Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA805281
`
`Filing date:
`
`03/06/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92064898
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Converse Inc.
`
`HELEN HILL MISKER
`BANNER & WITCOFF LTD
`10 SOUTH WACKER DRIVE, SUITE 3000
`CHICAGO, IL 60606
`UNITED STATES
`hminsker@bannerwitcoff.com, aheinze@bannerwitcoff.com, bwlitdock-
`et@bannerwitcoff.com, bwptotm@bannerwitcoff.com
`
`Opposition/Response to Motion
`
`Helen Hill Minsker
`
`hminsker@bannerwitcoff.com, aheinze@bannerwitcoff.com, bwlitdock-
`et@bannerwitcoff.com, bwptotm@bannerwitcoff.com
`
`/helen hill minsker/
`
`03/06/2017
`
`006952.00169 Converse Opposition to Walmart_s Motion to Sus-
`pend.pdf(213076 bytes )
`006952.00169 Exhibit A - Motion in Limine.pdf(1750241 bytes )
`006952.00169 Exhibit B - Initial Determination (public).pdf(2198099 bytes )
`006952.00169 Exhibit C - Superstar Consent Judgment.pdf(270460 bytes )
`006952.00169 Exhibit D - Autonomie Consent Judgment.pdf(92266 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Registrant
`Converse Inc.
`
`
`Mark:
`
`
`
`Cancellation No. 92064898
`
`
`
`
`
`Registration No.: 4,062,112
`
`Registered: November 29, 2011
`
`
`WAL-MART STORES, INC.,
`Petitioner,
`
`
`vs.
`
`CONVERSE INC.
`Registrant.
`
`
`REGISTRANT CONVERSE INC.’S RESPONSE IN OPPOSITION TO PETITIONER
`WAL-MART STORES, INC.’S MOTION TO SUSPEND
`
`
`Registrant Converse Inc. (“Converse”) respectfully submits this Response in Opposition
`
`
`
`
`
`
`to Petitioner Wal-Mart Stores, Inc.’s (“Walmart’s”) Motion to Suspend the Proceeding.
`
`I.
`
`INTRODUCTION
`
`This proceeding relates to U.S. Trademark Registration No. 4,062,112 (“the ‘112
`
`Registration”). Walmart requests suspension of this proceeding in view of a different proceeding
`
`that Converse filed against Walmart in the International Trade Commission (“ITC”), now on
`
`
`
`1
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`

`

`appeal to the U.S. Court of Appeals for the Federal Circuit, involving a different trademark, U.S.
`
`Trademark Registration No. 4,398,753 (“the ‘753 Registration”). Converse did not and has not
`
`asserted the ‘112 Registration against Walmart.
`
`Converse requests that the Board deny Walmart’s Motion to Suspend because (1) the
`
`‘112 Registration is not at issue in the ITC proceeding and Walmart itself argued to the ITC that
`
`evidence relating to the ‘112 Registration does not bear on the validity of the ‘753 Registration;
`
`(2) the Board is best situated to decide the relevant issues given its expertise in trademark law;
`
`and (3) a suspension will substantially prejudice Converse and potentially harm consumers
`
`because Converse has relied on the ‘112 Registration to protect consumers and prevent
`
`infringements, and continuing with this proceeding will not prejudice Walmart.
`
`Accordingly, because Walmart has failed to show good cause for suspending the
`
`proceeding that it initiated, Converse respectfully requests that the Board exercise its discretion
`
`and deny the Motion to Suspend.
`
`II.
`
`BACKGROUND
`
`The Trademark Office issued the ‘112 Registration to Converse on November 29, 2011,
`
`for the mark shown and described below:
`
`Figure 1: The ‘112 Registration
`
`The mark consists of the three dimensional trade dress
`design of the iconic and classic Chuck Taylor All Star
`basketball shoe for which the following primary features
`are claimed: (a) Multi-Patterned Rubber Toe Strip. The
`rubber toe strip has four layers of bands featuring
`intricate and distinct patterns of three-dimensional
`diamonds and lines. (b) Double Rand Stripes. Two
`parallel horizontal lines run along the rubber outsole of
`the shoe. The uppermost contrasting stripe runs along the
`edge of the rubber outsole around the entire
`circumference of the shoe, including on the toe cap. The
`second contrasting stripe appears midway along the
`
`
`
`
`
`2
`
`

