Trademark dilution by tarnishment occurs when a business uses a famous mark in commerce and, in doing so, harms the reputation of the well-known mark. When you need litigation support to bolster your IP litigation Keegan & Donato Consulting can advise you on the best approach for a particular survey or provide you with an objective evaluation of existing survey research.
With 30 years of experience in conducting consumer-based surveys, Keegan & Donato Consulting has collaborated with firms that manage some of the largest trademark portfolios in the world. We specialize in trademark and trade dress analyses and surveys and have designed and critiqued hundreds of methodologically sound consumer research studies in a broad range of industries for cases in federal and state court, the TTAB, the NAD, arbitration hearings, and other specialty venues.
FAQs about Tarnishment
Here are some frequently asked questions about trademark dilution by tarnishment:
Q: What is the difference between trademark dilution by tarnishment and trademark blurring?
Trademark dilution by tarnishment and trademark blurring are both forms of trademark dilution, but they differ in how they harm the reputation of a well-known mark.
Trademark dilution by tarnishment occurs when a business uses a famous mark in a way that harms its reputation, such as by associating it with something inferior or offensive. For example, if a shoe company uses the Burger King trademark on shoes of poor quality, the trademark has been tarnished.
Trademark blurring occurs when a business uses a famous mark in a way that weakens its ability to identify and distinguish the goods or services of the mark owner. For example, trademark blurring would occur if a famous brand was used to market a product such as “Google” toothpaste.
Q: What are the elements of a trademark tarnishment claim?
To bring a successful claim for trademark tarnishment, the plaintiff must prove that: (1) the plaintiff’s mark is famous; (2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s mark; (3) the defendant’s use of the mark is commercial; and (4) the defendant’s use of the mark is likely to cause dilution by tarnishment.
Q: What are the legal consequences of trademark tarnishment?
Companies can resort to legal recourse under the Trademark Dilution Act (TDA) to safeguard their trademarks and demand compensation for any resulting damages. If a court finds that a defendant has engaged in trademark dilution by tarnishment, it may issue an injunction to stop the defendant from using the mark in a way that dilutes the plaintiff’s mark. The plaintiff may also be entitled to damages, including profits made by the defendant as a result of the dilution, and attorney’s fees.
Q: Is a dilution survey a useful tool?
A dilution survey typically involves presenting respondents with two marks and asking them questions to determine if they perceive any similarity or connection between the marks. If the survey shows that a significant number of consumers are likely to be confused or see a relationship between the two marks, the plaintiff may have a stronger case for trademark dilution.
Don’t overlook the influence that a sound, reliable consumer survey can have on your trademark tarnishment case. Companies like Keegan & Donato Consulting can work within your budget to provide the litigation support you need. Reach out to us at (914) 967-9421 to learn more about our services.