If proving trademark tarnishment is important to your case, take advantage of consumer survey evidence from Keegan & Donato Consulting that will stand up to judicial scrutiny.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced companies in the field of trademark litigation.
With more than 25 years of combined experience, proven survey methodologies, and deep operational insight, principals Mark Keegan and Tony Donato provide expert research, expert reports, and testimony on behalf of plaintiffs and defendants in support of trademark infringement litigation.
Our specialties include:
- Likelihood of Confusion Analysis & Surveys
- Strength of Mark Analysis & Surveys
- Secondary Meaning Analysis & Surveys
- Lanham Act Analysis & Surveys
- Trade Dress Analysis & Surveys
- Consumer Perception Analysis & Surveys
- Consumer Understanding Studies
- Marketing, damages and forensic economic analyses
- Expert Witness Testimony
- Critique of opposing experts’ studies and reports
- Advice on deposition and trial questioning of opposing experts
About Dilution and Tarnishment
Trademark dilution focuses on protecting a famous mark that is inherently distinctive or has acquired distinctiveness. Dilution can be divided into multiple types, the most common being blurring and tarnishment.
If it can be shown that consumers widely recognize the famous mark as a designation of the source of the goods or services advertised, it is likely that a second user’s similar mark will cause dilution and injury to the famous mark’s reputation.
Blurring is the most common type of dilution. It occurs when the unauthorized use of a famous mark weakens the distinctiveness of the mark. If, for example, Cadillac is used for pairs of jeans, the famous mark’s trademark would become less distinctive and less effective as a brand.
Tarnishment occurs when an infringing mark damages the reputation of a famous mark by using it in connection with goods or services of poor quality or of an unsavory nature that reflect adversely upon the trademark owner’s product, such as when selling sex-related products or in the context of drugs or crime.
For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942 (N.D. Ill. 2002), the plaintiff, manufacturer of Velveeta® brand cheese products and owner of the trademark since 1923, sued defendant Stuart Helm, who called himself “King VelVeeda,” a nickname he used on his adult-oriented website which also depicted drug use and paraphernalia, for trademark infringement and dilution.
The court found that the defendant had used the name “VelVeeda” in commerce and that the two similar marks would confuse consumers, causing them to associate Velveeta® with the defendant’s offensive product, thereby tarnishing the Velveeta® mark and damaging its reputation. A preliminary injunction was entered in favor of the plaintiff.
Keegan & Donato Consulting has extensive experience in proving trademark dilution, blurring, and tarnishment. Please contact us at (914) 967-9421 to find out more about how consumer data can help your case. We deliver intelligence quickly and within a wide range of budgets.