A 2015 article1 published by Shari Diamond and David Franklyn reports the results of a survey(!) of trademark attorneys on the role that surveys play in the ultimate resolution of a case. They note that a “consumer survey that measures consumer confusion is an effective way to ensure that trademark infringement cases are decided based on empirical facts about likely consumer confusion instead of on judicial assumptions about how consumers are likely to respond.” 2 But a number of scholarly papers examining the role of surveys in trademark litigation have raised questions about the prevalence of surveys and their influence on the result of litigation.
In contrast to earlier work that relied on published opinions in bench trials, the survey by Diamond and Franklyn uncovered widespread use of surveys in trademark and false advertising cases and confirm the substantial influence that surveys have on the disposition of cases before trial. In over half the cases, the survey convinced one of the parties not to pursue the claim or to settle the case. “Surveys are valuable tools in trademark litigation, even when they are not deployed in trial. They provide an important reality check on mark evaluation and effective leverage in settlement negotiations. Surveys help inform clients and shape strategy with insight into actual consumer perceptions and their legal significance.” 3
Diamond and Franklyn also explain why earlier studies of the use and impact of survey could have led to the perception that they were a relatively minor factor in litigation. Every circuit has its own multi-factor set of criteria (e.g. “Polaroid” or “Sleekcraft”) for judging infringement, but these factors are not all equally important. When the same or very similar marks are on the same goods, surveys are rare. Alternatively, in cases where the marks or goods are different, surveys can be important. The set of published opinions is a biased sample from which to generalize about survey influence.
Diamond and Franklyn even go so far as to take on Judge Posner and his disparagement of surveys as “tricks of the survey researcher’s black arts.” 4 They make the case that “(j)udges need to understand the principles of good survey design and be assured that justifiable methodological choices have been made in producing the survey evidence they are asked to consider.” 5
As I have said many times: Good data drives out bad cases. And while it seems obvious, it is always nice to have a survey that proves the point!