Plaintiff filed suit against defendant alleging trademark infringement. Defendant hired a marketing expert witness to assist in their case. The plaintiff filed a motion to exclude the testimony of this expert, which the court partially granted.
Facts: This case (CSl Silicones v. Midsun Group, Inc – United States District Court – District of Connecticut – December 7th, 2017) involves a claim of trademark infringement. The plaintiff (“CSL”) sued the defendant (“Midsun”) for the improper use of CSL’s trademarks. CSL argues that Midsun sells silicone-based coating products and uses names that are similar to those used by CSL. Midsun hired marketing expert witness Carl Fusco to provide testimony in this case. CSL has filed a motion to exclude the expert testimony of Mr. Fusco.
Discussion: CSL argues that Fusco is not qualified to offer an opinion he writes in his report and that these opinions are not reliable as they are based on a survey that is flawed. In addition, CSL alleges that Fusco’s opinions would not assist the trier of fact. To be sure, Midsun argues that Fusco is qualified to offer an opinion in this case, his testimony is relevant and reliable, and that his survey is trustworthy.
Fusco opined that there is no market recognition of the marks in question and that there is no likelihood of confusion between the two marks. To prove his opinion, Fusco designed a conducted a survey that sampled engineers and operating professionals. Fusco stated that he designed and modeled his survey on the Everready format.
Fusco has over thirty years of experience in marketing research and has a Masters in Marketing Research from the University of Georgia. CSL argues that Fusco does not have any experience or education in consumer confusion. The court noted that Fusco does not have prior experience in surveying, determining, or measuring the likelihood of confusion in a trademark case. In addition, he has never testified as an expert in a Lanham Act case, nor has he published on the topic of trademark studies or consumer confusion. That said, the court does note that Fusco has thirty years of practical and academic experience in marketing research. Thus, the court opined that it will not preclude Fusco from testifying based on his qualifications.
In addition, CSL argues that the survey Fusco used to base his opinions was defective and is thus unreliable and without value. First, CSL claims that the wrong universe of individuals was surveyed. Second, the survey did not comply with well accepted standards for evaluating likelihood of confusion. The court opined that the survey’s questions were targeted to obtain a universe of potential purchasers of one product, but not the other. Thus, the court opined that the survey is so flawed that it will be of no probative value and any opinion regarding one of the marks as a result of the survey shsould be excluded. However, any other arguments on the survey go to the weight of the evidence, not the admissibility.
Conclusion: The motion to exclude the expert witness testimony of Carl Fusco is granted in part and denied in part.