TMEP 1212.06(d): Survey Evidence, Market Research and Consumer Reaction Studies

This is the October 2015 Edition of the TMEP

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1212.06(d)    Survey Evidence, Market Research and Consumer Reaction Studies

Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. See Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43, 59 USPQ2d 1720, 1730 (1st Cir. 2001) (“Although survey evidence is not required, ‘it is a valuable method of showing secondary meaning.’” (quoting I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42, 49 USPQ2d 1225, 1235 (1st Cir. 1998))).

To show secondary meaning, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. See Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009) (finding survey did not provide evidence of acquired distinctiveness as it was unclear if respondents associated the sound mark with applicant’s goods or opposer’s services); Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., 9 F.3d 175, 183, 28 USPQ2d 1778, 1784 (1st Cir. 1993) (finding survey insufficient to establish acquired distinctiveness where survey demonstrated product-place association rather than product-source association). Moreover, the survey should reveal that the consuming public associates the proposed mark with a single source, and not that the applicant is the first among many parties associated with the designation. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §15.42 (4th ed. 2013) (citing Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006), withdrawn on other grounds, 90 USPQ2d 1127 (TTAB 2009)); see also British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1202 (TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994) (finding survey does not provide convincing proof that respondents believe all black engines come from the same source).

The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. In re Van Valkenburgh, 97 USPQ2d 1757, 1767 (TTAB 2011) (finding “no basis on which to conclude that the survey is based on scientifically valid principles” where the survey consisted of questionnaires distributed to an unknown number of people who filled them out and mailed them back to applicant’s counsel); see In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (deeming applicant’s Internet poll on name recognition unreliable, where the poll did not attempt to prevent visitors from voting more than once or to prevent interested parties such as friends or associates or employees of the applicant from voting multiple times, and the poll results did not indicate the number of actual participants); In re Hotels.com, L.P., 87 USPQ2d 1100, 1109–10 (TTAB 2008), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (finding applicant’s survey entitled to no probative weight as to the public’s perception of HOTELS.COM due to flaws including the order of the questions and an assumption that consumers understand the difference between a brand name and domain name); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (“[T]he survey asked the wrong question. The issue is not whether the term ‘Office Movers’ identifies a specific company. Rather, it is whether the term ‘OFFICE MOVERS, INC.’ identifies services which emanate from a single source.”); Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 n.7 (TTAB 1984) (“[W]here... [reports of market research and consumer reaction studies] have been conducted for marketing reasons rather than directly to assist in resolving the issues in proceedings before us, their value will almost always depend upon interpretations of their significance by witnesses or other evidence.”); Specialty Brands, Inc. v. Spiceseas, Inc., 220 USPQ 73, 74 n.4 (TTAB 1983) (finding testimony concerning survey results, unsupported by documentation, to be unreliable hearsay). Therefore, information regarding how a survey was conducted, the number of participants surveyed, and the geographic scope of the survey may assist the examining attorney in determining the probative weight of such evidence.

Evidence of secondary meaning may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source. See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125, 16 USPQ2d 1289, 1292 (4th Cir. 1990) (quoting Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 161, 133 USPQ 127, 131 (4th Cir. 1962)); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§15.45, 32.190 (4th ed. 2013); see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir. 1985) (noting “the results show a syndetic relationship between the color ‘pink’ and Owens-Corning Fiberglas in the minds of a significant part of the purchasing public”). As noted by the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit), “proof of distinctiveness requires more than proof of the existence of a relatively small number of people” who associate the proposed mark with the applicant. Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 862, 132 USPQ 627, 633 (C.C.P.A. 1962). Although all evidence must be reviewed on a case-by-case basis, generally, survey results showing less than 10% consumer recognition are insufficient to establish secondary meaning, and results over 50% are sufficient to establish secondary meaning. See id. (finding 10% insufficient to establish secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d at 1127–28, 227 USPQ at 424–25 (finding 50% probative in establishing secondary meaning given the totality of the evidence); Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§15.45, 32.190 (4th ed. 2013). However, the probative value of a survey is significantly weakened, despite consumer recognition rates greater than 50%, if there are flaws in the way the survey is conducted. See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1569–71 (TTAB 2009).