September–October, 2014 Vol. 104 No. 5

Allegations of Fraudulent Procurement and Maintenance of Federal Registrations Since In re Bose Corp.Theodore H. Davis Jr. and Lauren Brenner

Trademark Licensing in Canada: The Control Regime Turns 21Sheldon Burshtein

Canada’s Ill-Conceived New “Trademark” Law: A Venture into Constitutional QuicksandDaniel R. Bereskin, Q.C.

The Evolution of Trademark Economics—From the Harvard School to the Chicago School to WIPO 2013—As Sheparded by INTA and The Trademark ReporterJerre B. Swann

He Who Steals My Good Name: Likelihood-of-Confusion Surveys in TTAB ProceedingsE. Deborah Jay

Vol. 104 TMR 1141

HE WHO STEALS MY GOOD NAME: LIKELIHOOD-OF-CONFUSION SURVEYS IN

TTAB PROCEEDINGS∗

By E. Deborah Jay∗∗

I. INTRODUCTION Iago opined in Shakespeare’s Othello that “Good name in man

and woman, dear my lord, is the immediate jewel of their souls. Who steals my purse steals trash. ’Tis something, nothing. ’Twas mine, ’tis his, and has been slave to thousands. But he that filches from me my good name . . . makes me poor indeed.”1 Despite Iago’s villainy, one ought to heed his sage advice concerning the necessity of safeguarding one’s good name, or in commerce, one’s mark.

Safeguarding one’s mark may require opposing registration of another mark upon the principal register in the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (the “Board”) or petitioning the Board to cancel a principal or supplemental registration.2 The most frequent basis for opposing or cancelling registration of a mark is the contention that an applicant’s or registrant’s mark is confusingly similar to one’s prior registered or common-law mark.3 When there is a dispute

∗ Copyright © 2014, E. Deborah Jay, Ph.D. All rights reserved. ∗∗ President/CEO, Field Research Corp., San Francisco, member, International Trademark Association. Dr. Jay has conducted surveys on behalf of plaintiffs and defendants in numerous trademark and advertising disputes, testified in federal courts in intellectual property cases, and been qualified by many state and federal courts as an expert in survey methods. Dr. Jay would like to thank Hugh Anthony Levine, Esq. for his assistance and invaluable contribution to this article. 1. William Shakespeare, Othello, Act 3, Scene 3 (as quoted in The Complete Works of William Shakespeare 900, 915 (John Dover Wilson: Cambridge University Press 1984)). 2. See Lanham Act §§ 13-14 (15 U.S.C.A. §§ 1063-1064). 3. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 20:14 and § 20:53 (4th ed. 2014) (“By far the most common ground upon which oppositions are brought is that of Lanham Act § 2(d), 15 U.S.C.A. § 1052(d). That is, the opposer contends that applicant’s mark so resembles either: (1) opposer’s registered mark; or (2) opposer’s prior common-law mark or trade name, as to be likely to cause confusion when used on related goods or services. . . . As in oppositions, the most common ground of cancellation is Lanham Act § 2(d). (footnote omitted) This is the claim that petitioner owns a prior registered mark or that petitioner has prior use of a mark or trade name that is confusingly similar to registrant’s mark.”).

See also Joseph R. Dreitler and Mary R. True, Pleadings and Commencement of Proceedings in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, 31, 35 (Jonathan Hudis, ed. 2d. ed., 2012) [hereinafter Hudis] (“The most common grounds for an opposition or cancellation is Trademark Act Section 2(d), 15 U.S.C. § 1052(d): The defendant’s mark, as applied to its goods and services, is likely to cause confusion with

1142 Vol. 104 TMR concerning likelihood of confusion, the Board examines the facts in relation to the thirteen factors delineated in E.I. du Pont de Nemours & Co. (“the DuPont factors”), such as: the closeness of the parties’ marks in terms of appearance, sound, connotation, and commercial impression; the extent to which the parties’ goods or services and channels of trade are alike; and the fame of the prior mark.4 Another DuPont factor that the Board must evaluate is the nature and extent of actual confusion between the plaintiff’s (senior user’s) and defendant’s (junior user’s) marks. Evidence of the presence or absence of consumer confusion may be provided directly in the form of testimony from a witness with knowledge of actual marketplace confusion or circumstantially in the form of a consumer survey.

This article spotlights the Board’s assessment of consumer surveys proffered to prove that the potential for forward-confusion is substantial or, in the alternative, de minimis.5 Forward- either the plaintiff’s prior registered mark(s) or with the plaintiff’s prior common law mark(s).”). 4. 476 F. 2d 1357, 1361 (C.C.P.A. 1973). The DuPont factors include the following:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made (i.e., “impulse” vs. careful, sophisticated purchasing). (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark);

(10) The market interface between applicant and the owner of the prior mark: (a) a mere “consent” to register or use. (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.

5. In an opposition or cancellation proceeding, judging from my review of cases for this article, plaintiffs tender forward-confusion surveys more often than reverse- or post-sale confusion surveys.

Vol. 104 TMR 1143 confusion occurs when relevant consumers are likely to mistakenly believe that the plaintiff is the source or sponsor of the defendant’s products and/or the plaintiff is affiliated with the defendant because the defendant’s mark resembles the plaintiff’s mark. Unlike some federal courts in trademark infringement actions, the Board does not draw an adverse inference from the failure of a plaintiff to conduct a likelihood-of-confusion survey in an opposition or cancellation proceeding.6 Although the Board has indicated that it is receptive to surveys, the Board does not require survey evidence, recognizing the expense of a survey and the limited jurisdictional nature of its proceedings.7

Nonetheless, consumer surveys now comprise the most prevalent type of expert evidence in Board proceedings.8 Indeed, the Board may not accord any weight to an expert’s testimony regarding likelihood of confusion without a survey.9 Additionally, the Board may disregard an expert’s criticisms regarding an opposing party’s likelihood-of-confusion survey if the expert has not conducted a survey.10

The Board assesses consumer survey evidence in light of other evidence and its findings regarding each relevant DuPont factor. A plaintiff may put forth a survey to corroborate other evidence

6. Jeffrey A. Handelman, Guide to TTAB Practice, § 18.03[B] (2014) (“It should be noted, however, that survey evidence on the issue of confusion generally is not required in Board proceedings.”); Joseph N. Welch II, Use of Experts in Hudis, supra note 3, at 257, 261 (“Occasionally, a federal court judge will indicate that a financially well-off party’s failure to submit a survey may weigh against it. . . . The TTAB, however, has emphasized the contrary, that is, that survey evidence is not required, and that no negative inferences will be drawn.”); Sandra Edelman, Failure to Conduct a Survey in Trademark Infringement Cases: A Critique of the Adverse Inference, 90 TMR 746, 753 (2000) (“The Trademark Trial and Appeal Board (‘TTAB’ or ‘Board’) has treated the absence of survey evidence as a neutral factor.”). 7. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1435-36 (T.T.A.B. 1993) (“The Board, although receptive to surveys, does not require them in Board proceedings. . . . We appreciate the significant financial cost of surveys. Moreover, we obviously recognize the limited jurisdictional nature of Board proceedings, wherein only rights to federal registrability, not use, are determined.).” 8. Joseph N. Welch II, Use of Experts in Hudis, supra note 3, at 257 (“[C]onsumer surveys are the most common form of expert evidence in TTAB proceedings . . .”); Handelman, supra note 6, § 18.23[A] (“Expert testimony in a Board case usually pertains to a consumer survey.”). Note, this includes other types of consumer surveys in addition to likelihood-of-confusion surveys, such as genericness, secondary meaning, and fame surveys. 9. See Experient, LLC v. Experient, Inc., 2014 WL 1649326, at *12 (T.T.A.B. Mar. 31, 2014) (“[N]or do we give much weight to either expert’s conclusions, including because neither expert conducted a survey or otherwise provided expert evidence of the type relevant to likelihood of confusion determinations.”). 10. See Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1456 n.33 (T.T.A.B. 1986) (“[I]f applicant believed the Lavidge survey site selection was materially defective it could have commissioned its own survey during its testimony period at sites it believed more appropriate.”).

1144 Vol. 104 TMR indicating confusion is likely.11 A plaintiff also may offer a survey to rebut the inference that confusion is unlikely due to widespread third-party use of similar marks (one DuPont factor)12 or due to the absence of direct evidence of actual confusion (another DuPont factor).13 More plaintiffs than defendants tender surveys in Board proceedings since they bear the burden to prove confusion is likely.14 Nonetheless, defendants have submitted surveys showing no confusion that have bolstered the Board’s belief that confusion is unlikely.15

The Board will be more apt to credit a likelihood-of-confusion survey if it employs a standard or previously accepted method for assessing the potential for confusion between two parties’ marks. Many likelihood-of-confusion surveys in Board proceedings are based on (or at least inspired by) the surveys credited over thirty years ago in two trademark infringement actions. One survey format (the “Eveready” format) originated from a dispute over the potential for confusion between EVEREADY batteries and flashlights and EVER-READY lamps and light bulbs (Union Carbide);16 the other survey format (the “Squirt” format) emerged from a trademark infringement action between the makers of SQUIRT, a carbonated grapefruit-flavored beverage, and the makers of QUIRST, a noncarbonated lemonade-flavored drink (SquirtCo).17

An Eveready survey presents respondents with the contested mark, and then poses open-ended questions (questions that require

11. Id. at 1465 (“[I]n the case before us, while the third party use evidence favors applicant, the overall similarity of the marks’ commercial impressions, the legal identity of the goods, the unquestioned fame of opposer’s mark, (footnote omitted) and our doubt about applicant’s intent, persuade us that confusion is likely and that applicant’s marks must be refused registration. The result of the surveys corroborate that conclusion.”). 12. Id. at 1465 at n.54 (“[I]t is also apparent that the results rebut to some extent the inference we usually draw from widespread third-party use. . . [T]he fact that so many respondents did associate VIT-A-DAY with ONE A DAY demonstrates to us that the third-party uses have not yet had very much debilitating effect on the source-indicating power of the ‘A DAY’ portion.”). 13. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *10 (T.T.A.B. Sept. 22, 2008) (“Although we have considered the lack of actual confusion, we greatly discount it due to the fairly limited exposure of applicant’s product. We find the survey to be more probative, and the survey certainly weighs in opposer’s favor.”). 14. Handelman, supra note 6, § 18.03 [B] (“In a likelihood of confusion case, because the plaintiff has the burden to prove that confusion is likely, it is more common for a plaintiff to do a confusion survey than it is for a defendant to do a survey showing no confusion.”). 15. Touch Tel Corp. v. AirTouch Commc’ns, 1999 WL 495944, at *10 (T.T.A.B. July 9, 1998) (“Finally, the survey, while not an ideal one as it relates to issues peculiar to the Board (footnote omitted), reinforces our belief that confusion is, in fact, not likely.”). 16. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 385-88 (7th Cir. 1976). 17. SquirtCo v. Seven-Up Co., 1979 WL 25027, at *9-*10 and *18-*22 (E.D. Mo. 1979), aff’d in part and vacated in part, 628 F.2d 1086 (8th Cir. 1980).

Vol. 104 TMR 1145 respondents to answer in their own words) to measure the potential for confusion. A Squirt survey exposes respondents to both parties’ marks (rather than just the contested mark), and then asks closed-ended questions (questions that offer respondents a list of answer choices) to assess likelihood of confusion. Survey experts may consistently employ either the Eveready or the Squirt format, or they may use more than one likelihood-of-confusion survey format depending on their views regarding the reliability and validity of each format and the appropriateness of the format based on the specific facts of the case. The manner in which the Eveready and Squirt formats are implemented may also vary depending on the marks at issue and the type of confusion alleged.

Board proceedings differ from federal court litigation in significant ways, including in the treatment of surveys. While there are many similarities in terms of issues to consider in assessing the evidentiary merits of a survey, there are also key differences. What follows is a discussion of the survey formats endorsed in Union Carbide (the Eveready survey format) and SquirtCo (the Squirt survey format), and then the use and acceptance of each of these survey formats (as well as other survey formats) in Board proceedings. This article also compares the design and execution of likelihood-of-confusion surveys in Board proceedings and trademark infringement actions.

II. THE TWO ESTABLISHED SURVEY FORMATS A. The Union Carbide Eveready Survey Format

In the seminal case Union Carbide v. Ever-Ready, Union Carbide, the holder of the registered trademark EVEREADY for use in connection with batteries and flashlights, brought an infringement action in the Northern District of Illinois against a company using the mark EVER-READY on certain types of lamps and light bulbs.18 To support its contention that defendant’s mark was confusingly similar to its mark, Union Carbide submitted two surveys (a lamp survey and bulb survey).19 The Union Carbide lamp survey showed a picture of defendant’s EVER-READY lamp to each person being interviewed, and then asked the following three questions: “Who do you think puts out the lamp shown here?”, “What makes you think so?”, and “Please name any other products put out by the same concern which puts out the lamp shown here.” In response to the first question, a negligible percentage of survey respondents (less than 1%) indicated that “Carbide” put out the EVER-READY lamp. However, in response 18. Union Carbide Corp. v. Ever-Ready, Inc., 392 F. Supp. 280 (N.D. Ill. 1975), rev’d, 531 F.2d 366 (7th Cir. 1976). 19. Id. at 292-94, rev’d, 531 F.2d 366 (7th Cir. 1976).

1146 Vol. 104 TMR to the latter question, over half (54.6%) of the survey respondents said the same concern that put out the lamp also made Carbide products (such as, batteries). The bulb survey showed respondents a blister pack of defendant’s EVER-READY bulbs and posed the same questions as the lamp survey, among others. The results for the bulb survey were virtually identical to those for the lamp survey.

The U.S. District Court concluded that the Union Carbide surveys were “entitled to little, if any, weight” and they did not establish “the requisite likelihood of confusion between the term ‘Ever-Ready’ and the mark EVEREADY.”20 However, the U.S. Court of Appeals for the Seventh Circuit held that the trial court’s ruling was clearly erroneous in not crediting the Union Carbide surveys and found that Union Carbide’s lamp survey, in particular, demonstrated “substantial likelihood of confusion.”21

Since Union Carbide, forward-confusion surveys in a trademark infringement action that present respondents with the defendant’s (junior user’s) product, and then ask open-ended questions to see whether respondents identify the plaintiff (senior user) in connection with the defendant’s product have been dubbed Eveready surveys.

