Expert Witness Profiler

Tag: Brand

  • Marketing Expert’s Testimony Was Admitted Despite His Lack of Legal Credentials

    Marketing Expert’s Testimony Was Admitted Despite His Lack of Legal Credentials

    X Social Media LLC (“X Social Media”) and X Corp. both use the letter “X” in association with closely related advertising services. Put simply, X Corp. is an online and app-based social-media platform that allows users to create and share a wide range of digital content, including advertisements. X Social Media is an advertising agency that designs and runs social-media advertising campaigns for mass-tort and class-action law firms. 

    This is a case for trademark infringement and related claims concerning the parties’ respective use of the letter “X” in connection with distinct product and service offerings.

    Both parties retained experts to advance their respective theories of the case. Defendant offered (1) marketing scholar Peter Golder and (2) survey practitioner Hal Poret. Professor Golder analyzed the product markets in which the parties operate and opines that reverse confusion is improbable. Poret conducted an Eveready consumer-perception survey to test for the likelihood of reverse confusion and found minimal confusion. 

    Plaintiff offered Professor David J. Franklyn, a trademark-law scholar, to rebut both Golder and Poret. Professor David J. Franklyn disputed Golder’s market-structure analysis and critiques Poret for limiting his survey universe to representatives of law firms and advertising agencies, contending that Poret should also have surveyed the consumers who view Plaintiff’s ads on social media.

    Both parties filed motions to exclude aspects of the opposing experts’ opinions under Daubert and Federal Rule of Evidence 702.

    Marketing Expert Witness

    Professor Peter N. Golder is a Professor of Marketing at the Tuck School of Business at Dartmouth College in Hanover, New Hampshire.

     His background includes a Ph.D. in. marketing from the University of Southern California, decades of academic appointments in marketing, and prior experience providing expert marketing testimony in litigation.

    Want to know more about the challenges Peter Golder has faced? Get the full details with our Challenge Study report.

    Survey Research Expert Witness

    Hal Poret is a public opinion researcher with a master’s degree in mathematics and a law degree from Harvard Law School. Poret has personally designed, supervised, and implemented well over 1,000 surveys regarding the perceptions and opinions of consumers. 

    He has been accepted as an expert in survey research on numerous occasions by U.S. District Courts, the Trademark Trial and Appeal Board, the ITC, the FCC, the FTC, and the National Advertising Division of the Council of Better Business Bureaus (NAD).

    Get the full story on challenges to Hal Poret’s expert opinions and testimony with an in-depth Challenge Study. 

    Intellectual Property Expert Witness

    David Joel Franklyn is currently a law professor at Arizona State University, with an appointment in the Sandra Day O’Connor College of Law. He is also the Executive Director of the McCarthy Institute at ASU Law, which is focused on scholarship and research in intellectual property law, with particular emphasis in the areas of trademark law, branding and consumer perceptions related to brands.

    Franklyn has published extensively on issues relating to intellectual property law and is editor-in-chief and co-author of McCarthy’s Desk Encyclopedia of Intellectual Property Law. Between 2018 and 2021, Franklyn also held a joint appointment at Golden Gate University’s law school and business school. 

    Get the full story on challenges to David Franklyn’s expert opinions and testimony with an in-depth Challenge Study. 

    Discussion by the Court

    The Court discussed the challenged opinions of Professor Golder, Poret, and Professor Franklyn in turn.

    A. Professor Peter Golder

    Defendant retained Golder to analyze the structure of the parties’ product markets, the sophistication of Plaintiffs’ consumers, and the nature of Plaintiffs’ sales process and to “[d]iscuss whether [these] assessments” are “consistent or inconsistent with Plaintiff’s theory of reverse confusion.”

    Plaintiff filed a motion to exclude Golder under Rules 702 and 403, contending that he is unqualified, offers improper legal conclusions, ignores the Eleventh Circuit pattern jury instructions for trademark-infringement cases, disregards evidence of actual confusion, relies on irrelevant third-party marks, and “cherry-picks” facts. 

    1. Summary of Golder’s Opinions

    Golder opined that similar brand names can coexist without consumer confusion when they operate in distinct ‘product categories,’ which he illustrated with third-party examples such as “Delta”—the brand-name of an airline, a faucet company, and a dental insurer.

    He further noted that Defendant’s public SEC filings identify technology companies such as Meta, Alphabet, Microsoft, and TikTok—not advertising agencies like Plaintiff—as competitors.

