Expert Witness Profiler

Tag: Trademark

  • Economics Expert Partly Allowed to Opine on Corrective Advertising Damages

    Economics Expert Partly Allowed to Opine on Corrective Advertising Damages

    This is a trademark infringement and unfair competition action arising from the parties’ respective uses of the word “IMPOSSIBLE.” Impossible Foods is the widely known creator of the Impossible Burger and other plant-based meat products. Defendants/Counter-Plaintiffs Joel Runyon and Impossible X LLC (collectively, “Impossible LLC”) are an individual and his corporate entity who, over the past decade, have been involved in a variety of ventures—including search engine optimization, social media influencing, and fitness and dieting advice—all loosely affiliated with the word Impossible.

    Impossible Foods filed two motions in limine to exclude the testimony of Dr. Jennifer Vanderhart and Dr. Robert Palmatier, while Impossible LLC sought to exclude portions of John Plumpe’s rebuttal testimony.

    Economics Expert Witness

    Dr. Jennifer Vanderhart is an economist and the managing director of a consulting firm providing services in connection with litigation, regulatory proceedings, and valuation analyses. She holds a Ph.D. in economics from Texas A&M University, where she previously taught in the Department of Economics and the Department of Management in industrial organization, public economics, and econometrics.

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

    Marketing Expert Witness

    Dr. Robert W. Palmatier is a Professor of Marketing at the University of Washington’s Foster School of Business, where he has taught since 2007. He holds a Ph.D. in marketing from the University of Missouri and has held a variety of academic and industrial positions, with a focus on marketing strategy, consumer loyalty and decisionmaking., and methodological approaches for analyzing marketing data.

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

    Valuation Expert Witness

    John G. Plumpe is the managing director of an economic consulting firm and holds a Master of Science in Mechanical Engineering from the University of Illinois and an M.B.A. from the University of Chicago Booth School of Business. Plumpe’s practice focuses on the analysis of damages, monetary relief, and valuation issues in intellectual property litigation.

    Discover more cases with John Plumpe as an expert witness by ordering his comprehensive Expert Witness Profile report.

    Discussion by the Court

    Jennifer Vanderhart

    Vanderhart is Impossible LLC’s damages expert and has prepared a report in which she opined that Impossible LLC is entitled to corrective advertising damages for Impossible Foods’ use of its IMPOSSIBLE-formative marks in connection with its swag and cookbook.

    In her report, Vanderhart opined that corrective advertising damages may be calculated by multiplying Impossible Foods’ swag and cookbook-related expenses by three to five, based on Palmatier’s opinion that “Impossible LLC would likely have to spend 3 to 5 times as much to correct false or unwanted brand associations as was originally spent by Impossible Foods to create these associations.”

    During the relevant time period, she calculated that “Impossible Foods has spent an estimated $623,280 in ‘swag’-related expenses” and “has spent an estimated $194,722 in cookbook-related expenses,” opining that “total corrective advertising damages are in the range of $2,454,006 to $4,090,010.”

    Impossible Foods filed a motion to exclude Vanderhart’s opinions on three grounds. To begin with, Impossible Foods argued that she failed to assess any actual harm to the value of Impossible LLC’s asserted marks and has “made no attempt to calculate lost sales caused by the alleged infringement.” Second, Impossible Foods argued that she did not properly measure advertising costs because her calculations are based on production costs rather than advertising expenditures and include the cost of producing items that are not accused of infringing Impossible LLC’s marks. Finally, Impossible Foods argued that Vanderhart improperly relied on Palmatier’s three-to-five multiplier, which itself is “derived from a single, irrelevant study.”

    Analysis

    The Court agreed with Impossible Foods that Vanderhart neglects to quantify the harm to Impossible LLC’s asserted trademarks by Impossible Foods’ alleged infringement or to even estimate their value in the first instance. However, this does not require that her testimony be excluded at theDaubert stage, where the focus is on her qualifications and the reliability of her methodology.

    Impossible Foods also argued that Vanderhart’s testimony is unreliable because her calculations include expenses by Impossible Foods that are unrelated to advertising expenditures for allegedly infringing products. 

    The Court explained that the touchstone of corrective advertising damages is to restore the harm to the value of the asserted trademark which includes, among other things, marketing and advertising costs.

    As to Impossible Foods’ swag-related costs, Vanderhart was not required to separate marketing and advertising expenses from production costs because she explained that the swag items were themselves the advertising. Because the swag items were not offered for sale and were produced solely for promotional purposes, it would be reasonable to infer that the items themselves were the advertisements. That said, because Impossible LLC has not accused all swag items (e.g., water bottles, stickers, etc.) of infringement—and does not and cannot contend that the asserted trademarks even include those items—the Court agreed with Impossible Foods that her calculations are overinclusive. 