As discussed post, except for the survey stimulus, Eveready surveys in Board proceedings are implemented in the same manner and ask the same types of open-ended questions as Eveready surveys offered in trademark infringement actions to support or refute the contention that confusion is likely due to the similarity of the defendant’s (junior user’s) mark to the plaintiff’s (senior user’s) mark.

B. The Squirt Survey Format Three years after the U.S. Court of Appeals for the Seventh

Circuit endorsed the Eveready format in Union Carbide, a manifestly different survey format supported the conclusion that confusion was likely in SquirtCo v. Seven-Up.22 In SquirtCo plaintiff contended that the defendant’s use of QUIRST (for a

20. Id. at 292 and 294 (“[I] conclude that the surveys are entitled to little, if any, weight. . . . Succinctly, the bulb and lamp surveys do not establish the requisite likelihood of confusion between the term ‘Ever-Ready’ and the mark EVEREADY.”), rev’d, 531 F.2d 366 (7th Cir. 1976). 21. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 388 (7th Cir. 1976) (“[W]e hold the district court clearly erroneous in finding no likelihood of confusion. . . . The lamp survey showed substantial likelihood of confusion.”). Because the bulb survey included additional questions which may have introduced some bias, the U.S. Court of Appeals for the Seventh Circuit found that the bulb survey, although probative of confusion, could not be credited to the extent of the lamp survey. 22. SquirtCo v. Seven-Up Co., 1979 WL 25027, at *9-*10 and *18-*22 (E.D. Mo. 1979), aff’d in part and vacated in part, 628 F.2d 1086 (8th Cir. 1980).

Vol. 104 TMR 1147 noncarbonated Vitamin C–enriched lemonade-flavored soft drink) so resembled its registered SQUIRT mark (for a carbonated grapefruit-flavored soft drink) that it was likely to cause confusion. To support its contention, plaintiff set forth several surveys, including opinion surveys conducted in Chicago and Phoenix.

Plaintiff’s Chicago and Phoenix opinion surveys sought to measure likelihood of confusion based on sound alone. Although SQUIRT was available for sale in Chicago, there had been little advertising promoting the product, and QUIRST was neither sold nor advertised in Chicago. For these reasons, at the beginning of the Chicago interviews, radio commercials for SQUIRT and QUIRST (as well as for two other products) were played on a cassette recorder for survey respondents. After Chicago survey respondents heard the commercials, they were asked to identify the advertised products. Then they were asked the following question: “Among the soft drinks on the market is a non-carbonated lemonade flavored soft drink called QUIRST. Another soft drink on the market is a carbonated grapefruit flavored soft drink called SQUIRT. Do you think SQUIRT and QUIRST are put out by the same company or by different companies?” Phoenix survey respondents were asked the same question. However, because both SQUIRT and QUIRST were available for sale in Phoenix, they were not asked to listen to any radio commercials before this question was posed.

In all, 34% of Chicago survey respondents and 23% of Phoenix survey respondents indicated that SQUIRT and QUIRST soft drinks were put out by the same company. The U.S. District Court concluded that the Chicago and Phoenix surveys provided “some evidence” of a likelihood of confusion. 23 The U.S. Court of Appeals for the Eighth Circuit upheld the trial court’s finding of likelihood of confusion, and credited plaintiff’s opinion surveys with demonstrating “the possibility of confusion” between the SQUIRT and QUIRST marks.24

Since SquirtCo, forward-confusion surveys in trademark infringement actions that expose respondents to both a plaintiff’s and a defendant’s products and then inquire whether the products come from the same or a different source have been labeled Squirt surveys. Contemporary Squirt surveys often expose a respondent to the plaintiff’s product in one room and then to an array or display of competitive products (including the defendant’s product) 23. Id. at *21 (“In this court’s view, the not insubstantial percentages of respondents who mistakenly connected the soft drinks SQUIRT and QUIRST as being ‘put out by the same company’ is some evidence of a likelihood of confusion, deception, or mistake regarding the source or origin of the soft drink QUIRST.”), aff’d in part and vacated in part, 628 F.2d 1086 (8th Cir. 1980). 24. SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1089 (8th Cir. 1980) (“Opinion surveys do demonstrate the possibility of confusion between the SQUIRT and QUIRST marks”).

1148 Vol. 104 TMR in another room. The survey then asks the respondent whether any of the products in the display come from the same source as the first product the respondent was shown. A Squirt survey may also enquire whether any of the products in the display are sponsored by or affiliated with the first product they were shown. According to Professor J. Thomas McCarthy, surveys implemented in this manner (sometimes referred to as a sequential array, product lineup, or two-room survey) are a “more subtle form of Squirt survey.” 25

As explained in the discussion that follows, except for the survey stimuli, Squirt surveys in Board proceedings are conducted in the same way and pose the same types of closed-ended questions as Squirt surveys proffered in trademark infringement actions to prove or disprove the claim that confusion is likely because the defendant’s (junior user’s) mark resembles the plaintiff’s (senior user’s) mark.

III. SURVEY FORMATS IN BOARD PROCEEDINGS A. Eveready Survey Formats

1. The Prototype for Eveready Surveys in Board Proceedings: Miles Laboratories

A decade after Union Carbide, the Board credited an Eveready survey in Miles Laboratories v. Naturally Vitamin Supplements.26 Miles Laboratories, the owner of the registered mark ONE A DAY for vitamins opposed registration of VIT-A-DAY and SUPER VIT-A-DAY for commercially identical goods. The Miles Laboratories’ surveys posed the same basic questions as the Union Carbide surveys (“Who do you think puts out this product?” and “What other products, or brands, if any, do you think are put out by the company that puts out this product?”). However, unlike the surveys in Union Carbide, the stimulus for the Miles Laboratories’ surveys was not one of the defendant’s products (or a picture of one of defendant’s products) with the contested mark. Instead, the stimulus was a card with one of the disputed marks (VIT-A-DAY) in block letters and the words “multiple vitamins” in smaller block letters underneath.

VIT-A-DAY MULTIPLE VITAMINS

25. McCarthy, supra note 3, § 32:173.50 (“A more subtle form of ‘Squirt’ survey is a product lineup survey in which the respondent is shown an array of branded products, including the contesting brands, and is asked questions about the relation between the companies that sell the products with the contesting marks). 26. Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1455-62 (T.T.A.B. 1986).

Vol. 104 TMR 1149

Plaintiff claimed that 28.9% of survey respondents mistakenly believed that Miles Laboratories put out VIT-A-DAY multiple vitamins or that the same concern that put out VIT-A-DAY multiple vitamins also made other Miles Laboratories’ branded products (such as ONE A DAY multiple vitamins). The Board reanalyzed the survey data and, after eliminating ambiguous answers, concluded that 18.1% of the survey respondents “clearly and unequivocally responded to the survey in ways indicative of likely confusion between VIT-A-DAY and ONE A DAY, used on multiple vitamins.”27

The Board reasoned that the Miles Laboratories’ surveys only corroborated the opposer’s other evidence of likelihood of confusion because the surveys used a stimulus card that lacked “marketplace reality.”28 Nonetheless, because the applicant sought registration of a word mark, the Board opined that if the Miles Laboratories’ surveys had used a labeled VIT-A-DAY multivitamin jar as a stimulus, the stimulus would have included elements not part of the matter to be registered, destroying any probative value of the surveys. 29

2. Eveready Surveys Credited In Board Proceedings Since Miles Laboratories

Since Miles Laboratories, the Eveready format has become the most utilized survey format for assessing likelihood of confusion in Board proceedings. 30 The Board has opined that the Eveready survey format is “fairly standard,”31 “in keeping with fairly

27. Id. at 1462. 28. Id. at 1462 (“Our only precaution concerning these results, as indicated above, is that, since the stimulus card used lacks marketplace reality, we can give the results effect only to the extent that [they] may corroborate conclusions based on other facts.”). 29. Id. at 1459-60 (“[I]n the instant case, to have used, for example, a labeled VIT-A-DAY multivitamin tablets jar would have introduced irrelevant matter, thereby destroying any probative value of the survey for our purposes. . .[W]e have already held that the issue we have to decide concerns only the likelihood of confusion of the terms VIT-A-DAY and SUPER VIT-A-DAY with ONE A DAY, without regard to any special form of lettering or design features which may, in fact, be currently associated with either of those word marks in the marketplace. Accordingly, using the card on which the mark is displayed in block letters was the only appropriate stimulus available to the survey designer. . . . Indeed, decisions of this Board, in contradistinction to those of courts in infringement actions, have held that the association of other features, not part of the matter sought to be registered, reduces the survey’s probative value in proceedings concerning registrability.”). 30. Joseph N. Welch II, Use of Experts in Hudis, supra note 3, at 257, 267 (“The Ever-Ready survey format is the one used most in TTAB proceedings for assessing likelihood of confusion.”). 31. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *10 (T.T.A.B. Feb. 22, 2001) (“Petitioner’s surveys employ a fairly standard format used in likelihood of confusion cases, the so-called Ever-[R]eady format . . .”).

1150 Vol. 104 TMR standard survey formats,” 32 “in keeping with standard survey formats,”33 “consistent with those accepted by the Board in other cases,”34 “well within the parameters of likelihood-of-confusion survey formats accepted by the Board,”35 “reliable and therefore of probative value on the issue of likelihood of confusion,”36 “persuasive,”37 and “often approved.”38 For example, Eveready surveys supported or corroborated the Board’s determination that the following word or design marks were confusingly similar:

• BUDWEISER, BUD, and THIS BUD’S FOR YOU (for beer and malt liquor) and THIS BUD’S FOR YOU (for fresh-cut flowers and non-blooming live plants),39

• Carl’s Jr.’s star designs (for restaurant services and for preparing and serving hamburgers) and another star design with and without the word STARS (for restaurant services), 40

• L’EGGS and the L’EGGS family of marks (for hosiery) and GOLDEN LEGS (for commercially identical goods),41

32. Carl Karcher Enters., Inc. v. Stars Rests. Corp., 35 U.S.P.Q.2d 1125, 1132 (T.T.A.B. 1995) (“We do not find the survey questions to be biased but, rather, to be in keeping with fairly standard survey formats . . .”). 33. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *15 (T.T.A.B. July 23, 2013) (“The manner in which the survey was conducted was in keeping with standard survey formats.”). 34. Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (“[T]he construction and methodology of the survey are consistent with those accepted by the Board in other cases.”). 35. Chanel Inc. v. Mauriello, 2010 WL 3873650, at *12 (T.T.A.B. Sept. 20, 2010) (“The survey was conducted well within the parameters of the likelihood of confusion survey formats accepted by the Board . . .”). 36. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *12 (T.T.A.B. Apr. 28, 2011) (“[G]iven the way in which this survey format carefully follows the Ever-Ready survey format, we find that it is reliable and therefore of probative value on the issue of likelihood of confusion herein.”). 37. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012) (“[T]he survey is quite similar in design and execution to surveys we and federal courts have previously held to be persuasive.”). 38. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *9 (T.T.A.B. Sept. 22, 2008) (“[O]pposer’s survey follows the often approved Ever-Ready format . . .”). 39. Anheuser-Busch, Inc. v. The Florists Assoc. of Greater Cleveland, Inc., 29 U.S.P.Q.2d 1146, 1151 (T.T.A.B. 1993) (“We believe . . . that the survey evidence as well as opposer’s licensing activities under this mark show that . . . purchasers seeing applicant’s flowers offered for sale under this slogan are likely to believe that the flowers are being offered under the sponsorship of opposer.”) 40. Carl Karcher Enters., Inc. v. Stars Restaurants Corp., 35 U.S.P.Q.2d 1125, 1132 (T.T.A.B. 1995) (“[T]he survey results support opposer’s position on the issue of likelihood of confusion.”). 41. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *10 (T.T.A.B. Feb. 22, 2001) (“[T]he surveys’ results buttress our finding of likelihood of confusion.”).

Vol. 104 TMR 1151

• STARBUCKS and STARBUCKS COFFEE (for coffee and tea beverages and retail stores featuring such beverages) and LESSBUCKS COFFEE (for substantially identical goods and services),42

• L’EGGS and the L’EGGS family of marks (for hosiery and pantyhose) and LEGSTICK (for commercially identical goods),43

• Various SLURP and SLURPEE marks (for fruit-flavored, semi-frozen soft drinks, T-shirts and plastic beverage containers) and SLURP-EZE (for dog, cat, and ferret bowls),44

• MICHELOB (for beer) and MAMBO MICHELADA (for commercially identical goods),45

• CLINIQUE and various CLINIQUE word and design marks (for cosmetics, lotions, soaps and consultation services concerning beauty treatments) and CLINIQUE DENTIQUE (for restorative, cosmetic and family dentistry services),46

• CHANEL and various “CC” logo marks (for women’s handbags, clothing, jewelry, and sunglasses, among other items) and ENELLE and various “EE” logo marks (for commercially identical or closely related goods), 47

• MOUNTAIN DEW and DEW formative marks (for citrus- and orange-flavored soda and ancillary products and services) and CAN DEW (for canned or bottled fruit drinks, fruit-flavored carbonated beverages, energy drinks, and

42. Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 (T.T.A.B. 2006) (“[G]iven the way in which this survey format carefully follows the Ever-Ready likelihood of confusion survey format, we find that it is reliable and therefore of probative value on the issue of likelihood of confusion herein.”). 43. Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (“We agree . . . that these survey results . . . constitute probative evidence which supports a finding of likelihood of confusion.”). 44. 7-Eleven, Inc. v. Morrison, 2008 WL 2385970, at *13 (T.T.A.B. June 2, 2008) (“While the survey sample was small . . . it is still entitled to some weight.”). 45. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *9 (T.T.A.B. Sept. 22, 2008) (“Inasmuch as the survey follows the format of the Ever-Ready likelihood of confusion survey, we find it reliable and, thus, probative on the issue of likelihood of confusion between the parties’ marks.”). 46. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *12 (T.T.A.B. Apr. 28, 2011) (“We note, in conclusion, that the survey serves to corroborate what the other evidence of record demonstrates . . . [W]e find the survey proper, probative, and even compelling . . .”). 47. Chanel Inc. v. Mauriello, 2010 WL 3873650, at *13 (T.T.A.B. Sept. 20, 2010) (“[W]e find the survey proper and probative . . .”).

