United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON DEFENDANT'S MOTIONS FOR
PARTIAL SUMMARY, PLAINTIFF'S MOTION TO STRIKE, AND
CROSS-MOTIONS TO EXCLUDE EXPERT TESTIMONY
DENNIS SAYLOR IV UNITED STATES DISTRICT JUDGE.
an action for trademark infringement. Plaintiff Hilsinger
Company has brought suit against defendant Kleen Concepts,
LLC, alleging that Kleen's use of the mark
“SHIELDME” in connection with the distribution
and sale of cleaning products has infringed Hilsinger's
“SHIELD” brand. The complaint alleges claims
under the Lanham Act, 15 U.S.C. §§ 1114 and 1125,
and for violation of common-law trademark rights.
are five motions pending before the Court: (1)
defendant's motion for partial summary judgment on
certain infringement claims, (2) defendant's motion for
partial summary judgment on the claim for false designation
of origin, (3) plaintiff's motion to strike
defendant's reply to plaintiff's response to
defendant's motion for summary judgment on certain
infringement claims, (4) plaintiff's motion to strike the
expert opinion of Brian M. Sowers, and (5) defendant's
motion to strike the expert opinion of Dr. Melissa
following reasons, plaintiff's motion to strike will be
granted; plaintiff's motion to exclude the expert opinion
of Brian M. Sowers will be granted in part and denied in
part; and the other motions will be denied.
otherwise noted, the following facts are undisputed.
Hilsinger Company is a corporation based in Plainville,
Massachusetts, that sells eyewear and eye-care accessories.
(Def. Mot. Partial Summ. J. on Pl. False Designation of
Origin Claim SMF ¶ 1, “Def. False Designation
SMF”). Hilsinger holds a federal trademark registration
for the mark “SHIELD” (Reg. No. 1, 536, 028) in
connection with “[o]ptical lens cleaning preparation
products.” (Id. ¶ 2; Third Amended Compl.
¶¶ 12-13 “TAC”).
Concepts, LLC, is a limited liability company based in
Scottsdale, Arizona, that sells lens- and screen-cleaning
products, among other things. (Id. ¶ 4).
SHIELDME Branded Products
2008, Kleen Concepts began selling products using the mark
“SHIELDME.” (Russel Dep. 20). It has sold both
lens- and screen-cleaning products under that mark. (Def.
False Designation SMF ¶ 6; Russell Dep. 119).
least some SHIELD and SHIELDME products were sold at
Wal-Mart, among other retail stores. (Pl. Resp. to Def. Mot.
for Partial Summ. J. on Infringement Claims SMF ¶¶
5, 11, “Pl. Infringement SMF”). Many of the other
facts concerning where SHIELDME products were sold, and to
whom they were sold, are disputed. Kleen Concepts contends
that its screen-cleaning products were sold in electronics
stores, and the electronics departments of “big box
stores” such as Wal-Mart. (Def. Infringement SMF ¶
11; Russell Dep. 120-21). Hilsinger disputes that contention,
pointing to deposition testimony by a Kleen Concepts
salesperson who stated that the company had “never sold
anything” to the electronics division at Wal-Mart.
(Walsh Dep. 186-87). Kleen Concepts contends that SHIELDME
lens-cleaning products were not sold side-by-side with SHIELD
lens-cleaning products; while Hilsinger asserts the opposite.
(Fitzgibbon Dep. 14; Def. Resp. to Pl. Mot. to Exclude Ex.
10). The parties further dispute whether the target consumer
for SHIELDME products was “very general, ”
ranging from anyone who needed to clean anything from
“a screen to a lens to a table, ” or whether a
more narrow consumer group was targeted by virtue of the
packaging. (Def. Rep. to Pl. Infringement SMF ¶ 9).
Concepts sells the same liquid cleaning product as both a
lens cleaner and a screen cleaner. (Id. ¶ 1).
The products differ only in that they are marketed for
different purposes. (Id.). Kleen Concepts has
advertised lens-cleaning products as capable of cleaning not
only “eyeglasses, sunglasses, . . . binoculars, scopes
and other lense[s], ” but also “electronic
devices . . . and screen materials.” (Pl. Infringement
SMF Ex. 12). In addition, some of Kleen Concepts's
products are advertised as dual “lens and screen
cleaner[s].” (Def. Infringement SMF Ex. 11 at 4). Kleen
Concepts contends that very few of its products are sold as
dual lens and screen cleaners and that sales of dual-use
products account for an insignificant portion of its
screen-cleaning product sales. (Def. Rep. to Pl. Resp. to
Def. Infringement Mot. for Summ. J. at 5).