`

`rubber outsole and runs from the front edge of the license
`plate heel tab to the back edge of the rubber toe bumper.
`(c) Brushed Metal Grommets in Medial Side Arch. Two
`round brushed steel grommets are placed in a horizontal
`line above the inside medial arch of the shoe. (d) Brushed
`Metal Eyestay Grommets. A series of equally-spaced
`wide, round brushed metal eyestay grommets are part of
`the lacing system instead of hooks, loops, D-rings, or
`other holding and lacing mechanisms. (e) Convex
`Rubber Toe Cap. A raised, protruding rubber toe cap. (f)
`Double Stitching and Box-Like Stitch Along the Upper.
`The matter shown in broken lines, namely, the license
`plate heel tab as well as the outline of the shoe along the
`upper, the tongue, the back edge, the rear panel, and the
`sole are not part of the mark. The broken lines serve only
`to show the position or placement of the primary features
`of the trade dress. The dashed lines indicating the Double
`Stitching and Box-Like Stitch Along the Upper are part
`of the mark.
`
`
`
`The Trademark Office issued the ‘753 Registration to Converse on September 10, 2013,
`
`for the mark shown and described below:
`
`Figure 2: The ‘753 Registration
`
`The mark consists of the design of the two stripes on the
`midsole of the shoe, the design of the toe cap, the design
`of the multi-layered toe bumper featuring diamonds and
`line patterns, and the relative position of these elements to
`each other. The broken lines show the position of the
`mark and are not claimed as part of the mark.
`
`
`
`
`
`Thus, although the ‘112 and ‘753 Registrations relate to the product configuration of
`
`Converse’s Chuck Taylor All Star shoes (“All Star” shoes), they are for different trademarks.
`
`Converse did not and has not asserted the ‘112 Registration against Walmart. Nevertheless,
`
`Walmart filed a Petition to Cancel the ‘112 Registration, alleging it is or will be damaged by the
`
`‘112 Registration because Converse asserted the ‘753 Registration against Walmart in the ITC,
`
`
`
`3
`
`

`

`In re Certain Footwear Products, Inv. No. 337-TA-936, now on appeal to the Federal Circuit,
`
`No. 2016-2497. (Pet. ¶ 5.)
`
`III. ARGUMENT
`
`Suspension of a cancellation proceeding pending termination of a civil action is not
`
`mandatory; rather, it “is solely within the discretion of the Board.” TBMP § 510.02(a); see also
`
`Jodi Kristopher Inc. v. Int’l Seaway Trading Corp., 91 U.S.P.Q.2d 1957, 2009 WL 3154232, at
`
`*2 (T.T.A.B. Jan. 30, 2009) (denying the petitioner’s motion to suspend). To that end, “[a]ll
`
`motions to suspend, regardless of circumstances . . . are subject to the ‘good cause’ standard.
`
`‘[B]oth the permissive language of Trademark Rule 2.117(a) . . . and the explicit provisions of
`
`Trademark Rule 2.117(b) make clear that suspension is not the necessary result in all cases.’”
`
`Jodi, 2009 WL 3154232, at *2 (citations omitted). Among the issues the Board considers in
`
`deciding whether to suspend a proceeding is whether a pending civil action involves issues in
`
`common with the proceeding before the Board because the decision of a federal district court
`
`may be binding on the Board. TBMP § 510.02(a).
`
`Walmart has not established “good cause” for suspending this proceeding. First, while it
`
`now argues that the Federal Circuit’s decision as to the ‘753 Registration has a bearing on this
`
`proceeding, Walmart took the opposite position in the ITC proceeding. Indeed, Walmart
`
`repeatedly argued that evidence relating to marks other than the ‘753 Registration, e.g., the ‘112
`
`Registration, was “irrelevant, inadmissible and/or entitled to zero weight” in assessing validity of
`
`the ‘753 Registration (see Figure 3 below). (Ex. A at 2, 2 n.2, motion in limine.) For example,
`
`Walmart and the other Respondents in the ITC proceeding filed a motion in limine seeking to
`
`exclude survey evidence on the grounds that the evidence did not relate to the specific elements
`
`at issue in the ‘753 Registration, but instead related to additional elements of All Star shoes, such
`
`
`
`4
`
`

