Friday, November 10, 2023

J. Michael Keyes: "Getting Your Teflon Survey to 'Stick' at the TTAB"

Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, has granted me permission to post this recent article from his newsletter, "Lanham Act Surveys for Lawyers" (subscribe here).

Getting Your Teflon Survey to "Stick" at the TTAB

Teflon. When most people hear that word, they may think of their favorite coated frying pan that dutifully keeps those scrambled eggs from being a jumbled-up, sticky mess on Saturday mornings. When trademark trial lawyers and their experts hear it, though, (regardless of the day), we think of...consumer surveys.

That's because "Teflon" is the name for a specific type of survey method used to test for whether a trademark is "generic" in the marketplace. Teflon surveys are often times at play before the TTAB. A couple of recent decisions provide a cautionary tale for those looking to get their Teflon surveys to stick with the Board. We discuss those below, but first, a paragraph (or two) of history for context.

Back in the 1930s, a scientist from the DuPont Company accidentally stumbled upon something grand: polytetrafluoroethylene, a waxy, slippery substance. DuPont coined the term "Teflon" for this magical discovery that would go on to help millions of people the world over get out of countless sticky situations. In the 1970s, another company started using "Eflon" as the name for one of its zipper products under the theory "Teflon" had become a generic term for non-stick substances. DuPont disagreed. It sued. It also presented survey evidence to show that consumers recognized Teflon as a brand name. See E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975). Thus, the "Teflon" survey method was born.

One of the hallmarks of the Teflon method is that it provides a "mini" primer and quiz to the survey respondents. The survey instrument typically first explains the difference between a "brand" name (e.g., Chevrolet) and a "common" name (e.g., car). Then, respondents are given a short quiz to see if they understand the difference. Those that pass are then exposed to various brand and common names (including the mark at-issue) and are asked to classify each one. The results will either be used to show that the mark at-issue functions as a source identifier, or not.

That brings us to this week's discussion of two recent TTAB decisions involving Teflon studies. Both of them shared a similar "mini-test" flaw in the eyes of the Board, so we are sticking them together here. See In re Benjamin & Bros., LLC, 2023 TTAB LEXIS 419 (Trademark Trial & App. Bd. September 26, 2023), and In re Sensory Path Inc., 2023 TTAB LEXIS 201 (Trademark Trial & App. Bd. May 31, 2023).

In Benjamin & Bros., applicant sought to register the term "" for various travel related services (yes, shades of The examiner refused, finding was generic. To overcome the refusal, applicant presented the results of its Teflon survey and argued that nearly 60% of the respondents found to be a brand name as opposed to a common name. The Board expressed reservations about the "mini-test" administered to the respondents because "only two of the six names used to educate survey participants on the difference between common and brand names were '.com' names, and neither term in the mini test used to test participants' understanding of the difference between a common name and brand name was a '.com' name." In re Benjamin & Bros., 2023 TTAB LEXIS 419, *35.

The Board concluded that:

"The failure to educate and screen survey participants about whether they understood the difference between a generic domain name and a domain name that functions as a brand was a critical omission radically skewing the results of the survey in applicant's favor." Id. at *35-36 (emphasis supplied)(internal citations omitted).

In the next decision, applicant sought to introduce the results of a Teflon survey that purported to show that the applied-for mark--"The Sensory Path"--was not generic. But the survey did not actually provide a mini-test at all. Instead, the survey instrument simply provided a description of what the difference was between a "generic" term, a descriptive mark, and a suggestive mark. After the explanation, respondents were asked to classify various terms into one of those three categories.

The Board sensed a problem:

"Because the survey did not perform a mini-test to determine whether survey participants understand or can identify a trademark, we cannot determine whether participants even perceived the intended nature or purpose of the applied-for mark." In re Sensory Path Inc., 2023 TTAB LEXIS 201, *29-30 (internal citations omitted).

The Teflon Takeaways: If you are designing a Teflon study, be mindful of the "mini-test" administered to survey respondents. If you are testing a purported ".com" mark, the Board will want to see the mini-test include examples of ".com" domains that are brand names and common names, respectively. And, remember, it is not sufficient in a Teflon study to simply explain the difference between a common name and a brand name. Instead, a mini-test should be administrated to ensure survey respondents understand the difference and that your explanation has "stuck."

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Text Copyright Michael Keyes 2023.


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