Creativity- Key To Executing Toughest IP Surveys

By James T. Berger

Favorable research results are generally possible in even the most challenging intellectual property litigation surveys if the attorney is willing to take a broad view of the problem and the marketplace and keep an open mind to the survey expert’s creative approaches. Even in what looks like an impossible task based on the facts of the case or complaint, survey approaches can materialize by looking beyond the legal issues and focusing on the marketing issues. By using this approach, the realities of the market can totally overshadow what may appear to be an airtight legal case.

 Here are some examples.

Two hostile companies selling the same type of commodity industrial products were locked in a bitter dispute with the plaintiff filing a suit alleging a “truth in advertising” violation. The plaintiff said the defendant was making false claims about the insulating ability of the defendant’s products. The dispute focused on test results where one of the parties alleged a higher degree of insulating capability based on laboratory test results. However, the laboratory conditions did not simulate real world conditions. When the expert examined the realities of the market, he found that buyers of the product were not interested in insulating ability. Moreover, the expert discovered that no buyer used the product under the conditions used in the lab tests. In fact, virtually all the buyers were most interested in price and availability for this commodity product. Thus the claims and counterclaims by both parties had no relevance to the real issue — the attempt by one party to accomplish in the legal environment what it couldn’t accomplish in the competitive marketplace. Two surveys were done in the case. One survey asked distributors to examine product labels while the other survey questioned both distributors and end users about what they were looking for when they went to purchase a product. The latter survey was far more relevant to the marketplace issues in the case and led to a settlement favorable to the defendant.

In another case, a toymaker with a line of collectable model cars wanted to prove likelihood of confusion. The problem was the alleged infringing mark was one of three or four brand designations printed on the package. How then do you prove whether that designation is a “brand” or a “common name?” The solution was to take a famous telephone survey protocol and adapt it to the mall intercept environment. This also enabled the opportunity to present an unusual spelling of the brand name. The protocol is the well-known “Teflon test.”

When used in telephone interviews, this test guides the interviewee through a process where a number of well know common and brand names are first presented such as Jello, aspirin, Coke, refrigerator, etc. Next, the interviewee is given names relevant to the product category and asked if such names are “common” or “brand names.” In the shopping mall research centers, the interviewer used flash cards to present the product names in both the first and second parts of the survey. The results proved the plaintiff’s brand was identified by a significant portion of survey respondents as a “brand” name.

A third example deals with a case in which the plaintiff alleged that the defendant was creating confusion through the use of a “sponsored” site on an Internet search engines. Respondents were selected on the basis of age and experience with using the computer for searching on the Internet. The interviewees were initially shown a color photocopy of the first page of a Google search with the sponsored sites shown on the page. Next, the interviewee was asked to take one of the Web Site designations, open up the site and look through the site.

When that was completed, questions were asked. Next, the same thing was done to another site. Finally, after this process had been completed, the interviewee was asked if he/she believed that the defendant’s “sponsored” site was in fact sponsored, associated, etc. with the plaintiff’s site, and the results showed overwhelmingly that the defendant was creating confusion.

A final example focuses on a product category where brand names are not recognized.

The plaintiff produced a product with a unique design and the defendant in fact “knocked off” the product. However, the plaintiff alleged that its product, through its unique design, had acquired “secondary meaning.” Since the marketplace was unable to recognize brand names for the product category, it was virtually impossible to prove secondary meaning.

The defendant did a mall intercept survey showing a display that included the plaintiff’s products as well as competitive products. Interviewees were shown all the products and asked the name of the product and who made the product. As a “control,” one of the products on display had, in fact, a highly recognizable look. The research conclusively proved the plaintiff’s product was not recognized by the marketplace by its product name or by the name of the maker of the product. Therefore, the plaintiff was unable to prove secondary meaning.

There are all examples of “non-cookie-cutter” research that requires both creativity and an understanding of the dynamics of the market on the part of the survey expert.

Not only is this research valid, its methodology is so obvious that any judge or jury could easily understand what was attempted to be proved. For that reason, all of these cases settled before trial and the results were favorable to the parties using these creative research techniques.

Reprinted from
INTELLECTUAL PROPERTY TODAY
July, 2005

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