MMR Strategy Group was retained to rebut survey evidence submitted in an action arising from the alleged infringement of colors used to identify different types of dental cement. MMR Strategy Group president Bruce Isaacson testified that the other side’s survey evidence failed to show a likelihood of confusion, or that the dental cement colors carried a secondary meaning. Did MMR cement a win for its clients with this rebuttal?
Plaintiff Sulzer Mixpac brought a complaint in the the Southern District of New York against DXM Co., Ltd., and Dentazon Corporation, alleging trademark infringement, trademark counterfeiting, breach of contract, and breach of injunction. Mixpac and DXM both manufacture and sell dental cement mixing and application products. Mixpac holds trademarks for its candy-colored mixing tips, and it argued that these colors have been used to identify the Mixpac product for many years. According to Mixpac, the candy-colored tips are non-functional, and the colors do not signify how mixing product are used, but are central to Mixpac’s brand recognition and marketing.
At the Greater New York Dental Meeting, a convention of dental companies, in 2015, it was brought to Mixpac’s attention that DXM was selling tips that used colors similar to Mixpac’s trademarked candy colors. Mixpac sued DXM for trademark infringement, but ultimately settled with DXM’s agreement to discontinue its use of candy-colored tips. Following this action, DXM did discontinue the sale and manufacture of candy-colored tip mixing tips in the same shape at Mixpac’s. However, instead of discontinuing use of the candy colors, DXM introduced a wing-shaped cover over the mixing tips, which remained the same colors as the Mixpac tips. Mixpac filed a new lawsuit, alleging that DXM’s promotion and sale of these tips violated the settlement agreement and injunction ordered in 2016.
Consumer Survey Design: Brand Identity and Likelihood of Confusion
DXM retained a brand identity expert witness to design and conduct a consumer survey to provide answers to the following questions:
- Whether there was a likelihood of confusion between the Mixpac and DXM products
- Whether DXM’s use of colors in its mixing tips cause confusion with Mixpac’s colored mixing tips
- Whether the plaintiff’s trade dress, particularly the colors used in its mixing tips, had established any relevant secondary meaning
- Whether there was a functional purpose for the color of dental mixing tips
Survey respondents were qualified as dentists, dental assistants, or dental office managers; between 25-65 years old; and likelihood to purchase dental mixing tips. The expert chose a Squirt format survey to measure both likelihood of confusion and secondary meaning.
Qualified respondents were divided randomly into two groups and asked questions to measure the likelihood of confusion, as well as whether Mixpac’s candy colors had acquired secondary meaning. Each group was shown one of two images: either DXM’s products or Mixpac’s. Respondents were shown the images of the products a total of three times; first they saw each sequentially, then they saw them side by side, and finally, sequentially again. The survey concluded with a series of demographic questions relating to income, gender, and residence.
The defendant’s expert testified that his survey showed no relevant likelihood of confusion between Mixpac and DXM; that Mixpac’s trade dress had not acquired any secondary meaning; and that DXM’s trade dress was distinctive. The expert further testified that the candy-colored tips were “not the province of any specific brand’s trade dress, but rather purposeful and essential.”
MMR Strategy Group Rebuttal
Mixpac retained MMR Strategy Group president Dr. Bruce Isaacson to rebut DXM’s survey evidence. Dr. Isaacson argued that the DXM’s expert’s survey design and execution suffered from critical flaws that made the evidence unreliable. Dr. Isaacson pointed out that the expert had used an invalid version of the Squirt survey format, because this survey’s design unnecessarily put the two brands of mixing tips in close proximity, potentially biasing respondents. The defendant’s expert had offered no evidence to support the use of this format.
Regarding the secondary meaning and functionality measures, Dr. Isaacson testified that both were unreliable, since they were asked in sequence following the questions on a likelihood of confusion survey. This also biased the resulting measures. Furthermore, Dr. Isaacson testified that the survey universe was too small to be reliable.
The court agreed that the survey submitted did not accurately or properly measure likelihood of confusion, secondary meaning, or the functionality of the colors. When you need reliable survey evidence, it’s essential to choose a proper survey format and following the industry best practices for litigation surveys. MMR Strategy Group has extensive expertise conducting reliable consumer surveys to measure likelihood of confusion, secondary meaning, and more. Contact us if you require consumer surveys in a trademark infringement matter.