Trademark Surveys in the Age of Daubert

The book is a compendium of knowledge about the Daubert and the other key court cases that establish judges as "gatekeepers" for trademark survey evidence as well as expert testimony. It includes nearly 20 important articles on the subject as well as multiple strategies for bringing and defeating Daubert actions.
Publisher: LexisNexis
Print Book :1 Volume, Softbound
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ISBN: 9781522106494
Publisher: LexisNexis
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The book is a compendium of knowledge about the Daubert and the other key court cases that establish judges as "gatekeepers" for trademark survey evidence as well as expert testimony. It includes nearly 20 important articles on the subject as well as multiple strategies for bringing and defeating Daubert actions.

If you are conducting trademark surveys, then you need this publication and the strategies for dealing with actions in the post-Daubert world.

James T. Berger is the founder of Market Strategies, a Chicago consulting firm that specializes in market surveys. He has testified or served as an expert witness in more than a dozen trials and has been deposed nearly 50 times. He has written more than a dozen articles on the subject of trademark surveys. He combines the real-world, practical orientation of a professional business person with the theoretical knowledge of the academician.

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Table of Contents


Chapter 1 Evolution of the Daubert Standard

§ 1.01 The New Standard

[1] Generally

[2] Frye Standard

§ 1.02 Other Standards

[1] Generally

[2] Marketplace Test

[3] General Acceptance Criterion

[4] Federal Rules of Evidence

§1.03 Daubert v. Merrell Dow Pharmaceuticals, Inc.

[1] Background

[2] The Daubert Determination

[3] Key Issues

[4] Implications for IP Surveys

§1.04 General Electric v. Joiner

[1] Background

[2] Key Issues

[3] Implications for IP Surveys

§1.05 Kumho Tire Company, Ltd., Petitioners, v. Patrick Carmichael

[1] Background

[2] Kumho Majority Opinion

[3] Gate-Keeping Assessment

§1.06 Impact of Daubert Survey Research

[1] Red Flags

§1.07 Case for Chapter 1 Merisant Co. v. McNeil Nutritionals, LLC, 242 F.R.D. 315 (E.D. Pa. 2007)

Appendix for Chapter1

With Daubert and the Admissibility of Expert Testimony its "déjà vu all over again"

Chapter 2 The Nature of Trademark Surveys

§2.01 Introduction

§2.02 Establishing the Need for Marketing Research

§2.03 Defining the Problem

[1] Generally

[2] Key Decision

§2.04 Determining the Objectives of the Research

[1] Generally

[2] Experimental Research

[3] Controls

§2.05 Determining the Research Design

[1] Three Basic Designs

[2] Secondary Data Analysis

§2.06 Identifying Secondary Data Information Types and Sources

[1] In General

[2] Advantages of Secondary Data

[3] Disadvantages of Secondary Data

[4] Key Questions

§2.07 Designing Survey Data Collection Forms

[1] Advantages of Surveys

[2] Three Alternative Models
[3] Low Response Rate Challenge

§2.08 Determining the Sample Plan and Size

[1] General Considerations

[2] Four Basic Probability Samples

[3] Non-Probability Samples

§2.09 Developing the Sample Plan

§2.10 Determining Sample Size

§2.11 Collecting the Data

§2.12 Questionnaire Development

§2.13 Pre-Testing the Survey

§2.14 Tabulating the Data

§2.15 Analyzing the Data

§2.16 Validating the Data

§2.17 Preparing the Final Research Report

§2.18 Consequences of Daubert on Nature of Surveys
§2.19 Case For Chapter 2 LG Electronics U.S.A., Inc. v. Whirlpool Corporation, 661 F.Supp.2d 610 (N.D. Ill. 2009)

Appendix for Chapter 2

Is it Worth Anything? Using Surveys in Intellectual Property Cases

Chapter 3 The Key Daubert Factors

§3.01The "Gatekeeping" Mandate

[1] Generally

[2] No 'Perfect' Surveys

[3] Additional Criteria

[4] Some Surveys Hard to Judge

[5] Suggested Gatekeeping Inquiry

[6] The Shari Diamond Criteria

§3.02 Case for Chapter 3 Dwyer Instruments, Inc. v. Sensocon, Inc., Cause No.: 3:09-CV-10-TLS, 2012 U.S. Dist. LEXIS 21308 (N.D. Ind. Feb 21, 2012)

Appendix for Chapter 3

Mastery In The MDL: Excluding Irrelevant Expert Opinions

Criteria for Admissibility of Expert Opinion Testimony Under Daubert and its Progeny

Chapter 4 Types of Surveys and Protocols

§4.01 Developing a New Model
§4.02 Conventional Wisdom: Surveys and Protocols

[1] In General
[2] The Market Research Process

[3] Step 1 — Define the Problem

[4] Step 2 — Conduct Exploratory Research

[5] Step 3 — Formulating a Hypothesis

[6] Step 4 — Create the Research Design

[7] Step 5 — Collect the Data

[8] Step 6 — Interpreting and Presenting the Research Information

§4.03 Sampling Techniques
§4.04 Introduction to Surveys and the Daubert Standard
§4.05 Types of Surveys

