April 11, 2019
from the United States District Court for the Northern
District of Illinois, Eastern Division. No. 15-cv-10897 -
John Robert Blakey, Judge.
Sykes, Scudder, and St. Eve, Circuit Judges.
EVE, CIRCUIT JUDGE.
word "capsule" can describe many things -a
pharmaceutical pill, a space pod, or a short synopsis, for
example. What about a cellphone case?
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."
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.
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.
and Spigen are manufacturers and retail sellers of cellphone
cases. Starting in December 2009, Uncommon began marketing a
line of cases it called "CAPSULE." Its first sale
came in July 2010, and Uncommon applied to register the mark
with the Patent Office in September 2012. In May 2013, the
Patent Office issued Trademark Registration No. 4, 338, 254.
The registration protected "capsule" for
"cases specifically adapted for protection and storage
of consumer electronics, namely, cellular phones and mobile
registration was not the first or last time the Patent Office
would address the mark "capsule" for cellphone
cases. In July 2008, the Office had issued a
"capsule" registration to Vatra, Inc., which had
claimed to first use the term in September 2007. (The Office
later canceled Vatra's trademark in February 2015, after
Vatra failed to certify its continued use.) Capsule Case
Corp. likewise attempted to register "CAPSULE CASE"
in 2017, though the record does not say what came of that
joined the "capsule" ranks relatively early, in
2010. It sold its first "capsule"-branded case in
June of that year, when, all agree, Spigen was unaware of
Uncommon's trademark. Spigen then grew the brand into a
line: the "Capsule-family" cases. The family
includes the "Capsule Capella," the "Rugged
Capsule," the "Capsule Ultra Rugged," the
"Capsule Solid," and the "Air Capsule"
applied to register the family of marks between 2014 and
2016. It was able to register three of those marks,
"Capsule Capella," "Capsule Solid," and
"Air Capsule." But for both "Capsule
Solid" and "Capsule Capella" the Office
decided that the marks were descriptive, at least in part.
"Capsule Solid" was therefore put on the
Supplemental (as opposed to Principal) Register, and the
Office required the "Capsule" in "Capsule
Capella" to be disclaimed by Spigen as descriptive and
nonexclusive. The Office initially declined to register the
other two marks, "Rugged Capsule" and
"Capsuled Ultra Rugged," concluding that both were
descriptive and likely to be confused with Uncommon's
mark. These two registration applications have been suspended
pending this litigation.
and Spigen's "capsule" cases have more in
common than the name. Both sell their cases online, through
their own websites and online retailers, like Amazon and
eBay; both have a national market; both use the
"capsule" name alone and in conjunction with other
descriptors; and both use dark-colored, sansserif font for
the mark on their packaging. But there are differences too.
Uncommon's cases can be customized with personal images,
or they come "readymade" with colorful designs or
artwork. Spigen's cases cannot be customized and are
generally solid in color. Uncommon, moreover, does not
generally make cases for iPhones after the 5/5s generation
(as far as this record is concerned); Spigen does-and, unlike
Uncommon, it makes cases for Samsung cellphones as well. The
two companies' packaging is also different, as shown by
the record examples below.
illustrated, Uncommon's cases generally come in some
combination of a blue, grey, white, and/or black package.
Spigen's come in a distinctive orange and black package.
enough similarities, however, Uncommon filed this suit in
December 2015, alleging that Spigen's use of
"capsule" constituted trademark infringement and
unfair competition under federal and state law. See
15 U.S.C. §§ 1114, 1125(a).Spigen countersued. It
sought, among other things, to cancel Uncommon's
case entered discovery. Spigen disclosed its experts to
Uncommon in December 2016. There were two: Doug Bania, who
would testify to the lack of confusion, the descriptiveness
of Uncommon's mark, secondary meaning, and damages; and
Kirk Martensen, who, according to Spigen's disclosure,
was a "non-testifying expert who will conduct a consumer
survey" that may be relied upon by Bania. The disclosure
added that Martensen may "be called to testify on the
methodology of the survey if needed."
later sent Uncommon a two-page summary of Martensen's
credentials. Bania's report, produced shortly after,
relied extensively on Martensen's survey, which was
attached to the report with its underlying data. In his
deposition, Bania admitted that he was not an expert on
survey methodology. Uncommon never asked to depose Martensen.
parties cross-moved for summary judgment in June 2017. Spigen
relied on the Martensen survey in its opening. Uncommon
responded that the survey could not be considered at summary
judgment, primarily because no expert could testify to its
methodology. Spigen tried to fill that evidentiary gap in its
reply. It submitted a declaration from Martensen explaining
the survey's methodology-information which, by and large,
had been disclosed in the earlier production of the survey
itself. Uncommon moved to strike the declaration as untimely
and inadequate. It did not seek leave to file a surreply
responding on the merits.
district court ruled in March 2018. It held that Spigen's
failure to disclose Martensen as a testifying expert was
harmless under Federal Rule of Civil Procedure 37(c)(1). The
court further found that the survey was sufficiently reliable
and supported by the declaration. Turning to the merits, the
district court disposed of the case on two alternative
grounds. First, the court found no issue of material fact as
to whether "capsule" was descriptive, per the
word's dictionary definitions, and it found no issue as
to whether the mark lacked a secondary meaning. The court
therefore canceled the registration, which necessarily
defeated Uncommon's infringement and unfair-competition
claims. Second, the court decided that there was no issue of
fact regarding the lack of confusion posed by Spigen's
use of "capsule," which also defeated both of
district court accordingly entered summary judgment in
Spigen's favor. Uncommon appeals.
submits that the district court erred in three ways: by
considering the Martensen declaration; by canceling the
mark's registration; and by deciding, alternatively, that
there was no likelihood of confusion between Uncommon's
cases and Spigen's. Because the Martensen declaration
colors the summary-judgment analysis, we start there.
The Martensen Survey and Declaration
summary judgment, Spigen relied on a piece of evidence
familiar in trademark litigation-a consumer survey. See
generally Robert C. Bird and Joel H. SteckeL The
Role of Consumer Surveys in Trademark Infringement: Empirical
Evidence from the Federal Courts, 14 U. Pa. J. Bus. L.
1013 (2012). Like all summary-judgment evidence, the survey,
which Martensen conducted, needed to be admissible (or
capable of taking admissible form) for the court to consider
it. See, e.g., Cehovic-Dixneuf v. Wong, 895 F.3d
927, 931 (7th Cir. 2018).
admissible, a consumer survey almost always requires expert
testimony. This is because conducting a survey entails
expertise and the exercise of professional judgment. See
Muha v. Encore Receivable Mgmt., Inc.,558 F.3d 623,
625-26 (7th Cir. 2009); Spraying Sys. Co. v. Delavan,
Inc.,975 F.2d 387, 394 (7th Cir. 1992). No survey is
"foolproof," and examiners make a range of
decisions about sample size, question design, survey format,
and statistical analysis-all of which can impact reliability.
See Kraft Foods Grp. Brands LLC v. Cracker Barrel Old
Country Store, Inc.,735 F.3d 735, 741-42 (7th Cir.
2013); see also 6 McCarthy on Trademarks and Unfair
Competition §32:158 (5th ed. 2019) ("McCarthy on
Trademarks"). Expert testimony is therefore necessary to
explain the ...