RVC Floor Decor, Ltd. v. Floor & Decor Holdings, Inc.

UNITED STATES DISTRICT COURT U.S. DISTRICT COURT

EASTERN DISTRICT OF NEW YORK EASTERN DISTRICT OF NEW YORK

--------------------------------X LONG ISLAND OFFICE

RVC FLOOR DECOR, LTD.,

Plaintiff, MEMORANDUM & ORDER

18-CV-6449 (JS)(ARL)

-against-

FLOOR AND DECOR OUTLETS OF

AMERICA, INC.,

Defendant.

--------------------------------X

APPEARANCES

For Plaintiff: Craig B. Sanders, Esq.

Jonathan Mark Cader, Esq.

James H. Freeman, Esq.

Sanders Law Group

333 Earle Ovington Boulevard, Suite 402

Uniondale, New York 11530

Erica Carvajal, Esq.

Sanders Law LLC

100 Garden City Plaza, Suite 500

Garden City, New York 11530

For Defendant: Bryan J. Wolin, Esq.

H. Forrest Flemming, III, Esq.

Robert Nathan Potter, Esq.

Kilpatrick Townsend & Stockton LLP

1114 Avenue of the Americas, 21st Floor

New York, New York 10036

Richard Charles Henn, Jr., Esq.

Kilpatrick Townsend & Stockton LLP

1100 Peachtree Street, Suite 2800

Atlanta, Georgia 30309

SEYBERT, District Judge:

RVC Floor Decor, Ltd. (“Plaintiff”) initiated this

trademark infringement case against Floor & Decor Outlets of

America, Inc. (“Defendant”) pursuant to Section 43(a) of the Lanham

Act, New York common law, and New York General Business Law

Section 360-l.1 Trial is scheduled to commence in this case on

April 10, 2023. Presently before the Court is Plaintiff’s motion

to exclude the expert testimony of David T. Neal, Ph.D. (“Dr.

Neal”) (ECF No. 190). For the reasons detailed below, Plaintiff’s

motion is DENIED.

BACKGROUND

I. Facts

For a thorough recitation of the factual and procedural

background of this case, the Court refers the parties to Judge

Hurley’s March 18, 2021, Memorandum & Order denying Plaintiff’s

motion for summary judgment and denying in part and granting in

part Defendant’s cross-motion for summary judgment. See RVC Floor

Decor, Ltd. v. Floor and Decor Outlets of Am., Inc., 527 F. Supp.

3d 305, 312-15 (E.D.N.Y. 2021).2 The Court recites only those

facts necessary to resolve the instant motion.

1 Plaintiff also brought claims pursuant to New York General

Business Law Section 349, which were dismissed during the summary

judgment stage of this case. See RVC Floor Decor, Ltd. v. Floor

and Decor Outlets of Am., Inc., 527 F. Supp. 3d 305, 321-22

(E.D.N.Y. 2021).

2 Judge Hurley’s Memorandum & Order is also available on the case

docket at ECF No. 147. Going forward, the Court will refer to

this case by its Reporter citation.

A. Dr. Neal’s Qualifications

Dr. Neal is “an Executive in Residence at Duke University

and Managing Partner of Catalyst Behavioral Sciences, LLC, a

research consulting firm specializing in the analysis of human

decision making and consumer behavior.” (First Neal Report, Ex.

2, ECF No. 190-3, ¶ 1.1, attached to Motion.) Dr. Neal has

previously “acted as a consultant” to various entities including,

“Bayer, Microsoft, Proctor & Gamble, Intel, and Johnson &

Johnson . . . the World Bank, The Bill and Melinda Gates

Foundation, The Centers for Disease Control and Prevention, USAID,

and the Surgeon General of the U.S. Army.” (Id. ¶ 1.2.) Dr. Neal

received his Ph.D. in “psychology from the University of

Melbourne . . . and . . . completed [his] post-doctoral training

at Duke University, working in the psychology department and Fuqua

School of Business.” (Id. ¶ 1.3.) At Duke, Dr. Neal has served

“as the Director of the Interdisciplinary Social Science Research

Laboratories” before serving as “an assistant professor of

psychology at the University of Southern California (‘USC’).”

