Lanham Act trademark tarnishment surveys can help ascertain whether an alleged trademark infringement is having a real world impact on consumers, and Keegan & Donato Consulting can help.
Keegan & Donato Consulting designs and executes consumer survey research studies and collaborates on a wide range of marketing and complex commercial litigation issues.
We have more than 25 years of experience in conducting consumer-based surveys in cases involving Lanham Act claims, likelihood of confusion, strength of mark, consumer perception, and a wide range of marketing and commercial litigation issues.
Dilution and Tarnishment
Prior to 1996, when the Federal Trademark Dilution Act (FTDA) (15 U.S. Code, Section 1125(c)) was enacted, there was no federal law that prohibited any type of trademark dilution. A U.S. Supreme Court decision, however, determined that, in order to prevail, owners of famous marks had to provide evidence of actual economic injury.
In 2006, Congress enacted the Trademark Dilution Revision Act (TDRA) to overturn the decision and amend Section 43(c) of the Lanham Act to define “dilution by blurring” and “dilution by tarnishment,” and clarify what makes a mark “famous.” The TDRA also provided additional remedies when an infringing party is found to have willfully intended to trade on the recognition of or damage the reputation of the famous mark.
Trademark dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
Dilution by tarnishment occurs when an infringing mark damages the reputation of a famous mark by using it in connection with goods or services of poor quality or of an unsavory nature that is likely to reflect adversely upon the trademark owner’s product, such as when selling sex-related products or in the context of drugs or crime.
For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942 (N.D. Ill. 2002), the plaintiff, manufacturer of Velveeta® brand cheese products and owner of the trademark since 1923, sued defendant Stuart Helm, who called himself “King VelVeeda,” a nickname he used on his adult-oriented website which also depicted drug use and paraphernalia, for trademark infringement and dilution.
The court found that the defendant had used the name “VelVeeda” in commerce and that the two similar marks would cause consumers to associate Velveeta® with the defendant’s offensive product, thereby tarnishing the Velveeta® mark and damaging its reputation. A preliminary injunction was entered in favor of the plaintiff.
Keegan & Donato Consulting’s litigation surveys have been accepted as evidence in matters involving a broad range of products and services. We also have extensive testimony experience.
Take advantage of our extensive experience in conducting trademark tarnishment surveys. Please contact us at (914) 967-9421 to find out more about how consumer data can help your case.