Qualifications as an Expert on Surveys Proffered as Evidence in Litigated Matters

Jacob Jacoby has been providing testimony in U.S. District Courts since 1978 and has played a lead role in conducting more than 1,000 consumer, marketing and communication (trademarks, advertising, packaging, etc.) studies in support of litigation. Over that period, he has proffered testimony in U.S. District Courts in more than 150 litigated matters¹. With relatively few exceptions, courts have admitted and given weight to his testimony.

At the invitation from the American Bar Association, Prof. Jacoby is nearly finished authoring a treatise entitled Trademark Surveys to be published under the ABA imprimatur.

The influence of Jacob Jacoby’s testimony, research and writings (especially those pertaining to issues of survey research in support of litigation) extend beyond individual cases. As examples:

In 1995, at the invitation of the Federal Judicial Center, Jacoby presented a set of lectures on how to evaluate survey research to judges and magistrates attending the Federal Judicial Center's workshops for District Court judges held in Atlanta and Seattle.

In 1994 and again in 1998, he was invited by the Federal Judicial Center to serve as a peer reviewer for the “Survey Reference Guide” appearing in the 1994 and 2000 editions of its Reference Manual on Scientific Evidence.

Two 1987 Second Circuit opinions² cited his research as the basis for shifting the burden of proof in trademark disclaimer cases from plaintiff to defendant.

Examination of J. Thomas McCarthy's 7-volume hornbook McCarthy on Trademarks and Unfair Competition, particularly the “Survey Evidence” section of Chapter 32, reveals that Jacoby is the most cited survey researcher in that treatise.

Jacob Jacoby has been an invited speaker on the subjects of litigation surveys and consumer confusion/deception before a wide variety of audiences, including:

• The International Trademark Association
• The International Bar Association
• The Federal Trade Commission
• The Food and Drug Administration³
• The National Association of Attorneys General
• The Practicing Law Institute
• The Intellectual Property section of the California Bar Association
• The Intellectual Property section of the Virginia Bar Association
• The Association of the Bar of the City of New York

He has also been an invited speaker at various law schools, including those at:

• New York University
• Fordham University
• Franklin Pierce Law Center
• Roger Williams University
• Benjamin Cardozo Law School
• Santa Clara University

From 1993 through 2003, Jacoby served on the Editorial Board of The Trademark Reporter.

¹ Additionally, since 1973, Jacoby has testified before a number of federal and state regulatory agencies and commissions, including the Trademark Trial and Appeals Board, Federal Trade Commission, the Food and Drug Administration, and the International Trade Commission. He has also participated in a number of hearings on deceptive advertising/packaging before the National Advertising Division of the Better Business Bureau.

² See: Charles of the Ritz Group, Ltd. V. Quality King Distributors, Inc. 832 F.2d 1317, 4 U.S.P.Q.2d 1778 (2d Cir. 1987); Home Box Office, Inc. v. Showtime/Movie Channel, Inc. 832 F.2d 1311, 4 U.S.P.Q.2d 1789 (2d Cir. 1987).

³ During 1974-75, Jacoby was retained by the FDA’s Division of Drug Advertising to develop its definition of, and approach to measuring, misleading advertising.