    He opines that the Plaintiffs’ theory of reverse confusion is “inconsistent with both the documentary record and marketing literature” given the parties’ distinct product categories, the sophistication of Plaintiffs’ customers, and the nature of Plaintiffs’ sales process.

    2. Plaintiff’s Daubert Challenges to Professor Golder

    Plaintiff first argued that Golder is “not qualified as a trademark law expert” because he is neither a “trademark attorney nor former-USPTO commissioner.” However, Defendant has proffered Golder as a marketing expert, not a legal expert. Evaluated in his proffered field, the Court finds him qualified under Rule 702.

    Plaintiff next contended that Golder impermissibly offered legal conclusions, citing his statement that “Plaintiff’s theory of reverse confusion is not consistent with the documentary evidence in this matter or with the marketing literature.” Considered in context, the challenged statements are tied to marketing concepts and record evidence, and Golder expressly disclaimed offering a “legal opinion on confusion.” As a result, the Court rejected Plaintiffs’ argument.

    Plaintiff also sought exclusion because Golder did not consider evidence of actual confusion. Since this matter is set for a bench trial, where concerns about the “jury’s expectations” carry no weight, the Court will evaluate evidence of actual confusion independently and consider Golder’s testimony only for its permissible purpose.

    Plaintiff next challenged as “irrelevant and misleading” Golder’s reliance on third-party brand examples such as Delta, Dove, Morningstar, Pandora, and Tiffany. To the extent Golder’s examples do not correspond perfectly to this case, the Court held that “objections to the inadequacies of a study are more appropriately considered an objection going to the weight of the evidence rather than its admissibility.”

    Finally, Plaintiff argued that Golder “cherry-picked” evidence by declining to evaluate evidence of actual confusion and by emphasizing factors favorable to Defendant. In this case, Golder disclosed the materials he considered and applied recognized marketing principles to the facts of this case. 

    The Court overruled the Plaintiffs’ cherry-picking objection under Rule 702 because it does not establish unreliability.

    B. Hal Poret

    Defendant retained Hal Poret, a consumer-survey expert, “to design and conduct a scientific survey” assessing whether “Defendant’s use of its X mark creates a likelihood of reverse confusion with Plaintiff.”

    Poret did so and concluded that “Defendant’s use of its X mark does not create a likelihood of confusion with Plaintiff.” Plaintiff filed a motion to exclude his testimony, contending that his survey is unreliable because: (1) it lacked a control group; (2) it used the Eveready format rather than Squirt (3) it relied on flawed coding assumptions; and (4) it tested an underinclusive universe. 

    1. Summary of Poret’s Opinions

    Poret conducted an Eveready survey, in which respondents are shown only the senior user’s mark (here, Plaintiffs “X SocialMedia”) and asked questions to assess whether the respondents associate that mark with the junior user’s mark (here, Defendant’s “X”). 

    Poret administered the survey online to 200 respondents who had been screened to ensure they worked for law firms or marketing firms that had used or planned to use social media advertising services—the population he identified as Plaintiffs’ customer base. 

    According to Poret, only 4.0% of respondents provided answers that “suggest reverse confusion” between Plaintiff and Defendant.

    2. Plaintiff’s Daubert Challenges to Poret

    Plaintiff first argued that Poret’s survey is unreliable because it lacked a control group. Plaintiff argued that without a control, the survey cannot distinguish between genuine confusion and background “noise.” Poret acknowledged the omission but explained that controls are most useful where the initial confusion rate is high enough that noise could materially affect the result.  Here, however, “the test group rate of confusion was already so low that it shows a lack of confusion even without taking any potential noise into consideration.” 

    The Court held that the absence of a control group does not render a survey inadmissible under Rule 702. 

    Plaintiff next challenged Poret’s use of the Eveready format, arguing it is inappropriate here because it presumes that Defendant’s mark is top-of-mind. The dispute over whether Eveready or Squirt is more probative here is for the trier of fact to decide; it does not implicate methodological reliability under Rule 702. 

    The Court held that Poret’s survey will not be excluded merely because Plaintiff believes a Squirt survey would be more probative since both Eveready and Squirt formats are accepted in the industry.

    Plaintiff also argued Poret’s coding decisions artificially lowered the measured confusion rate. But Plaintiffs’ objections boil down to the assertion that Poret misused a survey method that “in the abstract, is reliable.” It is well-established that “the identification of such flaws in generally reliable scientific evidence is precisely the role of cross-examination.”