`

`as the metal grommets and box stitching, which are covered by different marks, including the
`
`‘112 Registration and U.S. Trademark Registration No. 4,065,482 (“the ‘482 Registration”).1
`
`(See, e.g., id. at 1, 2, 2 n.2, 4, 7, 8.)
`
`Figure 3: Annotated Excerpt of Respondents’ Motion in Limine in the ITC Proceeding
`
`
`
`Likewise, the Initial Determination (“ID”) issued by the Chief Administrative Law Judge
`
`(“CALJ”) in the ITC proceeding acknowledged Walmart’s and the other Respondents’ argument
`
`that evidence that did not specifically relate to the elements at issue in the ‘753 Registration
`
`should not be considered in assessing validity of the ‘753 Registration. (Ex. B at 30, 32.) Based
`
`on those arguments, the CALJ declined to consider evidence and testimony relating to other
`
`elements of All Star shoes, such as the elements depicted and described in the ‘112 Registration,
`
`in assessing validity of the ‘753 Registration. (Id. at 32 (“As with Dr. McDonald’s survey, there
`
`is nothing in the record to establish that it was the [elements at issue in the ‘753 Registration] and
`
`not the other design elements [of All Star shoes], such as the box stitching, grommets, heel tag,
`
`or tongue patch which led the survey respondents [in the late Dr. Ford’s surveys] to associate the
`
`shoe with Converse. Accordingly, the undersigned will not consider the results of these
`
`surveys.”).)2
`
`
`
`
`1 Walmart, along with another entity named in the ITC proceeding, Highline United, LLC,
`recently filed Petitions to Cancel the ‘482 Registration, Cancellation Nos. 92065219 and
`92065295.
`
` 2
`
` Notably, even if the Federal Circuit affirmed the ITC’s invalidity determination of the ‘753
`Registration, that decision would not resolve the issues presented in Walmart’s Petition, e.g.,
`5
`
`
`
`

`

`Here, the Board should reject Walmart’s sudden reversal of position and hold Walmart to
`
`its prior representations in the ITC proceeding. Cf, e.g., Nat’l Med. Enters., Inc. v. United States,
`
`28 Fed. Cl. 540, n.2 (1993) (“[j]udicial estoppel . . . protects the integrity of the judicial process
`
`by preventing a party from taking a position inconsistent with one successfully and
`
`unequivocally asserted by the same party in a prior proceeding.”).
`
`Second, while Converse recognizes that the law provides for cancellation proceedings,
`
`such proceedings ought to take place in a speedy and efficient manner. Suspension of this
`
`proceeding, which Walmart initiated, will significantly delay the Board’s decision on the merits.
`
`Indeed, given the Board’s particularized expertise on the issues raised in Walmart’s Petition, it
`
`would be far more efficient to move forward with this proceeding rather than wait for the Federal
`
`Circuit to issue a ruling applicable to a different trademark and on appeal from a different
`
`administrative agency that does not have particularized expertise in trademark law. See, e.g.,
`
`Institut Nat. Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1582 (Fed. Cir.
`
`1992) (noting that the Board “consists of trademark experts”).
`
`Third, suspension would substantially prejudice Converse and potentially harm
`
`consumers, while continuing with this proceeding will not prejudice Walmart. In the over five
`
`years since the Trademark Office issued the ‘112 Registration, Converse has relied on the ‘112
`
`Registration to enforce its trademark rights in the product configuration of its iconic All Star
`
`shoes. Those enforcement activities include sending over one hundred cease and desist letters to
`
`entities seeking to trade on Converse’s goodwill. Many of those letters are specific to the ‘112
`
`Registration, as well as the ‘482 Registration. Relatedly, Converse has frequently asserted the
`
`‘112 Registration at one of the world’s largest footwear trade shows held in Las Vegas twice a
`
`
`whether the ‘112 Registration—a different trade dress comprised of a different, more
`multifarious combination of design elements—is valid.
`6
`
`
`
`

