When testing for trademark dilution, Keegan & Donato Consulting works closely with clients to understand the fundamental issues of their unique cases. The firm is eminently qualified to provide you with dilution and other types of litigation surveys in your trademark dispute or other intellectual property matter.
Keegan & Donato Consulting provides research, analysis, affidavits, declarations and expert reports as needed in support of trademark infringement and trade-dress litigation, and has collaborated extensively on cases involving marketing, business and financial issues.
We have 30 years of experience in conducting consumer-based surveys in cases involving Lanham Act claims, likelihood of confusion, strength of mark, consumer perception, and a wide range of marketing and commercial litigation issues.
About Trademark Dilution
Dilution of trademarks occurs when a third party’s unauthorized use of a famous trademark weakens the distinctiveness of the trademark or damages its reputation. If the infringement is found to have been intentional, the Lanham Act provides for additional remedies.
Dilution by blurring occurs when a famous mark becomes identified with more than one type of product, such as might happen if consumers encountered “Coca-Cola” toothpaste or “Starbucks” shoes. Dilution by tarnishment occurs when a famous mark is harmed by an association with a low quality or unsavory product, such as using the children’s game “Candyland” for the name of an adult website.
Proving dilution, whether by blurring or tarnishment, can be challenging, but consumer surveys can be used to establish such proof. The first step is to determine whether the mark is widely recognized by the general consuming public (the “fame” standard).
The Fame Standard
Under the Lanham Act, only “famous” trademarks can be protected from dilution, so the first step is to determine whether the mark is widely recognized by the general consuming public across the U.S. as a designation of source of the goods or services of the mark’s owner.
The TDRA set out these factors to assist courts in determining fame:
- the duration, extent, 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
Surveys as Evidence of Dilution
If a famous mark is not inherently distinctive, survey evidence may be used to evaluate the degree of similarity between two marks and to measure a mark’s degree of recognition in the minds of consumers. A secondary meaning survey may be used to measure a mark’s acquired distinctiveness. And dilution surveys may be used to establish the existence of actual association between the marks at issue.
Keegan & Donato Consulting has extensive experience testing for trademark dilution with trademark surveys. Please contact us at (914) 967-9421 to find out more about how consumer data can help your case. We can deliver intelligence quickly and within a wide range of budgets.