Selected Court Commentary

Regarding Jacob Jacoby, expert witness in trademark surveys, patent infringements, deceptive advertising and trademark infringement court cases.

“Lancome chose a renowned expert to design its study.  Jacoby designed a survey for Lancome to test the extent to which use of the word Juicy in connection with Lancome was likely to cause confusion….  It found negligible, if any, evidence of confusion.  [FN 33:  “It is unnecessary to spend time addressing Couture’s attacks on the Jacoby survey…  Suffice it to say that the attacks on Jacoby’s well-designed survey were strained and unpersuasive.”]   From the Opinion and Order, Juicy Couture, Inc. and L.C. Licensing, Inc. v. L’Oreal USA, Inc. and Luxury Products, LLC.  U.S.D.C. S.D.N.Y. April 19, 2006. 04 Civ. 7203 (DLC).

 

“Based upon Dr. Jacoby’s testimony, his expert report, the evidence regarding the methodology and questions employed in conducting the survey, and answers given by the survey respondents, the Court finds that Dr. Jacoby’s survey results are persuasive evidence that actual confusion is likely.”  Red Bull GmBH and Red Bull North America, Inc. v. Matador Concepts, Inc. and Leslie A. Gilmer. U.S.D.C. CD CA.  Decided Jan 13, 2006, Filed Jan 13, 2006.  Case No. CV 04-9006-JFW (PLAx).

“[T]he court begins by noting that Dr. Jacoby is a thoroughly trained and experienced market researcher, and that his survey methods and practices have been admitted by numerous courts throughout the country…. For the foregoing reasons, OneBeacon’s Motion to Exclude Testimony of Jacob Jacoby is Denied.”  The Beacon Mutual Insurance Co. v. OneBeacon Insurance Group.  U.S.D.C. D R.I. 253 F. Supp. 2d 221, 226; 2003 U.S. Dist. Lexis 5068, 14

 

“The court finds the credentials and testimony of Dr. Jacoby to be impeccable, and his rationale thoroughly persuasive.  Dr. Jacoby’s critique of. [opposing expert’s] survey, as set forth above in the findings of fact, convince the court that [the opposing expert’s] conclusions lack scientific validity.”  Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc. USDC, D Kansas (#03-4001 SAC), Memorandum and Order, March 25, 2003.

 

In holding for plaintiffs (and, in effect, reversing the Trademark Trial and Appeals Board), the U.S. District Court for the District of Columbia wrote:  “First, the TTAB’s opinion presents no defense to the critique by Dr. Jacoby that the survey improperly extrapolated the views of its respondents to the Native American population as a whole…. Instead of explaining why Dr. Jacoby’s critique was flawed, the Board concludes – with no explanation – that the survey ‘represents the views of the two populations sampled.’  Dr. Jacoby’s criticisms, while listed by the TTAB, are never engaged. … The Court, therefore, concludes that the TTAB’s decision to extrapolate the results of [defendants’] survey … was not supported by substantial evidence.  Critiques by Dr. Jacoby went unanswered in the TTAB opinion.”  Pro-Football, Inc. v. Susan Shown Harjo, et al.  Civ. Action No. 99-1385 (CKK), Memorandum Opinion of September 30, 2003, at pages 39 – 41.

 

Plaintiff’s expert’s “methodology was severely criticized by defendant’s witness, Dr. Jacob Jacoby, an extremely well qualified expert in consumer behavior and research methodology.14”  [Footnote 14 reads, in part:] “Counsel also cross-examined Dr. Jacoby on the handful of cases in which his findings had been criticized, suggesting that Dr. Jacoby had intentionally ‘rigged a survey to get a particular result.’  I have read those cases, and I have read cases that laud Dr. Jacoby’s credentials and research.  I do not find it surprising that a witness who has testified in over 100 cases has been criticized from time to time, and find Dr. Jacoby is a highly qualified and well-recognized expert in consumer confusion and survey evidence” [citations omitted].   Wells Fargo & Co., et al. v. WhenU.com, Inc. U.S.D.C., E. D. MI (Southern Division).  Case No. 03-71906  (NGM).  Memorandum Opinion and Order Denying Plaintiff’s Motion for Preliminary Injunction.  Nov. 19, 2003.

