Expert Article Library

Experts in a Preliminary Injunctive Action

Case Name: Borinquen Biscuit Corp. v. M.V. Trading Corp.
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Court: US District Ct. of Puerto Rico, First Circuit

Date: April 4, 2006

Type of expert: advertising and brand recognition (plaintiff); market research (defendant)

Issue: Surveys

Case Synopsis: Borinquen used the “RICA” trademark for selling cookies, crackers, and biscuits. M.V. Trading Corp. (M.V.) later sold a cracker using the name “Nestle Ricas.” The district court found a likelihood of confusion between the two marks and issued a preliminary injunction, restricting M.V. Trading Corp. from using the name of “Ricas” in advertising, distributing, or selling cookies or crackers in Puerto Rico.

Role of the expert: Both sides retained an expert to testify about the likely confusion. Borinquen’s witness was an expert in advertising and brand recognition who polled others in the field, concluding that confusion between the trade names was likely. M.V.’s witness was an expert in market research who conducted a survey of 100 consumers in metropolitan areas and concluded that consumers could distinguish the difference between the packaging of the two products.

Expert analysis: For a preliminary injunction actual confusion is not required, only the likelihood of confusion. While Survey evidence may be helpful, it is not required. The district court found the survey of M.V.’s expert to have little evidentiary value. The survey was designed to see if potential customers could spot differences in the packaging and not to identify whether M.V.’s use of the “Nestle Ricas” mark would cause a likelihood of confusion. The small sample size and large margin of error introduced doubt as to its statistical value. The restriction upon the M.V. Trading Corp. was affirmed.

Summary prepared by J. Price, Student, University of California, Berkeley School of Law (Boalt Hall)