Trademark infringement and dilution claims are two important legal concepts under the Lanham Act, a federal law governing trademarks in the United States. Trademarks are valuable assets for businesses as they help distinguish their products or services from those of their competitors. However, these trademarks can be subject to infringement and dilution, which can harm the reputation and value of the original mark. Keegan & Donato Consulting can help protect the rights and interests of trademark owners.
Located in Rye, New York, we are a specialty research consultancy that designs and executes consumer-based surveys for attorneys and their clients in the context of IP disputes. Principals Mark Keegan and Tony Donato have more than 30 years of cumulative experience in consumer research and can help you strengthen your case.
Types of Surveys Used in Trademark Infringement Evaluations
Depending on the case’s specific needs, various surveys are used in trademark infringement evaluations.
- Likelihood of Confusion: One of the core purposes of a trademark is preventing consumer confusion. In a marketplace where an ever-increasing number of brands vie for consumer attention, eliminating all confusion is nearly impossible. Even so, a customized survey provided by Keegan & Donato Consulting can be a valuable tool for evaluating the extent of consumer confusion.
- Secondary Meaning: Descriptive marks can only achieve trademark protection if they’ve developed a secondary meaning. Our consumer surveys are designed to engage the target audience in your client’s market and help gauge the degree to which consumers associate a disputed mark with one or more sources.
- Strength of Mark: The legal safeguards accessible to a trademark holder are influenced by the “strength” of the mark. Generally, terms categorized as fanciful, arbitrary, or suggestive are inherently distinctive, garnering diverse trademark protections. On the other hand, descriptive marks need help obtaining trademark protection since they lack the distinctiveness for consumers to associate them with a specific source.
- Dilution: Trademark dilution occurs when someone uses a famous trademark in a way that weakens its distinctive quality or tarnishes its reputation. Unlike infringement, dilution does not require a likelihood of confusion among consumers. Instead, it focuses on the potential harm to the distinctiveness or reputation of the famous mark. To establish a dilution claim, the trademark owner must demonstrate that their mark is famous and that the defendant’s use of a similar mark will likely cause dilution by blurring or tarnishment.
To bring a successful claim, trademark owners must proactively monitor and enforce their rights. This includes conducting regular searches for potentially infringing or diluting uses of their marks and taking appropriate legal action when necessary.
To prevail on these claims, plaintiffs must provide sufficient evidence to support their allegations. This may include proof of consumer confusion, intentional copying or bad faith, survey evidence, and expert testimony. Defendants, on the other hand, may assert various defenses such as fair use, parody, or lack of likelihood of confusion or dilution.
Conclusion
Trademark infringement and dilution claims are important tools for protecting the value and integrity of trademarks under the Lanham Act. They allow trademark owners to enforce their exclusive rights and prevent others from using confusingly similar marks or tarnishing their brand’s reputation. With the help of Keegan & Donato Consulting, you can safeguard your trademarks and maintain a strong presence in the marketplace. Contact us today to explore our services.