    While the Court will not exclude Vanderhart’s testimony in this respect, Impossible Foods will be permitted to impeach the correctness of her valuations through cross-examination and other evidence.

    As to Impossible Foods’ cookbook-related costs, Vanderhart’s testimony is excluded, since she relies exclusively on the cost of producing the cookbooks and does not include any expenses at all for marketing and advertising.

    Robert Palmatier

    Impossible Foods sought to only preclude Palmatier from testifying that corrective advertising damages may be calculated by applying a three-to-five multiplier to Impossible Foods’ marketing expenditures on the ground that this opinion is based “on a single academic paper,” namely, “a decades old study involving college students and radio advertising for mouthwash finding that three corrective impressions were required to correct one misimpression.”

    According to Impossible Foods, there is just “too great an analytical gap” between Palmatier’s multiplier opinion and the data upon which he relies.

    The Court did not read Palmatier’s multiplier opinion as narrowly as Impossible Foods did. Far from relying on a single outdated study, Palmatier explained why any harms to Impossible LLC’s brand equity caused by Impossible Foods’ alleged infringement would be “magnified” due to the “similarity of wordmarks due to other points of similarity,” “high level of marketing spend,” and “increased use of broadly-focused marketing.”

    Palmatier explained that linkages to unwanted and negative associations are more impactful and difficult to eliminate than positive associations and that these negative associations are particularly strong “due to the synergistic interaction” of multiple “magnifying factors” identifying industry practices of responding to such associations with targeted rehabilitative advertising.

    In articulating his reasoning, Palmatier relied on a variety of case studies and analyses and particularly pointed out how his multiplier opinion is based on the application of fundamental, well-accepted marketing principles.
    The Court accordingly agreed with Impossible LLC that Palmatier’s multiplier opinion is sufficiently supported to survive Impossible Foods’ Daubert challenge.

    John Plumpe

    Plumpe is Impossible Foods’ damages expert and has prepared a rebuttal report in which he argued that Vanderhart’s calculations are not a reliable estimate of corrective advertising damages.

    Plumpe asserted that Vanderhart’s damages calculation is speculative, unsupported, and would result in a windfall to Impossible LLC due to her failure to analyze the value of Impossible LLC’s marks, failure to account for Impossible LLC’s low revenues and marketing expenses, and “the lack of evidence of actual financial harm to [Impossible LLC] in the range contemplated by the prospective correcting advertising damages award.”

    Impossible LLC challenged Plumpe’s testimony on two primary grounds. First, Impossible LLC argued that several of his opinions (specifically, as to consumer confusion, corrective advertising, and search rankings) fell outside of the scope of his expertise as an economist and professional damages expert and are either irrelevant or unhelpful to the jury. Second, Impossible LLC argued that portions of Plumpe’s expert report included improper legal opinions that are not proper subjects of expert testimony.

    Despite Impossible LLC’s attempts to cast Plumpe’s testimony as venturing outside of his area of expertise (e.g., by improperly opining on “causation” and other “noneconomic” issues), the Court found that his opinions are properly limited to evaluating whether the damages claimed by Impossible LLC can be economically attributed to Impossible Foods’ alleged infringement. Specifically, Plumpe’s rebuttal report sets forth his economic reasoning and analysis for his conclusion that Vanderhart’s opinions failed to capture injuries plausibly attributable to Impossible Foods’ swag and cookbook by failing to account for external market forces.

    Regarding Impossible LLC’s argument that Plumpe improperly offered legal conclusions, the Court disagreed. It is permissible for Plumpe to explain the framework and underlying principles to orient the jury.

    Held

    • The Court granted in part and denied in part Impossible Foods’ motion in limine to exclude the testimony of Dr. Jennifer Vanderhart.
    • The Court denied Impossible Foods’ motion in limine to exclude the testimony of Dr. Robert Palmatier.
    • The Court denied Impossible LLC’s motion in limine to exclude the testimony of John Plumpe.

    Key Takeaway

    While it is true that Impossible LLC will not be able to recover corrective advertising damages without showing harm to its allegedly infringed marks, the Court is not aware of any authority suggesting that a damages expert must provide all the evidence required to support a damages award for their testimony to be admissible.

    Nor is the Court persuaded by Impossible Foods’ suggestion that Vanderhart’s testimony is “unreliable and unhelpful” absent a valuation of Impossible LLC’s asserted marks, since the jury is permitted to consider her testimony together with any other evidence presented at trial in considering the ultimate issue whether Impossible LLC’s marks have been harmed by Impossible Foods’ alleged infringement.

