Plaintiff sued defendant for trademark infringement. Plaintiff hired a Marketing Expert Witness to provide testimony. The defendant filed a motion to exclude. which was denied by the court.
Facts: This case (Marketquest Group, Inc. v. Societe Bic, S.A. et al – United States District Court – Southern District of California – April 12th, 2018) involves a trademark infringement action. The plaintiff maintains that the defendant’s promotional campaign “The Write Pen Choice” will cause confusion with its own promotion, “The Write Choice”. The plaintiff hired Marketing Expert Witness, John J. Burnett, Ph.D to provide testimony on their behalf. The defendant filed a motion to exclude the testimony of Mr. Burnett.
Discussion: Dr. Burnett’s testimony and report retort the expert testimony of the defendant’s expert. Dr. Burnett states that the other expert’s testimony stems from a design that is invalid, a sample universe that is unrepresentative, and had a misleading questionnaire. Dr. Burnett used his experience to analyze both of the marks in question, using the Sleekcraft factors. The defendant argues that Dr. Burnett’s testimony should not be admitted because they improperly opine on the ultimate issue, are not rooted in generally accepted science, and are predicated on a small amount of reliable evidence.
The defendant’s first allege that Dr. Burnett’s conclusions about the likelihood of confusion are an attempt to tell the jury what conclusions to reach in this case. As such, they argue, these conclusions amount to legal opinions and should be excluded. The court opined that they will not allow Dr. Burnett to opine on the ultimate issues of fact, but he will be allowed to provide his opinion on the Sleekcraft factors that he used to draw his conclusions. The court further stated that Dr. Burnett’s experience of over forty years in consumer behavior, branding, and advertising makes it proper for him to opine on the factors used in his testimony.
The defendant then argues that Dr. Burnett does not have enough experience to rebut the opinions of the other expert witness nor should he be allowed to offer opinions on consumer confusion studies. The court again disagrees, stating that Dr. Burnett education and experience in marketing and statistics make his testimony both relevant and reliable in connection with the facts at issue. The court went on to state that any arguments about this issue go to the weight of of the evidence and not the admissibility.
Last, the defendant argues that Dr. Burnett’s testimony should be excluded because the low number of instances of actual confusion are de minimis. The court again disagreed, stating that, based on his experience and education, this testimony should be allowed.
Conclusion: The motion to exclude the expert witness testimony of John J. Burnett, Ph.D is denied.