When your case involves trademark tarnishment, a consumer research survey designed and executed by Keegan & Donato Consulting can support your case strategy by providing empirical evidence that consumers’ opinions of the famous mark have been adversely affected by the infringing mark.
The Lanham Act, as codified in 15 U.S.C. §1125, is the statutory basis for most trademark claims, including consumer confusion, false designation of origin, trade dress infringement, false advertising and dilution.
Because the Lanham Act primarily addresses the ways in which consumers interpret—and misinterpret—names, symbols, and other marks used by businesses in commerce, issues such as tarnishment are particularly well-suited to testing through consumer research.
Keegan & Donato Consulting is a specialty research consultancy and a leading firm in the field of trademark litigation. We utilize classic and custom survey designs, our combined 25 years of experience in proven survey methodologies, and meticulous analytical skills to meet the needs of our clients.
Dilution by Tarnishment
Trademark dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
Dilution by tarnishment occurs when an infringing mark damages the reputation of a famous mark by using it in connection with goods or services of poor quality or of an unsavory nature that is likely to reflect adversely upon the trademark owner’s product, such as when selling sex-related products or in the context of drugs or crime.
For example, 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 defendant had used the name “VelVeeda” in commerce and that the two similar marks would cause consumers to associate Velveeta® with the defendant’s offensive product, thereby tarnishing the Velveeta® mark and damaging its reputation. A preliminary injunction was entered in favor of the plaintiff.
Dilution Surveys
A well-designed consumer research study can ascertain whether an alleged trademark infringement is having a real world impact on consumers.
Our methodological approach follows established principles of consumer survey research beginning with a rigorous and valid survey design that explores the relevant issues in the individual case.
Some of the industry best practices we have built into our survey designs include:
- Appropriate universe selection and sampling frame;
- Inclusion of representative, qualified respondents;
- Use of procedures to minimize potential biases in data collection;
- Use of objective, non-leading questions;
- Use of procedures to reduce guessing among respondents; and
- Full analysis and reporting of survey data.
When designed and executed correctly, Keegan & Donato Consulting’s consumer research studies yield highly reliable data that is projectable to the studied population as a whole.
If you are seeking a reliable and defensible consumer research survey to address the issues in your trademark tarnishment litigation, call us at (914) 967-9421 to take advantage of our incomparable expertise.