1152 Vol. 104 TMR

malt beverages and for meal replacement nutritional drink mixes),48 and

• FACEBOOK and design (for electronic transmission of instant messages and data, among other things) and FACEMAIL (for e-mail and instant messaging services).49

3. Test and Control Stimuli in Credited Eveready Surveys

The Eveready surveys credited in Miles Laboratories (and other Board proceedings such as Carl Karcher and Starbucks) interviewed only one group of respondents, who were shown the defendant’s mark and then asked a series of questions about the mark.50 However, modern Eveready surveys often include two groups of respondents, a “test” group and a “control” group. As in Miles Laboratories, the “test” stimulus for an Eveready survey in a Board proceeding usually consists of the defendant’s word mark (in standard character form) or design mark along with a description of the defendant’s goods or services on a card or a computer screen. Control group respondents view a different mark than the mark the test group views—a mark that does not share the allegedly infringing qualities of the defendant’s mark. The purpose of the control group is to determine whether confusion in the test group, if any, is due to legally relevant or trademark-relevant reasons (that is, the similarity between the plaintiff’s and the defendant’s marks).51

The control stimulus for an Eveready survey includes the same description of goods as the test stimulus; however, the mark on the control stimulus is not the defendant’s mark and does not 48. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012) (“[W]e find that the survey weighs in favor of a finding of likelihood of confusion.”). 49. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *15 (T.T.A.B. July 23, 2013) (“[W]e find that opposer’s survey results support a finding that there will be a likelihood of confusion.”). 50. At the very least, there is no mention of a control group in the following opinions: Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1455-62 (T.T.A.B. 1986); Carl Karcher Enterprises, Inc. v. Stars Rests Corp., 35 U.S.P.Q.2d 1125, 1131-33 (T.T.A.B. 1995); Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 (T.T.A.B. 2006). 51. Handelman, supra note 6, § 18.12 (“An important consideration is that the survey should seek to determine whether confusion, if any, is caused by the mark or design feature alleged to be confusing. That is, the survey should be designed to measure whether the respondents were confused for ‘trademark-relevant’ reasons. Confusion is ‘trademark-relevant’ if it is caused by the trademarks at issue in the case, rather than by factors unrelated to the trademarks.’”). See also Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *13 (T.T.A.B. July 23, 2013) (“The survey consisted of two cells: (1) a test cell designed ‘to measure likelihood of confusion, if any, with respect to the source, authorization/approval of, or business affiliation/connection of Applicant’s business provided under the proposed FACEMAIL mark’ and (2) a control cell [using THINKMAIL] to measure the extent of mismeasurement in the test cell.”).

Vol. 104 TMR 1153 share the challenged elements of the defendant’s mark. Because control group respondents are not exposed to the defendant’s mark, confusion in the control group cannot be attributed to the similarity between the plaintiff’s and the defendant’s marks. Rather it likely is due to plaintiff’s market share, guessing, or other sources of “noise.” For this reason, the level of confusion based on the resemblance of the parties’ marks is computed by subtracting the percentage of respondents in the control group who identify the plaintiff (or the plaintiff’s goods) from the comparable percentage for the test group (referred to as “net confusion”).52

A control mark may be fictitious or it may be another mark, provided the mark is not well-known and is dissimilar to the plaintiff’s mark. The plaintiff’s contention that the defendant’s mark is confusingly similar for trademark-relevant reasons will be buttressed if the control mark makes clear that the use of a dissimilar mark in connection with the defendant’s goods is not likely to cause appreciable confusion.53 Following are examples of contested marks along with the control marks used as stimuli in Eveready surveys that were credited in Board proceedings:

• GOLDEN LEGS (contested by the makers of L’EGGS) and GOLDEN STEP (the control mark) for hosiery,54

• MAMBO MICHELADA (contested by the makers of MICHELOB) and MAMBO MONTANADA (the control mark) for beer,55

• A stylized “EE” logo (contested by CHANEL, owner of stylized CC marks) and a stylized “MM” logo (the control mark) for umbrellas, wallets, purses, handbags, travel bags and related goods, 56

52. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012). (“After subtracting the 14.7% of control cell respondents who named MOUNTAIN DEW, i.e. the ‘noise level,’ from the 62.5% of test cell respondents who were confused . . . ‘net confusion’ was 47.8% . . .”); Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008) (“[T]here was a net confusion level (after subtracting the appropriate level of ‘noise’) of 43%.”). 53. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *10 (T.T.A.B. Apr. 28, 2011) (“[T]he survey results also make clear that the use of a dissimilar mark in conjunction with the list of Applicant’s specified services is not likely to cause confusion.”); Chanel Inc. v. Mauriello, 2010 WL 3873650, at *12 (T.T.A.B. Sept. 20, 2010) (“[T]he survey results also make clear that the use of a dissimilar mark in conjunction with the list of Applicant’s intended products is not likely to cause confusion.”); Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *7 (T.T.A.B. Sept. 22, 2008) (“[T]he responses to the control questions buttress our view that the respondents were not merely guessing.”). 54. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *8 (T.T.A.B. Feb. 22, 2001). The survey also used the following marks as controls: GOLDEN SPIRIT, GOLDEN SHEERS, GOLDEN FIT, GOLDEN TOUCH, and GOLDEN KICKS. 55. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *7 (T.T.A.B. Sept. 22, 2008). 56. Chanel Inc. v. Mauriello, 2010 WL 3873650, at *12 (T.T.A.B. Sept. 20, 2010).

1154 Vol. 104 TMR

• CLINIQUE DENTIQUE (contested by CLINIQUE) and BOUTIQUE DENTIQUE (the control mark) for restorative, cosmetic and family dentistry services,57

• CAN DEW (contested by the makers of MOUNTAIN DEW) and CAN DO (the control mark) for fruit- or fruit-flavored drinks and fruit-flavored carbonated beverages,58

• FACEMAIL (contested by FACEBOOK) and THINKMAIL (the control mark) for e-mail and instant messaging services. 59

Because the purpose of a control group is to determine whether confusion in the test group is a result of trademark-relevant issues, in this author’s opinion an Eveready survey proffered by a defendant (an applicant or registrant) that reveals little or no confusion in the test group ought not to require a control group.

4. Questions in Credited Eveready Surveys Before any questions are asked in an Eveready survey,

respondents ordinarily are instructed to indicate if they do not have an opinion or belief. Following are examples of such instructions:

• “For any of my questions please give me an opinion if you have one, but if you don’t know or have no opinion, that’s OK.”60

• “For each of my questions, if you don’t know or don’t have an answer, please don’t guess. Just tell me you don’t know or don’t have an answer and we’ll go on to the next question.”61

• “Please understand that we are only interested in your opinions or beliefs, and if you don’t have an opinion or belief

57. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *10 (T.T.A.B. Apr. 28, 2011). 58. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *7 (T.T.A.B. June 25, 2012). 59. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *14 (T.T.A.B. July 23, 2013). 60. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *10 (T.T.A.B. Feb. 22, 2001). This instruction was used for Sara Lee’s second survey. Following is the instruction used for Sara Lee’s first survey: “Please give me your opinion, even if you are not absolutely sure.” Sara Lee’s expert revised the instruction for his second survey because the first instruction was criticized for encouraging guessing. 61. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008).

Vol. 104 TMR 1155

or don’t know the answer to a question, that is an acceptable answer.” 62

The first question in many Eveready surveys concerns the source of the goods or services with the contested mark and is worded in a similar manner to the first substantive question in the Union Carbide surveys. Examples of such questions include:

• “Who do you think puts out this product?”63 • “Who do you believe owns or operates a restaurant that

uses the symbol [or the symbol and word] shown on this card?64

• “What company do you think puts out that brand of hosiery?” 65

• “This is the name of a retail establishment that serves coffee, tea and other beverages. Just from knowing this, have you formed an opinion about the name of a company that owns this retail establishment?” and, if so, “What is the name of the company?”66

• “This is the name of a brand of hosiery, pantyhose and clothing for men, women and children. First, what company do you think puts out the brand indicated on the card?”67

• “What company do you believe makes or puts out the beer using the name shown on this card?”68

• “What company or companies makes or puts out dog bowls or pet bowls with the name on this card?”69

• “Who, or what company, do you believe owns or operates this business?”70

62. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *14 (T.T.A.B. July 23, 2013). 63. Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1456 (T.T.A.B. 1986). 64. Carl Karcher Enters., Inc. v. Stars Restaurants Corp., 35 U.S.P.Q.2d 1125, 1132 (T.T.A.B. 1995). 65. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *8 (T.T.A.B. Feb. 22, 2001). 66. Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 at n.31 (T.T.A.B. 2006). 67. Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007). 68. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008). 69. 7-Eleven, Inc. v. Morrison, 2008 WL 2385970, at *13 (T.T.A.B. June 2, 2008). 70. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *11 n.33 (T.T.A.B. Apr. 28, 2011). After this question was asked, the Clinique survey posed the following question: “What, if anything, can you tell me about CLINIQUE DENTIQUE (the contested mark) or BOUTIQUE DENTIQUE) (the control mark)?”

1156 Vol. 104 TMR

• “Do you have any opinion about what company or brand makes or distributes a drink with this name?” and, if so, “Which company or brand makes or distributes this drink?”71

• “Who, or what company, do you believe is offering these services with this name?”72

An Eveready survey also may include questions that measure anonymous source confusion and/or mistaken beliefs regarding the affiliation of the defendant’s products or services. Such questions do not require respondents to identify the plaintiff by name and often parallel another key question in the Union Carbide surveys:

• “What other products, or brands, if any, do you think are put out by the company that puts out this product?”73

• “Do you believe the company that makes or puts out the beer shown on this card makes or puts out any other products or brands?”74

• “Do you have an opinion about any other product or products which are made or distributed by the same company that makes or distributes this drink?,” and if so, “What other product or products do you think are made or distributed by the same company?”75

Sometimes an Eveready survey will ask explicitly whether the company that offers the goods or services with the contested mark has an affiliation with another company:

• “Do you think the company that owns this retail establishment is connected or affiliated with any other company?” and, if so, “What other company?”76

• “Do you believe the company that offers these services with this name . . . (One) has a business affiliation or business connection with any other company or companies, (Two) does not have a business affiliation or business connection with any other company or companies, or (Three) don’t know or have no opinion?” and, if there is a business

71. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *7 (T.T.A.B. June 25, 2012). 72. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *14 (T.T.A.B. July 23, 2013). 73. Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1456 (T.T.A.B. 1986). 74. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008). 75. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *7-*8 (T.T.A.B. June 25, 2012). 76. Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 at n.32 (T.T.A.B. 2006).

Vol. 104 TMR 1157

affiliation or business connection, “With what other company or companies?”77

Another Eveready question may inquire about the sponsorship of the goods or services with the contested mark:

• “Do you believe that the services with this name . . . (One) are being offered with the authorization or approval of any other company or companies, (Two) are not being offered with the authorization or approval of any other company or companies, or (Three) don’t know or have no opinion?” and, if the services are being offered with the authorization or approval of another company, “With what other company or companies?”78

• “If you have an opinion, do you believe that the beer shown on this card is or is not made or put out with the approval or sponsorship of any other company or brand?” and, if so, “Whether or not you know the name of the other company or brand that approved or sponsored the beer shown on this card, what, if anything, can you tell me about the company or brand?”79

As some of these examples illustrate, questions about the affiliation or sponsorship of the goods in question often are preceded by a “filter” question (a question that determines whether additional questions on a topic are appropriate). For example, a filter question may inquire whether a respondent believes the company that makes the goods with the contested mark also makes other products. Only if the respondent answers this question in the affirmative will the respondent be asked what other products the company makes. After each set of questions, respondents also may be asked follow-up questions (such as, “What makes you think so?”80 “Why do you say that?”81 “Why do you 77. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *14 (T.T.A.B. July 23, 2013). 78. Id. at *14. A variation of this question was asked in Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 at n.33 (T.T.A.B. 2006) (“Do you think the company that owns this retail establishment has authorization, permission or approval from another company to use this name?”). However, this author believes asking respondents about permission to use the contested name is more leading than asking whether the goods with the contested mark were offered or put out with another company’s permission or approval. 79. Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008). 80. Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 (T.T.A.B. 2006) (“Additionally, all of these questions contain the follow-up question: “What makes you think so?’ The answers to these follow-up questions persuade us that the respondents were not merely guessing.”). 81. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *15 (T.T.A.B. July 23, 2013) (“The responses to the follow-up questions – ‘Why do you say that?’ – made specific reference to the similarities between the names FACEMAIL and FACEBOOK.”); Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *12 (T.T.A.B. Apr. 28, 2011)

1158 Vol. 104 TMR think that?”82 or “What is your reason for thinking so?”83) to determine the reasons for their answers and whether their answers are a result of the similarity of the parties’ marks or other reasons.

There is no fixed number of questions in an Eveready survey. Some Eveready surveys have included a single set of questions pertaining to only one type of confusion (for example, confusion as to the source of the defendant’s goods). Other Eveready surveys have measured multiple types of confusion, namely confusion as to the source, the sponsor, and the affiliation of the defendant’s goods. Regardless of the number or types of questions in an Eveready survey, if the survey includes a control group those respondents are asked the same questions as the test group.

5. Eveready Surveys Accorded Little or No Probative Value

The Eveready survey format is the most well-accepted survey format for measuring likelihood of confusion in Board proceedings. According to one legal scholar, “The Board normally will find the survey reliable if it follows the Ever-Ready format.”84 In the majority of proceedings in which an Eveready survey has been tendered to show confusion is likely, the Board has accorded plaintiff’s survey at least some weight, with a few notable exceptions.

Plaintiffs’ Eveready surveys were discredited or were not entitled to “great weight” in disputes over the following marks as a result of sampling issues or an improper survey stimulus:

• FIRESTONE (for inner tubes and tires) and SILVERSTONE (for commercially identical goods),85

(“Additionally, each series of the survey questions contain[s] the follow-up question: ‘Why do you say that?’”); Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *8 (T.T.A.B. Sept. 22, 2008) (“Respondents who identified a company then were asked, ‘Why do you say that?’”); Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *8 (T.T.A.B. Feb. 22, 2001) (“Respondents who answered something other than ‘don’t know’ to the first question were then asked: ‘Why do you say that?’”). 82. Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (“The thirty-nine survey respondents who had responded ‘L’EGGS’ then were asked the follow-up question ‘Why do you think that?’”). 83. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012) (“[T]hose answering ‘yes’ were next asked ‘what other product or products do you think are made or distributed by the same company?,’ followed by ‘what is your reason for thinking so’ . . .”). 84. Joseph N. Welch II, “Use of Experts” in Hudis, supra note 3, at 257, 269. See also, Handelman, supra note 6, § 18.12[A] (“One effective methodology for measuring likelihood of confusion, known as the Ever-Ready methodology . . .”). 85. Bridgestone/Firestone N. Am. Tire, LLC. v. Silverstone Berhad, 2003 WL 1559659, *4 and *8 (T.T.A.B. Mar. 21, 2003) (according opposer’s informal, pilot survey of 62 persons “no weight” because the results did not lend themselves to statistical conclusions favoring one side or the other).

