Avoiding Consumer Survey Pitfalls at the TTAB.pptx

Webinar presentation for PLI on survey evidence before the TTAB

1. Avoiding Consumer Survey Pitfalls at the TTAB J. Michael Keyes Consumer Survey Expert & IP Litigation Partner September 5, 2024 1

2. My Background 2 IP Litigation Partner, Dorsey in Seattle Master’s Degree in Survey Research & Data Analysis Lead Dorsey’s Consumer Insights Group

3. What We Will Cover Today Surveys By The Numbers Process, Timing, and Costs Ten Pitfalls to Avoid When Submitting Survey Evidence to the TTAB 3

4. Surveys by the Numbers 4

5. Survey Research in Federal Courts (and on the Rise!) 5 August 2004 - July 2014 = 636 decisions August 2014 - July 2024 = 855 decisions

6. Survey Research at the TTAB (and also on the Rise!) 6 August 2004 - July 2014 = 26 decisions August 2014 - July 2024 = 53 decisions

7. Survey Research and the Supreme Court United States PTO v. Booking.com B.V. , 140 S. Ct. 2298, 2307 n.6 (2020). 7

8. Survey Research and the Supreme Court Jack Daniel's Props. v. VIP Prods., 143 S. Ct. 1578 (June 8, 2023) 8

9. USPTO Surveys: Process, Timing and Costs, and a Word on Controls 9

10. 10 “Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. *** The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein .” TMEP Addresses Use of Survey Evidence TMEP 1212.06(d)(emphasis supplied))

11. Overview of How the Process Works (Ideally)… 11 Trademark counsel identifies the issue calling for research Survey expert retained to design an appropriate questionnaire Counsel and expert identify the appropriate survey population Survey launched Survey responses analyzed by expert and written report issued Examiner or TTAB find survey results persuasive Everybody’s happy!

12. Timing and Costs 12 Give yourself ideally 60 days from start to finish Will take time to address a number of items: Typically there’s “back and forth” on survey design Data collection Review data and write report Costs driven by data collection, expert’s time

13. Best Practices and Standards for Conducting Survey Research 13

14. 14 Dr. Shari Diamond Reference Guide on Survey Research

15. 15

16. 16

17. Pitfall # 10: Beware When Offering Internal Marketing Studies 17

18. Chanel, Inc. v. Makarczyk  , 2014 TTAB LEXIS 217, *28-29, 110 U.S.P.Q.2D (BNA) 2013, 2022 (Trademark Trial & App. Bd. May 27, 2014) 18 The Board Will Consider Pre-Litigation Internal Marketing Studies “The  consumer  recognition  survey   evidence  introduced by opposer is also particularly persuasive. Over the past six years, for internal business purposes, opposer has commissioned multiple consumer surveys demonstrating that its mark CHANEL is extremely well known and enjoys an unusually high degree of unaided and aided recognition. The fact that these surveys were commissioned prior to the instant litigation and were used in the ordinary course of business increases their probative value.”

19. Maker's Mark Distillery, Inc. v. Bowmaker's Whiskey Co. , 2021 TTAB LEXIS 445 (Trademark Trial & App. Bd. October 29, 2021) 19 Applicant Opposer Use of Internal Marketing Study

20. Maker's Mark Distillery, Inc. v. Bowmaker's Whiskey Co. , 2021 TTAB LEXIS 445 (Trademark Trial & App. Bd. October 29, 2021) 20 To show commercial strength, Maker’s Mark submitted annual brand awareness study conducted by marketing firm in ordinary course of business Report showed 69% of respondents age 22-59 were “aware” of Maker’s Mark Use of Internal Marketing Study

21. Maker's Mark Distillery, Inc. v. Bowmaker's Whiskey Co. , 2021 TTAB LEXIS 445 (Trademark Trial & App. Bd. October 29, 2021) 21 TTAB gave 69% finding little weight because methodology was unexplained: What questions were asked? Were they clear and non-biased? What were respondents shown? The word mark or the red wax trade dress (not at issue) Use of Internal Marketing Study

