United States District Court, N.D. Illinois, Eastern Division
THE BLACK & DECKER CORPORATION, BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs,
POSITEC USA INC. and RW DIRECT INC., Defendants.
MEMORANDUM OPINION AND ORDER
M. DOW, JR. UNITED STATES DISTRICT JUDGE.
Black & Decker Corporation, Black & Decker Inc., and
Black & Decker (U.S.) Inc. (collectively,
“Plaintiffs”) tried to a jury claims against
Defendants Positec USA Inc. and RW Direct Inc. (collectively,
“Defendants”) for trademark infringement under 15
U.S.C. § 1114 (Count II) and trade dress infringement
under 15 U.S.C. § 1125(a) (Count IV). Following a jury
verdict in Plaintiffs' favor, the parties filed
post-trial motions. Before this Court are Plaintiffs'
motion for permanent injunction ; Plaintiffs' motion
for prejudgment interest ; Plaintiffs' motion for
attorneys' fees ; Plaintiffs' motion for
increased damages under 15 U.S.C. § 1117(a) ;
Plaintiffs' motion for supplemental damages pursuant to
the parties' pretrial stipulation ; Defendants'
motion to set profits award under the Lanham Act and
alternative motion for remitter ; Defendants' motion
for a new trial ; Defendants' renewed motion to
strike Plaintiffs' jury demand ; and Defendants'
motion for judgment notwithstanding the verdict .
reasons stated below, Defendants' motion for a new trial
 is granted; Defendants' motion for judgment
notwithstanding the verdict  is denied; Defendants'
motion to strike jury demand  is denied as premature;
and Plaintiffs' post-trial motions relating to remedies
and damages , , , , and Defendants'
motion to set profits award  are denied as moot. This
case is set for status hearing on September 26, 2017 at 10:00
background of this trademark case, knowledge of which is
assumed, is set forth in the Court's Memorandum Opinion
and Order  granting in part and denying in part
Defendants' motion for summary judgment. Briefly
summarized, Plaintiffs allege that Defendants infringed their
registered trademarks and trade dress by selling power tools
and power tool accessories that used Plaintiffs'
“family” of yellow and black registered
trademarks and trade dress.
on September 28, 2015 and concluding on October 5, 2015,
Plaintiffs' federal claims for trademark infringement and
trade dress infringement were tried before a jury. The jury
returned a verdict for Plaintiffs and against Defendants on
both claims. The jury awarded Plaintiffs $53, 960, 014.00 on
its claims against Positec and $114, 801.00 on its claims
against RW Direct. The jury also concluded that
Defendants' infringement of Plaintiffs' trademarks
and trade dress was willful.
parties filed numerous post-trial motions, which are
discussed below. The Court delayed consideration of these
motions while the parties attempted, unsuccessfully, to
resolve their dispute through meditation. The Court now
turns to the parties' motions.
Motion for New Trial
59(a)(1)(A) authorizes the Court to order a new trial as to
some or all issues that were tried to a jury. See
Fed.R.Civ.P. 59(a)(1)(A). “A new trial is appropriate
if the jury's verdict is against the manifest weight of
the evidence or if the trial was in some way unfair to the
moving party.” Venson v. Altamirano, 749 F.3d
641, 656 (7th Cir. 2014). “The ruling on a motion for a
new trial is a matter committed to the district court's
discretion.” Galvan v. Norberg, 678 F.3d 581,
588 (7th Cir. 2012). In determining whether a new trial is
warranted, the Court “view[s] the evidence in the light
most favorable to the prevailing party, leaving issues of
credibility and weight of evidence to the jury.”
Lewis v. City of Chicago Police Dep't, 590 F.3d
427, 444-45 (7th Cir. 2009). The appellate court reviews the
district court's decision to grant or deny a new trial
for an abuse of discretion, unless the district court's
decision is based on a question of law, in which case it is
reviewed de novo. See Wright v. Illinois
Dep't of Children and Family Services, 798 F.3d 513,
527 (7th Cir. 2015).
their timely motion for a new trial, Defendants argue that a
new trial is warranted because the jury's damages award
was excessive, the verdict was against the weight of the
evidence, and the trial was fundamentally unfair due to the
admission of unreliable and prejudicial expert testimony and
other inadmissible evidence. The Court finds it unnecessary
to consider Defendants' first two categories of
arguments, because it agrees that fundamental unfairness was
injected into the trial through the admission of James
Berger's expert survey concerning likelihood of
state a claim for trademark or trade dress infringement,
“a plaintiff must establish that: (1) the mark at issue
is protectable, and (2) the defendant's use of the mark
is likely to cause confusion among consumers.” Top
Tobacco v. Fantasia Distribution Inc., 101 F.Supp.3d
783, 788 (N.D. Ill. 2015). Plaintiffs often employ surveys to
show that the defendant's use of a mark causes consumer
confusion. See, e.g., Simon Property Group, L.P. v.
mySimon, Inc., 104 F.Supp.2d 1033, 1038 (S.D. Ind.
2000). Consumer likelihood of confusion surveys are opinion
evidence based on scientific methods or specialized
knowledge, and therefore must be presented through expert
witnesses. See Fed.R.Evid. 702; Simon Property
Group, 104 F.Supp.2d at 1039; Bobak Sausage Co. v. A
& J Seven Bridges, Inc., 2010 WL 1687883, at *2
(N.D. Ill. Apr. 26, 2010). “No survey model is suitable
for every case.” Simon Property Group, 104
F.Supp.2d at 1038. “At bottom, however, a survey to
test likelihood of confusion should attempt to replicate the
thought processes of consumers encountering the disputed mark
or marks as they would in the marketplace.”