(Id.) While at Duke and USC, Dr. Neal taught “advanced research

methods (including survey design), consumer behavior, and

marketing courses.” (Id.) In terms of publications, Dr. Neal has

“published extensively in the areas of consumer behavior and

decision making.” (Id.; see also Neal Curriculum Vitae, ECF No.

190-3, attached to Motion.)

In his initial report, Dr. Neal designed a secondary

meaning survey comprised of “600 U.S. adults who [were] likely

consumers of flooring, upholstered furniture, wallpaper or

cabinetry . . . [who] lived in one of the following four counties:

Kings, Nassau, Queens or Suffolk.” (First Neal Report, ¶ 2.1.)

“After qualifying to complete the survey, respondents were

randomly assigned to see” one of two FLOOR DECOR logos. (Id.

¶ 2.2.) “Both logos were presented using substantially the same

font and color palette that is used by Plaintiff in their store-

front signage.” (Id.) “[A]fter viewing one of the two randomly

assigned logos, respondents were probed as to whether they

associated the presented logo with a particular company or

companies.” (Id. at ¶ 2.3.) Where respondents stated that they

“did associate the logo with a particular company or companies,”

the respondents were “probed as to whether they associated the

presented logo with ‘one company,’ ‘more than one company,’ or ‘I

don’t know.’” (Id.) Dr. Neal next calculated the “‘net secondary

meaning’ . . . [f]ollowing standard practice of surveys of this

kind.” (Id. ¶ 2.5.) In sum, Dr. Neal concluded that “the net

association between FLOOR DECOR and a single source [was] 1.4%.”

(Id. ¶ 2.6.) Consequently, Dr. Neal concluded that “FLOOR DECOR’s

level of association with a single source . . . falls far below

the threshold required for establishing secondary meaning or

acquired distinctiveness.” (Id. ¶ 2.7.)

A second, supplemental, report was authored by Dr. Neal

after he determined that “there [were] two small business on Long

Island that include ‘Floor Store’ in their name.” (Neal Suppl.

Report, Ex. 3, ECF No. 190-3, ¶ 3.2, attached to Motion.) “To

rule out any possibility that the results of [his] first study

fielding were dependent upon the” Floor Store control cell, Dr.

Neal included “a second control cell,” which was “Floor Shop.”

(Id.) As such, “between January 16 and 19, 2019, [Dr. Neal]

collected data from an additional 300 U.S. likely consumers of

flooring, upholstered furniture, wallpaper, or cabinetry in the

same four counties.” (Id.) Dr. Neal states that “[i]n this second

round of data collection, respondents completed an identical

survey to round one, but were assigned instead” to the Floor Shop

control cell. (Id.) Ultimately, Dr. Neal concluded from the

results of his survey that “regardless of whether we use Control

1 (FLOOR STORE) or Control 2 (FLOOR SHOP) as the control

condition . . . Plaintiff’s claimed FLOOR DECOR mark has, at

most, achieved secondary meaning among . . . 2.5% of the relevant

consuming public.” (Id. ¶¶ 2.66, 2.7)

B. Plaintiff’s Motion

According to Plaintiff, Defendant seeks to introduce

evidence through Dr. Neal “for the purpose of establishing that

the FLOOR DECOR trademark, by which Plaintiff has advertised its

products since 1974, purportedly did not acquire a secondary

meaning for purposes of affording Plaintiff trademark rights in

and protection of such mark” in the relevant geographical area.

(Support Memo, Ex. 5, ECF No. 190-5 at 1, attached to Motion.)

Plaintiff seeks to exclude Neal’s report and anticipated testimony

because: (1) “in conducting the consumer survey, Dr. Neal did not

use the relevant time period as was determined by Judge Hurley in

his summary judgment decision for his analysis;” and (2) “Dr Neal’s

customer survey did not present survey participants with a display

of Plaintiff’s design mark (i.e., logo) adjacent to its work mark.”

(Id.) Defendant filed opposition to Plaintiff’s Motion. (See

Opp’n, ECF No. 191). Afterwards, Plaintiff filed a reply. (See

Reply, ECF No. 192.)

DISCUSSION

I. Legal Standard

A. Motions in Limine

“A district court’s inherent authority to manage the

course of its trials encompasses the right to rule on motions in

limine.” Highland Cap. Mgmt., L.P. v. Schneider, 551 F. Supp. 2d

173, 176 (S.D.N.Y. 2008) (citing Luce v. United States, 469 U.S.

