Lifeguard Licensing Corp. et al v. kozak et al

Filing 167

MEMORANDUM AND ORDER denying 134 Motion to Preclude; denying 152 Motion to Preclude. For the foregoing reasons, both the defendants' motion to preclude (Docket no. 134) and the plaintiffs' motion to preclude (Docket no. 152) are denied. SO ORDERED. (Signed by Magistrate Judge James C. Francis on 3/7/2017) Copies Transmitted this Date By Chambers. (anc) Modified on 3/7/2017 (anc).

surveys

--

a

“Teflon”

survey

(that

is,

a

survey

“in

which

participants are given a series of names and asked whether those
names are brand names or common names, in an effort to discern how
the public perceives each name,” Horizon Mills Corp. v. QVC, Inc.,
161 F. Supp. 2d 208, 220 (S.D.N.Y. 2001) (citing E.I. DuPont de
Nemours and Co. v. Yoshida International, Inc., 393 F. Supp. 502
(E.D.N.Y. 1975))), and a “Thermos” survey (that is, a survey that
“asks participants how they would identify a particular product
given that it performs certain functions, in an effort to identify
if the name of the product is generic,” id. (citing American
Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9
(D. Conn. 1962))).

(Declaration of Thomas P. Heed dated Dec. 12,

2016 (“Heed Preclusion Decl.”), ¶ 4). Dr. Thomas Maronick authored
two reports.

The first (the “Maronick I Report”) was completed in

connection with a prior litigation regarding the same marks at
issue here entitled Lifeguard Licensing Corp. v. GoGo Sports, Inc.,
No. 10 Civ. 9075 (S.D.N.Y) (“GoGo”); the second (the “Maronick II
Report”) is based on two surveys performed in connection with this
litigation. (Heed Preclusion Decl., ¶¶ 6-7). The plaintiffs offer
two rebuttal reports -- one for each of the defendants’ experts –authored by Brian M. Sowers.

(Heed Preclusion Decl., ¶¶ 8-9).

Each side argues that the reports propounded by the other side
are

inadmissible

pursuant

to

Daubert

v.

Merrell

Dow

Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Kumho Tire Co. v.
Carmichael, 526 U.S. 137 (1999).

Specifically, the defendants

claim that Mr. Sowers is not sufficiently qualified to testify as
2

an expert (Defendants’ Memorandum of Law in Support of Motion to
Exclude Plaintiffs’ Expert Witness Brian Sowers (“Def. Memo.”) at
16-21), and that his methods are unreliable (Def. Memo. at 22-23).
The plaintiffs contend that the reports of Mr. Berger and Dr.
Maronick are unreliable because the surveys underlying them were
fundamentally flawed (Plaintiffs’ Memorandum of Law (“Pl. Memo.”)
at 12-25),1 and because both experts admitted during deposition
testimony that the marks are not generic (Pl. Memo. at 26-30).
Discussion
A.

Legal Standard

According to Rule 702 of the Federal Rules of Evidence, expert
testimony is admissible if:
(a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles
and methods; and
(d) the expert has reliably applied the principles and
methods to the facts of the case.
The

proponent

of

expert

opinion

testimony

must

demonstrate

admissibility by a preponderance of proof, see Daubert, 509 U.S. at
592 n.10, and the district court serves as a gatekeeper to ensure
that an expert is properly qualified and that his opinion testimony
is relevant and reliable, see id. at 597; Kumho, 526 U.S. at 14748; Fed. R. Evid. 702 advisory committee’s note to 2000 amendments.
1

The plaintiffs’ memorandum is not paginated, so I use the
page numbers assigned by the Court’s electronic case filing (“ECF”)
system.
3

An

expert

may

be

qualified

based

on

“knowledge,

skill,

Fed. R. Evid. 702.

experience, training, or education.”

his

Expert

opinion testimony must be both relevant -- that is, it must tend to
make the existence of any fact that is of consequence to the
determination of the action more or less probable -- and reliable.
Amorgianos v. National Railroad Passenger Corp., 303 F.3d 256, 265
(2d Cir. 2002).

