Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA345947
`ESTTA Tracking number:
`05/06/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177943
`Plaintiff
`Flagstar Bank, FSB
`ANESSA OWEN KRAMER
`BROOKS KUSHMAN, PC
`1000 TOWN CENTER, 22nd FLOOR
`SOUTHFIELD, MI 48075
`UNITED STATES
`akramer@brookskushman.com,kheinl@brookskushman.com,lsavage@brooksk
`ushman.com,mmack@brookskushman.com,ejbrooks@brookskushman.com
`Opposition/Response to Motion
`Chanille Carswell
`ccarswell@brookskushman.com, akramer@brookskushman.com,
`lsavage@brookskushman.com
`/chanille carswell/
`05/06/2010
`Flagstar Response to Motion to Dismiss.pdf ( 9 pages )(75654 bytes )
`Exhibit A.pdf ( 28 pages )(10656920 bytes )
`Exhibit B.pdf ( 4 pages )(1619145 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In re Trademark Application
`
`Serial No.: 78/915,706
`
`Filed: June 23, 2006
`
`Trademark: FREESTAR BANK “LIFE KEEPS GETTING BETTER!” and
`Design
`
`Atty. Docket No.:
`
`Published in the Official Gazette on February 20, 2007
`
`Flagstar Bank, FSB,
`
`
`FSS 0189 OC
`
`Opposer,
`
`
`
`v.
`
`
`Freestar Bank, National Association,
`
`
`Applicant.
`
`
`
`)
`)
`)
`)
`)
`) Opposition No.
`)
`)
`)
`
`91177943
`
`
`OPPOSER’S RESPONSE TO
`APPLICANT FREESTAR BANK’S MOTION TO DISMISS
`
`
`
`BOX TTAB FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`INTRODUCTION
`
`On April 1, 2010, Opposer Flagstar Bank, FSB (“Flagstar”) filed a Petition to
`
`
`
`
`
`
`
`Stay Applicant’s Motion for Summary Judgment and to Reopen Discovery wherein Opposer
`
`cited opinions by this Board which establish that the district court’s finding of no trademark
`
`infringement does not establish as a matter of law that Applicant Freestar Bank, N.A.
`
`(“Freestar”) is entitled to a federal nationwide registration. In its response, Freestar failed to
`
`acknowledge or address those opinions, and instead filed this separate motion which again does
`
`not acknowledge or address them. The authority Freestar relies upon, indeed, establishes that a
`
`district court ruling can be preclusive under appropriate circumstances, but does not support its
`
`claim that preclusion is automatic or that preclusion is appropriate in this case.
`
`BACKGROUND
`
`
`
`
`
`On October 30, 2008, the Trademark Trial and Appeal Board granted Flagstar’s
`
`motion to suspend these proceedings pending a final determination of Opposer’s civil action
`
`filed in the United States District Court, Central District of Illinois (Flagstar Bank, FSB v.
`
`Freestar Bank, N.A., Case No. 1:08-cv-01278). In the civil action, Opposer asserted claims of 1)
`
`federal trademark infringement (15 U.S.C. §1114), 2) false designation of origin or sponsorship,
`
`false advertising, and trade dress (15 U.S.C. §1125(a), and 3) common law trademark
`
`infringement. The civil action ended on March 12, 2010 upon entry of the parties’ Stipulation
`
`for dismissal of Opposer’s appeal of the United States District Court’s grant of Summary
`
`Judgment in Freestar’s favor. The Opposer has requested that these proceedings be reopened
`
`and that briefing on the Applicant’s pending motion for summary judgment be stayed to allow
`
`1
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`the Opposer to obtain discovery which it discovered during the civil action was wrongfully
`
`withheld in these proceedings.
