorcycles before Harley Davidson ever applied the term to its motorcycles.

In Abercrombie & Fitch Company v. Hunting World (537 F.2d 4; 1976 U.S. App. LEXIS 13312; 189 U.S.P.Q. (BNA) 759; 189 U.S.P.Q. (BNA) 769) the issue was the defendant's use of "safari" on clothing items. District Court Judge Ryan, found that there was frequent use of the word "Safari" in connecting with wearing apparel such a "Safari hat" or a "Safari jacket" or a "Safari suit" and determined that "safari" was generic without any consumer surveys.

On March 17, 2009 the TTAB determined that "X-pipe" is generic for internal combustion exhaust pipes. (Opposition No. 91166939 to Serial No.78-004925). The opposer provided the TTAB with magazine articles, online publications, web site screen shots and catalogs (almost 100 pages of exhibits) to support its contention that the term "X-Pipe" is generic. Without any consumer survey the TTAB concurred and refused to permit the registration to move forward.

Lastly, in a May 10, 2010 TTAB decision regarding a cancellation action against the mark Three-Strand Floss (Registration No. 3245617, Cancellation No. 9204917) the Petitioner relied on dictionary definitions, letters from industry experts and website evidence in arguing that it is "the industry's common practice of stating the number of strands when referencing floss, whether in conjunction with the sale of floss, kits that use floss or needles used with floss." The TTAB agreed with the petitioner and without any consumer surveys cancelled the registration without any evidence being presented from any consumer surveys.

In summary, although evidence of actual confusion or the introduction of well developed and reliable consumer surveys are good elements to present to the court when addressing claims of likelihood of confusion, these are not the only resources that must be provided to prevail. Evidence of third-party use or of generic use as shown through search results obtained from the Interent or proprietary database systems such as Dialog have also been very effective. In fact they are so effective that the USPTO even has guidelines for its examiners to use when they wish to use such information. (See Trademark Manual of Examining Procedure §705.04, §710.01(a) and §710.01(b). http://tess2.uspto.gov/tmdb/tmep/0700.htm#_T70504)