Expert testimony is considered reliable if: (1)

the testimony is based on sufficient facts or data; (2) the
expert’s technique or methodology in reaching the conclusion is
reliable; and (3) the expert has applied the methodology reliably
to the facts of the case.
589;

Kumho,

526

determinative,

U.S.

and

Fed. R. Evid. 702; Daubert, 509 U.S. at

at

149.

district

However,

courts

have

no

broad

deciding the admissibility of expert testimony.

one

factor

is

discretion

in

See United States

v. Farhane, 634 F.3d 127, 158 (2d Cir. 2011); Fed. R. Evid. 702
advisory committee’s note to 2000 amendments.
B.

Plaintiffs’ Motion
1.

Experts’ Admissions

The plaintiffs assert that each of the defendants’ experts
admitted during his deposition that the “Lifeguard Marks . . . are
not generic with respect to apparel or clothing.”

(Pl. Memo. at

27). This, they contend, requires preclusion of the expert reports
because “[i]t is well settled case-law [sic] in the Second Circuit
that an Affidavit provided in support of a summary judgment motion
(and by extension, trial testimony as well)[] that contradicts
prior deposition testimony must be disregarded.”
4

(Pl. Memo. at

26); see, e.g., Mack v. United States, 814 F.2d 120, 124 (2d Cir.
1987) (“It is well settled in this circuit that a party’s affidavit
which contradicts his own prior deposition testimony should be
disregarded on a motion for summary judgment.”).
The rule to which the defendants allude is known as the “sham
affidavit” doctrine, see, e.g., RBFC One, LLC v. Zeeks, Inc., 367
F. Supp. 2d 604, 616 (S.D.N.Y 2005), or the “sham issue of fact”
doctrine, see, e.g., In re Fosamax Products Liability Litigation,
707 F.3d 189, 193 (2d Cir. 2013).

It holds that “a party may not

create an issue of fact by submitting an affidavit in opposition to
a

summary

judgment

motion

that,

by

omission

or

addition,

contradicts the affiant’s previous deposition testimony.”

Kennedy

v. City of New York, 570 F. App’x 83, 84 (2d Cir. 2014) (quoting
Hayes v. N.Y.C. Department of Corrections, 84 F.3d 614, 619 (2d
Cir. 1996)). The doctrine is designed to vindicate “the utility of
summary judgment as a procedure for screening out sham issues of
fact,” Perma Research & Development Co. v. Singer Co., 410 F.2d
572, 578 (2d Cir. 1969), and champions testimony subject to crossexamination (such as deposition testimony) over other statements
because of its heightened reliability, see Jimenez v. All American
Rathskeller, 503 F.3d 247, 253 (3d Cir. 2007) (citing Perma
Research, 410 F.2d at 578).
It is far from clear that the doctrine is applicable in these
circumstances.
expert

reports

First, the purported “sham affidavits” here are
that

were

submitted

5

prior

to

each

authors’

deposition

and

about

which

each

was

cross-examined.2

(Heed

Preclusion Decl., ¶¶ 4, 6-7; Deposition of James T. Berger dated
Oct. 6, 2016 (“Berger Dep.”), attached as Exh. A to Declaration of
Gerald Grunsfeld dated Jan. 3, 2017 (“Grunsfeld Decl.”); Deposition
of Thomas Maronick dated Sept. 27, 2016 (“Maronick Dep.”), attached
as Exh. B to Grunsfeld Decl.); see Zikianda v. County of Albany,
No. 12 CV 1194, 2015 WL 5510956, at *57 n.24 (N.D.N.Y. Sept. 15,
2015) (“The experts’ depositions occurred after they authored
reports and it is unclear that the doctrine would apply under those
circumstances.”).

Second, the expert reports pre-date the filing

of any motion for summary judgment.

(Heed Preclusion Decl., ¶¶ 4,

6-7). The Second Circuit has repeatedly reasoned that the doctrine
prevents consideration of contradictory statements, not subject to
cross-examination, submitted in response to a motion for summary
judgment.

