Saxon Glass Technologies, Inc.v. Apple
Filing
134
DECISION AND ORDER denying as moot 76 Motion in Limine; granting 77 Motion for Summary Judgment; granting in part and denying in part 87 Motion in Limine; denying 88 Motion in Limine; granting in part and denying in part 89 Motion in Limine. Signed by Hon. Elizabeth A. Wolford on 06/19/2019. (CDH)-CLERK TO FOLLOW UP-
cj^TES
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DISTWCT
SAXON GLASS TECHNOLOGIES,INC.,
Plaintiff,
DECISION AND ORDER
V.
I:15-CV-0058I LAW
APPLE INC.,
Defendant.
INTRODUCTION
Plaintiff Saxon Glass Teehnologies, Inc. ("Plaintiff or "Saxon") eommeneed the
instant action on June 29, 2015, asserting federal and state claims of trademark
infringement, dilution, and unfair competition against defendant Apple Inc.("Defendant"
or "Apple"). (Dkt. 1).
Currently pending before the Court are Defendant's motion for
summary judgment (Dkt. 77), Defendant's motions in limine seeking to exclude expert
testimony by James T. Berger, Rhonda Harper, and Seott D. Woldow (Dkt. 87; Dkt. 88;
Dkt. 89), and Plaintiffs motion in limine seeking to exclude expert testimony by Jeffrey
Samuels (Dkt. 76). For the reasons discussed below, Defendant's motion in limine related
to James T. Berger is granted in part and denied in part. Defendant's motion in limine
related to Rhonda Harper is denied. Defendant's motion in limine related to Scott D.
Woldow is granted in part and denied in part. Plaintiffs motion in limine is denied as moot,
and Defendant's motion for summary judgment is granted.
FACTUAL BACKGROUND
The following facts are taken from Defendant's Statement of Undisputed Facts
(Dkt. 79) and Plaintiffs response thereto (Dkt. 96-1), as well as the exhibits and
declarations submitted by the parties. Unless otherwise noted, these facts are undisputed.
Ion exchange is "a general scientific term that describes the exchange of one type
ofion(such as a sodium ion in glass) with another(such as a potassium ion in salt)." (Dkt.
79 at Tf 5; Dkt. 96-1 at ^ 5). In 2002, Plaintiff obtained federal trademark registration
number 2,639,419 for its lONEX® mark which it uses in connection with "chemical
treatment of glass; namely, chemical strengthening of glass by immersion in a molten salt
bath." (Dkt. 79 at ^ 2; Dkt. 96-1 at ^ 2). Plaintiff offers chemical glass strengthening
services using an ion exchange process under its lONEX® mark. (Dkt.79 at^ 1; Dkt. 96-1
at T| 1). Plaintiff does not claim exclusive rights to the term "ion exchange." (Dkt. 79 at f
6; Dkt. 96-1 atT|6).
Plaintiff offers its glass strengthening services to businesses, not to general
consumers. (Dkt. 79 at ^ 8; Dkt. 96-1 at ^ 9). Defendant asserts that Plaintiff has a single
customer, Gerresheimer Glass Inc.("Gerresheimer"), which makes glass cartridges that are
used in auto-injectors such as an EpiPen. (Dkt. 79 at
9-10). In opposition. Plaintiff
contends that it has also made sales under the lONBX® mark to Samsung and Nippon
Electric Glass. (Dkt. 96-1 at f 9). At a deposition held on May 18, 2016, Dr. Arun
Varshneya ("Dr. Varshneya"), Plaintiffs president and chief executive officer, testified
that the only company for which Plaintiff had "used the lONEX mark for products that
have actually been released" was Gerresheimer and that Plaintiff had a "relationship" with
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Nippon Electric Glass. (Dkt. 89-3 at 7)'. Plaintiff has also submitted evidence that in July
2015, it chemically strengthened 70 units of glass for Samsung. (Dkt. 96-8). The glass
cartridges to which Plaintiff applies its ion exchange strengthening process do not bear the
lONEX® mark or any other branding related to Plaintiff. (Dkt. 79 at
12-15; Dkt. 96-1
at in 12-15).
On September 9, 2014, Defendant announced the launch of a line of products under
the brand Apple Watch. (Dkt. 79 at ^ 17; Dkt. 96-1 at ^ 17). Defendant began selling
Apple Watch products in April 2015. (Dkt. 79 at T| 18; Dkt. 96-1 at Tf 18). Certain versions
of the Apple Watch device include a sapphire crystal cover glass, while other versions
include a glass cover that has been strengthened using an ion exchange process. (Dkt. 79
at
19, 23; Dkt. 96-1 at
19, 23). Defendant contends that it "describes the versions of
the Apple Watch device that include a cover glass that has been strengthened through an
ion exchange process with the shorthand term Ton-X Glass,'" (Dkt. 79 at Tf 24), while
Plaintiff maintains that Defendant "does not 'describe' using the word lON-X"(Dkt. 96-1
at ]| 24). It is undisputed that Defendant "uses the term 'lon-X Glass' on the back face of
certain versions of the Apple Watch device, along with descriptions of other components
such as '7000 Series Aluminum' and 'Composite Back.'" (Dkt. 79 at ^ 26; Dkt. 96-1 at
1126).
Defendant has not applied to register "lon-X" with the United States Patent &
Trademark Office (the "USPTO"), nor does it include "lon-X" on the list oftrademarks it
'
Page references are to those generated by the Court's CM/ECF system.
-3 -
maintains on its website. (Dkt. 79 at
32-33; Dkt. 96-1 at
32-33). Defendant's
linguistics expert, Dr. Patrick Farrell,^ conducted an analysis of the meaning and usage of
the term "lon-X." (Dkt. 79 at ^ 30; Dkt. 96-1 at ^ 30). Dr. Farrell concluded that the term
"lon-X," as used by Defendant, is likely to be understood as a descriptive abbreviation for
ion exchange. (Dkt. 79 at ^ 31; Dkt. 96-1 at ^ 31). James T. Berger, a marketing expert
retained by Plaintiffwhose opinions are discussed at length later in this Decision and Order,
stated at his deposition that Defendant"uses 'lon-X''as a description of a component part'
ofthe Apple Watch Device." (Dkt. 79 at ^ 34; Dkt. 96-1 at ^ 34). Defendant's marketing
expert. Dr. Ravi Dhar,^ has submitted a sworn declaration in support ofDefendant's motion
for summary judgment stating that, in his expert opinion, consumers are unlikely to think
of"lon-X glass" as an indicator of source. (Dkt. 86 at ^ 7).
Plaintiffs lONEX® mark does not appear on products or advertising that a general
consumer would see. (Dkt. 79 at f 38; Dkt. 96-1 at ]| 38). Plaintiff does not use media
advertisements ofits services and products and the sole advertisement Plaintiff has run was
in the general interest newspaper The Alfred Sun in December 2016, after the instant
litigation commenced. (Dkt. 79 at
^
43-45; Dkt. 96-1 at
43-45). Plaintiffs total
Dr. Farrell has a Ph.D. in linguistics from the University of California, San Diego,
and is a professor of general and theoretical linguistics at the University of California,
Davis. (Dkt. 85 at ^ 2). Plaintiff has not challenged the admissibility ofDr. Farrell's expert
opinions.
^
Dr. Dhar has a Ph.D. in business administration from the University of California at
Berkeley and is the George Rogers Clark Professor of Management and Marketing at the
Yale School of Management, and the Director ofthe Yale Center for Customer Insights at
the School of Management at Yale University. (Dkt. 86 at
2-3). Plaintiff has not
challenged the admissibility of Dr. Dhar's expert opinions.
-4-
marketing costs in 2014 and 2015 (the only years for which it provided such information)
were $108,000. (Dkt. 79 at ^ 49; Dkt. 96-1 at ^ 49). Dr. Varshneya testified at his
deposition that he had no reason to believe that the typical American household would be
familiar with Plaintiffs lONEX® mark. (Dkt.79 at ^42;Dkt. 96-1 at 42). The lONEX®
mark has not been the subject ofany media coverage, nor has Plaintiffproduced any studies
that show consumers associate the lONEX® mark with Plaintiff. (Dkt. 79 at Tft 51-52;
Dkt. 96-1 at TITI 51-52). Plaintiffs lONEX® mark does not appear on any actual products
but is used on packing crates and invoices and on Plaintiffs website. (Dkt. 79 at
63-66;
Dkt. 96-1 at Tit 63-66).
Apple Watch devices are identified as Apple-branded products. (Dkt. 79 at 168;
Dkt. 96-1 at 168). Defendant has produced documents showing that Apple Watch devices
and associated advertising depict the term "lon-X" in close proximity to Apple's word
mark or logo. (Dkt. 80-19; Dkt. 81-3; Dkt. 81-5; Dkt. 81-6; Dkt. 81-16; Dkt. 81-29; Dkt.
82)."* Defendant requested a trademark search before it began using the term "lon-X"
commercially. (Dkt. 79 at Tl 73; Dkt. 96-1 at T| 73).
Plaintiff and Defendant have not received any communications intended for the
other, and the only instances of "actual confusion" that Plaintiff has identified after
Defendant began using the phrase "lon-X" are not Saxon customers, but a friend of Dr.
Plaintiff states in its opposition to Defendant's Statement of Undisputed Facts that
"[t]he proximity and circumstances about lON-X placement are not defined." (Dkt. 96-1
at T| 69). It is not clear to the Court what this statement means. "Close proximity" is a
generally understood phrase in the English language, and a review of the documents
submitted by Defendant shows that where it uses the phrase "lon-X glass," the Apple word
mark or logo appears nearby.
Varshneya's and Dr. Varshneya's landlord. (Dkt.79 at^j^ 81-82, 84; Dkt. 96-1 at^flj 81-82,
84). Plaintiff relies on two likelihood of confusion surveys in connection with this
litigation, the details of which are discussed further in the Court's analysis of Defendant's
motions in limine.
Plaintiffs target customers are professional buyers of glass chemical strengthening
services. (Dkt. 79 at ^ 92; Dkt. 96-1 at ^ 92). Plaintiff does not have an internet store or a
product catalog. (Dkt. 79 at ^ 93; Dkt. 96-1 at ^ 93). Defendant sells the Apple Watch
device to individual general consumers. (Dkt. 79 at ^ 98; Dkt. 96-1 at ^ 98). An Apple
Watch device costs at least $249. (Dkt. 79 at Tf 95; Dkt. 96-1 at ^ 95). Additionally, an
Apple Watch device works only as a companion to an Apple iPhone device, and so Apple
Watch consumers must either be owners of an Apple iPhone device or purchase one at the
same time as the Apple Watch device. (Dkt. 79 at
96-97; Dkt. 96-1 at
96-97).
