How Exploratory Research Can Make or Break Your Trademark Infringement Case

Our AmLaw 100 client represented a major US fashion brand in an intellectual property suit. Before taking this case to court, extensive exploratory research was needed as part of work product in anticipation of litigation.

Exploratory studies are often used by clients and their counsel in trademark infringement
disputes to develop case theories, assess the relative strengths and weaknesses of a client’s
positions, consult on alternative litigation strategies and, ultimately, assist in the assessment of the client’s likelihood to prevail on the merits of a case. Exploratory studies can also be used to gain valuable insights into a client’s negotiating leverage for use in settlement discussions.
 

This research initiative commenced with a series of focus groups to:

• Explore issues related to point of sale and post sale confusion
• Determine / confirm language used to discuss the mark
• Explore the most recognizable, and therefore protectable, elements of the mark.

Mall intercepts were conducted during the second phase of research to quantify the level of point of sale confusion.

Sufficiently convinced of a high level of confusion, we proceeded with an extensive series of surveys aimed at designing the optimal final survey to be conducted by their expert witness as well as gain deeper insights to take to the negotiating table. Specific areas explored included:

• Selecting the most appropriate number and type of stimuli for both the test and control, each with a different goal for level of confusion generated. For example, when trying to demonstrate genericness, or lack of, does the total number of names a respondent is exposed to (including brand, generic or product, and made up names) impact the outcome? 
• Defining and understanding the target audience. While certain elements of the audience will be dictated by the point of law, understanding the impact of age, income, recency of purchase, etc can help refine screening criteria.
• Determining the order and phrasing of questions to get the most favorable results. To what extent does asking a respondent “what do you think of when you see this image” reveal a different result than asking “how would you describe this image to a friend”

The research contributed to a favorable settlement in the trademark infringement suit.