KARS 4 KIDS INC. v. AMERICA CAN!

Filing 188

MEMORANDUM AND ORDER granting in part and denying in part 150 Motion in Limine No. 1 to Exclude the Entirety of Bryce R. Cooks Opinions; granting in part and denying in part 152 Motion in Limine No. 2 to Exclude Evidence, Testimony, and Argumen t Regarding Attorneys' General Investigations; denying 153 Motion in Limine No. 3 to Exclude Evidence, Testimony, and Argument Regarding America Can's Business Registrations; denying 154 Motion in Limine Omnibus; granting 155 Motion in Limine to Exclude Plaintiff's Survey Concerning Secondary Meaning and Corresponding Opinion Testimony of Alex Simonson, Ph.D. Signed by Judge Peter G. Sheridan on 4/18/2019. (jjc)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

KARS 4 KIDS, INC.,
MEMORANDUM
AND ORDER

Plaintiff,
v.

Civil Action No.
3:14-cv-7770 (PGS) (DEA)

AMERICA CAN!,
Defendant.

AMERICA CAN! Cars for Kids,
Civil Action No.
3:16-cv-4232 (PGS) (DEA)

Plaintiff,
v.
KARS 4 KIDS, INC.,
Defendant.

SHERIDAN, U.S.D.J.
This matter comes before the Court on five in limine motions filed by both
Plaintiff/Defendant Kars for Kids and Plaintiff/Defendant America Can!. The Court incorporates
herein the facts of this case as set forth in the memorandum on summary judgment, ECF No. 142.
(1) Kars 4 Kids' motion to exclude the opinion of Bryce Cook, America Can!'s expert on
damages
Kars 4 Kids seeks to exclude the opinion of Bryce Cook, America Can!’s expert on
damages. "Under the Federal Rules of Evidence, a trial judge acts as a 'gatekeeper' to ensure that
'any and all expert testimony or evidence is not only relevant, but also reliable.'" Pineda v. Ford
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Motor Co., 520 F.3d 237, 243 (3d Cir. 2008) (quoting Kannankeril v. Terminix Int'l Inc., 128 F.3d
802, 806 (3d Cir. 1997)). When faced with a proffer of expert testimony under Federal Rule of
Evidence 702, "the trial judge must determine at the outset . . . whether the expert is proposing to
testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a
fact in issue." Daubert v. Merrell–Dow Pharms., Inc., 509 U.S. 579, 592 (1993). "Rule 702 has
three major requirements: (1) the proffered witness must be an expert, i.e., must be qualified; (2)
the expert must testify about matters requiring scientific, technical or specialized knowledge; and
(3) the expert's testimony must assist the trier of fact." Pineda, 520 F.3d at 244. The parties have
not raised any dispute as to Mr. Cook's qualification to testify as an expert.
The proffered testimony must be reliable; that is, "the expert's opinion must be based on
the 'methods and procedures of science' rather than on 'subjective belief or unsupported
speculation'; the expert must have 'good grounds' for his or her belief." Id. at 742 (quoting Daubert,
509 U.S. at 590). "[S]o long as the process or technique the expert used in formulating the opinion
is reliable," such testimony will be deemed admissible. Id. The reliability of an expert's testimony
is assessed using an eight-factor test set forth by the Third Circuit:
(1) whether a method consists of a testable hypothesis; (2) whether
the method has been subject to peer review; (3) the known or
potential rate of error; (4) the existence and maintenance of
standards controlling the technique's operation; (5) whether the
method is generally accepted; (6) the relationship of the technique
to methods which have been established to be reliable; (7) the
qualifications of the expert witness testifying based on the
methodology; and (8) the non-judicial uses to which the method has
been put.
United States v. Mitchell, 365 F.3d 215, 235 (3d Cir. 2004).
"Finally, Rule 702 requires that the expert testimony must fit the issues in the case"; that
is, "the expert's testimony must be relevant for the purposes of the case and must assist the trier of
fact." Schneider, 320 F.3d at 404. "In assessing whether an expert's proposed testimony 'fits,' we
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are asking 'whether [the] expert testimony proffered . . . is sufficiently tied to the facts of the case
that it will aid the jury in resolving a factual dispute.'" United States v. Schiff, 602 F.3d 152, 173
(3d Cir. 2010) (citing Daubert, 509 U.S. at 591).
Kars 4 Kids seeks to bar America Can!'s damages expert from testifying, claiming that he
"offers nothing more than his subjective belief that, absent Kars 4 Kids' use of the KARS 4 KIDS
marks, every single donation Kars 4 Kids received over a nine-year period would have gone to
America Can." (Memo. of Law in Support of Pl. Motion In Limine No. 1 to Exclude the Entirety
of Bryce R. Cook's Opinions ("Memo in Support of Motion In Limine No. 1"), ECF No. 150-1 at
1). Mr. Cook's report purports to set forth three different types of claims for damages that total
America Can!’s claim for damages; they are: a claim for Kars 4 Kids' profits; the royalty that Kars
4 Kids "would have had to pay if [America Can!] had agreed to license the [m]ark"; and the cost
of corrective advertising. (Cook Report at 8-10).
Under the Lanham Act, the non-infringing party may recover as damages "(1) [the
infringer's] profits, (2) any damages sustained by the [non-infringer], and (3) the costs of the
action." 15 U.S.C. § 1117(a). “In assessing profits the plaintiff shall be required to prove
defendant’s sales only; defendant must prove all elements of cost or deduction claimed.” 15 U.S.C.
§ 1117(a).
First, America Can! seeks to recover the profits of Kars 4 Kids. Cook determined that the
revenues of Kars 4 Kids would be determined by adding up the revenues reported on Kars 4 Kids’
annual Form 990’s. In order to confirm the revenues on the Form 990 was correct, he compared
those revenues to the auction sales revenue from America Can!'s database. Cook also examined
auction sales revenue from Kars 4 Kids’ database and its 2010 audited financial statement. The
2010 statement indicated that “substantially all” of Kars 4 Kids’ revenue are from donations. (Cook

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Report, ECF No. 150-2 at 8). Once he was assured that the revenues on the Form 990s was
reasonable, he then calculated the total of Kars 4 Kids' revenues as reported on Form 990 for the
years 2008 through 2017. Relying on that sum, Cook concluded, "[America Can!'s] claim for [Kars
4 Kids'] profits on sales made using the infringing mark total $328,175,784." (Id. at 9).
Although this calculation is a relatively simple use of addition, it is Kars 4 Kids’ burden to
prove that the total revenues should be discounted by expenses based on the statute. 15 U.S.C. §
1117(a). In short, the jury may be unaware that the use of the revenues as reported on the Form
990 is an acceptable method to determine damages. Cook’s presentation as to his method of finding
the gross revenues by adding revenues from the Form 990s is of assistance to the jury.
Moreover, Kars 4 Kids has an expert who will testify as to the expenses that may be
deducted from the total revenues to determine the profit. Mr. Cook intends to discredit Kars 4
Kids’ expert by arguing certain costs should not be deducted. More specifically, Cook’s rebuttal
report offers several theories, but most notably, he asserts that the use of the term “profit” is of a
different nature when applied to not-for-profit corporations as opposed to a corporation’s profit.
As such, Cook concludes that “any expenses that do not contribute to fundraising, or revenue
generation, should not be deducted from revenue.” (Cook Rebuttal Report, ECF No. 150-2 at 6).
In determining what revenues to discount, Cook examined a table, which was derived from
the Form 990s:

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(Id. at 5). Cook provided a detailed analysis of this table and how the expenses it presents should
be discounted:
Per the Form 990 instructions, Column (B)–Program Services “are
mainly those activities that further the organization's exempt
purposes,” which K4K reported in Part III of Form 990 as:
“educational, developmental, and recreational programs for Jewish
youth and their families.” Based on this description, these expenses
did not contribute to K4K’s generation of car donation revenue and
should therefore not be deducted. Certainly, Domestic and Foreign
Grants totaling $18.5 million are wholly unrelated to K4K’s vehicledonation fundraising function and should be excluded from
deductions. Mr. Hall acknowledged this very fact in his
apportionment calculation wherein he excluded grants from total
expenses “to determine what portion of Kars 4 Kids operational
expenditures represents advertising in a fundraising capacity.” The
same treatment should apply to the more than $600,000 in
compensation/salary/payroll tax expenses K4K spends in running
and managing its charitable programs, which is distinct from
running and managing its vehicle-donation arm, the expenses of
which are shown in Column (D) Fundraising. Likewise, the $2.8
million in advertising expense relating to its charitable programs
(e.g., brochures for summer camps, ads for educational programs,
etc.) are irrelevant to and do not support K4K’s vehicle donation
operations and should not be deducted from revenues. Indeed, all
Program Services expenses in Column (B) are required by the IRS
to be specifically segregated into that category because they support
K4K’s charitable programs and not its vehicle-donation fundraising
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activities. Therefore, none of the Column (B) expenses should be
deducted from vehicle-donation fundraising revenues.
(Id. (footnotes omitted)).
Although Cook initially opined that profits should be calculated on all revenues generated,
in his rebuttal report he discounted total fundraising costs because those “expenses directly relate
to the generation of vehicle-donation revenue” which decreased Cook’s total to $213,374,316.
(Cook Rebuttal Report, ECF No. 150-2 at 8). He also states that as an “alternative measure,” the
factfinder could use “the grant funds [Kars 4 Kids] provides to charitable organizations, as this
amount is an indication of the funds it has available to donate after paying all its operating expenses
required to generate those funds.” (Id.). That reduction amounted to total profits of $161,294,383;
leading Cook to conclude that these numbers constituted the range of Kars 4 Kids’ profits. (Id. at
9).
Cook’s findings regarding profits, which derived from his mathematical calculations, were
supported by a reliable methodology. Cook explained the standards which governed his use of the
Form 990 revenues. His technique was consistent with the Banjo Buddies court’s analysis of
damages. Accordingly, Cook’s calculations sufficiently satisfy the multifactor test set forth in
Mitchell, 365 F.3d at 235, and his analysis was tied to the facts of the case and will be of assistance
to the jury, in accordance with the mandate of Daubert, 509 U.S. at 591. As such, Kars 4 Kids’
motion to bar Cook’s testimony on damages as disgorgement of profits is denied.
Regarding his second theory concerning the amount of royalties that Kars 4 Kids would
have had to pay to license the mark, Cook was also unable to render a conclusion. He did not
discuss this methodology in his rebuttal report. Cook is therefore barred from testifying as to
damages based on hypothetical royalties.

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Finally, with regard to the third methodology – corrective advertising – Cook was unable
to conclude what amount of corrective advertising would be necessary to correct confusion but
stated "the trier of fact may find the total advertising [spent] useful as a starting point for addressing
this method." (Id. at 10). Whereas, “his rebuttal report concluded that the total was $86.3 million.
Although the new figure was more precise, there is no methodology supporting how Cook arrived
at this opinion. He merely concluded the amount of corrective advertising should be the total
advertising spent by Kars 4 Kids. It is speculative to argue, without citation to authority, that the
corrective advertising for America Can! should equal the total advertising expenditures by Kars 4
Kids. Further, it is at best unclear how that figure would assist the trier of fact in rendering a
decision.
Cook’s finding as to the third methodology was wholly conclusory. The use of total
advertising cost does not meet the eight-factor test under Mitchell. It is unclear what method Cook
used, if any, or whether it would be subject to peer review. The known or potential rate of error is
very high in light of this extremely off-hand imprecise contention. For example, Mr. Cook states
that $86.3 million is a good starting point. The use of the words “starting point” infers that there
are factors that may add or subtract from that amount. Mr. Cook does not set forth any such factors
within his report. As such, his imprecise statement is not reliable. His testimony regarding
corrective advertising is barred.
In sum, Cook’s use of the Form 990s as a means to determine revenue may be valuable for
assisting the jury in resolving the issues of damages. However, he reached no conclusion as to the
hypothetical royalty, rendering him unable to assist the trier of fact on that calculation. Finally, his
corrective advertising figure ($86.3 million) was based solely on an imprecise remark, especially

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when he gives no guidance as to the factors a jury would be required to assess if they worked from
the “starting point.”
(2) Kars 4 Kids' Motion in Limine No. 2: Attorneys General Investigations
Kars 4 Kids seeks to exclude evidence of three investigations conducted by state attorneys
general in Minnesota, Oregon, and Pennsylvania because they are irrelevant and prejudicial.
(Memo. in Support of Motion In Limine No. 2, ECF No. 152). More precisely America Can! seeks
to admit into evidence a “Compliance Review of the Charitable Solicitation Activities and
Financial Reporting of Kars 4 Kids and its Relationship to Oorah, Inc.,” dated 2017 by Attorney
General Lori Swanson of Minnesota (Compliance Review), plus two single-page press releases
from Pennsylvania and Oregon. America Can! seeks to admit these documents because they are
relevant on three grounds.
America Can! argues the Compliance Review and the two press releases are relevant to the
validity of the assignment of trademark rights, to damages calculations (15 U.S.C. § 1117(a)), and
to its injury in the context of its trademark dilution claim. Although America Can! claims the
Compliance Review and the two press releases should be admitted, each will be addressed
separately with the press releases being addressed first.
Generally, under the Public Records exception to the hearsay rule (Fed. R. Evid. 803(8)),
a public record will be admitted if it is a "record or statement of a public office" if it sets out, "in
a civil case . . . factual findings from a legally authorized investigation" and "neither the source of
information nor other circumstances indicate a lack of trustworthiness." Fed. R. Evid.
803(8)(A)(iii), (8)(B). The trial court has discretion concerning admissibility of such evidence.
Wilson v. Attaway, 757 F.2d 1227, 1245 (11th Cir. 1985). Here, the press releases do not set forth
“findings from a legally authorized investigation” in that both press releases discuss a settlement