See, e.g., In re Fosamax, 707 F.3d at 194 (“[The sham

issue of fact] doctrine applies to stop [the non-moving party] from
manufacturing a factual dispute by submitting testimony from an
expert whom she tendered, where the relevant contradictions . . .
are unequivocal and inescapable, unexplained, arose after the
motion for summary judgment was filed, and are central to the claim
at issue.” (emphasis added)); Margo v. Weiss, 213 F.3d 55, 60-61

2

The defendants served Mr. Berger’s original report prior to
his deposition.
(Declaration of Thomas P. Heed dated Dec. 20,
2016, ¶ 3). Mr. Berger amended his report after his deposition.
(Amended Report of James T. Berger dated Oct. 11, 2016 (“Berger
Report”), attached as Exh. B to Heed Preclusion Decl., ¶ 1). The
plaintiffs concede that the amended report is “essentially
identical in substance to [the] original report.” (Pl. Memo. at 14
n.1).
6

(2d Cir. 2000) (“[T]he plaintiffs cannot defeat a motion for
summary judgment by responding with affidavits recanting that
earlier testimony.” (emphasis added)).3
Even assuming the doctrine is an appropriate vehicle to
preclude the defendants’ expert reports in support of their defense
of genericness, it does not apply here because no statement made by
either

expert

clearly

contradicts

his

deposition

testimony.

“Generic marks, consisting of words that identify the type or
species of goods or services to which they apply, are totally
lacking in distinctive quality; they are not entitled to any
protection against infringement . . . .” TCPIP Holding Co. v. Haar
Communications, Inc., 244 F.3d 88, 93 (2d Cir. 2001).

Genericness

is determined by discerning “[t]he primary significance of the
registered mark to the relevant public[,] rather than purchaser
motivation.”

15

U.S.C.

§

1064(3).

The

Second

Circuit

has

recognized that “[i]t is well-established that ‘[a] word may be
generic of some things and not of others,’” pointing to the
“familiar example” of “‘Ivory[,]’ [which] would be generic when
used to describe a product made from the tusks of elephants but
arbitrary as applied to soap.”

Genessee Brewing Co. v. Stroh

Brewing Co., 124 F.3d 137, 147 (2d Cir. 1997) (second alteration in
original) (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,

3

I disagree with the plaintiffs’ assertion that this doctrine
applies, “by extension, [to] trial testimony.” (Pl. Memo. at 26).
As noted, the doctrine protects against creating a false issue of
fact with testimony not subject to cross-examination. At trial,
where a witness may be cross-examined and impeached with prior
inconsistent statements, these concerns are ameliorated.
7

1183 (5th Cir. 1980), and Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976)).
The plaintiffs interpret these principles to require the
defendants to show that consumers define the word “lifeguard” as an
article of apparel.
Mr.

Berger

and

They point to deposition testimony from both

Dr.

Maronick

that

assertedly

supports

their

contention that the experts “made it clear that the term lifeguard
refers to the occupation of lifeguarding” and “not the genus [of]
t-shirts/tank top/sweatshirts etc.”
Dep. at 8-9, 11).

(Pl. Memo. at 28-30; Maronick

This argument betrays a cramped view of the

jurisprudence on genericness.
For example, Anvil Brand, Inc. v. Consolidated Foods Corp.,
464 F. Supp. 474 (S.D.N.Y. 1978), addressed the mark RUGGER or
RUGGERS as used on knit sports shirts.

Id. at 476.

The court

found that “the game of rugby ha[d] become popular in the United
States and consequently, the public ha[d] become familiar with the
distinctive clothing worn by the players.”

Id. at 480.

It held

that the terms “Rugger” or “Ruggers” were generic as applied to
“the clothing commonly associated with the game of rugby.”
see also Polo Fashions, Inc. v. Extra Special

Id.;

Products, Inc., 451

F. Supp. 555, 559 (S.D.N.Y. 1978) (use of word “Polo” generic as to
clothing associated with sport).

These cases indicate that a word

denoting a sport or trade can be generic when applied to clothing
commonly associated with that sport or trade.

Therefore, an

admission that the term “lifeguard refers to the occupation of
lifeguarding” is not an admission that the term “lifeguard” cannot
8

be generic as applied to certain types of apparel.
For

an

plaintiffs

additional
challenge

“unequivocal[ly]
reports.

and

reason,

Mr.

the

Berger’s

testimony
expert

inescapable[ly]”

In re Fosamax, 707 F.3d at 194.

on

which

the

report

does

not

contradict

the

expert

Mr. Berger agreed with

counsel’s statement that “lifeguard can be generic when describing
the occupation of lifeguards but can be a brand name when referring
to apparel.”

(Berger Dep. at 145).

Not only is the statement

couched in terms of possibility -- the term “can be generic” or
“can be a brand name” -- but, in context, the testimony can be
interpreted to indicate that the “label lifeguard on a shirt” could
be a generic use.

(Berger Dep. at 144-45).

