Abstract

     Surveys have been used in jurisdictions outside the Ninth Circuit to test whether a purported trade dress element is functional. Thus, survey evidence has been employed in almost every aspect of trademark law.
     The Ninth Circuit’s uniqueness with regard to trademark surveys is based largely upon its almost “carte blanche” refusal to exclude survey evidence based upon technical deficiencies. Unlike other circuits, the Ninth Circuit has pronounced that a survey’s “[t]echnical unreliability goes to the weight accorded the survey, not its admissibility.” A district court’s exclusion of a trademark survey due to unreliability often creates reversible error, as the Ninth Circuit has stood firm that such discrepancies should be evaluated by the fact-finder. Thus, issues relating to potentially leading survey questions or improperly limited geographic area in which the survey was conducted only go to the survey’s overall value. This is directly opposite to most other circuits, where technical irregularities lead to a finding of inadmissibility. In analyzing what “weight” to give a trademark survey, courts within the Ninth Circuit look towards a variety of factors, including, but not limited to the overall survey design and experience of the surveyor.
     Based upon the unique treatment and use of survey evidence within the Ninth Circuit, this paper provides a comprehensive review of current trends and issues inherent to performing a trademark survey for use at trial. Specifically, this paper seeks to articulate the pitfalls of the past and highlight the importance of preparation prior to introducing a trademark survey into evidence. Part I of the paper provides a general background relating to preparing trademark surveys within the Ninth Circuit, with emphasis on treatment of non- litigation surveys. Part II outlines the pitfalls associated with conducting secondary meaning surveys and how to properly quantify the relevant survey universe. Part III discusses the use of survey evidence to test consumer confusion and the general result required to find a likelihood of confusion. Part IV discusses use of survey evidence to show whether or not a mark is generic. Part V comments upon the general distrust within the Ninth Circuit for surveys testing actual dilution. Part VI provides a general conclusion and overall remarks of the future role of survey evidence within the Ninth Circuit.