`

`year to stop counterfeits and/or close-copies of its All Star shoes. Converse has also entered into
`
`agreements whereby infringers acknowledge Converse’s rights in the ‘112 Registration and
`
`agreed to stop violating those rights. And, for several years, Converse’s rights in its ‘112
`
`Registration have been upheld by the courts. See, e.g., Consent Judgment and Permanent
`
`Injunction Order, NIKE, Inc. and Converse Inc. v. Superstar Int’l, Inc. et al., No. 2:12-cv-5240
`
`(C.D. Cal. May 17, 2013) (Ex. C); Consent Judgment and Permanent Injunction Order, Converse
`
`Inc. v. Autonomie Project, Inc., 1:13-cv-12220 (D. Mass. Jan. 15, 2014) (Ex. D).
`
`Walmart, for its part, delayed filing its Petition until almost five years after the
`
`Trademark Office issued the ‘112 Registration, over three years after the Trademark Office
`
`issued the ‘753 Registration, and over two years after Converse enforced the ‘753 Registration
`
`against Walmart (Walmart’s Mot. to Suspend, Ex. 1). Now, rather than move forward with the
`
`proceeding that it initiated, Walmart seeks to further delay resolution of the issues raised in its
`
`Petition by seeking a suspension, during which time Converse’s rights in the ‘112 Registration
`
`would be left to languish. Cf. RR Donnelley & Sons Co. v. Xerox Corp., No. 12-6198, 2013 WL
`
`6645472, at *3 (N.D. Ill. Dec. 16, 2013) (denying motion to stay patent infringement case
`
`pending resolution of PTO proceedings in-part because patent infringement case involved four
`
`patents not challenged at the PTO that would “languish” if stay was granted).
`
`IV. CONCLUSION
`
`Because Walmart has not established good cause for a suspension of the proceeding that
`
`it initiated, Converse respectfully requests that the Board exercise its discretion and deny
`
`Walmart’s Motion to Suspend.
`
`7
`
`
`
`
`
`

`

`
`
` Respectfully submitted,
`
`
`Date: March 6, 2017
`
`
`
`
`
`By: /helen hill minsker/
`Helen Hill Minsker
`Christopher J. Renk
`Erik S. Maurer
`Michael J. Harris
`Audra C. Eidem Heinze
`Aaron P. Bowling
`
`
`Banner & Witcoff, Ltd.
`10 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 463-5000
`Facsimile: (312) 463-5001
`
`
`
`
`
`
`
`Attorneys for Registrant, Converse Inc.
`
`
`
`8
`
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`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 6, 2017, a copy of the foregoing OPPOSITION TO
`
`
`
`WALMART’S MOTION TO SUSPEND was served on PETITIONER’S Counsel via e-mail,
`
`addressed as follows:
`
`
`
`Mark S. Puzella
`R. David Hosp
`Sheryl Koval Garko
`Elizabeth E. Brenckman
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 5540-1022
`puzella@fr.com
`oconnell@fr.com
`hosp@fr.com
`garko@fr.com
`brenckman@fr.com
`tmdoctc@fr.com
`jlynch@fr.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`___
`
`
`/mark houston/___________
`Mark Houston
`
`
`
`
`
`
`
`
`
`9
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`

`

`
`
`Exhibit A
`Exhibit A
`
`
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`