    Case Details:

    Case Caption: Impossible Foods Inc. V. Impossible X LLC
    Docket Number: 5:21cv2419
    Court Name: United States District Court, California Northern
    Order Date: February 26, 2026
  • Trademarks Expert Was Allowed to Opine on Protectable Rights

    Trademarks Expert Was Allowed to Opine on Protectable Rights

    In 2017, twin brothers Michael and David Postar split their interests in Affordable Storage, a self-storage business that they jointly owned and operated for many years. As part of the split, the brothers assigned certain registered trademarks associated with the business to a holding company in which they both own a 50% stake. Michael has exclusive rights to use those marks in Lubbock County, whereas David has exclusive rights to use them in Tom Green and Midland Counties.

    Years after the split, David, through his company Gargoyle Management, Inc., licensed a derivative of one of the marks to the brothers’ former employee, Gavin Hyland. Hyland and his wife operate their own self-storage business, Slaton Affordable Storage, Inc. Their two locations—one of which is in Lubbock County—are also named Affordable Storage.

    Michael sued the Hylands, David, and their companies for, among other things, trademark infringement, unfair competition, common-law misappropriation, and civil conspiracy. Generally, Michael alleges that the Defendants are violating federal and state law by using unauthorized derivatives of the Affordable Storage IP to compete against Michael in Lubbock County.

    Michael identified John M. Cone as his expert witness to testify about (1) whether Michael has protectable rights in various marks; (2) whether those rights have priority over the Hylands’ use of certain marks; and (3) whether the Hylands’ use of those marks is likely to cause confusion.

    In response, the Hyland Defendants filed a motion to exclude the expert testimony of Cone, an attorney who specializes in trademark law.

    Trademarks Expert Witness

    John M. Cone worked as an agent and attorney in intellectual property matters, first in England and subsequently in the United States, since before 1970, concentrating on trademark law.

    In England, he was a Chartered Patent Agent and a Member of the Institute of Trademark Agents. Cone was responsible for the worldwide trademark practice of the firm of patent and trademark agents of which he was a partner. In 1980, he moved to the United States, and in 1983 received a Doctor of Jurisprudence degree from Southern Methodist University, graduating cum laude. Cone had obtained a B.A.(Hons.) from the University of Oxford, England in 1968.

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

    Discussion by the Court

    1. According to the Defendants, Cone’s opinions in his expert report are impermissible legal conclusions

    At the outset, the Defendants did not challenge Cone’s qualifications as an expert. Nor did they challenge the reliability of the methodology underlying Cone’s expert report. Instead, they argued that the opinions in his report are impermissible legal conclusions that invade the province of the Court and merely tell the jury what result to reach.

    In their motion, the Defendants objected to 30 statements or opinions contained in Cone’s report. Each objection features the same stock argument: “This is an improper legal conclusion, seeking to tell the jury what law governs an issue and what the law means. It is not an opinion to help the factfinder understand the evidence or an issue in question.” Taken together, these objections effectively sought a blanket prohibition on Cone’s testimony.

    In response, Michael assured the Court that “Cone’s ‘legal conclusions’ will not be presented to the jury.” Moreover, he argued that there is no way to know at this point whether these purported “legal opinions” will “actually be offered at trial.” Besides, he said, nothing prevented experts from relying on legal authority in forming their opinions.

    In response to the Defendants’ 30 objections, Michael offered his own stock response: “This is not a legal conclusion because it does not omit the supporting facts; it is based on Cone’s analysis of the relevant sources as applied to his independent and objective review of the pleadings and other documents identified in his report.”

    ii. It is premature to exclude Cone’s expert testimony

    The Court denied the Defendants’ motion to exclude Cone’s expert testimony as premature.

    Cone was expected to testify that the Hylands’ use of certain marks is likely to cause confusion with marks owned by Postar IP. His opinions could be inadmissible to the extent they articulate a legal standard or tell the jury what result to reach.

    The Court required additional context to determine whether Cone’s opinions, if offered, would take the form of impermissible legal conclusions. The Defendants are effectively asking for a blanket ban on Cone’s testimony, yet his report offers potentially permissible opinions that do not necessarily constitute improper statements of law.

    Held

    The Court denied the Hyland Defendants’ motion to exclude the expert testimony of John M. Cone

    Key Takeaway

    Courts have found that the presence of impermissible legal conclusions in an expert’s report is not a sufficient basis to strike the entirety of his testimony, particularly where, as here, the report provides additional, potentially admissible opinions.

    Case Details:

    Case Caption: Postar V. Hyland
    Docket Number: 5:24cv19
    Court Name: United States District Court, Texas Northern
    Order Date: January 20, 2026
  • 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
  • Trademarks Expert’s Testimony on Fraudulent Procurement Excluded

    Trademarks Expert’s Testimony on Fraudulent Procurement Excluded

    This is a trademark infringement dispute between the franchisor, Spice Merchants Entities Corp., owned by Lisa Freeman, and its former franchisee, Pretty Colorado, owned by Corine Winslow. Freeman alleged violations of the “Breckenridge Tea & Spice” mark and claimed that Winslow and Pretty Colorado are using the same trade dress as the Spice franchises.

