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  • Applied Marketing Science’s Survey and Rebuttal Held to be Relevant and Entitled to Significant Weight in Supporting District Court’s Affirmation of TTAB Decision

Applied Marketing Science’s Survey and Rebuttal Held to be Relevant and Entitled to Significant Weight in Supporting District Court’s Affirmation of TTAB Decision

The recent Illinois Tool Works Inc., v. Poly-America L.P., No. 3:18-cv-00443-C (N.D. Texas. Sep. 26, 2019) case involves a dispute that has been going on for years involving the functionality of colored zipper closures on consumer storage bags. Poly-America L.P. (“Poly America”) is a manufacturer and supplier of plastic film and bag products, who has attempted to enter the reclosable consumer storage bag market using colored closures. Illinois Tool Works, Inc. (“ITW”) is the owner of three product configuration trademarks, also known as the “Color Line Trademarks”, and over the years ITW has taken the position that the manufacture or sale of reclosable consumer storage bags with a color line on the zipper closure infringes on their registrations. ITW’s Color Line Trademarks were the only remaining impeding obstacle to Poly-America’s entry into the reclosable consumer storage bag market.

In 2013, Poly America filed a Petition for Cancellation with the USPTO seeking cancellation of ITW’s Color Line Trademarks. In support of Poly America’s Petition, Applied Marketing Science, Inc. Chairman and trademark survey expert Robert Klein conducted a survey in 2014 to determine whether consumers prefer plastic bag products that use color on the reclosable fastener to those that do not, and if so, what factors drive that preference. Mr. Klein’s survey results showed that “relevant consumers would prefer to purchase a reclosable plastic bag with a colored horizontal fastener strip compared to a bag with a colorless horizontal fastener strip… In addition, approximately two-thirds of the respondents who selected the bag with the colored fastener strip referenced one or more functional benefits of the colored strip when explaining their purchase choice.” Based on Mr. Klein’s survey and other evidence, in 2017 the TTAB granted Poly America’s Petition for Cancellation finding that the ITW’s Color Line Trademarks were functional.

Then in 2018 ITW filed a lawsuit requesting review and reversal of the TTAB decision. In this most recent case, the District Court conducted a de novo review of only a portion of the record. The court found that the relevant evidence weighed significantly in favor of functionality and the court ultimately affirmed the TTAB’s decision to cancel ITW’s Color Line Trademarks. One example cited in support was Mr. Klein’s 2014 trademark survey which the court found “confirm[ed] that ITW’s marks covering the use of color on plastic bag reclosable fastener strips gives ITW a significant non-reputational competitive advantage.” The court further stated that “Mr. Klein’s 2014 testimony about his survey is quite relevant and entitled to significant weight.” ITW hired its own trademark survey expert to conduct a survey to determine the “extent to which the Color Line Trademark on a resealable plastic bag function to make the bag easier for a consumer to use.” However, the court held that ITW’s expert’s survey was “seriously flawed” and thus the “resulting opinions and testimony [were] not credible.” The court gave credit to the testimony of Mr. Klein as it related to the flaws in ITW’s expert’s survey.

This is a case where hiring a trademark survey expert to both conduct a consumer survey and prepare a rebuttal report served as powerful evidence in supporting a client’s case. AMS survey experts are experienced in conducting consumer surveys and have a strong understanding of the legal standards for survey research in trademark litigation. To learn more about AMS trademark survey experts and our Litigation Support services, please contact Jason Och at joch@ams-inc.com.

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