Nothing in the Lanham Act requires the introduction of a consumer survey in trademark cases, but there can be consequences for not using one. They can serve as persuasive evidence of whether a trademark or advertisement causes consumers to be confused or misled, but they may also help you build a stronger case.
About the Firm
Keegan & Donato Consulting is a specialty research consultancy in historic Rye, New York that designs and executes consumer-based surveys for attorneys nationwide and their clients in intellectual property disputes.
Principals Mark Keegan and Tony Donato offer over 30 years of deep industry experience, proven survey methodologies, and vast operational insight to provide expert research, analysis, affidavits, and reports for plaintiffs and defendants in support of trademark infringement litigation.
We have designed hundreds of studies across a wide range of industries to test a wide variety of Lanham Act claims, including likelihood of confusion, strength of mark, acquired distinctiveness, false designation of origin, trade dress infringement, and related areas.
Why Do You Need a Consumer Survey?
There are strategic reasons why you may decide to proceed to litigation without survey evidence. Perhaps the client cannot afford to invest in a survey. Perhaps your pilot survey failed to produce adequate results. Or, maybe the consumer survey presented by your adversary is so flawed that you hope a rebuttal expert can critique the results without having to conduct another survey.
Regardless of the reasons, there can be consequences to proceeding to litigation without survey evidence conducted by trained independent experts using sound methodologies in a trademark infringement matter.
Some court decisions have drawn adverse inferences from the absence of survey evidence and discuss below how it their decisions were impacted.
In Pharmacia Corp. v. Alcon Labs, Inc., 201 F.Supp. 2d 335, 373 (D.N.J. 2002), for example, the Court noted that “Pharmacia is not legally required to conduct a confusion survey. But under the circumstances of this case, Pharmacia’s failure to conduct any confusion survey weighs against its request for a preliminary injunction. Such a failure, particularly when the trademark owner is financially able, justifies an inference that the plaintiff believes the results of the survey will be unfavorable.”
Likewise, in King-Size, Inc. v. Frank’s King-Size Clothes, Inc., 547 F.Supp. 1138, 1162 (S.D. Tex. 1982), the Court noted that “Plaintiffs did not present to the Court a survey or any other direct evidence of actual confusion. The Court views these omissions as both suspect and significant.”
Well Worth the Expense
Keegan & Donato Consulting’s consumer research studies are customized to meet the needs of each unique case. Most cost between $15,000 and $55,000 to complete, and $35,000 is the most typical cost. We work on a fixed-rate or hourly basis based on your needs and will help you design a reliable survey that is within your budget. We will always provide an estimate of project costs before engagement.
Avoid the consequences of not using a consumer survey in your trademark cases. Hire Keegan & Donato Consulting to help you support your case or contest an allegation of infringement. Get in touch with us at (914) 967-9421 to learn more about our services.