Vol. 104 TMR 1159

• MEDICA and its family of MEDICA marks (for underwriting insurance for prepaid healthcare, for comprehensive health plans, and for health plan management services) and IMEDICA (for online ordering of medical supplies and providing medical information and patient records via a global computer network),86 and

• ROLEX (for watches, watch bracelets, and related jewelry products) and RALPH LAUREN RLX or RLX RALPH LAUREN (for commercially identical goods).87

The Board has opined that “Survey results can be used to show likelihood or no likelihood of confusion.”88 Nonetheless, Eveready surveys have been more effective at proving that confusion is likely than at proving it is unlikely. In several controversies, the Board commented that the defendant’s Eveready survey was “proper in form” or followed an “accepted format,” but then faulted the survey for not measuring the “full potential for confusion”89 or other reasons.90

For example, the Board judged unavailing the defendants’ Eveready surveys in disputes over the following marks, due to 86. iMedica Corp. v. Medica Health Plans, 2007 WL 1697344, at *4-*6 and *15 (T.T.A.B. June 7, 2007) (finding petitioner’s survey had “some probative value” but was not entitled to “great weight” because the survey did not fairly sample the universe of possible respondents, the sample was biased in petitioner’s favor, and it included a small number of respondents). 87. Rolex Watch USA, Inc. v. PRL USA Holdings, Inc., 2012 WL 2588574, at *7 (T.T.A.B. June 7, 2012) (finding opposer’s survey had “minimal probative value” because it tested only the “RLX” portion of applicant’s marks). 88. McNeil-PPC, Inc. v. Walgreen Co., 2013 WL 223400, at *8 (T.T.A.B. Jan. 22, 2013). 89. Id., *8-*9. In McNeil-PPC, the Board found applicant’s survey comported with “the Ever-Ready survey structure” and was “proper in form.” However, the Board concluded the results from applicant’s survey were not particularly probative because the questions did not “expose the full potential for confusion” with respect to the sponsorship or affiliation of the goods in question. Applicant’s affiliation question was worded in the following manner: “Do you believe that the company that makes or puts out the products using the name shown on this card is affiliated with or authorized by any other company or brand, or not affiliated with or authorized by any other company or brand?” The Board took issue with this question because it failed to measure whether consumers mistakenly believed WAL-ZYR (the applicant’s allergy medication) and ZYRTEC (the opposer’s allergy medication) contained ingredients from the same supplier. The Board also opined that in circumstances where the goods are drugs “there is a heightened need to better understand consumer perception to guard against likely confusion.” 90. In In re Oversee.net (2011 WL 1495448, at *5 (T.T.A.B. Mar. 28, 2011)), the Board refused registration of the LOWFARES.COM mark (for travel information and price comparison services via a website) because of the likelihood of confusion with the federally registered mark LOWESTFARE.COM (for travel agency services via a website). The Board found that even though applicant’s Eveready survey followed “the accepted format set out in Union Carbide Corp. v. Ever-Ready, Inc.,” it was “compromised” by the introduction to the survey (which informed respondents that the survey concerned “website names”). The Board maintained that the reference to “website names” in the survey introduction led survey respondents to believe that LOWFARES.COM was merely “the virtual world’s version of an address” rather than a brand name or trademark.

1160 Vol. 104 TMR problems with the survey universe, the survey stimulus, the survey questions (or introduction to the survey) and ambiguous survey responses:

• ENDEAVOR (for motorhomes) and ENDEAVOR (for automobiles and structural parts),91

• MEIER’s (for sparkling fruit juices and wine) and MEYER VINEYARD (for wine),92

• ZYRTEC (for over-the-counter allergy medications) and WAL-ZYR (for commercially identical goods),93 and

• OMNI (for computer software) and OMNI (for measurement and control computers for use in the measurement and control of hydrocarbon liquid and gas flows).94

Regardless of which party submits a survey, the probative value of an Eveready survey will depend on how it is implemented, as well as the specific facts of the case.

B. Squirt Survey Formats 1. Ava Enterprises v. Audio Boss

The Board has not embraced the Squirt survey format to the same extent as the Eveready survey format. Even so, in Ava Enterprises v. Audio Boss, the Board found the opposer’s uncontested Squirt survey compelling.95 In this opposition proceeding, Ava Enterprises submitted a survey to support its contention that there was a likelihood of confusion between its federally registered mark BOSS AUDIO SYSTEMS and design (for automobile audio components) and the applicant’s mark AUDIO 91. Monaco Coach Corp. v. Mitsubishi Motors N. Am., Inc., 2008 WL 3917511, at *14-*15 (T.T.A.B. Aug. 11, 2008), vacated Int’l Truck Intellectual Prop. Co., LLC v. Mitsubishi Motors N. Am., Inc., 2009 WL 4085627 (T.T.A.B. Aug. 24, 2009) (finding respondent’s survey was “not entitled to any probative value” because it excluded “a key portion of the buyers of junior user’s goods” and asked screening questions that defined motor vehicles in a manner that biased responses to later questions in the survey). 92. Meier’s Wine Cellars, Inc. v. Meyer Intellectual Props. Ltd., 2008 WL 902837, at *4-*6 (T.T.A.B. Mar. 4, 2008) (finding respondent’s survey was “without probative value” because the survey stimulus was a wine bottle, rather than just the mark). 93. McNeil-PPC, Inc. v. Walgreen Co., 2013 WL 223400, at *8-*9 (T.T.A.B. Jan. 22, 2013) (finding applicant’s survey “not particularly probative” because it did not assess whether consumers mistakenly believed the ingredients in applicant’s and opposer’s over-the-counter allergy medications came from the same supplier). See also Team Air Express, Inc. v. Alliance Shippers, Inc., 2007 WL 4438620, at *15 (T.T.A.B. Dec. 11, 2007) (finding that respondent’s survey at most proved that survey respondents had no preexisting knowledge of petitioner or its marks). 94. Haverly Sys., Inc. v. Omni Flow Computers, 2001 WL 935817, at *2-*3 (T.T.A.B. Aug. 17, 2001) (finding applicant’s survey did not establish whether confusion was likely or unlikely due to ambiguous survey answers). 95. AVA Enters. Trading Co., Inc. v. Audio Boss USA, Inc., 77 U.S.P.Q.2d 1783, 1786-87 (T.T.A.B. 2006).

Vol. 104 TMR 1161 BSS USA and design (for car power amplifiers, car speakers, car stereos, and home theater speakers).

At the beginning of the Ava Enterprises’ survey, survey respondents were told they were going to view the names of brands of car and truck audio equipment and electronics and to look at the brand names as if they were shopping or looking at an advertisement. Test group and control group respondents were shown a card with the opposer’s mark BOSS AUDIO SYSTEMS and design. After this card was removed from view, respondents were shown a second card with a different mark and design. Test group respondents were shown a card with the applicant’s mark AUDIO BSS USA and design, whereas control group respondents were shown a card with an uncontested mark and design that had been used in connection with mobile audio equipment (KENWOOD).96 After the second card was removed from view, respondents in the test and control groups were asked a series of questions patterned after the surveys in SquirtCo.

All survey respondents were asked the following question: “Do you think that the brand name you saw first and the brand name you saw second come from the same company, different companies, or are you not sure?” If a respondent thought the two brands came from the same company, the respondent was not asked additional questions. However, respondents who thought the two brands came from different companies or who were not sure whether they came from the same or different companies were asked a second question: “Which of these statements best describes your opinion about the company that makes the brand of audio equipment and electronics that you saw first and the company that makes the brand of audio equipment and electronics that you saw second: (i) The companies are connected or associated, (ii) The companies are not connected or associated, or (iii) You are not sure”? After survey respondents answered this question, they were asked “Why do you feel that way?”

In all, 57% of test group respondents thought the opposer’s brand (BOSS AUDIO SYSTEMS) and the applicant’s brand (AUDIO BSS USA) came from the same company or that the companies were connected or associated. In the control group, only 12% thought that the opposer’s brand (BOSS AUDIO SYSTEMS) and the control brand (KENWOOD) were from the same source or were related. Additionally, the majority of respondents in the test group who thought the opposer’s and the applicant’s marks were related said the reason for their belief was the similarity of the appearance of the BOSS AUDIO SYSTEMS and AUDIO BSS USA 96. Id. at 1786. The order in which the two cards were shown was rotated across respondents. For example, the card with the opposer’s mark BOSS AUDIO SYSTEMS and design was the first card shown to half the respondents in the test and control groups. It was the second card shown to the other half of respondents in the test and control groups.

1162 Vol. 104 TMR marks. Noting that applicant raised no objections to the survey procedures, and ignoring the results for the control group, the Board found the 57% test group result to be strongly probative of a likelihood of confusion.97

2. Squirt Surveys Before and After Ava Enterprises Except for the Ava Enterprises’s survey, the Board for the most

part has been critical of Squirt surveys in opposition and cancellation proceedings. In one matter, the Board even commented on the fact that the opposer’s Squirt survey did not follow the “approved” Eveready survey format.98

The plaintiffs’ Squirt surveys in controversies over the following marks were accorded little or no weight for asking respondents to make inappropriate side-by-side comparisons, posing leading questions, being memory-based, or using irrelevant stimuli, among other reasons:

• MARSHALL FIELD’S and design (for retail department store services and for baked goods) and MRS. FIELD’S COOKIES and design (for retail bakery store services),99

• Physician’s Health Plan’s butterfly design (for underwriting health and accident insurance, including services through an HMO) and another butterfly design (for health care services through an HMO),100

• US WEST (for telecommunication services) and US EAST (for commercially identical services),101

• LIFTMASTER and its family of MASTER marks (for overhead door operating systems, including garage door openers and accessories) and LYNX MASTER (for commercially identical goods),102

97. Id. at 1787. 98. Chamberlain Grp., Inc. v. Lynx Indus., Inc., 2007 WL 4438613, at *10-*11 (T.T.A.B. Dec. 14, 2007) (“In the recent case of Starbucks U.S. Brands LLC v. Ruben . . . the Board found the survey conducted by the opposer therein to be probative of likelihood of confusion given that the survey carefully followed the Ever-Ready (footnote omitted) survey format. Here, opposer’s survey does not follow that approved format.”). 99. Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321, 1333-34 (T.T.A.B. 1992) (finding petitioner’s survey was “seriously flawed” as a result of leading questions, using the parties’ packages rather than just the marks as stimuli, and presenting the parties’ marks side-by-side). 100. Physician’s Health Plan, Inc. v. Michigan HMO Plans, Inc., 1999 WL 945909, at *5 (T.T.A.B. Oct. 5, 1999) (finding it was not necessary to consider petitioner’s “thoroughly criticized” survey because the Board already concluded confusion was likely). 101. U S West, Inc. v. Hatten Commc’ns Holding Co., Inc., 2002 WL 31154808, at *8 (T.T.A.B. Sept. 25, 2002) (according no weight to opposer’s survey because the questions were “memory based and convoluted”). 102. Chamberlain Grp., Inc. v. Lynx Indus., Inc., 2007 WL 4438613, at *10-*11 (T.T.A.B. Dec. 14, 2007) (according opposer’s survey limited weight because the survey universe was

Vol. 104 TMR 1163

• BASS PRO SHOPS SPORTSMAN’S WAREHOUSE and design (for retail stores featuring clothing, fishing supplies, and sporting goods) and SPORTSMAN’S WAREHOUSE and design (for substantially identical services),103 and

• POTENZA, TURANZA and ALENZA (for tires) and MILANZA (for commercially identical goods).104

The defendants’ Squirt surveys also generally have been unsuccessful in Board proceedings at proving that confusion is unlikely. The Board determined that the defendants’ Squirt surveys had limited probative value in battles between the following marks (although this was in part a result of the failure to show respondents an appropriate stimulus rather than the format of the survey):

• SNAPPER, SNAPPIN, and SNAPPERIZER word and design marks (for lawn mowers and related goods) and SNIPPY word and design marks (for non-metallic, flexible line cutting trimmers),105 and

• WEED-B-GON, BUG-B-GON, and other B-GON formative marks (for pesticides, herbicides, and insecticides) and EASYGONE (for commercially identical goods).106

In a few matters, Squirt surveys supported the Board’s conclusions notwithstanding their flaws. For example, an opposer’s Squirt survey that was likened to a “memory test” and not accorded much weight nonetheless “bolstered” the Board’s opinion under-inclusive in some ways and over-inclusive in others and because the survey asked a leading question). 103. Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89 U.S.P.Q.2d 1844, 1859 (T.T.A.B. 2008) (according petitioner’s survey “little probative value” because the survey suggested an affiliation between petitioner and respondent and did not account for the concurrent use of a descriptive term). 104. Bridgestone Firestone N. Am. Tire, LLC and Bridgestone Corp. v. Federal Corp., 2010 WL 985350, at *8-*9 (T.T.A.B. Feb. 24, 2010) (finding opposers’ survey had “little probative value” because the survey “planted the seed” that the “NZA” suffix was significant and led respondents to the desired result.), rev’d Bridgestone Ams. Tire Operations, LLC, 673 F.3d 1330 (Fed. Cir. 2012) (reversal was due to the Federal Circuit’s view that “[i]n light of the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA, sufficient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake” and that “[t]here is a heavy burden on the newcomer to avoid consumer confusion” with a direct competitor; the survey was not cited as a basis for reversal. 105. McDonough Power Equip., Inc. v. Weed Eater, Inc., 208 U.S.P.Q. 676, 682-85 (T.T.A.B. 1981) (finding applicant’s survey did not help its position because of fundamental design and execution defects, including showing a photograph of its product which included the WEED EATER house mark and swirl design rather than just the mark to be registered and allowing an improper side-by-side comparison of the parties’ marks). 106. OMS Invests., Inc. v. Central Garden & Pet Co., 2006 WL 2066583, at *11-*14 (T.T.A.B. July 10, 2006) (finding applicant’s survey had “extremely limited probative value” because the survey stimuli were product containers rather than just the marks).