The plaintiffs thus

overstate their case when they assert that “Mr. Berger agreed that
the word Lifeguard is a generic term for the lifeguard occupation
but a brand name for apparel.”
2.

(Pl. Memo. at 27).

Qualifications of Mr. Berger and Dr. Maronick

The plaintiffs do not directly contend that Mr. Berger and Dr.
Maronick are not qualified to be experts; instead their papers are
larded with derogatory comments about the authors’ reputations and
qualifications.

(Pl. Memo. at 13 (noting that Mr. Berger’s survey

in another case was “fundamentally flawed” and precluded), 14-15
(same), 20 (labeling Mr. Berger’s “Teflon” survey “absurd” and
“laughable”), 21 (suggesting that Mr. Berger is “incompeten[t]” and
that Dr. Maronick is “ill-informed” and “has no understanding [of]
trademark genericness”), 25 (Dr. Maronick “flip-flop[s]” regarding
the types of surveys he conducted); Plaintiffs’ Reply Memorandum of
9

Law in Support of Their Cross-Motion (“Pl. Reply”) at 8 (courts
have “precluded Mr. Berger’s reports and surveys on numerous
occasions”), 9 (stating that “Mr. Berger’s thought process makes
zero

sense”)).

I

will

therefore

(briefly)

address

the

qualification issue.
Under Rule 702 of the Federal Rules of Evidence, before
allowing

a

witness

to

testify

as

an

expert,

the

court

must

determine whether the witness is qualified by assessing whether the
“proffered expert has the educational background or training in a
relevant field.

Then the court ‘should further compare the

expert’s area of expertise with the particular opinion the expert
seeks to offer . . . .’”

Cedar Petrochemicals, Inc. v. Dongbu

Hannong Chemical Co., 769 F. Supp. 2d 269, 282-83 (S.D.N.Y. 2011)
(quoting TC Systems Inc. v. Town of Colonie, 213 F. Supp. 2d 171,
174 (N.D.N.Y. 2002)).

The qualification requirement is to be

liberally construed, and an
“expert should not be required to satisfy an overly
narrow test of his own qualifications.” “In considering
a witness’s practical experience and educational
background as criteria for qualification, the only matter
the court should be concerned with is whether the
expert’s knowledge of the subject is such that his
opinion will likely assist the trier of fact in arriving
at the truth.”
Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., No. 04
Civ.

7369,

2006

WL

2128785,

at

*5

(S.D.N.Y.

July

28,

2006)

(internal citations omitted) (quoting Valentin v. New York City,
No. 94 CV 3911, 1997 WL 3323099, at *14 (E.D.N.Y. Sept. 9, 1997)).
Mr. Berger has an MBA from the University of Chicago Graduate
School

of

Business,

has

worked
10

extensively

in

the

field

of

marketing, and has significant market research experience. (Berger
Report, ¶¶ 3-5).
Surveys:

A

He is co-author of the textbook Trademark

Litigator’s

Guide

and

published articles in the field.

has

taught,

lectured,

(Berger Report, ¶¶ 2, 5).

and
In

addition, he has testified as an expert in numerous lawsuits,
including

actions

concerning

trademark

genericness.

(Berger

Report, ¶ 6).
Dr. Maronick has a Doctorate in Business Administration from
the University of Kentucky and a Juris Doctor from the University
of Baltimore School of Law.

(Maronick II Report, attached as Exh.

D to Heed Preclusion Decl., at 2).

He has served as the “in-house

expert on marketing and survey matters” for the Bureau of Consumer
Protection at the Federal Trade Commission.

(Curriculum Vitae of

Thomas Joseph Maronick (“Maronick CV”), attached as Exh. 1 to
Maronick

II

Report,

at

2).4

He

has

published

articles

on

marketing, including on survey research; “undertaken over 150
survey research projects . . . in litigation-related matters”; and
testified as an expert witness in Lanham Act cases.
at 3-4).

(Maronick CV

He is currently a professor of marketing at Towson

University College of Business and Economics.

(Maronick CV at 2;

Maronick II Report at 2).
Both

of

the

defendants’

experts

are

qualified

to

offer

opinions on the relevant issue.

4

Because Mr. Maronick’s CV is not paginated, I use the page
numbers assigned by the Court’s ECF system.
11

3.