22. 22 Internal marketing studies conducted in the normal course can be offered to show strength of the mark. But Remember: “The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein.” Important Takeaway TMEP 1212.06(d)(emphasis supplied))

23. 23 Internal Marketing Study or Expert Survey? It Matters Luxco , Inc. v. Everwild Spirits , LLC, 2023 TTAB LEXIS 105 (Trademark Trial & App. Bd. March 24, 2023) Opposer Applicant

24. 24 Luxco , Inc. v. Everwild Spirits , LLC, 2023 TTAB LEXIS 105 (Trademark Trial & App. Bd. March 24, 2023) Applicant Applicant sought to introduce “brand awareness” survey conducted for that case Did not disclose survey as part of its expert witness disclosures but instead as part of its disclosures during testimonial period Internal Marketing Study or Expert Survey? It Matters

25. 25 TTAB Refused to Consider Survey Luxco , Inc. v. Everwild Spirits , LLC, 2023 TTAB LEXIS 105 (Trademark Trial & App. Bd. March 24, 2023) (internal citations omitted) “A survey offered in litigation before the Board is not a freestanding piece of evidence, but is instead offered as the basis for expert opinion testimony.  On the other hand, a survey need not always be introduced as an "expert survey," or by an expert witness, in order to be admissible; the Board has held that brand awareness studies commissioned in the ordinary course of business are admissible as evidence of consumer recognition of marks.”

26. Pitfall # 9: Be Careful When Using of Third-Party Marketing Studies 26

27. Starbucks Corp. v. Mts. & Mermaids, LLC , 2023 TTAB LEXIS 187 (Trademark Trial & App. Bd. May 8, 2023) 27 Opposer Applicant External Brand Rankings Instead of Consumer Survey Applied for “SIREN’s BREW” word mark for coffee and shirts Starbuck’s Two-Tailed “Siren”

28. Starbucks Corp. v. Mts. & Mermaids, LLC , 2023 TTAB LEXIS 187 (Trademark Trial & App. Bd. May 8, 2023) 28 Starbucks Alleged LOC and Blurring of Famous Siren Designs

29. Starbucks Corp. v. Mts. & Mermaids, LLC , 2023 TTAB LEXIS 187 (Trademark Trial & App. Bd. May 8, 2023) 29 To Support Fame, Starbucks Relied on (Among other things) Third Party “Brand Value” Rankings #24 #31 #45

30. Starbucks Corp. v. Mts. & Mermaids, LLC , 2023 TTAB LEXIS 187, *74 (Trademark Trial & App. Bd. May 8, 2023) 30 TTAB found brand rankings had “lack of clarity” that they pertained to the Siren design at issue (as opposed to the STARBUCKS standalone word mark) All three were from 2019 Dilution claim dismissed TTAB Found Rankings Not Indicative of “Fame”

31. Nike, Inc. v. Lorenzo, 2024 TTAB LEXIS 201, *14 (Trademark Trial & App. Bd. May 21, 2024) 31 Opposer Applicant Third Party “Just Do It” Recognition Survey For Clothing and Apparel Products JUST DON’T DO IT GET IT DONE

32. Nike, Inc. v. Lorenzo, 2024 TTAB LEXIS 201, *14 (Trademark Trial & App. Bd. May 21, 2024) 32 Third Party “Fame” Survey A  survey  offered in litigation before the Board is not a freestanding piece of evidence, but instead is offered as the basis for expert opinion testimony.  The  survey  made of record by Opposer is of dubious probative value because Opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted and the significance of the study.

33. Important Takeaways On Third Party Market Research 33 If relying on brand ranking or similar studies developed by third parties, make sure that such rankings can be tied to the marks at issue in the proceeding. Also, consider “when” those rankings occurred. For dilution, need to show “fame” before applicant started using the mark.

34. Important Takeaways On Third Party Market Research 34 In all cases, make sure you have a competent expert that either: (a) conducted the survey and can explain what the results mean; or (b) can “vouch” for the survey methodology and the results.