1164 Vol. 104 TMR that confusion was likely between the applicant’s LAVENDER FIELDS mark (for massage oil, essential oils for personal use, and bath salts) and the opposer’s VANILLA FIELDS mark (for women’s cologne, perfume, body lotion, soap, and bath powder).107 In another matter, the Board opined that an applicant’s Squirt survey was not ideal, but nonetheless reinforced its belief that confusion was not likely between TOUCH TEL PAGING or TOUCH TEL (for pagers and paging services) and AIRTOUCH or AIR TOUCH with a design (for telephones, pagers, and related software and for wireless voice and telecommunication services).108

C. Failure to Use an Established Survey Format The Board has explicitly criticized surveys for not following an

“established” format109 or for not using “established or recognized” survey techniques.110 Nevertheless, and with limited success, parties have proffered likelihood-of-confusion surveys in Board proceedings that did not employ either the Eveready or Squirt format. Surveys diverging from a previously accepted format have been faulted for not asking open-ended questions (such as those in an Eveready survey)111 and for posing leading or unsound questions.112 For example, in a dispute concerning two “HR”

107. Coty US Inc. v. Frontier Coop. Herbs, 2002 WL 140060, at *8 (T.T.A.B. Feb. 1, 2002) (“Although opposers’ survey tends to bolster the conclusion we reach, we have not given much weight to it.”). 108. Touch Tel Corp. v. AirTouch Commc’ns, 1999 WL 495944, at *10 (T.T.A.B. July 9, 1998) (“Finally, the survey, while not an ideal one as it relates to issues peculiar to the Board (footnote omitted), reinforces our belief that confusion is, in fact, not likely). In Dynamark Corp. v. Weed Eaters, Inc. (207 U.S.P.Q. 1026, 1031-1033 (T.T.A.B. 1980)), the Board criticized respondent’s survey for showing participants the parties’ swirl designs (along with two other swirl designs) and then asking a Squirt-type question (“Do you think any of these designs or symbols are used by the same company?”). Although the Board found respondent’s survey results to be “clouded by methodological shortcomings,” as in Touch Tel, the survey supported the conclusion that confusion due to the similarity of the parties’ marks was unlikely. 109. Clear Choice Holdings LLC v. Implant Direct Int’l, 2013 WL 5402082, at *8 and *10 (T.T.A.B. Aug. 26, 2013) (“First and foremost, the survey did not follow an established format to measure likelihood of confusion, but was created by opposer’s expert in a design never before used in a trademark survey or accepted by any court. . . . Given that opposer characterizes its mark as famous, we question why opposer’s expert chose not to follow the Ever-Ready (footnote omitted) survey format, which we have accepted and which has been called the ‘gold standard’ in likelihood of confusion cases.”). 110. Missiontrek Ltd. Co. v. Onfolio, Inc., 80 U.S.P.Q.2d 1381, 1384 (T.T.A.B. 2005) (“We observe, too, that the survey, at a minimum, is not based on established or recognized . . . survey techniques.”), aff’d, 208 Fed. Appx. 858 (Fed. Cir. 2006). 111. Pita Jungle—Tempe, Inc. v. Pita Pal Foods, LP, 2014 WL 3752423, at *8 (T.T.A.B. July 24, 2014) (“[T]he survey’s key question . . . asked whether Opposer’s customers would believe the hummus bearing Applicant’s mark was produced by Opposer, rather than asking open-ended questions, such as, “Who do you think produced this hummus?’”). 112. Pita Jungle—Tempe, Inc. v. Pita Pal Foods, LP, 2014 WL 3752423, at *8 (T.T.A.B. July 24, 2014); In re Dimitric, 2011 WL 810218, at *2 (T.T.A.B. Feb. 7, 2011); Black Dog

Vol. 104 TMR 1165 designs, the opposer’s principal question that instructed respondents to check any of the following response categories with which they agreed was “fraught with serious problems”:113

• “When I first noticed the ‘HR Design’ used by SHRM, I was confused as to whether or not there was a connection or association between SHRM and Hilson Research Inc.”

• “I believe the ‘HR Design’ used by SHRM is very similar in appearance and overall impression to Hilson’s ‘HR Design’.’”

• “I believe that Hilson and SHRM conduct business within the same industry and provide some related services.”

• “I believe there is a strong likelihood of confusion between the ‘HR Design’ which SHRM uses and Hilson’s ‘HR Design’ among their respective members, clients or customers.”

Another opposer contended that a non-litigation survey (commissioned by the applicant in connection with choosing a new name) demonstrated confusion was likely between its CENTURY 21 mark (for insurance services, real estate brokerage services, mortgage brokerage services, and related financial services) and applicant’s CENTURY LIFE OF AMERICA mark (for insurance underwriting services). The Board found the survey unpersuasive because the following questions merely measured “word associations” and did not show whether respondents thought Century 21 Real Estate and other companies with the word “century” in the name were related:114

• “What ideas or impressions does the word Century suggest to you when used in a company name?”

• “Are there any companies that you can think of that use this word [Century] in their name?”

Applicants’ surveys of their own customers have been discredited for interviewing an inappropriate universe as well as for asking defective questions, such as the following:

Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006); Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9-*10 (T.T.A.B. Mar. 23, 2004); Guardian Life Ins. Co. of Am. v. England, 2002 WL 31173415, at *3 (T.T.A.B. Sept. 26, 2002); Century 21 Real Estate Corp. v. Century Life Am., 1992 WL 809137, at *5 n.18 (T.T.A.B. Aug. 10, 1992); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1438 (T.T.A.B. 1993). 113. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1436-37 (T.T.A.B. 1993) (“Hilson’s questionnaire is fraught with serious problems. . . . Because the questions are leading, they unequivocally tell the interviewee the response which Dr. Inwald sought. The questions are also framed as legal conclusions, and raise an issue as to whether the interviewees actually understood what was being asked.”). 114. Century 21 Real Estate Corp. v. Century Life Am., 1992 WL 809137, at *5 n.18 (T.T.A.B. Aug. 10, 1992) (“This deliberately open-ended question . . . really elicits nothing more than word associations . . .”).

1166 Vol. 104 TMR

• “At the time of purchase, did you believe you were purchasing merchandise associated with, licensed by, affiliated by, or in fact from the famous Black Dog Tavern of Martha’s Vineyard?” 115

• “Prior to purchasing the ‘PocketGuardian’ were you in any way confused or mistaken that it was related to, a subsidiary of or a division of ‘The Guardian Life Insurance Company of America’?”116

• “If you want to purchase a product from a company ‘HELIOS PRESS’ how likely would you confuse the name with the name of a company ‘HELIOS PUBLISHING COMPANY’ if you read the names with ordinary care?”117

In addition to faulty questions, likelihood-of-confusion surveys with an unrecognized format have been discredited for the same types of execution errors as surveys with a recognized format. For example, they have been excoriated for not being prepared by a survey expert,118 not screening respondents for eligibility or not surveying a representative sample of relevant consumers,119 having too few survey respondents,120 and not analyzing the results in a statistically meaningful way.121

115. Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“Applicant asked . . . leading questions designed to elicit certain information . . .”). 116. Guardian Life Ins. Co. of Am. v. England, 2002 WL 31173415, at *2-*3 (T.T.A.B. Sept. 26, 2002) (“[O]ne should be reluctant to base any conclusions on a total of three responses to any survey, to say nothing of the many defects obvious from the face of this particular instrument.”). 117. In re Dimitric, 2011 WL 810218, at *2 (T.T.A.B. Feb. 7, 2011) (“The first question is leading, telling the respondent that the companies using the two names are different . . .”). 118. Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“[I]t appears that applicant designed and conducted the ‘survey’ by herself . . . and, there is no evidence in the record that suggests that applicant has any expertise in conducting surveys or has even ever conducted another survey.”); Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9 (T.T.A.B. Mar. 23, 2004) (“The witness indicated that he had no training in developing consumer surveys in likelihood of confusion cases.”). 119. Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9 (T.T.A.B. Mar. 23, 2004) (“Anyone who visited the witness’s website could take the test and there was no attempt to exclude participants who were not potential purchasers of nutritional supplements.”); In re Dimitric, 2011 WL 810218, at *2 (T.T.A.B. Feb. 7, 2011) (“[T]here is no indication of any attempt to obtain a representative sample of consumers . . . (‘The survey was placed on a well-known commercial survey website: www.SurveyMonkey.com for any web users to participate at their will.’)”). 120. Guardian Life Ins. Co. of Am. v. England, 2002 WL 31173415, at *3 (T.T.A.B. Sept. 26, 2002) (“Based on common sense alone, one should be reluctant to base any conclusions on a total of three responses to any survey . . .”). 121. Missiontrek Ltd. Co. v. Onfolio, Inc., 80 U.S.P.Q.2d 1381, 1384 (T.T.A.B. 2005) (“We observe, too, that the survey, at a minimum . . . was not analyzed in any statistically meaningful way.”), aff’d, 208 Fed. Appx. 858 (Fed. Cir. 2006).

Vol. 104 TMR 1167

IV. THE BOARD’S TREATMENT OF COMPETING SURVEYS

When the Board weighs competing surveys, it may consider one survey more persuasive than the other, or it may find that one survey buttresses (rather than rebuts) the other survey. 122 For example, both parties submitted surveys in a clash between the maker of L’EGGS hosiery (the owner of the SHEER ENERGY and SHEER ELEGANCE marks for hosiery) and the maker of NO NONSENSE pantyhose (the applicant for the SHEER ENDURANCE mark for hosiery).123 The opposer proffered two Eveready surveys that used IRON WEAVE and LASTING IMPRESSIONS as control marks. The applicant also proffered its own Eveready surveys along with a survey that used a nonstandard format (a “sorting board” survey in which respondents were asked to match brand names to company names). Unlike the opposer’s surveys, the applicant’s surveys employed control marks that included the word “SHEER” (SHEER IMPRESSIONS, SHEER INDULGENCE, SHEER CONTROL, and SHEER GLAMOUR). The Board discounted the opposer’s Eveready surveys because the control marks did not include the word “SHEER” (a word that the opposer disclaimed and for which there was extensive evidence of third-party use). It also faulted most of the control marks used in the applicant’s Eveready and “sorting board” surveys because of their similarity to the opposer’s marks.124 However, the Board found the applicant’s survey with an appropriate control mark (SHEER IMPRESSIONS) tended to

122. If only a few elements of a survey are criticized, the party that proffered the survey or an opposing party may conduct a “replication” survey. A replication survey is conducted in the same manner as the original survey, but corrects the alleged flaws in the survey. The party that offered the survey will tender a replication survey to demonstrate that the opposing party’s criticisms were immaterial. See Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *10 (T.T.A.B. Feb. 22, 2001) (“The replication survey certainly disposed of two of the significant criticisms made by respondent’s expert. The replication survey results were remarkably similar to the ones of the original survey.”). Conversely, the critiquing party will advance a replication survey if it supports a different conclusion than the original survey. 123. Sara Lee Corp. v. Kayser-Roth Corp., 2004 WL 587127, at *12-*19 and *23 (T.T.A.B. Mar. 19, 2004). 124. Id. at *17 and *23. Relying on the testimony of one of opposer’s survey experts, the Board found applicant’s control marks SHEER INDULGENCE and SHEER CONTROL were inappropriate even though each of the marks included the word “SHEER.” Opposer’s survey expert faulted the SHEER CONTROL mark because it resembled another mark used by opposer (SHEER COMFORT for control top pantyhose). The same expert criticized applicant’s SHEER INDULGENCE control mark because he claimed “INDULGENCE” was similar in sound and meaning to the “ELEGANCE” part of opposer’s SHEER ELEGANCE mark. Although opposer’s expert did not criticize applicant’s SHEER GLAMOUR control mark, the Board disregarded the results for this mark because “GLAMOUR” (like “INDULGENCE”) was similar in meaning to the “ELEGANCE” part of opposer’s “SHEER ELEGANCE” mark.

1168 Vol. 104 TMR support the conclusion that confusion was likely (rather than unlikely). 125

When there are competing surveys, rather than crediting one party’s survey the Board may disregard both parties’ surveys. For example, in a conflict between the owner of the registered mark DUPONT (for the manufacture, sale, and distribution of chemicals, fabrics, fibers, polyesters, pharmaceuticals, and related goods) and the applicant’s DUPONT REGISTRY marks (for magazines advertising luxury products and services) each party proffered a survey.126 The Board determined that neither party’s survey was “particularly reliable” or of “particular assistance,” and noted that its skepticism was “fueled by the virtually opposite results reached by each party.”127 The Board expressed a similar sentiment regarding competing surveys in a dispute in which Helene Curtis (the owner of the registered mark SUAVE for hair shampoo, conditioner, and other hair products) opposed registration by a shoe manufacturer of the mark SUAVE for shoes.128

In this author’s opinion, just because two surveys produce different results does not justify disregarding both surveys. Otherwise, a properly conducted survey could be nullified by any survey, regardless of how well it was implemented. However, in the disputes concerning registration of the DUPONT REGISTRY mark (for magazines) 129 and the SUAVE mark (for 125. Similarly, in a dispute between Hilson Research (the owners of a federally registered “HR” design for providing psychological and personality examinations for job applicants) and the Soc’y for Human Res. Mgmt. over its application to register another “HR” design (for association services promoting the human resource management profession), applicant’s survey supported the conclusion that confusion was likely (rather than unlikely) (Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1435-39 (T.T.A.B. 1993)). In Hilson, opposer’s survey was not accorded any weight because the survey was not double-blind and the questions were leading. The applicant’s survey was found to have limited probative value because it was administered over the telephone (when the contested mark was a design mark) and because the survey questions were defective. Furthermore, the Board opined that applicant’s survey detracted from (rather than supported) its contentions. 126. E.I. du Pont de Nemours and Co. v. Dupont Publ’g, Inc., 2001 WL 1182789, at *10-*13 (T.T.A.B. Sept. 27, 2001). 127. Id. at *13 (“Our skepticism about the reliability of the parties’ surveys in this case is fueled by the virtually opposite results reached by each party, namely a confusion rate of forty percent (opposer’s) versus three percent (applicant’s). In view of the flaws noted above and the wide disparity in these surveys which purport to determine essentially the same thing, we find that neither survey is particularly reliable.”). 128. Helene Curtis Indus., Inc. v. Suave Shoe Corp., 13 U.S.P.Q.2d 1618, 1626 (T.T.A.B. 1989) (“Our skepticism about the reliability of the parties’ surveys in this case is fueled by the wildly different results reached by each party . . .”). 129. In E.I. du Pont de Nemours and Co. v. Dupont Publ’g, Inc. (2001 WL 1182789, at *13 (T.T.A.B. Sept. 27, 2001)), the Board found that the opposer’s criticisms of the applicant’s survey had “significant merit.” The opposer faulted the applicant’s survey for presenting the mark DUPONT REGISTRY in a stylized format rather than typed capital letters, for surveying a disproportionate number of women, and for asking persons who named the DuPont Company a prejudicial follow-up question (“Do you mean the DuPont

Vol. 104 TMR 1169 shoes),130 the Board identified flaws in each party’s survey (in addition to the wide disparity in the survey results) and, therefore, its skepticism was warranted.