`
`
`
`
`
`In its request for dismissal, Freestar makes two notable misrepresentations
`
`regarding the events leading to the conclusion of the civil action which must be addressed. First,
`
`Freestar falsely implies that Opposer’s civil claims were dismissed by three federal courts on the
`
`merits. They were not. The claim initially filed in the Eastern District of Michigan (identical to
`
`the one later filed in Illinois) was dismissed solely on procedural grounds when the Court found
`
`that it did not have personal jurisdiction over Freestar. The appeal before the Seventh Circuit
`
`Court of Appeals was dismissed by stipulation before briefs were even filed. The Central
`
`District of Illinois was the only Court to consider the Opposer’s claims on the merits, and as
`
`discussed more fully below, its decision was on narrow grounds.
`
`
`
`
`
`Freestar’s second misrepresentation is that Flagstar filed its first suit in the
`
`Eastern District of Michigan in an effort to forum shop. This claim is baseless, frivolous and
`
`outrageous. Flagstar is based in Michigan and it maintains numerous bank branches there, using
`
`the registered marks at issue in Michigan commerce.1 Therefore, Flagstar had colorable grounds
`
`to assert that jurisdiction was proper in Michigan, where Flagstar has been injured by Freestar’s
`
`infringement of its marks. Freestar’s blatantly false characterization of Flagstar’s filing is merely
`
`a transparent attempt to inflame this Board.
`
`
`
`
`
`Turning to the Central District Court’s ruling, in its finding of no likelihood of
`
`confusion the Court stated that it weighed most heavily its finding that the parties do not
`
`
`1 Flagstar also maintains bank branches in Indiana and Georgia.
`
`2
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`presently utilize its marks in the same geographic region (a finding which Opposer contends is
`
`inconsistent with the fact that it maintains loan centers in Illinois):
`
`The facts and evidence presented by the parties show that Flagstar and Freestar’s
`products and services, although identical, are not offered concurrently in any area
`of this country, nor are they marketed to an overlapping consumer base. This fact
`clearly distinguishes this case from the preeminent 7th Circuit decisions relied
`upon by the parties and warrants weighing the area and manner of concurrent
`use element heavily. Consumers cannot become confused by a mark they will
`never encounter in the marketplace.
`
`Exh. A, Order at p. 27 (emphasis added). The Court continued to emphasize the lack of current
`
`concurrent use in its summary analysis:
`
`Flagstar has presented no evidence confirming that these two marks are used in
`the same state, let alone county, city, neighborhood or street. Flagstar has also
`submitted no evidence of imminent expansion into the counties where Freestar
`exclusively operates. The absence of any concurrent or overlapping distribution
`and marketing of services negates the relevance of the parties’ identical services
`for purpose of the likelihood of confusion analysis.
`
`Concerning the strength of the Plaintiff’s mark, reasonable minds could not
`consider a $12.5 million advertising expenditure for 2008 to be evidence of a
`strong mark when Flagstar has presented no evidence that a single dollar of that
`amount was directed toward Illinois.
`
`Id at p. 27-28.2
`
`
`
`
`
`It was clear that the District Court was focused solely on the status quo—whether
`
`there is a likelihood Freestar’s present use of its mark in Central Illinois will be confusing for
`
`
`2 The two marks the District Court was referring to were the Freestar mark and Flagstar’s “star”
`mark (Registration No. 2,123,471), which Freestar’s mark most closely imitates. However,
`Flagstar contends that the Freestar mark is confusingly similar with each of its registered marks
`and it is undisputed that Flagstar operates 5 loan centers in Illinois which prominently utilize
`Flagstar’s marks. (Flagstar also owns U.S. Trademark Registration No. 2,015,294 for the mark
`FLAGSTAR; U.S. Trademark Registration No. 3,188,184 for the mark FLAGSTAR BANK and
`design; and U.S. Trademark Registration No. 3,593,602 for the mark FLAGSTAR THE NEW
`WAVE IN BANKING and Design.). Flagstar does not currently operate any loan centers or
`bank branches in Central Illinois.
`
`3
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`banking customers in Central Illinois. However, the analysis the Board must undergo to assess
`
`whether Freestar should be granted a federal registration is not so limited. Because Freestar
`
`would have no geographic restrictions in the United States if a registration is granted, whether
`
`the parties presently operate in the same geographic region is not determinative of whether it is
`
`entitled to a nationwide registration. Therefore, in this case the District Court’s finding of no
`
`likelihood of confusion with respect to the Opposer’s trademark infringement claims is not
`
`dispositive of whether Freestar’s registration should issue.
