The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation

53 Pages Posted: 28 May 2021 Last revised: 16 Sep 2021

See all articles by Barton Beebe

Barton Beebe

New York University School of Law

Roy Germano

New York University School of Law

Christopher Jon Sprigman

New York University School of Law; New York University (NYU) - Engelberg Center on Innovation Law & Policy

Joel Steckel

New York University (NYU) - Department of Marketing

Date Written: May 27, 2021

Abstract

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace subjectively believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of disputes. But trademark survey evidence has proven to be highly controversial, not least because it is notoriously prone to expert manipulation. In this Article, we identify and present empirical evidence of a related, but more fundamental problem with trademark survey evidence: while all the leading survey formats in trademark law test for whether consumers hold a particular belief, they do not test for the strength or the varying degrees of certainty with which consumers hold that belief. In short, by treating the question of consumer beliefs as essentially binary, the formats do not test for belief strength. Yet as the social science literature has long recognized, the strength with which consumers hold particular beliefs shapes their behavior in the marketplace, and thus it should also shape, we believe, how trademark disputes play out in the courtroom. Through a series of experiments using the three leading trademark survey formats (the so-called Teflon, Eveready, and Squirt formats), we show the remarkable degree to which these formats as conventionally designed overlook—or suppress—crucial information about consumer uncertainty. We further demonstrate how a low-cost, easily-administered, and relatively simple modification in these formats can reveal that information. We discuss both the practical and theoretical implications of our findings. As a practical matter, trademark survey evidence that shows only weakly-held beliefs (or that does not even test for belief strength) should not, without more, satisfy a litigant’s burden of persuasion on the issue addressed by the survey. Furthermore, in line with courts’ growing efforts in intellectual property cases to tailor injunctive relief, survey evidence showing only weakly-held mistaken beliefs may provide courts with the opportunity to fashion more limited forms of relief short of an outright injunction. As a theoretical matter, we explain how trademark survey formats that reveal the true extent of consumer uncertainty in the marketplace may finally force trademark law and policy to confront normative questions it has long left unanswered going to exactly what kind of harm trademark law is meant to forestall.

Keywords: trademark, trade dress, experiment, empirical, confusion

Suggested Citation

Beebe, Barton and Germano, Roy and Sprigman, Christopher Jon and Steckel, Joel, The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation (May 27, 2021). NYU Law and Economics Research Paper No. 21-13, NYU Stern School of Business Forthcoming, Available at SSRN: https://ssrn.com/abstract=3854730 or http://dx.doi.org/10.2139/ssrn.3854730

Barton Beebe

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012-1099
United States

Roy Germano

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012-1099
United States

Christopher Jon Sprigman (Contact Author)

New York University School of Law ( email )

40 Washington Square South
NY, NY 10012
United States

New York University (NYU) - Engelberg Center on Innovation Law & Policy ( email )

New York, NY
United States

Joel Steckel

New York University (NYU) - Department of Marketing ( email )

Tisch Hall
40 W 4 St.
New York, NY 10012
United States
2129980521 (Phone)

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