Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA944592
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`Filing date:
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`12/31/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91227407
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Plaintiff
`Baccarat S.A.
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`MARK S LEONARDO
`BROWN RUDNICK LLP
`ONE FINANCIAL CENTER
`BOSTON, MA 02111
`UNITED STATES
`ip@brownrudnick.com, mleonardo@brownrudnick.com, cftergiot-
`is@brownrudnick.com, jlu@brownrudnick.com
`617-856-8145
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`Testimony For Plaintiff
`
`Mark Leonardo
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`mleonardo@brownrudnick.com, JLU@BROWNRUDNICK.COM
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`/s/ mark leonardo
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`12/31/2018
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`Attachments
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`Baccarat - Rebuttal Testimonial Affidavit of James Berger.pdf(690346 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of:
`Serial No. 86/639975
`For: BACCARAT
`Published in the Official Gazette on October 20, 2015
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`BACCARAT S.A.,
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`OPPOSER
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`Laux, Stefan H.,
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`APPLICANT.
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`Opposition No. 91227407
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`Commissioner for Trademarks
`Trademark Trial and Appeal Board
`PO Box 1451
`Alexandria, VA 22313-1451
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`REBUTTAL TESTIMONIAL AFFIDAVIT
`FOR BACCARAT S.A. BY JAMES T. BERGER
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`I, James T. Berger, of Northbrook, Illinois, do solemnly affirm and state as follows:
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`1.
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`I submit this Rebuttal Testimonial Affidavit on behalf of Opposer Baccarat S.A.
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`(“Baccarat”) in response to the Declaration of Michal Matukin submitted by Applicant Stefan H.
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`Laux (“Applicant”) on November 15, 2018.
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`2.
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`I was initially retained by Baccarat in 2017 in connection with the above-
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`referenced opposition proceeding to provide an expert report to rebut opinions expressed in a
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`document submitted by Michal Matukin on behalf of Applicant on February 27, 2017, entitled
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`“Survey to Determine Consumer Perceptions of ‘BACCARAT’ as a Mark” (the “Matukin
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`Report”). A copy of my rebuttal expert report (the “Rebuttal Report”) is attached hereto as
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`Exhibit A. In connection with preparing the Rebuttal Report, I reviewed the Matukin Report and
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`survey materials attached thereto and am also familiar with the purported survey, results, and
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`conclusions made by Mr. Matukin therein.
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`3.
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`From reviewing relevant documents and conferring with Baccarat’s counsel in
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`connection with preparing the Rebuttal Report, I also became familiar with the pending
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`opposition to registration of BACCARAT as a trademark of Applicant Stefan Laux, to which this
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`testimonial rebuttal affidavit is directed. Since that time, from reviewing additional relevant
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`documents and conferring with Baccarat’s counsel, I am also familiar with the current status of
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`the pending opposition to registration of BACCARAT as a trademark of Applicant Stefan Laux,
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`to which this testimonial rebuttal affidavit is directed.
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`4.
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`I am currently a faculty member at Roosevelt University’s Walter E. Heller
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`College of Business Administration and Principal of James T. Berger/Market Strategies, LLC, a
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`strategic marketing communications and consulting firm. I currently teach courses in
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`Advertising, Consumer Behavior, Personal Selling and Sales Management, Global Marketing,
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`Marketing Management, and Marketing in Theory and Practice at Roosevelt University’s Walter
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`E. Heller College of Business Administration. I have previously taught graduate and
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`undergraduate marketing-related courses at DePaul University and Loyola University, and
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`Northwestern University’s Kellogg Graduate School of Management. In addition, I have taught
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`undergraduate courses at Northwestern University’s School of Continuing Studies, The
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`University of Illinois at Chicago, and The Lake Forest Graduate School of Management.
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`5.
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`I have extensive market research experience, including quantitative and
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`qualitative survey research, and have frequently performed in-person telephone and Internet-
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`based interviewing in various industries with respect to brands and trademarks. I have also
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`designed and coordinated market research programs, including drafting questionnaires,
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`performing and supervising personal interviews, organizing focus groups, tabulating and
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`evaluating data, and preparing research reports.
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`6.
