Trademark Infringement – Expert Testimony

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7^th Circuit Court of Appeals

Case Name: Uncommon, LLC, v. Spigen, Inc.,

Case No.: 18-1917

Officials: SYKES, SCUDDER, and ST. EVE, Circuit Judges.

Focus: Trademark Infringement – Expert Testimony

The word “capsule” can describe many things—a pharmaceutical pill, a space pod, or a short synopsis, for example. What about a cellphone case?

The U.S. Patent and Trademark Office has given conflicting answers. It has, on a few occasions, found that “capsule” was “merely descriptive” of cellphone cases, a finding that precludes the mark from registration on the Principal Register. Yet the Office has also found otherwise and allowed one manufacturer—Uncommon, LLC—to register “capsule.”

Rival case manufacturers still use the term, though. Uncommon sued one of those manufacturers, Spigen, Inc., for trademark infringement and unfair competition. In discovery, Spigen produced a survey to prove that consumers did not associate “capsule” with Uncommon’s cases, and it disclosed the person who conducted the survey as a “non-testifying expert.” That was a problem: without foundational expert testimony to explain the survey’s methodology, it was inadmissible. But when the litigation reached summary judgment, the district court excused Spigen’s error. It then granted Spigen summary judgment on the merits.

We affirm. Spigen’s disclosure was inaccurate, but calling it harmless, as the district court did, was reasonable. With the survey, there was no genuine issue of material fact as to the mark’s invalid registration. Nor was there an issue of fact regarding the unlikelihood of consumer confusion. Summary judgment was therefore appropriate.

Affirmed

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Derek A Hawkins is trademark corporate counsel for Harley-Davidson. Hawkins oversees the prosecution and maintenance of the Harley-Davidson’s international trademark portfolio in emerging markets.