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90 Trademark Rep. 746 (2000)
Failure to Conduct a Survey in Trademark Infringment Cases: A Critique of the Adverse Inference

handle is hein.journals/thetmr90 and id is 796 raw text is: Vol. 90 TMR FAILURE TO CONDUCT A SURVEY IN TRADEMARK INFRINGEMENT CASES: A CRITIQUE OF THE ADVERSE INFERENCE By Sandra Edelman* I. INTRODUCTION In Arthur Conan Doyle's story Silver Blaze, Sherlock Holmes cited the curious incident of the dog that did nothing in the nighttime as a critical clue in solving the mystery of a stolen racehorse.' The absence of barking by the dog that guarded the stable was significant to Holmes, for it indicated that the thief was in fact known to the dog. The absence of survey evidence of confusion is similarly thought by courts to be significant in assessing the likelihood of confusion in trademark infringement cases. But does this analogy hold? Does the failure by the plaintiff to present survey evidence of confusion indicate that confusion is not likely to occur? This article will address the subject of whether, or under what circumstances, it is appropriate to attach significance to the absence of survey evidence of confusion in trademark infringement cases, like the absence of barking by the stable dog in the nighttime. The importance of survey evidence in trademark infringement cases is of relatively recent vintage. During the first half of the Twentieth Century, Judge Learned Hand of the Second Circuit Court of Appeals wrote a number of classic opinions on the issue of trademark infringement, all without the benefit of survey evidence of confusion.2 Indeed, in Judge Learned Hand's day, as the Second Circuit recently recounted in Schering Corp. v. Pfizer, Inc.,' courts were reluctant to accept survey evidence or find it persuasive.4 In fact, it was not until the 1950s that survey * Partner in the firm of Dorsey & Whitney LLP, New York, New York, Associate Member of the International Trademark Association; TMR United States Original Articles Editor. 1. A.C. Doyle, Silver Blaze, Memoirs of Sherlock Holmes (1894). 2. See, eg, Dwinnell-Wright Co. v. White House Milk Co., 132 F2d 822, 56 USPQ 120 (CA 2 1943); My-T-Fine Corp. v. Samuels, 69 F2d 76 (CA 2 1934); Yale Electric Corp. v. Robertson, 26 F2d 972 (CA 2 1928). 3. 189 F3d 218, 51 USPQ2d 1705 (CA 2 1999). 4. Id at 224, 51 USPQ2d at 1709 (citing Du Pont Cellophone Co. v. Waxed Products Co., 6 F Supp 859, 885, 22 USPQ 145, 169 (EDNY 1934), modified 85 F2d 75, 30 USPQ 332 (CA 2 1938), cert denied 299 US 601 (1936); Elgin National Watch Co. v. Elgin Clock Co., 26 F2d 376, 377-78 (D Del 1928)). 746

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