`
`ARGUMENTS
`
`
`
`
`
`In the civil action, Freestar repeatedly emphasized that it currently only operates
`
`in a small geographic region in Central Illinois. In fact, Freestar’s president and CEO, Ed
`
`Vogelsinger, submitted an affidavit stating that Freestar is but “a small community bank,” that
`
`has only 13 branches within a three-county area in Central Illinois. See Exh. B, Affidavit of Ed
`
`Vogelsinger. Notwithstanding the fact that Flagstar may preemptively take steps to protect its
`
`registered marks from infringement even in geographic regions where it has not yet fully
`
`expanded,3 the District Court granted Freestar summary judgment finding no likelihood of
`
`confusion, primarily because the parties’ advertising and presence do not currently overlap in
`
`Central Illinois. See Exh. A at pp. 27-28. The Court found that Central Illinois consumers are
`
`not likely to be confused by Freestar’s use of its mark in Central Illinois. Id.
`
`
`3 Trademark laws “protect the trademark owner’s ability to enter product markets in which it
`does not now trade but into which it might reasonably be expected to expand in the future.”
`Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 958 (7th Cir. 1992). See also Quill
`Natural Spring Water, LTD. v. Quill Corp., 1994 WL 559237, *4 (N.D. Ill. 1994).
`
`
`4
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`Freestar now contends that the District Court’s narrowly-based likelihood of
`
`
`
`
`
`confusion ruling is dispositive of whether it is entitled to a federal registration which would
`
`afford it national rights. However, this Board has explicitly held that the analysis the district
`
`court undergoes in its assessment of a claim of trademark infringement is distinct from the
`
`analysis the Board must undergo to determine whether an application should register, despite the
`
`fact that both require an assessment of likelihood of confusion:
`
`[E]ven were we to find that, as a result of the disposition of the civil action,
`opposer should be estopped from asserting a claim of trademark
`infringement against applicant in a subsequent proceeding, such a holding
`would not estop opposer from pursuing its claim of priority and likelihood of
`confusion in this opposition. This is so, because a claim of infringement
`before the court and a claim of priority and likelihood of confusion before
`this Board are different claims. The former claim is, in essence, a claim of
`injury resulting from the applicant’s use of its mark in commerce; the latter claim,
`in essence, is a claim that opposer believes it would be damaged by registration
`of applicant’s mark. While the determination of both claims may involve the
`determination of likelihood of confusion, trademark infringement and the
`right to use a mark are matters which the Board has no jurisdiction to
`consider.
`
`
`American Hygienic Laboratories, Inc. v. Tiffany & Co., 228 USPQ 855, 857 (TTAB
`
`1986)(italics in original; bold emphasis added). See also McCarthy on Trademarks and Unfair
`
`Competition § 32:82 at p. 32-181-182 (4th ed. 2008)(“A claim for trademark infringement is not
`
`the same as an inter partes claim for opposition or cancellation against another’s registration of a
`
`mark. Thus an opposer would not necessarily be barred by the rule of claim preclusion
`
`when it lost a previous infringement claim in court.”)(emphasis added; footnote omitted).
`
`
`
`
`
`American Hygenic establishes that where, as here, likelihood of confusion was not
`
`decided by the district court in a context which encompasses registrability, but only trademark
`
`infringement, there is no basis to find that the district court’s ruling also binds the Board. That
`
`5
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`is, the focus of the District Court action, and indeed the District Court’s ruling on summary
`
`judgment, was whether Freestar’s use of its mark in Central Illinois was likely to confuse local
`
`consumers (see Exh. A at pp. 27-28), whereas the focus in these proceedings is whether there is a
`
`likelihood of confusion if Freestar is granted a registration allowing nationwide rights, including
`
`in regions where the parties’ use of similar marks for identical goods and services would overlap.
