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

Filing 174

DECLARATION of Todd Anten in Support re: 77 MOTION to Preclude the Testimony of Defendant's Rebuttal Expert Witness Stephen M. Nowlis., 73 MOTION to Preclude the Testimony of Defendant's Expert Witness E. Deborah Jay.. 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, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H)(Chattoraj, Partha)

EXHIBIT F

Trademark
and
Deceptive
Advertising
SURVEYS
Law, Science, and Design

CU1 I [V CS T

fig..

aCi SPi th

Section of
Intellectual Property Law
WERICAN BAH ASSOCIATION

mnnrl

!`F
3/73
?O /,

Trademark
and Deceptive
Advertising
SURVEYS
Law, Science, and
Design
EDITED BY

Shari Seidman Diamond
and Jerre B. Swann*
`The editors' names are in alphabetical order to reflect the genuine
collaboration, if not always agreement, between the editors in producing
this volume.

Section of
Intellectual Property Law
AMflICAN

w Assocur

Ot

Cover by Daniel Mazanec/ABA Publishing.
The materials contained herein represent the views of each chapter author in his or her individual
capacity and should not be construed as the views of the author's firms, employers, or clients, or of
the editors or other chapter authors, or of the American Bar Association or the Section of Intellectual
Property Law, unless adopted pursuant to the bylaws of the Association.
Nothing contained in this book is to be considered as the rendering of legal advice for specific cases,
and readers are responsible for obtaining such advice from their own legal counsel. This book is
intended for educational and informational purposes only.
2012 American Bar Association. All rights reserved.
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Printed in the United States of America
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54321
Library of Congress Cataloging-in-Publication Data

Trademark and deceptive advertising surveys / edited by Shari S. Diamond
and Jerre B. Swann. — 1st ed.
p. cm.
Includes bibliographical references and index.
ISBN 978-1-61438-474-8 (print : alk. paper)
1. Trademarks—Law and legislation—United States. 2. Deceptive advertising—Law and
legislation—United States. 3. Market surveys—Law and legislation—United States. 4. Market
surveys—Methodology—United States. I. Diamond, Shari Seidman. II. Swann, Jerre B.
KF3193.T725 2012
346.7304' 88—dc23
2012021640
Discounts are available for books ordered in bulk. Special consideration is given to state bars,
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American Bar Association, 321 North Clark Street, Chicago, Illinois 60654-7598.
www.ShopABA.org

56

SECTION III

confusion studies to their early status as substantial contributors to the resolution of
infringement actions. 24

EVEREADY

The Questionnaire and Variants
In a typical Eveready format, a respondent is first shown an exemplar," photograph, 26 or
advertisement of defendant's trademarked (or "dressed") product 27 and is asked an openended "source confusion" question, "Who makes or puts out
followed by
?, "2x