[1] Mail Surveys

[2] Telephone Surveys

[3] Mall Intercept Surveys

[4] Surveys Using Internet

[5] Hybrid Internet/Telephone Surveys

[6] Pre-Recruit Surveys

§4.06 Qualitative Techniques  

§4.07 Case for Chapter 4 Checkpoint Systems, Inc. v. Check Point Software Technologies, Civil Action No. 96-3153 (JBS), 1999 U.S. Dist. LEXIS 23621 (D.N.J. May 17, 1999)

Appendix for Chapter 4

Not All Our Surveys Are Created Equal

Chapter 5 The "Junk Science" Issue

§5.01 What Is "Junk Science"

§5.02 How Daubert Rulings Attack "Junk Science"

§5.03 Implications and Abuses

§5.04 Why Daubert Motions Are Denied

§5.05 More on the "Junk Science" Issue

§5.06 The Posturing Argument

§5.07 Final Thoughts on the "Junk Science" Issue

[1] Causation

[2] Attorney Abuses

[3] Judges as "Expert Vigilantes"

§5.08 Case for Chapter 5 National Envelope v. A. Pad Paper Co. of Delaware, 06 Civ. 12988 (SHS) (RLE) (S.D.N.Y. Dec 22, 2009)

Appendix for Chapter 5

Daubert Turning 20: Junk Science Replaced by Junk Rulings

Chapter 6 Daubert Gatekeeper Issues for Lanham Act Matters

§6.01 Effect of Daubert on Litigation

§6.02 Post-Daubert Research Studies

§6.03 Rand Study

§6.04 Federal Judicial Center Study

§6.05 Grosscup Study

§6.06 Cheng Yoon Study

§6.07 Gatawski and Risinger Studies

§6.08 Lanham Act-Specific Findings

[1] In General

[2] 'Significant Expenditure of Time, Money and Effort'

[3] Plevan Perspective

[4] Jury/Non-Jury Distinction

[5] Flores, Richardson, Merlino View

[6] The Paper's Conclusion

§6.09 Case for Chapter 6 Louis Vuitton Malletier S.A. v. Sunny Merch. Corp., 13 Civ. 5242 (LAP), 97 F. Supp. 3d 485; 2015 U.S. Dist. LEXIS 42630 (S.D.N.Y. Mar 31, 2015)

Appendix for Chapter 6

6 Consumer Survey Criticisms for Lanham Act Litigators

Judicial Gatekeeping Suffers A Setback

Chapter 7 Strategies for Filing a Winning Daubert Challenge

§7.01 When to Bring a Daubert Challenge

§7.02 Don't Waste Court's Time

[1] In General

[2] Timing is Crucial

§7.03 What Else NOT to Do

[1] In General

[2] Don't Default to Daubert

[3] Don't Procrastinate

[4] Don't Neglect the Judge's History

[5] Don't Show Up Unprepared

[6] Don't Flaunt Your Knowledge, Though

§7.04 Attacking the Expert

§7.05 Attacking the Methodology

§7.06 Gaining an Edge with a Daubert Motion

Appendix for Chapter 7

Daubert Motions: Setting The Procedural Stage for Success

How to Gain an Edge When Bringing a Daubert Motion

5 Definite No-Nos for Daubert Motions

Chapter 8 Defending and Defeating Daubert Motion

§8.01 Preparing the Daubert Counterattack

§8.02 The Daubert Standards

§8.03 Additions to the Basic Rules

§8.04 Five Ways to Survive the Daubert Challenge

§8.05 Apple v. Motorola : A Significant Decision

§8.06 Create the Record

§8.07 Best Defense May Be A Good Offense

§8.08 Even More Powerful Offense Strategies
§8.09 Case for Chapter 8 Bobak Sausage Co. v. A & J Seven Bridges, Inc., Case No. 07 C 4718, 2010 U.S. Dist. LEXIS 40737 (N.D. Ill., Apr. 26, 2010)

Appendix for Chapter 8

How to Survive Daubert in Nine Easy Lessons: Safely Exploring the Wilds of Expert Evidence

Preparing A Successful Daubert Motion

Chapter 9 Practical Considerations When Using Experts in the Age of Daubert

§9.01 Introduction to the Final Chapter

§9.02 Determining the Need for a Survey Expert

[1] Do You Need a Survey Expert?

[2] The Rebuttal Expert

[3] Benefits of Early Retention of Survey Expert

§9.03 How to Select a Survey Expert

[1] Qualifications

[2] Secondary Expert

[3] Different Backgrounds Qualify

§9.04 How and When to Retain the Survey Expert

§9.05 Cost and Compensation Considerations

[1] Scope

[2] Other Considerations

§9.06 Guidelines for Appropriate Contact Between Lawyer and Expert

§9.07 Developing the Expert's Report

§9.08 Final Daubert Thoughts
§9.09 Case For Chapter 9 Allergy Asthma Clinic v. Allergy Atlanta, 685 F.Supp.2d, (N.D.Ga 2010)

Appendix for Chapter 9

Trademark Surveys: Ten Common Pitfalls

Final Appendix

The Impact of the Daubert Decision on Survey Research Used in Litigation

Putting Daubert In Proper Perspective