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without support or substance behind the content. As such, the motion In Limine to bar admission
of the Pennsylvania and Oregon press releases is granted.
Returning to the Compliance Review, a different analysis applies. The Compliance review
is a twenty-seven page report. It describes: (1) Kars 4 Kids and its affiliates; (2) how it failed to
disclose the revenue spent on fundraising and overhead costs; (3) it failed to monitor the charities
to which it contributed; and (4) it failed to disclose that the charity program was substantially more
limited in focus than represented in its advertisements. In another section, it noted a misstatement
on the Kars 4 Kids federal tax reporting averring that Kars 4 Kids reported “net, not gross, revenues
on its IRS Form 990." (Doc, 161-1, p. 10). Most of those topics may impact the value of the mark.
America Can! sets forth three grounds for admitting the evidence as relevant to: "(1) K4K's
purported date of initial use of its claimed marks; (2) damages; and (3) the injury caused America
Can! By Kars 4 Kid’s trademark infringement." (Def.'s Br. in Opp. to Pl.'s Motion In Limine No.
2 to Exclude Evidence, Testimony, and Argument Regarding Attorneys General Investigations
("Def.'s Opp. to Pl.'s Motion in Limine No. 2"), ECF No. 160 at 5).
The Compliance Review is relevant to damages. Specifically, the Compliance Review
found that Kars 4 Kids misled the government and the public about the amount of revenue that
was spent on advertising vs. charitable purposes, and it made findings about Kars 4 Kids' actual
amount of advertising expenditures.
In addition, the Compliance Review has a tendency to support America Can!’s trademark
dilution claim. Assuming America Can! can establish the other elements of the dilution claim, the
report has a tendency to show that Kars 4 Kids’ “use causes dilution by lessening the capacity of
[America Can!’s] mark to identify and distinguish goods or services.” 800-JR Cigar, 437 F. Supp.
2d at 293.

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The Court finds that the probative value of the Compliance Review is relevant and
substantially outweighed by the risk of unfair prejudice, confusing the issues, or misleading the
jury. As such, the motion in limine to bar admission of the Compliance Review is denied.
In sum, the Court tentatively finds the Compliance Review to be admissible under the
public records exception to the hearsay rule and declines to exclude the evidence under Rule 403.
Additionally, Kars 4 Kids may propose reasonable redactions to the report, which the Court shall
consider.
Minnesota Discovery Requests
In the course of conducting the investigation that resulted in the Compliance Review, the
Minnesota Attorney General issued discovery requests to Kars 4 Kids.1 One such request was for
copies of “all documents that memorialize or describe any agreement, affiliation, or relationship,
or other arrangement, whether formal or informal, between [Kars 4 Kids] and Oorah.” (Confoy
Decl., Ex. 7, ECF No. 161-5). In response, Kars 4 Kids stated, “Subsequent to 2009, Oorah and
Kars [4 Kids] ceased to have a formal grant application process. Rather, Kars [4 Kids] made grants
to Oorah on a discretionary basis. We do not have any other documents pertaining to agreements
between Kars [4 Kids] and Oorah.” (Id.) (hereinafter “Response).
America Can! seeks to admit this Response as a statement of opposing party exception to
the hearsay rule. Fed. R. Evid. 801(d)(2). This Response, however, is not relevant evidence of an
absence of an assignment for several reasons. First, the Response references agreements
subsequent to 2009. Second, the statement discusses agreements between Oorah and Kars 4 Kids.
And third, the statement references documents pertaining to agreements. The alleged assignment

Minnesota law permits the Attorney General to “obtain discovery from any person regarding any matter, fact, or
circumstance, not privileged, that is relevant to the subject matter involved in [an] investigation.” Minn. Stat. Ann. §
309.533.
1

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occurred in 2000, was made from OKR to Joy for Our Youth, Inc. (which later became Kars 4
Kids),2 and was undisputedly an oral assignment. (ECF No. 184, T62:3-8).
Kars 4 Kids’ Response is not probative of the date of any alleged assignment. To introduce
such evidence to refute Kars 4 Kids’ claim of an assignment would do nothing but confuse the
issues, mislead the jury, and pose a risk of unfair prejudice. The Response is inadmissible under
Federal Rule of Evidence 403.
(3) Kars 4 Kids' Motion in Limine No. 3: Business Registrations
Kars 4 Kids seeks to exclude evidence of America Can!'s business registrations from being
introduced at trial, arguing that "[t]he jury is not likely to appreciate the legal distinction between
registering to do business under a designation and public use of a designation in advertising
sufficient to acquire trademark rights." (Memo. of Law in Support of Pl.'s Motion In Limine No. 3
to Exclude Evidence, Testimony, and Argument Regarding America Can's Business Registrations
("Memo. in Support of Motion In Limine No. 3"), ECF No. 153 at 4). Kars 4 Kids cites Three
Rivers Confections, LLC v. Warman, 660 Fed. App'x 103, 105 (3d Cir. 2016), which held that "a
copy of the Pennsylvania Department of State listing" for a mark, alone, was insufficient, stating,
"[a]bsent further evidence of ownership, such as market penetration, from which a reasonable jury
could conclude that [defendant] owned the [mark] as a senior user, summary judgment for
[plaintiff] was warranted."
However, in Three Rivers, the court did not hold that business registration evidence is not
admissible, merely that business registration evidence, alone, is insufficient to establish a claim
for infringement. The business registration is certainly admissible as probative of priority of use.

America Can!’s counsel at oral argument stated, “if there was an assignment, it might have been to [Oorah], but
there’s no assignment as to [Kars 4 Kids].” (ECF No. 184, T59:1-4). No party contends that an assignment was made
between Oorah and Kars 4 Kids.
2

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There does not appear to be any risk of prejudice or of confusing or misleading the jury. Kars 4
Kids is free to argue to the jury that the business registration alone is not sufficient, but America
Can! is also permitted to present the evidence to the jury. Kars 4 Kids' motion to exclude evidence
of America Can!'s business registrations is denied.
(4) Cars for Kids' Motion in Limine: Opinion of Alex Simonson
America Can! seeks to exclude a survey conducted by Kars 4 Kids' expert, and
corresponding opinion testimony that purports to show secondary meaning. The objective of the
survey was to assess the secondary meaning of the term “Kars 4 Kids.” Kars 4 Kids counters that
the survey is reliable under Evidence Rule 702. The survey at issue, created by Dr. Alex
Simonson,3 was conducted online and aurally (without any text appearing) on a nationwide group
of United States consumers who are over eighteen years of age. (Confoy Decl., Ex. 1, Simonson
Report at 2). Participants were divided into a test cell and a control cell. (Id.).
Prior to commencing, participants read the following:
In this survey, there are no right or wrong answers, but there are
questions that ask for your beliefs and understanding. Please do your
best to answer each question to the best of your beliefs and
understanding. If there’s any question that you cannot answer,
please don’t guess. Just indicate “Don’t Know/Not Sure,” and
proceed to the next question.
(Id. at 10). Simonson then describes in detail how the survey proceeded:
Respondents were then told:
For the first question, please click on the audio file
and listen to the question.
The text of the audio was as follows:

3

The parties do not dispute that Simonson is qualified to testify as an expert. Simonson is a "marketing researcher
with a Ph.D. in marketing from Columbia University School of Business.” (Confoy Decl., Ex. 1, Simonson Rep. at
1). His lengthy curriculum vitae can be found at Appendix A of his report.