35. Pitfall # 8 : Be Mindful of Using an “Industry Expert” instead of Survey Expert 35

36. Audemars Piguet Holding, S.A. v. Haas Outdoors, Inc ., 2023 TTAB LEXIS 265 (Trademark Trial & App. Bd. July 14, 2023) 36 “Industry Expert” is Not a Proxy for Consumer Survey Opposer Applicant

37. 37 “For example, … you have hundreds of thousands of people having Ferrari posters in their home, doesn't mean they’re going to buy one tomorrow. In general, a lot of people are interested in products that they cannot afford. It’s aspirational. Like, they believe that one day they will buy them and have them and motivate them to work and, you know, and produce things.” – Declaration of Audemars Piguet’s industry expert Audemars Piguet Holding, S.A. v. Haas Outdoors, Inc ., 2023 TTAB LEXIS 265 (Trademark Trial & App. Bd. July 14, 2023) “Industry Expert” is Not a Proxy for Consumer Survey

38. 38 Instead of consumer survey, Audemars Piguet’s industry experts testified ROYAL OAK’s fame in luxury watch market extends to general population TTAB gave testimony little weight because it was “anecdotal and not based on real data” and “neither witness has experience with brand recognition surveys” Audemars Piguet Holding, S.A. v. Haas Outdoors, Inc ., 2023 TTAB LEXIS 265 (Trademark Trial & App. Bd. July 14, 2023) Royal Oak watch ad in Luxury Exotics , Opp. Ex. 108 “Industry Expert” is Not a Proxy for Consumer Survey

39. 39 Important Takeaways Industry experts can provide useful testimony to show strength of the mark within a particular industry. But , resist the temptation to have an industry expert opine more broadly on how people outside of that industry view the mark.

40. Pitfall # 7: Use of Non-Expert to Develop Survey Evidence 40

41. Survey Should Be Conducted By an Expert ! In re PT Medisafe Techs ., 2023 TTAB LEXIS 61 (Trademark Trial & App. Bd. February 15, 2023) 41 Applicant Application Drawing for Green Color Mark (Medical Examination Gloves)

42. Medisafe’s Improper Survey Stimulus In re PT Medisafe Techs ., 2023 TTAB LEXIS 61 (Trademark Trial & App. Bd. February 15, 2023) 42 Applied-for Mark Survey Stimulus

43. “Applicant’s So Called Survey Evidence” In re PT Medisafe Techs ., 2023 TTAB LEXIS 61 (Trademark Trial & App. Bd. February 15, 2023) 43 Consumer survey conducted by counsel contained other problems: Counsel had no survey credentials Surveyed improper universe Used leading/improper questions Result : TTAB gave survey “no weight”

44. If I’m Rebutting a Survey, Do I Need an Expert? “While a party is not required to employ an expert to be able to direct criticisms to an opposing party’s survey, having a qualified expert confirm that the criticisms reflect the relevant standards employed in the survey field would lend additional weight to such criticisms .” 44 McDonald’s Corp. v. McSweet , LLC , 112 USPQ2d 1268, 1298 n.58 (TTAB 2014)(emphasis added).

45. How Many Rebuttals Does the TTAB Allow? 45 MONSTER LITE Monster Energy Company v. Coulter Ventures , Opp. No. 91233515, 119 TTABVUE (August 8, 2023) Opposer Applicant

46. How Many Rebuttals Does the TTAB Allow? Opening Survey Report Rebuttal Survey Report “Sur” Rebuttal “Sur Sur ” Rebuttal 46 MONSTER LITE Time Line MONSTER LITE Monster Energy Company v. Coulter Ventures , Opp. No. 91233515, 119 TTABVUE (August 8, 2023)

47. Pitfall # 6: Selecting the Wrong “Confusion” Survey Method 47

48. Likelihood of Confusion Surveys 48

49. Two Methods: Squirt and Eveready 49

50. The Issue in Squirt Co. v. Seven-Up Whether “Quirst” infringed the “Squirt” trademark? 50

51. Squirt Survey Format SquirtCo v. Seven-Up Co. , 628 F.2d 1086 (8th Cir. 1980) In the original “Squirt” design, Respondents listened to radio commercials for each of these products (no visual stimuli) 51