PROCEDURAL BACKGROUND
Plaintiff commenced the instant action on June 29, 2015 (Dkt. 1), alleging the
following causes of action related to its lONEX®,lON-KLAD®, and unregistered IONARMOR marks: (1) federal trademark infringement and unfair competition; (2) federal
trademark dilution;(3)state law trademark infringement;(4)state law trademark dilution;
and (5) state law unfair competition. (Dkt. 1). Defendant filed its Answer to Plaintiffs
Complaint on August 21, 2015 (Dkt. 9), and the matter was referred to United States
Magistrate Judge Leslie G. Foschio for supervision of discovery (Dkt. 10). Judge Foschio
recused himself from the matter on December 1, 2015 (Dkt. 16), and the matter was
thereafter referred to United States Magistrate Judge H. Kenneth Schroeder, Jr.(Dkt. 18).
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On January 13,2016, Defendant moved pursuant to 28 U.S.C. § 1659(a)to stay the
matter in its entirety pending a determination of the United States International Trade
Commission (the "ITC") in In the Matter of Certain Electronic Devicesfor Containing
Strengthened Glass and Packaging Thereof Investigation No. 337-TA-98I (the "ITC
Investigation"^). (Dkt. 21). Judge Schroeder granted Defendant's motion to stay on
January 26, 2016. (Dkt. 22).
On September 13,2016,Plaintifffiled an unopposed motion advising the Court that
the ITC Investigation had terminated and asking the Court to lift the stay. (Dkt. 23). The
Court granted Plaintiffs motion and the stay was lifted on September 13,2016. (Dkt. 24).
On October 24, 2016, pursuant to a stipulation by the parties, the Court entered an
Order dismissing Plaintiffs second cause of action for federal trademark dilution. (Dkt.
28).
Discovery in this matter was completed in July 2018 (Dkt. 49; Dkt. 54), and
dispositive motions were due by September 28, 2018(Dkt. 54). The Court granted a joint
request by the parties that—due to the amount of confidential business material involved
in this case—^they be permitted to exchange motion papers without filing them on the
Court's electronic docket, so that a single sealing request regarding all papers could be
made at the conclusion of briefing. (Dkt. 57).
^
The ITC Investigation was occasioned by Plaintiff having filed a complaint with the
ITC on November 10, 2015, related to Defendant's use of the term "lon-X." (Dkt. 21 at
2).
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On September 28, 2018, Defendant served its motion for summary judgment(Dkt.
77)and three motions in limine(Dkt. 87; Dkt. 88; Dkt. 89), while Plaintiff served a single
motion in limine (Dkt. 76).^ Opposition papers were served on October 30, 2018(Dkt. 90;
Dkt. 96; Dkt. 97; Dkt. 98; Dkt. 99), and reply papers were served on November 20, 2018
(Dkt. 100; Dkt. 101; Dkt. 102; Dkt. 103; Dkt. 104).
On November 8, 2018, pursuant to a stipulation by the parties, the Court entered an
Order dismissing Plaintiffs fourth cause of action (state law trademark dilution) in its
entirety and dismissing Plaintiffs first, third, and fifth causes of action to the extent they
related to Plaintiffs lON-KLAD® and ION-ARMOR marks. (Dkt. 69; Dkt. 70). Thus,
the remaining causes of action at issue with the pending motions are the claims for federal
and state trademark infringement and unfair competition related to Plaintiffs lONEX®
mark.
Oral argument on the pending motions was held before the undersigned on April
19, 2019, and the Court reserved decision. (Dkt. 130).
^
Because of the sealing procedure previously described, all of the papers associated
with the pending motions were filed on the Court's electronic docket on December 28,
2018. The Court has referred in its discussion to the date the documents were served by
the parties.
-8-
DISCUSSION
I.
MOTIONS IN LIMINE^
A.
Legal Standard
Pursuant to Federal Rule of Evidence 702, a proposed expert witness must possess
"scientific, technical, or other specialized knowledge [that] will help the trier of fact to
understand the evidence or to determine a fact in issue." Fed. R. Evid. 702(a). In
accordance with this rule, a court considering the admissibility of expert testimony must
consider whether (1)"the testimony is based upon sufficient facts or data"; (2)"the
testimony is the product of reliable principles and methods"; and (3)"the expert has
reliably applied the principles and methods to the facts ofthe case." Fed. R. Evid. 702(b),
(c),(d).
In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), the
Supreme Court explained that a trial court has a "gatekeeping" duty under Rule 702, and
must make sure that proposed expert testimony "both rests on a reliable foundation and is
relevant to the task at hand." Id. at 597; see also Kumho Tire Co. v. Carmichael, 526 U.S.
137, 147(1999)("In Daubert, this Court held that Federal Rule of Evidence 702 imposes
a special obligation upon a trial judge to ensure that any and all scientific testimony is not
only relevant, but reliable.")(quotation and alteration omitted).
'
"In deciding whether a motion for summary judgment should be granted, a district
court may only consider admissible evidence." Rexall Sundown, Inc. v. Perrigo Co., 651
F. Supp. 2d 9, 25 (E.D.N.Y. 2009). Accordingly,"as the Second Circuit has explained, it
is the proper role of the district court to consider the admissibility of expert testimony in
determining whether summary judgment is warranted." Id.
"Per Daubert and its progeny, a court's Rule 702 inquiry involves the assessment
of three issues:(1) the qualifications of the expert,(2) the reliability of the methodology
and underlying data employed by the expert, and(3)the relevance of that about which the
expert intends to testify." Washington v. Kellwood Co., 105 F. Supp. 3d 293, 304
(S.D.N.Y. 2015). "Ultimately, the party proffering the expert has the burden to
demonstrate by a preponderance of the evidence that its expert witness satisfies these
criteria." Id. (quotation and alteration omitted). "As the courts and Advisory Committee
have made clear, 'the rejection of expert testimony is the exception rather than the rule.'"
M.B. ex rel. Scott v. CSXTransp., Inc., 130 F. Supp. 3d 654,665(N.D.N.Y. 2015)(quoting
Fed. R. Evid. 702, Advisory Committee's Note).
B.
Defendant's Motions in Limine
Defendant has filed three motions in limine,each ofwhich is addressed to a different
expert witness proffered by Plaintiff. The Court considers each ofthese motions below.
1.
Motion in Limine Regarding James T. Berger
Defendant's first motion in limine seeks to exclude the opinions of Plaintiffs
proposed expert James T. Berger in their entirety. (Dkt. 87). For the reasons that follow,
the Court grants the motion in part and denies the motion as moot in part.
a.
The Contested Opinions and Evidence
Mr. Berger is a faculty member at Roosevelt University, teaching courses in
advertising, consumer behavior, personal selling and sales management, global marketing,
marketing management,and marketing in theory and practice. (Dkt. 87-5 at 4). Mr.Berger
holds a master's degree in business administration from the University of Chicago
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Graduate School of Business and has "extensive market research experience, including
quantitative and qualitative survey research." {Id. at 5-6).
In connection with the instant matter, Plaintiff retained Mr. Berger to "develop and
conduct a survey among professional buyers ofstrengthened glass to explore the likelihood
of confusion between the Plaintiffs lONBX® mark and the Defendant's lON-X mark."
{Id. at 9). Mr. Berger conducted a survey that he describes as "not a standard likelihood of
confusion survey," but instead a "qualitative analysis of a highly specialized target
market." {Id. at 14). In particular, Mr. Berger surveyed 40 "individuals who make buying
decisions with respect to strengthened and/or other forms of commercial glass" over the
telephone. {Id. at 11). The participants were instructed to "write on a piece of paper the
letters ... I-O-N-E-X" and then further instructed to "write I-O-N-DASH X." {Id. at 12).
The participants were told to consider lONEX "BRAND X" and to consider lON-X
"BRAND Y," and were asked the following six questions:(1)"Do you believe that Brand
X and Brand Y are likely to produce confusion in the marketplace for chemically
strengthened glass and/or glass treatment services?";(2)"Do Brand X and Brand Y appear
to be the same to you?";(3)"Do Brand X and Brand Y sound the same to you?";(4)"Do
Brand X and Brand Y give you the impression that the products sold under these brands
come from the same commercial source?";(5)"Do Brand X and Brand Y give you the
impression that the products are affiliated with each other?"; and (6)"Do Brand X and
Brand Y give you the impression that one product is sponsored by the other?" {Id. at
12-13). Based on the results of this survey, Mr. Berger opines that lon-X is "confusingly
similar" to lONEX®. {Id. at 14).
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Mr. Berger also submitted two rebuttal expert reports, one related to Dr. Dhar's
expert report and one related to an expert report prepared by Dr. Deborah Jay. (Dkt. 87-21;
Dkt. 87-22).
b.
Admissibilitv of the Berger Survey and Related Opinions
Defendant argues that Mr. Berger's survey (the "Berger Survey") and his related
opinions are inadmissible under Rule 702. Specifically, Defendant argues that (1) the
methodology of the Berger Survey is so flawed as to render it inadmissible; (2) Mr.
Berger's opinions on dilution by tamishment are speculation and are unreliable; and (3)
Mr. Berger's rebuttal reports are conclusory, misstate applicable law, and would be
misleading and confusing to a jury. (Dkt. 87-1 at 7-8).
Defendant's arguments regarding Mr. Berger's opinions on dilution by tamishment
have been rendered moot by the dismissal of all of Plaintiffs dilution claims. (See Dkt.
28; Dkt. 69; Dkt. 70). Moreover, the Court finds that it need not reach Defendant's
arguments regarding Mr. Berger's rebuttal reports because, even taking those opinions into
account, the Court finds summary judgment in Defendant's favor appropriate, for the
reasons discussed in Section II of this Decision and Order. The Court has considered
Defendant's remaining arguments and concludes that the Berger Survey and all related
opinions by Mr. Berger are inadmissible.
"Survey evidence is generally admissible in cases alleging trademark infringement
under the Lanham Act." Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp.
2d 558, 580 (S.D.N.Y. 2007). In considering the admissibility of particular survey
evidence, the Court must consider numerous factors, including whether;
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(1) the proper universe was examined and the representative sample was
drawn from that universe;(2)the survey's methodology and execution were
in accordance with generally accepted standards of objective procedure and
statistics in the field of such surveys; (3) the questions were leading or
suggestive;(4) the data gathered were accurately reported; and (5) persons
conducting the survey were recognized experts.
Id.(citation omitted). As one court in this Circuit has explained;
When evaluating survey evidence, errors in a survey's methodology usually
go to the weight accorded to its conclusions rather than its admissibility.
However,the Second Circuit has made clear that this general rule is subject,
of course, to [Federal] Rule [of Evidence] 403's more general prohibition
against evidence that is less probative than prejudicial or confusing.
Although it is the exception, there will be occasions when the proffered
survey is so flawed as to be completely unhelpful to the trier of fact and its
probative value is substantially outweighed by its prejudicial effect.
POM Wonderful LLC v. Organic Juice USA, Inc., 769 F. Supp. 2d 188, 197 (S.D.N.Y.
2011)(citations, quotations, and original alterations omitted). "The bottom line is that if
the survey suffers from substantial methodological flaws, it will be excluded under both
Rule 403 and Rule 702." Louis Vuitton, 525 F. Supp. 2d at 581; see also Universal City
Studios, Inc. v. Nintendo Co.,746 F.2d 112, 118(2d Cir. 1984)(finding a survey "so badly
flawed that it [could not] be used to demonstrate the existence of a question of fact on the
likelihood of consumer confusion"); Gucci Am., Inc. v. Guess?, Inc., 831 F. Supp. 2d 723,
739 (S.D.N.Y. 2011)("[W]hile errors in survey methodology usually go to weight of the
evidence, a survey should be excluded under Rule 702 when it is invalid or unreliable,
and/or under Rule 403 when it is likely to be insufficiently probative, unfairly prejudicial,
misleading, confusing, or a waste of time.").
