Jacob Jacoby, Ph.D.

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 has finished authoring a treatise entitled Trademark Surveys scheduled to be published under the ABA imprimatur by the end of 2013.

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:

Examination of J. Thomas McCarthy’s 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.

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.

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.

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:
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.

Since 1978, I have provided evidence-based testimony in hundreds of matters heard in U.S. District Courts. My experience as an expert witness began five years earlier, when I started providing research-based testimony before federal regulatory agencies (the Federal Trade Commission, the Food and Drug Administration) and at state hearings. With relatively few exceptions, courts have admitted and given weight to my testimony,1 with said testimony often considered instrumental in achieving favorable decisions or settlements. In several instances, the monetary value at stake has exceeded $1 billion dollars. An incomplete list of my past and present corporate and organizational clients can be found at www.JacobyIP.com.

Based upon my writings, research and testimony, the American Bar Association’s Section on Intellectual Property Law invited me to write the following 1,000+ page treatise:

Jacob Jacoby, Trademark Surveys: Designing, Implementing and Evaluating Surveys (2013). Chicago: American Bar Association.

My writings have been cited in amicus briefs filed with the United States Supreme Court and have been cited in Second Circuit opinions2 as the basis for shifting the burden of proof in trademark disclaimer cases from plaintiff to defendant.

At the invitation of the Federal Judicial Center (the educational arm of the federal judiciary), I’ve presented lectures on how to evaluate survey research to federal judges attending the FJC's workshops for District Court judges and Magistrates.

In 1994 and again in 1998, I 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.

I was retained by the Food and Drug Administration to develop its definition of and approach to measuring misleading advertising3. Based upon my research into consumer use and comprehension of nutrition information, I served as an expert on a U. S. Senate, Office of Technology Assessment committee preparing nutrition education guidelines for the public.

I have been an invited speaker on the subjects of litigation surveys and consumer confusion/dilution/deception before various organizations, including the American Bar Association, the International Bar Association, the International Trademark Association, the American Intellectual Property Law Association, the Practicing Law Institute, the Federal Trade Commission, the National Association of Attorneys General, several law schools (e.g., New York University; Fordham University, Franklin Pierce Law Center; Roger Williams University; Benjamin Cardozo Law School; Santa Clara University) and a number of state (California, Virginia) and local (e.g., New York City) bar and intellectual property associations.

J. Thomas McCarthy’s seven volume treatise “McCarthy on Trademarks and Unfair Competition” is widely considered to be the most authoritative source on U.S. trademark law. Examination of these volumes, particularly the “Survey Evidence” section of Chapter 32, reveals that I am the most cited survey researcher in that treatise.