Methodological Issues with Surveys

The plaintiffs identify alleged methodological flaws in the
surveys upon which the defendants’ experts’ reports are based.
They contend that both Mr. Berger’s and Dr. Maronick’s “Teflon”
surveys identify the wrong “relevant public” for polling (Pl. Memo.
at 14-16, 23-24); that Mr. Berger’s “Teflon” survey primed the
respondents to think of lifeguards, “failed to give the survey
respondents the necessary contextual background,” and included
respondents who answered at least one of the screening questions
incorrectly (Pl. Memo. at 15-18); and that Dr. Maronick’s “Teflon”
survey failed to provide necessary context for the respondents (Pl.
Memo. at 24).
“The majority rule is that while technical deficiencies can
reduce a survey’s weight, they will not prevent the survey from
being admitted into evidence.”

6 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 32:170 (4th ed. rev. 2017); see
also GoGo, 2013 WL 4400520, at *6 & n.4 (denying motion to preclude
made on multiple grounds, including that survey misidentified
relevant public, primed respondents, contained leading questions,
and failed to include control group); Victoria’s Secret Stores
Brand Management, Inc. v. Sexy Hair Concepts, LLC, No. 07 Civ.
5804, 2009 WL 959775, at *6 n.3 (S.D.N.Y. April 8, 2009) (“In
general, assertions of methodological errors in a survey ‘bear
exclusively on the weight to be given the survey rather than
bearing on admissibility determination under Fed. R. Evid. 403.’”
(quoting Friesland Brands, B.V. v. Vietnam National Milk Co., 221
12

F. Supp. 2d 457, 460 (S.D.N.Y. 2002))); id. at *11 n.9 (refusing to
preclude surveys alleged to have drawn from improper universe of
respondents, primed respondents, and failed to incorporate control
group).

Indeed, “[a] survey is only inadmissible if its flaws

destroy all of its relevance.”

Id.

The plaintiffs’ arguments do

not convince me that the defendants’ expert reports must be
precluded.
Take, for example, the plaintiffs’ contention that the proper
universe for a survey seeking to detect whether a mark is generic
is “past and future purchasers of the product in issue.”
Memo. at 15).

(Pl.

That position is undermined by commentators and

cases -- including cases cited by the plaintiffs as support for
their position -- indicating that to determine whether the use of
a mark on a mass-marketed product is generic, what matters is the
general public’s “common use of language.”

2 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 12:4 (4th ed. rev.
2017) (quoting In re Automatic Radio Manufacturing Co., 404 F.2d
1391, 1395 (C.C.P.A. 1969)); see also Harley Davidson, Inc. v.
Grottanelli, 164 F.3d 806, 810 (2d Cir. 1999) (“[D]ictionary
definitions

of

a

word

to

denote

a

category

of

products

are

significant evidence of genericness because they usually reflect
the public’s perception of a word’s meaning and its contemporary
usage.”); Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874
F.2d 95, 101 (2d Cir. 1989) (approving evidence of media usage on
issue of genericness because “it is a strong indication of the
general public’s perception” of a term); Blisscraft of Hollywood v.
13

United Plastics Co., 294 F.2d 694, 699 (2d Cir. 1961) (reversing
district court’s finding that term was descriptive because there
was no evidence that “public generally” understood term to be
synonymous

with

material

from

which

product

was

made);

PODS

Enterprises, Inc. v. U-Haul International, Inc., No. 12 CV 1479,
2015 WL 1097374, at *4-6 (M.D. Fla. March 11, 2015) (discussing
dictionary definitions, use of term in popular magazines and books,
and prior military usage as evidence of genericness); Horizon Mills
Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 217-18 (S.D.N.Y. 2001)
(test for genericness of “mass consumed product” is “common usage
or understanding by the general public” (quoting Something Old,
Something New, Inc. v. QVC, Inc., No. 98 Civ. 7450, 1999 WL
1125063, at *5 (S.D.N.Y. Dec. 8, 1999)); Coach/Braunsdorf Affinity,
Inc. v. 12 Interactive, LLC, 110 U.S.P.Q.2d 1458, 1463 (T.T.A.B.
2014) (looking to dictionary definition to determine genericness);
cf. J & J Snack Foods, Corp. v. Earthgrains Co., 220 F. Supp. 2d
358, 371-72 (D.N.J. 2002) (criticizing survey of general public
where

product

not

mass-marketed

but

sold

only

to

certain

distributors). Indeed, the original “Thermos” and “Teflon” surveys
sought to determine the opinion “of the adult American public,” and
not some subset of consumers who had purchased or planned to
purchase the relevant products.