Defendant argues that the Berger Survey should be excluded because it is a "oneoff survey that does not follow any accepted survey methodology. (Dkt. 87-1 at 10).
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Defendant argues in particular that the Berger Survey failed to replicate marketplace
conditions, asked leading questions, did not survey the relevant universe, failed to use an
appropriate sample size, and failed to use a control. {Id. at 10-11). Defendant notes that
at least five other courts have excluded surveys developed by Mr. Berger due to similar
methodological flaws. {Id. at 10 n.l (collecting cases)).
In opposition. Plaintiff argues that the Berger Survey is "qualitative" and not
"quantitative," and that Defendant's arguments are therefore misplaced. (Dkt. 98 at 6-7,
9-10). Plaintiff further argues that Defendant has ignored the internet marketplace and
that Mr. Berger's methodology was appropriate when considered in this context. {Id. at
10-14).
The Court rejects Plaintiffs argument that the labeling of the Berger Survey as
"qualitative" excuses the methodological flaws identified by Defendant. The methodology
criteria applied by courts in this context are meant to ensure that a survey's ultimate
conclusions are reliable and therefore helpful to the trier offact. See POM Wonderful, 769
F. Supp. 2d at 197. Regardless of whether Mr. Berger considers his survey qualitative or
quantitative, the Court must perform its gatekeeping functions under Rules 403 and 702 to
ensure that the proffered evidence is potentially helpful to the trier of fact. Indeed, federal
courts have consistently applied methodological requirements to focus group studies,
which is what Mr. Berger analogized his so-called "qualitative" survey to at his deposition.
(Dkt. 87-4 at 24-25); see, e.g., Scotts Co. v. United Indus. Corp., 315 F.3d 264, 277 (4th
Cir. 2002)(finding focus group evidence not admissible as to consumer confusion because
of methodological flaws); Merisant Co. v. McNeil Nutritionals, LLC,242 F.R.D. 315, 331
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(E.D. Pa. 2007)(finding focus group materials unreliable and not probative in part because
oflack ofinformation regarding methodologies);Sam's Wines & Liquors, Inc. v. Wal-Mart
Stores, Inc., No.92 C 5170, 1994 WL 529331, at *7(N.D. 111. Sept. 27, 1994)(considering
methodological challenges to focus group results and finding that more information was
required to establish whether evidence was unduly prejudicial). The reasoning behind
these decisions is clear: a survey that fails to apply an appropriate methodology is
essentially nothing more than a collection of hearsay, with no indicia of reliability.
Plaintiff has identified no cases holding that a "qualitative survey" need not be
performed in a methodologically sound manner. When asked if such a case existed at oral
argument. Plaintiffs counsel referred Xo LVL XIII Brands, Inc. v. Louis Vuitton Malletier
S.A., 209 F. Supp. 3d 612 (S.D.N.Y. 2016), aff'd, 720 F. App'x 24 (2d Cir. 2017).
However, the LFL XIII Brands case does not support Plaintiffs position. While the court
did explain that qualitative expert testimony is notper se excludable, it went on to exclude
the proffered testimony precisely because the expert "failed entirely to show a sufficiently
rigorous analytical connection between his qualitative methodology and his conclusions."
Id. at 646-47 (quotation and alterations omitted). In other words, the LVL XIII Brands
decision confirms that even a "qualitative" survey must have some grounding in an
appropriate methodology in order to be reliable and therefore helpful to the trier of fact.
The Court further agrees with Defendant that the flaws in the Berger Survey are so
fundamental as to render it unreliable and inadmissible. First, the Court notes that Plaintiff
has failed to offer any substantive rebuttal to Plaintiffs argument that the Berger Survey
had an insufficient sample size and failed to use a control. These two flaws are sufficient
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to render the Berger Survey more prejudicial than probative due to lack of reliability.
Turning first to the lack of a control, a leading trademark treatise explains:
In a trademark likelihood ofconfusion survey, a properly constructed survey
has at least two groups of respondents: one group (the "test cell") is shown
the allegedly infringing mark; the second group (the "control cell") is shown
a mark similar in appearance to the test cell, except for the designation whose
influence is being tested.
6 McCarthy on Trademarks and Unfair Competition § 32:187. "A survey designed to
estimate likelihood of confusion must include a proper control. . . . Without a proper
control, there is no benchmark for determining whether a likelihood of confusion estimate
is significant or merely reflects flaws in the survey methodology." THOIP v. Walt Disney
Co.,690 F. Supp. 2d 218,240(S.D.N.Y. 2010)(''THOIP /")• "As courts routinely hold, a
survey's lack of a control group or control questions constitutes ...[a] ground for granting
a Rule 702 motion to exclude." Valador, Inc. v. ETC Corp., 242 F. Supp. 3d 448, 463
(E.D. Va. 2017)(footnote omitted), offd, 707 F. App'x 138(4th Cir. 2017);see also Vista
FoodExch., Inc. v. Vistar Corp., No. 03-CV-5203DRHWDW, 2005 WL 2371958, at *6
(E.D.N.Y. Sept. 27, 2005)(excluding survey performed by Mr. Berger in part because he
failed to use an appropriate control). Here, there is no dispute that the Berger Survey did
not use a control group or control questions, and Plaintiff has failed to offer any substantive
explanation for this failure, save its unavailing argument that a so-called "qualitative"
survey need not comport with appropriate methodologies.
Insufficient sample size is also a critical consideration in assessing the admissibility
of a survey. See Mastercard Int'l Inc. v. First Nat'I Bank of Omaha, Inc., No. 02 Civ.
3691(DLC),03 Civ. 707(DLC),2004 WL 326708, at *9(S.D.N.Y. Feb. 23,2004)(finding
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survey of 52 individuals not admissible to show confusion because "the number of
respondents surveyed [was] too small to provide meaningful results"). Here, the Berger
Survey had only 40 participants, which Mr. Berger admitted at his deposition was an
insufficient number to produce a reliable survey. (Dkt. 87-4 at 24-25). Again, Plaintiff
has failed to offer any substantive response to Defendant's argument on this point beyond
its contentions about qualitative surveys in general. The small sample size of the Berger
Survey makes its results statistically insignificant and of minimal probative value.
In addition to these two points, the Court further agrees with Plaintiffthat the Berger
Survey is unreliable and not probative because it used leading questions and failed to
include a visual stimulus. "A survey is not credible if it relies on leading questions which
are inherently suggestive and invite guessing by those who did not get any clear message
at all." Procter & Gamble Co. v. Ultreo, Inc., 574 F. Supp. 2d 339, 352(S.D.N.Y. 2008)
(quotation omitted); see also Valador, 242 F. Supp. 3d at 448 ("Suggestive questions
render a survey unreliable by creating 'demand effects' or 'cues' from which a respondent
can 'infer the purpose of the survey and identify the "correct" answers.'" (quoting 6
McCarthy on Trademarks § 32:172)).
Here, the Berger Survey asked questions such as "Do you believe that Brand X
[lONEX] and Brand Y [lON-X] are likely to produce confusion in the marketplace for
chemically strengthened glass and/or glass treatment services?" and "Do Brand X and
Brand Y give you the impression that the products sold under these brands come from the
same commercial source?" (Dkt. 87-5 at 12-13). These are the precise types of questions
that courts have found improperly suggestive in evaluating the admissibility of survey
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evidence. For example, in Kargo Global, Inc. v. Advance Magazine Publishers, Inc., No.
06 CIV 550(JFK), 2007 WL 2258688 (S.D.N.Y. Aug. 6, 2007), the court found survey
questions leading where the respondents were shown the marks "cargo" and "kargo," and
then "asked whether they believed a connection, as to source, business relationship, or
sponsorship, existed between the companies whose marks the respondents had just seen."
Id. at *8. The Kargo court explained that "[u]nder such circumstances, the respondents
who later stated that they believed that there was a connection between Cargo and Kargo
due to the similarity ofthe names, and thus were tallied as 'confused', were demonstrating
merely that they had read the names 'cargo' and 'kargo' in artificially close proximity."
Id. at *9.
In this case, the participants in the Berger Survey were exposed to lONEX and
lON-X side-by-side and then immediately asked whether they believed there was a
connection between the companies whose marks they had just seen. "[Q]uestion[s] about
whether the two items are put out by the same or a related source is likely to generate so-
called 'demand effects' that bias the survey by suggesting to respondents, at least
implicitly, that they should believe there is at least some sort of relationship between the
different items when the possibility might not even have occurred to the vast majority of
consumers who see the items." Simon Prop. Grp. L.P. v. mySimon, Inc., 104 F. Supp. 2d
1033, 1048(S.D. Ind. 2000);see also Beneficial Corp. v. Beneficial Capital Corp., 529 F.
Supp.445,450-51 (S.D.N.Y. 1982)(finding that the question "Do you think that there may
or may not be a business connection between Beneficial Capital Corp. and the Beneficial
Finance System Companies?" was of little probative value because it "establishes no more
- 18-
than that the names are similar ..., and that portions of the general public will make the
reasonable assumption, that, in the absence of any other information, two companies with
similar names are likely to have a business connection").
Plaintiff argues that the questions in the Berger Survey were not improperly leading
because Mr. Berger was using a ''Squirt type methodology" and not an "Eveready type
survey." (Dkt. 98 at 13-14).^ However, courts have disapproved of the use of leading
questions in the context of the Squirt survey method. See, e.g.. People's United Bank v.
Peoplesbank, No. 3:08cv01858(PCD),2010 WL 2521069, at *7(D. Conn. June 17,2010)
(finding that a Squirt-stylQ survey used leading questions and provoked a demand effect),
aff'd, 401 F. App'x 607 (2d Cir. 2010); Simon, 104 F. Supp. 2d at 1048 (finding as one
reason to exclude a Squirt-sXy\Q survey the fact that it used leading questions). Plaintiff
has not cited any cases in which a court found it appropriate for a survey using the Squirt
method to employ leading questions. Mr. Berger's use of improper leading questions is
another reason that the Berger Survey is non-probative and inadmissible.
The Berger Survey is also non-probative because of Mr. Berger's failure to use a
standardized visual stimulus. As one court in this Circuit has explained:
Typically, trademark infringement surveys use stimuli, such as pictures,
advertisements or clothing, that directly expose potential consumers to the
products or the marks in question. To be probative of actual confusion, a
^
"There are two common methods for surveying the likelihood ofconfusion.... The
first is the Eveready method;the second is the Squirt method. The Eveready survey, which
is particularly apt where the plaintiffs senior mark is strong and widely-recognized, does
not inform respondents what the senior mark is, but assumes that they are aware of the
mark from their prior experience. The Squirt format, on the other hand, presents the
respondent with both ofthe conflicting marks." Valador,242 F. Supp. 3d at 464(quotation
and citations omitted).