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`I have also authored two books on trademark surveys. “Trademark Surveys – A
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`Litigator’s Guide,” which I co-wrote with FisherBroyles partner R. Mark Halligan, was
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`published in 2011 by Oxford University Press and is now in its third edition. I also authored
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`“Trademark Surveys in the Age of Daubert,” which was published in 2016 by Lexis-Nexis,
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`Matthew Bender. Both books are currently being marketed by Lexis-Nexis Matthew Bender.
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`7.
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`I have also delivered numerous continuing legal education programs entitled
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`“Intellectual Property Surveys: Best Practices,” including twice before the Chicago Bar
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`Association, twice before the Milwaukee Bar Association, before the St. Louis Bar Association,
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`and before the Texas Bar Association. In addition, I was a presenter at a session in March 2003,
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`before the Minnesota State Bar Association, entitled “The Effective Use of Survey Experts and
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`Evidence in Trademark Cases.”
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`8.
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`I am the author of nineteen published articles and papers on intellectual property
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`and trademark/secondary meaning surveys for INTELLECTUAL PROPERTY TODAY
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`Magazine, including: (1) “10 Frequently Asked Questions About Intellectual Property Surveys,”
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`which appeared in the August 2003 issue; (2) “Swimming in Shark-Infested Waters,” which
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`appeared in the June 2004 issue; (3) “Creativity Key to Executing Toughest IP Survey Projects,”
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`which appeared in the July 2005 issue; (4) “What IP Attorneys Should Know About
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`Expectations and Costs for Survey Research,” which appeared in the April 2006 issue; (5) “10
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`Easy Ways to Blow Away A Survey,” which appeared in the January 2007 issue; (6) “The Power
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`and Perils of Internet Surveys,” which appeared in the August 2007 issue; (7) “How to Do an IP
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`Survey Without Giving Away the Store,” which appeared in the April 2008 issue; (8) “New
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`Challenges to the IP Survey Process,” which appeared in the July 2009 issue; (9) “Introducing
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`the Internet/Telephone ‘Hybrid’ Survey,” which appeared in the July 2010 issue; (10) “When
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`NOT To Do An Intellectual Property Survey,” which appeared in the November 2010 issue; (11)
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`“A New Survey Protocol for Proving/Disproving Design Patent Infringement,” which appeared
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`in the April 2011 issue; (12) “How to Apply Theory of Probability to Decision to the Decision of
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`Whether to Do an I.P. Survey,” which appeared in the February 2011 issue; (13) “The
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`Descriptive/Suggestive Conundrum in Trademark Surveys,” which appeared in the November
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`2011 issue; (14) “The Pre-Litigation Pilot Trademark Survey,” which appeared in the March
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`2012 issue; (15) “Frequently Asked Questions About Trademark Surveys,” which appeared in
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`the December, 2012 issue, and (16) “Internet Surveys Come of Age,” which appeared in the
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`July, 2013 issue; (17) “10 Common Myths About Trademark Surveys,” which appeared in the
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`September, 2013 issue; (18) “Will A Survey Help Win A Likelihood of Confusion Case?” in the
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`September, 2014 issue, and (19) “Will a Survey Enhance the Chances of Winning Your
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`Trademark Infringement Case?” in the Fall 2018 issue of BRIGHT IDEAS, a publication of the
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`Intellectual Property Law Section of the New York State Bar Association.
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`9.
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`I have previously testified and been qualified as an expert in the areas of strategic
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`marketing, marketing communications, and intellectual property surveys with respect to brands
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`and trademarks in the United States. Over the last twenty years, I have been retained as an
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`expert in more than 100 lawsuits in the United States. In several of those lawsuits, the relevant
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`issue for which I was retained related to trademark or trade dress infringement, likelihood of
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`confusion, and/or whether a trademark had achieved secondary meaning. In addition, I have also
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`been retained as an expert in cases involving efforts to prove or disprove whether certain names
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`and marks were generic, descriptive, or suggestive under U.S. trademark law.
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`10.
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`Based on my training and professional experience, including my extensive market
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`research and trademark survey experience, I am extremely familiar with and knowledgeable
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`about trademark survey protocols, standards, and tests routinely used and accepted in survey
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`research and by U.S. courts in trademark litigation.
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`11.
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`A true and accurate copy of my complete curriculum vitae, which includes details
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`regarding my teaching experience, publications, testimony experience, is attached as Exhibit A
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`to my Rebuttal Report. See Exhibit A, at 16.