KLEENME Branded Products
2015, in response to this litigation, Kleen Concepts
introduced the brand “KLEENME.” (Pl. Resp. to
Def. False Designation SMF ¶ 6, “Pl. False
Designation SMF”). Kleen Concepts has moved for summary
judgment as to the claims for products using the KLEENME
mark. (Docket No. 236). Hilsinger responded to that motion by
stating, correctly, that there is no claim in this case for
damages concerning the use of the KLEENME mark.
“Made In America”
Concepts has advertised and marketed certain screen- and
lens-cleaning spray-bottle products as “Made in
USA.” (Def. False Designation SMF ¶ 7). Kleen
Concepts also marketed some of its products using a red,
white, and blue color scheme and depicting images of an
American flag. (Pl. False Designation SMF Ex. L). Hilsinger
contends that “significant components” of the
products of Kleen Concepts that are designated as “Made
in USA” were actually manufactured abroad. (TAC ¶
2013, Wal-Mart announced an initiative to increase its sales
of products manufactured in the United States. (Pl. False
Designation SMF Ex. HHH). In February 2013, a Kleen Concepts
representative sent an e-mail to an associate buyer for the
optical department at Wal-Mart that stated, “I wanted
to introduce our company to you, we are a large USA
manufacturer of cleaning products. . . . We also offer the
flexibility of a USA based supply chain!” (Id.
Ex. III). In March 2014, that buyer sent an e-mail to another
Wal-Mart employee concerning the SHIELDME lens cleaners,
stating that they are “made in the USA 100%.”
(Pl. False Designation SMF Ex. RRR at Kleen 00004755). The
following month, the buyer sent an e-mail concerning SHIELDME
products, stating, “[a]s you know Made in the USA is a
huge initiative with Wal-Mart. This item [referring to
SHIELDME lens cleaning wipes] . . . is designed, manufactured
and produced all in Arizona.” (Id. Ex. PPP).
She sent a third e-mail to the same effect in September.
(Id. Ex. QQQ).
2013 and 2016, the sales of Hilsinger to Wal-Mart diminished
significantly, while the sales of Kleen Concepts to the
retailer grew. (Janell Dep. 53-54; Phillips Report at 16).
Hilsinger's Chief Financial Officer believes that the
company's loss in sales can be attributed to Kleen
Concepts's “Made in America” claim, because
the two companies' products were otherwise similar.
(Janell Dep. 53-54). At his deposition, the CFO testified
that although “there's clearly been lost
sales” due to Kleen Concepts “Made in
America” claim, he did not know “the magnitude of
the impact.” (Id. 137-38);
parties have retained experts to testify as to the likelihood
of consumer confusion of SHIELD and SHIELDME branded
products. Hilsinger retained Dr. Melissa Pittaoulis to design
and conduct a likelihood-of-confusion survey. (Def. Mot. to
Exclude Ex. 1 ¶ 9, “Pittaoulis Report”).
Kleen Concepts retained Brian M. Sowers to design and conduct
its own likelihood-of-confusion survey. (Def. Opp. to Pl.
Mot. to Exclude Ex. 1 ¶ 8, “Sowers Report”)
Pittaoulis is a consultant with an economic consulting firm.
(Pittaoulis Report ¶ 1). She holds a doctorate in
sociology and has authored a number of publications,
including on Lanham Act surveys. (Id. ¶ 6).
connection with this action, Pittaoulis conducted an online
survey using what is known as the
“Squirt” methodology. See SquirtCo.
v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980). The
purpose of the survey was to “determine whether
consumers believe that Kleen Concepts['] . . . SHIELDME
lens cleaners are made by the same company or otherwise
affiliated with the company that makes SHIELD lens
cleaners.” (Sowers Report ¶ 9).
selected the “array” variant of the
Squirt survey method, in which multiple products
bearing different marks, including the senior and junior
marks, are displayed to respondents simultaneously in an
array. According to Pittaoulis, such a survey was appropriate
under the circumstances “because the products are sold
in close proximity in the marketplace and . . .