- 19-
survey must use stimuli that approximate what a potential customer would
encounter in making purchasing decisions. A survey that uses stimuli that
differ from what a consumer is actually likely to see in the marketplace does
not accurately test for actual consumer confusion and thus lacks probative
value.
Kargo, 2007 WL 2258688, at *10 (citations and quotations omitted). "[A] survey must
use the proper stimulus, one that tests for confusion by replicating marketplace conditions."
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242, 253(S.D.N.Y. 1999)
However, in this case, Mr. Berger did not use a standardized visual stimulus.
Instead, participants in the Berger Survey were instructed to "write on a piece of paper the
letters ...I-O-N-E-X" and then further instructed to "write I-O-N-DASH X[.]" (Dkt. 87-5
at 12).
Mr. Berger acknowledged at his deposition that this did not constitute a
standardized stimulus. (Dkt. 87-4 at 18-19). Where a survey uses an "improper or
unrepresentative stimul[us]" it is of"severely diminished probative value." Kargo, 2007
WL 2258688, at *11; see also Louis Vuitton, 525 F. Supp. 2d at 568 (excluding survey
because ofthe "cumulative effect of a number offlaws," including "the use ofan improper
stimulus").
These numerous flaws are sufficiently fundamental that they render the Berger
Survey unreliable and more prejudicial than probative. The Court therefore finds that the
Berger Survey is inadmissible under Rules 403 and 702. Accordingly, the Court need not
reach Defendant's contention that the Berger Study failed to use an appropriate universe,
which would require the Court to reach factual issues regarding whether the respondents
to the Berger Survey were indeed prospective buyers of Plaintiffs services.
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2.
Motion in Limine Regarding Rhonda Harper
Defendant's second motion in limine addresses the admissibility of a consumer
confusion survey performed by Plaintiffs expert witness Rhonda Harper, as well as Ms.
Harper's associated expert opinions. The Court finds Ms. Harper's survey admissible and
denies Plaintiffs motion, for the reasons discussed below.
a.
The Contested Opinions and Evidence
Ms. Harper is owner ofthe research, consulting, and testimony firm Rhonda Harper
LLC and has 30 years of corporate marketing and research experience, having conducted
or caused to be conducted more than 1,000 quantitative surveys. (Dkt. 88-3 at 4-5). Ms.
Harper conducted two surveys in connection with this litigation, but subsequently
withdrew one of these surveys. (Dkt. 88-1 at 6 n.l). The remaining survey, referred to
herein as the "Harper Survey," was an online survey wherein the sample was drawn from
"males and females ages 18+ with incomes $50k+ who are past or potential purchasers of
a smart-watch." (Dkt. 88-3 at 9). Respondents were split into a control group (326
individuals) and a test group (346 individuals), and the test group was shown the marks
lONEX and lON-X, while the control group was shown the marks SAMSUNG and
APPLE. {Id. at 10). The respondents were then presented with a single multiple-choice
question in which they were told to imagine that they were shopping for a smart-watch and
saw the names on the back ofthe watch and on the packaging, and then asked about their
beliefs regarding the source ofthe products. {Id.). Thirty-two percent ofrespondents stated
that they believed lONEX and lON-X were either put out by the same company or by two
companies that are affiliated or associated with each other. {Id. at 11).
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b.
Admissibilitv of the Harper Survey and Related Opinions
Defendant argues that the Harper Survey is not admissible because it failed to
replicate market conditions, created demand effects by asking one multiple-choice
question, used an improper control, and failed to survey the appropriate universe. (Dkt.
88-1 at 6-8). The Court has reviewed these arguments and finds that while it does appear
that the Harper Survey has methodological problems, the infirmities are not so severe as to
render it inadmissible.
As the Court noted in its discussion of the Berger Survey, the general rule is that
"[w]hen evaluating survey evidence, errors in a survey's methodology usually go to the
weight accorded to its conclusions rather than its admissibility." POM Wonderful, 769 F.
Supp. 2d at 197. Here, unlike Mr. Berger, Ms. Harper conducted a survey that was not a
one-off, so-called "qualitative survey," but was instead intended to be a standard
quantitative survey. Ms. Harper also used an appropriate sample size.
The Court acknowledges that Defendant has raised multiple valid criticisms of the
Harper Survey. The Court agrees that the control used by Ms. Harper was likely not a
proper control. "To fulfill its function, a control should share as many characteristics with
the experimental stimulus as possible, with the key exception of the characteristic whose
influence is being assessed." THOIP v. Walt Disney Co., 788 F. Supp. 2d 168, 181
(S.D.N.Y. 2011)("'THOIP IF)(quotation and alteration omitted). Here, the controls used
by Ms. Harper(SAMSUNG and APPLE)are well-known marks and have no resemblance
to lONEX and lON-X, the items being tested. Moreover, Ms. Harper admitted at her
deposition that "nothing" about the control marks was similar to the test marks and that
-22-
these controls were chosen in a deliberate effort to keep the baseline level of confusion
low. (See Dkt. 88-4 at 35, 37-38).
Ms. Harper also failed to use a visual stimulus, but instead asked the survey
participants to "imagine" that they were shopping for a smartwatch and saw either lONEX
or lON-X on the packaging and the back of the watch. (Dkt. 88-3 at 10). Courts have
disapproved ofthe use ofthese kinds of"conceptual stimuli," explaining that "[w]hat[the]
survey takers saw in their minds is unknown and unknowable." J.T. Colby & Co., Inc. v.
Apple Inc., No. 11 Civ. 4060(DLC), 2013 WL 1903883, at *21 (S.D.N.Y. May 8, 2013),
aff'd, 586 F. App'x 8(2d Cir. 2014).
The single multiple-choice question used by Ms. Harper is also somewhat leading,
and it appears that the universe may have been overly broad, inasmuch as Ms. Harper did
not limit the survey to individuals who indicated a present interest in purchasing a
smartwatch in the price range ofthe Apple Watch device. See Louis Vuitton, 525 F. Supp.
2d at 630 (finding survey participants improperly screened where they were asked only if
they were "likely to purchase 'within the next year or so' a purse or handbag costing more
than $100," and handbags at issue were more expensive).
The Court does not discount the significance ofthe methodological flaws discussed
above and agrees with Defendant that they render the Harper Survey oflimited evidentiary
value. However,"there is 'no such thing as a "perfect" survey. The nature ofthe beast is
that it is a sample, albeit a scientifically constructed one.'" THOIP I, 690 F. Supp. 2d at
230(quoting 6 McCarthy on Trademarks § 32:184). Accordingly, the general rule is that
cross-examination, and not exclusion by the Court, is "the appropriate way to raise
-23-
criticisms ofthe survey's methods," On Site Energy Co. v. MTU Onsite Energy Corp.,'Ho.
lO-CV-1671(JS)(WDW),2012 WL 2952424, at *3(E.D.N.Y. July 19,2012). Unlike the
Berger Survey, which failed to even attempt to apply an appropriate methodology, the
Harper Survey used an appropriate sample size, separated participants into a control group
and a test group, and at least somewhat comported with standard survey design.
Accordingly,the Harper Survey is not, on its face,so fatally flawed as to be excluded under
Rules 403 and 702. The Court therefore denies Defendant's motion to exclude the Harper
Survey.
3.
Motion in Limine Regarding Scott D. Woldow
Defendant's third and final motion in limine seeks to exclude the opinions offered
by Plaintiffs proffered expert witness Scott D. Woldow. For the reasons set forth below,
the Court grants the motion in part and denies the motion in part.
a.
The Contested Opinions and Evidence
Mr. Woldow holds a juris doctorate from The American University Washington
College of Law and a master's of business administration from The American University
Kogod College ofBusiness Administration, and is a practicing trademark attorney with the
law firm Smith, Gambrell & Russell, LLP in Washington, D.C. (Dkt. 89-6 at 5). From
1998 to 1999, Mr. Woldow was a Trademark Examining Attorney at the USPTO. (Jd.).
Mr. Woldow authored an expert report dated March 15, 2018, in which he offered
the following opinions:(1) the lONEX® mark is not a descriptive term and is a distinct
source identifier that any reasonable trademark practitioner would identify as potentially
confusingly similar with the "lON-X mark";(2) a reasonable trademark attorney would
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not recommend adoption and use of the "lON-X mark" based on the prior use and
registration of the lONEX® mark; and (3) Defendant's fair use defense is contrary to
Defendant's actions. {Id. at 9). These opinions are discussed with more particularity in
the Court's consideration of their admissibility.
b.
Admissibility of Mr. Woldow's Opinions
Defendant asks the Court to exclude Mr. Woldow's opinions in their entirety for the
following reasons:(1) Mr. Woldow offers improper legal opinions on the ultimate issues
to be decided in this case;(2)Mr. Woldow applied the incorrect methodology to determine
likelihood of confusion;(3)Mr. Woldow is not qualified to offer opinions about consumer
psychology, marketing, or linguistics;(4) Mr. Woldow cannot opine about Apple's intent;
and(5) Mr. Woldow's opinions are based on insufficient facts or data. (Dkt. 89-1 at 6-8).
The Court has considered each ofthese arguments and finds that portions of Mr. Woldow's
testimony are not admissible, for the reasons discussed below.
First, the Court agrees with Defendant that Mr. Woldow's expert report is replete
with opinions related not to trademark law (the area in which Mr. Woldow is proffered as
an expert) but to consumer psychology, marketing, or linguistics.
For example, Mr.
Woldow's expert report contains the following opinions, among others:
• "lON-X is likely to be perceived as a trademark by consumers. The ordinary
consumer is likely to view lon-X as a trademark by visual appearance alone."(Dkt.
89-6 at 13)
• "The consuming public is likely to recognize the use oflON-X on the Apple Watch
Sport as a feature of the product because it looks like a trademark as applied to the
watch and as applied to the packaging for the goods." {Id).
25-
• "Apple's use of lON-X in connection with the Apple Watch Sport is likely to be
noticed and considered by consumers because it is set off from the surrounding
words." {Id.).
• "[B]ased on appearance alone, an ordinary consumer or a specialized buyer of glass
is likely to view Apple's examples as trademark usage, not descriptive usage." (Id.).
• "Buyers of chemically strengthened glass will likely be aware that not all glass can
be strengthened by the ion-exchange chemical treatment process." (Id.).
• "An ordinary consumer is not likely to consider [Defendant's use ofthe phrase 'lonX glass'] to be descriptive usage. . .. The ordinary purchaser . . . isn't likely to
consider lon-X as a descriptive abbreviation ofthe ion-exchange glass strengthening
process. They are more likely to view it as a trademark for a product feature not a
scientific abbreviation describing how smaller ions are replaced be larger ions to
create a stronger surface layer." {Id. at 14).
• "The ordinary consumer is likely not aware of 'ion exchange technology' or any
alleged abbreviation for it." {Id. at 18).
• "[I]t seems more plausible that the average consumer has no idea what ion exchange
glass strengthening is or that it has any such alleged abbreviation." {Id. at 19).
• "A reasonable consumer of both sport watches and chemically strengthened glass
would likely find the marks lON-X and lONEX® as highly similar in appearance,
sound, connotation and commercial impression." {Id. at 21).
