AMS Survey Expert, Brian Sowers, Associate Principal, Jacqueline A. Chorn, and Associate Principal, Marcello Santana, Esq., recently presented a webinar, Surveys in Trademark Litigation. In the following blog, AMS experts answer the questions they did not have time to address during the webinar:
Q: When using surveys in patent cases, how are the surveys used to adjust damage calculations? Is the survey result used to adjust the royalty rate, royalty base, overall damages number, or used in some other way?
A: In patent cases, survey data is typically used by an economist to address overall damages. The survey data is used to help quantify the impact of the alleged infringement on revenue. Once the survey data is collected, an economist uses it to help quantify how much business would be lost if the allegedly infringing feature was modified or removed and to potentially calculate a reasonable royalty in order to license the invention or patent, which may come in the form of a one-time royalty payment or as a percent of revenue.
Sometimes the survey data shows that the removal or implementation of a non-infringing alternative is just as good as the alleged infringement. Other times, the data may show that the removal or implementation of a non-infringing alternative will have a major impact on revenue. Regardless of the findings, the consumer perception data is used by an economist to try and simulate what a hypothetical negotiation would have looked like before the infringement to make sure that ongoing settlements are reasonable.
Q: Do you believe that the Booking.com case will have any impact on survey evidence, and if so, what?
A: So for our blog readers, the U.S. Supreme Court recently upheld a lower court ruling that BOOKING.COM is a protectable trademark after the U.S. Patent and Trademark Office (USPTO) had initially refused registration of the mark. The Court was tasked with determining whether a mark that added .com to a generic term could acquire distinctiveness and the Court ultimately ruled that BOOKING.COM is a protectable trademark. In making its determination, the Court relied heavily on a consumer perception survey that revealed that nearly 75% of respondents identified BOOKING.COM as a brand name. Although this ruling does not mean that all generic.com terms will automatically be deemed non-generic, it does open the possibility for generic or descriptive marks to obtain trademark protection.
As for the question posed, we do not suspect that this case will have any impact on survey evidence itself. The survey conducted in the Booking.com case was based on a well-established, accepted survey format (i.e., a Teflon survey) designed to measure whether consumers view a mark as a brand or generic name. Moreover, the survey was conducted by a qualified expert who relied on valid and reliable methodology. However, we do suspect that this case may encourage more litigators to seek survey evidence in support of their cases as the Court demonstrated that consumer data can be powerful when determining genericness. We also suspect that we will see an increase in requests for surveys to measure how consumers view descriptive or generic domain names.
Q: How much lead time do you need to do a survey before an expert report is due?
A: Lead time can vary considerably depending on the type of survey you want to conduct. For a typical survey that can be conducted online, we generally request 4 – 6 weeks from project initiation through the delivery of an expert report. However, other surveys may require less time or more time depending on the complexity and modality. For example, we’re often contacted to conduct surveys in support of a preliminary injunction motion, in which the timeline is extremely tight. If the survey can be conducted online and is relatively straightforward, and our schedule permits, we do our best to accommodate a shorter timeframe. If, on other hand, a mall study is required, the timeframe may be several months. Or if survey respondents are particularly difficult to recruit (e.g., doctors, farmers, etc.) then it may lengthen the overall project timeline. The best idea is to reach out early and start the search for a qualified expert as soon as you suspect you may need survey evidence.Q: Can you "protect" the results of a "bad" initial survey after litigation starts?
A: If you get “bad” results after conducting a pilot survey, you can always stop the research. Because the survey expert is not providing an opinion based on the survey, it would not be necessary to disclose that a survey was conducted. However, it is unlikely that you would want to use that same expert for another survey in the same litigation. In that case, it would not be possible to “protect” the bad initial results as the expert may be asked about the results of prior surveys in deposition or trial and is under oath to be truthful. However, if you’ve given yourself sufficient time, you may be able to retain a different expert if you felt the results would be more favorable using a different methodology. That is, assuming the new expert would agree to that approach.