Court Says Flawed Likelihood-of-Confusion Survey Which Followed Neither the Ever-Ready nor Squirt Standards Was Prejudicial Necessitating

On September 11, 2017, the Northern District of Illinois granted a motion for a new trial based on the improper admission of prejudicial likelihood-of-confusion survey evidence.

The Black & Decker Corporation sued Positec USA Inc. in 2011, alleging that Positec sold power tools and accessories that infringed Black & Decker’s “family” of yellow and black trademarks and trade dress.  In 2015, a jury awarded Black & Decker over $50 million on its claims, concluding that Positec’s infringement was willful.  The Court subsequently granted Positec a new trial, concluding that the likelihood of confusion survey prepared by an expert for Black & Decker, and on which the jury heavily relied for its findings of likely confusion, did not follow generally accepted survey standards, and was unreliable and prejudicial. 

In his survey, the expert showed respondents a single photograph featuring two rows of side-by-side boxed power tools.  All of the pictured products were put out by Black & Decker except for a single product from the Defendant.  Respondents viewing the photograph were asked if they believed that all the products shown were put out by the same company.  Forty-seven (47%) percent of responders said they were.  Although Black & Decker offered the survey as evidence of likely confusion, its expert testified that the survey did not test confusion but rather showed “[t]he confusion [that] was caused by the tendency to overlook the obvious” or the “idea of putting the same packages together and somebody just thinking that they’re the same without looking carefully at them.”  The Court found the expert’s methodology to be inconsistent with generally accepted survey standards, unreflective of actual purchasing conditions, and “so informally designed and conducted that it fails key tests of professionalism and reliability.”

The Court emphasized that the “gold standard” for proving or disproving likelihood of confusion for strong marks is the so-called “Ever-Ready” survey.  In an Ever-Ready survey, respondents are shown only the allegedly infringing product or brand name and asked questions such as:  “(1) Who do you think puts out this product? (2) What makes you think so? and (3) Name any other products put out by the same entity which puts out this product.” 

Black & Decker’s survey did not qualify as an “Ever-Ready” survey because it included an array of both Black & Decker and Positec products displayed side-by-side.  Nor did the expert’s survey qualify as a “Squirt” or “array” survey, which the Court found could sometimes be appropriate in cases where the plaintiff’s and defendant’s products appear side by side in the marketplace and the survey replicates actual purchasing conditions.  Instead of replicating actual purchasing conditions, the expert’s picture showed one of Positec’s products shelved among ten of Black & Decker’s.  During questioning, the expert acknowledged that this arrangement was designed to, and did, cause survey respondents to “overlook the obvious” fact that Positec’s product was marked “Rockwell,” whereas Black & Decker’s products were marked "DeWalt.”  The expert also acknowledged that the survey did not mirror the conditions under which consumers would actually encounter the products.  Although Black & Decker’s and Positec’s products are often sold in the same sections of home improvement stores, Black & Decker was unable to substantiate any evidence in which a Rockwell product was surrounded on shelves by DeWalt products.  The expert acknowledged that this unique arrangement, which did not replicate actual purchasing conditions, was what caused respondents to miss the obvious difference between the packaging, including the distinct house marks. 

The Court concluded that a high probability existed that the expert’s flawed testimony unfairly influenced the jury’s verdict and directed a new trial.  

The case is The Black & Decker Corp. v. Positec USA Inc., Case No. 11-cv-5426 (N.D. Ill.).