24. See, e.g., James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 278-79 (7th Cir. 1976)
("The record ... establishes the consumer survey herein to have been fairly and scientifically conducted
by qualified experts ... [and it] qualifies as a reliable reproduction of prospective consumer reaction...
After finding that 15% of the survey respondents referred to Beefeater liquor ... ,when.. . asked who the
restaurant sponsor was, the district court found that the survey demonstrated nothing more than a `small
percentage'.... We cannot agree that 15% is small [or] de minimis. "); Union Carbide, 531 F.2d at 385
("A district judge's determination of evidentiary matters is entitled to great respect.... we would hesitate
to find his determination that Carbide failed to establish likelihood of confusion was clearly erroneous were
it not for the survey evidence presented at trial."). Among cases decided in the past 10 years, however, this
author found only 26 where even the results of an Eveready design overtly impacted a court's decision. See,
e.g., Re/Max Int'l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356 (S.D. Tex. 2009); Hermes
Int'l v. Lederer de Paris Fifth Ave. Inc., 50 F. Supp. 2d 212 (S.D. N.Y. 1999); Pharmacia Corp. v. Alcon
Labs., Inc., 201 F. Supp. 2d 335 (D.N.J. 2002). This author found only seven where the results of a Squirt
design overtly influenced the outcome. See, e.g., Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th
Cir. 2002); Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002); Gross v. Bare Escentuals
Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008). Courts more frequently rely on surveys than reported
cases suggest, but mute their reliance fearing reversal as to evidence that, likely, has been sharply criticized
by an opposing expert and that they may not fully understand. There clearly is a need to supply courts with
tools to promote sound survey practices by: (a) either expressing confidence in professionally executed
research; or (b) engendering fear among practitioners that: "a weak survey may actually detract" from a
case of infringement or an overblown critique may legitimize a survey. ConAgra, Inc. v. Geo. A. Hormel &
Co., 784 F. Supp. 700, 722 (D. Neb. 1992), aff'd, 990 F.2d 368 (8th Cir. 1993); see, Riviana Foods, Inc. v.
Societe Des Produits Nestle, S.A., 33 U.S.P.Q. 2d 1669, 1671 (S.D. Tex. 1994).
25. The nature of the stimulus may vary depending on whether point-of-sale, post-sale, or initial interest
confusion is at issue. Context at the point of purchase can convey information that consumers use in making
source determinations, and "the closer the survey context comes to marketplace conditions, the greater the
evidentiary weight it has," MCCARTHY, supra note 6 at § 32:163, which often requires displaying actual
products, packaging, or other source indicia that consumers would encounter at the point of sale.
26. With post-sale confusion, the purchasing context is often irrelevant and would give the respondent
information not available in a post-sale encounter. See Gateway, Inc. v. Companion Products, Inc., 68
U.S.P.Q. 2d 1407, 1420 (D.S.D. 2003) ("Post-sale confusion is particularly relevant in this case because
... [a]fter Cody Cow is purchased, the point of sale materials are removed by the purchaser, and [have]
no 'confusion obviating effect"). Accordingly, photographs or videos that fairly reproduce what a respondent would see in a post-sale environment are easier to control (and afford greater certainty as to what
respondents see) than actual displays that a field service may not faithfully execute in a shopping center
interviewing booth. See Hermes, 50 F. Supp. 2d at 222 approving a post-sale stimulus showing a "Kelly
bag (as carried by a woman walking at a distance of four feet)."
27. Stimulus exposure may occur in a shopping center interviewing booth, by mail in a call/mail/call
study, with Internet assistance in a telephone study, or exclusively via the Internet.
28. Open-ended questions "require the respondent to ... express an answer in his or her own words
[and] give the respondent fewer hints about expected or preferred answers." Diamond, supra note 9 at
391-92. The "puts out" phraseology in the original questionnaire is out-of-date and is supplemented with
who "makes" or like terminology in current Eveready versions.

LIKELIHOOD OF CONFUSION

57

"Why do you say that ?"29 "Sponsorship" and "affiliation" confusion questions 30 often
follow,31 frequently in closed-ended form: 32
Do you believe that whoever makes or puts out
ONE, is sponsored or approved by another company?
TWO, is not sponsored or approved by any other company? or
THREE, you don't know or have no opinion ? 33
[If ONE] What other company? [and] Why do you say that?
and/or
Do you believe that whoever makes or puts out
29. With the advent of experimental designs, and the acknowledged difficulty that consumers can have
in expressing "higher order processes," Richard E. Nisbett & Timothy DeCamp Wilson, Telling More than
We Can Know; Verbal Reports on Mental Processes, 84 PSYCHOLOGICAL REV. 231 (1977), the editors of
this book are of the opinion that "why" questions may no longer be necessary, particularly to demonstrate
causation. Courts, however, often like to play with the "clarifying" information that "why" questions produce, Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 572-73, 576 (E.D. N.Y. 1999);
some courts reject studies without "why" questions, Pep Boys Manny, Moe & Jack of Cal. v. Goodyear
Tire & Rubber Co., 2002 U.S. Dist. LEXIS 5925 *30-33 (E.D. Pa. 2002); and information developed from
"why" questions may be helpful to counsel in analyzing both consumer perceptions and the efficacy of the
control stimulus, H-D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755, 758 (7th Cir. 2007); 24 Hour
Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266, 280-81 (S.D. N.Y. 2006). Survey
experts should thus continue to ask "why" questions and report the responses thereto, but control cells, not
"why" questions, are critical for a scientific causality assessment.
30. Just as confusion may occur at three different points, it may take three different forms: Section 43 (a)
of the Lanham Act proscribes conduct that is "likely to cause confusion ... as to [i] affiliation ... , or as
to [ii] origin, [or as to iii] sponsorship, or approval...." Forward and reverse confusion further complicate
the variants and combinations potentially to be tested. 15 U.S.C. § 1125 (d)(1)(A).
31. This author has advocated that in dilution cases, an "association" question—"what other brand or
brands, if any, does
bring to mind"—may also follow, not for likelihood of confusion purposes, but to
obviate the expense of doing a separate dilution study. See Nike, Inc. v. NikePal Int'l Inc., 2007 U.S. Dist.
LEXIS 66686 (E.D. Cal. 2007). However, the universes differ for likelihood of confusion and dilution studies.
In addition, for reasons of added questionnaire length, sufficing, or the like, it may be that an added "association" question will not produce the level of association response as would a separate association study.
32. See, e.g., Starbucks U.S. Brands, LLC v. Ruben, 2006 TTAB LEXIS 54, *35-37 (T.T.A.B. 2006).
33. "[P]resentation of an explicit 'don't know' or 'no opinion' alternative [reduces demand effects
and] commonly leads to a 20% to 25% increase in the proportion giving that response." Diamond, supra
note 9, at 390. The benefits of "don't know" alternatives are debated in Michael Rappeport, Litigation
Surveys—Social "Science" as Evidence, 92 TRADEMARK REP. 957 (2002) and Jacob Jacoby, A Critique
of Rappeport 's 'Litigation Surveys—Social "Science" as Evidence,' 92 TRADEMARK REP. 1480 (2002).
Courts, to date, have typically favored explicit "don't know" alternatives. See, e.g., Cumberland Packing
Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 572 (E.D. N.Y. 1999); Procter & Gamble Pharms., Inc. v.
Hoffmann-La Roche Inc., 2006 WL 2588002 *22-25 (S.D. N.Y. 2006). Choices in closed-ended questions
must "cover all possible answers a respondent might give to the question [and "don't know" is arguably
always one possible answer]. If the list ... is incomplete, a respondent may be forced to choose one that
does not express his or her opinion." Diamond, supra note 9 at 393, citing Am. Home Prods. Corp. v.
Johnson & Johnson, 654 F. Supp. 568, 581 (S.D.N.Y. 1987).
"Recent research[, however,] shows that ['don't know'] quasi-filters as well as full filters may
discourage a respondent who would be able to provide a meaningful answer from expressing it[, by
providing] a cue that it is acceptable to avoid the work of trying to provide a more substantive response.
One solution ... is to provide respondents with a general instruction not to guess at the beginning of an
interview, rather than supplying [explicit 'don't know' options] to each question." Diamond, supra note
9 at 391. Another solution would be to use an explicit "don't know" to obtain a conservative estimate of
respondents holding an opinion when seeking to prove a likelihood of confusion, and using only a "don't
know" introductory admonition when seeking to disprove such a likelihood.