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Test cell:
Have you or haven’t you heard the
term Kars 4 Kids? Please just indicate, I have, I
haven’t, or don’t know/not sure.
Control cell: Have you or haven’t you heard the
term Gifts for kids? Please just indicate, I have, I
haven’t, or don’t know/not sure.
If a respondent could not hear the question, he/she had a second
chance to hear the audio clip. If, after the second time, a respondent
still could not hear the question, that interview would terminate.
For all those proceeding beyond that point, respondents were told
based on the question they had just heard:
Please record your answer below. If you don’t recall
the term and need to hear the term again, please click
the play button below.
The text of the second audio was as follows:
Test cell:

Kars 4 Kids.

Control cell: Gifts for kids.
If a respondent indicated that he/she had heard of the term, he/she
proceeded to the Palladino Secondary Meaning Question.
Palladino Secondary Meaning Question
The respondents were then asked:
Do you associate the term you just heard with one
particular organization or with more than one
organization?
To avoid order biases, the question was rotated such that about ½
the respondents saw the question as worded above and about ½ of
the respondents saw the question reversed as follows:
Do you associate the term you just heard with more
than one organization or with one particular
organization?
As per the generally accepted procedure, the response alternatives
included a “Don’t Know/Not Sure” option.

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Organization
For any respondent stating “one particular organization,” he/she was
asked the following open-ended question and the answer was
recorded verbatim:
Please tell us anything you can recall or identify
about this organization or its advertising that will
help us to know what organization you’re referring
to.
The response alternatives included a “Don’t Know/Not Sure”
option.
Jingle
To further identify what organization the respondents were thinking
of when they chose “one particular organization,” they were asked
the following filter question and open-ended follow up. (The filter
question is asked to avoid potentially leading respondents.)
To the best of your recollection, have you or haven’t
you heard this organization’s jingle?
Respondents could choose “I’ve heard it,” “I’ve not heard it” or
“Don’t Know/Not Sure.” For any respondent choosing “I’ve heard
it,” he/she was asked the following open-ended question and the
answer was recorded verbatim:
If you haven’t already done so in any earlier
question, so that we know what jingle you’re
referring to and so we can identify it, please write out
as much of the jingle that you can recall word-forword, as best you can.
(Id. at 10-12).
“[T]he general trend has been toward the admission of surveys of various kinds. Surveys
are . . . routinely admitted in trademark and false advertising cases to show actual confusion,
genericness of a name or secondary meaning, all of which depend on establishing that certain
associations have been drawn in the public mind.” Schering Corp. v. Pfizer, Inc., 189 F.3d 218,
225 (2d Cir. 1999) (Sotomayor, J.). “The majority rule is that while technical deficiencies can

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reduce a survey’s weight, they will not prevent the survey from being admitted into evidence.” 3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:170 (5th ed. 2019).
"[M]ethodological deficiencies in a survey generally relate to the weight given the survey's
conclusions rather than to its admissibility." J&J Snack Foods, Corp. v. Earthgrains Co., 220 F.
Supp. 2d 358, 369 (D.N.J. 2002). "However, when the deficiencies are so substantial that they
render the survey's conclusions untrustworthy, the court should exclude the survey from evidence."
Id. "Significant methodological deficiencies lessen the survey's probative value so that its
probative value is substantially outweighed by the prejudice, waste of time, and confusion that it
would cause at trial." Id. The Third Circuit has stated that a properly conducted survey must meet
the following requirements:
A proper universe must be examined and a Representative sample
must be chosen; the persons conducting the survey must be experts;
the data must be properly gathered and accurately reported. It is
essential that the sample design, the questionnaires and the manner
of interviewing meet the standards of objective surveying and
statistical techniques. Just as important, the survey must be
conducted independently of the attorneys involved in the litigation.
The interviewers or sample designers should, of course, be trained,
and ideally should be unaware of the purposes of the survey or the
litigation. A fortiori, the Respondents should be similarly unaware.
Pittsburgh Press Club v. United States, 579 F.2d 751, 758 (3d Cir. 1978).
"Above all, the survey's design must fit the issue which is to be decided by the jury, and
not some inaccurate restatement of the issue, lest the survey findings inject confusion or
inappropriate definitions into evidence, confounding rather than assisting the jury." J&J Snack
Foods, 220 F. Supp. 2d at 370. "Only if the expert testimony and related survey are useful, reliable,
and have probative value after all of their deficiencies are taken into account is the evidence
admissible." Id. In my view, the survey here has several faults.

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First, the “universe” of the survey is too broad. The survey included all “[m]ales and
females”; “18 years of age or older”; and “[r]eside in the United States.” (Expert Report of
Simonson at 5). Essentially the survey was of all adults residing in the United States. “The courts
have held that to be probative . . . a survey must rely on responses of prospective purchasers [or
donors] of the products in question.” Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d
305, 322 (S.D.N.Y. 2000). In Trouble v. Wet Seal, Inc., 179 F. Supp. 2d 291, 307-08 (S.D.N.Y.
2001), relied upon by America Can!, the court excluded a survey that "failed to establish that the
interviewees were potential consumers of the clothing in question" and "was not conducted in close
proximity to [the] stores." Here, the survey failed to establish the interviewees were potential
donors of vehicles to a not-for-profit corporation. The survey of the general population made no
attempt to limit the universe of individuals taking the survey. In fact, Simonson conceded in his
report:
Given the strength of the mark in the general population, it is likely
that the level would be higher among those in the particular universe
of Kars 4 Kids, specifically those who had recently donated their car
or who are interested in donating their car in the near future because,
consistent with the principles of consumer behavior, those
consumers are more “involved,” . . . and are more likely to attend to
relevant advertising.
(Simonson Report at 26). Kars 4 Kids’ failure to limit the universe of this survey to, for example,
individuals who own vehicles or owners of vehicles who were considering a donation. This
renders the universe overly broad.4

4

In National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc., 532 F. Supp. 651, 657-58 (W.D.
Wash. 1982), a court held a survey universe comprising “the entire population of the continental United States between
the ages of thirteen and thirty-five” admissible because survey questions grouped respondents into “likely potential
purchasers of the NFL football jersey replicas.” The Court noted, however, that case law indicated “the relevant
universe is potential purchasers.” Id. at 657. And the Court was “impressed with the steps plaintiffs took to insure
reliability of the survey.” Id. at 658. The survey here did not include any questions designed to group respondents into
the relevant universe, such as, based on their ownership of or likelihood of donating a vehicle. In addition, as discussed
in this section, the Court notes that other factors present in the survey here rendered it confusing to respondents.