    Finally, Plaintiff argued that the survey universe was underinclusive because it did not include consumers who merely view Plaintiffs’ ads on Facebook and instead exclusively sampled representatives of legal and marketing firms. However, when assessing reverse confusion, limiting the universe to the senior user’s customers is a generally accepted approach.  

    C. David J. Franklyn

    Defendant filed a motion to exclude two categories of Franklyn’s opinions: (1) all of his critiques of Golder, on the grounds that Franklyn is not qualified to offer marketing opinions and, in any event, his critiques lack reliable methods and sufficient factual support; and (2) his opinion that Poret’s survey used an underinclusive universe.

    1. Summary of Franklyn’s Opinions

    a. Critiques of Golder

    Franklyn disputed Golder’s claim that the parties operate in distinct product categories, opining that the parties “operate in highly overlapping product categories and often provide nearly identical services.”

    He criticized Golder’s reliance on third-party brand analogies such as “Delta,” contending that those examples are inapposite because here “the product category of [Defendant] is the brand name of [Plaintiff].”

    b. Critiques of Poret

    Franklyn criticized Poret’s reverse-confusion survey for, among other things, using an “underinclusive universe” that “fails to account for consumers” who encounter the advertisements Plaintiff creates for its law-firm clients. Poret surveyed only “representatives of legal practices and advertising/marketing firm[s],” and Franklyn opined that the perceptions of consumers exposed to Plaintiffs ads may negatively influence the “viability of the advertising services being provided by [Plaintiff].” 

    2. Defendant’s Daubert Challenge to Professor Franklyn’s Critiques of Professor Golder

    Defendant first argued that Franklyn is unqualified to rebut Golder. Franklyn considers himself an expert in “marketing as it relates to trademark law.” But his academic training is in history, philosophy, religion, and law, and his curriculum vitae identified no degrees, work experience, or professional memberships in marketing or advertising disciplines. He has never practiced marketing, has never attended a marketing conference, and did not review the literature on which Golder relied. 

    Accordingly, the Court concluded that Plaintiff has not met its burden under Rule 702 to establish that Franklyn is qualified to rebut Golder’s marketing opinions.

    Setting aside his qualifications, the Court held that Franklyn’s critiques of Golder failed under Rule 702 because they are not based on reliable principles and methods.

    Franklyn admitted that he “didn’t use marketing principles” at all, did not review the marketing literature Golder cited—calling it “mumbo jumbo”—and did not conduct empirical consumer research.

    3. Defendant‘s Daubert Challenge to Franklyn’s Critiques of Poret

    Franklyn contended that Poret’s survey universe was “underinclusive” because it “failed to account for consumers who will encounter [Plaintiff’s] marks in the form of the advertisements that [Plaintiff] produces on behalf of [its] direct clients.”

    The Court found Franklyn’s view that a reverse-confusion survey must include individuals beyond the senior user’s actual customer base is methodologically unsound. The Eleventh Circuit has made clear that the relevant universe in a reverse-confusion case consists of the senior user’s customers. 

    Moreover, Franklyn’s critique that consumers might view advertisements containing Plaintiff’s name and logo is also predicated on a factual assumption that is unsupported by the record—that members of the general public exposed to Plaintiff’s clients’ Facebook ads actually see Plaintiff’s mark. He identifies no example of a consumer-facing advertisement containing Plaintiff’s name or logo.

    Held

    The Court denied the Plaintiff’s motion to exclude the opinions of Peter Golder and Hal Poret but granted the Defendant’s motion to exclude the testimony of David J. Franklyn.

    Key Takeaway:

    Rule 702, however, requires only that an expert be qualified “by knowledge, skill, experience, training, or education” to testify competently “regarding the matters he intends to address.” Nothing in Rule 702 demands experts to have legal credentials. 

    Please refer to the blog previously published about this case:

    Intellectual Property Expert Witness’ Untimely Affirmative Opinions Excluded

    Case Details:

    Case Caption: X Social Media, LLC V. X Corp.
    Docket Number: 6:23cv1903
    Court Name: United States District Court, Florida Middle
    Order Date: September 05, 2025
  • Accounting Expert Witness’ Disgorgement Analysis Using Full Absorption Method Admitted

    Accounting Expert Witness’ Disgorgement Analysis Using Full Absorption Method Admitted

    Plaintiff Multiple Energy Technologies, LLC (“MET”) accused Under Armour of false advertising in relation to certain products that contain bioceramic powder. MET contended that Under Armour inaccurately claimed that the Federal Food and Drug Administration had determined that those products enhanced recovery.

