Plaintiff filed a trademark infringement lawsuit against defendant. The plaintiff hired a marketing expert witness to perform a survey on likelihood of confusion. The testimony was challenged by the defendant via a Daubert motion. The court granted this motion.
Facts: This case (Valador, Inc v. HTC Corporation, et al.- United States District Court – Eastern District of Virginia – March 15th, 2017) involves a claim of trademark infringement. The plaintiff alleges that the defendants have infringed on its registered mark, “VIVE” through the marketing, advertising, and sale of a headset, called the “HTC VIVE”. The plaintiff uses its “VIVE” mark in the text of its services contracts, most of which are for government agencies. In order to support its claim of likelihood of confusion, the plaintiff has hired Christopher Bonney (marketing expert witness). Bonney performed a survey to determine whether there is confusion about the source of the companies’ products that use the “VIVE” mark for similar products. The defendants have filed a motion to exclude Bonney’s testimony on two fronts: 1) that he is not qualified and 2) that he used unreliable methods and principles to reach his conclusions.
Discussion: First, the defendants argue that Bonney’s expert witness testimony should be excluded because his is unqualified. Although he appears to have four decades of experience as a marketing and research consultant, Bonney does not have any prior experience conducting surveys in the area of likelihood of confusion claims in trademark cases. In addition, he did not review any likelihood of confusion surveys from previous trademark infringement cases before he conducted his own survey. Also, he has never testified as an expert in a trademark dispute or Lanham Act case. Nor he has never published on the topic of trademark surveys or likelihood of trademark confusion.
In response, the plaintiffs argue that 1) Bonney has consulted with trademark attorneys on compliance issues; 2) Bonney has prepared other surveys used in litigation; and 3)Bonney previously served as a consulting expert in litigation. The court agreed with the defendants on this issue, opining that Bonney lacks the necessary experience with trademark infringement claims needed to be allowed under Daubert.
In addition, the defendants argue that Bonney’s expert testimony is unreliable because his survey has numerous fundamental flaws. The defendants claim that Bonney’s survey 1) failed to evaluate the correct universe of respondents; 2) did not replicate market conditions; 3) did not use a control group; 4) deliberately avoided utilizing the recognized methodologies for surveys for trademark confusion; and 5) asked improperly leading questions.
The court agreed with these arguments. First, the court opined that whether or not Bonney used a reverse or forward confusion theory, he failed to survey the correct population or even one that was sufficiently close. Second, the court stated that Bonney did not replicate market conditions, which is also a very important part of creating and performance of a survey. Third, there was indeed no control and did not employ any recognized methodology, an important piece to allowing an expert witness testimony to proceed. Last, the survey questions were indeed leading and suggestive.
Conclusion: The motion to exclude the expert witness testimony of Christopher Bonney was granted in full.