`
`The latter circumstance was not considered or decided by the Court in the civil action.
`
`
`
`Moreover, the absence of concurrent geographic use, which the District Court’s
`
`ruling turned on with respect to trademark infringement, has been rejected by this Board as a
`
`determinative factor in the assessment of registrability. In In re Infinity Broadcasting Corp. of
`
`Dallas, 60 USPQ2d 1214, 2001 WL 951738, *5 (TTAB 2001), this Board explicitly rejected an
`
`applicant’s attempt to distinguish its mark from a prior registrant because the marks were used in
`
`different geographic regions:
`
`Given that the registrant’s registrations encompass nationwide rights, and that
`applicant is seeking a geographically unrestricted registration, applicant’s
`argument is unavailing.
`
`The In re Infinity panel further noted that a district court finding of no likelihood of confusion,
`
`particularly where that finding turns on the absence of concurrent geographic use, is not
`
`determinative in an opposition proceeding because of the distinction between the right to use a
`
`mark and registrability:
`
`[The applicant’s] argument highlights . . . a notable difference between situations
`involving the use of [a mark] … versus Office proceedings such as this one,
`which involve the right to a geographically unrestricted federal service mark
`registration. If a geographically unrestricted registration were to issue to
`applicant, the registration would give applicant certain presumptions under
`Section 7(b) of the Trademark Act, including a presumption of applicant’s
`exclusive right to nationwide use of the registered mark in commerce . . . . These
`nationwide rights are different from those arising from territorial use. That is to
`
`6
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`
`
`say, in Board proceedings, likelihood of confusion is determined independent of
`the context of actual usage. In the infringement action, on the other hand, the
`context of the use of the marks is relevant. For this reason, infringement cases in
`which no likelihood of confusion has been found because the marks are used in
`different geographical areas are not helpful to our analysis in this appeal.
`
`
`2001 WL 951738 at *5 (internal citations omitted; emphasis in original).
`
`
`
`
`
`In short, the assessment required for registrability is considerably broader than the
`
`analysis undertaken by the District Court. Therefore, the District Court’s narrowly-based finding
`
`of no likelihood of confusion does not establish as a matter of law that Freestar is entitled to a
`
`nationwide registration. Therefore, the Applicant’s request for dismissal of this action should be
`
`denied.
`
`CONCLUSION
`
`
`
`
`
`For all of the aforementioned reasons, the Opposer respectfully requests that the
`
`Board deny the Applicant’s Motion to Dismiss.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` By ___/Chanille Carswell/_________
` Anessa Kramer
` Robert C.J. Tuttle
` Chanille Carswell
` Attorneys for Opposer
`
`Date: May 6, 2010
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Phone: 248-358-4400
`Fax: 248-358-3351
`
`7
`
`
`
`

`
`Serial No.: 78/915,706
`
`Atty. Docket No: FSS0189OC
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that I served:
`
`OPPOSER’S RESPONSE TO
`APPLICANT FREESTAR BANK’S MOTION TO DISMISS
`
`
`
`
`
`
`
`
`on May 6, 2010 by:
`
`
`
` delivering
`
` X
`
` mailing (via First-Class mail)
`
`
`
`
`
`
`
`
`
` a
`
` copy to:
`
`
`
`
`
`
`
`
`
`
`
`
`Robert A. Kearney
`LAW OFFICE OF ROBERT KEARNEY
`514 S. Moore Street
`Bloomington, ILL 61701
`
`Attorneys for Defendant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Krisanne Schmidt/
`
`Krisanne Schmidt
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`‘Tl::‘0B-W~107lZ2?58-MMM-«JAG .~‘#
`
`Page
`
`'ofj2-I8
`
`:FTid'ay.,
`
`;E_FmLED
`%No"v*e:mbe:r., 2009 "0'1::5'6::’IJ2 PM
`‘Clerik, U..S. 1D§S'l-F11.-‘A5l’C‘0‘J.J‘I'§l1, ?lELf'CD
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF ILLINOIS
`
`FLAGSTAR BANK, F SB,
`
`Plaintiff,
`
`v.
