Invisible Fence, Inc. v. Fido’s Fence, Inc., 3:09-CV-25, 2014 WL 201457 (E.D. Tenn. Jan. 17, 2014)

The plaintiff filed for a declaration of validity of its INVISIBLE FENCING mark for invisible pet containment systems, and the defendant claimed the mark should be cancelled because it was generic. Both parties moved to exclude the other’s expert witness testimony.

The plaintiff’s expert opined that the plaintiff’s brand: was an important business asset, had a clear and unique brand positioning, had “positive brand equity” and a high level of brand awareness, and the defendant tried to “ride on the coat tails” of such branding. The defendant argued that such testimony was generic and was not supported by independent studies or appropriate research. The court rejected the defendant’s argument, holding that the testimony would assist the trier of fact and that any criticisms of the expert’s research or the genericness of his opinion were subject to cross-examination.

As for defendant’s expert, the plaintiff argued that the testimony relating to the genericness of the mark based on the expert’s opinion and analysis concerning the ordinary American English meaning of the words and terms “invisible,” “invisible fence,” and “invisible fencing” would not be helpful to the trier of fact because the case would not turn upon whether the terms used in the brand-name were “amenable to a dictionary definition.” The court disagreed, holding that to the extent the defendant’s expert’s opinion was susceptible to critique, vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof were the appropriate means for addressing such issues.