Mr. Woldow also purports to "concur with [the] results" of Ms. Harper's survey. {Id. at
22).
"It is well established that even if a witness qualifies as an expert with respect to
certain matters or areas of knowledge, it by no means follows that he or she is qualified to
express expert opinions as to other fields." LVL XIII Brands, 209 F. Supp. 3d at 638
(quotation omitted). For example, in LVL XIII Brands, the plaintiff sought to have its
expert witness, an attorney and professor of law, opine on whether a particular trademark
had achieved secondary meaning. Id. at 637-40. The Court found his testimony
-26-
inadmissible, explaining that although the proffered expert's "experience and education
may qualify him as an expert in certain areas of fashion history and intellectual property
law," it did not qualify him to opine on the empirical question of whether a trademark had
achieved secondary meaning. Id. at 638.
Similarly, in this case, while Mr. Woldow is qualified to be an expert in the area of
trademark law, he admitted at his deposition that he has no expert qualifications in
consumer psychology, marketing, or linguistics. {See Dkt. 89-5 at 15-17). A trademark
lawyer has no particularized knowledge regarding the understanding and perceptions of an
ordinary consumer, nor of the understanding and perceptions of a specialized buyer of
glass. Here, Mr. Woldow essentially speculates as to what an ordinary consumer or a
specialized buyer of glass would know or think, which is confirmed by the language he
uses in his expert report. {See, e.g., Dkt. 89-6 at 19 ("[I]t seems more plausible that the
average consumer has no idea what ion exchange glass strengthening is or that it has any
such alleged abbreviation.")). The Court sees no basis for permitting Mr. Woldow to
present a jury with this speculation, which is outside his field of training. See LVL XII
Brands, 209 F. Supp. 3d at 639-40(holding that "expertise most germane" to an empirical
determination of consumer association involves "training or experience performing
empirical analyses," and declining to permit attorney to opine thereon because his opinions
would be mere conjecture); R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244, 282 (S.D.N.Y.
2010)(finding experts in jewelry history and appraisal unqualified to testify as to whether
particular trade dress was identifiable to consumers and distinctive, because neither expert
had training in how the public perceived products). The fact that Mr. Woldow's legal
-27-
practice intersects with and involves issues of consumer confusion does not render him an
expert on the topic, any more than a medical malpractice attorney is an expert on human
physiology or a real estate attorney is an expert on construction. To hold otherwise would
allow attorneys to qualify as experts in areas far outside the legal field, simply because they
have concentrated their practice in a particular subject matter.
Mr. Woldow also may not simply opine that he concurs with Ms. Harper's survey
findings. "A[n][expert], however well credentialed he may be, is not permitted to be the
mouthpiece of a[n][expert] in a different specialty." Dura Auto. Sys. ofInd., Inc. v. CTS
Corp., 285 F.3d 609, 614 (7th Cir. 2002); see also In re M/VMSG Flaminia, No. 12-cv8892(KBF), 2017 WL 3208598, at *22(S.D.N.Y. July 28, 2017)("[A] proffered expert
may not simply pass off as their own, or serve as a vehicle for presenting, the opinions of
others in subjects on which the proffered expert is not personally qualified."). Here, Mr.
Woldow has no expertise in conducting consumer surveys, and he may not simply repeat
Ms. Harper's findings and state that he concurs with them.
The Court further agrees with Defendant that Mr. Woldow has offered improper and
speculative opinions regarding Defendant's motivations. In particular, in opining as to
Defendant's fair use defense, Mr. Woldow speculates that at some point in time. Defendant
"switched its view of the lON-X mark as a trademark and began to consider it as an
allegedly descriptive term." (Dkt. 89-6 at 24). "Inferences about the intent or motive of
parties or others lie outside the bounds of expert testimony." In re Rezulin Prods. Liab.
Litig., 309 F. Supp. 2d 531, 547 (S.D.N.Y. 2004). Accordingly, Mr. Woldow may not
opine that Defendant at one point viewed lon-X as a trademark. However, Mr. Woldow
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may opine as to whether Defendant's actions are those that would be recommended by a
reasonable trademark attorney.
To the extent Defendant argues that Mr. Woldow has offered improper legal
opinions, in light of the Court's resolution of Defendant's motion for summary judgment,
this contention is denied as moot. The Court has not relied on or been confused by Mr.
Woldow's view of the law in assessing the parties' contentions.
For the foregoing reasons. Defendant's motion in limine to exclude Mr. Woldow's
expert opinions (Dkt. 89) is granted to the extent that Mr. Woldow opines as to the
perception and understanding of either an ordinary consumer or a specialized buyer of
glass, to the extent Mr. Woldow speculates as to Defendant's motivations, and to the extent
that Mr. Woldow opines that he concurs with Ms. Harper's survey results, and is otherwise
denied.
C.
Plaintifrs Motion in Limine
Plaintiff moves pursuant to Daubert to exclude certain testimony by Defendant's
expert witness Jeffrey Samuels. (Dkt. 76).
Mr. Samuels is an attorney and former
Assistant Commissioner for Trademarks at the USPTO, as well as a retired professor of
intellectual property, who offered a rebuttal to Mr. Woldow's report. (Dkt. 76-1 at 5).
Plaintiff asks the Court to preclude Mr. Samuels from testifying as to "matters
outside the scope of a rebuttal report and on ultimate issues of fact that the jury will be
asked to decide." (Dkt. 76 at 4). In particular. Plaintiff asks the Court to prohibit Mr.
29
Samuels from offering opinions "regarding how to assess the Polaroicf factors in making
a determination on likelihood of confusion." (Id. at 7). Plaintiff contends that these
opinions by Mr. Samuels are unhelpful to the trier of fact and will merely waste time and
unnecessarily confuse the jury. (Id. at 7-9).
In light of its resolution of Defendant's motion for summary judgment, which has
been decided without reference to any expert opinions offered by Mr. Samuels, the Court
finds that Plaintiffs motion in limine need not be resolved. Accordingly, the Court denies
Plaintiffs motion in limine as moot.
II.
MOTION FOR SUMMARY JUDGMENT
A.
Legal Standard
Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment
should be granted if the moving party establishes "that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ.
P. 56(a). The Court should grant summary judgment if, after considering the evidence in
the light most favorable to the nonmoving party, the court finds that no rational jury could
find in favor of that party. Scott v. Harris, 550 U.S. 372, 380 (2007)(citing Matsushita
Elec. Indus. Co. v. Zenith Radio Corp.,475 U.S. 574, 586-87(1986)).
"The moving party bears the burden ofshowing the absence of a genuine dispute as
to any material fact. .. ." Crawford v. Franklin Credit Mgmt. Corp., 758 F.3d 473, 486
(2d Cir. 2014). "Where the non-moving party will bear the burden of proof at trial, the
^
Polaroid Corp. v. PolaradElecs. Corp., 287 F.2d 492(2d Cir. 1961).
-30-
party moving for summary judgment may meet its burden by showing the evidentiary
materials of record, if reduced to admissible evidence, would be insufficient to carry the
non-movant's burden of proof at trial." Johnson v. Xerox Corp., 838 F. Supp. 2d 99, 103
(W.D.N.Y. 2011)(citing Celotex Corp. v. Catrett, All U.S. 317,322-23(1986)). Once the
moving party has met its burden, the opposing party "must do more than simply show that
there is some metaphysical doubt as to the material facts, and may not rely on conclusory
allegations or unsubstantiated speculation." Robinson v. Concentra Health Servs., Inc.,
781 F.3d 42, 44(2d Cir. 2015)(quoting Brown v. Eli Lilly & Co., 654 F.3d 347, 358(2d
Cir. 2011)).
Specifically, the non-moving party "must come forward with specific
evidence demonstrating the existence of a genuine dispute of material fact." Brown,654
F.3d at 358. Indeed, "the mere existence of some alleged factual dispute between the
parties will not defeat an otherwise properly supported motion for summary judgment; the
requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby,
Inc., All U.S. 242, 247-48 (1986).
B.
Fair Use
Defendant seeks summary judgment on the basis that its use of the phrase "lon-X
glass" constitutes fair use. (Dkt. 78 at 8). "The fair use doctrine permits use of a protected
mark by others to describe certain aspects ofthe user's own goods." EMICatalogue P'ship
V. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56,64(2d Cir. 2000). The Second
Circuit has explained:
It is a fundamental principle marking an outer boundary of the trademark
monopoly that, although trademark rights may be acquired in a word or
image with descriptive qualities, the acquisition of such rights will not
-31 -
prevent others from using the word or image in good faith in its descriptive
sense, and not as a trademark.
Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267,269(2d Cir. 1995);see also
15 U.S.C. § 1115(b)(4)(it is a defense to a claim of trademark infringement that "the use
of the name, term, or device charged to be an infringement is a use, otherwise than as a
mark, of the party's individual name in his own business, or of the individual name of
anyone in privity with such party, or of a term or device which is descriptive of and used
fairly and in good faith only to describe the goods or services of such party, or their
geographic origin"). "In order to assert a successful fair use defense to a trademark
infringement claim, the defendant must prove three elements: that the use was made (1)
other than as a mark,(2) in a descriptive sense, and (3) in good faith." Kelly-Brown v.
Winfrey, 717 F.3d 295, 308 (2d Cir. 2013). Fair use is an affirmative defense on which
Defendant bears the burden of proof, see id., and applies to both common-law trademark
claims and claims under the Lanham Act, Car-Freshner, 70 F.3d at 268-69.
1.
Applicability of Fair Use Defense
Before reaching the merits ofDefendant's fair use defense,the Court first addresses
Plaintiffs threshold contention that Defendant's fair use defense is "illusory" because
§ 1115(b)(4) only applies to "an ordinary word, or a phrase made up of ordinary words."
(Dkt. 96 at 8). In other words. Plaintiff argues that because the challenged phrase in this
case is "lon-X glass" and not "ion exchange glass," fair use does not apply as a matter of
law. Plaintifffurther argues that a fair use defense is not available to Defendant as a matter
-32
of law because lONEX® is not a descriptive trademark. (Dkt. 96 at 10-12). The Court
rejects these contentions by Plaintiff, for the reasons that follow.
"It will be useful at the outset to restate some basic principles of trademark law,
which, although they should be familiar, tend to become lost in a welter of adjectives."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). In
particular, it is relevant to the instant discussion that there are generally "four different
categories of terms with respect to trademark protection. Arrayed in an ascending order
which roughly reflects their eligibility to trademark status and the degree of protection
accorded, these classes are (I) generic,(2) descriptive,(3)suggestive, and (4)arbitrary or
fanciful." Id. "A generic term is one that refers, or has come to be understood as referring,
to the genus of which the particular product is a species," and is not eligible for trademark
protection. Id. A descriptive term may be a valid trademark only if it has acquired a
secondary meaning and become distinctive of the applicant's goods in commerce. Id. at
10. A suggestive term is one that "requires imagination, thought and perception to reach a
conclusion as to the nature of goods," and is "entitled to registration without proof of
secondary meaning," as are terms that are "fanciful or arbitrary." Id. at 10-11 (quotation
omitted).