    Under Armour sells activewear and sleepwear products directly to consumers. This includes the sale of products containing a competing bioceramic product known as Celliant, which is manufactured by Hologenix, LLC (“Hologenix”). Under Armour advertises these products separately from their other product offers and as helping to promote recovery, especially for athletes.

    Plaintiff MET brought four claims against Defendant Under Armour, Inc.: violation of the Lanham Act, violation of the Sherman Act, misappropriation of trade secrets; breach of non-disclosure agreement; tortious interference with contract; tortious interference with prospective business expectancies; unjust enrichment; unfair competition; conversion; a claim for an accounting; and a claim for injunctive relief.

    Under Armour retained Jerome Schmitt to rebut MET’s damages expert, Peter Wrobel. MET filed a motion to exclude the expert testimony of Under Armour’s accounting expert witness, Jerome Schmitt.

    Accounting Expert Witness

    Accounting Expert Witness

    Jerome B. Schmitt is a Certified Public Accountant (CPA) and is accredited in business valuation, certified in financial forensics, and a Certified Fraud Examiner.

    He has extensive experience in calculating damages—including claims for monetary relief in trademark infringement, false advertising, and other Lanham Act cases—and in the valuation of intellectual property, including trademarks and trade names. 

    Schmitt earned his Bachelor of Science in Business Administration in Accountancy from John Carroll University in 2000. He followed this with a Master of Business Administration degree from the same institution in 2002.

    Want to know more about the challenges Jerome B. Schmitt has faced? Get the full details with our Challenge Study report. 

    Discussion by the Court

    Schmitt concluded that any disgorgement of Under Armour’s profits from the sale of Recover products would not exceed $151,162. This was based on several assumptions and methods, including the following:

    1. He assumed that the appropriate time frame for the disgorgement analysis spanned from July 1, 2017, to December 31, 2020.
    2. He applied the “full absorption” method and determined that certain costs qualified as appropriate deductions  for purposes of calculating the profits subject to disgorgement.
    3. He assumed factors beyond the alleged advertising, such as contributions from Under Armour’s brand value and advertising of the Recover products beyond the alleged false statements, should be taken into account in calculating profits subject to disgorgement.
    4. He used the relief from royalty method to discount damages due to Under Armour’s brand value.

    MET argued that Schmitt’s opinions:

    I. addressed topics beyond his qualifications.

    II. used unreliable methodology for calculating damages.

    III. presented a serious risk of confusing the jury and were unfairly prejudicial.

    The Court addressed each of these arguments.

    I. Schmitt has not opined on topics beyond his expertise

    MET claimed that Schmitt offered opinions that he was unqualified to give, regarding:

    (1) the appropriate time frame for measuring damages arising out of false advertising;

    (2) the value of Under Armour’s brand and how that value reduced the amount of profit realized from false advertising;

    (3) the impact of Under Armour’s advertisements beyond the alleged false statements; and

    (4) reasons as to why Under Armour would or wouldn’t enter into a contract with MET. 

    Time frame for measuring damages

    Based on evidence in the record and for the purpose of his analysis, Schmitt assumed that a potential disgorgement of Under Armour’s profits would be limited to sales of Recover products from July 1, 2017, to December 31, 2020.

    The Court found this assumption regarding the appropriate time frame perfectly acceptable. The Court observed that MET confused Schmitt’s assumption for calculating Under Armour’s profits attributable to false advertising as an opinion about marketing and advertising.

    It was held that his assumption about the appropriate time frame for measuring damages relied on evidence in the record. Specifically, it was based on responses to interrogatories indicating that Under Armour’s advertisements referencing the FDA had ended by March 2020. Additionally, the Court found that MET did not identify any specific instances of alleged false advertising after 2020. Therefore, the Court was held that the assumption was permissible.

    Brand valuation

    Schmitt opined that Under Armour’s brand contributed to Under Armour’s ability to make sales of Recover products. He applied the relief from royalty method to reduce Under Armour’s profits from the sale of Recover product by the value of the Under Armour brand.

    MET argued that Schmitt was not qualified to opine on Under Armour’s brand value or the impact that it had impact on profits. However, the Court disagreed.

    Given his qualifications as a CPA with extensive experience in calculating damages and the valuation of intellectual property, the Court found that Schmitt was qualified to opine on brand valuation and on how Under Armour’s brand and intellectual property contributed to the profit on sales of Recover products.