16

Also problematic is the leading nature of the survey questions. For example, the initial
survey question tests “Kars 4 Kids” against “Gifts for Kids”. Then, several questions below, the
survey queries about the jingle (“to the best of your recollection, have you or haven't you heard
this organization's jingle?”) That question, which is very suggestive, leads the interviewee to the
song or jingle associated with Kars 4 Kids. Further, counsel for America Can! represented (at oral
argument) that his client has no jingle. This question focuses or leads the interviewee on the jingle,
which is commercially advertised on radio and television. (April 2, 2019 Transcript, ECF 184, at
101:17-22). Survey questions should be “framed in a clear, precise and nonleading manner.”
Ranch v. Greeson, 2015 WL 7871047 at *3 (Dec. 3, 2015) (quoting 3 Callmann on Unfair
Competition, Trademarks & Monopolies § 20:23 (4th ed., 2014)). The survey question therefore
did “not capture ‘unprompted consumer reaction as to association between a given trade symbol
and a given source of the product,’” id. (quoting Sno-Wizard Mfg., Inc. v. Eisemann Prod. Co.,
791 F.2d 423, 427 (5th Cir. 1986)); rather, it led interviewees to a preordained answer.
In addition, the Court agrees that the question – “Do you associate the term you just heard
with one particular organization or with more than one organization?” – was confusing because it
failed to include an option for respondents who do not associate the phrase with any particular
organization. Although the participants were given the option to choose "don't know/not sure," this
option does not necessarily cure the possible confusion for individuals who do not immediately
think of an organization. This argument further weighs against admitting the survey into evidence.
Finally, America Can! challenges the "ceiling effect" employed by Simonson in using the
control phrase "gifts for kids." As indicated above, Simonson divided respondents into a test cell
and a control cell. “The respondents in the test cell were asked about the term ‘Kars 4 Kids’ and
those in the control cell were asked about a commonly known, descriptive term, “Gifts for kids.”

17

(Simonson Report at 2). However, “[r]espondents in both cells (test and control) indicated similar
levels of recognition (43% “Kars 4 Kids” and 39% “Gifts for kids”).
Simonson indicates that a ceiling effect may have been attributable to the fact that
recognition of Kars 4 Kids was only 43%. Specifically, he attributes this low recognition to two
possibilities: (1) a ceiling effect artificially reduced the identified recognition levels; that is,
respondents might wrongly indicate they have heard the term “Gifts for kids” because it is “a
commonly known, descriptive term for the idea of giving gifts to children,” which artificially
depressed the percentages or (2) “a majority of adults in the United States have never heard of the
term ‘Gifts for kids.’” (Simonson Report at 15). Simonson suggests that the former is a more
persuasive explanation and argues that the next question, which addressed association with an
organization, “indicates the level of secondary meaning of the term ‘Kars 4 Kids.’” (Id. at 16).
However, Pittaoulis, America Can!’s expert, posits a third possibility, “that respondents
were interpreting the question literally and were trying to recall whether they had heard the term
‘Gifts for kids’ used in isolation and not in connection with other descriptive terms.” (Pittaoulis
Report at ¶ 27). The Court finds Pittaoulis’ criticism persuasive. When this possible reason is
considered in conjunction with the problematic question – “Do you associate the term you just
heard with one particular organization or with more than one organization?” upon which Simonson
relies to overcome the ceiling effect, it is clear that there was a real probability that respondents
were confused.
While any individual flaw discussed herein may not, by itself, be sufficient to justify
excluding the survey evidence, the totality of those deficiencies leads the Court to find that the
prejudicial effect of Kars 4 Kids’ survey substantially outweighs its diminished probative value,
making it of little use to the jury. See Fed. R. Evid. 403; see also Trouble v. Wet Seal, Inc., 179 F.

18

Supp. 2d 291, 308 (S.D.N.Y. 2001). It also poses a substantial risk of confusion the issues,
misleading the jury, and unfair prejudice. Fed. R. Evid. 403. Accordingly, the survey results and
any opinion evidence based on the survey results are inadmissible. See Fed. R. Evid. 703.
(5) America Can!'s Omnibus Motion in Limine No. 1: Evidence of Kars 4 Kids' use of the
"TM" Symbol
America Can! seeks an order excluding Kars 4 Kids’ argument that the use of a "TM"
symbol is required to reserve rights in a mark and precluding Kars 4 Kids from seeking testimony,
or offering evidence, that America Can!'s non-use of the "TM" symbol precludes it from asserting
rights in its mark. (Def. br., ECF No. 154-1, at 3-4). America Can! argues that the use of a "TM"
symbol is not required to establish trademark ownership rights, and for that reason, such evidence
is legally insignificant and should be excluded as irrelevant and unfairly prejudicial, pursuant to
Rule 403. (Id. at 4).
In response, Kars 4 Kids argues that it does not seek such an order, but instead, is entitled
to present evidence of how America Can! uses the "TM" symbol in connection with the designation
"Cars for Kids" and the tagline "Write Off the Car, not the Kid." (Pl. br., ECF No. 256, at 1-2).
Specifically, Kars 4 Kids seeks to present evidence that America Can! has omitted the use of the
"TM" symbol from its designation "Cars for Kids," along with America Can!'s use of the "TM"
symbol in its tagline "Write Off the Car, not the Kid" to show that America Can! has used the
"TM" symbol in the past, and therefore knew how to assert a claim of trademark rights for "Cars
for Kids" when it believed it was using that designation as a trademark. (Id. at 1). Kars 4 Kids
argues that because America Can! failed to communicate to the public that it claimed rights in the
"Cars for Kids" designation, a jury can conclude that the omission of the “TM” symbol indicates
that America Can! never intended to use the designation as trade mark use. (Id. at 1-2).
Accordingly, Kars 4 Kids argues that this is relevant to the determination of whether America
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Can!'s use of the "Cars for Kids" designation was of a type that could give rise to trademark rights
in that mark. (Id. at 2).
The use of the "TM" symbol, in connection with unregistered trademarks, may serve as "a
informal and quasi-legalistic notice to ward off competitors who may consider adoption of a
similar mark [or] . . . [t]o use as evidence in applying for registration or in infringement litigation."
3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:148 (5th ed. 2019).
While use of the "TM" symbol may be an attempt to educate the public about a purported
trademark, "the mere addition of the trademark symbol is not sufficient to transform a
nontrademark use of a designation into a trademark use." Id.; see also CSL Silicones, Inc. v.
Midsun Grp. Inc., 301 F. Supp. 3d 328, 349 (D. Conn. 2018) ("The use of a 'TM' symbol in
connection with a mark, either registered or unregistered, is not statutorily required, and does not,
by itself, establish trademark rights."); In Re Volvo Cars of N. Am. Inc., 46 U.S.P.Q.2d 1455
(T.T.A.B. 1998) ("use of the ["TM" symbol] indicating that DRIVE SAFELY is a trademark of
[VOLVO] does not transform this unregistrable phrase into a trademark indicating source or
origin.").
The Court finds that the probative value of America Can!'s past use of the "TM" symbol is
not substantially outweighed by the risk of unfair prejudice to America Can! under Rule 403.
Though the use of a "TM" symbol on an unregistered trademark does not conclusively establish
trademark use, the use or nonuse of the "TM" symbol is probative of whether a party intended to
convey a message to the public that it was asserting trademark use. Here, the non-use of a "TM"
symbol for America Can!'s designation "Cars for Kids," in contrast with the use of the "TM"
symbol for America Can!'s tagline "Write Off the Car, not the Kid" is probative of whether
America Can! intended the use of "Cars for Kids" to designate trademark use. For these reasons,