V. OTHER KEY SURVEY DESIGN CONSIDERATIONS IN BOARD PROCEEDINGS

The Manual for Complex Litigation, Fourth Section 11.493 (2014) indicates that the following factors ought to be considered in assessing the admissibility and reliability of any survey: the population was properly chosen and defined; the sample chosen was representative of that population; the data gathered were accurately reported; the data were analyzed in accordance with accepted statistical principles; the questions asked were clear and not leading; the survey was conducted by qualified persons following proper interview procedures; and the process was conducted so as to insure objectivity. These factors apply to likelihood-of-confusion surveys irrespective of their format or whether they are propounded in a Board proceeding or trademark infringement case.

A. The Relevant Survey Universe Like the universe for a forward-confusion survey in a

trademark infringement action, the universe for a likelihood-of-confusion survey in a Board proceeding usually consists of potential consumers or both past and potential consumers of the defendant’s (applicant’s or registrant’s) goods or services.131 (The universe is different in reverse-confusion cases, but as noted above,

Company that makes chemicals?”) that foreclosed respondents from associating the opposer with other products. The Board also found the applicant’s criticisms of the opposer’s survey had “significant merit.” The applicant took issue with the universe of respondents for the opposer’s survey because it was not limited to “upscale consumers” (the audience for applicant’s magazines). Additionally, the applicant faulted the opposer’s survey for inaccurately describing applicant’s magazines, not including any controls to eliminate guessing, and for an errant interviewer who apparently was “less than forthright” in filling out the questionnaires. 130. In Helene Curtis Industries, Inc. v. Suave Shoe Corp. (13 U.S.P.Q.2d 1618, 1626 (T.T.A.B. 1989)), the Board agreed with plaintiff that the screening questions in defendant’s survey improperly focused survey respondents’ attention on personal care products (which reduced survey respondents’ likelihood of indicating that the same company that made SUAVE shampoo, rinses, and hair conditioners also made SUAVE shoes). The Board also found that defendant’s criticisms of plaintiff’s survey (including that the sample for plaintiff’s telephone survey was not random and the survey questions improperly suggested to respondents that plaintiff was the sponsor of the survey) had “some merit.” 131. Handelman, supra note 6, § 18.12[D] (“[W]hen the parties use their marks on different goods or services . . . In general, the relevant universe consists of purchasers and potential purchasers of the defendant-junior user’s products . . .”); Joseph N. Welch II, Use of Experts in Hudis, supra note 3, at 257, 263 (“The proper universe normally is defined as actual and potential purchasers of defendant’s (i.e., applicant’s or registrant’s) product.”).

1170 Vol. 104 TMR most Board proceedings involve forward-confusion.)132 If the intent of the survey is to measure post-sale confusion, the survey universe can include users of the opposer’s product.133 It is improper to limit the universe for a likelihood-of-confusion survey to a party’s customers.134 Selecting the wrong universe,135 an overly narrow universe, 136 an overly broad universe, 137 or a universe that is under-inclusive in some ways and over-inclusive in others138 may cause the survey results to be discounted or 132. In a reverse-confusion case the proper universe is potential purchasers or both past and potential purchasers of plaintiff’s goods. See Joseph N. Welch II, “Use of Experts” in Hudis, supra note 3, at 257, 263 (“In reverse confusion cases, the proper universe will be actual and potential purchasers of plaintiff’s (i.e., opposer’s or petitioner’s) products, because the contention is that consumers likely will believe that plaintiff’s product emanates from the defendant.”). . 133. See Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1458 (T.T.A.B. 1986) (“Applicant’s contention that the universe should not have included users of multiple vitamins is unjustified . . . [T]he likelihood of mistake in the use of a product after it has been purchased may now also be considered. This broader principle has been held especially important in cases involving over-the-counter drugs sold in tablet form for oral ingestion at home without medical supervision . . .”). 134. Pita Jungle—Tempe, Inc. v. Pita Pal Foods, LP, 2014 WL 3752423, at *8 (T.T.A.B. July 24, 2014) (“[T]he universe of interviewees was skewed because it only included Opposer’s customers who were leaving the restaurant . . .”); Clear Choice Holdings LLC v. Implant Direct Int’l, 2013 WL 5402082, at *8 (T.T.A.B. Aug. 26, 2013) (“[R]ather than following the accepted approach of using a survey universe comprising potential consumers of applicant’s dental implant services, (footnote omitted) opposer’s survey was conducted among a sample of 150,000 customers who had contacted opposer . . . and did not live in the 19 markets (footnote omitted) where applicant offers its services. Thus, the survey universe was purposely selected to be aware of opposer (footnote omitted) and not applicant.”); Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“[T]here are significant flaws in the ‘survey.’ Applicant limited the participants to her customers . . .”). 135. King Bio Pharms., Inc. v. King Pharms., Inc., 2002 WL 971339, at *4 (T.T.A.B. May 9, 2002) (finding applicant’s survey of pharmacists and drug wholesalers did not provide “any information about whether ordinary consumers are likely to be confused by the contemporaneous use of the parties’ marks on over-the-counter pharmaceuticals such as cough syrup, decongestants, and dermatological preparations). 136. Kohler Co. v. Kohler Homes, 2008 WL 4877069, at *9 (T.T.A.B. Nov. 4, 2008) (finding opposer’s surveys were entitled to “limited weight” because the universe of respondents did not include builders, contractors, and designers who were potential purchasers of applicant’s architectural services); Monaco Coach Corp. v. Mitsubishi Motors N. Am., Inc., 2008 WL 3917511, at *14 (T.T.A.B. Aug. 11, 2008), vacated Int’l Truck Intellectual Prop. Co., LLC v. Mitsubishi Motors N. Am., Inc., 2009 WL 4085627 (T.T.A.B. Aug. 24, 2009) (finding respondent’s survey was not entitled to any weight because it excluded a key portion of the buyers of the junior user’s goods). 137. Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9 (T.T.A.B. Mar. 23, 2004) (finding a survey offered “little support” for petitioner because the survey made no attempt to exclude participants who were not potential purchasers of nutritional supplements); McCarney v. Una Mas, Inc., 2004 WL 240310, at *7 (T.T.A.B. Feb. 5, 2004) (not according applicant’s survey “much weight” because it included participants who had not eaten or intended to eat at a Mexican restaurant). 138. Chamberlain Grp., Inc. v. Lynx Indus., Inc., 2007 WL 4438613, at *10 (T.T.A.B. Dec. 14, 2007) (“[I]t would have been better if the survey universe had included professional garage door installers at the very least. Moreover, it seems to us that the survey universe

Vol. 104 TMR 1171 disregarded entirely. However, a survey still may be credited if it includes persons who are most likely to buy the parties’ products (if the parties’ products are identical) or who are most likely to buy the defendant’s products (if the parties’ products differ).139 It also is permissible to exclude persons who work in certain industries from the universe of potential respondents if they are believed to have “special knowledge.”140

B. The Relevant Geographic Area When an applicant seeks a geographically unrestricted

registration under which it might expand throughout the United States, the Board may not limit its consideration to the likelihood of confusion in the areas presently occupied by the parties. In Carl Karcher, the Board found that the opposer did not need to show a likelihood of confusion in areas outside of its own market area.141 However, in other matters the Board has belittled surveys for not including anyone in applicant’s trading area142 or for surveying consumers in geographic areas that were not representative of commerce generally.143

was over-inclusive to the extent that it included persons who indicated that it ‘may not be likely’ someone in their household would purchase a garage door opener in the next 2 or 3 years.”). 139. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *10 (T.T.A.B. Feb. 22, 2001) (“[W]e see no major problem with the universe . . . inasmuch as it included consumers most likely to purchase the parties’ products . . .”). 140. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *7 (T.T.A.B. June 25, 2012) (“[I]t ‘covered consumers of fruit or fruit-flavored drinks and fruit-flavored carbonated drinks,’ excluding those employed in fields which might give them ‘special knowledge or insight,’ and those ‘who had an immediate household member so employed’ . . .”). 141. Carl Karcher Enters., Inc. v. Stars Rests. Corp., 35 U.S.P.Q.2d 1125, 1133 (T.T.A.B. 1995) (“An opposer need not show a likelihood of confusion in areas outside of its own market area. Thus, there is no basis for the position that the survey should have been taken in applicant’s trading area as well as opposer’s.”). 142. Clear Choice Holdings LLC v. Implant Direct Int’l, 2013 WL 5402082, at *8 (T.T.A.B. Aug. 26, 2013) (“[R]ather than following the accepted approach of using a survey universe comprising potential consumers of applicant’s dental implant services, (footnote omitted) opposer’s survey was conducted among a sample of 150,000 customers who . . . did not live in the 19 markets (footnote omitted) where applicant offers its services.”). 143. Dynamark Corp. v. Weed Eaters, Inc., 207 U.S.P.Q. 1026, 1033 (T.T.A.B. 1980) (“These defects include the fact . . . that the survey was conducted in but two cities without any effort to determine whether there has been sufficient market interface between the parties in these cities so as to provide a representative story on a nationwide basis . . .”); Am. Home Prods. Corp. v. B.F. Ascher & Co., Inc., 166 U.S.P.Q. 61, 62 (T.T.A.B. 1970) (“It has not been shown . . . that the limitation to a single geographical area represents a good cross section.”), aff’d, 473 F.2d 903 (C.C.P.A. 1973); Revlon, Inc. v. La Maur, Inc., 157 U.S.P.Q. 602, 606 (T.T.A.B. 1968) (“[T]he sampling of persons only in Minneapolis, Minnesota is hardly indicative of what the situation may be ‘in commerce’ generally.”)

1172 Vol. 104 TMR

C. Representative Sample Probability and nonprobability methods may be used to select

the sample from the universe of possible respondents. However, if the sample of respondents is not representative of the universe from which it was selected, it will be accorded little weight.144 The number of respondents sampled must be large enough for the results to be reliable. The overall sample size for a survey will depend on the number of disputed marks tested and whether the survey includes any control groups. Surveys in Board proceedings often interview between 100 and 300 respondents about each mark or stimulus examined.145 In some instances, the Board has considered survey samples with fewer than 200 respondents to be small,146 and samples with fewer than 100 respondents routinely have been disfavored.147

144. iMedica Corp. v. Medica Health Plans, 2007 WL 1697344, at *5 (T.T.A.B. June 7, 2007) (“We also find that the survey results are questionable because the survey did not fairly sample the universe of possible respondents and is biased in MHP’s favor.”) and Am. Home Prods. Corp. v. B.F. Ascher & Co., Inc., 166 U.S.P.Q. 61 (T.T.A.B. 1970) (“[T]he persons to be interviewed were not chosen on the basis of a sampling technique but solely because they were known to opposer . . .”), aff’d, 473 F.2d 903 (C.C.P.A. 1973). 145. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *14 (T.T.A.B. July 23, 2013) (“Dr. Ford supervised . . . interviews: 270 in the test cell and 272 in the control cell.”); PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *7 (T.T.A.B. June 25, 2012) (“In total, 404 consumers participated in the survey . . . with 200 consumers participating in one of two ‘test cells’ and 204 consumers in one of two ‘control cells . . .’”); Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (“[S]urvey respondents in the test group (199 women age 18 and older from around the country) were shown a stimulus card . . .”); AVA Enters. Trading Co., Inc. v. Audio Boss USA, Inc., 77 U.S.P.Q.2d 1783, 1786 (T.T.A.B. 2006) (“A test group of 100 respondents [was] shown a card. . . . A control group of 100 respondents [was] shown a card . . .”). Note, the test group may include more respondents than the control group. See Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *7 (T.T.A.B. Sept. 22, 2008) (“The survey was taken of 296 individuals, 200 of whom were exposed to applicant’s mark with the remaining 96 persons comprising a control group that was exposed to the fictitious mark . . .”). 146. 7-Eleven, Inc. v. Morrison, 2008 WL 2385970, at *13 (T.T.A.B. June 2, 2008) (finding 162 survey respondents to be “small,” but according opposer’s survey some weight); Kohler Co. v. Kohler Homes, 2008 WL 4877069, at *9 (T.T.A.B. Nov. 4, 2008) (“[T]he number of actual respondents to the KOHLER HOMES and KOHLER ASSOCIATES ARCHITECTS surveys is small, i.e., 164 and 163, respectively.”). 147. Clear Choice Holdings LLC v. Implant Direct Int’l, 2013 WL 5402082, at *8 (T.T.A.B. Aug. 26, 2013) (finding 90 respondents for each mark tested to be “a small number”); Bridgestone/Firestone N. Am. Tire, LLC v. Silverstone Berhad, 2003 WL 1559659, at *4 (T.T.A.B. Mar. 2003) (characterizing 62 interviews as “anecdotal evidence” that did not lend themselves to statistical conclusions); iMedica Corp. v. Medica Health Plans, 2007 WL 1697344, at *4-*5 (T.T.A.B. June 7, 2007) (finding 57 respondents raised a question “as to the overall validity of the survey results”); Am. Home Prods. Corp. v. B.F. Ascher & Co., Inc., 166 U.S.P.Q. 61, 62 (T.T.A.B. 1970) (finding a survey of 25 pharmacists and doctors to be an insufficient sampling), aff’d, 473 F.2d 903 (C.C.P.A. 1973); Guardian Life Ins. Co. v. England, 2002 WL 31173415, at *3 (T.T.A.B. Sept. 2002) (finding it inappropriate to draw conclusions based on a survey with only three respondents).

