In a trademark infringement litigation or proceeding before the Trademark Trial and Appeal Board (the Board), consumer surveys are often regarded as the most direct and persuasive evidence of the likelihood of confusion. While courts acknowledge that consumer surveys are expensive, some courts are presuming such evidence would be unfavorable in cases involving parties that could afford to conduct a survey, yet chose not to present such evidence. On the other hand, the Federal Circuit has made clear that surveys are not necessary in an administrative proceeding, however, “there may be cases in which the evidence of likelihood of confusion is not strong enough to support a finding to that effect in the absence of survey evidence.” For these reasons, litigants often use surveys to prove their case in both contexts.
How much confusion is enough? Professor McCarthy notes in McCarthy’s on Trademarks and Unfair Competition that, “While survey percentages demonstrating confusion levels over 50% are almost always viewed by courts as persuasive evidence of likely confusion, figures in the range of 25% to 50% have been relied upon as support for a finding of a likelihood of confusion” and that at least one court has observed that “even 11% of a national market of millions of consumers constitutes a very large number of confused consumers.”
This article examines recent cases before the Board involving surveys. The Board prefers the Ever-Ready survey format in which the stimuli presented to the respondent is only the applied-for mark and the respondent is asked, among other things, who makes the product. Responses that identify the opposer or its products are counted as a positive response. A control group – i.e. showing a mark that is not subject to the opposition – is also used to account for survey “noise” or guessing. The percentage of respondents who guess the brand owner in the control group are deducted from the results in the test results yielding the final “net confusion” result. Trademark surveys are conducted either through mall intercept, telephone or the Internet.
Likelihood of confusion
The past few years have seen some high survey results in oppositions. For example, in Pepsico, Inc.. v. Jay Prinicci, the mall intercept survey yielded net confusion of 48.7 percent between the opposer’s MOUNTAIN DEW mark and the applied-for MTN DEW mark. The Board held that the survey was admissible and credible and weighed in favor of finding a likelihood of confusion.
Surveys are also used to overcome a refusal based on mere descriptiveness or genericness by showing that the applied-for mark has acquired distinctiveness. For example, in In re Country Music Association, Inc., the examiner refused the mark COUNTRY MUSIC ASSOCIATION as generic. Part of the record on appeal was a telephone survey consisting of a universe of country western music listeners. After screening to determine that the respondents could distinguish between brand names and common generic terms, 85 percent of the respondents categorized COUNTRY MUSIC ASSOCIATION as a brand name. The Federal Circuit reversed relying, in part, on the survey evidence stating that it showed that consumers associate the mark with “the product or services of only one company.”
Brand owners rely upon surveys to establish fame for dilution purposes. In Facebook, Inc. v. Think Computer Corp., the FACEBOOK mark was identified by approximately 73.65 percent of the general public in response to the unprompted or unaided recall questions (i.e., ‘...would you please tell me the names of social networking sites that you can think of?’ and ‘What other names of social networking sites, if any, can you think of?’).” The FACEBOOK mark was the most recognized social networking site. The survey further determined that in response to the unaided and aided questions combined, approximately 97.29 percent of the general public reported recognition of the FACEBOOK mark for a social networking site. Even deducting the survey “noise” reflective in the control, the end results were 94.58 percent consumer recognition of the FACEBOOK mark. In view of the foregoing evidence, the Board concluded that the FACEBOOK mark is famous.
In light of the persuasiveness of positive survey results in all types of Board proceedings, conducting a consumer survey should be considered by brand owners. While presenting such evidence is expensive, it can often be a critical factor in the Board’s assessment of the case.