This week on Five Minute Law we have a survey. First take a look at the following photos taken at a store on the side of a Texas highway:
And here’s the question: Who do you think owns this store?
If this were a real trademark survey, the question would be open-ended. But to make it more interesting I’m going to make it multiple choice. Pick the answer that comes closest to capturing your reaction:
A. Buc-ee’s, or a company affiliated with Buc-ee’s.
B. A company unaffiliated with Buc-ee’s that is imitating the Buc-ee’s concept.
C. I’m not from Texas. I have no idea what “Buc-ee’s” is.
Answer A would suggest that the owner of this store is infringing on the Buc-ee’s trademarks and trade dress. Infringement occurs when the use of similar marks causes a likelihood of confusion concerning the source, sponsorship, approval, or affiliation of the products or services.
But I’m guessing that most of you–at least the ones from Texas–answered B. I know this because I already did my own little pilot survey. More about that later.
The actual answer is Shepherd Retail, Inc.–and two other corporations you haven’t heard of that operate similar “Choke Canyon” stores. Those companies are defendants in a jury trial pending in federal court in Houston. (The images above are from the First Amended Complaint in that case.)
Buc-ee’s claimed the defendants were unlawfully infringing and diluting Buc-ee’s distinctive beaver trademark and distinctive trade dress. Gabrielle Banks reported on the opening statements in the Houston Chronicle.
Likelihood of Confusion and Trademark Surveys
So do trademark law experts agree that Choke Canyon was infringing Buc-ee’s trademarks?
That would be interesting to know, but it really doesn’t matter. You see, trademark law is different from other kinds of intellectual property law in that it is almost entirely subjective.
I don’t mean subjective in the sense that there are no fixed governing standards. I mean that it doesn’t matter what some hypothetical reasonable person would think. What matters is whether actual consumers are likely to be confused about the source of a product or service, regardless of whether some smarter person thinks they should be confused.
Contrast that with patent law. The question there would be, for example, does some feature of the Samsung Galaxy phone infringe on a patent for smartphone technology owned by Apple? Even if experts disagree about the answer, that question is entirely objective. You look at the features of the product and compare them with the “claims” set forth in black and white in the patent. If the product does the things disclosed in one or more of the claims, it infringes. It doesn’t matter whether consumers think it infringes.
But in trademark law, what consumers think is everything. For that reason, consumer surveys are usually regarded as the most probative form of evidence.
If you know anything about litigation, you can see where this is heading: a cottage industry of high-priced Ph.Ds who design and supervise the surveys, and a “battle of experts” when there are enough dollars at stake.
My Pilot Survey
The amount of money in play is important because a properly designed and implemented trademark survey is very expensive (if you have to ask, you can’t afford it). So, companies will sometimes have an expert do a smaller–and cheaper–“pilot” survey to get a preliminary indication.
But even a pilot survey by an expert would be an extravagant expense to support a single blog post. So for this post I did my own pilot survey of three consumers: my wife and two kids.
They fit the target demographic: Texas residents who often drive between Houston, Austin, Dallas, and San Antonio. And all three of them are very familiar with Buc-ee’s. We stop there just about any time we are driving to another city in Texas.
So what would they say when I asked them if the products and marks from Choke Canyon were from Buc-ee’s?
Not so fast! You can’t ask the survey question in a way that suggests what the answer is. In a trademark survey, methodology is everything. The way the questions are phrased can have a huge impact on the results.
The classic survey methodology in trademark cases is the Eveready method. A typical Eveready survey would show a consumer a photo of the defendant’s product and ask “who makes this product?” The idea is to avoid bias by making the question open-ended and never even mentioning the name of the plaintiff.
So, to comply with Eveready and to avoid a Daubert challenge, I showed my subjects the images above from the Choke Canyon stores and asked two questions: (1) who do you think puts out the products shown here (or owns the store shown here)? (2) do you think the company that makes this product (or owns this store) is connected with or affiliated with some other company?
Let’s start with my son Eric (nine years old). When he saw the images that do not include the words “Choke Canyon” and I asked who puts out the products, he initially said the “alligator place” but eventually said “I wouldn’t know.” When he saw the images that do include the words “Choke Canyon,” he answered “Choke Canyon.” Why? “Because it says Choke Canyon on it.”
Did he think Choke Canyon was connected with or affiliated with some other company? No.
One thing I learned from questioning Eric is that it can make a difference whether the person taking the survey knows it is ok to say “I don’t know.” I think it’s human nature to want to come up with some answer, rather than admitting you just don’t know.
My daughter Hailey (17 years old) had pretty similar answers. She said “I don’t know” when asked about who puts out the products and owns the store, but in a couple cases she added “I would assume it was some tourist location in Florida” and “I would assume some kind of small local business.” For the products that say “Choke Canyon,” she said Choke Canyon Travel Center was the source “because it says it right on the center of the label.”
Did she think Choke Canyon was connected with or affiliated with some other company? No.
I decided to press a little. “Why don’t you think it’s affiliated with Buc-ee’s?”
“It looks like Buc-ee’s,” she said, “but with an alligator,” so “I don’t think it’s affiliated with Buc-ee’s.” She added, “it’s a completely different logo, obviously a different company.”
When I told her Buc-ee’s is suing Choke Canyon for trademark infringement she simply said, “that’s stupid.” (Folks, I just report the survey results.)
“Buc-ee’s is a beaver. This is an alligator.”
Finally, I surveyed my wife Rebecca. (Caveat: she was a legal assistant and is a really smart cookie, so maybe not representative of consumers generally.)
“Who do you think puts out the products shown here?” I asked. “Choke Canyon Travel,” she said, “but the products look just like stuff from Buc-ee’s.”
Don’t jump ahead!
“Do you think the company that sells this is connected with or affiliated with some other company?” I asked. “Probably not,” she said, but then we got sidetracked talking about what it meant that the trademark had that little (R) symbol next to it.
When we got back on track, I showed her the images without the words “Choke Canyon,” and she said “I have no idea” and there was “no possible way” to know who put the products out or owned the store.
“Do you think the company that owns this store is affiliated with or connected with some other company?” No, she said. “I have no reason to think that.”
But why didn’t she think the Choke Canyon store was affiliated with Buc-ee’s? “Buc-ee’s is a beaver, this is an alligator.” Then, unprompted, she asked, “is Buc-ee’s suing them?” Yes, I told her. “That’s the stupidest thing I’ve ever heard.” (She doesn’t mince words.)
My wife then pulled out her phone and showed me a photo she had taken in some gas station. It was something like “Oma’s Choice Texas Quail’s Eggs” in an old-timey mason jar. It had the same kind of “country” look and feel as the jarred products from Choke Canyon and Buc-ee’s, and she said that gas station had the same products like “nuggets” that Buc-ee’s is known for.
Ah, third-party use. A further complication.
I tried to steer back to the issue at hand. “But don’t you agree that Choke Canyon is copying the Buc-ee’s concept?” I asked.
“Yes,” she said, “but you can’t trademark a concept.”
Like I said. A smart cookie.
*Update: Want to know what the jury thought? Click here.
Zach Wolfe (email@example.com) is a Texas trial lawyer who handles non-compete and trade secret litigation at his firm Fleckman & McGlynn, PLLC. He didn’t have space here to explain “trade dress,” but you can check out this video at 2:29.
These are not the opinions of his firm or clients (as noted, they are not even his opinions), so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.