Whether you are interested in dilution surveys, marketing research surveys or other types of trademark surveys to prove or refute IP litigation issues, take advantage of the extraordinary expertise of Keegan & Donato Consulting.
Trademark dilution issues focus on protecting a famous mark that is inherently distinctive or has acquired distinctiveness. If it can be shown that consumers widely recognize the famous mark as a designation of the source of the goods or services advertised, there is likelihood that a second user’s similar mark will cause dilution and injury to the famous mark’s reputation.
Protection from Trademark Dilution
Until 1996, when the Federal Trademark Dilution Act (FTDA) (15 U.S. Code, Section 1125(c)) was enacted and added to Section 43 of the Lanham Act, there was no federal law prohibiting trademark dilution. A U.S. Supreme Court decision, however, determined that owners of famous marks could not prevail without providing evidence of actual economic injury.
Congress overturned the decision in 2006 and enacted the Trademark Dilution Revision Act (TDRA). The TDRA defined “dilution by blurring” and “dilution by tarnishment,” and clarified what makes a mark “famous.” It also provided for additional remedies if an infringing party is found to have willfully intended to trade on the recognition of or harm the reputation of the famous mark. Proving likelihood of dilution, whether by blurring or tarnishment, can be challenging, but consumer surveys can be used to establish such proof.
Surveys as Evidence of Dilution
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.
Unfortunately, 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.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced firms in the field of trademark litigation. We consider methodological design among the most important tasks when designing a consumer research study and utilize classic survey designs as well as innovative custom designs to meet our clients’ needs.
We have been engaged by leading IP litigators, such as Stanley, Mandel & Iola, LLP is San Diego, Pashman Stein in New Jersey, and Blank Rome LLP in Philadelphia, and attorneys across the nation practicing in federal and state courts, before arbitration panels, the Trademark Trial and Appeal Board (TTAB), the NAD, and other specialty venues.
If you are debating the value of hiring the most qualified survey experts in support of your case, consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), 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.”
Keegan & Donato Consulting is eminently qualified to provide you with dilution and other types of litigation surveys in your trademark dispute or other intellectual property matter. Get in touch with us at (914) 967-9421 to find out more about how our expertise could help strengthen your case.