58

SECTION III

ONE, has a business affiliation or connection with another company?
TWO, does not have a business affiliation or connection with any other company?
or THREE, you don't know or have no opinion?
[If ONE] With what other company? [and] Why do you say that
? 34

Eveready has been so often approved that material variants are rarely encountered. 35
The follow-on questions, of course, may be phrased in a more open-ended fashion and,
under particular circumstances, a follow-on question may become the lead inquiry. 36
Radical alterations, however, often suggest a departure from the requirement that a design.
be objective. For example, the full filter question, "Based on what you just saw, do
you or don't you know who or what brand or company makes or puts out
containing an "admonishment" to respondents to answer only if they "know the correct
answer," was rejected as "tortured" and calculated to "produce a low response rate.
Nonetheless, variant approaches from the now-standard format delineated above, one
of them stemming from Union Carbide itself, do exist, both in the case law and literature:
"31

a. Where the owner of the senior mark is substantially anonymous and the
defendant's goods are in a different category, the respondent may be
asked: "Please name any other products put out by the same company
that puts out
"3R
34. In Eveready designs, follow-ons are considered as the "standard type and format of questions used to
gauge confusion...." Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp. 2d 335, 365-66 (D.N.J. 2002).
Failure by a defendant, seeking to disprove likelihood of confusion, to test for "sponsorship or affiliation"
may lead to rejection of its study. Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237, 252 n. 106 (S.D. N.Y. 1999),
aff'd, 216 F.3d 1071 (2d Cir 2000). With Squirt designs, courts have expressed concern with the cumulative
impact of closed-ended questions as to "same company," "affiliated company," and "sponsorship." See U.S.
West, Inc. v. Hatten Comm'ns Holding Co., Inc., 2002 TTAB LEXIS 620 *15—*20 (T.T.A.B. 2002) ("we
have accorded no weight to opposer's survey.... [A] respondent merely had to give a 'wrong' answer to
one of the pertinent [suggestive] questions in order to be counted as part of the 22.9% of the respondents
The "wrong answer" concern is alleviated in Eveready designs where respondents
who were 'confused.
are required to identify the "other company," and this author is unaware of any instance where a makes/
sponsors/affiliated trilogy in an Eveready test has engendered the strong demand-effects that can surface in
a Squirt design. See, e.g., Kargo Global, 2007 U.S. Dist. LEXIS 57320, at * 17, a traditional Squirt in which
80% of respondents in both the test and the control gave answers reflecting confusion.
35. The most bizarre is reported in Arche, Inc. v. Azaleia, U.S.A., 882 F. Supp. 334, 335 (S.D.N.Y. 1995):
Plaintiffs counsel designed a questionnaire and sent one of their employees, ... a parttime typist, drama student and actress, into Washington Square Park, which is located
within blocks of one of plaintiff's retail stores. Over a two day period, she approached a
number of people who, she said, looked as if they could afford plaintiffs shoes, which
sell at prices considerably higher than defendants'. [S]hod in defendants' shoes, [she]
asked the well-to-do passersby whether they could identify the shoes she was wearing.
36. In, e.g., James Burrough, 540 F.2d at 278, the lead inquiry was an open-ended sponsorship question:
"Who do you believe is sponsoring or promoting this restaurant?" Because respondents, prompted
by considerations of sufficing or otherwise, do not typically repeat answers, and follow-on questions
thus rarely add more than a few percentage points to the likelihood of confusion assessment, it may be
important to select the lead question that is most likely to elicit the type of confusion at issue, which, in
James Burrough, was sponsorship.
37. McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 2773, *59-60 (D.P.R. 2004) (the expert
"testified that he was guided by the. . . survey in Eveready.... The actual question asked in Eveready was
much simpler.... The differences ... are material, and likely influenced the responses.
38. Union Carbide, 531 F.2d at 385 n. 11. Only .6% of respondents identified the essentially anonymous
Union Carbide as the maker of defendant's Eveready lamp; 54.6% answered, however, that the same
").

