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Published Research about Trademarks

 
Eric D. DeRosia (2019), “Fixing Ever-Ready: Repairing and Standardizing the Traditional Survey Measure of Consumer Confusion,” Georgia Law Review, 53 (2), 613-682.
VIDEO SUMMARY:
"Virtual Conference Presentation" on YouTube
ABSTRACT:
In trademark infringement litigation, courts often rely on consumer surveys that use the “Ever-Ready” method to measure consumer confusion. Courts are understandably careful to scrutinize consumer surveys for ways in which their methodology might have biased their results toward the outcome desired by their proponents. This Article strengthens and improves such examinations by empirically testing and improving the Ever-Ready method itself.
The findings of four new empirical studies reported in this Article indicate the faith placed by the courts in the Ever-Ready method is somewhat misplaced. Seemingly subtle variations in the wording of the Ever-Ready questions have a consistent and surprisingly large influence on the survey’s final results.
Fortunately, the four empirical studies also give clear guidance on how to repair and standardize the question wordings. Two versions of the Ever-Ready method—one version to be used in surveys proffered by plaintiffs and another version to be used in surveys proffered by defendants—are defined and verified based on data from the four studies. The two versions are “known” in the sense that they are defined empirically and published to the community, and “conservative” in the sense that they cut against the direct interests of the survey’s proponent.
The studies show that the Ever-Ready question wording which should be used by plaintiffs who wish to demonstrate that confusion is commonplace among consumers is the following: “If you have an opinion, what company or companies provide this product?” In contrast, the Ever-Ready question wording which should be used by defendants who wish to demonstrate that confusion is rare among consumers is the following: “Based on what you saw in the image, what company do you think makes this brand? Please be as specific as possible in your answer.”
The standards set by these known-conservative versions of the Ever-Ready method will empower the courts and a survey’s opponents to scrutinize (in a rigorous, consistent, and systematic manner) the extent to which the question wording in an Ever-Ready survey is slanted toward the proponent’s desired outcome. Anticipating such scrutiny, experts will have a powerful incentive to adopt the known-conservative versions that are identified in this Article. The expected end result is greater reliability for expert testimony, with a particular emphasis on preventing parties from bolstering weak cases with methodological artifacts.
 
Thomas R. Lee, Glenn L. Christensen, and Eric D. DeRosia (2008), “Trademarks, Consumer Psychology, and the Sophisticated Consumer,” Emory Law Journal, 57 (3), 575-650.
ABSTRACT:
Borrowing from scholarly literature in marketing and consumer psychology, we develop an extensive model of consumer sophistication. We first present a general summary of the relevant case law and then introduce the consumer behavior model that will serve as the core of our analysis. The model identifies two general antecedents to the exercise of consumer care (or “cognition,” as it is phrased in the literature) by a sophisticated consumer: a sufficient level of “motivation” for care and an adequate “ability” to be careful. After developing the motivation and ability elements in some detail, we employ the model to analyze a strand of case law that is at the heart of the broader debate about the consumer mindset—cases that identify circumstances where the consumer is expected to be more, or less, “sophisticated.” The informed, rigorous view of the consumer that emerges is much more nuanced and complex than that of either fool or sovereign. We offer a positive framework for understanding the basic strands of the judicial conceptions of consumer sophistication and interject normative criticism in cases where we find fault with the jurisprudence. Lastly, we employ the model to take a broader look at the relevance (and relative significance) of consumer sophistication in trademark infringement cases. Our methodology offers insights that can inform—and transform—a broad range of issues in a body of law that can no longer afford to ignore the field of consumer psychology. By moving beyond stereotypes and rhetorical flourishes about the validity vel non of the portrayal of the consumer as the “presumptive idiot,” our model opens analytical doors that account for the realities of consumer behavior and helps to resolve many of the conflicts and inconsistencies in trademark law.
 
Thomas R. Lee, Eric D. DeRosia, and Glenn L. Christensen (2009), “An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness,” Arizona State Law Journal, 41 (4), 1033-1109.
ABSTRACT:
This article analyzes the taxonomy of trademark distinctiveness that has long been endorsed in the courts and scholarly commentary. This distinctiveness scale is routinely justified on the basis of an assumption about consumer psychology: that consumers perceive suggestive, arbitrary, or fanciful marks as source-indicating, but see descriptive marks as “merely descriptive.” Although this core premise of trademark law is a fundamental matter of consumer psychology, it has never been subjected to scrutiny under the light of consumer psychology theory and empirical analysis. We offer a consumer psychology model for questioning the law of distinctiveness (or “source indication”) and then test our theory in a series of empirical studies. Building on perceptual schema theory, we suggest that the non-lexical signs in a trademark may overwhelm the linguistic signs credited by the law. If a descriptive word mark is presented in a spatial placement, size, and style that matches the consumer’s schematic mental model of what product labels and brand names look like, the word may be perceived as a source indicator even if its semantic meaning may be “merely descriptive.” Our three empirical studies confirm this hypothesis. Study 1 shows that there is no statistically significant difference in source-indicating distinctiveness across the spectrum of descriptive, suggestive, arbitrary, and fanciful word marks when presented in an average trademark use context on a box of cookies. Study 2 confirms our hypotheses across a broader spectrum of products and word marks. Study 3 shows that when a descriptive word is not presented in a “trademark use” context, its descriptive semantic meaning will predominate and it will no longer be perceived as a source indicator. Our theory and empirical results are employed in support of a proposal to abandon the longstanding taxonomy of trademark distinctiveness. We suggest that trademark distinctiveness should turn only on a threshold showing of “trademark use” (an existing doctrine that considers non-lexical signs of source-indication).
 