20

America Can!'s motion in limine is denied and Kars 4 Kids may present evidence of how America
Can! uses the "TM" symbol.
(6) America Can!'s Omnibus Motion in Limine No. 2: Excluding Statements that Survey
Data is Necessary to Prove Secondary Meaning and for an Order that America Can!
May Offer Kars 4 Kids' Survey Data, if Otherwise Admissible, In Support of Its Case
America Can! argues that the Court should enter an order precluding Kars 4 Kids "from
arguing that survey evidence is necessary to prove secondary meaning." (Def.'s Brief in Support
of Omnibus Motion at 6). Kars 4 Kids counters that it "does not dispute that survey evidence is
necessary to prove that a term has attained secondary meaning" but claims it should be permitted
to ask the jury to draw an inference based on America Can!'s failure to provide a survey.
The Third Circuit has "not yet held that a consumer survey is mandatory to establish
likelihood of confusion in a Lanham Act case." Charles Jacquin Et Cie, Inc. v. Destileria
Serralles, Inc., 921 F.2d 467, 476 (3d Cir. 1990). Consumer surveys are "useful, and indeed the
most direct method of demonstrating secondary meaning and likelihood of confusion." Id.
However, "a plaintiff's failure to conduct such a survey where it has the financial resources to do
so, could lead a jury to infer that the plaintiff believes the results of the survey will be unfavorable."
Id. at 475. The Court has excluded Kars 4 Kids’ survey leaving both parties without survey data
to rely upon, this issue is therefore moot.
America Can! also moves for an order permitting it to rely on the data in Kars 4 Kids'
survey as part of its proofs on secondary meaning. America Can! is only pursuing this argument
“[i]f the survey data is admissible.” (Def.'s Brief in Support of Omnibus Motion at 10). As
previously discussed, the survey is not admissible at trial. Therefore, America Can!’s motion is
denied as moot.

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(7) America Can!'s Motion in Limine No. 3: Excluding the "1-877-KARS-4-KIDS" Jingle
During Jury Selection and Trial
America Can! seeks an order precluding Kars 4 Kids from playing its "1-877" Jingle
(hereinafter "the Jingle") during Jury selection and during the trial, arguing that it is irrelevant,
unfairly prejudicial, and will likely confuse and mislead the jury about the issues in the case.
America Can! argues first that the Jingle is irrelevant as it is not an asserted trademark in this case,
where Kars 4 Kids asserted trademarks are "1-877-KARS-4-KIDS" and "KARS 4 KIDS." (Def.
br. at 11). While the Jingle does contain the mark "1-877-KARS-4-KIDS," America Can! argues
that the Jingle has many other elements, such as the lyrics, the rhythm, instruments, and the singer's
voices. According to America Can!, a jury, when listening to the Jingle, may not recognize the
asserted trademarks contained therein, but instead may recognize the other elements and unfairly
attribute that recognition to the Kars 4 Kids asserted trademarks. (Id.) In response, Kars 4 Kids
argues that any prejudice America Can! may face as a result of admitting the Jingle is outweighed
by its probative value, because the Jingle is demonstrative of the asserted trademarks' uses in
advertising, which is critical in determining whether a mark qualifies as a service mark. (Pl. br. at
6-7).
"A service mark is defined as a word, name, symbol, device or advertising of services to
identify the service of the entity and distinguish them from the services of others." Holiday Inns,
Inc. v. Trump, 617 F. Supp. 1443, 1464 (D.N.J. 1985) (quoting Estate of Presley v. Russen, 513 F.
Supp. 1339, 1362 (D.N.J. 1981)). The determination of whether a company name is being used
"as a service mark is a question of fact to be determined from the manner of use . . . These critical
factors can be determined only by careful scrutiny of the exact manner in which the term is used
by the applicant in its advertising media." 3 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 19:88 (5th ed. 2019).
22

First, the Court finds the Jingle is relevant, as it contains both asserted trademarks. The
lyrics to the Jingle are: "1-877-kars-4-kids / k-a-r-s kars 4 kids / 1-877-kars-4-kids / donate your
car today." The Jingle makes use of the "1-877-KARS-4-KIDS" asserted trademark by expressly
stating that asserted trademark in the Jingle. Likewise, the Jingle expressly uses the "Kars 4 Kids"
asserted trademark as well. America Can! argues that it is difficult to audibly discern whether the
Jingle is stating "cars for kids" or "kars 4 kids," as both sound the same, and therefore will confuse
and mislead a jury; however, the Jingle makes clear that it is referring to Kars 4 Kids, and not Cars
for Kids, by spelling out "k-a-r-s kars 4 kids." (emphasis added). Second, the Court finds the
probative value of the Jingle outweighs any prejudice to America Can! under Rule 403, as it shows
the extent of the advertising of the asserted trademarks by Kars 4 Kids, which is necessary for
determining the ownership of the marks, market penetration, and level of consumer awareness.
Regarding America Can!'s concerns with the jury confusing the Jingle for an asserted trademark,
such concerns may be addressed by an appropriate limiting instruction, informing the jury that the
Jingle itself is not an asserted trademark, rather, the Jingle contains two asserted trademarks.
Accordingly, America Can's! motion in limine is denied in part and granted in part. Kars 4 Kids
may present evidence, refer to, and play the Jingle during the trial; however Kars 4 Kids is
precluded from presenting, referring to, or playing the Jingle during jury selection.
(8) America Can!'s Motion in Limine Nos. 4 and 5: Excluding Kars 4 Kids' Use of the
Marks Prior to 2003 and Excluding Evidence of Assignment of Kars 4 Kids' Marks
America Can! seeks an order precluding Kars 4 Kids from offering evidence of its asserted
trademarks prior to August 3, 2000. America Can! argues that because Kars 4 Kids did not exist
as a corporate entity prior to August 3, 2000, it cannot claim a priority of use of the asserted
trademarks prior to that date. (Def. br. at 15). America Can! argues that any evidence of use prior
to 2000 is use by different corporate entities, and as such is irrelevant. (Id.) In another in limine
23