    Plaintiffs filed a motion to exclude the testimony of Defendants’ expert, Steven H. Weigler, Esq. Weigler is an expert in trademark prosecution and law and believes that expert testimony in the area of trademark practice, procedure, custom, usage, and law related to trademark rights and formal disputes can assist “even the most experienced judges” on issues of trademark.

    The gist of Plaintiffs’ argument is that Weigler’s testimony will not assist the trier of fact (in this case, the trial judge) because experts are not to state legal conclusions drawn by applying law to the facts.

    Trademarks Expert Witness

    Steven H. Weigler, Esq. is a trademark and intellectual property attorney who has prosecuted over 1,015 trademarks. He has litigated numerous trademark infringement lawsuits as well as trademark cancelation proceedings at the United States Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”). Weigler publishes frequently on the subject of trademarks and trade dress protection.

    He is an active member of the International Trademark Association, IR Global (Intellectual Property Section), and the World Trade Center. Weigler collaborates in written and video content with similarly situated trademark professionals and other practitioners. He teaches a course in International Intellectual Property Protection for the World Trade Center in Denver, Colorado.

    Want to know more about the challenges Steven H. Weigler has faced? Get the full details with our Challenge Study report.

    Discussion by the Court

    Plaintiff claimed that by using Breckenridge Tea and Spice to sell tea and spices, Defendants were causing confusion with Plaintiff’s mark. Defendants’ affirmative defenses claimed fraudulent procurement: i.e., the registered mark was fraudulently procured, thus making it unenforceable and/or cancellable.

    Defendants, via testimony they hoped to elicit from Weigler, argued that the trademark is in fact invalid as it is procured by fraud, and therefore the franchise documents contained misrepresentations, which presumably made the franchise agreement itself unenforceable.

    The Court found no likelihood of confusion with respect to Pretty Colorado and Winslow’s use of the BRECKENRIDGE TEA & SPICE mark or the supposedly proprietary trade dress. Moreover, Weigler’s opinion that Plaintiffs defrauded the trademark examiner usurped the role of the Court. As a result, the Court excluded Weigler’s opinions on those subjects.

    However, the Court deemed Weigler’s testimony about the process of trademark prosecution and how an applicant or the applicant’s attorney interacts with the USPTO’s examining attorney to be helpful.

    In other words, Weigler was not allowed to testify that he believes this to be an incident of fraud in trademark application process, but he was allowed to explain, as an expert in trademark prosecution, how the SPICE MERCHANTS and SPICE & TEA MERCHANTS marks came to be registered and whether this prosecution is consistent or inconsistent with the norms with which he is familiar as a trademark expert.

    Held

    The Court granted in part and denied the Plaintiffs’ motion to exclude the testimony of Defendants’ expert Steven H. Weigler, Esq.

    Key Takeaway:

    The judge, in this case, is not an expert in intellectual property, and it would be helpful to hear how a trademark prosecution occured.

    The Court believed that it would be helpful for Weigler to explain a trademark applicant’s obligations of candor to the USPTO, and the significance of the removal of “spices” from the description of the services being provided in connection with the attempted registration.

    Case Details:

    Case Caption: Spice Merchants Entities Corp. Et Al V. Pretty Colorado, LLC Et Al
    Docket Number: 1:24cv371
    Court Name: United States District Court, Colorado
    Order Date: July 07, 2025
  • Marketing Expert’s Consumer Confusion Survey Admitted

    Marketing Expert’s Consumer Confusion Survey Admitted

    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.

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

    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.

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

    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
  • Marketing Expert Witness Allowed to Testify Despite Her Relative Inexperience in the Field of Trademark Law

    Marketing Expert Witness Allowed to Testify Despite Her Relative Inexperience in the Field of Trademark Law

    This case concerns use of the term “XHALE” in connection with identical retail smoke shop services, marketing through the same channels, to the same customer base, and in Hattiesburg, on the same street, resulting in rampant actual confusion. Plaintiff Green Rush, LLC, d/b/a Xhale City claims that its federal trademark registration for “XHALE CITY” not only grants it nationwide priority, but presumptively valid trademark rights.

    Defendants hope that third-party use of the term “xhale” will be sufficient to cancel Plaintiff’s registration and negate likelihood of confusion.

    Green Rush opened its Hattiesburg, Mississippi, location on March 18, 2022, at 6062 Highway 98 (a/k/a Hardy Street), Hattiesburg, Mississippi. Prior to that, in the fall of 2020, Xhale Smoke Shop Defendants opened their first location at 4400 Hardy Street, Suite B8, in Hattiesburg, Mississippi. Since that time, Xhale Smoke Shop Defendants have opened five other Xhale Smoke Shop stores in the towns of Columbia, Seminary, Ellisville, Sumrall, and Prentiss, Mississippi, all within a forty-mile radius of Hattiesburg. Both Plaintiff and Defendants sell smoking and vaping related products.

