'Doodling' IP Rights Part 2

Last month we discussed the recent decision in which Fisher-Price's Doodle Pro trade dress and trademark was found not to infringe the rights of Pilot Corp.'s (PCA) Magna Doodle drawing toy. This month, we'll discuss another lesson from that case, and its broader application to the industry.

When PCA sued Fisher-Price, it requested a preliminary injunction. This means both parties submitted briefs and evidence to the court early in the case to assist the court in deciding who would likely win at trial. The theory is that, if the plaintiff proves it's likely to ultimately win and it is suffering ongoing harm that cannot be fully compensated with money at trial, the court should “preliminarily” enjoin (or prevent) the ongoing harm.

In this case, among the evidence both parties provided were several consumer surveys designed to measure “actual confusion” in the market between the parties' respective trademarks. This is an important factor in determining whether there is trademark infringement. After reviewing the results, the court denied the injunction. There were several reasons for the decision, but the court pointed to “significant problems” with PCA's survey, the most important of which was that the manner in which the trademarks were presented to consumers in the survey differed significantly from how consumers would see the trademarks in the marketplace.

The court's denial of the preliminary injunction came in November 2004. Following that decision, the parties engaged in discovery and briefed another set of motions to the court. That spanned at least another 12 months. With a roadmap from the court listing its problems with PCA's survey, you'd expect PCA to conduct a new one to correct the problems, right? Well, instead, PCA submitted the same survey to the court a second time.

Unsurprisingly, the court's reaction to the survey the second time around was the same as its reaction the first time. Unsurprisingly, the court concluded that the survey was still flawed and “largely irrelevant.” Unsurprisingly, PCA lost.

The lesson? Learn from your failures.

Litigation presents numerous opportunities to take calculated risks. It's unclear why PCA risked sticking with its original survey. Certainly, the chances of the court accepting its survey the second time were low. PCA did not effectively use the foresight it had gained from its first loss. Don't make the same mistake.