    Impact of Under Armour’s advertisements beyond the alleged false statements

    Schmitt opined that Under Armour’s advertisements for Recover products “contain additional language and concepts that are not alleged to be false advertising.” These included references to “fast recovery, the use of bioceramic powder, and the product’s functionality.” He stated that, assuming a finding of liability, it was appropriate to account for the contribution of such language relative to the alleged false advertising.

    Analysis

    To begin with, the Court found that Schmitt was qualified to opine on factors that could appropriately be considered as part of the disgorgement analysis. The Court found that, contrary to MET’s argument, Schmitt did not opine on the impact that the advertising at issue had on sales of particular products, particularly because he did not purport to calculate the amount of profits attributable to the effect of advertising that is not alleged to be false.

    When MET argued that Schmitt’s testimony on causation was inappropriate, the Court found that Schmitt stated in his report and deposition testimony that his analysis was based on “an assumption that there will be a finding of liability.” Schmitt further explained that, while the damages expert is not necessarily opining as to the liability of the alleged act, the damages expert cannot simply calculate damages that are untethered to the act.

    In conclusion, the Court found that Schmitt’s damages opinion “did not attempt to define the law applicable to the case.” Instead, the conclusions he drew in his report, such as the propriety of accounting for the effect of “positive” advertising when assessing profits for disgorgement, were based on his apportionment analysis under the Lanham Act.

    Schmitt merely opined that the disgorgement calculation could be further reduced by the profits that are not attributable to the alleged false advertising. To sum up, this fell into the category of “facts leading to a legal analysis,” not a “legal conclusion.”

    Analysis of Wrobel’s “reasonable royalty” calculation

    MET argued that Schmitt inappropriately opined on “reasons as to why Under Armour would or would not enter into a contract with MET.” However, the Court interpreted Schmitt’s report differently. Schmitt instead opined that Wrobel’s “reasonable royalty” calculation was speculative because of his assumption that, but for the alleged misconduct, Under Armour would have entered into an agreement with MET instead of Hologenix.

    Schmitt disputed this assumption by citing the record. He noted “a number of factors that influenced [Under Armour’s] decision to switch from” MET to Hologenix, “that are independent of the alleged false advertising or other alleged wrongful conduct.”

    The Court found that, in rebutting Wrobel’s expert report, Schmitt made permissible assumptions. In other words, these assumptions were “reasonably based on the evidence in the record.” It added that any weaknesses in the facts and assumptions underlying Schmitt’s opinion could be explored on cross-examination.

    II. Schmitt may use the full absorption method to calculate costs, but the Court will hold in abeyance its decision on the relief from royalty method

    A. Full absorption method

    To determine the profits available for disgorgement, Schmitt applied the full absorption method. This method “deducts costs that assist in the production, distribution, or sale of the products at issue, irrespective of whether or not such costs are considered fixed or variable.” After reviewing Under Armour’s financial reports and having a discussion with an Under Armour employee, he concluded that certain costs included in Under Armour’s selling, general, and administrative expenses contributed to the sales of the Recover products at issue. He then deducted these costs from the revenue on Recover products.

    MET argued that Schmitt’s use of the full absorption method was inappropriate because Under Armour would have incurred much of those fixed costs without selling the infringing product which is why the method failed to show that the costs and profits excluded from the disgorgement analysis were not attributable to the infringing product.

    The Court decided not to exclude Schmitt’s testimony applying the full absorption method. Generally, in trademark infringement cases, courts have used two methods for apportioning costs:

    a) The incremental approach “under which only direct costs of production are deducted.”

    b) the full absorption approach “under which overhead costs are apportioned to production of the infringing item.”

    According to the Court, MET was correct that, for a disgorgement analysis under the Lanham Act, the infringer “bears the burden of proving all elements of cost or deduction” and “has the burden to isolate the profits which are attributable to” the infringement.

    However, MET’s criticisms of Schmitt’s application of the full absorption method concerned the weight of his testimony, not its admissibility. The Court held that these criticisms should be addressed through cross-examination of Schmitt, a crucial part of which would be his decision to use the full absorption method.

    B. Relief from royalty method

    To value the contribution of Under Armour’s intellectual property to the sale of its products, Schmitt used the relief from royalty method. Under this method, he applied a “market-based royalty for the subject intellectual property at issue as a reasonable proxy for the profit or value it contributes to the sale of products that use the intellectual property.” 

    Basically, to establish what the applicable royalty rate would be for the Under Armour brand, he looked at one instance in which Under Armour licensed its name and logo to an apparel distributor, through which Under Armour received a 14% royalty of the net revenue of apparel sold with its name or logo. He then reduced Under Armour’s profits from the sale of Recover products by 14%, to reflect the royalty that Under Armour “was relieved from paying by virtue of owning its brand.” 

