Event recap: Trademark Spotlight “Trademark Surveys & Litigation”

Speakers: Jennifer Lantz (Duane Morris) and Rob Wallace
By Cuitlahuac Medina, Student Reporter

Jennifer Lantz and Rob Wallace discussed how trademark surveys function in litigation, exploring the different types of surveys practitioners use, the standards courts apply when deciding whether to admit them, and the best practices attorneys should follow when designing surveys. Lantz explained how surveys provide empirical evidence to support claims under the Lanham Act, particularly those involving likelihood of confusion and false advertising. Wallace discussed his experience reviewing more than 1,000 surveys across roughly 65 cases to show practitioners what works in real courtroom settings. Lantz and Wallace walked through the most common survey formats attorneys encounter, described how lawyers should work with survey experts from start to finish, and analyzed whether the costs of conducting surveys make strategic sense for protecting trademark rights.

Survey Purpose and Core Claim Areas

Trademark surveys provide empirical, quantitative evidence of consumer perception, often proving more persuasive and admissible than anecdotal confusion evidence, such as stray emails. Surveys address various Lanham Act claims, including trademark and trade dress likelihood of confusion and comparative or false advertising claims involving misrepresentation and materiality to purchase decisions. Likelihood of confusion analysis relies on multiple factors, including mark strength, similarity, incidents of confusion, and overlap in goods or distribution channels.

Types of Trademark Surveys

Likelihood of Confusion Surveys: Lantz discussed how surveys measure two types of consumer confusion, forward and reverse confusion. Forward confusion occurs when consumers believe the junior user’s goods originate from the senior user, illustrated by the Adidas Stan Smith versus Skechers design case. Reverse confusion happens when consumers feel the senior user’s goods come from the junior user, typically a larger or newer entrant, as demonstrated in J.T. Colby’s iBooks case against Apple.

Two primary formats dominate likelihood of confusion testing. The Eveready format shows only one stimulus, usually the junior product, and works best for very strong or famous senior marks with reliable top-of-mind recognition. This format has become less common given crowded modern markets. The Squirt format shows both marks together or in close temporal proximity, replicating side-by-side marketplace conditions such as retail shelves or online search results. This format relies on proximity and overlapping consumer channels and represents the most frequently used methodology today.

Strength, Fame, and Genericness Surveys: Brand strength and fame surveys use specific formats to address multiple trademark concerns. The Thermos format uses open-ended recall questions that ask respondents to name brands in a product category. The Teflon format asks respondents to classify terms as brand names versus common names. These surveys address fame, genericness, or rebut descriptiveness arguments.

Secondary Meaning Surveys: These surveys test whether consumers associate a descriptive term with a single source through recall, recognition, and purchase behavior questions. Practitioners can conduct these surveys pre-litigation as part of a broader brand strategy development.

False Advertising Surveys: These surveys measure whether claims, images, or packaging convey false or misleading messages and whether such messages materially affect purchasing decisions. The materiality component, focused on impact on purchase decisions, receives particular emphasis. False advertising survey designs remain less standardized than likelihood of confusion formats, while maintaining a focus on consumer perception and behavior.

Admissibility and Weight

Courts generally admit surveys unless they contain fatal flaws, with most critiques directed at survey weight rather than admissibility. Daubert standards apply, requiring both reliability and relevance. Exclusions most often result from poor question design creating biased or irrelevant inquiries rather than statistical methodology problems.

Designing Persuasive, Defensible Surveys

Several principles govern survey design. Practitioners must define the proper universe by identifying actual purchasers and decision-makers, including parents when children represent end users. Representative sampling requires statistically sufficient numbers of qualified respondents, though small or niche universes present particular challenges. Question wording must remain unbiased, clear, precise, and neutral, as lawyers tend to write leading questions without expert guidance.

Realistic stimuli replicate marketplace conditions, including retail adjacency and online page layouts. Control groups use alternate stimuli sharing all characteristics except the disputed element, allowing calculation of net confusion by subtracting baseline noise from test results. Data integrity measures screen out speeders and unusually slow respondents, employ open-ended questions to verify understanding, confirm real respondents, and analyze data using accepted methods. Internet surveys have become the standard mode, replacing historically common mall intercepts.

Working with Survey Experts

Survey experts balance advocacy with court compliance, avoiding bias while anticipating rebuttal and Daubert challenges. Best practices include using independent fielding firms and separate respondent panels to create double-blind-like separation minimizing bias. Pilot studies of approximately 50 respondents confirm proper question interpretation before proceeding to full sampling.

Controls and net confusion calculations represent standard practice. Courts typically accept approximately 400 qualified consumers for general products, though much smaller samples prove acceptable for tiny universes, with one example involving only 35 physicians. Marketplace replication requires shelf or online analyses, photographing actual retail shelves without moving items, and gathering online stimuli in incognito mode with cleared cache to avoid algorithmic bias. The Squirt format dominates current practice, with Eveready reserved for truly famous marks.

Costs and Strategic Considerations

Survey costs typically range from $15,000 to $20,000 per survey, sometimes structured as $7,500 for a pilot study plus $7,500 for completion. Specialist audiences such as physicians command higher costs. Practitioners sometimes combine objectives within single surveys, covering secondary meaning and likelihood of confusion with randomized question order to mitigate priming bias, though this approach involves acknowledged tradeoffs.

Early planning and budgeting, even before filing suit, is essential. Surveys provide critical value for preliminary injunctions and help avoid adverse outcomes. Practitioners should assess materiality before pursuing surveys, ensuring real marketplace impact exists. Surveys represent an investment in brand protection rather than pure litigation expense.

Conclusion

Surveys often prove essential, particularly where actual evidence of confusion remains scarce. Practitioners should think early about survey design, budgeting, and preliminary relief strategy. Most survey defects affect weight rather than admissibility, but poor design can prove fatal. Using experienced experts, proper controls, and real-world stimuli maximizes persuasive power and increases the likelihood of successful outcomes in trademark disputes.