").

LIKELIHOOD OF CONFUSION

la.

59

Either separately, or in a follow-on question, a respondent may be
tested as to an alternative form of "sponsorship confusion": whether
"the company that puts out " either "needed to get" or "did get"
permission and, if so, from whom. 39

c. To replicate the phenomenon that, as to "frequently bought household
goods ... , [ consumers] make quick decisions based on the `gestalt' of
the product": 40 (i) respondents may be shown a notebook with several
pages reflecting such "experience" brands grouped in different product
categories (one of which will include the allegedly infringing junior
brand); (ii) they will then be asked to list the brands they recall having
seen; and (iii) their measure of "confusion" will be the percentage of
respondents reporting having seen the senior brand. 41

concern that put out Eveready lamps also put out batteries, leading the court properly to conclude that the
survey not only supported a finding of likelihood of confusion, but was evidence of secondary meaning
of Eveready as well. Id. at 381. The "batteries" responses were particularly telling, given that the products
were not so related that respondents would have likely guessed that a lamp maker would also make
batteries.
39. See, e.g., Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1219 (C.D. Cal. 2000). Critics of
the "need to get" wording insist that it calls for a legal conclusion. Nat'l Football League Props., Inc.
v. Prostyle, Inc., 57 F. Supp. 2d 665 (E.D. Wis. 1999). Critics of the "did get" wording insist that a
respondent can have no way of knowing whether permission was obtained, and is thus inherently asked
to guess. Jacob Jacoby, Sense and Nonsense in Measuring Sponsorship Confusion, 24 CARDOZO ARTS &
ENTM'T L. J. 63 (2006). This author regards the debate largely as a waste of judicial resources. Swann on
U.S. Trademark Surveys, in CORBIN & GILL, SURVEY EVIDENCE. AND THE LAW WORLDWIDE, 333-34.
Consumers understand that using another's property generally requires permission, and are likely to evaluate the similarity of the stimuli and respond affirmatively or negatively in that pragmatic context, whether
the "need to" or "did get" wording is used.
40. ZEISEL & KAYE, supra note 15, at 158. Courts split as to how long a respondent should be exposed
to a stimulus. Hurried consumers do not typically study items, and stimuli reflecting such items should
not be left with respondents during the administration of a questionnaire. See Am. Home Prods. Corp.
v. Procter & Gamble Co., 871 F. Supp. 739, 748 (D. N.J. 1994) ("consumers do not normally meditate
... over details for an appreciable length of time"). As to many items, however, consumers do study
packages. See Cumberland Packaging Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 578 (E.D. N.Y. 1999)
("In an actual market situation, the product would not disappear from the consumer's eye just as he or
she is about to make a purchase.
See Jerre B. Swann, A "Reading" Test or a "Memory" Test: Which
Survey Methodology Is Correct?, 95 TRADEMARK REP. 876 (2005) and Mike Rappeport, Response to
Survey Methodology Articles, 96 TRADEMARK REP. 769 (2006), advocating the view that the stimulus, in
most circumstances, be left with the respondent. See Henry D. Ostberg, Response to an Article Entitled,
"A 'Reading' Test or a 'Memory' Test: Which Survey Methodology Is Correct?," 95 TRADEMARK REP.
1446 (2005), advocating the obverse.
41. ZEISEL & KAYE, supra note 15 at 158-59. Dr. Zeisel's approach, for point-of-sale confusion, may
arguably be inappropriate where the junior and senior brands are shelved adjacent to one another so that
respondents have the context of the senior brand to make judgments as to the junior. Winner Int'l LLC v.
Omori Enter's, Inc., 60 F. Supp. 2d 62, 71 (E.D.N.Y. 1999). The author has criticized, however, cases like
Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) that overly focus on context and
labeling with respect to inexpensive, frequently (and rapidly) purchased "experience" goods of the type
encompassed by Dr. Zeisel's "notebook" design. Jerre B. Swann, An Interdisciplinary Approach to Brand
Strength, 96 TRADEMARK REP. 943, 970-71 (2006).
").