Plaintiff argues that the case law does not support the conclusion that "infringing
uses of arbitrary or fanciful marks may be subject to a fair use defense" or that a fair use
defense may be invoked "when the infringing use involves a coined word or phrase with a
non-standard derivation such as lON-X." (Dkt.96 at 8-10). Plaintiffrelies on the Southern
District of New York's decision in Cullman Ventures, Inc. v. Columbian Art Works Inc.,
-33-
717 F. Supp. 96(S.D.N.Y. 1989) for the proposition that the use of a hyphen in the term
lon-X means it is not an "ordinary word term" and therefore carmot qualify as a fair use.
(Dkt. 96 at 9). However, the Cullman Ventures decision was premised on that court's
holding that "[t]he 'fair use' defense is available only in actions involving descriptive
trademarks." 717 F. Supp. at 133. The Second Circuit expressly disavowed the Cullman
Ventures holding six years later in the Car-Freshner case, stating;
Regardless whether the protected mark is descriptive, suggestive, arbitrary,
or fanciful as used in connection with the product or service covered by the
mark, the public's right to use descriptive words or images in good faith in
their ordinary descriptive sense must prevail over the exclusivity claims of
the trademark owner.
70 F.3d at 269.
Plaintiff attempts to write off this statement by the Second Circuit as mere "dicta"
(Dkt. 96 at 9 n.2), but no court has interpreted it as such, nor could one reasonably do so,
given the Car-Freshner court's extensive discussion of the issue and its relevance to the
ultimate holding in that case. See, e.g.. Radio Channel Networks, Inc. v. Broadcast.Com,
Inc., No.98 CIV.4799(RPP), 1999 WL 124455, at *3(S.D.N.Y. Mar. 8, 1999), aff'd, 201
F.3d 432(2d Cir. 1999)("The Second Circuit has made clear that it is not necessary that
the plaintiffs mark be classified as 'descriptive' within the four-fold hierarchy of
trademark types (generic, descriptive, suggestive, and arbitrary or fanciful). See CarFreshner, 70 F.3d at 269-70. Instead, what matters is whether the defendant has used the
mark(1)in good faith, and(2)in its descriptive sense."). Moreover,in this Circuit, the fair
use defense has been considered in the context of fanciful marks since at least the 1970s.
See Venetianaire Corp. of Am. v. A & P Imp. Co., 429 F.2d 1079, 1082 (2d Cir. 1970)
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(considering whether the defendant had engaged in a fair use ofthe word "hygienic" or had
infringed on the plaintiffs mark "Hygient," which the court noted was "arbitrary and
fanciful").
Other federal courts have also not limited the fair use defense to so-called ordinary
words. See, e.g.. Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d 1249, 1260 (S.D.
Cal. 2008)
("The fair use defense is not limited to terms that one can find in a dictionary.").
For example, in In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460
(9th Cir. 1993), the plaintiff had a registered trademark, VCR-2®, for its videocassette
recorder machine. Id. at 1462. "Competitors[ofthe plaintiff], which[made]receivers and
other machines to which two videocassette recorders may be attached, [had] labeled the
terminals on the backs of their machines 'VCR-l' and 'VCR-2,' with and without the
hyphen," and the plaintiff claimed trademark infringement. Id. The Ninth Circuit found
as a matter of law that the defendants' use ofthe term "VCR-2" was fair use. Id. at 1466.
Similarly, in Sunmark,Inc. v. Ocean Spray Cranberries, Inc.,64 F.3d 1055(7th Cir.
1995),the Seventh Circuit held that ajuice company's use ofthe phrase "sweet-tart," which
was not found in the dictionary, was nonetheless fair use and did not infringe on the
plaintiffs trademark, SweeTARTS®. Id. at 1058-59; see also SportFuel, Inc. v. PepsiCo,
/w.. No. 16 C 7868,2018 WL 2984830, at *5(N.D. 111. June 14,2018)(rejecting argument
that fair use defense did not apply because "SportFuel" is not a dictionary-defined term),
appeal dismissed. No. 18-2524, 2018 WL 6986653(7th Cir. July 30, 2018).
The Court agrees with these courts that there is no reason to limit a fair use defense
to words found in a dictionary and rejects Plaintiffs threshold argument that the fair use
-35-
defense does not apply to the claims at issue in this litigation. The Court therefore
considers on the merits whether the elements of a fair use defense have been established as
a matter of law.
2.
Non-Trademark Use
The Second Circuit has "equated use as a mark with the use of a term as a symbol
to attract public attention." JA Apparel Corp. v. Abboud,568 F.3d 390,400(2d Cir. 2009)
(quotations and alterations omitted); see also Dessert Beauty, Inc. v. Fox,568 F. Supp. 2d
416,424(S.D.N.Y.2008),aff'd,329 F. App'x 333(2d Cir. 2009)
("A trademark use occurs
when a mark indicates the source or origin of consumer products."). So, for example,
where a contested phrase is "located on the package in a place and manner that only the
close reader would notice," the use is less likely to constitute use as a mark. Mattel, Inc.
V. Azrak-Hamway Int'I, Inc., 724 F.2d 357, 361 (2d Cir. 1983). "[N]on-trademark use of
the challenged phrase" may also be "evidenced by the fact that the source ofthe defendants'
product is clearly identified by the prominent display ofthe defendants' own trademarks."
Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28,30(2d Cir.
1997).
Based on the record before the Court in this case, a reasonable jury would
necessarily find that Defendant is not using lon-X as a trademark. Defendant has produced
extensive evidence supporting this conclusion. In particular. Defendant has demonstrated
that every time it uses the phrase "lon-X glass," it does so in close proximity to either the
Apple word mark or the Apple logo, and that it does so on the back of the Apple Watch
device and in other places where the Apple Watch device's features are being described.
-36-
Defendant has also submitted Dr. Dhar's expert opinion that consumers are unlikely to
perceive "lon-X glass" as a source identifier. (See Dkt. 86-1 at 78). Mr. Berger's rebuttal
report, which the Court has reviewed, does not contain any persuasive substantive criticism
of this opinion by Dr. Dhar. (See Dkt. 87-21). Moreover, Defendant has not applied for a
trademark on "lon-X" and does not claim any exclusive rights to the use of that phrase.
In opposition to Defendant's summaryjudgment motion,the sole evidence Plaintiff
points to in support of its argument that Defendant is using lon-X as a trademark is Mr.
Woldow's expert report, wherein he opines, among other things, that "[t]he ordinary
consumer is likely to view lon-X as a trademark through visual appearance alone." (Dkt.
96 at 11-12). However, as the Court has discussed at length above, Mr. Woldow is a
trademark attorney and has no expertise in what an ordinary consumer is likely to perceive
or understand. Accordingly, as the Court has already found,these opinions by Mr. Woldow
are not admissible and cannot serve as competent evidence in support of Plaintiffs
contentions. Therefore, Defendant has established its satisfaction ofthe first element of a
fair use defense, and Plaintiff has failed to come forward with any competent, admissible
evidence from which a reasonable jury could conclude that Defendant is using lon-X as a
trademark.
3.
Use in a Descriptive Sense
The second requirement for a successful fair use defense is that the use be made "in
a descriptive sense[.]" Kelly-Brown, 717 F.Sd at 308. "Whether a use is descriptive must
be determined by assessing the manner in which the mark is used with respect to the
product or service sold by the alleged infringer." EMI Catalogue P'ship, 228 F.Sd at 65.
-37-
Moreover,"[wjhere a mark incorporates a term that is the only reasonably available means
ofdescribing a characteristic ofanother's goods,the other's use ofthat term in a descriptive
sense is usually protected by the fair use doctrine." Id.
The Second Circuit's decision in Car-Freshner provides insight into what it means
to use a term in a descriptive sense. There,the court found that the use of a pine-tree shape
for an air freshener was descriptive because "the pine-tree shape describes two aspects of
[the defendant's] product. The pine tree refers to the pine scent of its air freshening agent.
Furthermore, as a Christmas tree is traditionally a pine tree, the use of the pine-tree shape
refers to the Christmas season, during which [the defendant] sells this item." 70 F.3d at
270. Car-Freshner thus teaches that descriptive use is not narrowly defined and is satisfied
where there is a relationship between the challenged use and particular aspects ofthe goods
in question.
In this case. Plaintiff chose to adopt a mark that incorporates most ofthe term "ion
exchange," a well-known (within the relevant industry) scientific term for a chemical
process for strengthening glass. It therefore accepted the risk that other businesses would
use similar terminology to truthfully describe their own products. See Cosmetically Sealed
Indus., 125 F.3d at 30 ("If any confusion results, that is a risk the plaintiff accepted when
it decided to identify its product with a mark that uses a well known descriptive phrase.").
Defendant uses the abbreviated term "lon-X" to convey the fact that its glass watch covers
have been chemically strengthened using an ion exchange process. Plaintiff concedes that
its own expert, Mr. Berger, testified at deposition that Defendant uses lon-X as "a
38-
description of a component part" of certain Apple Watch devices. (Dkt. 79 at ^ 34; Dkt.
96-1 at If 34).
At oral argument, Plaintiffs counsel suggested that the Court should conclude that
Defendant does not use lon-X in a descriptive sense because(1)the USPTO concluded that
lONEX® was not descriptive, and that analysis applies with equal force to a consideration
of whether Defendant is using lon-X descriptively,(2)the general public is not aware of
the existence ofthe ion exchange process, and(3)certain employees ofDefendant referred
in emails to "naming" components of the Apple Watch device. The Court does not find
these arguments persuasive.
First, as Defendant's counsel noted at oral argument, the record before the Court
indicates that Plaintiff did not inform the USPTO at the time it registered the lONEX®
mark that it was used in connection with an ion exchange process. (See Dkt. 80-18 at 2).
Under these circumstances, the Court is not convinced that the USPTO's determination is
instructive with respect to the descriptiveness oflon-X.
Second, Plaintiffs argument regarding the general public's knowledge of the ion
exchange process misses the point. There is no dispute that if Defendant had used the
phrase "ion exchange glass," that would have been considered descriptive, regardless of
the general public's understanding ofthe scientific underpinnings. Nothing in the fair use
Plaintiffs counsel suggested at oral argument that Mr. Berger had "misspoken"
when he testified in this regard. However, Plaintiff has not submitted a declaration from
Mr. Berger stating that this is the case or any other admissible evidence contradicting Mr.
Berger's sworn deposition statements.
-39-
case law suggests that a use cannot be descriptive simple because it refers to a relatively
obscure or specialized aspect ofthe goods in question.
Third, while a small number of Defendant's employees may have referred to "lonX" as a "name" for one of the Apple Watch device's components, this does not establish
non-descriptive use. A name can be descriptive—indeed, there is an inherent desirability
in choosing a name that describes the product's attributes, which is why trademark law
requires that secondary meaning be established before such a name can become a registered
trademark. Plaintiff has produced nothing from which a jury could find that this reference
to "naming" by certain of Defendant's employees somehow means that the use of the
phrase "lon-X glass" is not descriptive. Accordingly, based on the record before the Court,
Defendant has established the second element of a fair use defense.
4.
