Academic journal article Santa Clara High Technology Law Journal

Trademark Survey Evidence: Review of Current Trends in the Ninth Circuit

Academic journal article Santa Clara High Technology Law Journal

Trademark Survey Evidence: Review of Current Trends in the Ninth Circuit

Article excerpt


In a field often vacant of any direct evidence to support claims or defenses, survey evidence represents an important consideration for trademark counsel. With evidence of actual confusion or dilution scant in trademark disputes, the evidence afforded by survey evidence is often invaluable. Surveys represent the most scientific means of measuring relevant consumers' subjective mental associations by attempting to recreate the potential purchasing environment in which a purported trademark or trade dress is found within a given market. (1) Selection of a survey expert, preparation of survey protocol, and implementation of the actual survey, often determine whether a party will succeed or fail at the summary judgment stage of a dispute. (2)

In the Ninth Circuit, "surveys in trademark cases may be considered so long as they are "conducted according to accepted principles." (3) Although historically considered hearsay, survey evidence is now admissible under Federal Rule of Evidence 703 (4) and is specifically discussed in the Advisory Committee notes. (5) According to the rule, the offeror of a survey has the burden of proof to show that the survey was conducted accordingly to acceptable survey principles. (6) More specifically, the offer must show:

(i) the proper universe was examined;

(ii) a representative sample was drawn from that universe;

(ii) the mode of questioning the interviewees was proper;

(iv) the persons conducting the survey are recognized experts;

(v) the data gathered was accurately reported;

(vi) the sample design was correct;

(vi) the actual questionnaire given to interviewees was not leading; and

(viii) the overall interviews were performed in accordance with objective statistics in the applicable field. (7)

Apart from these factors, the survey itself must "replicate[] the real world setting" in which the actual purchasing decision for the good or service occurs. (8)

Currently, three types of environments exist for conducting trademark surveys: the Mall-Intercept Survey, the Telephone Survey, and the Central Location Survey. In addition, the concept of Internet-based surveys has been suggested, (9) with some courts outside of the Ninth Circuit beginning to accept this format. (10) Apart from Internet-based surveys, currently accepted surveys require tremendous financial and logistical resources. For example, current survey experts in California charge between $450 to $600 per hour and require support staff billing at rates ranging between $200-300 in orchestrating the actual surveys. With the addition of trademark counsel assisting in preparation of survey protocol, and the need for multiple survey sites throughout a geographic area, it is little wonder why the most basic of surveys cost in the hundreds of thousands of dollars.

Despite their costs, survey evidence has become a mainstay in trademark disputes within the Ninth Circuit. Surveys have been regularly used within the Ninth Circuit to test a variety of issues inherent in trademark law including:

(1) whether a mark or trade dress has achieved secondary meaning, (11)

(2) whether a "famous" mark has been diluted by a dissimilar product or service, (12)

(3) whether a mark is generic or identifies a specific source for a good or service, (13) and

(4) whether use of a mark creates consumer confusion. (14)

Surveys have been used in jurisdictions outside the Ninth Circuit to test whether a purported trade dress element is functional. (15) Thus, survey evidence has been employed in almost every aspect of trademark law.

The Ninth Circuit's uniqueness with regard to trademark surveys is based largely upon its almost "carte blanche" refusal to exclude survey evidence based upon technical deficiencies. Unlike other circuits, the Ninth Circuit has pronounced that a survey's "[t]echnical unreliability goes to the weight accorded the survey, not its admissibility. …

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