motion, America Can! seeks to exclude evidence that Kars 4 Kids has rights in the asserted
trademarks due to an alleged assignment. (Id. at 17-18). In response, Kars 4 Kids argues that there
was a valid assignment, and it should be allowed to introduce evidence of such an assignment at
trial. (Pl. br. at 8).
In asserting a claim for trademark infringement, a party must show that it owns the claimed
mark. A &H Swimwear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000)
(citing Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 437 (3d Cir.
2000)). Trademarks may be assigned or transferred, and "following a proper assignment, the
assignee steps into the shoes of the assignor." Premier Dental Prods. Co. v. Darby Dental Supply
Co., 794 F.2d 850, 853 (3d Cir. 1986). When there is no documentary evidence of an assignment,
"it may be proven by the clear and uncontradicted oral testimony of a person in a
position to have actual knowledge." 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 18:4 (4th ed. 2005). However, courts must
be cautious in scenarios that do not involve clear written documents of assignment.
"Requiring strong evidence to establish an assignment is appropriate both to
prevent parties from using self-serving testimony to gain ownership of trademarks
and to give parties incentive to identify expressly the ownership of the marks they
employ." TMT North America, Inc. v. Magic Touch GmbH, 124 F.3d 876, 884 (7th
Cir. 1997).
Doeblers' Pa. Hybrids, Inc. v. Doebler, 442 F.3d 812, 822 (3d Cir. 2006).
Here, Kars 4 Kids has presented the affidavit of Rabbi Eliyohu Mintz, the CEO of OKR,
which it argues shows evidence of an assignment between the Oorah Kiruv Rechokim Fund
("OKR"), of which Mintz was previously vice president, to Joy for Our Youth, Inc. ("Joy"). Kars
4 Kids alleges that Joy registered the name "Kars 4 Kids" as an alternative name in New Jersey,
and then formally changed its name to Kars 4 Kids in 2014. (ECF No. 122, at 5). According to
Kars 4 Kids, OKR's mission was to support Jewish children and families. OKR accomplished this
mission by acquiring and then later selling automobiles. At some point, OKR assigned or

24

conveyed the "mission" of OKR to another company, Oorah, Inc., and conveyed or assigned the
asserted trademarks to Joy in order to support Oorah, Inc., by acquiring and selling automobiles.
In response, America Can! argues that OKR is not the predecessor of Joy and Kars 4 Kids, but
instead, is the predecessor to Oorah Inc., a separate corporate entity which would have been
assigned the asserted trademarks, and not Kars for Kids. (Pl. reply br. ECF No. 167, at 12).
At oral argument, the parties agreed that taking an additional deposition of Rabbi Eliyohu
Mintz would be beneficial for the purposes of exploring the relationship between OKR, Oorah,
Inc., Joy, and Kars 4 Kids, and the Court ordered the parties to conduct that deposition. (ECF No.
178).
Thereafter, in a letter dated April 5, 2019, America Can! informed the Court it no longer
believed such a deposition was necessary, and instead renewed its argument that Kars 4 Kids
should be precluded from offering evidence of any assignment. (ECF No. 181). For the first time,
America Can! argued that Kars 4 Kids should be barred from presenting Rabbi Mintz's affidavit
based on the "sham affidavit" doctrine. (Id. at 1-2). A sham affidavit is an affidavit that
"contradicts earlier deposition testimony without a satisfactory or plausible explanation[,]" and a
court may disregard a sham affidavit if "it is 'clear' the affidavit was offered 'solely' to defeat
summary judgment." Daubert v. NRA Grp., LLC, 861 F.3d 382, 391-392 (3d Cir. 2017) (quoting
Jiminez v. All Am. Rathskeller, Inc., 503 F.3d 247, 253 (3d Cir. 2007)). America Can!'s arguments
appear to be an attempt to reargue issues previously decided on summary judgment. Though
America Can! never expressly argued that Rabbi Mintz's affidavit should be disregarded based on
the sham affidavit doctrine, it argued that it was "unreliable because statements made are
contradicted by other evidence in this case." (Def. br. in opp. to Summary Judgment, ECF No.
124, at 10). However, based on the arguments and evidence presented to the Court, including

25

Rabbi Mintz's affidavit, the Court concluded summary judgment was not proper as genuine issues
of material fact existed regarding surrounding the priority dates of each asserted marks, and when
the asserted marks were put into interstate commerce. (See Mem. Op., Oct. 25, 2018, ECF No.
142, at 10). For example, upon re-examination of the deposition testimony of Rabbi Mintz, he
testified that OKR was the "predecessor organization of Oorah and Joy . . . it sort of . . . moved
into . . . Joy and Oorah . . . we closed that organization and we just moved everything into these
two." (Dep. Of Rabbi Eliyohu Mintz, ECF No. 118-7, T203:15-205:12). When asked if there was
an agreement that memorialized the closing of OKR and the creation of Joy and Oorah, Rabbi
Mintz responded, "I don’t know. Probably there is. I don’t know if there is." (Id. at T205:13-17).
Regardless of whether affidavit of Rabbi Mintz is presented at trial, Rabbi Mintz may still
testify to its substance, and will be subject to cross-examination; accordingly, Rabbi Mintz’s
affidavit makes no difference to the Court's analysis. Here, the Court finds Kars 4 Kids’ evidence
of an assignment relevant to the issues to be tried at trial. The issue of a valid assignment is a
question of fact that is more properly presented to a jury, rather than determined as an in limine
motion. Accordingly, a jury can best determine the credibility of Rabbi Eliyohu Mintz, and
determine whether Kars 4 Kids or Oorah, Inc. is the predecessor to OKR, and therefore the holder
of a valid assignment. The Court also finds evidence of Kars 4 Kids' use of the "KARS 4 KIDS"
and "1-877-KARS-4-KIDS" marks prior to August 3, 2000 relevant, should a jury determine that
Kars 4 Kids holds a valid assignment to those trademarks. For these reasons, America Can!'s
motions in limine are denied and Kars 4 Kids may present evidence of its use of the asserted
trademarks prior to August 3, 2000, and of any alleged assignment.

26

(9) America Can!'s Motion in Limine No. 6: Excluding Kars 4 Kids Argument that Its
Claimed Mark is Famous
America Can! argues that Kars 4 Kids should be precluded from presenting evidence that
its "KARS 4 KIDS" mark and "1-877-KARS-4-KIDS" mark are famous because Kars 4 Kids'
secondary meaning expert conceded that the survey demonstrated the asserted trademarks are not
famous. In response, Kars 4 Kids argues that it should not be barred from presenting such
evidence, because survey evidence is not the only evidence that may be considered in determining
whether a mark is famous. (Pl. br. at 9).
Kars 4 Kids brought a claim for dilution under N.J.S.A. § 56:3-13 and 15 U.S.C. §
1125(c)(1). To qualify for protection under dilution law, Kars 4 Kids must show that America
Can! used its marks in commerce, those marks are famous, and that America Can!'s use causes
dilution of the distinctive quality of the mark. See Platypus Wear, Inc. v. Bad Boy Club, Inc., No.
08-02662, 2009 WL 2147843, at *3 (D.N.J. July 15, 2009); 15 U.S.C. § 1125(c)(1). "[A] mark is
famous if it is widely recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark's owner." 15 U.S.C. § 1125(c)(2)(A).
The following factors are relevant in the determination of "whether a mark possesses the requisite
degree of recognition":
(i) The duration, extent, and geographic reach of advertising and publicity of the
mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act
of February 20, 1905, or on the principal register.
Id.; see also N.J. Stat. § 56:3-13.20 (listing similar factors to consider in determining whether a
mark is famous under New Jersey State law). Finally, to achieve the status of "famous," Professor
McCarthy suggests that "the mark must be a 'household name' – a name immediately familiar to
27