    MET argued that Schmitt’s use of the relief from royalty method was improper because a hypothetical royalty amount isn’t a proper deduction when evaluating Lanham Act damages.

    While Under Armour argued that “courts accept the apportionment of profits for contributions made by a Defendant in generating those profits,” it had not sufficiently established that the relief from royalty method had been subjected to peer review or that it is a generally accepted method for calculating proper costs or deductions in the Lanham Act context.

    While the novelty of Schmitt’s methodology was “not a per se reason for exclusion,” the Court lacked a basis to decide whether his methodology was sufficiently reliable. Therefore, the Court declined to rule on whether Schmitt’s testimony applying the relief from royalty method should be excluded. The Court intended to hold an in limine hearing, with Schmitt in appearance-as to the relief from royalty methodology and its reliability.

    III. The Court won’t exclude Schmitt’s report and testimony under Rule 403

    MET argued that based on the purported deficiencies, Schmitt’s testimony presented a serious risk of confusing the jury and prejudicing MET as per Rule 403.

    Balancing the probative value against the prejudice, the Court found that the probative value of Schmitt’s expert opinions was high. In other words, it was held that there was no danger of unfair prejudice. If any confusion or potential prejudice arose, the Court declared that it was open to curative jury instructions to assist the jury.

    Held

    The Court held that it would leave open the issue of whether Schmitt’s application of relief from royalty methodology is admissible under Rule 702. However, it denied MET’s motion to exclude expert Jerome Schmitt’s report and testimony in all other respects. 

    Key Takeaways:

    The Court denied MET’s motion to exclude Jerome Schmitt’s testimony in all other respects for three main reasons:

    1. Qualification and Expertise: The Court found that Schmitt did not exceed the scope of his expertise. His opinions regarding the timeframes, brand valuation, and advertising impact were all within his qualifications given his extensive experience in damages calculation and intellectual property valuation. The Court noted that Schmitt based his assumptions on evidence in the record and didn’t make impermissible legal conclusions.
    2. Methodology: The Court accepted Schmitt’s use of the “full absorption” method to determine the profits available for disgorgement. The Court viewed MET’s criticism of the method as a challenge to its weight, not its admissibility. It determined that cross-examination could address these issues.
    3. Rule 403 Balancing: The Court determined that Schmitt’s testimony had high probative value that outweighed any potential prejudice. Therefore, any risk of jury confusion could be addressed through curative jury instructions.

    Please refer to the blogs previously published about this case:

    Case Details:

    Case caption: Multiple Energy Techs., LLC v. Under Armour, Inc.
    Docket Number: 2:20cv664
    Court: United States District Court for the Western District of Pennsylvania
    Dated: January 13, 2025
  • Survey Research Expert Witness’ Testimony Admitted Because the Court Found No Evidence of Actual Confusion among Respondents

    Survey Research Expert Witness’ Testimony Admitted Because the Court Found No Evidence of Actual Confusion among Respondents

    In this trademark dispute, Defendants SuccessfulMatch.com and Successful Match Canada (both, Successful Match) sought to cancel on genericness grounds the registration of trademarks asserted by Plaintiffs Clover8 Investments and Reflex Media, Inc.

    As Successful Match puts it, the trademarks in question “are used in connection with seeking a companion in the ‘Sugar Daddy’ and ‘Sugar Baby’ relationship space, online or through an App, which are designed for individuals seeking a specific type of arrangement typically between a young woman and a wealthy man who is often a millionaire.” 

    Each side retained an expert witness — Hal Poret for Successful Match and Brian Sowers for RMI — to conduct a consumer survey meant to determine whether the disputed marks are generic or not. Each side then attacked the other expert’s survey work as junk science that ought to be excluded from use in this case under Federal Rule of Evidence 702 and Daubert. 

    The Court convened a concurrent expert evidentiary proceeding to hear directly from Poret and Sowers about why they disagreed and why the other’s survey work might be so deficient as to warrant exclusion. 

    Poret and Sowers agreed that the top objections were whether (1) the scope of the “universe” of the relevant purchasing public each expert surveyed was appropriate; (2) it was appropriate to use examples tailored to the sugar-dating market in the survey’s “mini-test”; (3) the definitions for “brand” and “generic” used in the surveys were appropriate; and (4) the control terminology for “generic” names used in the surveys were appropriate.