‘SHIELD' is not likely to be a top-of-mind brand
for consumers.” (Id. ¶ 9).
selected respondents based on a number of criteria, including
whether they intended to purchased lens cleaner or screen
cleaner in the next 12 months, and whether they would shop
for that product at Wal-Mart. (Id. ¶ 15). In
the survey, respondents were shown a side-by-side array of
four bottles of lens cleaners bearing different marks,
include the SHIELD and SHIELDME marks. (Id. ¶
18). Respondents were asked whether they believed that the
products were made by the same or different companies, and
whether those companies were affiliated or associated with
each other. (Id. ¶¶ 20-21).
on the survey results, Pittaoulis found that there was a net
confusion rate of 28.7% among respondents. (Id.
¶ 34). She concluded that rate of confusion
“demonstrates that when the SHIELDME trademark is used
on optical products, it is likely to be confused with SHIELD
optical products.” (Id.).
Sowers is a consultant with a market research and consulting
firm. (Sowers Report ¶ 1). He has a master's degree
in business administration, and has “designed and
conducted hundreds of market research surveys.”
(Id. ¶ 2).
also conducted an online survey using the Squirt
method to test the likelihood of consumer confusion of SHIELD
and SHIELDME products. However, rather than using the
“array” format, Sowers selected the
“line-up” format, in which images of products are
shown sequentially, rather than simultaneously. According to
at least one expert in the field, the line-up format of the
Squirt survey is “far more frequently
used” than the array format. (Jerre B. Swann,
Everready and Squirt-Cognitively Updated, 106 L. J.
of the Int'l Trademark Ass'n 727, 739 (2016), Docket
Pittaoulis, Sowers selected respondents based on their stated
intent to purchase lens-cleaning products from Wal-Mart.
(Sowers Report ¶¶ 20, 23). Respondents were shown
products displaying the SHIELD mark alone, and were then
asked three “distractor questions” related to
their shopping habits. (Id. ¶¶ 20, 23,
34). According to Sowers, the distractor questions were
designed to “create some ‘mental distance'
between the Shield lens cleaner image and the lens cleaner
images from the other companies” and to “help
simulate the actual marketplace conditions of purchasing
these lens cleaners, in which consumers encounter the two
marks in close, but not literally side-by-side,
proximity.” (Id. ¶ 34). After being asked
the distractor questions, respondents were shown three
lens-cleaning products bearing different brands one at a
time, in random order, including a SHIELDME product.
(Id. ¶ 36). Sowers imposed a five-second delay
between the display of each image of a lens-cleaning product.
(Id.). After viewing all of the products seriatim,
respondents were asked if they believed that any products
were put out by the same company and whether they believed
that the companies were connected or otherwise affiliated.
(Id. ¶ 23). Based on that survey, Sowers
concluded that there was a net confusion rate of 9% among
consumers. (Id. ¶ 52).
end of the survey, Sowers asked respondents a final,
open-ended question concerning their primary consideration
when selecting a lens-cleaning product for purchase.
(Id. ¶ 42). Specifically, they were asked,
“[w]hat is your main consideration when choosing which
lens cleaner to purchase?” and were given the
opportunity to type a response. (Id. ¶ 42).
Based on the responses to that question, he concluded that
88.4% of respondents did not mention brand as a primary
consideration when deciding which lens cleaner to purchase,
and that price was the “overwhelming factor” that
consumers consider. (Id. ¶ 52).
deposition, Sowers testified that he had never authored an
expert report as to a primary-consideration survey. (Sowers
Dep. 95). When asked whether he was “aware of the
standard practices within [his] industry for designing such a
report, ” he replied, “I've never done one,
so no.” (Id.) When asked whether he was
“aware of any expert reports commissioned at [his
marketing research firm] where an opinion was expressed as to
primary consideration based on one question within a
likelihood of confusion survey, ” he responded that he
could not recall any. (Id. at 95-96).
third amended complaint filed by Hilsinger alleges seven
counts arising under federal law and common law: (1) federal
trademark infringement in violation of 15 U.S.C. § 1114;
(2) federal unfair competition and false designation of
origin in violation of 15 U.S.C. § 1125(a); (3) unfair
competition under the common law; (4) cancellation of the
trademark registration for a SHIELDME mark; (5) cancellation
of a different trademark registration for a SHIELDME mark;
(6) declaratory judgment; and (7) false advertising and false
designation of origin in commercial advertising or promotion
in violation of 15 U.S.C. § 1125(a).
has moved for summary judgment on two of those claims, and to
exclude the expert testimony of Pittaoulis. Plaintiff has
moved to strike one of defendant's filings in connection
with those motions, and to exclude the expert testimony of
Defendant's Motions for Summary Judgment and