Trademarks serve as a way to identify the goods and services of a business and distinguish them from those of its competitors. However, trademarks are subject to dilution, which occurs when their strength or distinctiveness is weakened by unauthorized use. Consumer surveys from Keegan & Donato Consulting can be used for measuring trademark dilution.
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.
What is Trademark Dilution?
Trademark dilution occurs when a trademark loses its unique association with a particular product or service due to the use of similar or identical marks by other businesses. The dilution may occur in two forms: blurring and tarnishment.
Blurring happens when the mark’s distinctiveness is weakened through use in a different context, such as when a famous soft drink brand is used to market a clothing line. Tarnishment occurs when the mark’s reputation is harmed by association with inferior or unsavory products, such as when a high-end luxury brand is used to market cheap imitation goods.
Brand owners face a significant challenge in the form of trademark dilution, as it erodes the value of their intellectual property and hampers their ability to set themselves apart in the market. Companies can resort to legal recourse under the Trademark Dilution Act (TDA) to safeguard their trademarks and demand compensation for any resulting damages.
The Role of Surveys in Measuring Trademark Dilution
To establish trademark dilution, a plaintiff must furnish evidence that the defendant’s use of a comparable mark could potentially lead to confusion or reduce the value of the plaintiff’s trademark. A survey can be a very useful tool because it can help gauge the degree of customer recognition of a specific trademark, the likelihood of confusion between two marks, and the degree of dilution that may arise due to the defendant’s use of a similar mark.
A dilution survey typically involves presenting respondents with two marks and asking them questions to determine whether they perceive any similarity or connection between the marks. If the survey shows that a significant number of consumers are likely to be confused or see a relationship between the two marks, the plaintiff may have a stronger case for trademark dilution.
Should You Hire a Survey Expert?
Methodological shortcomings can affect surveys. When this occurs, the Court may afford them little or no weight as evidence. It is crucial to hire qualified survey experts to avoid this serious pitfall and ensure that 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), for example, in which Vuitton (plaintiff) sued Dooney & Bourke (defendant) for emulating a monogram feature of its women’s handbags. Both parties hired three survey experts, and the plaintiff commissioned likelihood of confusion and dilution surveys. The Court excluded the evidence and testimony of the plaintiff’s surveys and experts and two of the defendant’s three experts, determining the surveys to be unreliable and plagued by significant methodological flaws. The Court 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 surveys you need for measuring trademark dilution and proving your case. Get in touch with us today at (914) 967-9421 to learn more about our wide range of affordable services.