Does your case involve an alleged generic trademark? Consider hiring trademark survey companies like Keegan & Donato Consulting to assess whether consumers consider the at-issue mark to be a common name or design, or a brand name or design.
Keegan & Donato Consulting has developed surveys for plaintiffs and defendants across the nation on issues related to likelihood of confusion, strength of mark, secondary meaning, acquired distinctiveness, dilution, genericness, false advertising, and many other topics within the fields of trademark and trade dress.
With a combined 30-plus years of experience in conducting consumer research studies, Keegan & Donato Consulting works on behalf of attorneys and their clients to provide research, analysis, affidavits, declarations and expert reports in support of trademark infringement and trade-dress litigation, and has collaborated extensively on cases that involve marketing, business and financial issues. Our litigation surveys have been accepted as evidence in matters involving a broad range of products and services.
What is Genericness?
The primary function of trademarks is to identify the origin (producer) of a product or service and to protect consumers from confusion and deception.
Generic marks are usually common dictionary words and are the weakest types of marks. They cannot be protected as trademarks because they are not distinctive and fail to distinguish a product or service from those of others or identify the source of the product or service.
Under the Lanham Act, a previously protected mark can be subject to cancellation if it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered” (15 U.S. Code § 1064(3)). This has occurred over time to former trademarks, such as aspirin, cellophane, yoyo, escalator, shredded wheat, and linoleum, which eventually became the common names for those products.
Consequently, competitors will often attempt to convince the court that a legally protected trademark should be designated as generic and made available for everyone to freely use. Such was the case in Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014).
The plaintiff, who had registered over 750 domain names where the first word was Google, argued that the Google trademark had become genericized because the public has come to understand the word, when used as a verb, to mean conducting a search of the Internet without regard to the search engine used.
Consumer survey evidence played a significant part in the case and demonstrates the need for hiring a qualified survey expert. The Court completely disregarded the plaintiff’s surveys as unscientific and poorly constructed, and rejected the survey expert as unqualified “to design a survey or to interpret survey results.” The Court eventually confirmed that “Google” remains a valid and protectable trademark.
Keegan & Donato Consulting regularly designs, executes, and presents the results of surveys to evaluate whether or not a trademark or trade dress is generic. When your case involves an alleged generic trademark, get in touch with us at (914) 967-9421 to find out how we can help.