`FREESTAR BANK, N.A.,
`Defendant.
`
`Case No. 08-1278
`
`)
`
`5
`5
`%
`3
`
`ORDER
`
`This matter is now before the court on cross Motions for Summary Judgment as well as
`
`two Daubert Motions to Strike expert testimony. For the reasons set forth below, Plaintiff’ s
`
`Motion for Partial Summary Judgment on the “Likelihood of Confusion” Question [#38] is
`
`DENIED. Defendant’s Motion to Strike the Expert Report of Edward Lee Lamoureux [#49] is
`
`GRANTED. The Court finds Plaintiffs Motion to Exclude the Expert Testimony of Ronald R.
`
`Butters, PhD [#59] MOOT. Defendant’s Motion for Summary Judgment [#57] is GRANTED.
`
`JURISDICTION
`
`The Court has jurisdiction over this matter pursuant to 15 U.S.C. § 1121 and 28 U.S.C.
`
`§§ 1331, as the complaint presents federal questions arising under the Lanham Act 15 U.S.C. §§
`
`1501, et seq. The Court has supplemental jurisdiction over the related state law claim pursuant to
`28 U.S.C. §1367.
`1
`
`FACTUAL BACKGROUND
`
`Plaintiff, Flagstar Bank (“Flagstar”), Flagstar is a publicly traded, Michigan-based bank
`
`with 175 banking centers in Michigan, Indiana, and Georgia. There are no Flagstar banking
`
`centers located in Illinois.
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`‘Tl ::‘0—8—t.:V40'i1I2758—MEM’M-J1/NG #68
`
`Page 12 ~Off28
`
`Plaintiff is the owner of the following registered trademarks (with dates of registration in
`
`parenthesis):
`
`0
`
`U.S. Trademark Registration No. 2,015,295 (11/12/1996):
`
`FL.-AGSTA R
`
`0
`
`U.S. Trademark Registration No. 2,123,471 (12/13/1997):
`
`0
`
`U.S. Trademark Registration No. 3,188,184 (12/19/2006):
`
`Flagstar
`---"‘.L,--‘Bank
`
`0
`
`U.S. Trademark Registration No. 3,593,602 (3/24/2009):
`
`Flagstar
`
`’J"i?:-B new wave in bail-Eng
`
`Flagstar offers checking and savings accounts, home mortgage loans, and money market
`
`accounts as a part of its banking services. Prospective customers must submit to a credit check
`
`prior to opening an account with Flagstar, who bases the approval of the new account on the
`
`prospective customer’s financial history. According to its 2008 Annual Report, Flagstar has
`
`incurred $12.3 million in advertising costs over the course of the year. Registration No.
`
`3,188,184 is the mark that Flagstar predominantly uses in commerce today. Joyce Depo. at 12.
`
`

`
`‘TlI?08-CV-50127<8-'MiMlM-JAG #68
`
`%Pea:gie 3=oTf2-8
`
`The “legacy mark” (Registration No. 2,123,471) is Flagstar’s original trademark and is still used
`
`in various parts of the organization. Id. at 11.
`
`Flagstar also operates 104 home loan centers, including five within the state of Illinois.
`
`None of F lagstar’s Illinois home loan centers are located in Champaign, Livingston, or McLean
`
`counties. Flagstar’s home loan centers are engaged in mortgage origination; customers are not
`
`capable of making deposits or withdrawals at the home loan centers. The home loan centers are
`
`provided with Flagstar marketing materials and are allowed to independently decide how to
`
`utilize those materials in local advertising.
`
`Freestar is a small community bank with 13 branches, all located within a three-county
`
`area of Central Illinois: Champaign, Livingston, and McLean. Defendant limits its advertising to
`
`that area. Freestar began operations in 1934 as “Pontiac National Bank” and “Peoples Bank,”
`
`and adopted the “Freestar Bank” name in 2006 after consulting with The Tracy Edwards
`
`Company, a private branding and marketing consulting company. Freestar offers traditional
`
`banking services including checking and savings accounts as well as home mortgage loans.
