J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 137

DECLARATION of Partha P. Chattoraj in Opposition re: 83 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T. Scherer.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C Part 1, # 4 Exhibit C Part 2, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K)(Chattoraj, Partha)

EXHIBIT A

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Practising Law lnslllale

IIntellectual Property Law Library I

Kane on
Trademark
Law
A Practitioner's Guide
lriflll leclilie»ll

Siegrun D. Kane

Chapter 4

Searching a Trademark

§ 4:1 Purpose of Search
§ 4:2 How and What to Search
§ 4:2.1 Scope of Search
§ 4:2.2 Timetable for Search
§ 4:2.3 Goods to Cover In Search
§ 4:2.4 Searching Shortcuts
§ 4:3 Slogans and Descriptive Terms
§ 4:4 Analyzing a Search
§ 4:4.1 Availability
[A] Spotting Potential Conflicts
[B] Overcoming Conflicts
§ 4:4.2 Protectability
[A] Evaluating the Risks

§ 4:1

Purpose of Search

Once a proposed mark is selected, it is prudent practice to run a
trademark search. A search helps to ferret out potential conflicts
(that is, prior use or intent-to-use claimants to a similar mark).
A search also gives you an idea of the protectability of the mark.
If there are numerous references to similar marks for similar
goods, the proposed mark may be considered "weak" and the
scope of protection narrow. 1

1.

See chapter 8, "Protecting a Trademark from Infringement," for
discussion of "weak" versus "strong" marks.

(Kane, Rei. #4, 9/11)

4-1

§4:2

KANE ON TRADEMARK LAW

Forgoing a search can be risky business. Defendant's failure to
make a search may constitute "carelessness" and weigh in favor of
plaintiffs right to injunctive relief. 2 Defendant's conduct of a
search may also be evidence of good faith when' it is sued by a
prior user who was not disclosed in the search. a
On the other hand, a less than complete search may get
defendant into trouble. In the Tommy Hilfiger case, the Second
Circuit criticized defendant for performing a search "limited solely
to registered or applied-for federal trademarks; despite its attorneys' advice that a wider search be conducted, Hilfiger did not do
one until after ISCYRA filed its suit."4
'
§ 4:2

How and What to Search

§ 4:2.1

Scope of Search

The scope ofthe search varies widely. It can include one or all of
the following:
•

U;S. Trademark Register;

•

U.S. pending trademark applications;

•

state registrations;

•

market directories;

•

telephone directory listings;

•

domain names;

•

online databases and industry publications directed to the
goods or services being searched;

•

trade name listings;

•

reported decisions; and

•

Internet websites.

2.

3.
4.

Chips 'N Twigs, Inc. v. Chip-Chip, Ltd., 414 F. Supp. 1003, 1015 (E.D.
Pa. 1976); cf. Pizzazz Pizza & Rest. v. Taco Bell Corp., 642 F. Supp. 88,
94 (N.D. Ohio 1986) ("no duty to conduct trademark search"). For
further discussion and case law regarding the duty to conduct a search,
see chapter 8, section 8:1.3[E] and notes 88-90.
Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 963 (2d Cir. 1981).
Int'l Star Class Yacht Racing Ass'n v. Tommy Hilflger, U.S.A., Inc., 80
F.3d 749, 753 (2d Cir. 1996), affd, 205 F.3d 1323 (2d Cir.), cert.
denied, 531 U.S. 873 (2000). For later developments in the Hilfiger
case, see chapter 8, note 89.

4-2

Proving the Fundamentals at Trial

§ 16:7.3

§ 16:7.3

The Hiring and Care of Expert Witnesses

If you think your case will benefit from expert testimony, it is a
good idea to get your expert early on. For one thing, skilled
trademark experts are in demand, and you would do well to get
your expert in place before he is hired by the other side. For
another, the presence of a highly regarded expert may foster
settlement. Early guidance by the expert, for example, as to
general theories, can also help in case preparation. And even if
the expert's report is excluded, it may be helpful to educate the
court as to your position.
How do you find an expert? Authors of trademark texts and
professors are generally a good bet. Their experience and writings
should qualify them as experts and provide impressive credentials.
Well-regarded practitioners in the field are also used as experts.
If you plan to use an expert who has written extensively about
trademarks, be sure to check his treatment of subjects pertinent to
your case. You can expect that this material will be reviewed by
your adversary.
You should also check the cases where the expert has previously
testified. This information will have to be furnished as part of the
expert's report, and you should be alert to any positions taken by
the expert that might seem inconsistent with his position in your
case.wo

