Plaintiff Alfwear, Inc. (“Alfwear”) is an outdoor clothing company that sells products under the KÜHL mark. Ibkul is a clothing company specializing in athleisure wear.
In November 2021, Alfwear initiated this lawsuit against Ibkul, alleging trademark infringement, unfair competition, and dilution. Alfwear, Inc. has alleged that the sales of apparel using the IBKÜL trademark infringed Plaintiff’s rights in its KÜHL trademark.
Alfwear disclosed that it intended for Rhonda Harper to serve as an expert “regarding research surveys, consumer confusion, and likelihood of confusion. Such evidence may also be offered in support of damages issues in the case.”
Ibkul disclosed that Krista Holt would “serve as an expert in response to Plaintiff’s Expert Disclosures, including the general subject matter of ‘research surveys, consumer confusion, and likelihood of confusion’ and ‘damages issues,’ including any deductions and apportionment.”
The parties moved to exclude each other’s expert under Rule 702.
Marketing Expert Witness
Rhonda J. Harper has over 30 years of experience at the highest levels of marketing, research, and branding. She has been the top marketing executive for several Fortune 100 corporations, served as an adjunct marketing professor at two universities, held national and international board positions in leading brand and marketing associations, led a leading global agency division, and founded an organic growth strategic consultancy. Harper has also provided and rebutted hundreds of trademark and trade dress infringement surveys for litigation purposes.
Intellectual Property Expert Witness
Krista Holt is a Managing Director at Econ One Research, Inc. (“Econ One”). Holt is an active member of the American Bar Association, Intellectual Property Owners Association, International Trademark Association, National Association of Certified Valuators and Analysts and Licensing Executives Society. She was the Chair of the LES Valuation and Taxation Committee. Holt is also a Certified Licensing Professional and an Accredited Valuation Analyst, and is an instructor for the Certified Licensing Professional program.
She has lectured on a variety of intellectual property topics for the American Bar Association, Licensing Executives Society, IPI, DRI, Harvard Law, George Washington Law and various other organizations and universities.
Discussion by the Court
Krista Holt
Holt was asked by IBKUL to serve as an expert in response to Alfwear’s expert, including the general subject matter of research surveys, consumer confusion, and the likelihood of confusion. Holt was also asked to serve as an expert on damages issues “including any deductions and apportionment.”
Alfwear contended that portions of Holt’s expert report should be excluded on three bases. First, it argued that Ibkul failed to disclose Holt at the deadline for affirmative experts, so the portions of her report that go beyond the scope of the Harper Report should be excluded. Next, it argued that Holt was not qualified to offer opinions on marketing. Finally, Alfwear argued that Holt used the wrong standard to critique Harper’s methodology. The Court considers each argument in turn.
Rule 26
Holt was previously retained by another defendant in a different case to assess the fame of the KÜHL mark (the “Fame Survey”). Holt conducted an online survey of 394 respondents from the general public in 2020, which indicated that consumers do not consider KÜHL to be famous.
Alfwear argued that two portions of the Holt Report should be excluded for failure to comply with the Rules of Civil Procedure. First, it argued that the Fame Study in the Holt Report should be excluded because Holt was designated as a rebuttal expert on topics that did not include the fame of any of Alfwear’s marks.
Second, it argued that Holt’s opinions about damages should be excluded because Holt was not timely disclosed as a damages expert and because the Harper Report does not address damages.
The Court held that the Fame Study is not responsive to the Harper Report and Alfwear does not have the ability to find another expert to conduct a responsive study at this stage in the litigation. Morover, Ibkul’s failure to disclose Holt was prejudicial to Alfwear. The deadline for expert discovery had passed and Alfwear did not have the opportunity to retain a responsive damages expert. In conclusion, the Court held that it would be highly prejudicial to allow this damages testimony into trial without giving Alfwear an opportunity to respond with its own expert.
Qualifications
Alfwear next argued that Holt is not qualified to offer an opinion on whether the parties sell in different product categories.
However, Alfwear did not challenge Holt’s qualifications to offer the other rebuttal opinions presented in her report. Holt’s experience and education qualify her to offer a rebuttal opinion on Harper’s Confusion Survey. Holt has a master’s in business administration and has over ten years of experience in accounting and marketing. Holt has provided survey services in trademark disputes for over fifteen years, including designing and rebutting trademark surveys. She also has also presented on survey design and brand valuation. Accordingly, the Court evaluated Holt’s rebuttal testimony to determine whether it is reliable.
Critique of Confusion Survey
Alfwear argued that Holt’s critique of the Confusion Survey should be excluded because Holt used an incorrect standard to evaluate the data.