38, 41 n.4 (1984)). Motions in limine “aid the trial process by

enabling the Court to rule in advance of trial on the relevance of

certain forecasted evidence, as to issues that are definitely set

for trial, without lengthy argument at, or interruption of, the

trial.” Mango v. BuzzFeed, Inc., 316 F. Supp. 3d 811, 812

(S.D.N.Y. 2018) (quoting Palmieri v. Defaria, 88 F.3d 136, 141 (2d

Cir. 1996)). In ruling on a motion in limine, evidence should be

excluded, “[o]nly when [it] is ‘clearly inadmissible on all

potential grounds.’” United States v. Ceballo, No. 13-CR-0308,

2014 WL 4980554, at *1 (E.D.N.Y. Oct. 6, 2014) (quoting United

States v. Paredes, 176 F. Supp. 192, 193 (S.D.N.Y. 2001)). In

“considering a motion in limine, [the Court] may reserve judgment

until trial, so that the motion is placed in the appropriate

factual context.” United States v. Chan, 184 F. Supp. 2d 337, 340

(S.D.N.Y. 2002). Moreover, the Court’s ruling on a motion in

limine is “subject to change when the case unfolds, particularly

if the actual testimony differs from what was contained in the

defendant’s proffer.” Id. at 341 (quoting Luce, 469 U.S. at 41).

B. Expert Testimony

The admission of expert testimony is governed by Federal

Rule of Evidence (“Rule”) 702, which allows the testimony of “[a]

witness who is qualified as an expert by knowledge, skill,

experience, training, or education” where:

(a) the expert’s scientific, technical, or

other specialized knowledge will help the

trier of fact to understand the evidence

or to determine a fact in issue;

(b) the testimony is based on sufficient

facts or data;

(c) the testimony is the product of reliable

principles and methods; and

(d) the expert has reliably applied the

principles and methods to the facts of

the case.

FED. R. EVID. 702.

While the party seeking admission of the expert

testimony bears the burden of demonstrating its admissibility, see

In re Vivendi, S.A. Sec. Litig., 838 F.3d 223, 253 (2d Cir. 2016),

under Rule 702, district courts perform “a ‘gatekeeping’ role’ by

‘ensuring that an expert’s testimony both rests on a reliable

foundation and is relevant to the task at hand.’” United States

v. Napout, 963 F.3d 163, 187-88 (2d Cir. 2020) (quoting Daubert v.

Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993)). In

fulfilling its role as gatekeeper, the district court “should look

to the standards of Rule 401 in analyzing whether [the] proffered

testimony is relevant.” Amorgianos v. Nat’l R.R. Passenger Corp.,

303 F.3d 256, 265 (2d Cir. 2002). Pursuant to Rule 401,

“[e]vidence is relevant if: (a) it has any tendency to make a fact

more or less probable than it would be without the evidence; and

(b) the fact is of consequence in determining the action.” FED.

R. EVID. 401. However, “[t]he court may exclude relevant evidence

if its probative value is substantially outweighed by a danger of

one or more of the following: unfair prejudice, confusing the

issues, misleading the jury, undue delay, wasting time, or

needlessly presenting cumulative evidence.” FED. R. EVID. 403.

“Next, the district court must determine ‘whether the

proffered testimony has a sufficient reliable foundation’ to

permit it to be considered.” Amorgianos, 303 F.3d at 265-66

(quoting Daubert, 509 U.S. at 597). The Court, in making this

determination “should consider the indicia of reliability

identified in Rule 702.” Id. “In short, the district Court must

‘make certain that an expert, whether basing testimony upon

professional studies or personal experience, employs in the

courtroom the same level of intellectual rigor that characterizes

the practice of an expert in the relevant field.’” Id. at 266

(quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999)).

