Intellectual Property Law

How to Find the Right Expert Witness for Your Trademark Case

By Michael Atkins

Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment. Experts also can help establish the opposite of these propositions.

So how do you find a capable trademark law expert? Here’s what I’ve come up with. First, check out trademark cases in which expert testimony has been offered. Find cases like yours. If neither the opposing side nor the court has blasted holes in the expert’s methodology, there’s a good chance they know what they’re doing. Second, ask around. The INTA list serve and other trademark law practitioners would be a good place to get some names. Third, check out the Internet. If an expert is writing and speaking on survey design, or is really shining in the area in which they would testify, that’s a good sign. Fourth, hit your local university. I’m a fan of teaching academics. If they can distill complex subjects for their students, they probably can do the same for a jury.

Once you’ve got a few names, vet the heck out of them. Check out the cases they’ve testified in. Talk to the lawyers who’ve hired them. Read what they’ve written. See what trademark lawyers think of them. Ask for references. Ask for sample expert reports. Due diligence can be time consuming. But it’s worth it. I am convinced that taking the time to hire the right expert witness up front can help you win or favorably settle your trademark case later on.

Full post as published by Seattle Trademark Lawyer on April 24, 2008 (boomark / email).