Trademark dilution refers to acts by a second user that weaken the uniqueness of a famous trademark, generally due to blurring or tarnishment of the famous mark. Consumer recognition of a famous mark can be measured directly by a survey and Keegan & Donato Consulting can help.
What is Dilution?
As described by the International Trademark Association (INTA), “trademark dilution involves use of a mark in connection with goods or services that do not compete with those connected to the famous mark. For example, trademark dilution laws might prevent a harmonica maker from adopting a “Ferrari” mark on its products, even if no consumers would ever be confused about whether the harmonicas were made by or otherwise associated with the famous car company.”
Protection from Trademark Dilution
In 2006, Congress enacted the Trademark Dilution Revision Act (TDRA) which defined “dilution by blurring” and “dilution by tarnishment,” and clarified the factors that make a mark “famous.” It also provided for remedies if an infringing party is found to have willfully intended to trade on the recognition of or harm the reputation of the famous mark.
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.
Unfortunately, many surveys are found to be inadmissible, in part or in their entirety, or found to be not probative of the issue involved in the case. When this occurs, the court may afford them little or no weight as evidence. To avoid this serious pitfall and ensure that the survey can withstand the rigors of litigation, it is crucial to hire qualified survey experts.
If you are wondering whether you need qualified survey experts like Keegan & Donato Consulting to support your case, consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), in which the court excluded the evidence and testimony of all three of the plaintiff’s likelihood of confusion and dilution survey experts and two of the defendant’s three experts. The court deemed the surveys unreliable, plagued by significant methodological flaws, and determined that “any probative value was substantially outweighed by the danger of unfair prejudice and misleading the jury.”
How Keegan & Donato Consulting Can Help
Keegan & Donato Consulting works on behalf of both plaintiffs and defendants to provide research, analysis, affidavits, declarations and expert reports as needed in support of trademark infringement and trade-dress litigation, and has collaborated extensively on cases involving marketing, business and financial issues.
With Mr. Keegan’s experience in devising complex case strategies involving business, marketing, economics, and financial issues on behalf of his clients, and Mr. Donato’s experience in survey design and execution, research, strategy and data analysis, our clients benefit from our unique blend of strategic and analytical skills.
When the circumstances of your case call for a trademark dilution survey, Keegan and Donato Consulting can provide independent consumer-based research to strengthen your case. Contact us at (914) 967-9421 to take advantage of our expertise.