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

> District Court, E.D. New York · April 7, 2023

URL: https://www.frixlaw.com/law-library/cases/10309601

## Case

- **Court:** District Court, E.D. New York
- **Decided:** April 7, 2023
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10309601

## How later opinions describe it (automated extraction)

- 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”

## Opinion text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10309601. Public record. Not legal advice.