Are you interested in genericness surveys to support your case strategy in trademark disputes? Keegan & Donato Consulting has the qualifications and expertise necessary to quickly deliver intelligence within a wide range of budgets.
With a combined 30-plus years of experience in conducting consumer research studies, Keegan & Donato Consulting works on behalf of attorneys and their clients to provide research, analysis, affidavits, declarations and expert reports in support of trademark infringement and trade-dress litigation, and has collaborated extensively on cases that involve marketing, business and financial issues. Our litigation surveys have been accepted as evidence in matters involving a broad range of products and services.
Keegan & Donato Consulting’s capabilities include state-of-the art survey designs that are probative of the relevant issues in each case, are capable of targeting specific consumer populations with appropriate universe selection and sampling frames, and feature cutting-edge rotation and randomization of hundreds of question types with customizable complex skip and display logic when appropriate.
In addition to designing and executing consumer surveys that will stand up to judicial scrutiny, we are often engaged to critique consumer research studies submitted by opposing experts. We have reviewed and rebutted many consumer surveys conducted in conjunction with litigation.
The main function 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 typically common dictionary words and are the weakest types of marks. They cannot be protected as trademarks because they are not distinctive and fail to distinguish a product or service from those of others or identify the product’s or service’s source.
Under the Lanham Act, a mark that was previously protected is subject to cancellation if it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered” (15 U.S. Code § 1064(3)). This has occurred over time to former trademarks, such as aspirin, cellophane, yoyo, escalator, shredded wheat, and linoleum, which eventually became the common names for those products.
Consequently, it is not unusual for competitors to try to convince a court that a legally protected trademark should be designated as generic and made available for everyone to freely use. Such was the case in Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014).
The plaintiff, who had registered over 750 domain names where the first word was Google, argued that the Google trademark had become genericized because the public has come to understand the word, when used as a verb, to mean conducting a search of the Internet without regard to the search engine used.
Consumer survey evidence played a significant part in the case and demonstrates the need for hiring a qualified survey expert. The Court completely disregarded the plaintiff’s surveys as unscientific and poorly constructed, and rejected the survey expert as unqualified “to design a survey or to interpret survey results.” The Court eventually confirmed that “Google” remains a valid and protectable trademark.
Experienced consumer survey companies like Keegan & Donato Consulting can provide you with reliable and defensible genericness surveys that can help bolster your trademark disputes. Our surveys are conducted with meticulous attention to industry best practices for methodology and implementation. Call us today at (914) 967-9421 to find out how we can help.