In addition to the indicia of reliability identified in

Rule 702, “Daubert enumerated a list of additional factors bearing

on reliability that district courts may consider.” United States

v. Williams, 506 F.3d 151, 160 (2d Cir. 2007). These additional

factors include, “(1) whether a theory or technique has been or

can be tested; (2) ‘whether the theory or technique has been

subjected to peer review and publication;’ (3) the technique’s

‘known or potential rate of error’ and ‘the existence and

maintenance of standards controlling the technique’s operation;’

and (4) whether a particular technique or theory has gained general

acceptance in the relevant scientific community.” Id. (quoting

Daubert, 509 U.S. at 593-94). Importantly, the additional factors

enumerated in Daubert are not intended to constitute “a ‘definitive

checklist or test.’” Amorgianos, 303 F.3d at 266 (quoting Daubert,

509 U.S. at 593). Instead, “[t]he inquiry envisioned by Rule 702

is . . . a flexible one, and ‘the gatekeeping inquiry must be tied

to the facts of a particular case.’” Id. (alterations in original)

(first quoting Daubert, 509 U.S. at 593, then quoting Kumho Tire,

526 U.S. at 150).

II. ANALYSIS

A. Survey Evidence Measured After July 2015

Plaintiff first argues that Dr. Neal’s consumer surveys

must be excluded “because they rely on consumer survey evidence

measured well after the July 2015 cut-off date set by the Court”

for Plaintiff to establish that its mark achieved secondary

meaning. (Support Memo at 7); see also RVC Floor Decor, 527 F.

Supp. 3d at 317 (“Plaintiff’s mark must have achieved secondary

meaning by July 2015.”). Plaintiff highlights that Dr. Neal’s

first report “indicates that [his] survey was conducted between

November 29, 2018 and December 4, 2018.” (Support Memo at 8.)

Further, only those “persons who had purchased the products sold

by Plaintiff within two years prior to the survey date (or who

planned to purchase similar products within two years after the

survey date) [were allowed] to participate.” (Id.) Regarding Dr.

Neal’s second report, Plaintiff highlights that “the survey was

conducted between January 16, 2019 and January 19, 2019,” and that

participation was limited “to persons who had purchased the

products sold by Plaintiff within two years prior to the survey

date (or who planned to purchase similar products within two years

after the survey date).” (Id.) Plaintiff avers that “[i]f Dr.

Neal believed a four . . . year window [constituted] an

appropriate sample period” based on the July 2015 cutoff date for

Plaintiff to establish that its mark had achieved secondary

meaning, “then the relevant sample period would be from July 2011

to July 2015.” (Id. at 8-9.) Consequently, Plaintiff submits

that Dr. Neal’s survey reports are irrelevant pursuant to Rule

403. (Id. at 10-11.)

Defendant counters that “[c]ourts and commentators have

recognized that a secondary meaning survey conducted during

litigation is probative of whether a mark acquired secondary

meaning sometime in the past.” (Opp’n at 5.) Moreover, Defendant

argues that “Dr. Neal conducted his surveys within . . . two

months” of Plaintiff filing this case and that courts have held

that “a secondary meaning survey conducted within five years of

the relevant date is probative of secondary meaning.” (Id. at

5-6.) Additionally, Defendant contends that because Plaintiff

opened a new store in 2014 “and ramped up its advertising

spend[ing] between 2015 and 2018,” “the Asserted Name should have

had a better chance of being associated with [Plaintiff] in

2018 . . . rather than in 2015.” (Id. at 7.) Regarding Dr. Neal’s

decision to limit respondents, Defendant states that such issues

go to the weight of the evidence and not its admissibility. (Id.

at 7-8.)

“[C]ourts have long held that consumer surveys are the

most persuasive evidence of secondary meaning.” RVC Floor Decor,

527 F. Supp. at 317 (quoting LVL XIII Brands, Inc. v. Louis Vuitton

Malletier S.A., 209 F. Supp. 3d 612, 638-39 (S.D.N.Y. 2016)); see

also Sports Traveler, Inc. v. Advance Mag. Publishers, Inc., 25 F.

Supp. 2d 154, 164 (S.D.N.Y. 1998) (“[C]onsumer surveys have become

the usual way of demonstrating secondary meaning . . . .”).

However, the date upon which the survey was taken can affect both

the relevancy of the survey data and the weight a court should

give it. See e.g., Converse, Inc. v. Int’l Trade Comm’n Skechers

U.S.A., Inc., 909 F.3d 1110, 1122-23 (Fed. Cir. 2018) (holding

that “[s]urveys that are conducted within five years of the

relevant date [for assessing the existence of secondary meaning]

may provide evidence of secondary meaning”); see also Gen. Motors

Corp. v. Lanard Toys, Inc., 468 F.3d 405, 419 (6th Cir. 2006)

(holding that “[a] court may easily take into consideration the

strength of recognition at the time of the survey in light of the

amount of time passed between that date and the date of

infringement,” and that, consumer surveys conducted in 1999 and

2002 provided “strong statistical evidence” supporting secondary

meaning in 1992); I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp.