98.
99.
100.

used incorrect definition of "descriptive mark"); Charter Nat'l Bank v.
Charter One Fin., Inc., 65 U.S.P.Q.2d 1684, 1685 (N.D. Ill. 2001)
(motion to disqualify law professor as expert on trademark law granted
under Daubert where professor has no practical experience in trademark law, none of his published work involves trademarks, and trademark law comprises only small subset of topics that he teaches); Edina
Realty, Inc. v. TheMLSonline.com, 80 U.S.P.Q.2d 1039, 1041
(D. Minn. 2006) (testimony by consumer behavior expert admitted
based on consumer focus groups, plaintiff's marketing budgets, empirical studies on general Internet usage, and statistics tracking consumer
use of defendant's sponsored link); WWP Inc. v. Wounded Warriors
Family Support Inc., 97 U.S.P.Q.2d 1688 (8th Cir. 2011) (simplicity of
expert's mathematical calculation is not basis for exclusion of testimony
under FED. R. EVID. 702).
[Reserved.]
[Reserved.]
Infinity Broad. Corp. v. Greater Boston Radio II, 32 U.S.P.Q.2d 1925,
1930 (D. Mass. 1994) (court finds expert's testimony unpersuasive when
difficult to reconcile with opinion expert previously expressed in
published articles).

(Kane, Rei. #4, 9/11)

16-29

§ 16:8

KANE ON TRADEMARK LAW

And by all means get in touch with the attorneys involved in an
expert's past cases. Attorneys for both sides are a useful source of
information as to the expert's performance under fire.
§ 16:8

Expert Discovery

§ 16:8.1

Identification of Experts

Federal Rule 26(a)(2) provides that the testifying expert must be
identified at least ninety days before the trial date or the date the
case is to be ready for trial. 101 If expert testimony is to be used to
rebut evidence on the same subject matter, the rebuttal expert's
report must be disclosed within thirty days after disclosure by the
other party. 102
Expert consultants who will not be called as witnesses need not
be disclosed. 103 However, the testifYing expert may be required to
disclose facts or data prepared by the expert when previously
acting as a consultant. 10 · 1 If the material can be reasonably viewed
as germane to the testifYing expert's opinion, then it must be
disclosed. 103·2 In addition, where a party designates an expert as a
testifYing witness and later decides not to call the expert, the expert
may be called to testify by the opposing party. 103·3 Failure to list a
witness will ordinarily lead to exclusion of that witness at trial. 104

101.

102.
103.

103.1.
103.2.
103.3.
104.

Disclosing witness pursuant to initial disclosure requirement of FED.
R. CN. P. 26(a)(1)(A) does not satisfY the expert disclosure requirements of FED. R. CN. P. 26(a)(2). Musser v. Gentiva Health Servs., 356
F.3d 751, 757 (7th Cir. 2004). Compliance with FED. R. Crv: P.
26(a)(2)(B)'s expert report requirement is necessary despite an expert
being employed by the party. McCulloch v. Hartford Life & Accident
Ins. Co., 223 F.R.D. 26, 28 (D. Conn. 2004).
FED. R. CN. P. 26(a)(2)(C).
FED. R. CN. P. 26(b)(4)(D). When a testifYing expert is subsequently
redesignated as a nontestif)ring expert, taking the expert's deposition
requires a showing of"exceptional circumstances." Estate of Manship v.
United States, 240 F.R.D. 229 (M.D. La. 2006).
Employees Committed for Justice v. Eastman Kodak Co., 251 F.R.D.
101 (WD.N.Y. 2008).
In re Commercial Money Ctr., Inc., Equip. Lease Litig., 248 F.R.D.
532 (N.D. Ohio 2008).
.
Penn Nat'l Ins. Co. v. HNI Corp., 245 F.R.D. 190 (M.D. Pa. 2007).
FED. R. CN. P. 37(c)(1).