60

SECTION III

Categorization and Pattern Matching in an Eveready Format
To appreciate fully Eveready's benefits, it is necessary to review current conditions of
commercial clutter. Even half a century ago, there was a "babel of brands, "42 and the
"number of choices has [since] grown dramatically. "43 Books tout there is "Too Much
Choice. "44 Consumers are bombarded by brand stimuli and cannot "attend" to all they
see; 45 of necessity, they "are highly selective. "46
Even when a stimulus registers on their consciousness, consumers "rarely .. .
consider all [of its] features"; 47 rather, given their attention constraints amid clutter,
they use shortcuts to `label, identify, and classify" information. 45 If, for example, they
see a small creature with the salient features of feathers and wings, they "categorize"
it as a bird without stopping to test for all avian characteristics 49
In memory, 50 top-of-mind brands function as antidotes to clutter; they exist as
schemas: "clusters "51 of information: (a) with source identifying (reputational) nodes
at their center; (b) very strongly linked to the product(s) or service(s) in connection with which they are used; and (c) also linked to multiple other associations that
have been engrafted on the schema by advertising, word of mouth, or experience. 52
Cognitively, "a unique brand name and cohesive brand identity are probably the most
powerful pieces of information for consumers ... , enabling [them] to efficiently
organize, store, and retrieve information from memory. " 53 Strong brands operate,

42. Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57
YALE L.J. 1165, 1197 (1948).
43. AMA MARKETING MGMT. (Spring 2000).
44. STEVEN M. CRISTOL & PETER SEALEY, SIMPLICITY MARKETING 7 (2000).
45. WAYNE D. HOYER & DEBORAH J. MACINNIS, CONSUMER BEHAVIOR 115 (3d ed. 2004) ("Shoppers
in a supermarket are exposed to numerous products, brands, ads, displays, signs, prices, logos, and
packages [and] are generally unable to examine all those marketing stimuli simultaneously."); Jacob
Jacoby, The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame,
Confusion and Dilution, 91 TRADEMARK REP. 1013, 1022, 1034 (2001) ("the vast majority of stimuli fail
to register upon the consumer's consciousness").
46. PHILIP KOTLER & KEVIN LANE KELLER, MARKETING MANAGEMENT 186 (12th ed. 2006) ("the
average person may be exposed to over 1,500 ads or brand communications a day. . . .[M]ost stimuli
will be screened out...: .). See Toro Co. v. ToroHead, Inc., 61 U.S.P.Q. 2d 1164, 1180 (T.T.A.B. 2001)
("Every day consumers are bombarded with hundreds, if not thousands, of advertisements.... [M]any .. .
do not make a significant impression....").
47. Jacoby, supra note 45 at 1035, 1037.
48. HOYER & MACINNIS, supra note 45 at 115.
49. Jerre B. Swann & Michael J. Tarr, Configuration Protection Harmonized, 94 TRADEMARK REP.
1182, 1192 (2004).
50. Little information can be held (and attended to) in active consciousness ("cognitive workspace"),
but is stored in memory where accessibility ranges from instantaneous to "virtually unavailable." Jacoby,
supra note 45 at 1015-16.
51. Jacoby, supra note 45 at 1024-25; Swann, supra note 41 at 943, 946 (2006).
52. For a discussion and depiction of the Nike brand schema, see J. PAUL PETER & JERRY C. OLSON,
CONSUMER BEHAVIOR & MARKETING STRATEGY (7th ed. 2005) at 58-61 (noting at 74-81 that a brand is
a "bundle" of functional and psychosocial attributes, benefits, and "value satisfiers"). For diagrams as to
how schemas help "interpret the outside world," see Jacoby, supra note 45 at 1069-70.
53. Jacoby, supra note 45 at 1025; see, Hoyer & Maclnnis, supra note 45 at 183.

