Susan M. Natland Trademark Enforcement Methods and Surveys From a Practitioner's Perspective
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Trademark Enforcement Methods and Surveys From a Practitioner’s Perspective March 4, 2021 Susan M. Natland Southern Illinois University
Typical Trademark Enforcement Strategies
• Takedown notice
• Cease and desist letter
• UDRP proceeding
• Opposition or Cancellation Proceeding
before Trademark Trial and Appeal Board
• Lawsuit
© 2021 Knobbe Martens 2
Takedown Notices
• Many online platforms such as marketplaces and social media sites have
takedown notice forms
• Allows rights holders to identify acts of trademark and copyright infringement
on platform
• Online platform will review allegations and determine whether to remove
content
• Pros:
– Inexpensive
– Quick resolution
• Cons:
– Content may not be removed
– Infringer may pop up again
– May not resolve all acts of infringement
© 2021 Knobbe Martens 3
Cease and Desist Letters
• Send a letter to infringer and request that they stop acts of infringement
• Pros:
– Inexpensive
– Provides other side with notice of infringement
• Cons:
– May result in protracted letter writing campaign
– Other side may not respond or agree to demands
© 2021 Knobbe Martens 4
UDRP Actions
• Legal actions brought for resolution of disputes regarding registration of
domain names
• Decided by a panel provided by National Arbitration Forum and World
Intellectual Property Organization, among others
• Remedy: Transfer of domain name
• Process:
– Complaint filed
– Response filed
– No discovery
– Decision issued by Panel
© 2021 Knobbe Martens 5
Pros and Cons of UDRP Actions
• Pros:
– Inexpensive
– Fast resolution
– International jurisdiction
• Cons:
– No monetary award
– Only available in limited circumstances:
• Infringing mark must be in domain name;
• Registrant must have no legitimate interest in domain name; and
• The domain name must be registered and used in bad faith
© 2021 Knobbe Martens 6
TTAB Oppositions and Cancellations
• Action brought before Trademark Trial and Appeal Board at the USPTO to determine
right to federal trademark registration
• Remedy: Refusal of registration
• Grounds include:
– Likelihood of confusion
– Abandonment
– Fraud on the PTO
– Lack of Bona Fide Intent to Use
– Descriptive
– Generic
• Similar process to litigation in federal court
– Pleadings
– Discovery
– However, no live trial
© 2021 Knobbe Martens 7
Opposition/Cancellation Pros and Cons
• Pros:
– Less expensive than litigation
– May have preclusive effect in later litigation
• Cons:
– No monetary award
– Remedy limited to refusal of federal registration / no ability to stop use
© 2021 Knobbe Martens 8
Lawsuits
• File complaint for trademark infringement in federal court
• Pros:
– Ability to stop all infringing use
– Damages available
• Cons:
– Expensive
– Time consuming
– Intrusive discovery
© 2021 Knobbe Martens 9
How to Prove a Claim of Trademark Infringement
• To succeed on a claim of trademark infringement, Plaintiff must prove the
following things:
1. Plaintiff owns a symbol, term, or product design or packaging
as a trademark or trade dress;
2. Plaintiff’s symbol, term, or product design or packaging is a valid
trademark or trade dress;
3. Defendant used the symbol, term, product design or packaging in
interstate commerce;
4. Defendant used the symbol, term, product design or packaging in a
manner that is likely to cause confusion, mistake, or deception as to
the source, origin, sponsorship, or approval of Defendant’s product;
5. Plaintiff’s claimed trade dress is not functional (if trade dress claim).
© 2021 Knobbe Martens 10Seventh Circuit Likelihood of Confusion Factors
• Whether the overall impression created by Defendant’s trademark or trade dress is
similar to that created by Plaintiff’s trademark or trade dress;
• Whether Defendant and Plaintiff use their trademarks or trade dress on the same or
related products;
• Whether Plaintiff’s and Defendant’s products are likely to be sold in the same or
similar stores or outlets, or advertised in similar media;
• The degree of care that purchasers or potential purchasers are likely to exercise in
buying or considering whether to buy the product;
• The degree to which purchasers or potential purchasers recognize Plaintiff’s
trademark as an indication of the origin of Plaintiff’s product;
• Whether Defendant’s use of the trademark or trade dress has led to instances of
actual confusion among purchasers or potential purchasers about the source, origin,
sponsorship, or approval of Defendant’s product. However, actual confusion is not
required for finding a likelihood of confusion;
• Whether Defendant intended to pass off his product as that of Plaintiff, or intended to
confuse consumers.
© 2021 Knobbe Martens 11Common Affirmative Defenses • Nominative Fair Use • Classic Fair Use • Laches/Acquiescence • Abandonment • Generic • Continuous prior use © 2021 Knobbe Martens 12
Why Use Litigation Surveys?
Likelihood of § What is the likelihood of confusion
Confusion associated with this brand name or
trade dress?
