The goal of a trademark survey is to determine whether the trademark in question is likely to cause confusion among consumers with another trademark that is already in use. If you’re involved in a trademark dispute or opposition proceedings, Keegan & Donato Consulting can design a survey to measure consumer awareness and perception of the trademarks in question, as well as their likelihood of confusion.
About the Firm
Keegan & Donato Consulting, located in historic Rye, New York, designs and executes consumer-based surveys for attorneys across the nation and their clients in the context of intellectual property disputes.
Principals Mark Keegan and Tony Donato rely on over 30 years of proven survey methodologies, deep operational insight, and vast industry experience, to design, execute, analyze, and present the results of I.P. litigation surveys.
What Trademark Surveys Can Measure
Surveys can be instrumental in providing evidence of infringement and measuring many issues related to intellectual property matters.
Confusion: One of the primary purposes of a trademark is to prevent consumer confusion. However, with more and more brands competing for share of mind in the marketplace, some confusion is inevitable. A well-executed standard or custom survey from Keegan & Donato Consulting can help you assess whether consumers are indeed confused.
Secondary Meaning: Descriptive marks are not usually protectable as trademarks unless they have acquired a secondary meaning. We design consumer research surveys that target pertinent consumers in your client’s market and help you determine whether consumers associate a contested mark with one or more sources.
Strength of Mark: The “strength” of a mark has a bearing on the legal protections available to a mark holder. In general, fanciful, arbitrary, and suggestive terms are considered inherently distinctive and can be afforded various trademark protections. Descriptive marks are unlikely to achieve protection because they lack sufficient distinction to be associated by consumers with one source.
Dilution: Trademark dilution arises when a party uses a famous mark in a way that tarnishes its reputation or dilutes its strength by blurring its distinctiveness. Consumer recognition of a famous mark can be measured directly by a survey.
Trade Dress: Trade dress, like a trademark, is protectable under the Lanham Act. Conducting a consumer survey can help you gather the evidence to prove whether the trade dress in question has established secondary meaning or is likely to cause confusion in the marketplace.
Why Hire an Expert
Not all trademark surveys are created equal. There are many factors that can affect the validity of a trademark survey, including the wording of the survey questions, the sample size of the survey group, and the demographics of the survey group.
For this reason, it’s important to work with an expert when conducting a trademark survey. An experienced firm can help ensure that the survey is designed in a way that will provide accurate and reliable results. Hiring qualified survey experts like Keegan & Donato Consulting will help protect your survey from attack.
In Cumberland Packing Corp. v. Monsanto Co., 140 F.Supp.2d 241 – Dist. Court, ED. New York (2001), for example, “the court determined that the results of the [plaintiff’s] surveys were unreliable because of serious flaws in the protocol and methodology” and decided in favor of the defendant.
In Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014), the plaintiff’s surveys were deemed inadmissible because the court decided they were unscientific and poorly constructed. The survey expert was also rejected as unqualified “to design a survey or interpret survey results” [see 45 F.Supp.3d 1167-1170].
Trademark survey companies like Keegan & Donato Consulting offer attorneys and their clients an exceptional combination of analytical and strategic skills related to the role of survey evidence in trademark opposition proceedings. Contact us at (914) 967-9421 to take advantage of our extensive knowledge and expertise.