    Defendants designated Dr. Katharine Howie, Ph.D., Assistant Professor of Marketing at the University of Southern Mississippi, as an expert in the field of branding and marketing. Green Rush argued that Howie is unqualified to offer testimony on the subject of trademarks, that she offers legal conclusions, and that her report is otherwise flawed in that her facts and methodology are unreliable.

    Marketing Expert Witness

    Katharine Howie, Ph.D., is an Assistant Professor of Marketing at the University of Southern Mississippi. Howie has worked in the field of business marketing, received her master’s and doctoral degrees in the field, taught a broad array of undergraduate and graduate courses on the subject, has prolifically published and presented in the field, and has conducted extensive research on brand activism, digital and social media marketing, as well as other related topics. 

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

    Discussion by the Court

    Katharine Howie explored the potential legal protection for the term “xhale” in the smoking and vaping industry. After conducting a review of trademark records, business listings, and Google and social media search data, Howie concluded that “xhale” is not a “source signifier” and that a “plethora of other companies within the vaping industry use this exact word and spelling in their operating name.” 

    Howie also examined search traffic on Google and determined that a large volume of consumers search specifically for “xhale,” but the majority do not navigate to “Xhale City,” whereas a “preponderance of Xhale City’s web traffic is derived from searchers explicitly searching for ‘xhale city’ either in isolation or with additional words.”

    A. Dr. Howie’s Qualifications

    Plaintiff argues that Howie’s CV does not indicate any expertise, training, or experience in determining consumer awareness of trademarks and, therefore, she is not qualified to make expert conclusions on such matters.

    The Court finds that Howie’s relative inexperience in the field of trademark law does not preclude her from testifying in this case as an expert on marketing and branding. The Court held that Plaintiff’s concerns about Howie’s opinion testimony are best tested by vigorous cross-examination and presentation of contrary evidence.

    Plaintiff also argued that Howie’s report presents improper legal opinion. The Court holds that an opinion is not objectionable just because it embraces an ultimate issue; however, an expert may never render conclusions of law. It is the Court’s job, not an expert witness’s, to instruct the jury as to the applicable law. To the extent that Howie’s report and proposed testimony may render conclusions of law, the Court held that it is inadmissible. However, she is free to testify about her experience in branding and marketing, the research supporting her report, any quantifiable conclusions she has reached, and the facts supporting her report and opinion, even if her opinion embraces an ultimate issue.

    B. Data and Methodology

    Plaintiff argued that Howie’s report is inadmissible because it is not based on sufficiently reliable facts or data that have evidentiary support, and fails to provide any methodology whatsoever.

    The Court held that its gate-keeping obligation applies to all types of expert testimony, not just scientific testimony. Whether Daubert’s suggested indicia of reliability apply to any given testimony depends on the nature of the issue at hand, the witness’ particular expertise, and the subject of the testimony. It is a fact-specific inquiry. The Court’s responsibility is to ensure that an expert in the courtroom employs the same level of intellectual rigor that characterizes the practice of an expert in the relevant field.

    The Court concluded that Howie is qualified in the field of marketing and branding and that her testimony and report are reliable based on her experience and specialized knowledge in her field. In other words, her report is not so fundamentally unsupported that it cannot possibly help the jury. While Howie’s report is not extensive, it is straight-forward and to the point.

    Held

    The Plaintiff’s motion to exclude the testimony of marketing expert witness, Katharine Howie is granted in part and denied in part.

    Key Takeaways:

    Howie’s relative inexperience in the field of trademark law did not preclude her from testifying in this case as an expert on marketing and branding. While Howie’s report is not extensive, it is straight-forward and to the point. Howie’s approach, method, rationale, and the data gathered by her internet and other searches are plain and within the grasp of the Court, as they will be for a jury.

    Case Details:

    Case Caption: Green Rush, Llc V. Xhale Tobacco & Hookah, Inc. Et Al
    Docket Number: 2:23cv71
    Court: United States District Court for the Southern District of Mississippi, Eastern Division
    Order Date: October 10, 2024
  • 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
  • Intellectual Property Expert Witness’ Testimony About Trademark Custom and Usage Admitted

    Intellectual Property Expert Witness’ Testimony About Trademark Custom and Usage Admitted

    This is a trademark infringement case involving the trademarked phrase “Freedom Pop”. Plaintiff Proccor Pharmaceuticals, Inc. (“Proccor”) contended that Defendant GAT Sports infringed upon its alleged trademark for a “Freedom Pop” flavored Pre-Rx pre-workout supplement. GAT Sports essentially argued that the phrase was used in a non-trademark, descriptive, way to describe the flavor of its product.

