Trademark disputes can be complicated legal matters that require a thorough understanding of consumer behavior and market dynamics. In many cases, survey evidence can play a crucial role in determining the outcome of a case. However, not all surveys are created equal, and choosing the right type of survey is essential for building a convincing argument. Keegan & Donato Consulting can help.
Likelihood of Confusion Surveys
Likelihood of confusion surveys are the most common type of survey used in trademark litigation. They aim to determine whether a consumer will likely be confused between two competing trademarks. In other words, the survey measures the likelihood that consumers will mistake one product or brand for another.
A well-designed likelihood of confusion survey can provide powerful evidence in a trademark case. For example, in the case of Tiffany and Co. v. Costco Wholesale Corp., 127 F.Supp.3d 250 –District Court, S.D. New York (2015), the iconic jeweler sued Costco for trademark infringement over using the “Tiffany” trademark to sell diamond wedding rings.
The defendant argued that using the name Tiffany merely to describe the style of the ring (i.e., “Tiffany” setting) did not confuse consumers into thinking that Tiffany & Co. was the source of the ring. Tiffany & Co. presented a consumer confusion survey which determined that prospective purchasers of wedding rings at Costco were likely confused into believing that Tiffany & Co. was the source of the rings.
Costco attacked the survey expert’s methods but did not offer its own survey or any other evidence of lack of consumer confusion. Without a competing survey, “Tiffany’s evidence of consumer confusion stands unrebutted.” The Court granted Tiffany’s motion for summary judgment.
A genericness survey determines whether a trademark has become generic, meaning it has become a common term for a particular product or service, rather than a specific brand.
A well-designed genericness survey can provide evidence that a trademark has become generic and should no longer be protected. In the case of Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014), the plaintiff argued that the Google trademark had become genericized because the public had come to understand the word, when used as a verb, to mean searching the Internet without regard to the search engine used.
Consumer survey evidence played a significant part in the case and demonstrated the need for hiring a qualified survey expert. The Court completely disregarded the plaintiff’s surveys as unscientific and poorly constructed and rejected the survey expert as unqualified “to design a survey or to interpret survey results.” The Court eventually confirmed that “Google” remains a valid and protectable trademark.
Dilution surveys determine whether a trademark is being diluted, meaning that its distinctiveness or reputation is weakened by another party’s use of a similar mark.
A well-designed dilution survey can provide evidence that the defendant’s use of a similar mark is likely to cause harm to the plaintiff’s mark. In Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942 (N.D. Ill. 2002), the plaintiff, manufacturer of Velveeta® brand cheese products and owner of the trademark since 1923, sued defendant Stuart Helm, who called himself “King VelVeeda,” a nickname he used on his adult-oriented website, which also depicted drug use and paraphernalia, for trademark infringement and dilution.
The Court found that the two similar marks would cause consumers to associate Velveeta® with the defendant’s offensive product, tarnishing the Velveeta® mark and damaging its reputation. A preliminary injunction was entered in favor of the plaintiff.
Selecting the right type of survey for your trademark case is essential for building a convincing argument. Keegan & Donato Consulting has the qualifications and expertise to deliver intelligence quickly within a wide range of budgets. Contact us today at (914) 967-9421 to find out how we can help.