Keegan & Donato Consulting has wide-ranging experience in the use of dilution surveys in trademark litigation. Dilution can be divided into several types, the most common being “blurring” and “tarnishment.”
As a specialty research consultancy and one of the most experienced companies in the field of trademark litigation, Mark Keegan and Tony Donato provide expert research, reports, and testimony on behalf of plaintiffs and defendants. We design surveys that avoid methodological pitfalls often afflicting competing surveys.
About Trademark Dilution
Trademark dilution occurs when a third party uses a famous mark without authorization, weakening its distinctiveness or damaging its reputation. If the infringement was intentional, the Lanham Act provides for additional remedies.
The Trademark Dilution Revision Act (TDRA), enacted by Congress in 2006, clarified what makes a mark “famous” and defined “dilution by blurring” and “dilution by tarnishment.” It also established remedies when an infringing party is found to have willfully intended to harm the reputation of the famous mark or trade on its recognition.
Only “famous” trademarks can be protected from dilution. This means it’s crucial to determine whether the mark is recognized extensively by the general consuming public.
These are the factors set out by the TDRA to help courts determine 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 to which consumers recognize the mark
- whether the mark has been registered
Dilution by blurring: This occurs when a famous mark is identified with more than one type of product, diminishing the mark’s uniqueness, such as might happen if consumers encountered “Starbucks” shoes or “Coca-Cola” toothpaste.
Dilution by tarnishment: This occurs when the reputation of a famous mark is negatively impacted by association with an unflattering or unsavory product, such as using the children’s game “Candyland” for the name of an adult website.
When a famous mark is not inherently distinctive, survey evidence can be used to evaluate the degree of similarity between two marks and how recognizable they are in the minds of consumers. Dilution surveys may also be used to establish an actual association between the marks at issue. We can also use a secondary meaning survey to measure a mark’s acquired distinctiveness
Because there are several ways to substantiate a dilution claim, the Keegan & Donato team works closely with clients to understand the central issues of their cases.
It can be a challenge to prove dilution in trademark litigation, whether by blurring or tarnishment, but the use of surveys can be helpful in establishing such proof. Contact Keegan & Donato Consulting at (914) 967-9421 to learn more about how consumer data can help strengthen your case.