What are the critical components of a genericness survey? Count on trademark survey experts like Keegan & Donato Consulting to help determine whether consumers consider an at-issue mark to be a common name or design.
The capabilities of Keegan & Donato Consulting include state-of-the-art survey designs that are probative of the relevant issues in each case. In addition to designing and executing consumer surveys that stand up to the scrutiny of the Courts, we can be engaged to critique consumer research studies submitted by opposing experts. We have also reviewed and rebutted many surveys conducted in conjunction with trademark litigation.
Because the Lanham Act primarily addresses how consumers interpret—and misinterpret—names, symbols, and other marks used by businesses in commerce, Lanham Act issues are particularly well-suited to testing through consumer research.
The primary job of a trademark is to identify the origin (producer) of a product or service and to protect consumers from confusion and deception.
Generic marks are common dictionary words and are the weakest types of marks. They cannot attain trademark protection because they are not distinctive and do not identify the source of the products or services or distinguish a product or service from those of others.
Examples of Generic Marks
Zipper – This product was first trademarked in 1925 by B.F. Goodrich for overshoes with zippered fasteners. The company sued to protect the trademark in 1930 but only got to retain the rights to Zipper Boots since “zipper” had already become a generic term.
Escalator – This moving stairway was introduced by Otis in 1900 but the company lost its legal protection in a landmark 1950 trademark case when the U.S. Patent Office officially genericized the term because the company had used “escalator” as a generic term in its patents and advertising.
Thermos – Thermos, LLC introduced a “vacuum flask” in 1904 but lost its trademark protection in 1963 when “thermos” was declared a genericized trademark.
Competitors often try convincing a Court that a previously legally protected trademark should be designated generic and made available for everyone to use freely. That was the case in Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014).
The plaintiff, who owned more than 750 websites with names like “GoogleBarackObama.com” and “GoogleDisney.com,” argued that the Google trademark was now generic because the public now understood the word to mean conducting an Internet search.
Consumer survey evidence was crucial in the case, demonstrating the need for hiring a qualified survey expert. The Court totally disregarded the plaintiff’s surveys as poorly constructed and unscientific and rejected their survey expert as “unqualified to design a survey or interpret survey results.” The Court would eventually confirm that “Google” would remain a valid and protectable trademark.
Learn more about the critical components of a genericness survey from the Keegan & Donato Consulting team. Get in touch with us at (914) 967-9421 to find out how we can help.