Survey Says? Using Apportionment Surveys in Defence of a Trade Mark Infringement | USA

The conversation delves into the intricacies of apportionment, a process that assesses the portion of a defendant’s profits attributable to the use of a trade mark versus other factors. In trade mark litigation, plaintiffs often seek to disgorge the defendant’s profits obtained from the infringing activity. While proving the defendant’s revenues is straightforward, apportionment can significantly reduce the claimed damages by isolating profits directly linked to the trade mark’s use.

Likelihood of confusion surveys, common in trade mark cases, do not measure the extent to which sales are due to the trade mark itself. Instead, apportionment requires a deeper analysis, typically through conjoint surveys.

It is also important to distinguish between trade mark, patent, and copyright cases, while apportionment concepts are similar, trade mark cases focus on brand confusion rather than product features. Conjoint surveys assess the materiality of confusion, helping to determine what portion of profits can be attributed to the trade mark infringement.

The discussion touches on the strategic use of conjoint surveys by both plaintiffs and defendants. Bautista and Franklin agree that while plaintiffs typically rely on legal presumptions to claim total profits, defendants may use apportionment to argue that only a fraction of the profits are due to trade mark use. However, in cases where a plaintiff’s brand is exceptionally strong, they might proactively use conjoint surveys to reinforce their claims.

In conclusion, the panel emphasises the importance of considering apportionment from the outset of a trade mark litigation case. Both plaintiffs and defendants should be prepared to address apportionment through expert testimony and detailed surveys to effectively argue their positions on damages.