Ibkul relied on a supplemental declaration by Holt. The Holt Declaration stated that it sought to “clarify and supplement” the report “in light of Plaintiff’s challenges.”
Because the Rules prohibit preparing a declaration solely to strengthen and deepen Holt’s existing opinions, the Court has not considered the Holt Declaration or Ibkul’s arguments relying on it.
As for Holt’s critique of the standard used to evaluate the survey in the Harper Report, the experts’ competing opinions about which standard should be used present the classic battle of the experts and it is up to a jury to evaluate what weight and credibility each expert opinion deserves.
If Holt’s rebuttal opinion uses an outdated standard, Alfwear may seek to present that information to the jury at trial. However, the Court held that it is not a sufficient basis to exclude Holt’s opinions at this stage.
Rhonda Harper
As part of its litigation strategy, Alfwear hired Rhonda Harper to determine whether consumers would confuse the IBKÜL mark with the KÜHL mark. Harper was asked “to conduct a forward likelihood of confusion survey among the relevant population and provide [her] opinions.” Harper utilized a Squirt-style sequential line-up study to evaluate whether consumers would confuse the KÜHL and IBKÜL marks (the “Confusion Survey”).
The Court first addresses whether the Confusion Survey uses reliable methodology. Then, it turns to whether Harper reliably applied this methodology and addresses Ibkul’s arguments against the Report’s admission.
Methodology
The Court held that Harper used an accepted method for measuring consumer confusion in trademark disputes and applied recognized standards as per the Daubert factors.
Application
Confusion Survey Universe
The Court first considered the Confusion Survey’s universe and whether the sample it considered was representative.
Ibkul first argued that the Harper Report should be excluded because the relevant universe it surveyed is not accurate.
The Harper Report states that “the relevant universe was defined as past and potential purchasers of Defendants’ products.”
Ibkul argued that there should be a far more limited universe, arguing that the survey should be excluded because its respondents are outside Ibkul’s typical shopper, a woman in Florida with an income around $150,000 who is willing to pay around $100 for apparel and shops at golf, tennis, and country clubs.
The Court held that the consumers represented in the Confusion Survey reasonably approximate Ibkul’s potential customers; therefore, the survey universe is not so broad that the Survey should be excluded.
Ibkul contended that the survey universe is too broad because it contains individuals interested in athleisure wear, which it argues is a “very general class of products.” However, Ibkul sells athleisure wear. It does not explain why the survey universe should not consider individuals interested in athleisure wear, which includes its product line. Therefore, the Court held that Ibkul has not shown that the survey is so broad that it does not represent potential Ibkul customers, and the Confusion Survey should not be excluded on this basis.
Confusion Survey Conditions
Ibkul challenged the Survey’s use of hang tags without showing the parties’ clothing, arguing that showing only the hang tags fails to recreate marketplace conditions. Ibkul also argued that survey conditions do not match real world condition because IBKÜL is in a different product category than KÜHL. Moreover, Ibkul contended that the Confusion Survey does not accurately reflect market conditions.
However, the Court held that although Ibkul has pointed out issues with the survey that may diminish its evidentiary value, none of these flaws are so serious and pervasive that the entirety of the Confusion Survey should be excluded.
Confusion Survey Methodological Errors
Finally, Ibkul argued that the Confusion Survey’s methodology was unreliable. It argued that the questions included were leading and suggestive, that different control hang tags should have been used, and that there were errors in the report’s calculations.
However, the Court held that Ibkul has not shown that any survey questions were so leading that the Confusion Survey should be excluded. It did not explain why any questions used in the survey were so leading that they cause serious and pervasive flaws in the Harper Report. Moreover, the survey’s use of a control group provides assurances of its reliability.
Held
- The Court granted in part and denied in part Alfwear’s motion to exclude Krista F. Holt’s expert report.
- The Court denied Ibkul’s motion to exclude testimony and opinions of Plaintiff’s survey expert Rhonda Harper.
Key Takeaways:
- Ibkul has introduced criticisms of the Confusion Survey that may ultimately show that the Survey, and Harper’s opinions based on it, have little evidentiary value. But that is a decision for the jury. Ibkul has not established that the Survey has such serious and pervasive flaws that the Court should exclude it altogether.
- Alfwear has demonstrated that the Fame Survey and damages calculations should be excluded. It has also established that Holt cannot offer testimony about whether the parties sell in different product categories.
Case Details:
| Case Caption: | Alfwear V. Ibkul Ubhot |
| Docket Number: | 2:21cv698 |
| Court Name: | United States District Court for the District of Utah |
| Order Date: | May 12, 2025 |
Leave a Reply