Good Faith
The third and final element of a fair use defense is that the use has been undertaken
in good faith. "In analyzing the proper scope of fair use good faith, ... the focus of the
inquiry is .. .whether defendant in adopting its mark intended to capitalize on plaintiffs
good will." EMI Catalogue P'ship, 228 F.3d at 66. Defendant has borne the burden of
demonstrating conclusively that its actions were taken in good faith. Good faith may be
"evidenced by the fact that the source ofthe defendants' product is clearly identified by the
prominent display of the defendants' own trademarks." Cosmetically Sealed Indus., 125
F.3d at 30. Here, there is no question that Defendant has prominently displayed its own
trademarks in connection with the Apple Watch device, and there is nothing in the record
-40-
to suggest that Defendant was somehow trying to capitalize on good will associated with
Plaintiff.
Plaintiff has failed to produce or point to any admissible evidence to contradict
Defendant's showing of good faith. Instead, Plaintiff argues that bad faith is shown
because Defendant had prior knowledge of Plaintiffs lONEX® registration. (Dkt. 96 at
12). However, the Second Circuit has rejected the argument that prior knowledge is
sufficient to show bad faith. Car-Freshner, 70 F.3d at 270. Plaintiff also argues that Mr.
Woldow's expert opinions are evidence of Defendant's bad faith, but the portion of Mr.
Woldow's expert report cited by Plaintiff is based on his unsupported opinion that there is
a "likelihood of confusion between the lONEX® and lON-X marks." {See Dkt. 96 at 12).
The Court has already explained that Mr. Woldow has no expertise in consumer
perceptions or understandings and that he is unqualified to opine as to the likelihood of
confusion. Accordingly, his dependent opinion as to what actions a reasonable trademark
attorney would take where there was a likelihood ofconfusion is not probative ofthe issue
ofgood faith. On the record before the Court, no reasonable jury could find that Defendant
acted in bad faith in its use of the phrase "lon-X glass."
For all the foregoing reasons, the Court finds that Defendant has demonstrated its
entitlement to summary judgment. On the instant record, a reasonable trier of fact would
necessarily conclude that Defendant's use ofthe phrase "lon-X glass" constituted fair use
and was not unlawful trademark infringement or unfair competition.
41 -
C.
Likelihood of Confusion
In addition to seeking summary judgment based on its fair use affirmative defense,
Defendant also contends that it is entitled to summary judgment because there is no
likelihood of confusion, as is required to show trademark infringement. The Court agrees,
for the reasons discussed below.
"A plaintiffs trademark is protected by federal law against infringement by use of
colorable imitations of the mark which are likely to cause confusion, or to cause mistake,
or to deceive." Int7Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC,823
F.3d 153, 160 (2d Cir. 2016)(quotation omitted). Accordingly, "[a] claim of trademark
infringement under the Lanham Act is analyzed under a two-prong test. The first prong
looks to whether the senior user's mark is entitled to protection; the second to whether the
junior user's use of its mark is likely to cause consumers confusion as to the origin or
sponsorship of the junior user's goods." Guthrie Healthcare Sys. v. ContextMedia, Inc.,
826 F.3d 27,37(2d Cir. 2016)(citations omitted). Likelihood of confusion is a "common
element" of federal trademark infringement, federal unfair competition, common-law
trademark infringement, and common-law unfair competition claims. Pristine Indus., Inc.
V. Hallmark Cards, Inc., 753 F. Supp. 140, 144(S.D.N.Y. 1990).
"In determining whether there is a likelihood of consumer confusion for trademark
infringement," courts in this Circuit "apply the eight-factor balancing test set forth in
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)." Int'l Info.
Sys., 823 F.3d at 160. The eight Polaroid factors are;
42-
the strength ofthe senior user's mark; the similarity ofthe parties' marks;the
proximity of the parties' areas of commerce; the likelihood that the senior
user will bridge the gap separating their areas of activity; the existence of
actual consumer confusion; whether the junior user acted in bad faith or was
otherwise reprehensible in adopting the mark; the quality ofthe junior user's
product; and the sophistication of the relevant consumer group.
Guthrie Healthcare, 826 F.3d at 37. "Courts should not treat any one factor as dispositive,
nor apply a mechanical process awarding judgment to the party with the greatest number
of factors weighing in its favor." Id. (quotation omitted).
Summary judgment is
appropriate on a trademark infringement claim "if, considering the record as a whole,'the
undisputed evidence would lead to only one conclusion as to whether confusion is likely.'"
Knowles-Carter v. Feyonce, Inc., 347 F. Supp. 3d 217, 224 (S.D.N.Y. 2018)(quoting
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474,478(2d Cir. 1996)).
Defendant argues that, on the record before the Court, Plaintiff will be unable to
satisfy its burden of showing a likelihood of confusion, whether forward or reverse. (Dkt.
78 at 16)." Plaintiffcontends in opposition that the evidence in this case creates a material
issue of fact as to the likelihood of confusion. (Dkt. 96 at 13).
The Court has considered the evidence before it, the parties' arguments, and each
of the Polaroid factors and, for the reasons discussed below, finds that no reasonable jury
could find a likelihood of confusion on the current record.
"
"Forward confusion is the traditional form of confusion in which the junior user
uses the mark to sell goods or services based on the misperception that they originate with
the senior user. Reverse confusion exists when a subsequent user selects a trademark that
is likely to cause consumers to believe, erroneously, that the goods marketed by the prior
user are produced by the subsequent user." Gameologist Grp., LLC v. Set. Games Int'l,
Inc., 838 F. Supp. 2d 141,156(S.D.N.Y. 2011)(citation and quotation omitted), aff'd, 508
F. App'x31 (2d Cir. 2013).
-43-
1.
Strength of PlaintifFs Mark
The first Polaroid factor is the strength ofPlaintiffs mark. "The strength ofa mark
is its tendency to identify the goods sold under the mark as emanating from a particular,
although possibly anonymous, source." Cadbury Beverages, 73 F.3d at 479 (quotations
omitted). "In somewhat circular fashion, consideration ofthis factor includes an evaluation
of the same characteristics that initially determined a mark's validity; inherent
distinctiveness, descriptiveness, and secondary meaning." Time, Inc. v. Petersen Pub. Co.
LLC, 173 F.3d 113,117(2d Cir. 1999). "Along with the inherent distinctiveness ofa mark,
the mark's distinctiveness in the marketplace also must be considered in determining its
strength," and "[r]egistration under the Lanham Act is also pertinent to a mark's strength."
M at 118;see also J.T. Colby,2013 WL 1903883,at *15(The strength ofthe mark "inquiry
encompasses two elements:(1)the degree to which the mark is inherently distinctive; and
(2)the degree to which it has acquired distinctiveness in the marketplace").
The lONEX® mark is a registered, incontestable mark, and it is thus presumptively
distinctive. See Classic Liquor Imps., Ltd. v. Spirits Int'l B.V., 201 F. Supp. 3d 428, 442
(S.D.N.Y. 2016)("Registered marks, like those at issue here, are presumptively distinctive
under the Polaroid analysis." (quotation omitted)). "However, while the incontestable
status of the registration creates a conclusive presumption as to the validity of the mark,
such incontestability does not prevent the defendants from questioning the strength ofthe
mark and the scope ofits protection." Kozak Auto Drywash,Inc. v. Enviro-Tech Int'I, Inc.,
823 F. Supp. 120, 123 (W.D.N.Y. 1993); see also Gruner + Jahr USA Pub., a Div. of
Gruner + Jahr Printing & Pub. Co. v. Meredith Corp.,991 F.2d 1072, 1078(2d Cir. 1993)
-44-
(noting that "incontestability does not relieve the trademark owner from the requirement
of proving likelihood of confusion," and affirming finding that incontestable mark was
weak for purposes of likelihood of confusion analysis); Montblanc-Simplo v. Aurora Due
S.r.L, 363 F. Supp. 2d 467, 481 (E.D.N.Y. 2005)(finding that "an incontestably valid
mark" was nonetheless a "relatively weak mark"). Accordingly, the Court has considered
Defendant's contention that the lONEX® mark is weak and agrees, for the reasons
discussed below.
Initially, the Court is not persuaded by Plaintiffs contention that its mark is strong
because it is "an invented word" and therefore fanciful. (See Dkt. 96 at 13). Courts have
rejected similar arguments. See Classic Liquor, 201 F. Supp. 3d at 443("[A] coined term
is not a 'fanciful' one merely because it cannot be found in Webster's Third.")(collecting
cases). Nor does the use of an abbreviation render a mark fanciful. See, e.g., Spex, Inc. v.
Joy ofSpex, Inc., 847 F. Supp.567,574(N.D.111. 1994)(holding that the mark "Spex,Inc."
is descriptive because it "describes, or conveys the essence, of a store that sells glasses"
(quotation omitted)). Just as the term "Spex" conveys the essence of a store that sells
eyeglasses, the lONEX® mark conveys the essence of using ion exchange to chemically
strengthen glass. The Court agrees with Defendant that a reasonable jury would find that
the lONEX® mark was conceptually weak.
Defendant has also conclusively demonstrated that the lONEX® mark is
commercially weak. "Even an inherently distinctive mark can, in its commercial context,
lack strength as a mark." Nora Beverages, Inc. v. Perrier Grp. ofAm., Inc., 269 F.3d 114,
-45-
123 (2d Cir. 2001). In assessing the commercial strength of a mark, the Court considers
six factors:
(1) the senior user's advertising and promotional expenses; (2) consumer
studies linking the name to the source;(3)the senior user's sales success;(4)
third-party uses and attempts to plagiarize the mark; (5) length and
exclusivity of the mark's use; and (6) unsolicited media coverage of the
products at issue.
Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481,489(S.D.N.Y. 2004). In
this case, the evidence of record shows that these factors, considered as a whole, do not
demonstrate commercial strength.
Plaintiff has spent relatively minor amounts of
advertising and promotion and there are no consumer studies linking the lONEX® name
to Plaintiff—^to the contrary. Plaintiffs own expert, Mr. Berger, stated in his expert report
that "very few" of the glass buyers he interviewed had heard of lONEX®. (Dkt. 87-5 at
14). With respect to sales success. Plaintiffs sales, while certainly not insignificant, do
not rise to the level that courts have typically found to indicate commercial strength. There
has also been no unsolicited media coverage ofPlaintiffs lONEX® branded services, nor
is there evidence in the record of significant third-party uses or attempts to plagiarize the
mark. The Court notes that there are factual disputes between the parties regarding the
exclusivity of the mark's use that are not amenable to resolution on a motion for summary
judgment. However, even finding that this one factor favors Plaintiff, no reasonable jury
could find on the facts before the Court that the lONEX® mark is commercially strong.
The Court notes that Plaintiff argues there is a potential in this case for both forward
and reverse confusion. "[Djistrict courts in this Circuit have held that, in a reverse
confusion case, the court should look to the comparative strength of thejunior user's ...
-46-
mark when assessing the first Polaroid factor." THOIPII,788 F. Supp. 2d at 185. Here,
there is no evidence in the record regarding the commercial strength of"lon-X," and so no
reasonable jury could find in Plaintiffs favor in this regard.
