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INTA Bulletin

February 1, 2018 Vol. 73 No. 2 Back to Bulletin Main Page

UNITED STATES: Consumer Survey Fails Reliability Test and Results in Dismantling of Massive Verdict

In vacating a jury’s award of almost $54 million based on a finding of willful trademark and trade dress infringement, an Illinois federal district court granted the defendants’ motion for a new trial, finding the trial “fundamentally unfair due to the admission of unreliable and prejudicial expert testimony.” The Black & Decker Corporation et al v. Positec USA Inc., No. 1:2011cv05426 (N.D. Ill. Sept. 11, 2017).

After losing at trial, the defendants filed multiple post-trial motions. The defendants argued that the jury’s damages award was excessive, the verdict was against the great weight of the evidence, and the trial was fundamentally unfair owing to the consumer survey and testimony admitted.

At trial, the plaintiffs alleged the defendants infringed their intellectual property rights by selling power tools and accessories that used the plaintiffs’ “family” of yellow and black registered trademarks and trade dress. The court examined a consumer likelihood of confusion survey. The survey participants were shown a photograph of two rows of boxed power tools in which all products depicted were the plaintiffs’ DeWalt products, save one, which was a Rockwell product sold by the defendants. The participants were then asked if they believed that all products featured in the photograph were offered by one company, and 47 percent of participants said they did. At trial, the defendants moved to exclude the survey evidence based on Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 US 579 (1993), but the motion was denied.

In holding that the defendants were entitled to a new trial, the court explained, “this is one of those unusual instances in which a proffered consumer survey was ‘so informally designed and conducted that it fails key tests of professionalism and reliability,’ and therefore should have been excluded from trial.” Citing J. Thomas McCarthy, 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:158 (4th ed. 1999). Further, the court noted the expert had acknowledged at trial that the survey was designed to test whether its participants “could be induced to ‘overlook the obvious’ through the placement of Defendants’ product amidst boxes of Plaintiffs’ products,” and which, the court noted the plaintiffs could not show actually mirrored any real setting in which consumers would encounter either the parties’ respective trademark or trade dress in commerce. For these reasons, the court found that the survey was unreliable.

Regarding the defendants’ motion for judgment notwithstanding the verdict, the district court found that a rational jury could find that the defendants’ use of the yellow and black color scheme could create a likelihood of confusion, that the defendants’ prior knowledge of the plaintiffs’ trademarks and trade dress could establish their intent to cause confusion, and that the defendants’ extensive advertising and promotional activities could also contribute to a likelihood of confusion, among other similar findings. Consequently, the defendants’ motion was denied.

In sum, the flawed survey was “the linchpin of Plaintiffs’ case on likelihood of confusion” and no evidence of actual confusion was presented; thus, the court concluded that the survey and accompanying testimony most likely “unfairly influenced the jury’s verdict.”

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
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