Proving trademark dilution in court can be complicated. You may pursue legal action when you believe your trademark has been diluted, and consumer surveys from Keegan & Donato Consulting can be used to establish proof.
At Keegan & Donato Consulting, we specialize in trademark and trade dress surveys and analyses. Our skilled team has designed and critiqued hundreds of consumer research studies across various industries for cases in federal court, state court, the TTAB, the NAD, arbitration hearings, and other specialty venues.
Understanding Trademark Dilution
Trademark dilution occurs when the distinctiveness of a famous or well-established trademark is diminished by unauthorized use or association with another product or service. It differs from traditional trademark infringement because it does not involve confusion between two trademarks.
Proving Trademark Dilution
Several key factors need to be demonstrated to establish a case of trademark dilution in court:
- Distinctiveness: The plaintiff must show that their trademark is well known by consumers and holds a high level of distinction. Famous trademarks are more likely to receive protection against dilution.
- Actual Dilution: It’s essential to show that the defendant’s unauthorized use of the mark has caused, or is likely to cause, a reduction in the uniqueness or strength of the plaintiff’s trademark.
- Association: The plaintiff must establish that the defendant’s use of the mark creates an association between their product or service and the well-known trademark, leading to dilution.
- Commercial Use: The defendant’s use of the mark must be related to selling, advertising, or promoting goods or services.
A dilution survey usually involves presenting respondents with two marks and asking questions to ascertain whether they believe there is any similarity or connection between the marks. If the survey shows that many consumers see a relationship between the two marks or are likely to be confused, the plaintiff may have a stronger case for trademark dilution.
Do You Need a Survey Expert?
Surveys can be negatively impacted by methodological shortcomings, causing the court to afford them little or no weight as evidence. Hiring eminently qualified survey experts like Keegan & Donato Consulting is crucial for avoiding this serious pitfall and ensuring the survey can withstand the rigors of litigation.
Consider Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), in which Vuitton (plaintiff) sued Dooney & Bourke (defendant) for copying a monogram feature of its women’s handbags. Each party hired three survey experts. The plaintiff commissioned dilution and likelihood of confusion surveys. The court excluded the evidence and testimony of the plaintiff’s surveys and experts, as well as two of the defendant’s three experts because the surveys were plagued by significant methodological flaws and were unreliable. The court concluded that “any probative value was substantially outweighed by the danger of unfair prejudice and misleading the jury.”
Principals Mark Keegan and Tony Donato offer 30+ combined years of experience and impeccable credentials in consumer survey research and data analysis and follow a solid methodological foundation in survey design, execution, and presentation.
You can protect your well-established trademarks and maintain your unique identities in the marketplace with the right evidence and legal arguments. Our firm can help you present a compelling case in court that will be pivotal in proving trademark dilution and securing a favorable outcome. Please get in touch with us at (914) 967-9421 to find out more about how we can help your case. We deliver intelligence quickly and within a wide range of budgets.