Do you need a trademark survey? Strengthen your intellectual property cases by hiring survey experts like Keegan & Donato Consulting. Our team can quickly deliver the intelligence you need within a wide range of budgets.
Keegan & Donato Consulting, a specialty research consultancy in Rye, New York, provides a complete suite of services, including consulting on litigation strategy for both plaintiff and defendant clients across the nation, consumer research studies, expert reports, testimony during litigation, testimony at deposition or trial, and rebuttal of opposing parties’ surveys when applicable.
We have developed surveys for and collaborated with firms that manage some of the largest trademark portfolios in the world, such as Fox Rothschild LLP in New Jersey and Philadelphia, Arnold & Porter LLP in San Francisco, and Morgan, Lewis & Bockius LLP in Boston.
What Can a Trademark Survey Measure?
Surveys can be instrumental in measuring many issues related to intellectual property matters and providing evidence of infringement, including the following:
Likelihood of confusion is among the most common issues addressed by consumer surveys. A well-designed survey can provide direct scientific evidence of the extent to which consumers believe there is a relationship between the plaintiff’s and the defendant’s mark, brand, or product.
Secondary meaning, which occurs when consumers associate an otherwise descriptive mark with a single source, can be measured using a consumer survey and may provide a strong indication that a mark is no longer descriptive and has become a distinctive brand identifier in the minds of consumers.
Acquired distinctiveness can be measured with a consumer survey. When a mark acquires distinctiveness, it becomes capable of serving as a trademark by becoming known to consumers as originating from one particular source. This usually occurs after extensive advertising and widespread commercial use.
Lanham Act Claims – Lanham Act issues are particularly well-suited to testing through consumer research. Strengthen your case with a well-designed survey conducted by Keegan & Donato Consulting, which can provide empirical evidence on the issue of whether an alleged trademark infringement is having a real-world impact on consumers.
Value of Consumer Surveys in Trademark Infringement
Under the Lanham Act, trademark owners who claim infringement and unfair competition must generally establish two elements: (1) that the defendant used the registered mark in commerce; and (2) that the use is likely to cause consumer confusion.
Evidence of actual confusion is not required. The most persuasive evidence typically comes from a consumer survey. However, the Court may find it to be of limited value when not conducted by trained independent experts using sound methodologies.
For example, in Kate Spade LLC v. Saturdays Surf LLC, 950 F.Supp. 2d 639 – Dist. Court, S.D. New York (2013), the Court ruled that women’s apparel company Kate Spade LLC’s “Kate Spade Saturday” line of apparel did not infringe on a registered “Saturdays Surf NYC” trademark owned by men’s retailer Saturdays Surf LLC, finding that there was unlikely to be any consumer confusion between the two marks.
Both sides presented consumer survey testimony to measure consumer confusion. The Court found both to be of limited value and afforded them no weight in its decision. Kate Spade LLC’s survey was found to be poorly designed. Saturdays Surf LLC’s survey was determined to suffer from methodological flaws that raised “serious questions about the leading nature of the survey design.”
When you need a trademark survey, Keegan & Donato Consulting can design and execute a survey that will withstand the rigors of your litigation. Contact us at (914) 967-9421 to explore our approach and our affordable services.