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. See In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *14-15 (TTAB 2019) (citing Schlafly v. St. Louis Brewery, LLC, 909 F.3d 420, 424, 128 USPQ2d 1739, 1743 & n.2 (Fed. Cir. 2018)) ("Consumer surveys can, when conducted properly, be a form of direct evidence of acquired distinctiveness."); 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 establish acquired distinctiveness, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. See In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11-12 (finding survey did not show the nature of the association a consumer perceived between the proposed mark and applicant and the other companies identified in survey answers as there were no follow-up questions inquiring as to the reason for identifying applicant or another company that would have established what the respondents understood); 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). 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 & Unfair Competition §15.42 (5th ed. June 2021) (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 Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006) , withdrawn on other grounds, 90 USPQ2d 1127 (TTAB 2009)); see also In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11 ; Brit. Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1202 (TTAB 1993) (finding survey did not provide convincing proof that respondents believed all black engines came from the same source), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994).

To have any probative value, a survey must be conducted in accordance with accepted principles of survey research. See, e.g., In re Van Valkenburgh, 97 USPQ2d 1757, 1767 (TTAB 2011); Zimmerman v. Nat’l Ass’n of Realtors, 70 USPQ2d 1425, 1435-36 (TTAB 2004); In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996) (citing Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1582 n.4 (TTAB 1987)); see also USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307 n.6, 2020 USPQ2d 10729, at *7 n.6 (2020); TBMP §1208; McCarthy, supra, §§32:158, 32:170-72. 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 at1757, 1767 (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) (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 understood the difference between a brand name and domain name), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009). Therefore, information regarding how a survey was conducted (the entire survey report, including all data and/or statistics gathered regarding participants responses), the complete questionnaire provided to participants, the criteria for selecting participants, the number of participants surveyed, all the individual responses to the questionnaire, the geographic scope of the survey, and an explanation of the survey method and/or design employed may assist the examining attorney in determining the probative weight of such evidence.

For a survey to be probative, the proper universe of participants must be surveyed. In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *12 (where identification broadly identified goods as fish food, survey universe was too narrow because it did not include people who purchased fish food for fish other than tropical fish) (citing Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1322, 128 USPQ2d 1686, 1692 (Fed. Cir. 2018) (where identification of goods broadly identified goods as meat and beef, survey universe too narrow because it eliminated from survey meat eaters who buy their meat from sources other than plaintiff); In re FCA US LLC, 126 USPQ2d 1214, 1226 (TTAB 2018) (survey was of limited relevance because it did not consider the entire universe of customers for automobiles, trim and structural parts but was limited to customers for vehicles capable of off-road driving); Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1363 n.41, 1371 (TTAB 2013) (finding survey universe too narrow and stating "[b]ased on the description of goods, the proper survey universe should include all people who purchase and eat sandwiches (defined to exclude only hot dogs)"; "[t]here may be an overreliance on patrons of 'fast food' establishments that skews the results because the proper universe is all consumers who purchase and eat sandwiches.")).

Further, the Trademark Trial and Appeal Board has given little weight to surveys that do not include an education or pre-testing portion regarding the difference between a generic term and a trademark or such portion is insufficient to educate respondents. See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1198-99 (TTAB 2017); Sheetz of Del., Inc. v. Dr.’s Assocs. Inc., 108 USPQ2d 1341, 1361-62 (TTAB 2013); see also In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11 (TTAB 2019) (citing David H.B. Bednall, Color, Champagne, & Trademark Secondary Meaning Survs.: Devilish Detail, 102 Trademark Rep. 967, 999 (July-Aug. 2012)); Zimmerman, 70 USPQ2d at 1435-36.

Evidence of acquired distinctiveness 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)); McCarthy, supra §§15.45, 32.190; 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); McCarthy, supra §§15.45, 32.190. 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) .