Estta849361 09/29/2017 in the United States
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA849361 Filing date: 09/29/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92063295 Party Plaintiff Titletown Brewing Co., LLC Correspondence NICHOLAS A KEES Address GODFREY & KAHN SC 833 EAST MICHIGAN STREET, SUITE 1800 MILWAUKEE, WI 53202-5615 UNITED STATES Email: [email protected], [email protected], [email protected], [email protected], [email protected] Submission Other Motions/Papers Filer's Name Andrew C. Landsman Filer's email [email protected] Signature /Andrew C. Landsman/ Date 09/29/2017 Attachments Anderson Expert Rebuttal Report and Exhibits 5-3-17.pdf(1180364 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Registration No. 4,593,153 TITLETOWN BREWING CO., LLC, Petitioner, Cancellation No. 92063295 v. GREEN BAY PACKERS, INC., Respondent. Rebuttal Report of Dr. Justin R. Anderson in Response to the Report of Philip Johnson, “A Study of Secondary Meaning of the Term: Titletown” Nicholas A. Kees Andrew C. Landsman GODFREY & KAHN, S.C. 833 East Michigan Street, Suite 1800 Milwaukee, WI 53202-5615 Telephone: 414-273-3500 Facsimile: 414-273-5198 Jennifer L. Gregor GODFREY & KAHN, S.C. One East Main Street, Suite 500 Madison, WI 53703 Telephone: 608-257-3911 Facsimile: 608-257-0609 Attorneys for Petitioner, Titletown Brewing Co., LLC 16501 Ventura Boulevard, Suite 601, Encino, CA 91436 • Phone (818) 464-2400 • www.mmrstrategy.com IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Registration No. 4,593,153 Cancellation No: 92063295 TITLETOWN BREWING CO., LLC, Petitioner, v. GREEN BAY PACKERS, INC., Respondent REBUTTAL REPORT OF DR. JUSTIN R. ANDERSON IN RESPONSE TO THE REPORT OF PHILIP JOHNSON, “A STUDY OF SECONDARY MEANING OF THE TERM: TITLETOWN” Rebuttal Report of Dr. Justin R. Anderson Cancellation No: 92063295 TABLE OF CONTENTS Summary of My Opinions .............................................................................................................. 1 Background of the Dispute ............................................................................................................. 4 Overview of the Johnson Survey .................................................................................................... 4 Detailed Opinions Regarding the Johnson Survey ......................................................................... 6 I. The Johnson survey does not provide a valid measure of secondary meaning of TITLETOWN. .................................................................................................................... 7 II. The Johnson survey does not measure whether or when the Packers have used TITLETOWN as a trademark. .......................................................................................... 23 Conclusions ................................................................................................................................... 29 My Qualifications ......................................................................................................................... 30 Materials Reviewed and Compensation........................................................................................ 31 Exhibit 1: Incorrect Coding in Johnson Data Exhibit 2: Re-Analysis of Johnson Data Exhibit 3: Selected Responses to Question 1e in Johnson Survey Exhibit 4: Dr. Justin R. Anderson CV and Testimony Experience Rebuttal Report of Dr. Justin R. Anderson Cancellation No: 92063295 1. I have been retained by the petitioner, Titletown Brewing Co., LLC (“Titletown Brewing”), in the above matter. Counsel for Titletown Brewing has asked me to evaluate the expert report1 of Philip Johnson and the survey he conducted, submitted in this matter by the respondent, Green Bay Packers, Inc. (the “Packers”). Specifically, I have been asked to address the following two questions regarding the Johnson survey: i. Does the Johnson survey provide a valid measure of the secondary meaning of the term TITLETOWN? ii. Does the Johnson survey measure whether or when the Packers have used TITLETOWN as a trademark in connection with any goods or services? 