    The Plaintiff has retained Neil Smith as an expert to testify to various matters. Smith proposed to testify about the following:

    1. The Freedom Pop trademark application was not for a flavor;

    2. The specimen submitted for the Freedom Pop trademark application was filed in a procedurally proper manner;

    3. Proccor’s use of the trademark on the product was a legitimate trademark use;

    4. The requirements for trademarking Freedom Pop were met and the USPTO did not object to the specimen of use;

    5. The Freedom Pop trademark is not a flavor trademark; and

    6. The use of trademark in a list of flavors for “marketing purposes” “does not a flavor trademark make”.

    Defendants requested that this Court enter an order precluding Plaintiff
    from offering at trial the testimony and opinions proffered by Neil Smith.

    Intellectual Property Expert Witness

    A former judge with the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, Neil Smith has been an officer in many legal organizations, including President of the San Francisco Patent and Trademark Law Association, a member of the Board of Directors of the American Intellectual Property Law Association, and a founder and President of the Bay Area Intellectual Property American Inn of Court. He served on several ADR panels and is trained in arbitration, mediation, and early neutral evaluation.

    He brings a wealth of expertise across a wide spectrum of intellectual property matters. 

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

    Discussion by the Court

    Defendants argued that Smith’s opinions are not helpful to the trier of fact in resolving a fact in dispute, that the opinions are inadmissible legal conclusions, that the opinions stand athwart the factual record, and that the opinions attempt to speculate about a state of mind.

    Plaintiff observed that the Defendants’ motion is “difficult to follow because it does not cite to or quote the portions of Smith’s expert report that contain the opinions Defendants seek to exclude. Instead, it sweeps with a very broad, vague brush leaving the Court and Plaintiff guessing exactly what is sought to be excluded.”

    Qualifications

    A review of Smith’s background and the substance of his report reveals that he is a lawyer admirably trained in intellectual property law; thoroughly experienced in trademark practice and procedure; and familiar with both intellectual property disputes and the customs and practices prevalent in applying for, and granting, trademarks for a variety of products, including words, flavors, and smells. Further, Smith’s report reveals that his opinions address practice, procedure, custom, usage, and results common and accepted in the pertinent industry. Therefore, the Court held that his opinions are based directly on his training, experience, and observation and evince the necessary attributes of reliability.

    Legal Conclusions

    Especially because jurors are unfamiliar with the language, the procedure, and the practice of protecting a trademark, a properly qualified expert can testify about practice, procedure, custom, and usage in the industry, for which Smith is amply qualified. Of course, whenever a lawyer testifies about matters touching the law, the examiner must properly phrase the questions and the witness must properly constrain his responses to avoid offering an improper legal conclusion; instructing the jury on the law is the exclusive province of the judge. But providing orientation to the topic of, and the context for, the dispute, even though both occur within confines described by the law, is most helpful to a jury. The Court held that describing custom and usage in a pertinent industry and describing typical means and methods (that is, practice and procedure) is not the illicit offering of a legal opinion or conclusion.

    Speculation 

    As to the objection about Smith’s opinions allegedly conflicting with the record, an expert may assume facts stated by the examiner and offer an opinion based on the assumed facts; if the assumed facts are disproven and rejected by the jury, the expert’s opinion likely suffers rejection. In other words, the Court held that the issue is the weight of the opinion and the likely success of the opinion but not the admissibility of the opinion.

    The Court observed that the Defendants’ objection that Smith’s opinions address a “state of mind” and are therefore inadmissible receives only perfunctory treatment in the motion and remains ambiguous. But an accusation that an opinion is “untethered to reality,” although gratifying to the accuser, is not easily comprehensible when directed to the opinions offered by Smith in his report. For example, Smith observes that certain holders of certain marks advertise and sell their products using terms in the sense of ordinary usage to convey a message to the market and that the usage is not controlling over the legality of a trademark or whether something is, for trademark purposes, for example, a flavor or a distinct product, regardless of flavor.

    In all events, the Court decided that Smith neither proposes to, nor will the law permit him to, speculate about someone else’s state of mind, but he may testify about trademark custom and usage in the industry, for which he is at least sufficiently qualified.

    Held

     The Court denied the Defendants’ motion in limine to exclude the testimony of Plaintiff’s expert Neil Smith.

    Key Takeaways:

    • Describing custom and usage in a pertinent industry and describing typical means and methods (that is, practice and procedure) is not the illicit offering of a legal opinion or conclusion.
    • Moreover, Smith’s opinions are based directly on his training, experience, and observation and evince the necessary attributes of reliability.

    Case Details:

    Case Caption: Proccor Pharmaceuticals, Inc. V. World Health Products, Llc Et Al
    Docket Number: 8:22cv2227
    Court: United States District Court, Florida Middle
    Order Date: September 30, 2024
  • Accounting Expert Witness Barred from Testifying because He Used Simple Addition to Derive Infringing Sales

    Accounting Expert Witness Barred from Testifying because He Used Simple Addition to Derive Infringing Sales

    Plaintiff, a prominent telecommunications service provider, has established the well-known marks “LIGHTSPEED” and “LIGHTSPEED VOICE” in connection with its telecommunications services. When Defendant opened a business called LIGHTSPEED CONSTRUCTION GROUP, Plaintiff alleged that the mark was nearly identical to its marks in connection with the offering of confusingly similar telecommunications services.

