What can experts testify to in Lanham Act cases? Not the law or regulations

GOLO, LLC v. Goli Nutrition Inc., 2023 WL 4952576, No. 20-667-RGA (D. Del. Aug. 3, 2023)

Potentially interesting pretrial rulings in this false advertising/TM case: Goli’s motion to exclude the testimony of Dr. Jerry Wind was granted in part to preclude him from opining on the ultimate question of likely confusion or balancing the trademark infringement factors, which was for the jury. He could testify about the “consumer journey,” but not about “convergent validity” to bolster his conclusions about the meaning of the evidence—the court characterized the use of the phrase here to be “an academic way of saying the weight of the evidence.”  Although his opinions on harm were unquantified, they were tied to the evidence and opined on specific types of harm (loss of control of its brand, loss of distinctiveness, tarnishment, and loss of sales), which could help the jury. His opinions on intent and comparisons of infringement to “identity theft” were excluded.

An expert offered to support GOLO’s request for corrective damages was excluded. He assumed without further support that GOLO would need to generate a single impression to repair the harm caused by each allegedly infringing impression Goli generated; this was unsubstantiated, speculative, and conclusory. While corrective advertising is an available remedy under the Lanham Act, it isn’t awarded where the trademark holder has not demonstrated actual damages and where the alleged infringer has not acted in bad faith. GOLO couldn’t show any actual damages, and the expert’s opinions about the cost of a corrective advertising were entirely speculative, without any detail, and without any basis in studies about what that would require; he could have relied on someone else’s planned corrective advertising campaign, but none was submitted. The expert also didn’t “consider the impact of other possible forms of relief if GOLO is successful on liability, such as cancellation of the Goli marks, the use of disclaimers, or any other possible components of injunctive relief.”

Other experts were prohibited from testifying about FDA/FDCA standards, but could testify about their understanding of the studies they analyzed independently of FDA standards.

GOLO couldn’t prove any damages for its false advertising claims and therefore lost summary judgment on that aspect, but, unsurprisingly, the court found Dr. Wind’s testimony sufficient to show harm for trademark infringement.

Goli’s counterclaims that GOLO falsely made implied disease claims survived a preemption argument; they could be presented without reference to the FDA/FDCA (and had to be). Likewise, the court excluded any mention of the NAD, the California Task Force, and the California District Attorney—all of whom have apparently weighed in on some of the claims at issue.