52. Squirt Survey Format SquirtCo, 628 F.2d at 1089 n. 4 Then asked: “Do you think SQUIRT and QUIRST are put out by the same company or by different companies?” (34% thought “same,” 55% thought “different”) 52

53. Squirt Survey Format Plaintiff’s mark and the offending mark are shown together or in close succession to survey respondents 53

54. Squirt Survey Format Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160, *81 (Trademark Trial & App. Bd. April 20, 2021). 54 Squirt survey design is generally appropriate when: Parties goods and services appear together in marketplace, or Going to encounter one soon after the other

55. Eveready Survey Format “The Eveready format is especially useful when the senior mark is readily recognized by buyers in the relevant universe.” Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160, at *81-83 (Trademark Trial & App. Bd. April 20, 2021). 55 “The Board has accepted this type of survey, and it has been called the “model” or “gold standard” in likelihood of confusion cases.” North Lock LLC v. C.V. Brewing Co. , 2016 TTAB LEXIS 468, *36 (Trademark Trial & App. Bd. September 16, 2016)

56. Eveready Survey Format Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976) Plaintiff Union Carbide adopted “Eveready” for batteries dating back to 1890s 56

57. Eveready Survey Format Defendant began using “Ever-Ready” on lamps and mini bulb blister packages in the 1970s Defendant's Accused Use of “Ever-Ready” 57

58. Eveready Survey Format Union Carbide Corp., 531 F.2d at 385 n. 11 Respondents were shown the blister pack and then asked: “Who do you think puts out these mini bulbs?” “Please name any other products put out by the same concern which you think puts out these mini-blubs? 53% said “batteries” Defendant's Accused Use of “Ever-Ready” 58

59. Unlike Squirt , Eveready Surveys Do Not Show the Senior User’s Mark 59

60. Which Format Should I Use at the TTAB? 60

61. Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160 (Trademark Trial & App. Bd. April 20, 2021) 61 Example of Where TTAB Found Squirt Design Was Improper Investment management; Financial services Multiple registrations for services such as “Health insurance consultation” “Pharmaceutical preparations” Applicant Opposer Applicant sought registration of the above design and word mark “Gilead Capital”

62. Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160 (Trademark Trial & App. Bd. April 20, 2021) 62 Respondents first shown this card containing the applied-for word mark “GILEAD CAPITAL” and description of services Opposer Offered Squirt -Style Survey to Show Confusion

63. Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160 (Trademark Trial & App. Bd. April 20, 2021) 63 “Do you think this company is the same company or a different company than the one whose name and description you were shown first, or do you not know?” Next, Respondents Shown Four Different Names and Descriptions GILEAD SCIENCES QUEST DIAGNOSTICS BOSTON SCIENTIFIC GENESIS HEALTHCARE

64. Gilead Scis ., Inc. v. Gilead Capital LP , 2021 TTAB LEXIS 160 (Trademark Trial & App. Bd. April 20, 2021) 64 Survey Results 38% of survey respondents believed there was a connection or affiliation between “GILEAD SCIENCES” and “GILEAD CAPITAL” After adjusting for “noise” the net confusion rate was approximately 15%

65. 65 TTAB Held Survey Lacked Marketplace Reality Why? Parties’ Marks Not Likely Encountered Together in the Marketplace

66. 66 Squirt is appropriate if parties’ marks appear together or in close succession in the marketplace. If they do not consider if Eveready may fit better. Sometimes neither may be appropriate. Important Takeaway

67. Pitfall # 5: Surveying the Wrong People 67

68. JJI Int'l, Inc. v. Sparkle Life LLC , 2014 TTAB LEXIS 417 (Trademark Trial & App. Bd. September 25, 2014) 68 Identifying the Survey Population Opposer Applicant Sought registration for “SPARKLE LIFE” word mark for jewelry Important: No limitations on channels of trade, etc. in the application

69. JJI Int'l, Inc. v. Sparkle Life LLC , 2014 TTAB LEXIS 417, *17 (Trademark Trial & App. Bd. September 25, 2014) 69 Squirt Survey: Opposer’s Mark First Question 1 : “The image below shows a piece of jewelry that you might see in a store or online. Please look at the image as if you were considering shopping for this type of jewelry.” Opposer’s Mark

