Trademark confusion surveys bring together both of my passions – research & law. In the world of Intellectual Property, many companies are now ensuring that their trademarks are not confused with competitors.
In recent years, the courts in the United States, Canada and the United Kingdom have seen a drastic increase in the number of cases where surveys have been accepted in trademark infringement and passing off cases. The use of research in trademark litigation has become prevalent even in the Caribbean. Two years ago, Balcostics Limited concluded a confusion survey where respondents provided answers to different questions relating to their perception as to whether they believed two marks (shown on the questionnaire) were owned by the same or different companies. Respondents were then asked to explain why they made a particular selection and to state the name of the company (ies) they thought owned both marks and or each mark.
Ensuring that the survey is conducted in the perfect environment is key when conducting a survey for use in litigation proceedings because trademark surveys often determine the outcome of trademark litigation. Courts look to specific indicia of reliability regarding how a trademark survey was conducted and performed. These indicia include:
- Whether a sufficient number of individuals were surveyed;
- Whether specific controls were created to measure if any portion of the survey was confusing in itself;
- Whether the questions were leading or followed a proper format;
- and if a specific percentage of survey respondents were called to verify the accuracy of their answers. A substantial amount of case law exists which provides insight into how to conduct and prepare a trademark survey that will be admissible in court.
5 Key Points in Conducting a Confusion Survey:
1.Ensure that the proper universe is selected. You have to ensure that the types of consumers questioned in the survey are from the proper universe. Identification and selection of a proper universe are recognized as critical elements in a survey. It makes no sense to interview the wrong persons as your results will be irrelevant.
2. Persons conducting the survey are recognized experts. The careful hiring of a trademark expert is one of the most important decisions made during a trademark dispute. Well… *cough* that is where Balcostics Research comes in.
3. The sample design, questionnaire and interviewing should be in accordance with generally accepted standards of research procedure and statistics.
4. Sample design and interviews are conducted independently of the Attorneys in the matter.
5. Interviewers trained in the field have no knowledge of the litigation or purposes for which survey is being used. This point was discussed in the case of TOYS “R” US, INC., Plaintiff,v.CANARSIE KIDDIE SHOP, INC.,
Written by: Abi-Gaye White-Thomas (Mrs.)
Attorney-at-Law and Researcher
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