2d 92, 106-111 (D. Mass 2000) (considering consumer surveys

conducted in 1999 and 2000, several years after the defendant

entered the relevant market in 1996, in its secondary meaning

analysis).

Here, the Court finds that the timing of the survey

reports and Dr. Neal’s decision to limit the universe of

respondents that were permitted to participate in the survey goes

to the weight of the evidence rather than its admissibility.

Furthermore, the Court finds that any of Plaintiff’s perceived

deficiencies in the survey reports may be explored during cross-

examination. See On Site Energy Co. v. MTU Onsite Energy Corp.,

No. 10-CV-1671, 2012 WL 2952424, at *3 (E.D.N.Y. July 19, 2012

(declining to exclude a confusion survey on the basis that “its

respondent universe was too broad” because “[e]rrors in survey

methodology generally go to the survey’s weight, not its

admissibility”); In re Scotts EZ Seed Litig., No. 12-CV-4727, 2017

WL 3396433, at *8 (S.D.N.Y. Aug. 8, 2017) (finding that while

defendants argued an expert’s methodology was flawed because “he

failed to survey the proper universe” such arguments “‘ultimately

go to the weight, not the admissibility, of [the expert’s]

testimony and are fodder for cross-examination, not exclusion’”

(quoting In re Gen. Motors LLC Ignition Switch Litig., No. 14-CV-

8317, 2017 WL 2664199, at *2 (S.D.N.Y. June 20, 2017))).

B. Failure to Present Survey Participants with a Display of

Plaintiff’s FD Design Mark

Plaintiff next argues that Dr. Neal’s survey reports

must be excluded because “they did not furnish accurate materials

to the survey respondents for the purposes of comparison.”

(Support Memo at 9.) Specifically, Plaintiff highlights that the

“FLOOR DECOR” mark which Dr. Neal presented to his respondents

when “asking if they associated the mark with any particular

business” failed to also include Plaintiff’s lowercase “fd”

insignia “alongside [its] word mark.” (Id.) Plaintiff concludes

that since “[t]he surveys . . . omit a critical piece of

information” they should be excluded on relevancy and helpfulness

grounds. (Id. at 10-11.) Defendant counters that “Dr. Neal was

not required to include the FD Mark in his survey for the simple

reason that [Plaintiff] is not claiming any rights in an ‘fd’ mark

in this litigation and is not alleging that [Defendant] infringes

an ‘fd’ mark.” (Opp’n at 8-9.) Defendant elaborates that

Plaintiff’s Complaint “alleges only that it operated a store under

the trademark ‘Floor Decor,’ and that it uses the tradenames ‘Floor

Decor’ and ‘Floor Decor and Design.’” (Id. at 9.) Defendant

explains that to include the “fd” mark would have been to

contaminate the survey since “the logo is a separate visual asset

that is distinct from the name.” (Id.)

Here, the Court agrees with Defendant that the mark at

issue in this litigation is “FLOOR DECOR” and that Plaintiff must

establish that its “Floor Decor” mark has achieved secondary

meaning before July 2015. See RVC Floor Decor, Ltd., 527 F. Supp.

3d at 316 (“Plaintiff’s unregistered mark is the tradename ‘Floor

Decor.’”) Consequently, the fact that Dr. Neal’s survey report

presented respondents with only Plaintiff’s “Floor Decor” mark

independent of Plaintiff’s design mark does not affect the

admissibility of the survey. To the extent that Plaintiff has

concerns about Dr. Neal’s methodology, it will be permitted to

probe those issues on cross-examination.

CONCLUSION

For the stated reasons, IT IS HEREBY ORDERED that the

Plaintiff’s Motion to Exclude the Expert Report of David Neal,

PHD, (ECF No. 190) is DENIED.

SO ORDERED.

JOANNA SEYBERT

Joanna Seybert, U.S.D.J.

Dated: April 7, 2023

Central Islip, New York