In trademark infringement matters, parties often retain consumer survey experts to conduct likelihood of confusion litigation surveys. Courts commonly accept these surveys as evidence, but they must meet certain criteria and be conducted and designed properly. In a case decided in 2023, MMR Strategy Group Senior Vice President and expert Dr. Justin Anderson was hired to rebut another expert’s survey evidence in a trademark dispute between two credit unions. The 10th U.S. Circuit Court of Appeals ultimately affirmed the district court’s decision to exclude the opposing expert’s opinions. That decision is discussed in our first post on this matter here; however, in our second installment, MMR Strategy Group would like to underscore the importance of disclosure in consumer surveys.
Elevate vs Elevations Case Background Recap
Elevate Credit Union is owned and operated principally in three counties in Utah; Elevate is a rebranded name for a credit union originally called Box Elder Credit Union. Elevate rebranded in 2019 and registered trademarks with the state of Utah. Prior to the rebrand, an Elevate employee performed research into potential conflicts, including inquiries with the National Credit Union Association and U.S. Patent and Trademark Office.
Elevations Credit Union is owned and operated in Colorado. Elevations became aware of Elevate and issued a cease-and-desist letter, arguing that the similarity of the names would create consumer confusion. Elevate received the cease-and-desist letter near the end of its rebranding process, which included public announcements, website redesign, printed internal and advertising materials, and newly issued plastic credit and debit cards.
Elevate sought a declaratory judgment that there was no infringement in the US District Court for the District of Utah, and Elevations countersued for trademark infringement. Elevations retained a survey expert to measure the likelihood of consumer confusion between Elevations Credit Union and Elevate Credit Union; Elevate retained MMR Strategy Group Senior Vice President Dr. Justin Anderson to rebut that survey evidence. The district court judge excluded the Elevations expert’s likelihood of confusion survey, in a decision explaining the importance of methodology and credibility in survey evidence testimony. The 10th U.S. Circuit Court of Appeals affirmed the district court’s decision without mentioning the methodology but agreed that the other expert’s survey had problems with disclosure and marketplace proximity. It upheld the district court’s decision to exclude the survey.
The Final Flaw
The kind of survey the opposing expert used, a Squirt likelihood of confusion survey, requires that the products or brands tested have proximity in the marketplace. Marks have proximity if consumers will naturally encounter them directly competing in the real world. Proximity can be shown by showing that consumers would be likely to encounter junior and senior marks in stores, in geographic proximity, and online. In Elevate v. Elevations, the two credit unions operated in different geographic regions, but the plaintiff’s survey expert claimed that the two marks were in proximity due to searches on the search engine Bing.
However, the expert failed to disclose evidence showing the searches they did, for all but two of the searches. This proved to be a major problem for the district court, which wrote that “By not disclosing the search terms and results of the numerous internet searches [they] performed, which searches influenced [their] opinion on the appropriateness of the [s]urvey, the court finds that [the expert] failed to meet [their] Rule 26(a)(2)(B)(ii) obligations. These internet searches are not minor pieces of information or unnecessarily specific details.” Specifically, the court wanted documentation of the dates of each search, the search terms used, the search engine used, the type of hardware on which the expert ran each search, and records of the results.
How and Why Disclosure Counts
The lesson for survey experts, and the law firms that use them, was clear: document your work so it can be produced for the court. When a survey expert claims to have conducted searches to evaluate market proximity on the internet, the court may require records of that research, possibly including all of the details this court called for, such as the search keywords, search engine used, and the results of each search. In this case, the survey expert did not retain any records of searches used to evaluate proximity that the court felt were significant. To be safest, expert witness reports should be scrupulous in documenting every detail of the survey that courts may call for later.
Disclosing the details of survey research is an important part of providing expert witness testimony about that survey. Consumer survey experts can anticipate that their research will be scrutinized and analyzed by courts and opposing counsel. In this case, the appellate court agreed that the research relied on by the Elevations expert was not reliable, and that the expert’s research and testimony should be excluded. If you are considering retaining a consumer survey expert for a likelihood of confusion survey, consider retaining MMR Strategy Group.