`

`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`Before The Honorable Charles E. Bullock
`Chief Administrative Law Judge
`
`
`
`
`
`
`
`In the Matter of
`CERTAIN FOOTWEAR PRODUCTS
`
`
` Investigation No. 337-TA-936
`
`RESPONDENTS’ MOTION IN LIMINE NO. 1 TO EXCLUDE TESTIMONY OF
`DR. GERALD FORD, DR. SUSAN MCDONALD AND MR. HAL PORET
`
`
`
`Respondents Highline United LLC, Kmart Corporation, New Balance Athletic Shoe, Inc.,
`
`Skechers USA, Inc. and Wal-Mart Stores, Inc. respectfully move in limine to exclude the witness
`
`statements and testimony of Dr. Gerald Ford, Dr. Susan McDonald, and Hal Poret on the
`
`grounds that the survey methodology they used did not isolate the elements of the asserted trade
`
`dress and their resulting opinions are therefore irrelevant to the issues presented in this
`
`Investigation. Pursuant to Ground Rule 3.2., on July 15, 2015 Respondents contacted counsel
`
`for Converse and the Commission Investigative Staff (“Staff”) regarding this Motion.
`
`Respondents have made reasonable, good-faith efforts to resolve the matter with the other
`
`parties. Converse opposes the Motion. The Staff has indicated that it will take a position on the
`
`Motion after reviewing the motion papers.
`
`I.
`
`INTRODUCTION
`
`Dr. Gerald Ford and Dr. Susan McDonald conducted secondary meaning surveys on
`
`behalf of Converse starting in 2009 and 2010, before Converse applied to register the Midsole
`
`Trademark and long before Converse filed the Complaint in this Investigation. The testimony
`
`and reports of Dr. Ford and Dr. McDonald make it clear that Converse commissioned them both
`
`to test the secondary meaning of the overall design of the Converse All Star Chuck Taylor shoe,
`
`not the alleged “Midsole Trademark” Converse asserted in this Investigation. As a result, neither
`
`of those early surveys even attempted to test or isolate the alleged “Midsole Trademark” at issue
`
`in this Investigation. Dr. Ford conducted additional surveys in 2012, but those also did not
`
`effectively test or isolate the alleged “Midsole Trademark.” Further, neither Dr. Ford nor Dr.
`
`SMRH:441668470.2
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`-1-
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`