 

“The Court finds that the Jacoby survey constitutes reliable evidence of actual confusion.  This survey, in combination with plaintiffs’ four actual confusion witnesses, is substantial evidence in favor of plaintiffs on the likelihood of confusion issue.”   “The Court’s finding that Tour 18’s written disclaimers are ineffective at reducing confusion is also supported by the Jacoby survey.  The Court first notes that Jacoby is one of the leading experts in the field of consumer disclaimers.  His treatise, Jacoby & Raskopf, Disclaimers as a Remedy for Trademark Infringement Litigation: More Trouble than they are Worth?, 76 Trademark Rept. 35 (1986), has been relied upon by many courts facing the issue of consumer disclaimers.  See Charles of theRitz Group, 832 F.2d at 1324; Home Box Office, 832 F.2d at 1315.  From:  Pebble Beach Company, Resorts of Pinehurst, Inc., and Sea Pines Company, Inc. v. Tour 18 I, L.T.D., U.S.D.C. S.D. Texas; No. 93-3875; Filed Sept. 10, 1996.

 

“Apple also presents survey evidence [from its survey expert, Jacob Jacoby] showing that its efforts have established an association between the trade dress and Apple in the minds of the public…. This evidence is sufficient to establish a likelihood of success in proving that the trade dress has acquired distinctiveness through secondary meaning.” USDC, ND California (San Jose Division) Case #C-99-20612-JF.  Filed November 5, 1999.

 

“The plaintiff’s study, conducted by Jacob Jacoby, was far more substantial and the district judge found it on the whole credible.”  “Jacoby’s survey was not perfect, and this is not news.  Trials would be very short if only perfect evidence were admissible.”  Despite minor shortcomings, the Seventh Circuit concurred with the district judge “in crediting the major findings of the Jacoby study and inferring from it…that the defendant’s use of the name ‘Baltimore CFL Colts’…was likely to confuse a substantial number of consumers.”  Indianapolis Colts et al v. Metropolitan Baltimore Football Club et al, Seventh Circuit. #94-2578. Decided Aug. 12, 1994.

 

…the Court is impressed with the steps plaintiff took to insure the reliability of the survey.  It was well-designed, meticulously executed and involved some of the very best experts available….plaintiff’s survey results were essentially uncontroverted.”  National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc., 532 F. Supp. 651, 658 (W.D. Wash. 1982).

 

“Dr. Jacob Jacoby…has extensive knowledge and experience in the design and interpretation of consumer surveys, and is an expert in those areas.”  National Football League Properties, Inc. v. New Jersey Giants, Inc., 637 F. Supp. 507, 513 (D.N.J. 1986).

“… Dr. Jacoby [is] a nationally recognized expert on consumer research.  Most of the points made in his testimony…are reflected in the above discussion [by the Court].”  Frisch’s Restaurant, Inc. v. Elby’s Big Boy of Steubenville, Inc., 661 F. Supp. 971, 985 (S.D. Ohio 1987).

 

(Jacoby’s survey provides) “very persuasive evidence of the tendency to abbreviate the Schering names and persuasive evidence of confusion.” Schering Corporation v. Schering Aktiengesellschaft, 667 F. Supp. 175, 189 (D.N.J. 1987).

 

“…the court finds [Jacoby’s survey] evidence thorough and convincing…” Ferrari S.p.A. Esercizio v. McBurnie, 11 U.S.P.Q. 2d 1843, 1846-47 (S.D. Cal. 1989), 1989 U.S. Dist. LEXIS 13442*11.

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