For all the foregoing reasons, the Court finds that the first Polaroid factor favors
Defendant.
2.
Similarity of the Marks
The next Polaroid factor the Court considers is the similarity of the marks. "[I]n
evaluating similarity, courts consider 'the mark's overall impression on a consumer,
considering the context in which the marks are displayed and "the totality of factors that
could cause confusion among prospective purchasers.'"" Codename Enters., Inc. v.
Fremantlemedia N. Am., Inc., No. 16 Civ. 1267 (AT)(SN), 2018 WL 3407709, at *8
(S.D.N.Y. Jan. 12, 2018)(quoting Malletier v. Burlington Coat Factory Warehouse Corp.,
426 F.3d 532, 537 (2d Cir. 2005)). "The fact that two marks appear very similar or
contain[]identical words is not dispositive." Id.(quotation omitted); see also J.T. Colby,
2013 WL 1903883, at *16("The fact that the marks use the same word is not dispositive
if the differences in the ways the marks are presented in the marketplace make confusion
less likely.").
Defendant has produced extensive evidence showing that, taking into account the
contexts in which lONEX® and lon-X appear, they are not similar to one another. In
particular. Defendant has shown that wherever it uses the term "lon-X," either the Apple
word mark or the Apple logo appear in close proximity. SeeJ.T. Co/6y,2013 WL 1903883,
at * 17(finding Apple iBooks mark not similar to the plaintiffs iBooks mark in part because
-47-
the Apple iBooks mark "appears in an Apple-branded environment"). The record before
the Court further demonstrates that the lONEX® mark is used on packaging labels and
invoices that are clearly labeled as originating with Plaintiff, and on Plaintiffs website
where a consumer would again clearly be aware that it was Plaintiff offering lONEX®branded services. Moreover, Dr. Farrell has opined, without any admissible rebuttal, that
lONEX® and lon-X are pronounced and spelled differently and will be perceived as
different words by English readers. (Dkt. 85-1 at 21).
Plaintiff argues without elaboration, and citing no cases other than Polaroid, that
this factor favors it because of the "similarity in spelling, pronunciation, and commercial
appearance between the two word marks." (Dkt. 96 at 14). However,Plaintiff has pointed
to no admissible evidence from which a reasonable jury could conclude that lONEX® and
lon-X, considered in the context in which they are actually displayed, are similar.
Accordingly, the Court finds that this Polaroid factor favors Defendant.
3.
Proximity of the Parties* Areas of Commerce
The third Polaroid factor is the proximity ofthe parties' areas of commerce. "The
proximity inquiry asks to what extent the two products compete with each other. The
purpose of the inquiry, which considers both market proximity and geographic proximity,
is to determine whether the two products have an overlapping client base that creates a
potential for confusion." Classic Liquor, 201 F. Supp. 3d at 447 (quotations and citation
omitted).
The Court agrees with Defendant that the parties in this case offer completely
different goods and services. It is undisputed that Plaintiff offers glass strengthening
-48-
services to other businesses, while Defendant sells electronic devices directly to
consumers. Plaintiffs cursory argument that this factor favors it because "both lONEX
and lON-X directly relate to chemically strengthened glass" (Dkt. 96 at 15) "does not
withstand mild scrutiny," Codename,2018 WL 3407709,at *9(rejecting argument that the
plaintiffs and defendant's services were similar because they "both create online
content"). Plaintiffs argument "ratchets the level of abstraction so high," id., as to render
the concept of proximity meaningless. The undisputed record in this case shows that
Plaintiff and Defendant are not competitors and do not have overlapping customer bases.
This Polaroid factor strongly favors Defendant. See Malaco Leaf, AB v. Promotion In
Motion, Inc., 287 F. Supp. 2d 355, 373 (S.D.N.Y. 2003)(finding this factor favored the
defendant where the parties "compete[d] in different sectors ofthe candy industry").
4.
Likelihood of Bridging the Gap
The next Polaroid factor "concerns the likelihood that [a] senior user that is not in
direct competition with ajunior user at the time a suit is brought will later expand the scope
of its business so as to enter the junior user's market." U.S. Polo Ass'n. Inc. v. PRL USA
Holdings, Inc., 800 F. Supp. 2d 515, 531 (S.D.N.Y. 2011). "In order to bridge the gap,
plaintiffs must demonstrate that they intend to enter the market of defendants and that
prospective customers are aware ofthis intention." Strange Music,326 F. Supp. 2d at 493;
see also Lang v. Ret. Living Pub. Co., 949 F.2d 576, 582(2d Cir. 1991)("[T]he intent of
the prior user to expand or its activities in preparation to do so, unless known by prospective
purchasers, does not affect the likelihood of confusion.") (quotation omitted). "The
expansion must occur or be likely to occur in the 'reasonably near future.'" YouGottaEat,
-49-
Inc. V. Checkers Drive-In Restaurants, Inc., 81 F. App'x 392, 395 (2d Cir. 2003)(quoting
Virgin Enterprises Ltd. v. Nawab,335 F.3d 141, 150(2d Cir. 2003)); see also Lebewohl v.
Heart Attack Grill LLC, 890 F. Supp. 2d 278, 295 (S.D.N.Y. 2012)("A speculative
intention is insufficient to demonstrate that bridging the gap is likely; a litigant should
provide evidence of a concrete expansion plan.").
Here, Plaintiff cannot show that it is likely to bridge the gap and enter Defendant's
market. Considering the evidence in the light most favorable to Plaintiff, it appears that on
one occasion in 2015, Plaintiff chemically strengthened 40 units of glass for Samsung, and
that no other consumers electronics company has ever otherwise purchased Plaintiffs
services. {See Dkt. 96-8). While Plaintiff may wish to enter this market, there is simply
no evidence that it has any concrete prospects of doing so in the reasonably near future,
nor is there any evidence that prospective customers are aware of any plans by Plaintiff in
this regard. Accordingly, this Polaroid factor strongly favors Defendant.
5.
Actual Confusion
The fifth Polaroid factor is whether there is evidence of actual confusion. "Actual
confusion is highly probative of the likelihood of confusion, and proof of actual confusion
is generally shown through consumer surveys or anecdotal evidence of confusion, or
empirical studies or expert testimony." Classic Liquor, 201 F. Supp. 3d at 448(quotation
omitted).
In this case, there is minimal evidence of actual confusion. As discussed above,the
Berger Survey, on which Plaintiff relies, is so flawed as to be inadmissible under Rules
403 and 702.
The Harper Survey, while not per se inadmissible, has significant
-50-
methodological flaws and is of limited evidentiary value. Moreover, the Harper Survey is
directly contradicted by a survey performed by Defendant's expert, Dr. Deborah Jay.'^
(See Dkt. 83). Dr. Jay's survey appears to be methodologically sound and found no
likelihood of confusion. (Id.).
Plaintiff also does not have probative anecdotal evidence of actual confusion.
Plaintiff points to an e-mail from Dr. Varshneya's friend Dr. Charles Kurkjan in which Dr.
Kurkjan asked if Plaintiff was supplying glass to Defendant. (See Dkt. 96-11). However,
the actual confusion inquiry "focuses on the consuming public as a whole, not interested
parties already familiar with the plaintiffs mark through personal connections."
Gameologist Grp, 838 F. Supp. 2d at 162.
In sum. Plaintiff has produced only weak evidence of actual confusion, which is
contradicted by Defendant's strong evidence to the contrary. The Court is cognizant that
it must consider this evidence in the light most favorable to Plaintiff and, "[o]n balance,
then, and in an abundance of caution," finds that "this factor is neutral and weighs in favor
of neither party." Codename,2018 WL 3407709, at * 11.
6.
Bad Faith
The sixth Polaroid factor is whether the junior user acted in bad faith or was
otherwise reprehensible in adopting the mark. The Court has already concluded, in
connection with its consideration of Defendant's fair use defense, that no reasonable
Dr. Jay is the principal and founder of Jay Survey Strategics LLC and previously
served for 23 years as president and CEO ofField Research Corporation. (Dkt. 83 at ^ 1).
Dr. Jay has designed and directed over 800 surveys. (Id.). Plaintiff has not challenged the
admissibility of Dr. Jay's survey and associated expert opinions.
-51 -
factfinder could find that Defendant acted in bad faith in adopting the term "lon-X." That
conclusion is even stronger here, where it is Plaintiff that would bear the burden of
demonstrating bad faith before ajury. Accordingly,this Polaroid factor favors Defendant.
7.
Quality of the Junior User's Product
The next Polaroid factor is the quality of the junior user's product. "The analysis
of the quality of a defendant'[s] product is primarily concerned with whether the senior
user's reputation could be jeopardized by virtue of the fact that the junior user's product is
ofinferior quality." Codename,2018 WL 3407709, at *12(quotation omitted). In support
of its motion for summary judgment. Defendant presented substantial evidence that the
Apple Watch device is known to be of high quality. {See Dkt. 78 at 29). Plaintiffs
opposition papers fail to address this evidence at all or to discuss this Polaroid factor. The
Court finds that this Polaroid factor strongly favors Defendant.
8.
Sophistication of the Relevant Consumer Group
The final Polaroid factor is the sophistication of the relevant consumer group.
Defendant has shown that the relevant consumer group is highly sophisticated. {See Dkt.
78 at 28). As with the quality ofDefendant's product. Plaintiffs opposition papers do not
address the sophistication of the parties' respective clienteles at all. Moreover, Plaintiffs
counsel conceded at oral argument that Plaintiff was not contesting that this factor weighed
against a likelihood of confusion. The Court finds that this final Polaroid factor also
strongly favors Defendant.
Based on the foregoing analysis, "[wjeighing the Polaroid factors, the Court
concludes that the ultimate question, whether a consumer is likely to be confused, must be
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answered in the negative" by a reasonable trier of fact. Codename, 2018 WL 3407709, at
* 12. While Plaintiffs lONEX® mark is registered and incontestable and therefore entitled
to protection, the lONEX® mark is weak both commercially and conceptually. Defendant
and Plaintiff operate in completely different markets, and there is no reasonable prospect
that Plaintiff will enter Defendant's market or otherwise bridge the gap. Defendant's goods
are well-known for their high quality and the potential consumer market for both
Defendant's product and Plaintiffs services is sophisticated and capable of discerning that
the Apple Watch device is not associated with Plaintiff. Accordingly, the Court finds no
genuine issues of material fact as to likelihood of confusion and concludes that Defendant
is also entitled to summary judgment on this basis.
CONCLUSION
For the foregoing reasons, the Court grants in part and denies in part Defendant's
motion in limine related to James T. Berger(Dkt. 87), denies Defendant's motion in limine
related to Rhonda Harper (Dkt. 88), grants in part and denies in part Defendant's motion
in limine related to Scott D. Woldow (Dkt. 89), denies as moot Plaintiffs motion in limine
(Dkt. 76), and grants Defendant's motion for summary judgment(Dkt. 77). The Clerk of
Court is directed to enter judgment in favor of Defendant and to close the case.
SO ORDERED.
EEIZ^ETH A. WOEFORD
UriitSd States District Judge
Dated: June 19, 2019
Rochester, New York
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