    Survey Research Expert Witnesses

    Hal Poret is a public opinion researcher with a master’s degree in mathematics and a law degree from Harvard Law School. Since 2004, Poret has personally designed, supervised, and implemented over 350 consumer surveys concerning consumer perception, opinion, and behavior, including surveys relating to false advertising, claim substantiation, and trademark/trade dress matters. He has personally designed numerous studies that have been admitted as evidence in legal proceedings and has testified as an expert in over 50 proceedings before U.S. District Courts, the Trademark Trial and Appeal Board, and NAD.

    Get the full story on challenges to Hal Poret’s expert opinions and testimony with an in-depth Challenge Study. 

    Brian Sowers is a principal and testifying survey expert at Applied Marketing Science (AMS). He is responsible for the delivery of survey research and expert testimony in civil cases. Sowers also supports affiliated academic experts and economic expert witnesses in matters in which consumer opinions and behaviors are an important determinant of liability and damages. 

    Want to know more about the challenges Brian Sowers has faced? Get the full details with our Challenge Study report. 

    Discussion by the Court

    The parties do not disagree that the genericness inquiry looks to whether the consuming public “uses or understands the term sought to be protected” as a generic name for the “services set forth in the certificate of registration.”

    Rather, the dispute is about how to define the consuming public and populate the relevant survey universe, namely whether the proper universe is comprised of consumers of online dating or matchmaking services generally, which would match the description of the services designated in RMI’s registrations, or just consumers of “luxury” dating or “sugar dating” services.

    The parties do not agree about the nature of the services offered in connection with the marks. Successful Match says RMI “expanded the scope of [their] services to include a more general universe of consumers” by “mov[ing] away from the sugar daddy dating space . . . and shift[ing] the focus to connecting people in more typical relationships.” RMI says that they offer a “luxury dating service” and nothing suggests they offer “a mainstream or traditional dating site.”

    The Surveys’ Mini-Tests

    Poret and Sowers each conducted a “Teflon survey,” which is a type of consumer survey that is “essentially a mini-course in the generic versus trademark distinction, followed by a test” wherein the survey-taker is asked to categorize various names or phrases as a “brand” name or term or “generic” name or term. Teflon surveys typically include a “mini-test” before the main test to ensure that the respondent properly understands and can apply the “brand”/”generic” distinction. 

    Sowers’ Mini-Test Questions

    Poret criticized Sowers’ questions in the mini-test, which asked respondents to categorize as “brand” or “generic” the terms “Networking Website” and “Sugardaddie.” Poret believes these questions biased the survey results because they would lead to the exclusion of respondents who categorized “Sugardaddie” as generic, and so artificially tilt the results toward those most likely to say that RMI’s asserted marks are a brand. 

     At the concurrent evidentiary proceeding, Sowers stated that he tailored to the case by requiring respondents to apply the “brand”/”generic” distinction to “Networking Services” and “Sugardaddie,” the latter of which being a mark he thought was “a pretty prominent player in the marketplace” after conducting research on the sugar-dating space.

    The thrust of Poret’s critique is that the term Sowers chose to “tailor” his mini-test is “as debatable as what the survey is about in the first place.” The Court held that the shortfall of this criticism is that an objection to the specific words Sowers used in the mini-test goes to “follow-on issues of . . . survey design” and not the threshold question about whether the survey was “conducted according to accepted principles.”

    Indeed, at the evidentiary proceeding Poret stated that “it’s not the mere fact of including something in the mini-test that relates to the category that is the fatal flaw. . . . It’s the specifics of [Sugardaddie].” The Ninth Circuit has characterized “leading” or “slanted” questions as “technical inadequacies” that “bear on the weight of the evidence, not its admissibility,” and so the Court concluded that this specific objection to the word Sowers used in the mini-test most closely resembles those sorts of challenges.

    Poret’s Common Term And Test Examples

    Sowers said the “fatal flaw” in Poret’s survey was that its wording caused respondents to misunderstand the “brand”/”generic” distinction

    For his part, Sowers said the “fatal flaw” in Poret’s survey was that its wording caused respondents to misunderstand the “brand”/”generic” distinction, which is said to render the survey irrelevant. Sowers specifically took issue with the prompt at the start of the main test, which told respondents they would need to “answer whether you think that term is . . . a common term that identifies a type of dating, matchmaking, and social introduction mobile app or website.” In Sowers’ view, the definition of a “common term” as a “type” of a dating or matchmaking service would cause respondents to be confused about what a “common” term is as a concept.