16-30

Assigning a Trademark

§ 21:3.2

Goodwill must be assigned with the trademark in order to
protect consumers from deception and confusion:
[A] transfer of goodwill is required in order for an assignment
of a mark to be effective. The cases all seek to protect
customers from deception and confusion. 6

§ 21:3.2

The Indicia of Goodwill

It may not be enough to recite the transfer of goodwill in an
assignment document 7 (although this magic language should by all
means be used). In deciding whether goodwill has in fact accompanied the mark, a useful touchstone is whether the assignee has
obtained what he needs to carry on the business of the assignor. 8
Evidence on this point includes:

•

the transfer of tangible assets, for example, machinery,
secret formulae, and customer lists;

•

the substantial similarity of the assignee's goods to the
assignor's goods; and

•

the business status of the assignor after the assignment.
[A]

The Transfer of Tangible Assets

Where an entire business, that is, machinery, formula, customer
lists, etc., is purchased, it is easy to conclude that goodwill was
transferred. 9 This principle extends to the stock sale of an entire
company, which implies the transfer of company name and
trademark. 10
This is not to say, however, that failure to transfer tangible assets
means goodwill was not transferred. The importance of the assets
to the continuity of the business must be examined. Where the

6.

7.
8.
9.
10.

Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 678 (7th Cir. 1982).
Id.
Merry Hull & Co. v. Hi-Line Co., 243 F. Supp. 45, 51-52 (S.D.N.Y.
1965).
Okla. Beverage Co. v. Dr. Pepper Love Bottling Co., 565 F.2d 629, 632
(lOth Cir. 1977).
Ferrellgas Partners, Inc. v. Barrow, 80 U.S.P.Q.2d 1097 (M.D. Ga. 2006)
(continued use of original trademark by new owners also supports
transfer of goodwill).

(Kane, Rei. #4, 9/11)

21-3

§ 21:3.2

KANE ON TRADEMARK LAW

product is the result of a secret formula, the formula is critical to
the goodwill symbolized by the mark. 11 However, where the
assignee is able to duplicate the product formula and knows who
the customers are, there is no need for the assignor's written
formula or customer list to be transferred to the assignee. 12
An assignment without tangible assets may be valid if the mark is
used on goods with substantially similar characteristics. 13
[B]

The Similarity Between the Assignor's and
Assignee's Goods

In deciding if goodwill has been transferred, courts focus on the
similarities of the assignee's product to the assignor's:
Inherent in the rules involving the assignment of a trademark
is the recognition of protection against consumer deception.
Basic to this concept is the proposition that any assignment of
a trademark and its goodwill . . . requires that the mark itself
be used by the assignee on a product having substantially the
same characteristics. 14

The same principle applies to the assignment of a service mark:
[T]he transfer of goodwill requires only that the services be
sufficiently similar to prevent consumers of the service offered
under the mark from being "misled from established associations with the mark." 15

Product changes that were fatal to the assignment include:
•

11.
12.

13.
14.
15.
16.

change from cola flavor syrup to pepper flavor; 16

Mulhens & Kropff, Inc. v. Ferd. Muelhens, Inc., 43 F.2d 937, 939
(2d Cir.), cert. denied, 282 U.S. 881 (1930).
Sterling Brewers, Inc. v. Schenley Indus., Inc., 441 F.2d 675, 680
(C.C.P.A. 1971); Syntex Labs., Inc. v. Norwich Pharmacal Co., 315
F. Supp. 45, 55 (S.D.N.Y. 1970), ajfd, 437 F.2d 566 (2d Cir. 1971); see
also Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 678 (7th Cir.
1982).
Vittoria N. Am., L.L.C. v. Euro-Asia Imps., Inc., 278 F.3d 1076, 1083
(lOth Cir. 2001).
PepsiCo, Inc. v. Grapette Co., 416 F.2d 285, 288 (8th Cir. 1969).
Visa, U.S.A., Inc. v. Birmingham Trust Nat'l Bank, 696 F.2d 1371, 1376
(Fed. Cir. 1982), cert. denied, 464 U.S. 826 (1983).
PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969).

21-4