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`A. Mr. Matukin’s Lack of Relevant Experience, Training, or Qualifications
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`12.
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`In my opinion, Mr. Matukin lacks the relevant experience, training, and
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`qualifications to conduct a trademark survey or render an expert opinion in this matter. Mr.
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`Matukin’s declaration testimony fails to set forth any relevant foundation for his purported
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`qualifications to conduct a trademark survey or render any opinion regarding the “fame” of the
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`BACCARAT Marks.
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`13. Mr. Matukin testifies that he is the Chief Scientific Officer of Neurohm Sp. z.o.o.
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`Sp.k. (“Neurohm”), which Mr. Matukin alleges “designs, executes and reports on surveys
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`conducted in a wide variety of markets.” Matukin Decl., at ¶ 1. According to Neurohm’s own
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`company website, which I have visited and reviewed, Neurohm proclaims that it is “a global
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`neuro research & technology provider. We create solutions to better understand consumers’ true
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`emotions, motives, and drivers. Take your research to the next level by applying neuro
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`knowledge and tools.” Based on my review of the Matukin Report and the Neurohm company’s
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`website, it does not appear that the Neurohm company has any experience or expertise with
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`respect to conducting intellectual property research or trademark surveys, let alone trademark
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`surveys conducted for the U.S. market within the framework of U.S. intellectual property laws.
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`14.
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` As I discussed in my Rebuttal Report, in his own report and on the Neurohm
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`company’s own website, Mr. Matukin is identified as an “expert in continuous measurement of
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`emotion and attention,” a PhD candidate at the University of Social Sciences and Humanities,
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`Local Chair for Poland of Neurohm’s marketing Science and Business Association (NMSBA),
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`and an “experienced psychologist and researcher involved in application of new technologies
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`such as electroencephalography, electromyography, galvanic skin response and eye-tracking to
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`marketing field.” See Exhibit A, at 7. None of this apparent experience is relevant to or
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`provides any basis for Mr. Matukin or his firm to conduct a trademark survey for the U.S. market
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`or render an expert opinion thereon. Accordingly, neither Mr. Matukin nor Neurohm is qualified
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`to conduct a survey or test a trademark for “fame.”
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`15.
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`I further note that Mr. Matukin’s own declaration testimony does not actually
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`state whether Mr. Matukin has any prior experience with surveys, erroneously declaring instead
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`only that he has “xx years of experience in designing and conducting all types of scientific
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`research surveys in various jurisdictions including the United States.” Matukin Decl., at ¶ 2.
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`Moreover, and extremely tellingly, Mr. Matukin also does not identify any details or examples of
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`any of his alleged years of survey experience in the United States in any of his testimony, in the
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`Matukin Report, or in the appendices to the Matukin Report. In summary, Mr. Matukin has
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`failed to present any support for any of his purported prior experience with trademark surveys in
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`the U.S. market.
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`B. Mr. Matukin’s Survey Methodology is Deeply Flawed
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`16.
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`In his Declaration, Mr. Matukin attempts to clarify and elaborate on certain
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`findings and conclusions asserted in his initial Matukin Report. Despite these efforts, however,
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`the fundamental flaws in Mr. Matukin’s survey and conclusions pointed out in my Rebuttal
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`Report remain glaring, rendering his survey and conclusions deeply flawed and therefore
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`irrelevant.
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`a. Mr. Matukin’s Failure to Define Key Survey Terms
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`First, both the Matukin Report and Mr. Matukin’s testimony are flawed because
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`17.
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`they fail to define any of the key terms referenced or relied upon in forming Mr. Matukin’s
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`opinions. Mr. Matukin’s testimony first declares that his survey was designed to “determine
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`whether the alleged ‘BACCARAT’ marks have achieved fame.” Matukin Decl., at ¶ 3. In the
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`following paragraph, however, Mr. Matukin also declares that his survey was designed to
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`“determine to what degree, if any, the alleged ‘BACCARAT’ mark is well-known or famous,
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`evokes specific category product associations, among U.S. consumers and whether
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`‘BACCARAT’ is believed to be used by a single company or by various companies.” Matukin
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`Report, at 4. These inconsistent and undefined objectives underscore the unfocused and
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`irrelevant nature of Mr. Matukin’s testimony, report, and survey findings.
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`18.