`

`
`
`McDonald was aware that their surveys would be used in litigation and/or what trade dress
`
`would be claimed, (Ex. 1, (Depo. of Susan McDonald), at 167; Ex. 2, (Depo. of Gerald Ford), at
`
`15) which is problematic in itself.1 The survey evidence in this case, at best, relates to
`
`secondary meaning of trade dress that is not claimed in this case, and thus the surveys and related
`
`expert opinions are irrelevant, inadmissible and/or entitled to zero weight.
`
`Hal Poret conducted a survey on fame, which uses a different universe of survey
`
`respondents and different questions than a secondary meaning survey. Nevertheless, Converse
`
`witnesses rely on Mr. Poret’s opinion for the proposition that the “Midsole Trademark” has
`
`secondary meaning. This proposed testimony is improper and should not be admitted into
`
`evidence. In addition, like Ford and McDonald, Poret failed to isolate the alleged “Midsole
`
`Trademark” and instead, tested the fame of the entirety of the shoe’s design. As a result, Poret’s
`
`opinions are irrelevant to the issues in this Investigation and his testimony should be excluded.
`
`II.
`
`THE ASSERTED TRADE DRESS
`
`Trademark Registration No. 4,398,753, which issued on September 10, 2013, consists of
`
`(a) a toe cap; (b) a toe bumper with a multi-layered diamond and bar pattern; and (c) two midsole
`
`stripes. Ex. 3 (Trademark Registration), RX-2945.001-002. Converse’s complaint alleges a
`
`claim of infringement of a common law trademark that Converse describes in its pre-hearing
`
`brief as being co-extensive with the above registration. Ex. 4 (Complaint), at ¶ 10; Ex. 5
`
`(Converse’s Pre-Hearing Brief), at 28 (“Converse’s registered and common law rights are
`
`coextensive.”) Critically, the asserted midsole trademark does not encompass the entirety of any
`
`shoe design, and does not include the star patch on the ankle, the metal grommets, or the
`
`stitching patterns.2
`
`
`1 A survey conducted by a researcher who was not aware of and did not take into account the
`features of the product that were claimed as the asserted trade dress was determined to be “fatally
`flawed.” Certain Air Impact Wrenches, Inv. No. 337-TA-311, Initial Determinations, 1991 ITC
`LEXIS 525, at *130-32 (May 6, 1991) (no violation of 337).
`2 Converse owns two registrations covering those and other elements (i.e., U.S. Trademark
`Registration Nos. 4,065,482 (the “‘482 Registration”) and 4,062,112 (the “‘112 Registration”),
`
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`SMRH:441668470.2
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`-2-
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`
`
`III. THE FORD AND MCDONALD SURVEYS ARE FATALLY FLAWED
`
`A.
`
`Legal Standard
`
`Rule of Evidence 702 requires that: “(a) the expert’s scientific, technical, or other
`
`specialized knowledge will help the trier of fact to understand the evidence or to determine a fact
`
`in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of
`
`reliable principles and methods; and (d) the expert has reliably applied the principles and
`
`methods to the facts of the case.” Fed. R. Evid. 702; see Daubert v. Merrell Dow Pharm., Inc.,
`
`509 U.S. 579, 597 (1993) (“[T]he task of ensuring that an expert’s testimony both rests on a
`
`reliable foundation and is relevant to the task at hand.”).
`
`B.
`
`Secondary Meaning Surveys Must Test and Isolate The Claimed Trade Dress
`
`and Use a Proper Control
`
`1.
`
`It Is Essential to Test The Claimed Trade Dress Apart From The Entire
`
`Product Design
`
`When evaluating the reliability and credibility of consumer survey evidence, the
`
`Commission considers, among other things, whether the “sample design, questionnaire, and
`
`interviewing [is] in accordance with generally accepted standards of objective procedure and
`
`statistics in the field of surveys.” Certain Ink Markers and Packaging Thereof, Inv. No. 337-
`
`TA-522, Order No. 30 at 26-27 (July 25, 2005).
`
`A proper secondary meaning survey “requires, first, a technique to isolate the mark or
`
`dress at issue and, second, an appropriate question or series of questions.” Vincent N. Palladino,
`
`Techniques for Ascertaining If There is Secondary Meaning, 73 TMR 391, 395 (Jul./Aug. 1983).
`
`
`
`A secondary meaning survey in a trade dress case like this one, in which only a subset of
`
`the product’s design constitutes the claimed trade dress, should test that trade dress separate and
`
`
`which it did not assert and thus do not form the basis of any claim at issue in this Investigation.
`See Ex. 5, at 115 (explaining that the ‘112 and ‘482 registrations “are not asserted in this
`Investigation”).
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`SMRH:441668470.2
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`-3-
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`
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`apart from the entire design of the product. See, e.g., Textron, Inc. v. USITC, 753 F.2d 1019,
`
`1027 (Fed. Cir. 1985) (affirming no § 337 violation, noting, “Textron has not shown that a
`
`substantial number of survey respondents identified the look-alike machine as a Bridgeport
`
`because of the [asserted] design of the column or ram.”). Surveys that fail to assess whether
`
`respondents associate a product with the complainant because of only the asserted trade dress
`
`are not relevant evidence of secondary meaning. Spraying Systems Co. v. Delavan, Inc., 762 F.
`
`Supp. 772, 779 (N.D. Ill 1991) (granting summary judgment in favor of alleged infringer,
`
`holding that the proffered survey was “improper to prove secondary meaning” because it failed
`
`to “isolate the mark at issue.”).
`
`It is “fatal to [a Complainant’s case]” at the ITC if the complainant fails to show that
`
`consumers’ identification of the product was due to the specific trade dress asserted rather than
`
`other factors. Certain Steel Toy Vehicles, Inv. No. 337-TA-31, Recommended Determination,
`
`1978 ITC LEXIS 62, at *85-86 (Jan. 3, 1978). Surveys that measure the secondary meaning of
`
`the entire design of the product, rather than the trade dress actually asserted in the Investigation,
`
`do not assist in establishing secondary meaning of the asserted trade dress. Certain Bar Clamps,
`
`Inv. No. 337-TA-429, 2001 ITC LEXIS 276, at *40-42 (March 13, 2001) (surveys did not test
`
`secondary meaning in the color of complainants' bar clamps, thus, “[t]here would thus be a risk
`
`that respondents' products could be barred from importation into the United States because of the