`
`For over three years, Freestar has used its mark in commerce. According to Freestar’s
`
`designated representative, Freestar limits its advertising to the three-county area in which it
`
`operates banking centers via local radio stations, television broadcasts, newspapers, and
`
`billboards. Vogelsinger Aff. ‘H 20. On June 23, 2006, Defendant filed Application No.
`
`78/915,706 to register the following mark:
`
`FREEST*-‘ii?
`BANK
`‘Ufa keeps
`better!”
`
`

`
`1 ::l’0‘8—:cv-'0'?!2'718~EM¥M3M»-JAG
`
`f=Pea:ge -4 of 28
`
`The parties do not dispute the identical nature of their products and services. Both
`
`parties’ banking centers offer personal and business savings accounts, personal and business
`
`checking accounts, money market accounts, certificates of deposit, home mortgage loans, home
`
`equity lines of credit, online banking and online mortgage applications. Flagstar’s home loan
`
`centers are used for mortgage origination, and customers are not able to make deposits or
`
`withdrawals at the home loan centers.
`
`On October 15, 2008, Flagstar commenced this action against Freestar alleging trademark
`
`infringement under 15 U.S.C. § 1114 (Count One), false designation of origin, false advertising,
`
`and trade dress infringement under 15 U.S.C. § 1125 (Count Two), and Illinois state common
`
`law trademark infringement (Count Three). Plaintiff moved for Partial Summary Judgment on
`
`the “Likelihood of Confusion” Question. F lagstar argues that the evidence presented clearly
`
`proves that allowing competitive uses of FLAGSTAR BANK and FREESTAR BANK in the
`
`marketplace will create a likelihood of confusion. Flagstar points to the similarity of the marks,
`
`similarity of the products offered, and use of the same marketing channels directed toward a
`
`similar type of consumer to justify its position.
`
`Freestar countered with its own Motion for Summary Judgment on all counts of
`
`Flagstar’s Complaint. Freestar first claims that Flagstar lacks Constitutional standing to bring
`
`this lawsuit because it has failed to prove an actual or imminent injury giving rise to a justiciable
`
`case or controversy. Freestar asserts that the undisputed facts, as well as the evidence on the
`
`record, present no genuine issue of fact concerning the likelihood of confusion question. This
`
`matter is fully briefed, and this order follows.
`
`

`
`2'08-CV-'0'7lf27784MiMiM-JAG # '68
`
`Page 501‘ 128
`
`DA UBERT MOTIONS
`
`Under Federal Rule of Evidence 702, witnesses “qualified as an expert by knowledge,
`
`skill, experience, training, or education” may testify as long as “scientific, technical, or other
`
`specialized knowledge will assist the trier of fact to understand the evidence or to determine a
`
`fact in issue”. Fed. R. Evid. 702. The court functions as a gatekeeper, allowing the admission of
`
`expert testimony only if it “rests on a reliable foundation” and is “relevant to the task at hand”.
`
`
`Daubert v. Merrell Dow Pharmaceuticals Inc., 509 U.S. 579, 597 (1993).
`
`Courts may consider numerous factors when determining the reliability of proposed
`
`expert testimony, including: “whether the theory or technique. .. can be (and has been) tested”;
`
`whether the theory “has been subjected to peer review and publication”; the technique’s “known
`
`or potential rate of error”; if the theory is generally accepted within the community; and whether
`
`the expert’s “preparation is of a kind that others in the field would recognize as acceptable”.
`
`Daubert 509 U.S. at 592-594; Kuhmo 526 U.S. at 151.
`
`I. Edward Lee Lamoureux
`
`Dr. Edward Lee Lamoureux holds a Ph.D. from the University of Oregon in Rhetoric and
`
`Communication with an emphasis on conversation analysis, rhetoric, qualitative research
`
`methods, general speech, and interpersonal communication. He has been employed a professor in
`
`Bradley University’s Department of Communication since 1985 and asserts that his expertise lies
`
`in the realm of “social” linguistics, as opposed to “formal” linguistics. Lamoureux Dep. at 33.