Id.; see also Bobak Sausage, 2010 WL
1687883, at *5; Georgia-Pacific Consumer Products LP v.
Kimberly-Clark Corp., 2010 WL 1334714, at *2 (N.D. Ill.
Mar. 31, 2010) (“Surveys testing consumer confusion
should mimic market conditions, including the context in
which purchases are made.”); 5 McCarthy on Trademarks
§ 32:163 (4th ed. 1999) (“the closer the survey
methods mirror the situation in which the ordinary person
would encounter the trademark, the greater the evidentiary
weight of the survey results”).
Berger's likelihood of confusion survey [103-2],
Respondents were shown a photograph of two rows of boxed
power tools, which according to Plaintiffs was taken in a
retail Home Depot store. All of the products depicted in the
photo were Plaintiffs' DeWalt products, except one, which
was a Rockwell product sold by Defendants. Id. at
30. Respondents were asked if they believed that all the
products were put out by the same company, and, if so, why.
Id. at 31. Forty-seven percent of respondents said
they believed that all the products pictured were put out by
the same company. Id. at 43. In his report, Berger
stated that the survey was designed to test whether
Defendants' use of trade dress that is similar to
Plaintiffs' caused consumers to mistake the source of
Defendants' goods. Id. at 7.
to trial, Defendants moved to exclude Mr. Berger's survey
based on Federal Rule of Evidence 702 and Daubert v.
Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
Rule 702 permits the admission of expert testimony if
“scientific, technical, or other specialized knowledge
will assist the trier of fact to understand the evidence or
to determine a fact in issue.” Fed.R.Evid. 702. Rule
702 requires that the district court act as a
“‘gatekeeper' who determines whether
proffered expert testimony is reliable and relevant before
accepting a witness as an expert.” Winters v.
Fru-Con Inc., 498 F.3d 734, 741 (7th Cir. 2007) (quoting
Autotech Tech. Ltd. P'ship v.
Automationdirect.com, 471 F.3d 745, 749 (7th Cir.
2006)); see also Kumho Tire Co., Ltd. v. Carmichael,
526 U.S. 137, 147-49 (1999); Daubert, 509 U.S. at
589. The Court denied Defendants' Daubert
motion, concluding that Defendants' criticisms of Mr.
Berger's expert opinions went to their weight rather than
trial, the jury was required to decide, among other things,
whether “Defendants have used power tool products and
packaging in a manner that is likely to cause confusion as to
the source, origin, sponsorship and/or affiliation of
Defendants' products and associated packaging.”
 at 26. Despite offering the survey as evidence that
Defendants' trade dress caused customer confusion,
however, Mr. Berger testified at trial that his survey did
not test causation, but instead was merely
“observational.” See Tr. Day 3, pp. 496-497, 519;
see also Id. at 528 (Mr. Berger testifying that he
was “not admitting . . . that this is a causal
survey” and that he “d[id]n't believe
it's a causal survey”). According to Mr. Berger,
the survey was not concerned with whether Defendants'
trade dress caused the consumers' confusion, but instead
showed “[t]he confusion [that] was caused by the
tendency to overlook the obvious”-in other words, the
“idea of putting the same packages together and
somebody just thinking that they're the same without
looking carefully at them.” Tr. Day 3, p. 497.
considering Mr. Berger's pre-trial submissions, his trial
testimony, and the parties' post-trial briefing, the
Court concludes that this is one of those unusual instances
in which a proffered consumer survey was “so informally
designed and conducted that it fails key tests of
professionalism and reliability” and therefore should
have been excluded from trial. 6 McCarthy on Trademarks and
Unfair Competition § 32:158 (4th ed. 1999).
Rule 702 and Daubert, “[t]he proponent of the
expert bears the burden of demonstrating that the
expert's testimony would satisfy the Daubert
standard.” Lewis v. CITGO Petroleum Corp., 561
F.3d 698, 705 (7th Cir. 2009). “To meet Rule 702 and
Daubert's standard of reliability, a survey
offered to establish the likelihood of consumer confusion
must ‘have been fairly prepared and its results
directed to the relevant issues.'” LG
Electronics U.S.A., Inc. v. Whirlpool Corp., 661
F.Supp.2d 940, 951-52 (N.D. Ill. 2009) (quoting Weight
Watchers Int'l, Inc. v. Stouffer Corp., 744 F.Supp.
1259, 1272 (S.D.N.Y. 1990)) (citations omitted). “The
criteria for the trustworthiness of survey evidence are that:
(1) the ‘universe' was properly defined; (2) a
representative sample of that universe was selected; (3) the
questions to be asked of interviewees were framed in a clear,
precise, and non-leading manner; (4) sound interview
procedures were followed by competent interviewers who had no
knowledge of the litigation or the purpose for which the
survey was conducted; (5) the data gathered was accurately
reported; (6) the data was analyzed in accordance with
accepted statistical principles[;] and (7) objectivity of the
entire process was assured.” Weight Watchers,
744 F.Supp. at 1272 (collecting cases). Although these
criteria generally address the weight that a fact finder
should give the survey, a survey ...