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`Nowhere in Mr. Matukin’s report does he define the terms “fame” or “well-
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`known.” For purposes of evaluating Mr. Matukin’s opinions and conclusions, as I discussed in
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`my Rebuttal Report, I note that the Merriam-Webster Dictionary defines the term “fame” as:
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`“The condition of being known or recognized by many people.” The Merriam-Webster
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`Dictionary defines the term “well-known” as: “Known by many people.” From my review and
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`analysis of Mr. Matukin’s survey and conclusions, I conclude that Mr. Matukin has merely
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`equated the unaided awareness of a random group of respondents with demonstrating the “fame”
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`and “well-known” of the BACCARAT Marks. However, the fame of a mark cannot be
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`determined by merely testing an unfiltered group for awareness of a mark.
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`b. Mr. Matukin’s Failure to Employ Any Accepted Survey Protocol
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`19. With respect to his “Survey Methodology,” Mr. Matukin declares that his survey
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`“utilized an online protocol and contained open and multiple choice questions, with random
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`rotation within the multiple choice brand blocks as well as with randomized order of the
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`questions about categories.” Matukin Decl., at ¶ 5. However, based on my experience
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`conducting and analyzing consumer surveys with respect to brands and trademarks in the United
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`States and my understanding of accepted survey methodologies and protocols, this purported
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`“methodology” does not adhere to any accepted or commonly-used survey standards.
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`20.
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`As discussed in detail in my Rebuttal Report, there are several standard trademark
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`survey protocols accepted by U.S. courts in trademark disputes, including what is known as the
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`Teflon survey method to test generic-ness, as well as the Eveready and Squirt survey protocols
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`for testing likelihood of confusion. Mr. Matukin’s survey apparently attempts to test for whether
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`“Baccarat” is a common name rather than a brand name, but fails to accomplish this. Rather
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`than employing an accepted protocol, Mr. Matukin merely questions respondents about their
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`awareness of the “Baccarat” mark in different contexts, in an attempt to show that Baccarat is a
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`common name, rather than a brand name. Had Mr. Matukin used an accepted survey protocol,
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`such as the Teflon protocol to test whether Baccarat is recognized as a common name or brand
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`name, Mr. Matukin could have determined whether BACCARAT is perceived as a brand name
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`for crystal glassware, as opposed to a generic or common name. The Teflon protocol would also
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`have enabled Mr. Matukin to opine on the strength of the Baccarat brand by comparing it to
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`other strong and/or famous brands in the crystal glassware category. Mr. Matukin’s survey, in
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`contrast, employed an inadequate test, and his results have no probative value.
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`c. Mr. Matukin’s Failure to Define a Target Market
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`21. Mr. Matukin next testifies that, in my Rebuttal Report, I apply “an incorrect legal
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`standard for fame,” but Mr. Matukin’s apparent concept of the appropriate “legal standard for
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`fame” is flawed and without support. See Matukin Decl., at ¶ 17.
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`22.
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`First, Mr. Matukin’s testimony purports to rely on the definition of a “famous
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`mark” set forth in 15 U.S.C. §1125(c)(2)(A). However, this definition is, by its terms,
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`specifically limited to establishing a claim for dilution by blurring or tarnishment seeking
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`injunctive relief under the Lanham Act. 15 U.S.C. § 1125(c)(2)(A). As an initial matter, despite
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`his citation to this definition, which defines a “famous mark” as one that is “widely recognized
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`by the general consuming public of the United States as a designation of course of the goods or
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`services of the mark’s owner,” Mr. Matukin’s survey is not even tailored to meet this definition
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`because he failed to use any kind of screener or qualifier or otherwise limit his survey market in
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`any way to the “general consuming public.”
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`23.
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`Furthermore, Mr. Matukin asserts that my Rebuttal Report erroneously applies the
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`concept of “niche fame,” which he claims has “long been rejected as an acceptable standard.”
