Likelihood of confusion surveys often play a significant role in trademark litigation. The predominant survey formats acceptable to U.S. courts are the Eveready and Squirt tests. The question, then, is which one you should use.
The Eveready Test
The Eveready test was first set forth in Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 385-88 (7th Cir. 1976). Under the Eveready test, the surveyor puts the defendant’s products in front of the survey respondents and asks questions to elicit whether they believe the defendant’s products are the plaintiff’s or are falsely associated with the plaintiff. Under the Eveready test, there is no side-by-side comparison. There is no need to show the plaintiff’s product because that could detract from the strength of the survey results. If your survey results show that some percentage—the courts differ on the requisite percentage, with some finding confusion with as little as 10 percent—of the respondents having reviewed the defendant’s products state that they believe that the item either is the plaintiff’s or is endorsed by or associated with the plaintiff, then likelihood of confusion appears all but inevitable. Because the survey respondents never see the plaintiff’s products, any results showing a false connection or association—assuming proper survey controls—are said to be probative evidence of a likelihood of confusion as to the true source of the product.
The Squirt Test
The Squirt test was first set forth in Squirtco v. Seven-Up Co., 628 F.2d 1086, 1089 n.4 (8th Cir. 1980). Under the Squirt test, the defendant’s and plaintiff’s products are placed side by side and questions are asked in order to elicit whether source confusion exists in the mind of the survey respondent. Naturally, there is the possibility of getting some level of false positives or survey “noise” given human nature and the preternatural need to connect things or look for associations. However, if the products are not found in close proximity to one another in the marketplace, using Squirt is a mistake. Such survey results justifiably will be challenged, as the survey would not be considered an accurate reflection of marketplace realities.
With this background in mind, you can quickly deduce that if you are the plaintiff and have a weak mark, Eveready is not the test to use. Therefore, it is incumbent upon the plaintiff’s attorney to realistically gauge the strength of the mark in question. A mark may well be inherently distinctive but not be a particularly strong mark because of lack of recognition in the marketplace. One way to measure the mark’s strength is to conduct a quick pilot, or test, survey. With these results you can then discuss with your client and survey expert what survey method would prove most advantageous from your client’s perspective. Examination of a few scenarios will prove instructive.
(1) The plaintiff believes it has a strong mark and the defendant’s products are found side by side with or in close proximity to the plaintiff’s products.
This is the quintessential Eveready situation, and the plaintiff should use the Eveready test. From the defendant’s perspective, Eveready would also be the test of choice because a Squirt test could be expected to lead to an even higher survey incidence of source confusion.
(2) The plaintiff believes it has a strong mark but the defendant’s products are not found side by side with or in close proximity to the plaintiff’s products.
Eveready would be the only choice in this scenario for both the plaintiff and the defendant. As the products are not found side by side or in close proximity, Squirt’s methodology is irrelevant.
(3) The plaintiff has a mark of moderate strength and the defendant’s products are found side by side with or in close proximity to the plaintiff’s products.
This factual scenario is where most trademark fact patterns fall. The plaintiff believes its mark to be a bit stronger than it actually is, and the defendant assumes the mark to be weaker than it actually is. A litigant should not rely on pride but rather on an analytical assessment of what the logical outcome of a survey’s results would be. One can use an undocumented pilot survey that is discussed with the survey expert or a simple internal survey within the company in order to ascertain what would be the actual real-world survey results under either method.
Another salient issue to consider is the actual allegations in the complaint. If the complaint alleges dilution or that the plaintiff’s mark is well recognized, the defendant should utilize the Eveready test. Early survey results under this test supplied to the plaintiff showing only minimal confusion are very probative and may lead to an early settlement favorable to the defendant.
(4) The plaintiff’s mark is of moderate strength and the defendant’s products are not found side by side with or in close proximity to the plaintiff’s products.
Eveready would once again be the test of choice here, given that the products are not found side by side or in close proximity.
(5) The plaintiff has a weak mark and the defendant’s products are found side by side with or in close proximity to the plaintiff’s products.
This is the quintessential Squirt model. The plaintiff does not want to make the mistake of exaggerating how strong or well recognized its mark is. If it does so, it provides the defendant with the opportunity to choose the Eveready test for its survey, which may well prove dispositive of no source confusion. As a result, if your case falls within this fact pattern, the plaintiff should not provide the defendant with the ammunition needed to derail its case by hyping how well recognized its mark is or throwing in a dilution claim unless it is factually justified. The defendant should pounce on the plaintiff’s hubris. The defendant’s successful use of Eveready in this context would likely prove dispositive.
(6) The plaintiff has a weak mark and the defendant’s products are not found side by side with or in close proximity to the plaintiff’s products.
This scenario is the death knell to all plaintiffs. The plaintiff will not be able to use Squirt because the products are not found side by side or in close proximity and therefore will be forced to use Eveready. The plaintiff’s attorney and its survey expert should explain to the plaintiff what the logical results of the survey would be. The plaintiff may well look to settle the case quickly or forgo a survey, recognizing that a survey might be very detrimental to its case.
Before deciding on a survey method, counsel for either party should realistically consider the value of a survey in the context of the case. A well-conducted survey will easily cost in excess of US $50,000. It is true that nowadays courts do expect surveys to be conducted in most trademark cases. Given this expectation, take your time to realistically assess your case under the rubric discussed above. With that toolset in mind, you will make better-informed decisions regarding the survey method, which may have a decisive impact on your case.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2010 International Trademark Association