LIKELIHOOD OF CONFUSION

61

moreover, much in the manner of the picture of a celebrity on the cover of a magazine in a sidewalk kiosk—they attract attention in an otherwise hurried environment. 54
As an example, the adidas schema 55 has, for many consumers in the athletic
footwear category: (a) the marks (adidas, three stripes) and other indicia (shell toe/
Superstar design) at its core (b) strongly linked to athletic shoes and sportswear and
(c) also linked to a high-quality perception, soccer, Olympics sponsorship, and the
like. When presented with a post-sale photograph of an athletic shoe with four parallel stripes on the side and with a shell toe, and asked the question, "Who makes or
puts out [this]," respondents do not meticulously review each feature of the stimulus
(they rarely count stripes) but engage in "pattern matching" with respect to its salient
characteristics. 56 Respondents search their memory and identify the stimulus "based
on its similarity to what [they] already know, "S7 and "[w]hen stimulus information
offers a sufficient match to a schema possessed by the perceiver, the schema is called
up from memory and used ... to guide inferences. "58 As to the four stripe/shell toe
example, 40 percent of test cell respondents typically draw the inference that the
stimulus is adidas. 59

The Confusion Factors Tested by Eveready
The Eveready format thus primarily addresses three confusion factors: similarity of
marks, similarity of products, and commercial strength (expressed as top-of-mind
awareness). Strength is the key: (i) if a schema is easily accessible in memory, it can
be cued by a similar mark even where there is little or no similarity in products; 60 and
(ii) if a brand is dominant in the mind (COKE), its schema may be cued by another
top-of-mind brand in the category (PEPSI), even where there is no similarity of
marks." If, however, the senior mark is not accessible, it obviously cannot be cued
irrespective of mark and product similarity: when an "open-end [Eveready] question
[is] used [in connection with] a mark that is not particularly well-known, it needs to

54. Peter & Olson, supra note 52 at 118-19.
55. For purposes of full disclosure, this author states that he has appeared as counsel for Adidas A.G.
in numerous cases.

56. Jacoby, supra note 45 at 1035, 1037.
57. HOYER & MACINNIS,

supra note 45 at 102, 115-16 ("The cognitive networks in one's memory ..

play a fundamental and often decisive role in interpreting incoming information from the outside world.
58. Donal E. Carlston & Eliot R. Smith, Principles of Mental Representation, in SOCIAL PSYCHOLOGY:

").

HANDBOOK OF BASIC PRINCIPLES 196 (E. Tory Higgins & Arie W. Kruglanski eds., 2007).
59. Expectation may drive perception, JUDITH L. ZAICHOWSKY, THE PSYCHOLOGY BEHIND TRADEMARK

INFRINGEMENT 74 (2006), and respondents may overwrite stimuli to conform to memory (e.g., they may
convert four stripes to three).

60. An Eveready survey can thus measure the "reach" of a strong mark. "A mark that is strong ... is
more likely to be remembered and more likely to be associated in the public mind with (or triggered by] a

greater breadth of products ... , than is a mark that is weak because it is relatively unknown...... James

Burrough, 540 F.2d at 276.
61. William G. Barber discusses this phenomenon in a dilution context in How to Do a Trademark
Dilution Survey (or Perhaps How Not to Do One), 89 TRADEMARK REP. 616 (1999).

SECTION III

62

be understood that the ... `top-of-mind' awareness of the brand ... required [by the
format] may significantly underestimate [the likelihood of] confusion. "62

The Need for a Control Cell
Through the early 1990s, many survey experts opined that, because of its open-ended
design, an Eveready did not lend itself to guessing and did not require a control cell.
The mere posing of a question, however, often suggests that there is a correct answer
t that the respondent should know, and to be helpful (or avoid appearing unintelligent),
some respondents will "guess," e.g., they will search their memory, often for what
they consider the leading brand (sometimes irrespective of similarity). 63 Control cells
are thus necessary to confirm causality—to filter out market share and other effects in
both likelihood of confusion and dilution studies.' This author can recall and, indeed,
has recently experienced, a control cell in a dominant brand case that produced market
share noise exceeding 40 percent.

The Scope of Eveready
In cases involving top-of-mind marks, 55 the Eveready format is, to repeat, the gold
standard for fundamental cognitive and marketing reasons:
a.

