Substantiating a claim of dilution under the Lanham Act can be a challenge, but consumer surveys can be used to establish proof. 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.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced firms in the field of trademark litigation. Principals Mark Keegan and Tony Donato offer 25+ years of combined experience and impeccable credentials in consumer-based survey research and data analysis, and follow a solid methodological foundation in survey design, execution and presentation.
About Trademark Dilution
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.
Until 1996, when the Federal Trademark Dilution Act (FTDA) (15 U.S. Code, Section 1125(c)) was enacted, there was no federal law prohibiting trademark dilution. A U.S. Supreme Court decision, however, determined that owners of famous marks had to provide evidence of actual economic injury in order to prevail.
Congress overturned this decision in 2006 and enacted the Trademark Dilution Revision Act (TDRA). The TDRA defined the different types of dilution and clarified what factors make a mark “famous.” It also provided additional remedies when an infringing party is found to have willfully intended to trade on the recognition of or damage the reputation of the famous mark.
Surveys as Evidence of Dilution
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.
Why Hire a Survey Expert?
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.
Consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), for example, 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 has extensive experience conducting Lanham Act dilution surveys. Please contact us at (914) 967-9421 to find out more about how consumer data can help your case. We can deliver intelligence quickly and within a wide range of budgets.