70. JJI Int'l, Inc. v. Sparkle Life LLC , 2014 TTAB LEXIS 417, *17 (Trademark Trial & App. Bd. September 25, 2014) 70 Squirt Survey: Applicant’s Mark Next Question 2 : “The image below shows a different piece of jewelry. Please look at the image as if you were considering shopping for this type of jewelry.” Applicant’s Mark

71. JJI Int'l, Inc. v. Sparkle Life LLC , 2014 TTAB LEXIS 417, *17 (Trademark Trial & App. Bd. September 25, 2014) 71 Squirt Survey: Then the Critical Question Question 3 : “Do you think that the jewelry [] is put out by a  different  company or the  same  company that puts out the jewelry in the image you saw before, or are you  unsure ?” Applicant’s Mark Net Confusion rate of 16.5%

72. JJI Int'l, Inc. v. Sparkle Life LLC , 2014 TTAB LEXIS 417, * 22 (Trademark Trial & App. Bd. September 25, 2014) 72 TTAB Found Survey Population “Too Narrow” “…there are no restrictions to the channels of trade, classes of consumers, or price points in either description of goods. Nevertheless, [the expert] limited the universe of respondents to people interested in purchasing (or have purchased) ‘women's jewelry’ in the price-range of $ 25-249.”

73. Important Takeaway 73 In identifying appropriate survey population, it may be important to consider whether there are any restrictions in the application related to the types of consumers or channels of trade.

74. 74 Surveying Too Broad Population Opposer Applicant Luxco , Inc. v. Consejo Regulador del Tequila, A.C ., 121 USPQ2d 1477, 1479 (TTAB 2017)

75. 75 Opposer submitted survey to show TEQUILA was generic, but survey universe was too broad; included hard liquor purchasers rather than purchasers of Tequila specifically No evidence that all hard liquor purchasers purchase tequila Luxco , Inc. v. Consejo Regulador del Tequila, A.C ., 121 USPQ2d 1477, 1479 (TTAB 2017) Surveying Too Broad Population

76. Documenting the Decision to Use Selected Survey Method 76 Elevate Fed. Credit Union v. Elevations Credit Union , 2022 U.S. Dist. LEXIS 47346 (D. Utah Mar. 16, 2022)

77. Documenting the Decision to Use Selected Survey Method Expert “conducted numerous internet searches” and found “the parties’ marks are reasonably likely to be found in close physical proximity in internet searches” Decided Squirt was appropriate 77 Elevate Fed. Credit Union v. Elevations Credit Union , 2022 U.S. Dist. LEXIS 47346 (D. Utah Mar. 16, 2022)

78. Respondents Instructed to Imagine They Are Performing an Internet Search… 78

79. And Then Shown the Results of an Actual Search…. 79 Elevate Fed. Credit Union v. Elevations Credit Union , 2022 U.S. Dist. LEXIS 47346 (D. Utah Mar. 16, 2022) Expert concluded there was a net confusion rate of 30% between “elevations” and “elevate”

80. Trial Court Excluded the Survey Under Fed. R. Civ. P. 37 “ [The expert] based this structure on the results of a real search. However, this is problematic considering that [the expert] only disclosed one of his internet search engine results (the Bing search result) to show that proximity between the parties' marks actually exists in the internet marketplace. Thus, [the expert’s] nondisclosure of the rest of his internet search results makes it practically impossible to determine if he created an artificial marketplace in his survey.” 80 Elevate Fed. Credit Union v. Elevations Credit Union , 2022 U.S. Dist. LEXIS 47346 (D. Utah Mar. 16, 2022) Tenth Circuit upheld trial court’s decision

81. Important Takeaways If survey expert used internet searches to justify the decision to use (or reject) a certain survey method, consider whether those search terms (and results) need to be retained and/or produced under Rule 26. Also, consider same for browsers used, when, where and from what device. 81