© 2021 Knobbe Martens 13Who Uses Surveys?
• Federal and State Courts
• International Trade Commission
• Federal Trade Commission
• National Advertising Division of Better Business Bureau
• Examining Attorneys at U.S. Patent and Trademark
Office
• Trademark Trial and Appeal Board
• Arbitration Forums
© 2021 Knobbe Martens 14Likelihood of Confusion Survey Methodology © 2021 Knobbe Martens 15
Use of Control
• The control reflects measurement levels due to pre-existing attitudes and
other extraneous factors or “noise”
• A control:
– Does not have to be a real product
– Should use as many elements of the test product as possible – colors,
fonts, meaning, etc.
– The control should be similar to the test product except for the element
that is under dispute
© 2021 Knobbe Martens 16Control Examples
Test Control
Test Control
© 2021 Knobbe Martens 17Test Stimuli • Must replicate marketplace conditions • Clearly show the product and mark © 2021 Knobbe Martens 18
Eveready Survey Questions
1. What company do you believe makes or puts out the product you just viewed?
2. What makes you think that?
3. Are you aware of any other products or brands made or put out by the company that
makes or puts out the product you just viewed?
Yes, I am aware of other products or brands made or put out by the company
that mares or puts out the product I just viewed
No, I am not aware of other products or brands made or put out by the
company that makes or puts out the product I just viewed
I don’t know
4. What other products or brands do you think are made or put out by the company that
makes or puts out the product you just viewed?
5. What makes you think that?
© 2021 Knobbe Martens 19Eveready Survey Questions Continued
6. Do you think that whoever makes or puts out the product you just viewed…
Is sponsored or approved by another company or brand
Is not sponsored or approved by another company or brand,
Or, you don’t know
7. What other company or brand do you believe sponsored or approved whoever makes
or puts out the product you just viewed?
8. What makes you think that?
© 2021 Knobbe Martens 20Squirt or Line-Up Survey Questions
1. Do you believe this product is made or put out by the same company as the company
whose product you saw in the first section of this survey or do you believe it is made
or put out by a different company?
2. What specifically about this product makes you believe it is made or put out by the
same company as the company whose product you saw in the first section of this
survey?
3. Do you believe the company that makes or puts out this product has a business
connection, affiliation, or association with the company whose product you saw in the
first section of this survey or do you believe it does not have a business connection,
affiliation, or association with the company whose product you saw in the first section
of this survey?
4. What specifically about this product makes you believe it is made or put out by a
company that has a business connection, affiliation, or association with the company
whose product you saw in the first section of this survey?
© 2021 Knobbe Martens 21Measuring Secondary Meaning
• Before today, have you ever seen a vehicle with the overall appearance of
the vehicle in the pictures?
• (If “Yes:”) Do you associate the overall appearance of the vehicle in the
pictures with vehicles from one company or brand, more than one company
or brand, no company or brand, or I don’t know?
• (If “One”:) Why do you say that?
• (If “One”:) What company or brand do you associate with the overall
appearance of the vehicle in the pictures?
© 2021 Knobbe Martens 22Measuring Genericness © 2021 Knobbe Martens 23
Recent Supreme Court Case – Booking.Com • Recent Supreme Court Decision turned on a results of a trademark survey. • Booking.com case involved a Teflon study to measure genericness © 2021 Knobbe Martens 24
Recent Supreme Court Case – Booking.Com
• Facts: Booking.com applied to register the mark "Booking.com“. The USPTO
refused registration, concluding that "Booking.com" is a generic name for online hotel-
reservation services. In the USPTO’s view, a generic term combined with a generic
top-level domain (like .COM) remains generic.
• Procedural History:
– TTAB affirmed the Examining Attorney’s refusal to register, concluding that
"Booking" means making travel reservations and ".com" signifies a commercial
website such that customers would understand the term "Booking.com" primarily
to refer to an online reservation service for travel.
– U.S. District for the Eastern District of Virginia, which determined
“Booking.com”—unlike the term “booking” standing alone—is not generic, based
on evidence of consumer perception provided by Booking.com. The Fourth
Circuit affirmed the District Court's ruling that the mark is not generic.
© 2021 Knobbe Martens 25Recent Supreme Court Case – Booking.Com
• Supreme Court Findings:
– Whether a name is generic turns on whether consumers perceive the
name to be generic (i.e., primary significant test meaning the primary
significance of the mark to the relevant public).
– Survey evidence (Teflon survey) supported that consumers do not
perceive the Booking.com name to be generic.
» 74.8% of all respondents identified “Booking.com” as a brand name
– Because “Booking.com” is not a generic name to consumers, it is not
generic.
– The Supreme Court also refused to adopt the USPTO’s proposed
categorical rule that a generic term + generic top-level domain is always
generic.
© 2021 Knobbe Martens 26Susan M. Natland Susan.natland@knobbe.com 949.721.2909
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