In this dispute over trademarks, both parties called marketing expert witnesses to assist in their case. Both parties filed motions to exclude. The court denied the motions.
Facts: This case (Lifeguard Licensing Corp. et al v. Kozak et al – United States District Court – Southern District of New York – March 7th, 2017) involves the trademarks for the words LIFEGUARD and LIFE GUARD. The key issue in the case is whether these terms are considered generic and, thus, should not be protected under the Lanham Act. In order to prove their respective cases, both parties have hired marketing expert witnesses and both parties have filed motions to exclude the opinions of these experts. The defendants hired James T. Berger and Thomas Maronick and the Plaintiff hired Brian M. Sowers.
Discussion: Both sides argue that the expert witness reports provided by the opposing party are not admissible under Daubert. The defendants claim that Mr. Sowers is not qualified to testify as an expert and that his methods are unreliable. The plaintiffs argue that the reports proffered by Mr. Berger and Dr. Maronick are not reliable because the underlying surveys are fundamentally flawed and that both of the experts admitted during their deposition that the marks in question were not generic.
The court first turns to the plaintiff’s motion for exclusion. They maintain that their testimony should be excluded because they admitted the lifeguard marks are not generic with respect to apparel or clothing. They argue that caselaw states that an experts testimony should be disregarded if their affidavit contradicts his own prior testimony. The court did not agree with the plaintiffs on this issue, stating that either statements made by the defendant’s experts contradict his deposition testimony.
The court also looked at the qualifications of Mr. Berger and Mr. Maronick. While the plaintiffs do not directly argue that these experts are not qualified, their motion papers are filled with derogatory statements about their reputations and qualifications. Mr. Berger has worked extensively in the field of marketing and marketing research and has testified as an expert in numerous lawsuits, including those dealing with trademark genericness. Dr. Maronick served as the in-house expert for the Bureau of Consumer Protection at the Federal Trade Commission. Thus, both experts are qualified to provide expert witness testimony in this case.
The plaintiffs allege that there are methodological flaws in the surveys in which the defendants’ experts’ reports are based. They state that Mr. Berger’s and Dr. Maronick’s “Teflon” surveys showed the incorrect “relevant public” for polling. In addition, they claim that Mr. Berger’s survey primed the survey respondents to think of lifeguards, did not provide the respondents with the necessary contextual background, and included respondents who incorrectly answered at least one of the screening questions.
In it’s opinion, the court cited McCarthy on Trademarks in that the rule is technical difficulties may reduce the survey’s weight, they will not stop the survey from being admitted.
Conclusion: The motions to exclude the testimony of the three experts is denied.