Litigation
Aug. 13, 2002
Prepare a Trademark Case As Though It Will Be Tried
Column by Jane Shay Wald & Kyhm Penfil - Although relatively few trademark matters go to full trial on the merits, we can best serve our clients' interests by preparing for each trademark litigation as though it will be tried.
Although relatively few trademark matters go to full trial on the merits, we can best serve our clients' interests by preparing for each trademark litigation as though it will be tried.
This is particularly important where expert witnesses are concerned. Whether you represent the plaintiff or the defendant, you will have a real advantage when you retain, prepare and use expert witnesses effectively and at the right time.
Identifying Your Needs
The first step in effectively using experts is to identify which experts you will need. A trademark case typically presents the need for a consumer survey and/or marketing expert, a technical expert, a legal expert and a damages expert. Each plays an important role.
A consumer survey can be essential for the trademark plaintiff, in part because courts increasingly expect to see survey evidence to prove that a mark has acquired secondary meaning and to prove likelihood of confusion.
In fact, where the plaintiff fails to offer a survey, the defendant may seek and receive a jury instruction that allows jurors to assume that the plaintiff did not submit a survey because the contents would be unfavorable.
In fact, "Some courts have remarked on the failure to introduce a survey as indicating that a litigant is less than deadly serious about its case." 5 J. Thomas McCarthy, "McCarthy on Trademarks and Unfair Competition" (West 2002), Section 32:195.
A consumer survey also is important for trademark defendants. The defendant may wish to introduce its own consumer survey to rebut the plaintiff's or may wish its expert to criticize the plaintiff's survey and perhaps even explain why no relevant survey can be performed (because, for example, the target markets for the two parties' goods or services are so distinct that there is no overlapping population to survey).
A marketing expert can help the trier of fact understand key elements of a trademark case - relatedness of the respective parties' goods or services, the channels of trade and the sophistication of purchasers.
A technical expert is essential for both the plaintiff and the defendant wherever the goods or services at issue are sufficiently beyond the fact-finder's experience.
Trademark litigants sometimes retain legal experts to assist the trier of fact regarding U.S. Patent and Trademark Office practice and interpretation; meaning, function and significance of trademarks; "advice of counsel" as a defense to willfulness; and other issues.
Finally, a damages expert can be critical for both sides where the plaintiff is seeking damages. But even where the plaintiff is seeking injunctive relief, an expert might be useful to address how that relief might be structured. For example, if the plaintiff is seeking an order that the parties share a Web site, an expert might testify about whether or how that might be accomplished and at what cost.
Retaining an Expert
Be sure to ask any potential expert to run a conflict check before you disclose any confidential information. Some attorneys also inform potential experts who have confirmed they have no conflict that if, during the interview process, the potential expert receives confidential information but is not eventually retained, he or she will be precluded from performing services for any other party in the litigation.
Ask your potential expert to identify prior trademark and related cases in which he or she has expressed any views and locate any other publicly available positions your potential expert has taken - you can bet that your adversary will.
Finally, if there is a protective order in the case, the expert may need to be disclosed to the other parties - and a waiting period may have to pass - before you can give him or her certain information.
Preparing an Expert
Rule 26 of the Federal Rules of Civil Procedure requires parties to exchange expert reports "at least 90 days before the trial date." Some courts, either by order or by local rule, accelerate this deadline, so you will want to begin working with an expert early.
In particular, an expert who will be conducting a consumer survey will need ample time to design and conduct the survey and analyze the results. Some trademark plaintiffs conduct this research and analysis before filing their complaint.
Technical and damages experts also have long-term research and analysis to perform, so early and frequent preparation sessions are critical.
Stay in communication with your expert and make sure you have an understanding of positions he or she may be taking in other cases he or she is working on. Keep a reality check going: Does the expert still believe in your case? If not, what has changed, and how can you get back on track as a team?
Finally, remember that what you tell an expert is not privileged; any or all of it may come out in discovery.
Using an Expert
As in any federal litigation, expert witnesses in trademark cases can fill important roles during discovery, at the summary judgment phase and at trial.
During discovery, experts can suggest avenues to explore both with one's own client and with opposing counsel. A particularly helpful approach is to have a technical expert help counsel prepare to depose the other party's technical witnesses, percipient and expert. In certain cases, the technical expert may even attend the deposition to assist counsel.
Expert reports help frame the issues in a case not only for the court but also for your own client and for the opposing party. You often will find settlement avenues after exchanging and digesting all parties' expert reports. If the case does not settle, the reports are the road map for effective depositions, which you will use later to examine the expert at trial.
At the summary judgment phase, expert affidavits and reports provide much of the evidence on which the court will base its ruling.
For example, the plaintiff who brings a summary judgment motion on likelihood of confusion usually will need to present its consumer survey evidence. Similarly, the defendant who opposes such a motion or brings its own motion will need to present the analysis of its survey and/or marketing expert to the court.
At trial, your client will reap the full benefit of your selection, retention and careful preparation of experts. Preparation for the expert's trial testimony should include reviewing the direct as well as the anticipated cross and rebuttal testimony.
Our final advice about expert witnesses in trademark trials: Use them!
Contributing Writer
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