`
`yellow and black color combination, when the interviewees distinguished [the] products [made
`
`by complainant] from those of other manufacturers because of other non-functional or functional
`
`features that they observed” in the survey test stimulus.).
`
`2.
`
`The Importance of An Appropriate Control
`
`A control stimulus is used in trademark surveys to “estimate the degree of background
`
`‘noise’ or ‘error’ in the survey.” THOIP v. Walt Disney Co., 690 F. Supp. 2d 218, 240 (S.D.N.Y.
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`SMRH:441668470.2
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`-4-
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`2010).3 Survey results are determined by subtracting “control” results from “test” results to
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`obtain a “net” number that assesses secondary meaning. Ex. 6, (McDonald Witness Statement, CX-
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`00235C.6), Q/A 38. The control is thus, very important. Without a proper control, it is impossible
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`to determine whether the responses to the questions for the test stimulus are related to the
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`characteristics the survey attempts to study or reflect flaws in the survey methodology. Id.
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`The control stimulus should be identical to the test stimulus in every respect other than
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`the allegedly infringing element. Ex. 7 (Sarah Butler Witness Statement), RX-1667.015;
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`THOIP v. Walt Disney, 690 F. Supp. 2d at 240 (finding survey inadmissible due in part to lack of
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`adequate control); Am. Nat'l Ins. Co. v. Am. Nat'l Inv. Advisors, LLC, 2014 U.S. Dist. LEXIS
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`163294, at *50-51 (N.D. Ill. Nov. 21, 2014) (affording little weight to a survey with flawed
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`control); Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS
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`33923, at *15 (N.D. Cal. Apr. 29, 2009) (disregarding survey with flawed control).
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`C.
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`Dr. Ford Did Not Isolate The Trade Dress At Issue
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`1.
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`The Test and Control Stimuli Do Not Isolate the Trade Dress at Issue
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`Dr. Ford conducted four separate surveys, numbered I – IV, starting in 2009. He used
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`test and control stimuli that were provided to him by counsel for Converse.
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`Survey I was performed in 2009 and, as shown in Appendix A, tested “the trade dress of
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`the Converse Chuck Taylor All Star low” top sneaker, i.e., “the overall appearance” of the
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`Converse Chuck Taylor low top sneaker. Ex. 8 (CX-00230C.001), at Q/A3 – 4. Surveys II, III
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`and IV were performed in 2012 and used test shoes with different combinations of the toe cap,
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`the toe bumper and the stripes. Survey II tested a fictional shoe that has only one upper stripe
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`and no lower stripe and no box stitching on the upper. Survey III tested a fictional shoe that has
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`only one lower stripe and no upper stripe and no box stitching on the upper. Survey IV tested a
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`3 Background noise includes factors such as preexisting impressions, misunderstanding the
`questions, or guessing. Shari Seidman Diamond, Reference Guide on Survey Research, in
`REFERENCE MANUAL ON SCIENTIFIC EVIDENCE at 397-399 (Federal Judicial Center
`2011).
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`fictional shoe that has no box stitching on the upper. Id. Converse does not sell the designs
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`tested in Surveys II, III and / or IV; the test stimuli in Surveys II, III and IV were digitally altered
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`from images of Converse Chuck Taylor All Star shoes.
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`None of Dr. Ford’s surveys isolate the alleged “Midsole Trademark”. Ford used two
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`control stimuli, as shown in Appendix A: one was used in Survey I and another was used in
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`Surveys II – IV. Dr. Ford testified that the control images he used were suggested by Converse’s
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`counsel and that he did not consider any other controls. Ex. 2, at 130:12-19. The control stimuli
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`were derived from images of a Fred Perry brand Plimsoll, which is a style of rubber-soled canvas
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`sneaker. Dr. Ford modified the images for use as the control, including by digitally altering the
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`image to flatten the shape of the toe and remove most of the toe cap, to smooth out the toe
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`bumper and remove the pattern, and to remove stripes from the side of the shoe. Ex. 8 (CX-
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`00230C.018); Ex. 2, at 125:2-14; Appendix (“Appx.”) A.
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`As discussed above, courts, survey experts, and even Dr. Ford himself agree that a
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`control stimulus should share as many characteristics as possible with the test stimulus with the
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`exception of the characteristics being measured. Ex. 2, at 118:19-19:10; Appx. D. Ford did not
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`follow that approach. The Ford control shoe images look considerably different than the Ford
