From marketing and advertising surveys, to expert witness testimony, to post-litigation support, Keegan & Donato Consulting can help strengthen your trademark dilution case.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced companies in the field of trademark litigation. With over 25 years of combined experience, proven survey methodologies, and deep operational insight, principals Mark Keegan and Tony Donato have expertise on many topics in the areas of trademark and trade dress.
We have assisted IP litigation firms across the nation develop effective case strategies, such as Giampolo Law Group in Philadelphia, Debevoise & Plimpton LLP in New York City, Pashman Stein in New Jersey, Ropes & Gray LLP in Washington, DC, and Blood Hurst & O’Reardon LLP in San Diego.
About Trademark Dilution
Dilution of trademarks occurs when a third party’s unauthorized use of a famous trademark weakens the distinctiveness of the trademark or damages its reputation. If the infringement is found to have been intentional, the Lanham Act provides for additional remedies.
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” handbags. 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.
Proving dilution, whether by blurring or tarnishment, can be challenging, but consumer surveys can be used to establish such proof. The first step is to determine whether the mark is widely recognized by the general consuming public (the “fame” standard).
If a famous mark is not inherently distinctive, survey evidence may be used to evaluate the degree of similarity between two marks and to measure a mark’s degree of recognition in the minds of consumers. A secondary meaning survey may be used to measure a mark’s acquired distinctiveness. And dilution surveys may be used to establish the existence of actual association between the marks at issue.
Who Can Provide Expert Testimony?
Rule 702 of the Federal Rules of Evidence requires experts to have scientific, technical, or other specialized knowledge that will help the court understand the evidence. The expert’s testimony must be based on sufficient facts or data obtained by reliable principles and methods that have been properly applied to the facts of the case.
Expert advice can be critical for a variety of reasons, such as in making the most of fact discovery, framing discovery requests, and identifying issues to investigate in depositions.
After collecting pertinent data, experts can interpret the facts and testify about them to a judge or jury. They can address unique questions or facts that are central to the issues in your case and help you quantify damages.
Keegan & Donato Consulting designs, executes, and analyzes trademark surveys for intellectual property law firms and their clients. We also provide the expert witness testimony you need to develop a powerful trademark dilution case strategy. Call us today at (914) 967-9421 to learn more about our services.