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Expert testimony on consumer confusion is admissible in a trademark infringement action, a federal judge ruled March 15 ( Bacardi & Company Limited, et al. v. New York Lighter Co. Inc., et al., No. 97-CV-7140 [JS] [VVP], E.D. N.Y.). U.S. Judge Joanna Seybert of the Eastern District of New York denied cross-motions by Bacardi & Company and New York Lighter Co. to exclude one another’s experts from testifying in Bacardi’s infringement action. Bacardi is the owner of the Bacardi trademark, used to identify its rum since 1862. New York Lighter distributes cigarette lighters under the mark “Bacarbi.” Bacardi alleges that the lighters infringe its trademark and trade dress. Bacardi sought to introduce the testimony of Robert Reitter and Norman Passman of Guideline Research Corp. (GRC) on consumer confusion. New York Lighter sought to introduce the testimony of Dr. Jerome Milch on the same issue. The parties filed motions to exclude the other’s experts. The court denied both motions. PLAINTIFF’S EXPERTS Regarding Reitter and Passman, Judge Seybert noted that both have extensive educational backgrounds and more than 35 years’ experience in market research. Further, methodological attacks on the report prepared by Reitter and Passman based on a consumer survey “go to the weight of such evidence, not to its admissibility,” the judge said, relying on the 2nd U.S. Circuit Court of Appeals’ ruling in Schering Corp. v. Pfizer (370 U.S. 31 [2d 1999]. In that ruling, the judge said, the Second Circuit “adopted a rather broad standard for the admissibility of expert witness testimony,” holding that “contentions that the assumptions are unfounded go to the weight, not the admissibility, of the evidence.” The Schering ruling “is dispositive of the motion to exclude the expert testimony of Reitter and Passman, as well as the results of the surveys on which their expert testimony is based,” Judge Seybert said. DEFENSE EXPERT Regarding the testimony of Milch, the court rejected Bacardi’s argument that he is not qualified as an expert, citing his educational background and experience in market research. The judge also found the testimony – consisting largely of an analysis of the report prepared by Reitter and Passman – relevant and held that Bacardi’s attacks on Milch’s testimony go to the weight of the evidence, not its admissibility. Finally, the court found the evidence more probative than prejudicial. Bacardi is represented by William R. Golden Jr., Sarah L. Reid and Margaret Ferguson of Kelley Drye & Warren in New York and A. Kathleen Tomlinson of Farrell, Fritz in Uniondale, N.Y. New York Lighter is represented by Elliot J. Feldman and John H. Weber of Pepper Hamilton in Washington, D.C., and William H. Wexler of North Babylon, N.Y. � Copyright 2000 Mealey Publications, Inc.

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