very nearly everyone, everywhere in the nation." 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 24:104 (5th ed. 2019).
In arguing that Kars 4 Kids' asserted trademarks are not famous, America Can! points to
the deposition testimony of Alex Simonson, Ph.D., Kars 4 Kids' expert. Simonson testified at
deposition regarding the results of the survey, and in response to a question about why he chose
the specific group of respondents for the survey, the following colloquy occurred:
A. This was a general population survey . . . the survey could have been used . . . ,
not just for secondary meaning, but for fame . . . .
Q. Are you testifying that this survey was also conducted in order to show fame
for the plaintiff?
A. It was conducted in order to be able to extract out fame numbers, were they
there, correct.
Q. Were you able to extract fame numbers?
A. I didn't think the numbers were sufficient for what I thought I would use for
fame.
Q. What would be a sufficient number for fame?
A. I don't have a per se number in my head, but very high recognition numbers,
typically higher than secondary meaning numbers.
(ECF 154-2, Ex. 2, T63:14 to 64:16).
The results of the survey concluded that the term "KARS 4 KIDS" has reached a secondary
meaning level of around forty-one to forty-two percent in the United States. (ECF 154-2, Ex. 1, at
3). According to America Can!, this is far below the seventy-three percent consumer recognition
found to establish fame by the Trademark Trial and Appeal Board ("TTAB") in Nat'l Pork Bd. &
Nat'l Pork Producers Council v. Supreme Lobster and Seafood Co., 96 U.S.P.Q.2d 1479 (T.T.A.B.
2010). (See Pl. br. at 19, 21). However, in National Pork Board, the TTAB found the National
Pork Board and National Pork Producers Council's mark "THE OTHER WHITE MEAT" famous
where it had consumer awareness rates of eighty to eighty-five percent, and rates of correct source
recognition at around seventy percent. Nat'l Pork Bd. & Nat'l Pork Producers Council, 96
U.S.P.Q.2d at 1479 (collecting cases where fame was found in consumer awareness rates ranging
28

from seventy-three percent to eighty percent). Regardless of whether a forty-one to forty-two
percent secondary meaning level is enough to establish fame, Simonson testified that he was not
able to extract any fame numbers from the survey.
The Court concluded summary judgment was not proper as genuine issues of material fact
existed regarding whether Kars 4 Kids' asserted marks are famous. (See Mem. Op., Oct. 25, 2018,
ECF No. 142, at 13-14). Accordingly, the Court finds evidence that Kars 4 Kids' asserted marks
are famous is relevant to the issues to be tried at trial, specifically if Kars 4 Kids is entitled to
protection under dilution law, and accordingly will permit Kars 4 Kids to present such evidence.
Kars 4 Kids has indicated that it intends to present evidence that its asserted marks are famous
through several different sources, including: (1) advertisements in the publication The Jewish
Press, (2) a nationwide mailing list; (3) national advertisements on Yahoo! and Google; (4)
advertisements in Reader's Digest; (5) advertisements on billboards; (6) the Kars 4 Kids Jingle on
major radio broadcast networks; and (7) advertising on online internet radio and streaming
services. (See Pl. br. at 9-11). Based on this proffer, the Court will allow Kars 4 Kids to argue that
its asserted marks are famous in its opening statements. However, if Kars 4 Kids is unable to prove
that its asserted marks are famous, the Court will instruct the jury accordingly. For these reasons,
America Can!'s Motion in Limine to exclude Kars 4 Kids' argument that its claimed mark is famous
is denied.
ORDER
This matter having come before the Court on Kars 4 Kids, Inc.'s Motions in limine (ECF
Nos. 150, 152, and 153) and America Can!'s Motions in limine (ECF Nos. 154 and 155), and the
Court having carefully reviewed and taken into consideration the submissions of the parties, as

29

well as the arguments and exhibits therein presented, and for good cause shown, and for all of the
foregoing reasons,
IT IS on this 18th day of April, 2019,
ORDERED that Kars 4 Kids, Inc.'s Motion in limine to Exclude the Entirety of Bryce R.
Cook's Opinion (ECF No. 150) is GRANTED in part and denied in part as follows:
1. The motion in limine to bar Bryce Cook from testifying as to damages based on
hypothetical royalties is GRANTED;
2. The motion in limine to bar Bryce Cook from testifying as to damages based on corrective
advertising is GRANTED;
3. The motion in limine to bar Bryce Cook from testifying as to damages based on total profits
is DENIED; and it is further
ORDERED that Kars 4 Kids, Inc.'s Motion in limine to Exclude Evidence, Testimony, and
Argument Regarding Attorneys' General Investigations (ECF No. 152) is GRANTED in part and
DENIED in part as follows:
1. Kars 4 Kids, Inc.'s Motions to exclude press releases issued by the Attorneys Generals of
Oregon and Pennsylvania are GRANTED;
2. Kars 4 Kids, Inc.'s Motion to exclude The Compliance Review issued by the Minnesota
Attorney General is GRANTED in part and DENIED in part as follows:
a. The motion in limine to bar admission of the Document Request of the Minnesota
Attorney General and the Response of Kars 4 Kids is GRANTED;
b. The motion in limine to bar admission of the Compliance Review of the Minnesota
Attorney General is DENIED;

30

c. The Court will consider proposed redactions to the Minnesota Compliance Review
in accordance with the following briefing schedule:
i. Kars 4 Kids may submit proposed redactions and a brief supporting its
position no later than April 23, 2019;
ii. America Can! may submit a brief in opposition to those proposed redactions
no later than April 26, 2019; and it is further
ORDERED that Kars 4 Kids, Inc.'s Motion to Exclude Evidence, Testimony, and
Argument regarding America Can!'s Business Registrations (ECF No. 153) is DENIED; and it is
further
ORDERED that America Can!'s Motion to Exclude Kars 4 Kids' Survey Concerning
Secondary Meaning and the Corresponding Opinion Testimony of Alex Simonson, Ph.D. (ECF
No. 155), is GRANTED; and it is further
ORDERED that America Can!'s Omnibus Motion in Limine (ECF No. 154) is DENIED:
1. America Can!'s Motion in Limine to Preclude Kars 4 Kids' Argument that the Use
of the "TM" Symbol is Required to Reserve its Rights in a Mark is DENIED;
2. America Can!'s Motion in Limine to Exclude Statements that Survey Data is
Necessary to Prove Secondary Meaning is DENIED as moot;
3. America Can!'s Motion in Limine to Allow it to Rely on the Secondary Meaning
Survey Data is DENIED as moot;
4. America Can!'s Motion in Limine to Exclude the Playing of the "1-877" Jingle is
DENIED;

31

5. America Can!'s Motion in Limine to Preclude Kars 4 Kids from Offering Evidence
of Use of the Claimed "KARS 4 KIDS" or "1-877-KARS-4-KIDS" mark prior to
August 3, 2000, is DENIED;
6. America Can!'s Motion in Limine to Exclude Kars 4 Kids' Argument that its
Claimed Marks are Famous is DENIED.

s/Peter G. Sheridan
PETER G. SHERIDAN, U.S.D.J.

April 18, 2019

32