82. Pitfall # 4: Selecting the Wrong Stimulus 82

83. Secondary Meaning Surveys: Beware of Your Venue! Drawing of Claimed Trade Dress, Ser. No. 86/634,819 TBL Licensing, LLC v. Vidal , 2022 U.S. Dist. Lexis 222097 (E.D. Va. Dec. 8, 2022) 83 Applicant

84. Secondary Meaning Surveys: Beware of Your Venue! Survey Used Photograph of Timberland Boot Vidal , 2022 U.S. Dist. LEXIS 222097 *expert used different photo 84 Applicant

85. Survey Evidence Failed to Establish Secondary Meaning Survey Used Photograph of Timberland Boot Vidal , 2022 U.S. Dist. Lexis, 222097, at * 24 (emphasis added) “Photographs might be just fine in a survey in an infringement case, where what's going on in the marketplace controls, but not in a case where the goal is to obtain registration of a mark that, by regulation, is required to be in a drawing.” 85

86. Make Sure Survey Aligns with Burden of Proof 86 In re Post Foods, LLC , 2024 TTAB LEXIS 1 (Trademark Trial & App. Bd. January 4, 2024). Post sought registration of the color mark

87. Make Sure Survey Aligns with Burden of Proof 87 In re Post Foods, LLC , 2024 TTAB LEXIS 1 (Trademark Trial & App. Bd. January 4, 2024). Post sought registration of the color mark “The mark consists of the colors of yellow, green, light blue, purple, orange, red and pink applied to the entire surface of crisp cereal pieces. The broken lines depicting the shape of the crisp cereal pieces indicate placement of the mark on the crisp cereal pieces and are not part of the mark.” (Emphasis added).

88. Survey Showed Respondents the Actual Fruity Pebbles 88 In re Post Foods, LLC , 2024 TTAB LEXIS 1 (Trademark Trial & App. Bd. January 4, 2024). Applicant tried to argue survey responses show the color of Fruity Pebbles has acquired secondary meaning TTAB rejected survey because it does not "provide any evidence that the claimed colors have acquired distinctiveness for the identified goods, that is, all breakfast cereals, including other non-crisp rice cereals in other shapes .“ (Emphasis supplied).

89. Important Takeaway Survey stimuli may differ dramatically with respect to both secondary meaning and likelihood of confusion studies when you’re before the TTAB as opposed to federal court. Make sure survey stimuli “align” with what you are needing to prove at the TTAB. 89

90. Pitfall # 3: Survey Doesn’t Show Robust Results 90

91. Campari Am. LLC v. Skyyguard , Corp., 2023 TTAB LEXIS 369 (Trademark Trial & App. Bd. September 11, 2023) 91 Applicant Opposer Survey Threshold to Show Fame for Dilution v. Secondary Meaning

92. Campari Am. LLC v. Skyyguard , Corp ., 2023 TTAB LEXIS 369 (Trademark Trial & App. Bd. September 11, 2023) 92 Consumer recognition to show strength of a mark for likelihood of confusion and showing fame for dilution are distinct concepts “Generally, a threshold response in the range of 75% of the general consuming public is necessary to prove fame for purposes of dilution.” Skyy Vodka brand recognition survey did not meet threshold for fame Threshold to Show Fame for Dilution

93. Pitfall # 2 : Be Careful When Offering Genericism Studies 93

94. 94 The “Teflon” Method “ Eflon ” For zippers E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc ., 393 F. Supp. 502 (E.D.N.Y. 1975)

95. 95 The “Teflon” Method YKK started manufacturing its EFLON zipper DuPont sues claiming infringement of TEFLON YKK defends claiming “TEFLON” has become “generic”

96. 96 The Teflon “Mini Primer” DuPont presented survey research to show “Teflon” was not a generic term for “non-stick coating” Researcher explained the difference between a “brand name” and a “generic term” using Chevrolet as an example.