2. This rebuttal report sets forth my opinions regarding these questions, developed in response to the Johnson report. I reserve the right to supplement this rebuttal report in the event that additional information becomes available to me. Summary of My Opinions 3. Based on my review of Mr. Johnson’s report, my review of other materials identified in this report, and my experience, I believe that the survey conducted by Mr. Johnson does not provide a valid measure of the secondary meaning of TITLETOWN. The Johnson survey suffers from significant flaws, including the following: i. The survey questions are vague and biased, suggesting that respondents think about the term TITLETOWN in the context of sports. I understand that many different types of businesses use the term TITLETOWN in their names. The Johnson survey questions do not specify whether respondents should consider the term TITLETOWN in the context of any particular category of goods or services. Instead, the survey questions lead respondents to think of TITLETOWN in the context of a sports stadium or arena, which biases results in favor of the Packers. 1 Titled “A Study of Secondary Meaning of the Term: TITLETOWN,” dated April 3, 2017. - 1- Rebuttal Report of Dr. Justin R. Anderson Cancellation No: 92063295 ii. The survey does not measure secondary meaning. For a mark to have secondary meaning, it must have acquired distinctiveness by association with products or services from a single source.2 Thus, a secondary meaning survey should measure whether respondents use the mark to identify a single source. It is insufficient to demonstrate that a source is one of multiple sources that respondents associate with the mark.3 Yet, the Johnson survey has attempted to do the latter. By not measuring associations with a single source, the Johnson survey fails to properly measure secondary meaning. iii. Respondents were not properly qualified for the relevant categories and geography. The Johnson survey qualified respondents as consumers of food and drinks at a sports stadium or arena, but that qualification is defined too narrowly, resulting in an under-inclusive universe. Not only does the survey fail to measure the right universe, its selection of respondents biases results in favor of a sports context, which favors the Packers. Furthermore, the survey improperly restricts the universe to residents of Wisconsin. However, the relevant population is national, so the survey should include a national respondent universe. By restricting the survey to Wisconsin residents, the survey biases results in favor of the Packers. iv. The control fails to account for “noise.” The DREAMTOWN control used in the Johnson survey is not “broadly similar in meaning”4 to TITLETOWN. Instead, it is a dissimilar term that leads respondents in another direction, and fails to measure any potential “noise” in the survey responses. Therefore, DREAMTOWN is an improper control. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Fourth Edition, updated March 2009, § 15:5. “Secondary meaning as buyer association of symbol with source,” p.1. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Fourth Edition, updated March 2009, § 32:191. “Secondary meaning – Secondary meaning survey formats,” p.1. 4 Johnson report, paragraph 11. - 2- Rebuttal Report of Dr. Justin R. Anderson Cancellation No: 92063295 v. The analysis is biased and does not measure unique association. There are errors in the coding and analysis of the Johnson survey data, which inflate the reported results in favor of the Packers. In addition to these errors, Mr. Johnson’s analysis incorrectly includes associations with multiple sources in his calculation of secondary meaning. A re-analysis of the survey data shows that, if his survey can provide a measure of secondary meaning despite its other serious flaws, then the level of secondary meaning identified by the Johnson survey is much lower than the measure provided in the Johnson report. 4. It is also my opinion that Mr. Johnson’s survey does not measure whether or when the Packers have used TITLETOWN as a trademark in connection with any goods or services. i. The survey does not measure whether TITLETOWN was used by any party, or in any category. “Use” can be observed in a company’s actions in the marketplace. The Johnson survey does not measure marketplace actions. Instead, the survey measures associations “of the term TITLETOWN … in the minds of the relevant consuming public.”5 Mr. Johnson provides no evidence that the consumer associations measured by his survey are equivalent to use of a mark. ii. The survey fails to properly measure when, if ever, the Packers first used TITLETOWN for any particular goods or services, including those listed in the registration at issue. Instead, the survey asks6 respondents to indicate approximately how long ago TITLETOWN became associated with the Packers or another association. Because consumer associations do not indicate use, the survey fails to measure when the Packers may have first used TITLETOWN as a trademark. Additionally, Question 1e is confusing, and may encourage respondents to guess. The survey responses themselves indicate that respondents