What is the Theory Behind Your Lanham Act Survey?

For the expert conducting or rebutting a Lanham Act survey, the theory of marketplace behavior that underlies the survey is an important issue that is almost always at least an implicit part of planning a survey.
By “theory of marketplace behavior,” I refer to the process or mechanism by which consumers or customers become involved in the issues under dispute. In a survey measuring the likelihood of confusion, the theory of marketplace behavior may refer to the sequence of advertising, trademarks, or products that a consumer might experience in the marketplace that causes confusion. In surveys of false or deceptive advertising, the theory of consumer behavior may refer to the sequence of ads or other stimuli that cause an incorrect and material belief.

When opposing experts, opposing counsel, and courts evaluate a litigation survey, the discussion and consideration often implicitly or explicitly tests the reasonability of the theory behind the survey. This post describes why the theory behind a Lanham Act survey is important, particularly for complex issues such as confusion surveys or surveys of false or deceptive advertising, and how you can tell whether a theory is backed with appropriate evidence.

What Does a Survey Measure?

A Lanham Act survey, like other types of surveys, uses respondent interviews to abstract or simplify real world events and test theories of what is occurring in the marketplace. Such a test must necessarily start with a theory of what is happening in the marketplace. This is particularly important where the marketplace events involve confusion or deceptive advertising, where multiple products, multiple stimuli, or multiple steps may be required to cause marketplace events.

Let me explain with a hypothetical example. Consider a Lanham Act matter involving two fictitious ice creams, Bob’s Old Fashioned Ice Cream and Bill’s Old Fashioned Ice Cream, that are sold in containers with similar color schemes. Imagine that Bob’s has sued Bill’s, alleging that the similar trade dress is infringing, and causes confusion among consumers.

An expert retained to conduct a survey in this matter might decide to conduct a survey to measure the likelihood of confusion. There are many considerations in setting up the survey:

• • Design: The expert can use either an Eveready design, where respondents see only one of the two products, or a lineup, where respondents will see more than one product.

• • Stimuli: The survey might show actual products or advertisements. A lineup survey might show a combination of both advertisements and products. The product or products selected might be one or several flavors or varieties.

• • Order: In a lineup, the senior user’s product can be shown first, or the junior user’s product can be shown first. Also, all products in the lineup can be shown at once, or the lineup products can be shown successively.

• • Types of confusion: The survey questions could ask about different types of confusion, such as confusion as to source, association, sponsorship, permission, approval, and/or authorization (to take a few examples).

• Control: If a control is used, and it probably will be, the control can be an existing product in the marketplace, or can be a fictional product made up specifically for the research.

These research designs are not meant to represent all possibilities, or even necessarily the right possibilities in a confusion survey. However, the list shows some of the choices that must be made in designing any survey of confusion. Many of these issues also apply to other types of surveys, such as surveys of false or deceptive advertising.

As he or she selects among these choices and designs the survey, the survey expert also selects a particular theory to test regarding how confusion is alleged to have occurred.

In our hypothetical ice cream example, there are many ways in which marketplace behavior could result in confusion. Here are a few:

1. A consumer might see an ad for one product, then go into a supermarket and see both products in the freezer.
2. A consumer might go into a supermarket and see both products in the freezer.
3. A consumer might try one product, then go into a store where the freezer shelf includes the other product, but not the one the consumer has already tried.

These are but a few possibilities, and there are many others. An expert conducting a Lanham Act survey must first identify which theory he or she will test.

If our theory is that consumers go into a store and see both products in the freezer, the confusion survey should show respondents both products. Ideally, the expert will have evidence, perhaps from statements made in the complaint or from pictures taken in supermarkets, indicating that the products actually appear with reasonable proximity in the marketplace or that one of the parties alleges that the products may appear with proximity in the marketplace.

In Lanham Act matters, complaints and depositions are a few locations where the theories of marketplace behavior are described by plaintiffs, or rebutted by defendants. There are other locations as well, such as store visits or marketing plans. Careful reading of such documents, and consideration of marketplace conditions, can be part of the upfront thought necessary to show that the theory of marketplace behavior is realistic.