    Prior to the language to which Sowers objects, respondents were told that “common terms” are “terms that identify a type of product or service. Common terms primarily let the consumer know what the product or service is, not who makes it. These terms primarily identify a type of product or service.

    Sowers acknowledged he had no problems with that initial definition, so his objection appears to be directed at the shift from “identify a type of product or service” to “identify a type of [word or phrase for the specific product or service at issue].”

    The Court held that this is a minor variation of no apparent import, particularly because respondents were required to read a prior, fuller definition and had to correctly apply the earlier definition before going on to the main test.

    Sowers also did not present any evidence of actual confusion among respondents

    Poret maintained that several of the main test’s questions were designed to control for potential confusion and that the overall results demonstrated that respondents properly identified brands versus generics. Sowers suggested that the discrepancy between respondents who identified “relationship” as a common term (96%) and “luxury dating service” as a common term (76%) was evidence of confusion. But well more than 50% percent of respondents agreed that “luxury dating service” was common, and a 20% variation in responses is not significant when there is more than majority concurrence. 

    Sowers also said that the terms Poret used as “common” controls confused respondents about the proper meaning of “generic” or “common.” The Court did not find it persuasive.

    Survey respondents were instructed that a common term “let’s the consumer know what the product or service is” and that it “identifies a type of dating, matchmaking, and social introduction mobile app or website.” For each question in the main test, the term in question was capitalized at the top, and right below it the question read: “In the context of dating, matchmaking, and social introduction mobile apps or websites, do you think this is a . . . [(a)] Brand term [(b)] Common term [(c)] Don’t know.”

    Since Sowers did not show that the omission of the word “app” or “site” caused respondents to ignore or become confused about the prior definitions, the Court held that it is entirely speculative to say that a respondent considering the word “relationship” would not have understood that they were being asked whether “relationship” referred to a brand or type of dating app (e.g., an app for persons looking for relationships as colloquially understood versus other arrangements) or “singles” was a brand or type of social introduction app for single individuals. 

    Other Challenges

    Each side offered a grab bag of other comments that also do not support exclusion. RMI objected to the survey’s use of the phrases “brand term” and “common term” instead of “brand name” and “common name.” This exalts form over substance. Although “term” and “name” may have somewhat different dictionary meanings, RMI adduced no evidence that respondents using everyday English would have appreciated that subtle difference. In addition, a plethora of federal-court decisions use “term” in the context of genericness, which demonstrates that the two words are functionally interchangeable for present purposes.

    Poret’s reasons for selecting his common controls do not demonstrate the survey’s irrelevancy, as RMI suggests. As discussed, the Court held that there is no shortfall that bears on admissibility in Poret’s survey’s definitions, the failure to include trailing words like “site” or “app” do not provide a basis for excluding the survey, and so RMI’s reliance on one or two isolated statements in Poret’s report proves too much in the contexts of the report and the concurrent proceeding.

    Lastly, Successful Match’s suggestion that Sowers’ survey is irrelevant because it tests secondary meaning rather than genericness does not carry the day. The Court held that Sowers’ focus on consumers of “sugar dating” services does not warrant exclusion on this record, and the qualification rate alone does not establish irrelevancy. Because Successful Match does not contend that Sowers’s mini-test was actually testing secondary meaning rather than genericness and so should not have been included for that reason, the Court need not address the argument.

    Held

    The Court denied RMI’s motion to exclude the opinions of Hal Poret and Successful Match’s motion to exclude the opinions of Brian Sowers.

    Key Takeaway:

    The parties do not agree about the nature of the services offered in connection with the marks. Successful Match says RMI “expanded the scope of [their] services to include a more general universe of consumers” by “mov[ing] away from the sugar daddy dating space . . . and shift[ing] the focus to connecting people in more typical relationships.” RMI says that they offer a “luxury dating service” and nothing suggests they offer “a mainstream or traditional dating site.” In light of this dispute, the Court cannot conclude that either survey’s universe is comprised of respondents whose views would be irrelevant to the bottom-line question of whether the disputed mark, “taken as a whole, signifies to consumers the class of online [matchmaking or dating] services.

    As a result, the Court cannot conclude that either expert, in choosing his respective survey universe, failed to reliably apply well-accepted principles in the field.

    Case Details:

    Case Caption: Reflex Media, Inc. Et Al V. Successfulmatch.Com Et Al
    Docket Number: 3:20cv6393
    Court: United States District Court, California Northern
    Order Date: November 26, 2024