When your law firm needs trademark confusion survey experts to help develop a powerful case strategy, Keegan & Donato Consulting provides the expertise you need.
The principals of Keegan & Donato Consulting – Mark Keegan and Tony Donato – have extensive strategic and analytical skills and 30 years of combined expertise in designing, executing and critiquing consumer research studies in the context of litigation.
What is Confusion?
Trademark owners who claim infringement and unfair competition under the Lanhan Act, 15 USC 1114(a)(1) are usually required to establish these two elements:
- that the defendant used the registered mark in commerce;
- that the use of the mark is likely to cause consumer confusion, or to cause mistake, or to deceive.
When marks are too similar, the allegedly infringing mark may confuse consumers into buying unwanted goods or services, dilute or damage a brand’s reputation, or allow competitors to benefit from another brand’s well-known reputation. The more similar the marks are, the more likely it is that confusion and infringement will occur.
The courts may apply different factors in order to assess the likelihood of confusion, including:
- Strength of the senior mark: The senior trademark is the one that was used or registered first. The more distinctive the mark is, the more protected it is.
- Relatedness of the goods or services: This refers to whether an average consumer would purchase one product or service in the belief that it is a different product or service.
- Similarity of the parties’ marks: One of the most important factors, the elements to be considered involve similarity in appearance, sound and meaning.
- Competition in the marketplace: The similarity of marks is also assessed based on how consumers encounter them in the marketplace, such as how they are advertised and where in a store they might be found.
- Defendant’s intent: Evidence that the infringing party intentionally chose their mark to cause confusion may be enough to prove the likelihood of confusion.
- Buyer sophistication: This refers to the amount of care taken by the consumer during the purchasing process. The less sophisticated the purchaser, the more likely the confusion.
- Evidence of actual confusion: Evidence of actual confusion is proof that the products and marks are similar enough to create confusion among consumers.
Why Seek the Advice of Survey Experts?
Expert advice can be critical for several reasons, such as in making the most of fact discovery, framing discovery requests, and identifying issues to investigate in depositions.
Primarily through survey evidence, an expert can help establish whether a descriptive mark has acquired secondary meaning; whether competing marks are likely to confuse consumers; whether or not a mark is famous; and whether one brand’s mark is likely to cause dilution to a competing mark.
While nothing in the Lanham Act requires consumer surveys to be introduced in disputes, they can serve as persuasive evidence of whether an advertisement or trademark is likely to cause consumers to be confused or misled. Consumer surveys must be well-designed and scientifically sound, however, or they may be given little weight by the court or partially or completed excluded.
If you are looking for trademark confusion survey experts to provide support for your IP litigation, Keegan & Donato Consulting can help. Get in touch with us today at (914) 967-9421.