American Thermos, 207 F. Supp. at

21-22; see also 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, § 12:16 (4th ed. rev. 2017) (“The Teflon Survey
was conducted . . . over the telephone of respondents of both sexes
who represented themselves to be over 18 years of age.”); E.
14

Deborah Jay, Genericness Surveys in Trademark Disputes: Evolution
of Species, 99 Trademark Rep. 1118, 1151 (2009) (noting that “[t]he
universe for the survey endorsed in American Thermos and in E.I. Du
Pont de Nemours was broadly defined,” which is appropriate where “a
product or service is marketed to the general public”).

The

plaintiffs’ objections to the universes used in the defendants’
experts’ surveys -- men and women over sixteen who had recently
gone to or planned to go to a public beach or pool (Berger Report,
¶ 14), or men and women over the age of 18 (Maronick II Report at
4) -- do not counsel in favor of excluding the reports.5
The

plaintiffs’

other

challenges

fare

no

better.

They

complain that respondents to Mr. Berger’s “Teflon” survey were not
provided the proper “context,” asserting that the phrase “[w]ith
respect to apparel” should have been appended to the question,
“[F]or each of the following names, would you please indicate
whether you understand the name to be a common name or a brand
name[?]” (Pl. Memo. at 17; Lifeguard Teflon Survey, attached as
Exh. C to Grunsfeld Decl., at 6).6
support

the

preclusion.

proposition

that

But the cases they cite do not
this

asserted

error

mandates

First, their supporting cases deal with trademark

5

Nor am I convinced by the argument that because the two
experts used different universes “one of them has to be wrong.”
(Pl. Memo. at 23). Even if the “relevant public” were required to
be drawn with surgical precision -- and the plaintiffs have
presented no authority that it does -- the discrepancy here would
not make either report inadmissible.
See, e.g., GoGo, 2013 WL
4400520, at *6.
6

Because the survey is not paginated, I use the page numbers
assigned by the Court’s ECF system.
15

dilution surveys that sought to establish whether customers were
likely to confuse two products.

See, e.g., THOIP V. Walt Disney

Co., 690 F. Supp. 2d 218, 230 (S.D.N.Y. 2010).

Surveys “designed

to elicit information relevant to the issue of a likelihood of
confusion” should closely “mirror the situation in which the
ordinary person would encounter the trademark.”

6 J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition § 32:163
(4th ed. rev. 2017).

But, as discussed above, the issue of

genericness is not concerned so much with the state of mind of
someone who is likely to purchase a product, but rather with the
wider buying public’s perception of whether a term is synonymous
with the product to which it is applied.

Understanding this,

asking if a term is “common” or a “brand name” -- even without
reference to a particular genus of product -- has relevance. After
all,

before

a

term

sufficiently common.
it

must

not

be

can

function

generically,

it

must

be

It must also not signal a producer; that is,

associated

--

or,

in

the

case

of

so-called

“genericide,” must no longer be associated -- with any brand.

For

a similar reason, Mr. Berger’s “Thermos” survey, in which he
presented a photograph of a lifeguard to survey respondents and
asked whether they were familiar with his function (Pl. Memo. at
19-20), is somewhat probative, as a failure of the public to
recognize the occupation of a lifeguard would likely preclude a
finding that the label “lifeguard” was generic when applied to
clothing a lifeguard wears, cf.

Anvil Brand, 464 F. Supp. at 480.

In short, the plaintiffs may argue that the jury should discount
16

the defendants’ surveys by pointing out these alleged weaknesses;
however, the experts’ reports are not so poorly designed or
executed as to require preclusion.7

See, e.g., GoGo, 2013 WL

4400520, at *6 & n.4 (denying motion to preclude made on basis that
survey misidentified relevant public, primed respondents, contained
leading questions, and failed to include control group, among
others); Victoria’s Secret, 2009 WL 959775, at *11 n.9 (refusing to
preclude surveys charged with drawing from improper universe of
respondents,

priming

respondents,

and

failing

to

incorporate

control group).
4.

Late Disclosure

Finally, the plaintiffs contend that they were prejudiced
because Mr. Berger did not timely disclose the photograph used in
his “Thermos” survey.