An Eveready study (a) used among prospective consumers of the
alleged infringer's goods; (b) in face-to-face interviews; and (c) with
the stimulus left in the respondent's view, engenders respondent "attention" approximating that of an "involved" consumer and thus produces,
coupled with a control cell to filter market share and other effects, a
conservative ("reliable") estimate of likelihood of confusion; 57

b. Reviews of "why" answers often reveal that senior mark responses
to a "who makes or puts out" question have occurred because: (a)

62. PHYLLIS J. WELTER, TRADEMARK SURVEYS § 24.03[l][c] (1999); Simon & Schuster v. Dove Audio,
Inc., 970 F. Supp. 279, 292 (S.D.N.Y. 1997). Welter postulates that the Eveready format requires "unaided
awareness" of the senior brand. In the author's view, however, the format more closely resembles a partially
aided awareness test: it assesses whether the junior user's mark and product cues are similar enough to
those of an accessible senior brand to trigger the latter's schema in response to a source (or sponsorship or
affiliation) confusion question.
63. Winner Int'l, LLC v. Omori Enters., Inc., 60 F. Supp. 2d 62, 70-71 (E.D.N.Y. 1999) ("There is no
way to tell whether those who answered "The Club". . . simply guessed at the name because it is a famous
brand...."). While four-stripe athletic shoes produce appreciable adidas responses, they also trigger a
modicum of Nike mentions.
64. See Jerre B. Swann, Dilution Redefined for the Year 2002, 92 TRADEMARK REP. 585, 619-20 (2002).
65. Or where there is no physical or temporal proximity between the junior and senior uses so that the
only possible comparison can occur in the mind.
66. Or, under the circumstances of note 65, supra, the only marketplace replicating standard.
67. Jerre B. Swann, Sophistication and the Sciences, 97 TRADEMARK REP. 1309 (2007). In the author's
view, net confusion from an Eveready of less that 10% may suffice to support a conclusion as to likelihood
of confusion (and, because of an elevated degree of noise discussed below, a net level above 10% may be
required from a Squirt variant). See MCCARTHY, supra note 6 at § 32:189, discussing a 10% threshold. A
separate chapter is devoted herein to the relevance of various percentage levels.

LIKELIHOOD OF CONFUSION

63

"stored knowledge" of the senior mark is "accessible" in a respondent's
memory;" and (b) there is a "fit between the stored knowledge and
the [junior] stimulus."69 Accordingly, an expert's conclusion as to a
"likelihood of confusion," based on an appreciable percentage of senior
mark responses, has cognitively sound underpinnings; 70
c. Because a strong mark is more likely to he attended to in the market than
a weak mark, 71 it is reasonable to assume that a stimulus that "fits" the
strong mark's schema will be attended to, and that an Eveready survey
thus measures probable assessments in the marketplace, not artificially
created or forced opportunities; and
d. The only hypothetical is the degree to which a respondent would be
likely to encounter the junior use in the marketplace, and any concern
as to the real-world basis for that likelihood is alleviated by limiting !'
the universe to consumers and prospective consumers of goods in the
category of the alleged infringer. 72
With respect to commercially strong marks, therefore, the Eveready format is a
relevant, reliable, and objective test of likelihood of confusion. It satisfies critical
Daubert criteria as interpreted in the 2000 advisory committee's notes to Federal
Rule of Evidence 702: it is a "tested" rather than a subjective approach; it has been
peer reviewed; with a control cell, it has a known error rate; and it has been generally
accepted in the scientific community. 7 '
As to its acceptance, scientists may have adopted Eveready because they know
that Eveready has been embraced by the courts (i.e., they are driven by legal rather
68. See, e.g., Re/Max Int'l, Inc. v. Trendsetter Realty, LLC., 655 F. Supp. 2d 679, 705 (S.D. Tex. 2009)
("The survey showed that many of the participants based their responses specifically on the red, white, and
In Re/
blue colors and arrangement of the [defendant's] sign [that mimicked plaintiff's arrangement].
Max, indeed, expectation drove perception: "Some respondents thought they saw the name 'RE/MAX' on
the Trend Setter sign, despite the presence of the words 'Trend Setter' in bold face across the middle." Id.
69. See E. Tory Higgins, Knowledge Activation: Accessibility, Applicability, and Salience, in SOCIAL
PSYCHOLOGY: HANDBOOK OF BASIC PRINCIPLES, supra note 58 at 135; Michel Tuan Pham & Gita V.
Johar, Contingent Processes of Source Identification, 24 J. OF CONSUMER RESEARCH 249, 250 (1997)
("The probability of source identification through cued retrieval depends essentially on [a.] the strength of
the semantic link between the source and content that is formed at encoding, and [b.] the overlap between
the cues that are available at retrieval, and the to-be-recollected material......).
70. See, e.g., Jacoby, supra note 45 at 1028, 1034.
71. See Swann, supra note 41 at 955. "[F]amiliar brands are selectively given more exposure, attention,
comprehension and retention by consumers," Steve Hoeffler & Kevin Lane Keller, The Marketing
Advantages of Strong Brands, 10 BRAND MGMT. 421, 424 (2003), and owners of strong brands thus get
"dramatically more impact from the same communications budget." DAVID A. AAKER, MANAGING BRAND
EQUITY 186 (1991).
72. Such a universe definition is thus a "relevancy" requirement. See, e.g., Jacob Zimmerman v. Nat'l
Ass'n of Realtors, 2004 TTAB LEXIS 180 (T.T.A.B. 2004). Likewise, where the junior user's operations
are geographically confined, the study should be confined to the area where there are respondents with the
opportunity to come into contact with the junior mark. See, e.g., James Burrough„ 549 F.2d at 277; Jacob
Jacoby, SURVEY AND FIELD EXPERIMENTAL EVIDENCE, IN THE PSYCHOLOGY OF EVIDENCE AND TRIAL
PROCEDURE 181 (Saul M. Kassin & Lawrence S. Wrightsman eds., 1985).
73. See FED. R. EVID. 702 advisory committee's notes (2000).
").

