As you evaluate trademark survey companies to help support or contest an allegation of infringement in your San Jose, CA litigation, consider Keegan & Donato Consulting.
Our firm provides nationwide service to attorneys practicing in federal and state courts, before arbitration panels, the Trademark Trial and Appeal Board (TTAB), the NAD, and other specialty venues. Our trademark litigation services include these and other areas:
- State-of-the-art survey design and execution
- Full-service data gathering and reporting capabilities
- Collaboration on complex commercial litigation issues
- Pilot studies and exploratory research
- Critique and rebuttal of opposing experts’ studies and reports
- Damages analysis and forensic economic analysis
- Advice on questioning of opposing experts in deposition and at trial
- Expert witness testimony on consumer survey, marketing & economic issues
Trademark surveys are a common approach toward proving likelihood of confusion, secondary meaning, consumer perception, strength of mark, genericness, acquired distinctiveness, and other issues, when other scientific evidence is simply not available.
Keegan & Donato Consulting has the expertise to gather data on the beliefs and attitudes of consumers toward your client’s brand. We have designed and executed hundreds of methodologically sound trademark surveys in many different industries.
We have worked with litigation teams from the best IP firms in the nation, including Arnold & Porter LLP and Girard Gibbs LLP in San Francisco, Girardi & Keese in Los Angeles, Debevoise & Plimpton LLP in New York City, and Ropes & Gray LLP in Washington, DC.
Importance of Survey Evidence
A well-conducted consumer survey is often the best evidence of how a relevant purchasing public perceives a mark. It is important, however, to choose a qualified survey expert who will be able to withstand cross-examination and explain his or her survey methodology in a clear and concise manner.
In Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014), for example, the Court held that Google® is a valid and protectable trademark and that the “primary significance” of the term “google” to consumers was Google’s Internet search engine, even though consumers use the word “google” as a verb to mean searching the Internet without regard to the search engine used.
Under the Lanham Act, a trademark registration is subject to cancellation under 15 U.S.C. § 1064(3) if it has become “generic” and is used as the common name for a type or category of goods or services, rather than identifying the source thereof. This has occurred to a number of former trademarks, such as aspirin, escalator, laundromat, linoleum, margarine, shredded wheat, and cellophane, which eventually became the common names for those products.
Consumer survey evidence played a significant role in Elliott. Google’s survey evidence demonstrated that more than 90% of consumers identified “google” as a brand name for an Internet search engine. The plaintiff’s survey, on the other hand, did not focus on the primary significance of “google” to consumers but, rather, on whether consumers used “google” as a verb.
In addition, the Court completely disregarded the plaintiff’s surveys as unscientific and poorly constructed, and rejected the survey expert as unqualified “to design a survey or to interpret survey results” [see 45 F.Supp.3d 1167-1170].
Elliott demonstrates the need for hiring a qualified survey expert. Had the plaintiff conducted a methodologically sound survey tailored towards the primary significance of “google” to consumers, the outcome may have been different.
When looking for trademark survey companies to assist you in proceedings in San Jose, CA or elsewhere in the nation, call Keegan & Donato Consulting at (914) 967-9421 to take advantage of our incomparable expertise in consumer research.