That was the "case'' about two years ago between Kmart Corp. and LeSportsac, Inc., a marketer of luggage, bags and knapsacks. The case started after Kmart introduced a line of bags which LeSportsac claimed were similar in appearance to its bags. Apparently, according to LeSportsac, Kmart lead consumers to believe that they were purchasing LeSportsac bags when actually they were purchasing products from the retailer. Evidence from consumer surveys by Kmart and LeSportsac revealed that many consumers were unable to distinguish the origin of the products.
In late 1986, the case was settled after a federal judge signed a consent agreement between the two parties. Settlement was reached after the parties had completed most of the pretrial discovery and were in the process of preparing the case for trial.
The long court battle ended with the retailer agreeing to stop selling its line of bags carrying the name "di Paris sac," a line it had been offering for sale since 1984. LeSportsac had been selling its distinctive, highly successful line of luggage and bags since 1976. During that period, LeSportsac had sold approximately 50,000,000 in both the U.S. and abroad.
LeSportsac's study
In LeSportsac's study, a majority of the respondents could, with the logo masked, name LeSportsac as the maker of its bags. Another sample group was shown Kmart's "di Paris sac" bags and one-third of them said those bags were made by LeSportsac.
LeSportsac's study, conducted by an independent research supplier in July, 1985, used two different questionnaire versions. It involved women 18-40 years of age living in three metropolitan areas and within 30 miles of the interview area. All of them had to have purchased any light-weight, softsided bags or light-weight, soft-sided luggage within the past two years.
LeSportsac's survey also obtained information as to the type of stores the respondents shopped in order to disprove any argument that buyers of LeSportsac bags were a different set than customers of Kmart, says Steven Bazerman, attorney with Moore, Berson, Lifflander & MeWhinney in New York City. Bazerman acted as trial counsel for LeSportsac.
Purpose of the study
One group of women were shown two LeSportsac light weight soft-sided bags from which all tags were removed and all words and designs were printed over within the distinctive LeSportsac ovals. The purpose of this study version was to learn whether or not these women perceive a single company or source and/or brand identity of masked bags, what identifications they make, if any, and the reasons they give for doing so.
A second group of women were shown two "di Paris sac" lightweight, soft-sided bags on which the brand name was visible and bearing the tags and labels these bags carry when displayed in a store. The purpose of this study version was to learn whether or not these women recognize the company source and/or brand name of the "di Paris sac" bags, what sources and brand names they offer, if any, and the reasons they give for doing so.
Study methods
The sample design called for approximately 400 completed personal interviews, 134 in each of three metropolitan areas: Chicago, New York and Los Angeles. Interviewing was conducted at points in the three metropolitan areas where it was anticipated that mobile women would be found who would more likely be purchasers or potential purchasers of light weight soft-sided bags and luggage.
Because this was a random intercept study rather than a study utilizing a probability sample, the results of the study were not statistically projectable to the entire national population of women who had within 1984-85, purchased any light-weight, soft-sided bags or luggage. Respondents were not selected in accordance with strict probability methods whereby each such individual would have an equal or known chance of being included in the sample of all such people living in each of the three metropolitan areas, nor were the three metropolitan areas selected on a strict probability basis, even though they are populated by a wide diversity of people from various socioeconomic origins.
However, all respondents were selected in accordance with age quotas and without reference to any knowledge, perception, preference or purchase behavior on their part concerning light-weight, soft-sided bags or luggage which might have introduced a bias into the selection of the respondents or affected the content of their replies to the interviewer's questions.
Interviewing for LeSportsac was conducted mainly during the last two weeks of July, 1985. Interviews were conducted at hours during the day and evening when the level of pedestrian traffic in each of the locations was likely to be highest.
Except for the survey company, none of the interviewers nor the supervisors knew at the time of the survey that it was being conducted for possible use in litigation. None of the supervisors nor interviewers knew the name of the party in whose behalf the survey was being conducted. Moreover, the interviewer instructions and the interview questionnaire were designed to avoid providing any suggestions about who the survey sponsor or interested parties might be.
LeSportsac conclusions
The data gathered in the two studies of female consumers purchasing softsided bags in the three cities indicate the following:
1. 48.8% of total survey respondents associated the appearance of the masked "LeSportsac" bags with a single source and did not make an incorrect source identification.
