As one of the top trademark survey companies, Keegan & Donato Consulting’s extensive knowledge of intellectual property issues can assist you in proving trademark dilution, whether by blurring or tarnishment.
Keegan & Donato Consulting specializes in a wide range of trademark and trade dress analyses and surveys. We have 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.
We have designed surveys for firms that manage some of the world’s largest trademark portfolios, such as Arnold & Porter LLP in San Francisco, Morgan, Lewis & Bockius LLP in Boston, and Fox Rothschild LLP in New Jersey and Philadelphia. Our litigation surveys have been accepted as evidence in matters involving many different types of products and services.
The Fame Standard
Under the Lanham Act, only “famous” trademarks can be protected from dilution. The first step is to determine whether the mark in question is widely recognized by the general consuming American public as a designation of the source of the goods or services of the mark’s owner.
The law outlines these factors to help courts determine fame:
- the extent, duration, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or by third parties
- the amount, volume, and geographic extent of sales of goods or services offered under the mark
- the extent of actual recognition of the mark
- whether the mark is registered
If a famous mark is not adequately distinctive, survey evidence can be used to measure the degree of similarity between two marks. We can also measure the degree of recognition in the minds of consumers. A secondary meaning survey can measure a mark’s acquired distinctiveness, and dilution surveys may be used to establish the existence of an actual association between the marks at issue.
Should You Hire a Survey Expert?
There are methodological shortcomings that can affect surveys. 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 litigation rigors, it is crucial to hire qualified survey experts.
As an example, consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), 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. The court determined the surveys to be unreliable, plagued by significant methodological flaws, and concluded that “any probative value was substantially outweighed by the danger of unfair prejudice and misleading the jury.”
Keegan & Donato Consulting can provide the consumer research studies you need to develop a powerful strategy for proving your trademark dilution case. Call us today at (914) 967-9421 to learn more about our wide range of affordable services.