(Pl. Memo. at 20-21).

Apparently, the

defendants originally provided the wrong image, and only disclosed
the correct one at Mr. Berger’s deposition.

(Pl. Memo. at 20-21).

The plaintiffs assert that they were prejudiced by this late
disclosure because they were consequently unable to “formulate
appropriate deposition questions.”

(Pl. Reply at 1-2).

Rule 37(c)(1) of the Federal Rules of Civil Procedure allows
a court to preclude information not timely disclosed unless the

7

Admittedly attempting to circumvent the page limit (Pl.
Memo. at 21), the plaintiffs point me to Mr. Sowers’ expert reports
for additional support (Pl. Memo. at 21, 24-25). Judges regularly
forgive such strategems, considering arguments apparently not
convincing enough to include in the briefs. But if the plaintiffs
believed that they could not present their arguments concisely
enough to comply with the page limit, they should have requested an
extension of that limit.
17

failure was substantially justified or harmless.

Although “this

so-called self-executing provision appears to require exclusion” in
certain circumstances, “the imposition of sanctions under this rule
is discretionary, and preclusion will be ordered only in rare
cases.”

Semi-Tech Litigation LLC v. Bankers Trust Co., 219 F.R.D.

324, 325 (S.D.N.Y. 2004) (footnote omitted).

This is not one of

those cases.
The timing of the disclosure was far from optimal, but counsel
for the plaintiffs received the correct photograph during Mr.
Breger’s deposition. (Berger Dep. at 141-42). It is not clear why
plaintiffs’ counsel could not effectively question Mr. Berger after
the image was disclosed or, if more time was needed to “formulate
appropriate [] questions,” why he did not request continuation of
the deposition for that purpose.

Indeed, even in this motion,

plaintiffs’ counsel has failed to identify any question that he
would have asked or any information he would have attempted to
elicit

had

the

photograph

been

timely

disclosed.

In

this

situation, the late disclosure was harmless.
C.

Defendants’ Motion
1.

Mr. Sowers’ Qualifications

In contrast to the plaintiffs, the defendants launch a frontal
attack on plaintiffs’ experts’ qualifications.

As noted, under

Rule 702 a person may qualify as an expert “by knowledge, skill,
experience, training, or education.”

Fed. R. Evid. 702.

The

defendants argue that Mr. Sowers is unqualified to offer the
opinions in his rebuttal reports because he is uninformed regarding
18

the

“Primary

Significance

Test,”

is

unskilled

in

statistical

analysis, and lacks the necessary education and experience.

(Def.

Memo. at 16-21).
Mr.

Sowers

has

an

undergraduate

degree

in

history

from

Roanoake College and an MBA from the University of Colorado at
Colorado Springs.

(Curriculum Vitae of Brian M. Sowers (“Sowers

CV”), attached as Exh. A to Amended Reply Expert Report of Brian M.
Sowers to the Report of James T. Berger dated Sept. 30, 2016
(“Sowers Rebuttal”), attached as Exh. E to Heed Preclusion Decl. at
1; Sowers Rebuttal, ¶ 4).

He is a principal at a marketing and

consulting firm, leading the firm’s litigation support practice.
(Sowers CV at 1).

Prior to joining his current firm in 2011, he

held research positions at a number of other firms, such as Forbes
Consulting Group and Lockheed Martin Corporation. (Sowers CV at 12; Sowers Rebuttal, ¶ 1).

Mr. Sowers has experience designing and

implementing marketing research surveys and has functioned as an
expert in trademark and trade dress cases. (Sowers CV at 3; Sowers
Rebuttal, ¶ 2).
The defendants’ complaints about Mr. Sowers’ education and
experience are overblown, undersupported, or both.

For example,

they attack his education, noting that his MBA is from a satellite
campus of the University of Colorado, and was completed as an online degree.
support

(Def. Memo. at 19).

their

inferior.

contention

They

accuse

that
him

But they provide no evidence to
his
of

education
lacking

and

“basic

degree

are

statistical

understanding” (Def. Memo. at 16-17), but apparently fail to
19

recognize that the opinions he offers do not include statistical
analyses of any complexity. See Cedar Petrochemicals, 769 F. Supp.
2d at 283 (courts must evaluate experts’ qualifications in light of
“the particular opinion the expert seeks to offer” (quoting TC
Systems, 213 F. Supp. 2d at 174)).