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`Matukin Decl., at ¶ 17. Once again, however, the concept of “niche fame” that Mr. Matukin
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`references, but does not cite or describe, is also specifically limited to analysis of federal dilution
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`claims, in which federal courts have merely found “niche market fame” insufficient to meet the
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`standard for a “famous mark” as defined in the dilution statute. As federal courts have
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`explained, niche fame exists when a mark is well known only in a niche market, a particular
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`channel of trade, or a specific segment of an industry, or when it enjoys “only brief fame in a
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`small part of the country or among a small segment of the population.” See, e.g., TCPIP Holding
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`Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 99 (2d Cir. 2001). My opinion on the need to define a
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`relevant target market in conducting a Lanham Act consumer survey does not amount to a
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`reliance on “niche fame,” as Mr. Matukin incorrectly suggests. As I discuss in my Rebuttal
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`Report, defining a relevant target market, which is the portion of the general population which
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`may be exposed to the brand as potential consumers, is necessary to ensure an accurate analysis
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`of fame. Because Mr. Matukin’s survey failed to employ any kind of screener or otherwise
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`confine the survey to respondents in the relevant target market, I reiterate my opinion that Mr.
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`Matukin’s survey results are inaccurate, heavily distorted, and do not speak to the fame of the
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`BACCARAT Marks.
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`24. Mr. Matukin also claims that his survey respondents were “selected on a non-
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`judgmental basis.” Matukin Decl., at ¶ 7. However, by definition, the purported survey he has
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`conducted uses a “judgment sample,” which is a nonprobability sample in which the selection
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`criteria are based on the researcher’s own judgment about the representativeness of the
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`population under study. This is discussed in detail in Marketing Research by Carl McDaniel and
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`Roger Gates, Wiley (11th ed. 2018). Mr. Matukin’s survey is certainly not a probability survey
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`because his use of a consumer panel automatically disqualifies his survey from being any kind of
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`probability survey. In a probability survey, every member of the relevant target market has an
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`equal chance of being selected. In fact, Mr. Matukin never identifies a relevant target market for
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`his survey. For Mr. Matukin to have conducted a probability survey, he would have had to draw
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`a sample from the population as a whole. Such surveys are often performed by media, TV
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`networks, and political candidates. In contrast, members of a consumer panel, such as the one
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`used by Mr. Matukin, are populated by individuals who self-select to be part of the panel. Using
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`the self-selection criteria, it is impossible for any consumer panel to be able to provide a true
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`probability sample. Because a judgment sample is a nonprobability sample, its ability to project
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`results on a total population is limited. Mr. Matukin provides no explanation for how his
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`respondents were purportedly selected, apparently because no selection criteria were actually
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`used. A review of Mr. Matukin’s survey confirms that no screener questionnaire was employed
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`to screen, limit, or qualify respondents, and thus that the respondents of Mr. Matukin’s survey
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`were not in fact “selected” but were entirely random and not qualified by any geographic,
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`demographic, or psychographic dimensions As I detail in my Rebuttal Report, the type of survey
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`Mr. Matukin purports to perform should include a screener questionnaire to ensure that the
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`survey reaches members of the relevant target market. See Exhibit A, at 11-12. As I have
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`discussed herein, for a consumer survey on the fame of a mark, the relevant target market must
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`consist of that portion of the general population which may be exposed to the brand as potential
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`consumers, including individuals who are likely to have purchased, intend to purchase, or might
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`otherwise be affected by the marketplace reputation of the brand or mark in question. Id. at 10-
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`11. Mr. Matukin’s survey makes no attempt whatsoever to ensure that his survey reached or
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`addressed any relevant target market.
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`25.
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`In his testimony, Mr. Matukin also baselessly proclaims that his survey “included
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`an appropriate qualifier, limiting the participants to those with an interest in the subject matter.”
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`Matukin Decl., at ¶ 17. However, there is no evidence in the Matukin Report or the attached
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`survey materials and results indicating that any such a qualifier or limitation was in fact
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`employed to limit the respondents to his survey. Moreover, Mr. Matukin also does not provide
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`any detail or explanation of how he purported to “limit[] the participants to those with an interest
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`in the subject matter,” and does not attempt to define or explain what characteristics comprise an
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`“interest in the subject matter,” or what the purported “subject matter” is. For these reasons,
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`based on my prior experience and knowledge regarding survey protocols, Mr. Matukin has failed
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`to appropriately screen or qualify his respondents, and his survey results therefore cannot draw
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`any conclusions with regard to the the fame of the Marks.
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`26.
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`Despite first citing to the dilution statute for a definition of a “famous mark,” in
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`the same paragraph, Mr. Matukin then proclaims without citation or authority that fame “must be
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`proven on a national level representative of [sic] whole U.S. population (limited to those with an
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`interest in the subject matter) and cannot be limited to geographic areas or specialized markets.”