Thomas R. Lee, Eric D. DeRosia, and Glenn L. Christensen (2008), “Sophistication, Bridging the Gap, and the Likelihood of Confusion: An Empirical and Theoretical Analysis,” Trademark Reporter: The Law Journal of the International Trademark Association, 98 (July/August), 913-949.
ABSTRACT:
One of the central concerns of trademark infringement disputes is the multifactor test: the list of issues that courts consider when trying to determine whether consumers are likely to confuse a Jr. trademark as a Sr. trademark. As summarized by Beebe, the thirteen circuits have thirteen different multifactor tests. There is some broad agreement among the circuits in terms of the content of their multifactor tests. For example, twelve of the thirteen circuits recognize that consumer “sophistication” (i.e., the degree of care likely to be exercised by potential consumers) should be considered in the multifactor test. However, there is much disagreement among the circuits. For example, only five of the circuits recognize “bridging the gap” (i.e., the consumer perception of the likelihood that the owner of the Sr. mark will extend into the Jr. mark’s product category) as a factor that should be considered.  At their core, the various multifactor tests are attempting to get at an issue of consumer psychology: what factors influence the likelihood that a consumer will be confused by a Jr. mark?
To help identify the factors that belong in the multifactor tests, this article reports empirical research that we conducted to test whether “bridging the gap” and “sophistication” are truly antecedents of likelihood of confusion.  We used a controlled experimental method, and we measured consumer confusion with the Eveready test.
Our empirical findings indicate that likelihood of confusion among consumers is increased when a competitor of the Sr. user has “bridged the gap” to come into competition with the Jr. user. That is, when a competitor of the Sr. mark “bridges the gap” into the Jr. product category, consumers perceive the Sr. mark as being more likely to also “bridge the gap,” and this increases the likelihood that consumers will be confused by a Jr. mark in that category. Thus, we demonstrate that likelihood of confusion is so highly sensitive to the “bridging the gap” factor that even a competitor “bridging the gap” has an influence on the likelihood of confusion.
An example will clarify the chain reaction. In 2008, Kellogg Co. extended its FROOT LOOPS brand of breakfast cereal into the clothing category. Our study’s results suggest that when consumers become aware of this brand extension, they will perceive all other Sr. marks in the breakfast cereal category to be more likely to “bridge the gap” into the clothing category. This, in turn, makes those Sr. marks in the breakfast cereal category more vulnerable to source confusion from Jr. marks in the clothing category. This is not a rare circumstance. The USPTO database lists 24 Sr. marks in the breakfast cereal category that are identical to Jr. marks in the clothing category. For example, Honeycomb breakfast cereal (owned by Post Foods) is identical to Honeycomb brand clothing (U.S. Trademark Registration no. 2744892), Total breakfast cereal (owned by General Mills) is identical to Total brand clothing (U.S. Trademark Registration no. 2074821), and Life breakfast cereal (owned by Quaker Oats Co.) is identical to Life brand clothing (U.S. Trademark Registration no. 3585018). One brand extension by FROOT LOOPS makes each of the 24 Sr. breakfast cereal marks more vulnerable to confusion with their identical Jr. clothing mark counterparts.
Our findings also indicate that a more “sophisticated” consumer is more likely to suffer confusion in this circumstance. This is in marked opposition to the typical assumption in case law that greater care from consumers cuts against likelihood of confusion.
To offer guidance for identifying the circumstances in which “sophistication” has an effect that runs counter to the prevailing wisdom, we offer a theory-guided explanation of its role in consumers’ likelihood of confusion.
 
Eric D. DeRosia, Thomas R. Lee, and Glenn L. Christensen (2011), “Sophisticated but Confused: The Impact of Brand Extension and Motivation on Source Confusion,” Psychology and Marketing, 28 (5), 457–478.
ABSTRACT:
Legal and consumer psychology scholars have focused recent attention on source confusion, which is the likelihood that consumers will be confused regarding the company that is a product’s source or sponsor. The authors evaluate two potential antecedents of source confusion: (1) consumer motivation and (2) a brand extension that has been undertaken by a competitor. There have been disagreements in the courts, the scholarly legal literature, and the consumer psychology literature concerning the nature and extent of the impact of these two variables on the likelihood of consumer confusion. Based on schema theory, the authors hypothesize that consumer motivation and brand extension will influence the likelihood of source confusion. An interaction between the two variables is proposed, with consumer motivation having an effect that is opposite to the effect typically identified in the literature and case law. The results of a controlled laboratory experiment support the theoretical predictions.