They dwell on the fact that he

could not remember whether he had failed a class or been put on
academic probation as an undergraduate over twenty years ago (Def.
Memo. at 18-19), but do not suggest how that would be relevant to
whether he is qualified to testify as an expert in this case.

They

appear to fault him because some of his training in the design and
implementation of marketing surveys consisted of assisting “actual
experts in designing genericness surveys” (Def. Memo. at 18),
because he was promoted to principal when his predecessor left
(Def. Memo. at 17-18), and because his CV “only mentions surveys
three times” (Def. Memo. at 17).

These objections fail.

The defendants also count words in Mr. Sowers’ rebuttal
reports, noting that the word “experience” appears only three times
in each document. (Def. Memo. at 20). This assertedly contravenes
Federal Rule of Evidence 702 because, where an expert witness
relies “solely or primarily on experience, then [he] must explain
how that experience leads to the conclusion reached, why that
experience is a sufficient basis for the opinion, and how that
experience is reliably applied to the facts.”

Fed. R. Evid. 702

advisory committee’s note to 2000 amendments. But this requirement
is designed to guard against a situation where an expert “offer[s]
credentials rather than analysis,” LinkCo, Inc. v. Fujitsu Ltd.,
20

No. 00 Civ. 7242, 2002 WL 1585551, at *4 (S.D.N.Y. July 16, 2002)
(quoting Primavera Familienstifung v. Askin, 130 F. Supp. 2d 450,
529 (S.D.N.Y. 2001)), such as when the witness presents “only [his]
qualifications,

[his]

conclusions[,]

and

[his]

assurances

of

reliability,” Daubert v. Merrell Dow Pharmaceuticals, Inc., 43 F.3d
1311, 1319 (9th Cir. 1995), cited in Fed. R. Evid. 702 advisory
committee’s note to 2000 amendments; see also General Electric Co.
v. Joiner, 522 U.S. 136, 146 (1997) (“[N]othing in either Daubert
or the Federal Rules of Evidence requires a district court to admit
opinion evidence that is connected to existing data only by the
ipse dixit of the expert.”).

Here, Mr. Sowers’ reports adequately

explain his analyses and conclusions, which is what the Federal
Rules of Evidence contemplate.
2.

Mr. Sowers’ Report

The defendants also contend that Mr. Sowers’ “methodology, to
the extent he had one at all, is unreliable.”

(Def. Memo. at 22).

They highlight that Mr. Sowers was unfamiliar with the primary
significance

test

(codified

at

15

U.S.C.

§

1064(3))

and

“misidentified the products sold by the [d]efendants.” (Def. Memo.
at 22).

But they have not established that these alleged defects

relate to his “methodology” or make his reports unreliable.
There is no analysis of how Mr. Sowers’ understanding (or lack
of understanding) of 15 U.S.C. § 1064(3) affects his rebuttal
reports; the defendants merely insist that if he cannot understand
this subsection, “he cannot be considered reliable in attempting to
offer expert testimony about genericness surveys.”
21

(Def. Memo. at

22).

That criticism does not warrant preclusion.
The defendants then contend that Mr. Sowers’ misidentification

of the “scope of apparel” sold by Ann Arbor infects his rebuttal
report because it led to a misidentification of “the relevant
universe for a genericness test,” which Mr. Sowers asserts should
include only “the junior user’s potential customers.”
at 22).

(Def. Memo.

That is, the defendants charge that the mistake led to

(hypothetical)

overinclusiveness,

because

the

universe

of

respondents to Mr. Sowers’ (hypothetical) survey would include
potential consumers of apparel not at issue in this action.
(Deposition of Brian Sowers dated Oct. 20, 2016, attached as Exh.
A to Heed Preclusion Decl., at 77-78).

But Mr. Sowers was not

designing or administering his own study, merely commenting on the
perceived

weaknesses

of

the

defendants’

experts’

surveys.

Moreover, he concluded that the defendants’ surveys were too broad
because they were directed at the general public, not that they
were too narrow because they excluded consumers of an (incorrectly)
expanded set of apparel.

Therefore, any misunderstanding is

irrelevant.
Conclusion
For the foregoing reasons, both the defendants’ motion to
preclude (Docket no. 134) and the plaintiffs’ motion to preclude
(Docket no. 152) are denied.

22