When your mark is being used by an unauthorized person or company and your cease-and-desist letter has been ignored, find out how to take the next step and file a trademark infringement lawsuit. Keegan & Donato Consulting will work within your budget to deliver the help you need.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced companies in the field of trademark litigation.
With more than 25 years of combined experience, proven survey methodologies, and deep operational insight, principals Mark Keegan and Tony Donato provide expert research, expert reports, and testimony on behalf of plaintiffs and defendants in support of trademark infringement litigation.
Filing a Trademark Infringement Lawsuit
Once you have determined that your trademark is likely being infringed and you have little choice but to sue, there are a few different claims you can pursue.
Likelihood of Confusion
The Lanham Act (also known as the Trademark Act) is the federal statute that governs trademarks, service marks, and unfair competition. It is codified in 15 U.S. Code §1125 and sets out procedures for registering trademarks, regulates the use of trademarks in commercial activity, and sets out remedies that can be sought when a trademark is infringed.
The purpose of the Lanham Act is to protect the trademark owner from infringement and unfair competition and the consumer from false or misleading statements about the sources of particular goods or services. The Act establishes a federal cause of action for claims of trademark or trade dress infringement, dilution, false designation of origin, false advertising, and other issues.
The central element of trademark infringement is “likelihood of confusion.” When infringement is alleged, litigants often use consumer surveys to persuade the court that consumer confusion between trademarks exists (or does not exist).
Trademark Dilution and Tarnishment
In addition to claiming that there is a likelihood of confusion with an infringing mark, you could also claim that the infringing mark is “diluting” or “tarnishing” your mark.
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.
Dilution by Blurring occurs when a famous mark becomes identified with more than one type of product, diminishing the uniqueness of the mark, such as might happen if consumers encountered “Coca-Cola” toothpaste or “Starbucks” shoes.
Dilution by Tarnishment occurs when the reputation of a famous mark is negatively impacted by association with an unflattering or unsavory product, such as using the children’s game “Candyland” for the name of an adult website.
If a famous mark is not inherently distinctive, survey evidence can be used to evaluate the degree of similarity between two marks and to measure a mark’s degree of recognition in the consumer’s mind. A secondary meaning survey can be used to measure a mark’s acquired distinctiveness. And dilution surveys can be used to establish the existence of actual association between the marks at issue.
Hiring qualified survey experts, such as Keegan & Donato Consulting, will have a significant impact on whether the court deems your survey results admissible. We consider methodological design among the most important aspects of designing a consumer research study.
Get in touch with the experts at Keegan & Donato Consulting to learn how to file a trademark infringement lawsuit and how to bolster your case with consumer survey evidence. Contact us at (914) 967-9421.