Vol. 104 TMR 1173

D. The Survey Stimulus The primary difference between likelihood-of-confusion

surveys in trademark infringement actions and Board proceedings is the survey stimulus. A forward-confusion survey in a trademark infringement action exposes its respondents to the defendant’s product as it appears in the marketplace, whereas respondents in a forward-confusion survey in a Board proceeding are presented with the contested mark on a card or computer screen (along with a description of the applicant’s or registrant’s goods).148

Likelihood-of-confusion surveys in Board proceedings that do not show a word mark in standard character form or use a stimulus that includes elements not part of the mark to be registered (such as, by showing a word or design mark on a product or with a house mark that is not part of the mark to be registered) have been judged to have limited probative value.149

However, in a few instances the Board has credited an opposer’s survey that did not merely present the contested mark on a card or computer screen, presumably because showing the mark on a

148. Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (“Survey respondents . . . were shown a stimulus card which displayed ‘LEGSTICK’ in large letters above the words ‘HOSIERY, PANTYHOSE AND CLOTHING FOR MEN, WOMEN AND CHILDREN,’ which were displayed in smaller letters.”). 149. Meier’s Wine Cellars, Inc. v. Meyer Intellectual Props. Ltd., 2008 WL 902837, at *4 (T.T.A.B. Mar. 4, 2008) (“First, there is a problem with the stimulus, in that the survey respondents were shown respondent’s entire wine bottle, including the full label, rather than just the mark. The Board has held that surveys, such as respondent’s, which embellish the stimulus with features that are not directly involved in the determination of likelihood of confusion, have limited probative value.”); OMS Inves., Inc. v. Central Garden & Pet Co., 2006 WL 2066583, at *14 (T.T.A.B. July 10, 2006) (“We find the survey is flawed in that the stimulus used is one not suited for Board proceedings where the issue in question is registrability of the mark depicted in the drawing. Specifically, applicant showed respondents containers containing a variety of wording, shapes, colors and trade dress . . . [T]he marks at issue here were subordinated to other house marks and source indicators . . . Applicant’s mark is in standard character form, thus the stimulus should also have been in standard character form.”); Touch Tel Corp. v. AirTouch Commc’ns, 1999 WL 495944, at *10 n.12 (T.T.A.B. July 9, 1998) (“[C]riticisms relating to the desirability of testing for confusion on the basis of ‘block letter’ or plain capital marks . . . are well taken”); McDonough Power Equip., Inc. v. Weed Eater, Inc., 208 U.S.P.Q. 676, 685 (T.T.A.B. 1981) (“[T]he survey was not designed to test the issue herein involving ‘SNAPPER’ and ‘SNIPPY’, per se, for it introduced other features such as color and applicant’s principal house marks ‘WEED EATER’ and swirl design . . .”).

See also, Handelman, supra note 6, § 18.12[F] (“In evaluating likelihood of confusion, the Board confines its consideration to the specific mark set forth in the application or registration at issue. That is, in determining a party’s right to obtain or maintain a registration, the Board considers only the mark as set forth in the involved application or registration, not the context in which the mark is used . . . . The survey stimulus should isolate the mark for which registration is sought, focusing the respondents’ attention on that which is relevant to the Board’s decision.”).

1174 Vol. 104 TMR product or in context did not bias the survey results in opposer’s favor.150

The mark to be registered should be shown in its entirety (not just the portion of the mark considered to be confusingly similar to the plaintiff’s mark),151 and the mark must be presented with a description of the goods or services for which it is used.152 If multiple marks are contested, a party has to decide how many of the disputed marks to test, because the Board has held that a survey concerning one mark may not be probative regarding another mark.153

E. The Need for a Control As in a trademark infringement action, a confusion survey in a

Board proceeding may be maligned for not having a control group to determine whether confusion in the test group is a result of

150. In Duke Univ. v. Haggar Clothing Co. (2003 WL 22022075, at *4 (T.T.A.B. Aug. 21, 2003)), the Board found that it was not improper for opposer’s survey to present applicant’s mark (DUKE AMERICA) in block letters on the type of t-shirt on which opposer used its own DUKE family of marks because applicant’s goods encompassed the same shirts; in Anheuser-Busch, Inc. v. The Florists Assoc. of Greater Cleveland, Inc. (29 U.S.P.Q.2d 1146, 1151 (T.T.A.B. 1993)), the Board credited the opposer’s survey even though the survey stimuli consisted of one of the applicant’s television commercials and a newspaper advertisement that included the mark the applicant sought to register (THIS BUD’S FOR YOU) in connection with fresh-cut flowers and plants. 151. Rolex Watch USA, Inc. v. PRL USA Holdings, Inc., 2012 WL 2588574, at *7 (T.T.A.B. June 7, 2012) (“Finally, the survey, reporting consumer perception of opposer as the source of RLX watches at 61 percent, is certainly strong evidence as to the term RLX by itself, but in the context of the entirety of the marks in issue [which also included the house mark RALPH LAUREN], we find it to be of minimal probative value.”); Am. Home Prods. Corp. v. B. F. Ascher & Co., Inc., 166 U.S.P.Q. 61, 62 (T.T.A.B. 1970) (“The persons interviewed were shown a package bearing not the designation[s] sought to be registered [which were AYR TAB and AYR, ASCHER] but the mark “AYR.”), aff’d, 473 F.2d 903 (C.C.P.A. 1973). 152. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“Moreover, the questions were intended to elicit information bearing on the similarity in appearance between the logo marks of the parties without regard to the respective services rendered under the marks.”). 153. Chanel Inc. v. Mauriello, 2010 WL 3873650, at *12 (T.T.A.B. Sept. 20, 2010) (“While the survey has probative weight as to likely confusion with regard to that specific mark and goods, we reject plaintiff’s attempt to extend the relevance of that survey to plaintiff’s other marks and goods.”). See also Rolex Watch USA, Inc. v. PRL USA Holdings, Inc. (2012 WL 2588574, at *2 (T.T.A.B. June 7, 2012)), where the opposer’s RLX survey was conducted at a time in the proceedings when the marks at issue included RLX, RLX RALPH LAUREN and RALPH LAUREN RLX but the applicant had withdrawn its application for RLX at the time of the decision.

Vol. 104 TMR 1175 trademark-relevant issues154 or for using an improper control stimulus (such as a mark that is too similar to plaintiff’s mark).155

F. Non-Leading Questions Regardless of the venue, questions in a likelihood-of-confusion

survey should not be vague,156 difficult to understand,157 leading,158 or framed as a legal conclusion.159 The introduction to a survey and the screening questions (the questions that determine whether a respondent is a relevant consumer) ought to be carefully framed to ensure that they do not bias responses to later questions in a survey.160

154. Pita Jungle—Tempe, Inc. v. Pita Pal Foods, LP, 2014 WL 3752423, at *8 (T.T.A.B. July 24, 2014) (“[T]he survey did not include a ‘control,’ i.e., the survey was not divided into a ‘test cell’ and a ‘control cell.’”). 155. Sara Lee Corp. v. Kayser-Roth Corp., 2004 WL 587127, at *23 (T.T.A.B. Mar. 19, 2004) (“It does appear to us . . . that SHEER INDULGENCE, SHEER GLAMOUR and SHEER CONTROL may not be the best control marks, because of their possible interaction with opposer’s marks and opposer’s use of ‘Control,’ albeit descriptively or generically, but nevertheless as the leader in the sheer pantyhose market.”) 156. Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9-*10 (T.T.A.B. Mar. 23, 2004) (“[T]he critical question on which petitioner relies . . . simply asks what company an individual started. It does not use the trade name petitioner has pled ‘Longevity’ . . . Because of the . . . vagueness of the question, among other things, this survey offers little support for petitioner.”). 157. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“[T]he questions . . . raise an issue as to whether interviewees actually understood what was being asked.”). 158. Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (finding applicant’s survey questions were leading because they were designed to elicit certain responses); Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321, 1334 (T.T.A.B. 1992) (finding the initial inquiry to the respondents was indeed a leading question in that it clearly indicated the direction that the responses would be expected to go); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437-38 (T.T.A.B. 1993) (finding the survey questions in both parties’ surveys to be leading because they suggested their own answers). 159. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“The questions are also framed as legal conclusions . . .”). 160. In re Oversee.net, 2011 WL 1495448, at *5 (T.T.A.B. Mar. 28, 2011) (“[W]e find that it [the survey] is compromised by the initial statement to the survey participants.”); Monaco Coach Corp. v. Mitsubishi Motors N. Am., Inc., 2008 WL 3917511, at *15 (T.T.A.B. Aug. 11, 2008), vacated Int’l Truck Intellectual Property Co., LLC v. Mitsubishi Motors N. Am., Inc., 2009 WL 4085627 (T.T.A.B. Aug. 24, 2009) (“[T]he survey has another flaw which entitles it to little probative value . . . [T]he screening question would have an effect on the survey respondent’s view of what constituted a ‘motor vehicle’ for purposes of the survey.”); Helene Curtis Indus., Inc. v. Suave Shoe Corp., 13 U.S.P.Q.2d 1618, 1626 (T.T.A.B. 1989) (“We think that an argument can be made . . . that defendant’s screening question biased defendant’s survey results in that respondents were already thinking in terms of personal care products (thus, more willing to say ‘yes’ to confusion between such products but ‘no’ as to other, nonpersonal care products) when the interviewer posed the crucial likelihood of confusion question.”).

1176 Vol. 104 TMR

G. Data Collection Methods Likelihood-of-confusion surveys typically are double-blind

(neither the respondents nor the persons administering the survey are informed of the sponsors or litigation purpose of the survey).161 Except for the survey stimulus, likelihood-of-confusion surveys in Board proceedings employ the same data collection methods as likelihood-of-confusion surveys in trademark infringement actions. To encourage cooperation with a survey, it is permissible to compensate survey respondents by paying them a small amount of money for their participation.162

Even though mall intercept surveys are not probability samples, they have been routinely accepted by the Board.163 In a survey in which respondents are presented only with the contested mark (such as in an Eveready survey), the Board has found it appropriate to leave the stimulus in view during questioning.164 161. Usually the survey expert is not “blind” as to the party that retained him/her or to the disputed issues in a matter. However, the persons who conduct the interviews for a survey ought not to be informed of the sponsors or litigation purpose of the survey. The surveys in the following cases were discredited, in part, either because the interviewer(s) and/or the survey respondents were aware of the sponsors or litigation purpose of the survey: Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“[S]everal of the responses contain information regarding this opposition proceeding . . .”); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“Lastly, Dr. Inwald, as the interviewer, was hardly an unbiased individual, but rather was intimately aware of this litigation and the purposes for which the questionnaire was to be used. It is quite possible that Dr. Inwald subtly (or not so subtly) influenced the respondents’ answers.”); McDonough Power Equip., Inc. v. Weed Eater, Inc., 208 U.S.P.Q. 676, 684-85 (T.T.A.B. 1981) (“[T]he most significant flaws are . . . the fact that Dr. Staples undertook the operation of the entire survey from start to finish, knowing full well the identity of the client and the purpose of the study.”); Dynamark Corp. v. Weed Eaters, Inc., 207 U.S.P.Q. 1026, 1033 (T.T.A.B. 1980) (“These defects include the fact that the formulator of the survey, who was obviously aware of the purpose of the survey, was also the interviewer and tabulator of the results, which raises a question, whether real or not, as to the objectivity of the recordation of the answers and of the tallies . . .”). 162. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *2 and *8 (T.T.A.B. June 25, 2012) (rejecting applicant’s contention that opposer’s survey should be given no weight because survey participants were offered $2.00 to participate in the survey). 163. PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012) (finding opposer’s “mall intercept” survey method was admissible and credible); Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *12 (T.T.A.B. Apr. 28, 2011) (finding opposer’s shopping mall survey was “proper, probative and even compelling”); Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *9 (T.T.A.B. Sept. 22, 2008) (finding opposer’s shopping mall intercept survey “reliable” and “probative” on the issue of likelihood of confusion); Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (finding opposer’s shopping mall intercept survey supported a finding of likelihood of confusion); Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 (T.T.A.B. 2006) (finding opposer’s mall intercept survey was reliable); Duke Univ. v. Haggar Clothing Co., 2003 WL 22022075, at *2 (T.T.A.B. Aug. 21, 2003) (finding opposer’s survey employed “standard mall intercept methodology.”); Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1458 (T.T.A.B. 1986) (finding the choice of large shopping centers rendered unnecessary more elaborate random selection procedures). 164. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171 at *11 (T.T.A.B. Apr. 28, 2011) (“Although applicant criticizes Dr. Ford for making the word ‘cosmetic’

Vol. 104 TMR 1177 The Board has characterized surveys that have asked questions after removing the stimulus from the respondent’s view as “memory based” or a “memory test.”165 However, the Board also has derided surveys for allowing the respondent the opportunity to view both parties’ marks simultaneously because “consumers do not necessarily have the luxury of making side-by-side comparisons between marks.”166

Although it would seem obvious, surveys concerning design marks typically cannot be conducted over the telephone.167 It sometimes is acceptable to administer a likelihood-of confusion survey regarding a word mark over the telephone (for example, by reading the contested mark to respondents, as well as a description of defendant’s goods);168 however, a telephone survey can prove problematic when the pronunciation of a word mark is an issue, such as for a non-English mark. If a survey is conducted telephonically, the survey expert must ensure that interviewers correctly pronounce the contested mark at the very least.169 Indeed, it may also be advisable for interviewers to spell the mark for respondents.170

continuously visible on the stimulus card to the interviewee, we note that opposer’s survey expert merely adopted verbatim applicant’s recitation of services. This is entirely consistent with Board practice and the progeny of the Ever-Ready decision over more than three decades.”). 165. U S West, Inc. v. Hatten Commc’ns Holding Co., Inc., 2002 WL 31154808, at *7 (T.T.A.B. Sept. 25, 2002) (“At the outset, we note that all four questions . . . are in effect a test of the respondent’s memory in that the cards bearing the marks US WEST and US EAST were removed from the respondent’s view prior to the questions being posed.”); Coty US Inc. v. Frontier Coop. Herbs, 2002 WL 140060, at *8 (T.T.A.B. Feb. 1, 2002) (“Among other things, we note . . . that the survey involved, in our view, too much of a memory test that may have led to guessing on the part of the survey respondents.”). 166. In re Dimitric, 2011 WL 810218, at *2 (T.T.A.B. Feb. 7, 2011) (“[T]he first question . . . would have the respondents make what is essentially a side-by-side comparison of the marks. . . . It is a well-settled principle of trademark law that under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks . . .”). 167. Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1438 (T.T.A.B. 1993) (“We recognize that surveys taken by telephone can be, in appropriate circumstances, inherently reliable. However, in this case, given that the marks at issue are design marks which have a substantially similar appearance, much validity was lost when the survey was conducted by telephone.”). 168. McDonald’s Corp. v. McKinley, 13 U.S.P.Q.2d 1895, 1900 at n.8 (T.T.A.B. 1989) (“Applicant objected to the survey on the ground that since this was a telephone survey, the respondents could not see the bear or its manner of dress . . . [H]ow the bear was dressed has no relevance, as previously noted, because applicant has applied to register the mark for teddy bears, in general.”). 169. McCarney v. Una Mas, Inc., 2004 WL 240310, at *7 (T.T.A.B. Feb. 5, 2004) (“[T]he interviewers were instructed to pronounce the common word in the mark ‘mas’ as ‘moss,’ which is somewhat different from the Spanish pronunciation . . .”). 170. McDonald’s Corp. v. McKinley, 13 U.S.P.Q.2d 1895, 1900 at n.8 (T.T.A.B. 1989) (“[I]t does not matter how MCTEDDY was pronounced since the name was spelled out for each respondent who could then make an independent decision as to its pronunciation . . .”).