"1

64

SECTION III

than by scientific considerations' ^), but it is not necessary here to resolve such chicken/
egg conundrums. Based on case law and the literature, Eveready (updated with a
control cell) should be regarded as the "model" for testing likelihood of confusion as
to top-of-mind marks.

SQUIRT
As befits current conditions of marketplace clutter, almost two million marks are
federally registered. Comparatively few have (or can hope to develop) sufficiently
strong memory traces so as to be cued by pattern matching engendered by a monadic
exposure to a similar junior use. The internal search of memory for a strong brand's
schema that exists at the core of an Eveready study is thus hostile to the general run
of marks; for weak marks, an Eveready format will consistently produce negligible
estimates of likelihood of confusion. Ergo the aided Squirt format, with an external
review of the marks at issue that flows from their side-by-side or sequential exposure
inherent in the administration of a Squirt survey. 75

The Questionnaire and Variants
In Squirtco, 76 respondents heard radio ads for SQUIRT and QUIRST and were then
asked "Do you think SQUIRT and QUIRST are put out by the same company or by
different companies?," followed by "What makes you think that?" Currently, questions as to "sponsorship" and "affiliation" confusion usually follow. 77

J. BEST & BENJAMIN RADCLIFF, POLLING AMERICA, AN ENCYCLOPEDIA OF PUBLIC
435 (2005) ("Innovative questioning techniques tend to be less common in legal surveys than
in nonlitigation contexts because generally it is preferable to ask questions of the sort that have garnered
court approval.").
75. Where weak brands are externally available for comparison, the results of an Eveready format
(with its requirement of internal accessibility) may still be relevant, e.g., as bearing on the strength (or
allegations of strength) of the senior brand, but should not be used alone to "disprove" a likelihood of
confusion. See Gosmile, Inc. v. Dr. Jonathan Levine, D.M.D.P.C., 769 F. Supp. 2d 630 (S.D. N.Y. 2011).
Many courts, however, permit defendants to do so, see, e.g., Nat'l Distillers Prods. Co., LLC v. Refreshment Brands, Inc.,198 F. Supp. 2d 474, 482-84 (S.D.N.Y. 2002); GMA Accessories, Inc. v. Croscill, Inc.,
2008 U.S. Dist. LEXIS 16052, *27 (S.D.N.Y. 2008). The better view is expressed in Louis Vuitton v.
Dooney & Bourke, 525 F. Supp. 2d at 633 (S.D.N.Y. 2007): because "in the marketplace, consumers [had]
a reasonable likelihood of encountering the marks at issue one after the other," the defendant should have
also conducted a two-room Squirt "to take account of the possibility of a sequential viewing."
76. 628 F.2d at 1089 n.4. As an interesting side-note, SQUIRT was deemed a strong mark; in Union
Carbide, the District Court (erroneously) found that Eveready was descriptive and did not merit protection.
The use of Eveready for strong marks and Squirt for weak marks thus represents a role reversal wrought
by history.
77. E.g., "Do you think the first ad you just heard: (a) comes from a company that has a business
connection with the company that put out the second ad you just heard; or (b) comes from a company that
does not have a business connection with the company that put out the second ad." See Kargo Global,
2007 U.S. Dist. LEXIS 57320, at * 14. As noted supra at n.34, some courts have expressed concern with
the cumulative impact of a series of closed-ended questions in a traditional Squirt format as to "same company," "affiliated company," and "authorization or sponsorship."
74. SAMUEL

OPINION