Genericness is often a key factor in trademark disputes. Genericness surveys, such as those designed and executed by Keegan & Donato Consulting, can yield highly reliable data as to whether consumers associate a particular word or term with a group of goods or services rather than with the producer of the product or provider of the service.
The real-world results we collect have provided our clients a foundation for presenting fact-based evidence in support of their positions. We also provide expert witness testimony on consumer survey, marketing and economic issues.
Keegan & Donato Consulting has developed surveys for and collaborated with firms that manage some of the largest trademark portfolios in the world, such as Girard Gibbs LLP in San Francisco, Fox Rothschild LLP in New Jersey and Philadelphia, Hogan Lovells in Washington, DC, and Riemer & Braunstein LLP in Boston.
The primary function of trademarks 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 previously protected mark can be 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 attempt to convince a court that a legally protected trademark should be designated as generic and rendered 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.
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, our firm is often engaged to critique consumer research studies submitted by opposing experts. We have reviewed and rebutted many consumer surveys conducted in conjunction with litigation.
Because the Lanham Act primarily addresses the ways in which 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.
Whether you need a genericness survey to support your case strategy in a trademark dispute, or a different type of consumer research study, Keegan & Donato Consulting has the qualifications and expertise necessary to quickly deliver intelligence within a wide range of budgets. Get in touch with us today at (914) 967-9421 to find out how we can help.