1178 Vol. 104 TMR

A likelihood-of-confusion survey may be conducted by interviewers (such as in a mall and telephone survey), or it may be self-administered over the Internet.171 If interviewers administer a survey, they ought to use a standardized questionnaire. Interviewers also require written instructions, proper training, and appropriate supervision to make certain the survey is conducted in a systematic manner.172 Self-administered surveys (such as Internet surveys) frequently ask their respondents to agree to answer the survey questions without assistance from anyone else or referring to other materials.173

H. Analysis of Survey Results Not only should a likelihood-of-confusion survey be based on

established or recognized survey techniques,174 but it also must be properly analyzed.175 Like federal courts, the Board finds likelihood of confusion when a “substantial” or “appreciable” number of consumers are likely to be confused.176 However, as the Board has opined “the level of confusion found to support a determination of likely confusion varies from case to case”177 and “percentages may be deceiving since the probative value of results must be considered in light of an evaluation of the survey itself.”178

171. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *13 (T.T.A.B. July 23, 2013) (“The likelihood of confusion survey was an email survey.”). 172. Am. Home Prods. Corp. v. B.F. Ascher & Co., Inc., 166 U.S.P.Q. 61, 62 (T.T.A.B. 1970) (“[A]lthough the interviewer was supposed to show three packages, she showed only one, contrary to written instructions.”), aff’d, 473 F.2d 903 (C.C.P.A. 1973). 173. Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *13 (T.T.A.B. July 23, 2013) (“The respondents who qualified for the likelihood of confusion survey . . . agreed to answer the survey questions themselves without any assistance . . .”). 174. Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“Surveys and customer questionnaires are admissible, if they are pertinent to the inquiry, upon a showing that the poll is reliable and was compiled in accordance with accepted survey methods.”); Missiontrek Ltd. Co. v. Onfolio, Inc., 80 U.S.P.Q.2d 1381, 1384 (T.T.A.B. 2005) (“We observe, too, that the survey, at a minimum, is not based on established or recognized survey techniques . . .”), aff’d, 208 Fed. Appx. 858 (Fed. Cir. 2006); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“[T]he questionnaire was not prepared or conducted ‘in accordance with generally acceptable standards of survey techniques.’”). 175. Missiontrek Ltd. Co. v. Onfolio, Inc., 80 U.S.P.Q.2d 1381, 1384 (T.T.A.B. 2005) (“We observe, too, that the survey . . . was not analyzed in any statistically meaningful way.”), aff’d, 208 Fed. Appx. 858 (Fed. Cir. 2006). 176. Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *10 (T.T.A.B. Apr. 28, 2011) (“In understanding the relevance of a particular percentage, courts and the Board find likelihood of confusion when a “substantial” or “appreciable” number of consumers are likely to be confused.”). 177. McNeil-PPC, Inc. v. Walgreen Co., 2013 WL 223400, at *8 (T.T.A.B. Jan. 22, 2013). 178. Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1457 (T.T.A.B. 1986).

Vol. 104 TMR 1179

I. Percentages of Confusion It is also difficult to compare confusion percentages, because

they are not always calculated in the same manner. Often confusion percentages group responses across questions (i.e., they reflect the percentage of all respondents who expressed any type of confusion, such as source, affiliation, or sponsorship confusion).179 However, some reported percentages reflect the amount of confusion in the test group, whereas others concern the amount of net confusion (the confusion in the test group after subtracting the amount of confusion in the control group). Nevertheless, in a properly conducted survey, confusion levels above 10% have supported the plaintiffs’ claims of likelihood of confusion.180

179. Id. at 1461 (“[W]e do not agree that responses may not be grouped in interpreting the tabulated responses to question numbers 2 and 3. Thus, an ‘I don’t know’ response to question number 2, followed by an unequivocal ONE-A-DAY response to question number 3 is just as probative of the likelihood of confusion since such a respondent’s lack of knowledge of actual source does not in the least reduce the probative value of the ONE A DAY response to the question of what other products or brands are put out by the same company that puts out VIT-A-DAY.”). 180. In the following matters, survey percentages of one-third or more supported the conclusion that confusion was likely: Carl Karcher Enters. Inc. v. Stars Rests. Corp., 35 U.S.P.Q.2d 1125, 1132 (T.T.A.B. 1995) (crediting surveys with confusion percentages of 69.8% and 53.7%); AVA Enters. Trading Co., Inc. v. Audio Boss USA, Inc., 77 U.S.P.Q.2d 1783, 1787 (T.T.A.B. 2006) (finding a 57% result for the test group to be “strongly probative” of confusion); Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1753 (T.T.A.B. 2006) (crediting a survey in which “almost half” of survey respondents were confused); PepsiCo, Inc. v. Pirincci, 2012 WL 2930650, at *8 (T.T.A.B. June 25, 2012) (opining that 47.8% “net confusion” weighed in favor of a finding of likelihood of confusion); Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., 2008 WL 4674603, at *9 (T.T.A.B. Sept. 22, 2008) (finding “net confusion” of 43% to be “significant” and to weigh in opposer’s favor); Clinique Labs. LLC v. Absolute Dental, LLC, 2011 WL 1652171, at *10 (T.T.A.B. Apr. 28, 2011) (finding 36% “net confusion” represented “a substantial number” of confused consumers); Facebook, Inc. v. Think Computer Corp., 2013 WL 4397052, at *15 (T.T.A.B. July 23, 2013) (finding a survey with a 36.2% “net confusion” level supported a finding that there will be a likelihood of confusion).

Survey percentages between 11% and 21% were found to be evidence of confusion in the following matters: Sara Lee Corp. v. Goldstone Hosiery Co., 2001 WL 253616, at *9-*10 (T.T.A.B. Feb. 22, 2001) (finding a survey with 21% confusion, after accounting for noise, buttressed the Board’s conclusion that confusion was likely); 7-Eleven, Inc. v. Morrison, 2008 WL 2385970, at *13 (T.T.A.B. June 2, 2008) (finding opposer’s survey that demonstrated at least 19% confusion was entitled to some weight); Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1462 (T.T.A.B. 1986) (finding that 18.1% was “well within the range of percentages” accepted as probative of confusion); Sara Lee Corp. v. Mahmoud, 2007 WL 4663353, at *5 (T.T.A.B. Dec. 27, 2007) (opining that 17.7% was “well within the range” of percentages found in other cases to be sufficient to support a finding of likelihood of confusion); iMedica Corp. v. Medica Health Plans, 2007 WL 1697344, at *15 (T.T.A.B. June 7, 2007) (finding 14% reinforced petitioner’s position that there was a likelihood of confusion); Blue Cross and Blue Shield Assoc. v. Harvard Cmty. Health Plan, Inc., 17 U.S.P.Q.2d 1075, 1078 (T.T.A.B. 1990) (finding applicant’s own marketing survey in which 14% identified opposer as the source of the slogan applicant sought to register was evidence of actual confusion); Sara Lee Corp. v. Kayser-Roth Corp., 2004 WL 587127, at *23 (T.T.A.B. Mar. 19, 2004) (finding surveys with appropriate control marks that showed “some level of confusion above 10%” supported a confusion finding).

1180 Vol. 104 TMR Confusion levels below 10% have not, for the most part, been indicative of significant consumer confusion,181 although there are notable exceptions.182

J. Survey Expert and Expert Report Regardless of the format used, a survey not designed or

administered by someone with background and training in consumer surveys may be entitled to little, if any, weight.183

A survey expert should disclose the following information about a survey, among other things: the sponsor of the study, the wording of the survey questions, the definition of the survey population and the approach used to identify and sample from this population, the data collection methods (including interviewing dates), the overall sample size (and the number of interviews included in each of the analyses). 184

An expert also ought to provide the verbatim responses for any open-ended questions (or make them available for inspection) and not just statistical summaries. If the Board is not provided with

Nonetheless, in Coty US Inc. v. Frontier Coop. Herbs (2002 WL 140060, at *4 and *8 (T.T.A.B. Feb. 1, 2002)), the Board found 16% net confusion to be “not great.” 181. Helene Curtis Indus., Inc. v. Suave Shoe Corp., 13 U.S.P.Q.2d 1618, 1626 (T.T.A.B. 1989) (“There is little doubt that, when compared to survey results considered as evidence in other cases involving likelihood of confusion, a 7.6 percent level of confusion is not very significant. Surveys disclosing likelihood of confusion ranging from 11 percent to 25 percent have been found significant.”). 182. McNeil-PPC, Inc. v. Walgreen Co., 2013 WL 223400, at *8 (T.T.A.B. Jan. 22, 2013) (“Even a survey report indicating only 8.5 percent of respondents to be confused was considered to support a finding of likelihood of confusion.”); Chanel, Inc. v. Mauriello, 2010 WL 3873650, at *12 (T.T.A.B. Sept. 20, 2010) (“[E]ven if we were to subscribe to defendant’s calculations which reduces the survey result to 9% being confused, this percentage has been recognized by courts as supporting a finding of likelihood of confusion.”). 183. Pita Jungle—Tempe, Inc. v. Pita Pal Foods, LP, 2014 WL 3752423, at *8 (T.T.A.B. July 24, 2014) (“[T]he extent of Mr. Hernandez’s experience with trademark surveys is unclear, and his qualifications do not suggest expertise in trademark matters.”); Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“There is no evidence that the ‘survey’ was made with the assistance of a survey professional . . .”); Longevity Network, Ltd. v. Wallach, 2004 WL 624574, at *9 (T.T.A.B. Mar. 23, 2004) (“We agree with the respondent to the extent that we can give the survey little, if any, weight . . . The witness indicated that he had no training or background in developing consumer surveys in likelihood of confusion cases.”); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 U.S.P.Q.2d 1423, 1437 (T.T.A.B. 1993) (“Both Dr. Inwald and Mr. Lee readily concede that they are not experts in conducting or administering surveys for trademark litigation . . .”). 184. Standards for Disclosure, American Association for Public Opinion Research (AAPOR) Code of Professional Ethics and Practices (May 2010) at www.aapor.org (accessed 10/8/14); Responsibilities in Reporting to the Client and Public, Council of American Survey Research Organizations (CASRO) Code of Standards and Ethics for Survey Research (August 2014) at www.casro.org (accessed 10/8/14).

Vol. 104 TMR 1181 adequate information about the methods used to conduct a survey, it may disregard the survey. 185

VI. CONCLUSION The probative value of a likelihood-of-confusion survey in a

Board proceeding almost always will be hotly contested.186 As the Board opined, “Survey evidence is often controversial, if only because there are so many factors to be considered in determining the weight to be given to this type of evidence.”187 The most commonly accepted format for likelihood-of-confusion surveys is the Eveready format. However, even an Eveready survey may be entitled to little weight if not properly executed. Although Squirt surveys have been credited in Board proceedings, this is a relatively rare occurrence.

When surveys have been offered, they have been more successful at proving than disproving confusion. In the majority of cases in which a plaintiff has submitted a likelihood-of-confusion survey, the plaintiff has prevailed;188 conversely, in the majority of cases in which a defendant has set forth a survey to demonstrate that confusion is unlikely, the defendant has not succeeded. Defendants’ surveys have been criticized more often than plaintiffs’ surveys for errors in design and execution (such as for surveying an improper universe, asking leading questions, and using an inappropriate stimulus). Additionally, a plaintiff’s survey may be probative even if it demonstrates that only one form of forward confusion is likely (such as source confusion), whereas a defendant’s survey will be faulted if it does not measure the full potential for confusion.

185. iMedica Corp. v. Medica Health Plans, 2007 WL 1697344, at *6 (T.T.A.B. June 7, 2007) (“[W]e do consider that there is no evidence about the reasonableness of the methodology . . . for determining whether the results of the 1997 survey are sufficiently reliable . . .”); Black Dog Tavern Co., Inc. v. Frechette, 2006 WL 3472710, at *5 (T.T.A.B. Nov. 14, 2006) (“The record does not identify what other information applicant provided her customers prior to answering the questions.”); Guardian Life Ins. Co. of Am. v. England, 2002 WL 31173415, at *3 (T.T.A.B. Sept. 26, 2002) (“[T]here is not sufficient information about the overall methodology or execution to even begin to apply the criteria for judging surveys . . .”); Hewlett-Packard Co. v. HopOne Internet Corp., 2001 WL 1382015, at *1 n.2 (T.T.A.B. Nov. 2, 2001) (“[A]pplicant’s unsupported and undocumented survey evidence is not proof of anything . . .”). 186. Helene Curtis Indus., Inc. v. Suave Shoe Corp., 13 U.S.P.Q.2d 1618, 1625-1626 (T.T.A.B. 1989) (“As is the case in most instances when surveys are introduced as evidence in litigation, each party has raised a multitude of objections and perceived flaws regarding its adversary’s survey.”). 187. Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321, 1334 (T.T.A.B. 1992). 188. This includes matters in which a plaintiff has prevailed in spite of the weaknesses of its survey.

1182 Vol. 104 TMR

According to one legal scholar, “Consumer surveys are playing an increasingly important role in trademark disputes.”189 Even though they are not required to prove (or disprove) likelihood-of-confusion, surveys will continue to be advanced in Board proceedings. At a minimum, a party to a Board proceeding ought to be familiar with accepted formats for likelihood-of-confusion surveys and be prepared to critically evaluate the opposing party’s survey, if there is one.

189. Handelman, supra note 6, § 18.01.