Trademarks are invaluable assets for businesses because they help establish brand identity and differentiate products or services from competitors. In the area of trademark infringement, Keegan & Donato Consulting has extensive experience in developing effective trademark surveys that often play a crucial role in establishing likelihood of confusion among consumers.
Offering over three decades of combined experience, principals Mark Keegan and Tony Donato have extensive backgrounds in the design, execution, analysis, presentation, and critique of consumer research studies. We perform analyses, help clients develop damages claims, critique opposition expert reports, assist with witness preparation, and provide expert witness testimony.
We take all necessary steps to ensure that our consumer research studies have a solid methodological foundation that can withstand the rigors of litigation. We have designed, executed, and critiqued hundreds of surveys that have been admitted into evidence in federal and state courts, before arbitration panels, the TTAB, the NAD, and other venues.
Types of Trademark Surveys
There are various types of surveys that businesses can use to determine the likelihood of confusion among consumers. Here are some of the most common survey types:
Likelihood of Confusion: One of the primary purposes of a trademark is to prevent consumer confusion. With a mounting number of brands competing for share of mind in the marketplace, however, some confusion is inevitable. A well-executed standard or custom survey from Keegan & Donato Consulting can help you assess whether consumers are indeed confused.
Secondary Meaning: Descriptive marks are not typically protectable as trademarks unless they have acquired a secondary meaning. We design consumer research surveys that target relevant consumers in your client’s market and help you determine the extent to which consumers associate a contested mark with one or more sources.
Strength of Mark: The “strength” of a mark has a bearing on the legal protections available to a mark holder. In general, fanciful, arbitrary, and suggestive terms are considered inherently distinctive and are afforded various trademark protections. Descriptive marks are unlikely to achieve trademark protection because they lack sufficient distinction to be associated by consumers with one source.
Dilution: Trademark dilution occurs when an infringing party uses a famous mark in a way that tarnishes the mark’s reputation for quality or dilutes its strength by blurring its distinctiveness. Consumer recognition of a famous mark can be measured directly by a survey.
How a Survey Can Help
Methodologically sound surveys have played a crucial role in shaping the outcomes of trademark infringement cases.
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC. – 507 F.3d 252 (4th Cir. 2007): Louis Vuitton, the well-known luxury fashion brand and the plaintiff in this case, sued Haute Diggity Dog for trademark infringement and dilution, alleging that the defendant’s dog toys, called “Chewy Vuitton,” which parodied Louis Vuitton’s handbags, caused consumer confusion.
The court relied on a survey conducted by Louis Vuitton to establish the likelihood of confusion among consumers. The survey showed that 60% of the respondents who saw the Haute Diggity Dog toys believed that the defendant’s products were associated with Louis Vuitton. Based on the survey results, the Fourth Circuit ruled in favor of Louis Vuitton, finding that Haute Diggity Dog had infringed on its trademarks and diluted their distinctiveness.
Next Steps
Trademark surveys play a crucial role in trademark infringement cases. By assessing the level of recognition, association, similarity, and dilution of a trademark, they can provide valuable evidence to support or defend against a trademark infringement claim. Keegan & Donato Consulting can assist you in developing effective trademark surveys as part of your litigation strategy. Contact us at (914) 967-9421 to explore our capabilities.