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`Matukin Decl., at ¶ 17. Mr. Matukin once again does not attempt to define or explain any terms
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`in this purported standard or how his survey was structured to satisfy this standard. As an initial
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`matter, Mr. Matukin has in no way captured the “whole U.S. population” or attempted to impose
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`any limit to “those with an interest in the subject matter,” terms that are never defined. In
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`addition, Mr. Matukin never sets forth who might be considered to have “an interest in the
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`subject matter,” what the relevant “subject matter” is, or why such limitations would be relevant
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`to his survey. In short, despite his baseless claims otherwise, Mr. Matukin has merely tested a
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`random group provided by the Internet panel for awareness on an unaided basis without any
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`limitation, qualifier, or control group. This is not professional practice and does not conform to
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`any professional or accepted standards.
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`27. Moreover, the exclusive focus in Mr. Matukin’s testimony on the statutory
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`definition of a “famous mark” for purposes of a federal dilution claim fails to address the
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`relevant standard for fame in with respect to a likelihood of confusion analysis, which is whether
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`the mark has “extensive public recognition and renown.” This definition was presented in the
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`case, Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
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`2002). Mr. Matukin’s survey and report do not demonstrate, or even purport to demonstrate, that
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`the BACCARAT Marks lack extensive public recognition and renown.
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`d. Mr. Matukin’s Inappropriate Use of Confusing and Leading Questions
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`28. With respect to the survey questions themselves, Mr. Matukin declares that “[a]ll
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`of the questions as well as the prompted answers of recognition questions were prepared in a
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`clear and non-leading manner.” Matukin Decl., at ¶ 8. Mr. Matukin provides no support for this
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`contention, which is belied and refuted by the survey questions themselves. The survey
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`questions employed by Mr. Matukin are confusing, vague, and simply not tailored to elicit any
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`relevant information or data regarding the “fame” of the BACCARAT Marks. For example, one
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`of the nine sets of question in Mr. Matukin’s survey asks respondents to “please type in the box
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`the names of the crystal makers that you can think of.” See Matukin Decl., at Exhibit 48, at
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`Appendix D. That question is followed by, “What other names of crystal makers, if any, can you
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`think of?”; followed thereafter by a multiple choice question which reads, “Below you can find
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`some additional names that may or may not be used for ‘crystal glassware’. Please mark the
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`names of crystal makers that you have heard of” and lists nine choices. Id. It further asked
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`respondents the following series of questions:
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`• “Is the name ‘Baccarat’ being used for different products or services by different
`companies, or it’s being used [sic] by just one company exclusively?”
`• “What is the name of the company that uses ‘Baccarat’ name [sic] exclusively?”
`• “What products or services offers [sic] the company that uses Baccarat name
`exclusively?”
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`Id. As I discuss in my Rebuttal Report, the wording and structure of each set of questions are
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`vague, confusing, unclear, undefined and in many instances leading and, for these reasons,
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`cannot be expected to elicit any useful or meaningful responses. Moreover, the apparent
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`objective of these questions, namely seeking a random group of internet respondents’ opinion as
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`to whether the mark “BACCARAT” is used by different companies, have no apparent
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`relationship to the stated objective of the survey, to determine the “fame” and “well-known” of
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`the mark “BACCARAT.”
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`e. Mr. Matukin’s Failure to Comply with Any Accepted Survey Standard
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`29.
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`Finally, Mr. Matukin also curiously testifies that his survey was conducted “in
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`accordance with the requirements set forth in the Manual for Complex Litigation, 4th Ed.