2. 4.13% of total survey respondents identified "LeSportsac" as the brand name or the name of the company making the "LeSportsac" softsided bags they were shown. Over one half of these individuals cite insignia and/or labels and/or circles as the reason for making the "LeSportsac" identification. An additional 3.0% of total survey respondents gave a name having a partial similarity to "LeSportsac." Almost all of the remaining consumers making the LeSportsac company or brand identification referred to the material or design of material or the style of the bag.
3. Of the survey respondents offering insignia, labels or circles as the reason for their company/brand identification, 81.1% said "LeSportsac;" 76.1% of those giving a material/design of material explanation and 76.7% of those giving a style of bag explanation also gave LeSportsac as their company/brand identification.
4. When asked which of several brands they had previously seen and whether there was anything about their total appearance they associated with it, 31.8% of total survey respondents volunteered label/insignia/circles as the characteristics ("anything about the appearance") of the LeSportsac bags that caused them to associate it with the brand name LeSportsac.
5. When a similar body of consumers, picked by the same techniques, were asked to identify the source of "di Paris sac" bags that carried all of their name and logo markings as well as their handtags, 25.9% of total survey respondents said the company source was LeSportsac. Moreover, 15.9% of total survey respondents attributed their LeSportsac source identification to the insignia or label. Other respondent references to LeSportsac as the source were explained on the basis of style/design and material/texture of material.
6. When asked the brand name of the "di Paris sac" bags they were being shown, 11.4% of total respondents replied LeSportsac. In response to this question concerning brand, one-half of the respondents giving "The insignia/label" reason for their brand identification had made a LeSportsac brand identification.
7. An unduplicated net 33.8% of total survey respondents stated, when shown the "di Paris sac" bags, that LeSportsac either makes the bags or is the brand name for the bags.
8. Given the reasons of these findings:
A. More than 40% of female consumers of soft?sided bags, when they view a LeSportsac soft?sided bag without its name believe, on the basis of the design, shape, color and placement of its oval marks and to a lesser extent on the basis of the presence of other items of appearance and style, that they viewed soft?sided bags the company source and/or brand name of which is LeSportsac.
B. More than 25% of female consumers of soft-sided bags, when they viewed a fully marked "di Paris sac" soft-sided bag, believed for reasons of the design, shape and placement of its oval marks and to a lesser extent on the basis of the presence of other items of appearance and style, that they viewed soft-sided bags the company source and/or brand name of which is LeSportsac.
Value of surveys
Bazerman says the use of consumer surveys in trademark cases is on the rise because "the products' shapes do act as brand recognition signals to the public and it's difficult to prove this without the aid of a survey." In the Kmart/LeSportsac case, consumer surveys provided a cost?effective way of assisting in the court of appeal's decision to affirm the issuance of a preliminary injunction.
"We used the surveys to prove secondary meaning," says Bazerman. "Secondary meaning implies that consumers recognize that a particular symbol such as a work, product packaging or product shape is associated with one company, i.e., a single source. The Rolls Royce grill is an example. Consumers may not be able to tell you it's a Rolls Royce but they do know it's associated with a particular company. Aside from a survey, evidence one can use to prove 'secondary meaning' is advertising expenditures, unsolicited articles in the media or other indications of public recognition of the symbol."
In discussing the Kmart/LeSportsac case, Bazerman indicated: "By its suit, LeSportsac has clearly established that the federal courts will protect a product's appearance or trade dress, provided it has established that the public recognizes the product's appearance is an indication that the goods come from a single source, in this case, LeSportsac.
ARTICLE SIDEBAR
Evidentiary requirements for surveys
According to the Handbook of Recommended Procedures for the Trial of Protracted Cases, issued by the Judicial Conference of the United States in 1960, the party offering a survey into evidence is recommended to establish the following:
1. That the proper universe was selected and examined;
2. A representative sample was drawn from that universe;
3. A fair and correct method of questioning the interviewees was used;
4. The persons conducting the survey were recognized experts;
5. The data gathered was accurately reported;
6. The sample, the questionnaire and the interviewing were in accordance with generally accepted standards of objective procedure and statistics in the field of such surveys;
7. The sample and the interviews were conducted independently of the attorneys in the case;
8. The interviewers were adequately trained in the field and had no knowledge of the litigation purposes for which the survey was to be used.