Trademark dilution occurs when an infringing party uses a famous mark in a way that tarnishes the mark’s reputation for quality or dilutes its strength by blurring its distinctiveness. Consumer recognition of a famous mark can be measured directly by a survey.
Keegan & Donato Consulting works on behalf of both plaintiffs and defendants to provide 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 25 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
Until 1996, when the Federal Trademark Dilution Act (FTDA) (15 U.S. Code, Section 1125(c)) was enacted, there was no federal law prohibiting trademark dilution. A U.S. Supreme Court decision, however, determined that, in order to prevail, owners of famous marks had to provide evidence that actual economic injury had occurred.
Thus, in 2006, Congress enacted the Trademark Dilution Revision Act (TDRA) to overturn the decision and amend Section 43(c) of the Lanham Act. The TDRA defined “dilution by blurring” and “dilution by tarnishment,” and clarified what makes a mark “famous.” It also provided for additional remedies if an infringing party is found to have willfully intended to trade on the recognition of or harm the reputation of the famous mark.
Dilution by blurring occurs when a famous mark becomes identified with more than one type of product, such as might happen if consumers encountered “Rolls Royce” 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.
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
Consumer research is the process of sampling from a large group of relevant consumers and asking them carefully constructed questions to elicit opinions about a certain topic or topics. The data collected is projectable to the studied population as a whole.
Because there are a variety of approaches to substantiating a claim of dilution, we work closely with clients to understand the fundamental issues of their unique cases. Our methodologically sound consumer surveys and skillful, objective analysis will ensure the admissibility and persuasiveness of the results and help you develop a powerful case or rebuttal strategy.
Keegan & Donato Consulting has extensive experience conducting trademark dilution surveys. Please contact us at (914) 967-9421 to find out more about how consumer data can help your case.