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`test shoe images, including in ways that are unrelated to the trade dress at issue in this
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`Investigation. Specifically, the controls used by Dr. Ford have a different color sole, a different
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`overall shape, a different shoe tongue, a greater number of laces, a different opening for the foot,
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`different colored laces and many other differences. See Ex. 8, at CX-00230C.013-018.
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`Survey I:
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`Test Stimulus
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`Control Stimulus
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`Survey II:
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`Survey III:
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`Survey IV
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`Ford used this supplemental control, which
`has white laces instead of black laces.
`However, even though Ford himself
`recognized the possibility that color could
`affect the survey results, he did not change
`the color of the sole to white to be
`consistent with the test shoes.
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`Supp.
`Control
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`2.
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`The Test Stimuli Did Not Measure Secondary Meaning of The Claimed
`Trade Dress Apart From The Entire Product Design
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`The failure to test only the claimed elements at issue in this Investigation is a fatal flaw.
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`Indeed, in a similar case, Dr. Ford has previously characterized another expert’s survey as so
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`flawed as to render the results “meaningless” because that expert used controls that differed in
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`many ways from the test stimulus other than with respect to the asserted design features. Levi
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`Strauss, 2009 U.S. Dist. LEXIS 33923 at *15-16. The same rule should apply here, rendering
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`Ford’s surveys useless in view of the claimed trade dress.
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`Dr. Ford’s surveys provide no evidence that consumers identify the product as being
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`made or put out by Converse because of the toe cap, toe bumper and or striping, as opposed to
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`the canvas material, silhouette of the shoe, the white sole, or any other feature that did not remain
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`constant in Dr. Ford’s control stimuli but that is not claimed as part of the asserted trade dress.
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`Therefore, the survey results are not evidence of secondary meaning of the claimed trade dress.
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`D.
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`Dr. McDonald Did Not Test and Isolate The Trade Dress At Issue
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`By her own admission, Dr. McDonald’s survey was not designed to measure the
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`secondary meaning of the asserted trade dress. Ex. 1, at 167:3-168:4; 194:7-21. Dr. McDonald
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`was hired by Converse to assess the secondary meaning in the overall appearance of the high-top
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`Converse All-Star shoe, which is what her survey attempts to do. Ex. 6, at CX-00235C.2 (“A2. I
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`was retained on behalf of Converse in 2010 to conduct a study to determine whether or not the
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`Converse Chuck Taylor All Star shoe design has secondary meaning.”); Id. at CX-00235C.6
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`(“Q35. At the time you conducted your survey, what did you understand the Converse trademark
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`to be? A35. The overall design of the Converse Chuck Taylor All Star high top shoe design.”);
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`Ex. 1, at 167:3-21, Appx. B.
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`Dr. McDonald’s test image was that of a Converse All Star brand shoe from which she
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`digitally removed the Converse branding but retained the circular patch on the upper portion of
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`the canvas upper of the sneaker, near the inside of the ankle. Ex. 1, at 182:13-15, 183:9-14; Ex.
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`9, (Rebuttal Witness Statement of David Stewart), RDX-10266C.005: Q/A 11; Appx. B.
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`Dr. McDonald’s choice of a control stimulus illustrates her intent to test the secondary
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`meaning of the entire design of the Chuck Taylor All Star shoe, not the trade dress Converse
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`asserted in this Investigation. Her criteria for a control image was not whether it would isolate
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`the key elements, but that it be a black, canvas high top sneaker. Ex. 1, at 171:6-12; Ex. 6, at
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`CX-00235C.10. Dr. McDonald chose a Vans high top sneaker, which differs from the Converse
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`All-Star brand sneaker in many respects other than in the asserted marks.4 As shown in
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`Appendix B and below, the control is not identical to Dr. McDonald’s test image other than with
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`4 The control Dr. McDonald used is also problematic because it is well-known and recognizable
`with a particular brand (Vans). Using this control depressed the mentions of Converse in the
`control because many respondents recognized the control sneaker.