As a result of pre-trial settlements – usually on terms favorable to his clients – the majority of Jacob Jacoby’s surveys (and critiques of surveys) do not reach court.
Some notable examples include the following:
Suit claimed sales of 1 Day Acuvue contact lenses were boosted by advertising and packaging claims advising consumers to use these lenses only once, even though the product was identical to regular Acuvue lenses which could be cleaned daily and worn for several weeks. In part as a result of the six surveys Jacoby conducted for plaintiffs, defendant agreed to a settlement worth $840 million, the largest settlement in as deceptive advertising case to that point in time.
In the overwhelming number of instances where Jacoby has given testimony, his clients have prevailed. While courts do not always comment upon his testimony, selected comments from U.S. District and Circuit Court and the TTAB follow:
“In sum, the Jacoby testimony and survey [proffered on behalf of the opposer] do not support the applicant’s claim that the [phone] chirp has acquired distinctiveness for applicant’s cellular telephones.”
“There was a second survey that was offered into evidence. 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.” )
“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.”
“… Defendant WhenU.com produced Dr. Jacob Jacoby. Dr. Jacoby attacked (Plaintiff’s survey) on a number of fronts.” 1-800-Contacts, Inc. v. WhenU.com and Vision Direct USDC, SDNY, Decided Dec 22, 2003, Filed Dec 23, 2003. U.S. Dist. LEXIS 22932, * (at page 10). The court then adopted many of Jacoby’s criticisms (see pages 23-25).
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.” [Appended to the word “methodology” in this sentence, 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.
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
“The court finds the credentials and testimony of Dr. Jacoby to be impeccable, and his rationale thoroughly persuasive. Dr. Jacoby’s critique of Mr. [X’s] survey, as set forth above in the findings of fact, convince the court that Mr. [X’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.
“… the jury was entitled to consider Dr. Jacoby’s consumer survey study, which lent some support to Braun’s claim that the public was confused by the ad.” USDC SDNY 98 Civ 4070 (RCC). Braun Inc. and The Gillette Company v. Optiva Corporation. From the Memorandum decision filed February 25, 2000.
“Apple also presents survey evidence [from 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, NDCalifornia (San Jose Division) Case #C-99-20612-JF. Filed November 5, 1999.
“However, defendants expert [Jacob Jacoby] has raised significant issues regarding the accuracy and reliability of the survey questioning.” Aztar Corporation v. N.Y. Entertainment, L.L.C., d.b.a. Big Apple Casino Cruises, Jubilee of the Bahamas, Inc., a Bahamian Corporation, and Fred Collins, Jr. U.S.D.C., E.D. N.Y., Memorandum and Order 97-CV-3674.
“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 & Raskoff, Disclaimers as a Remedy for Trademark Infringement Litigation: More Trouble than they are Worth?, 76Trademark Rept. 35 (1986), has been relied upon by many courts facing the issue of consumer disclaimers. See Charles of the Ritz 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.
“As will become apparent in the court’s findings of fact and conclusions of law, we are persuaded that the survey, testimony and opinions of Dr. Jacoby are credible and correctly establish that the term ‘air door’ was generic in 1962 and remains generic. Based on case law and treatises recited in the Conclusions of Law which follow, as well as the testimony of Dr. Jacoby, the court has ruled that Plaintiff need not prove majority usage in order to establish genericness.” Berner International Corporation v. Mars Sales Company, U.S.D.C. W.D. Penn., #89-1999. May 16, 1996.
“The survey evidence, whether considered direct or indirect evidence of actual confusion, tilts the analysis in favor of Anheuser Busch.” “Our review of…the survey evidence convinces us that the court erred in finding no likelihood of confusion.” We have considered Balducci’s argument attacking the survey’s findings because of alleged shortcomings in its methodology; however, like the district court, we have ‘no quarrel with the [survey’s] design or execution.” Anheuser-Busch, Inc. v. Balducci Publications, et al. Eighth Circuit. #93-2196. Filed June 30, 1994.
“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 consumer survey commissioned by the plaintiff….was conducted by Professor Jacob Jacoby….Dr. Jacoby conducted the consumer survey relied upon by the Court of Appeals…in…the leading trade dress case in this circuit….[T]he consumer survey conducted [in the present case]….effectively establishes that there is a likelihood of confusion.” P.T.C. Brands, Inc. v. Conwood Company L.P., 28 U.S.P.Q. 2d 1895, 1902, 1905, 1993 (W.D. Ky. 1993).
“The two [Jacoby] surveys are probative evidence of lack of confusion between the two marks.” Smartfoods, Inc. v. Hunt-Wesson, Inc., No. 3:92-CV-2061-D (N.D. Tex. Dec. 30, 1992).
“The results…are overwhelmingly supported by Dr. Jacoby’s secondary meaning study….This court awards substantial weight to properly conducted surveys.” Conopco, Inc. v. May Department Stores Company, 784 F. Supp. 648, 677 (E.D. Mo. 1992).
“The court finds that Dr. Jacoby made a good faith effort to, and did, conduct fair, unbiased consumer studies using methodology consistent with both industry standards and the requirements set forth by courts for evaluating what is communicated by advertisements.” The Gillette Co. v. Wilkinson Sword, Inc. and Friedman Benjamin, Inc., No. 89 3586 (S.D.N.Y. 1991), 1991 U.S. Dist. LEXIS 21006*22-23C. 7
“We also agree with the district court…the survey evidence…amount[s] to abundant evidence that the exterior design features…have acquired secondary meaning.” Ferrari S.p.A. Esercizio v. Roberts, 944 F.2d 1235, 1240 (6th Cir. 1991). See also Ferrari Esercizio S.p.A. v. Roberts, 739 F. Supp. 1138 (E.D. Tenn. 1990).
The survey “demonstrates that among consumers of alcoholic beverages a high awareness of the mark ‘BEAM’ exists.” Jim Beam Brands Co. v. Beamish & Crawford Ltd., 18 U.S.P.Q. 2d 1486 n.2 (S.D.N.Y. 1990), 1990 U.S. Dist. LEXIS 13759*7n2.
“…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.[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).
“… 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).
“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).
“…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).