De Boulle Diamond & Jewelry Inc v. Boulle LTD
3:12-cv-01462
N.D. Tex.Sep 5, 2014Background
- Plaintiff De Boulle Diamond & Jewelry, Inc. operates in Dallas using the name DE BOULLE and owns the federally registered DE BOULLE mark.
- Defendants Boulle, Ltd. and Jean-Raymond Boulle use the BOULLE mark in international marketing activities.
- Plaintiff sues alleging that BOULLE is confusingly similar to DE BOULLE and infringes/unduly competes under state and federal law.
- The case was set for jury trial beginning September 29, 2014; Defendants move to exclude Plaintiff's branding expert Steven Dennis's opinions.
- The court grants in part and denies in part the motion to exclude, limiting certain opinions but allowing others to proceed to trial.
- The court previously granted summary judgment to Plaintiff on Defendants' claims or defenses related to protectability and abandonment of the BOULLE mark; remaining issues concern likelihood of confusion and tarnishment as to Plaintiff's claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of whether Jean-Raymond Boulle never established a US trademark | Boulle never established a protectable US mark | Dennis's opinion is reliable and helpful | Denied to the extent of admissibility; limited impact on remaining claims |
| Whether BOULLE and DE BOULLE are confusingly similar | Marks are confusingly similar, supporting infringement/unfair competition | Dennis's similarity opinion relies on subjective observations and should be excluded | Granted; opinion excluded as not helpful to jury |
| Whether tarnishment/dilution theories require Dennis's opinion on negative association | Tarnishment could harm DE BOULLE through association | Opinion is irrelevant or prejudicial | Denied; tarnishment opinion admissible and weight to be tested by cross-examination |
| Whether 403 prejudice/other evidentiary concerns warrant exclusion of related materials | Evidence supports Plaintiff's claims and should be admitted | Evidence is unfairly prejudicial and should be excluded | Kept for later ruling in limine; district court to assess probative value and prejudice together with managing time |
Key Cases Cited
- Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (factors for likelihood of confusion in trademark cases)
- Rolex Watch U.S.A., Inc. v. Meece, 158 F.3d 816 (5th Cir. 1998) (use of expert testimony on likelihood of confusion; digits of confusion allowed)
- Chesebrough-Pond's, Inc. v. Faberge, Inc., 666 F.2d 393 (9th Cir. 1982) (exclusion of expert testimony on similarity where lay perception suffices)
- Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137 (U.S. 1999) (flexible Daubert applicability to non-scientific expert testimony)
- Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (U.S. 1993) (gatekeeper standard for reliability of expert testimony)
- Skidmore v. Precision Printing & Packaging, Inc., 188 F.3d 606 (5th Cir. 1999) (reliability analysis focuses on reasoning and methodology, not results)
- In re Paoli R.R. Yard PCB Litig., 35 F.3d 717 (3d Cir. 1994) (basis for evaluating expert testimony; admissibility vs weight)
- 14.38 Acres of Land, More or Less, Situated in Leflore Cnty., 80 F.3d 1074 (5th Cir. 1996) (gatekeeping and admissibility standards in complex evidence)
- Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp. 2d 335 (D.N.J. 2002) (exclusion of opinion testimony based on subjective evaluation)