97. 97 The Teflon “Mini Trademark Test” “A substantial majority of the public continues to believe that TEFLON is a brand name.” E. I. DuPont de Nemours & Co. , 393 F. Supp. at 527 Results of the Teflon Test (in percentages) Name Brand Common Don’t Know STP 90 5 5 THERMOS 51 46 3 MARGARINE 9 91 1 TEFLON 68 31 2 JELLO 75 25 1 REFRIGERATOR 6 94 - ASPIRIN 13 86 - COKE 76 24 -

98. Teflon in Practice United States PTO v. Booking.com B.V. , 140 S. Ct. 2298, 2307 n.6 (2020) 98 Applicant On appeal of USPTO refusal to register BOOKING.COM, affirmed by TTAB, Booking submitted Teflon survey to district court showing 74.8% of respondents recognized term as brand while 23.8% believed it was generic name Compared to 33% belief that “Washingmachine.com, which does not correspond to any company, was a brand and 60.8% thought it was generic

99. Teflon in Practice United States PTO v. Booking.com B.V. , 140 S. Ct. 2298, 2307 n.6 (2020) 99 Applicant District court found survey methodologically sound; held that although “booking” was generic for services identified, BOOKING.COM as a whole was nevertheless descriptive mark Fourth Circuit affirmed district court’s reliance on survey and finding that it was methodologically sound and that mark not generic SCOTUS affirmed BOOKING.COM not generic

100. 100 In re Benjamin & Bros., LLC, 2023 TTAB LEXIS 419 (Trademark Trial & App. Bd. September 26, 2023)

101. Teflon in Practice In re Benjamin & Bros., LLC, 2023 TTAB LEXIS 419 (Trademark Trial & App. Bd. September 26, 2023) 101 Applicant Examiner refused finding reservations.com generic. Applicant produced survey evidence claiming that “60%” of respondents believe it was a brand name as opposed to a common name.

102. 102

103. 103 Missing data

104. 104 Missing data Only used 2 “.com” examples

105. 105 Importance of the Mini-Test at the TTAB In re Sensory Path Inc ., 2023 TTAB LEXIS 201 (Trademark Trial & App. Bd. May 31, 2023) Conducted Teflon survey to assess distinctiveness of mark, but did not first conduct “mini test.” Without mini test, TTAB said “we cannot determine whether participants even perceived the intended nature  or purpose of the applied-for mark” and gave survey no weight Applicant

106. Important Takeaway In re Benjamin & Bros., LLC, 2023 TTAB LEXIS 419 (Trademark Trial & App. Bd. September 26, 2023) 106 Applicant Be mindful of important missing data Watch the “mini-test” to make sure it is appropriate under the circumstances A mini-test must always be given to survey respondents

107. Pitfall # 1 : Failure to Function Refusal? Think Survey Evidence… 107

108. 108 Survey Methodologies to Overcome Failure to Function Refusals in the U.S. Patent and Trademark Office, Charlie Henn, 114 TMR 560 (2024)

109. #Law Survey 109 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022)

110. Survey Gave Survey Respondents a Mini-Trademark Primer 110 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022) “A ‘trademark’ is a word, phrase, or symbol (or any combination of those things) that is used by a company to identify its products or services and distinguish them from other companies’ products or services. . . Ultimately, whether a particular word, phrase, design, or symbol functions as a trademark depends on the context in which it is used.”

111. Followed By a Number of Examples 111 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022) The word “Subway” functions as a trademark when it is used by one company to sell sandwiches. But “subway” does not function as a trademark when it refers to a train system that runs mostly underground. The phrase “Fifth Avenue” does not function as a trademark when it is the name of a street in a city. But “5th Avenue” functions as a trademark when it is used by one company to sell a candy bar.

112. And Then a Mini Trademark Test 112 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022) “Looking at the advertisement shown here, what, if anything, functions as a trademark(s)? If you are thinking of more than one trademark, please enter each trademark in a separate box.”

113. And Then a Mini Trademark Test 113 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022) “Looking at the advertisement shown here, what, if anything, functions as a trademark(s)? If you are thinking of more than one trademark, please enter each trademark in a separate box.” 99% of participants were able to identify one or more trademarks

114. #Law Survey—Important Takeaway 114 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. Nov. 9, 2022) USPTO agreed to withdraw its “failure-to-function” refusal. Survey method may provide a way home for failure to function refusals.

115. And, Again, One Final Resource and Thank You! [email protected] Office: 206-903-8757 Cell: 509-263-0477 115