`
`Although Freestar disputes the relevancy of his qualifications, Dr. Lamoureux’s educational
`
`background clearly qualifies him as an expert on “social” linguistics and rhetorical criticism.
`
`Dr. Lamoureux has offered an expert report with two pages of analysis concerning the
`
`“Flagstar Bank” and “Freestar Bank” names. Lamoureux asserts that “flag,” “free,” and “star”
`
`

`
`‘fl1:108-:Cv4G’?1f277&MlM%M-.£JAG
`
`Page ‘6 fOf728
`
`are each “strongly associated with some of the most broadly shared values in American culture:
`
`Patriotism, loyalty, national identity, and individual rights”. Briefly noting the “significant and
`
`overlapping metaphorical associations” of these words, Lamoureux goes on to state that “given
`
`post 9-11 emphases on patriotism and nationalism, we can expect that a substantial population of
`
`bank customers are likely to confuse” the parties’ names if encountered in a common
`
`marketplace.
`
`Freestar argues that Dr. Lamoureux’s report is unreliable, not as a result of faulty
`
`methodology, but because Dr. Lamoureux employs no methodology at all. According to Dr.
`
`Lamoureux, his conclusions are based upon consultation of “classic texts” in the field of
`
`metaphorical association. The consultation of texts is acceptable if it leads to a report grounded
`
`in the accepted theory or method applicable to the field. However, as this court has stated
`
`before, “if [the expert] is unable to specify what type of methodology [he] employed in this case,
`
`it is impossible. . .to evaluate the propriety of that methodology”. Collier v Bradley 113 F.Supp.
`
`2d 1235, 1244-1245 (C.D. Il 2000).
`
`Dr. Lamoureux has not presented any proposal, theory, or technique justifying his
`
`conclusion that customers are likely to confuse the parties’ marks. Dr. Lamoureux includes no
`
`footnotes and attaches no supplements which explain the theories offered by the “classic texts”
`
`he read. He includes no reference to or discussion of the classic texts in his report. Thus, the
`
`court is left to speculate as to what the classic texts stated and how Dr. Lamoureux used those
`
`theories to reach the conclusions he articulates. Dr. Lamoureux proposes no theory which
`
`explains how one particular metaphor shared by three words becomes so dominant in customer’s
`
`minds that it overcomes the many other metaphorical associations attributable to the words. Dr.
`
`Lamoureux asserts that all of these words are “God-terms,” “Ideographs,” and “Ultimate-terms”;
`
`

`
`:08-CV-D'1127i8-MMM-—JA?G
`
`68
`
`Page 7 Di‘
`
`however, he offers no explanation of the factors or process by which a word is evaluated and
`
`categorized as a “God-term”. Further, Dr. Lamoureux offers no explanation of why words
`
`associated under the “God-term” category move beyond the realm of distinguishable similarity
`
`and into the world of confusion. His fleeting reference to “metaphorical markers” and similar
`
`meanings sets is accompanied by no stated theoretical underpinning which would explain the
`
`significance of these labels on consumer confusion in the marketplace.
`
`Further, Dr. Lamoureux references no polls or qualitative research supporting his
`
`statement that patriotic metaphorical associations “have become particularly ‘re-energized’ and
`
`show an increase in both patriotic and nationalistic fervor since the events of September 11,
`
`2001”. R. 50, Ex. D: Dr. Lamoureux Expert Report. Without any references to back up this bare
`
`assertion, Dr. Lamoureux’s statement is nothing more than conjecture. Is he asserting that “re-
`
`energized” patriotic metaphors reveal an increase in patriotic fervor? Does he base his conclusive
`
`findings on personal observation? Television reports? Dr. Lamoureux fails to establish any basis
`
`for a conclusion so important to his testimony. He also fails to discuss and quantify the phrase
`
`“particularly re-energized” or theoretically connect this concept with a likelihood of confusion in
`
`the marketplace. Have words bearing an association to patriotism become so “re-energized” that
`
`customers are not able to “meaningfully distinguish” between them? Id. Without data, process,
`
`theory, or any other testable methodology, expert testimony does not fall within the admissibility
`
`standards of Daubert.