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`§11.493 (2004).” Matukin Decl., at ¶¶ 6, 19. As an initial matter, the Manual for Complex
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`Litigation (the “Manual”) does not set forth any “requirements” for conducting surveys and does
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`not purport to set forth any standard or accepted survey methodology or protocol. Rather, the
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`Manual, which is intended as a practice guide for federal judges, merely provides
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`recommendations and suggestions on federal litigation practices, and does not purport to set forth
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`any methodology or protocol for conducting trademark surveys. Instead, Section 11.493 of the
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`Manual, which Mr. Matukin specifically cites, sets forth only a general overview of the types of
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`factors that may affect the ultimate relevance and reliability of sampling and opinion surveys in
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`trial proceedings. The types of factors include “whether the questions asked were clear and not
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`leading; whether the survey was conducted by qualified persons following proper interview
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`procedures; and whether the process was conducted so as to ensure objectivity (e.g., determine if
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`the survey was conducted in anticipation of litigation and by persons connected with the parties
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`or counsel or by persons aware of its purpose in the litigation).” Manual, § 11.493. As is
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`evident from these excerpts, the Manual does not discuss the specific survey standards
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`referenced, such as what comprises a qualified person or proper interview procedure. Notably,
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`Mr. Matukin’s survey fails to satisfy even these high-level, general descriptions considered by
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`courts in assessing the reliability of the survey as discussed in the Manual.
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`30.
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`Finally, I note that Mr. Matukin also claims that “[t]he survey conformed to the
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`generally accepted standards of professional marketing research and included sufficient quality
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`control measures.” Matukin Decl., at ¶ 7. This assertion is entirely baseless and false. Mr.
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`Matukin does not identify any of these “generally-accepted” standards or any of the alleged
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`“quality control measures” purportedly employed. I see no evidence in Mr. Matukin’s survey or
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`conclusions of the use of any generally-accepted survey standards or quality control measures.
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`Based on my extensive trademark survey experience and knowledge of commonly-accepted
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`survey methodology and standards used by U.S. courts, as discussed in detail in my Rebuttal
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`Report, it is my opinion that Mr. Matukin has not employed any generally-accepted standards of
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`intellectual property-oriented research and any quality control measures whatsoever in
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`conducting his purported survey.
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`C. Mr. Matukin’s Survey Findings Are Irrelevant and Unreliable
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`31. Mr. Matukin’s testimony concludes that the BACCARAT Marks are “not famous
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`or well-known” based on his purported survey results on three topics: (1) “[a]wareness of the
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`alleged ‘BACCARAT’ mark in connection with crystal goods or services;” (2) “[a]wareness of
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`the alleged ‘BACCARAT’ mark in connection with hotel goods or services;” and (3)
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`“[a]wareness of ‘BACCARAT’ being used exclusively by one company[.]” Matukin Decl., at ¶¶
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`9-13. In addition to the various methodological flaws and deficiencies identified herein and in
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`my Rebuttal Report, it is my opinion that none of these three issues, all vaguely addressed to the
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`survey group’s “awareness” of the mark “BACCARAT” in particular contexts, informs or
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`provides any probative value to the issue of the “fame” of the BACCARAT Marks.
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`32. Mr. Matukin’s findings, which apparently focus exclusively on comparing the
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`survey group’s general awareness of the mark “BACCARAT” with their awareness of other
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`marks, are deeply flawed and do not inform an analysis of “fame.” See Matukin Decl., at ¶¶ 9-
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`11. For example, Mr. Matukin’s assertion that 5.6 percent of respondents answered with the
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`mark “BACCARAT” in response to a question asking for the “name of the crystal makers that
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`you can think of,” as compared to 26.1 percent answering with the mark, “Waterford,” does not
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`say anything about the fame or renown of the BACCARAT Marks. Id. at ¶ 9. Similarly, his
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`assertion that 23.6 percent of respondents selected “BACCARAT” when presented with the
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`option from a list of “purported crystal makers,” as compared to 50 percent of respondents
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`selecting other answers, is also irrelevant. Id. The “awareness” by survey respondents of other
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`“crystal makers” besides Baccarat simply does not disprove or negate, as Mr. Matukin suggests,
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`the fame of the BACCARAT Marks. As discussed in my Rebuttal Report, more than one mark
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`can be famous—meaning having extensive public recognition and renown—in the same or
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`similar category of goods or services. Take, for example, the marks “Pepsi” and “Coca Cola,”
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`which are examples of marks that have undisputedly achieved fame in the same or similar
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`categories of goods or services. Therefore, in addition to being irrelevant due to numerous
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`methodological flaws, Mr. Matukin’s analysis of his survey data is also flawed and his
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`conclusions are inappropriate.
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`33. Mr. Matukin also identifies the purported results of his survey group’s
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`“[a]wareness of the alleged ‘BACCARAT” mark in connection with hotel goods or services,”
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`which he concludes “w