The use of surveys in intellectual property disputes can help measure trademark dilution by providing empirical data about the beliefs and attitudes of consumers toward a product or mark.
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 more than 25 combined years of experience conducting and critiquing consumer survey research, we have the ability to design studies that avoid the methodological pitfalls that so often afflict competing research studies.
Consumer recognition of a famous mark can be measured directly by a survey. Because there are a variety of approaches to substantiating a claim of dilution, we work closely with clients to understand the fundamental issues of their unique cases.
About Trademark Dilution
Trademark dilution occurs when a third party’s unauthorized use of a famous trademark weakens the distinctiveness of the trademark or damages its reputation. If the infringement is found to have been intentional, the Lanham Act provides for additional remedies.
Dilution by blurring occurs when a famous mark becomes identified with more than one type of product, such as might happen if consumers encountered “Rolls Royce” toothpaste or “Starbucks” handbags. Dilution by tarnishment occurs when a famous mark is harmed by an association with a low quality or unsavory product, such as using the children’s game “Candyland” for the name of an adult website.
Proving dilution, whether by blurring or tarnishment, can be challenging, but consumer surveys can be used to establish such proof. The first step is to determine whether the mark is widely recognized by the general consuming public (the “fame” standard).
If a famous mark is not inherently distinctive, survey evidence may be used to evaluate the degree of similarity between two marks and to measure a mark’s degree of recognition in the minds of consumers. A secondary meaning survey may be used to measure a mark’s acquired distinctiveness. And dilution surveys may be used to establish the existence of actual association between the marks at issue.
Why Hire a Survey Expert?
Many surveys suffer from methodological shortcomings. When this occurs, the court may afford them little or no weight as evidence. To avoid this serious pitfall and ensure that the survey can withstand the rigors of litigation, it is crucial to hire qualified survey experts.
Consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), for example, in which the court excluded the evidence and testimony of all three of the plaintiff’s likelihood of confusion and dilution survey experts and two of the defendant’s three experts on the basis that the surveys were unreliable, plagued by significant methodological flaws, and that “any probative value was substantially outweighed by the danger of unfair prejudice and misleading the jury.”
Wondering how to show dilution of a trademark? Keegan & Donato Consulting is eminently qualified to provide you with litigation surveys for use in your intellectual property matter. Contact us at (914) 967-9421 to find out more about how consumer data can help strengthen your case.