`
`The utter absence of a reliable theory is highlighted by Dr. Lamoureux’s inability to
`
`express a theory orexplain the procedure by which he could evaluate whether the words
`
`“freedom,” “America,” “liberty,” and “patriot” fall under the same metaphorical umbrella of
`
`“patriotism” that also covers the terms “flag,” “free,” and “star”. Lamoureux Dep. at 112-120 (Q:
`
`

`
`1:-'08~cv4O“l2?Z8—M§MiM-JAG #68
`
`Page8«oé‘I2'58
`
`“Does patriot have a nationalistic or patriotic connotation to you?” A: “I don’t have a
`
`professional opinion. I haven’t studied it”). When questioned about his preparation process, Dr.
`
`Lamoureux stated that he was given the parties’ names and subsequently “formulated sort of a
`
`plan of attack as to how I would work this out if I was going to make the argumen ”. Lamoureux
`
`Dep. lll. Preparation by an expert which involves beginning with a goal (finding a similarity
`
`between the marks) and working backwards to meet the goal (evaluating only the given words,
`
`looking for a link) is the antithesis of reliable and scientific. See Castellow V. Chevron USA, 97
`
`F .Supp.2d 780 (S.D.Tex. 2000) (excluding expert testimony due to unreliable methodology
`
`which was “result-driven” and “anathema to both science and law”).
`
`In addition to a reliability inquiry, the court must evaluate the relevancy of the proffered
`
`testimony. Dr. Lamoureux’s general expertise in the field of rhetorical criticism is relevant to a
`
`discussion of similarities in meanings between two words. However, expert testimony is
`
`unnecessary, and may be excluded at the trial judge’s discretion, if
`
`“. . .all the primary factsican be accurately and intelligibly described to the jury, and if
`they, as men of common understanding are as capable of comprehending the primary
`facts and of drawing correct conclusions from them as are witnesses possessed of special
`or peculiar training, experience, or observation in respect of the subject under
`investigation.” Mercado V. Ahmed, 974 F.2d 863, 870 (7th Cir. 1992) (quoting Salem V.
`United States Lines Co., 370 U.S. 31, 35 (1962)).
`
`In light of these standards, it is clear that the two page report submitted by Dr.
`
`Lamoureux is not particularly helpful because the trier of fact is able to draw upon his/her own
`
`understanding and evaluate the meanings of the words included in the parties’ marks. First, the
`
`array of meanings and associations ascribable to the words “flag,” “free,” and “star” are easily
`
`discemable to “men of common understanding”. When presented with the parties’ marks, the
`
`average person is capable of concluding that all three words share a patriotic connotation. A
`
`person of average intelligence knows that the American flag features stars in the upper left
`
`

`
`ll1:08-CVJLM2'??8JMiM*M-JAG #68
`
`§Pajg‘e 59 ’oIf.‘2?8
`
`corner and symbolizes, among many other concepts, the “Land of the Free”. Conversely, the
`
`common juror is also capable of discerning the differences in meaning and association between
`
`the three words. A juror could conclude that a consumer hearing the word “star” would
`
`immediately think of outer space or a celebrity before thinking of the shape. It is entirely
`
`reasonable and conceivable, possibly even likely, that consumers could primarily associate the
`
`word “free” with an item or service requiring no payment. Considering the immense popularity
`
`of American football among American citizens, a group of people brainstorming the meanings of
`
`these words could correctly note that a “flag” is also the yellow piece of cloth thrown during a
`
`football game after a penalty occurs on the field. Men of common understanding do not need
`
`assistance in comparing the similarities and differences of common English words such as
`
`“flag,” “free” or “star”, They need help in determining how the similarities ofthese words lead
`
`to confusion, or conversely, how the