    Plaintiff added that such use creates a likelihood of confusion with Plaintiff’s customers.

    In this trademark infringement case, Plaintiff sought, among other things, disgorgement of Defendant’s profits during the period of alleged infringement.

    Plaintiff obtained an expert report from accountant Kevin Kwan. Defendant claimed that the report simply added two numbers together and filed a motion to exclude his testimony. 

    Accounting Expert Witness

    Kevin Kwan has over 23 years of experience providing consulting and expert witness services in various business disputes, complex commercial litigation matters, and financial investigations. Kevin’s experience includes development of complex financial models, as well as compilation, organization, and analysis of large volumes of historical data through the development of databases. 

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

    Discussion by the Court

    Defendant did not contest Kwan’s qualifications or reliability, but argued that his testimony would not be helpful to the factfinder.

    The Court found that Kwan’s relevant testimony is limited to calculating Defendant’s sales. He also opined that “disgorgement of Defendant’s profits appear[s] to be a reasonable measure of monetary relief in this matter.” But the appropriate form of relief in this case is a legal conclusion, and expert witnesses “may not offer legal conclusions” outside of exceptional circumstances.

    Since the Court has already determined that actual damages for injuries like lost profits are inappropriate, Kwan’s support for a disgorgement remedy was—at best—an unnecessary restatement. Besides, Kwan offered that conclusion because he “did not see any particular lost profits that could be claimed” by Plaintiff.

    In trademark cases, profits subject to disgorgement are calculated as the infringing sales less the incremental costs associated with those sales. Yet Kwan “did not perform an analysis of Defendant’s incremental costs associated with generating the infringing sales.” He also admitted that he has no opinion on Defendant’s costs. Kwan’s testimony is, therefore, limited to the amount of Defendant’s sales during the alleged infringement.

    Kwan’s estimate of Defendant’s infringing sales is the sum of two numbers. The numbers originated from two documents that Defendant produced to show their sales in 2022 and 2023. Kwan added these numbers together to derive Defendant’s total infringing sales. The Court held that simple addition is within the bailiwick of the average lay person and can be presented in closing arguments. Therefore, Kwan’s testimony does not merit admission.

    Held

    The Court granted Defendant’s motion to exclude the testimony of Kevin Kwan and excluded Kwan from testifying at trial.

    Key Takeaways:

    • The appropriate form of relief in this case is a legal conclusion, and expert witnesses “may not offer legal conclusions” outside of exceptional circumstances.
    • Simple addition is within the bailiwick of the average lay person and can be presented in closing arguments. Expert testimony generally will not help the trier of fact if it “offers nothing more than what lawyers for the parties can argue in closing arguments.”

    Case Details:

    Case Caption: Lightspeed Clec, Inc. V. Lightspeed Construction Group Llc
    Docket Number: 8:23cv97
    Court: United States District Court, Florida Middle
    Order Date: July 18, 2024
  • Market Research Expert Witness’ Testimony Deemed Admissible Because of His Experience Conducting Surveys

    Market Research Expert Witness’ Testimony Deemed Admissible Because of His Experience Conducting Surveys

    Plaintiff, Wheel Pros, LLC and Defendants, Rhino Tire USA, LLC are engaged in the business of selling wheels and tires for vehicles and each owns trademarks in its respective brand. Wheel Pros owns various trademarks related to its “Black Rhino” brand and Rhino Tire own trademarks for their “Rhino” brand.

    Plaintiff brought this action against Defendants for trademark infringement alleging the the public is likely to be confused by the similarities between the marks. In support of its case, Plaintiff proffered the expert report of Dr. Robert A. Peterson. Peterson conducted a forward likelihood of confusion survey designed to determine the likelihood of confusion between Plaintiff’s “Black Rhino” trademarks and Defendant’s “Rhino” trademarks within a target universe of survey respondents.

    In rebuttal to Peterson’s report, Defendants proffered the expert report of Dr. Henry D. Ostberg. Ostberg offered opinions as to what he termed “significant problems and fatal defects” with Peterson’s survey.

    Plaintiff filed a motion to exclude Ostberg’s rebuttal expert report and preclude him from testifying at trial pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow. Pharm., Inc., 509 U.S. 579 (1993).

    Market Research Expert Witness

    Henry D. Ostberg has over 40 years of experience in conducting marketing research and has conducted or overseen over 2,000 consumer surveys for various clients over that time. He earned an M.B.A. degree and a Ph.D. degree in marketing from Ohio State University and earned an L.L.B. law degree from New York Law School. Moreover, Ostberg has served as a marketing research expert in connection with trademark and intellectual property litigation in over 200 cases, has been a frequent speaker “on the subject of marketing, the use of surveys and related topics before a variety of professional organizations,” and was on the faculty of both New York University and Ohio State University.

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

    Discussion by the Court

    Dr. Ostberg’s Qualifications to Testify

    First, Plaintiff argued that Ostberg was not qualified because he testified and stated in his report that he was not familiar with Peterson’s methodology.

    At his deposition, Ostberg admitted his lack of familiarity with Peterson’s “modified sequential evaluation” approach. However, Ostberg made these statements based on his experience in the field of conducting surveys in similar circumstances rather than due to any purported lack of experience or qualification.

    Upon consideration of Ostberg’s qualifications, the Court held that he is sufficiently qualified to criticize Peterson’s methodology in his rebuttal report and at trial.

    Reliability of Opinions

    1. Improper Research Design

    To begin with, Plaintiff argued that Ostberg’s opinions were unreliable because his conclusions were not based on his status as an expert or any research into that area, he was not familiar with the method employed by Peterson, and he mischaracterized the way in which Peterson’s survey was conducted.

    The Court found that Ostberg relied on his experience in conducting surveys under similar circumstances, his review of Defendants’ website in marketing its products, conversations with Defendants’ attorney, and his experience as a consumer to conclude that the methodology employed by Peterson was inappropriate.

    In other words, Ostberg’s methodology in criticizing Peterson’s research design was sufficiently reliable to permit his testimony at trial.

    2. Wrong Respondents Interviewed

    Ostberg next opined that Peterson’s survey was flawed because it failed to base its data on respondents who were likely to be future purchasers of Defendants’ products.

    The Court found Ostberg’s methodology in raising such “technical deficiencies” with Peterson’s survey pursuant to the prevailing literature and practice to be sufficiently reliable to survive Plaintiff’s Daubert motion.

    3. Research Design Changed Midway

    Ostberg criticized Peterson’s use of a pilot study that resulted in a change to the survey. In particular, Ostberg stated that Peterson’s report failed to include a “credible explanation” for modifying his survey after the pilot study. The Court found Ostberg’s methodology in reaching this opinion sufficiently reliable. In other words, Plaintiff’s arguments challenging this opinion largely go towards whether Ostberg reached the right conclusion in applying his method and are therefore inappropriate to justify excluding Ostberg at this stage.

    4. Inappropriate Statistical Calculations

    Ostberg also opined regarding the statistical calculations in Peterson’s survey. Specifically, Ostberg noted that Peterson’s survey “did not have a probability sample,” yet the statistical calculations used are “applicable only to surveys based on true probability samples of respondents, according to many statistical texts.”

    The Court noted Ostberg’s experience conducting consumer surveys in trademark litigation and, once again, found Ostberg’s method sufficiently reliable to permit his testimony.

    5. Internal Data Casts Doubt on the Validity of the Findings

    Now, Ostberg opined that the data collected in Peterson’s control group survey casts doubt on the validity of the survey itself because a 51.7% likelihood of confusion between Plaintiff’s trademark and the non-infringing control mark was abnormally high. Ostberg’s conclusion in this opinion did not cite to specific authority, but rather impliedly relied on his own education and experience with conducting similar surveys for over four decades. As with Ostberg’s other opinions, the Court found this opinion sufficiently reliable to preclude exclusion of the opinion at this stage.

    Helpfulness to Trier of Fact

    Finally, Plaintiff argued that Ostberg’s opinions will not be helpful to the jury.

    The Court held that since Ostberg is being proffered to criticize Peterson’s forward likelihood of confusion survey, a technical matter in which Ostberg has sufficient experience and that is beyond the understanding of the average lay person, Ostberg’s opinions will be of assistance to the jury at trial.

    Held

    To conclude, the Court denied Plaintiff’s Daubert motion to strike testimony and opinions of Henry D. Ostberg, Ph.D.

    Key Takeaways:

    • Ostberg relied on his experience in conducting surveys under similar circumstances, his review of Defendants’ website for marketing their products, conversations with Defendants’ attorney, and his experience as a consumer to reach his conclusions.
    • Moreover, Ostberg’s analysis is grounded in his experience conducting consumer surveys in trademark litigation, as well as scholarly literature regarding the type of statistical analysis necessary in the survey conducted by Peterson.
    • Because Peterson’s forward likelihood of confusion survey is a technical matter that is beyond the understanding of the average lay person, Ostberg’s opinions were considered helpful to the trier of fact.

    Case Details:

    Case Caption: Wheel Pros, Llc V. Rhino Tire Usa, Llc Et Al
    Docket Number: 6:22cv2171
    Court: United States District Court, Florida Middle
    Order Date: July 18, 2024