Q: What are the legal issues that can be assessed via survey evidence?
A: Although not an exhaustive list of all legal issues, AMS regularly provides consumer surveys for cases involving:
- Secondary meaning: to assess whether relevant consumers associate a trademark or trade dress with a single source.
- Likelihood of confusion: to assess whether a defendant’s use of a mark causes relevant consumers to mistakenly believe that that it is from or affiliated with the plaintiff.
- Fame: to assess whether a mark is “famous.” That is, whether the mark is widely recognized by the general consuming public.
- Dilution: to assess whether a “famous” mark has been diluted. These surveys typically seek to assess whether relevant consumers associate unauthorized trademark use with the trademark owner’s products or services, but can also be used to determine whether the products or services sold using the allegedly infringing mark are perceived negatively within the marketplace.
- Genericness: to assess whether relevant consumers consider a mark to be a common or brand name/design.
- Deceptive advertising: to assess a consumer’s perception to advertising, packaging, and labeling.
- Materiality: to determine whether advertising messages are material to a consumer’s purchase decision.
- Patent infringement: to assess the value a consumer places on product features relating to the alleged infringed patents.
Q: Do you need to prove fame before you can test for dilution?
A: Yes, it us our understanding that dilution can only occur to marks that are “famous.” The Trademark Dilution Revision Act of 2006 defines a “famous mark” as one that is “widely recognized by the general consuming public of the United States [emphasis added] as a designation of source of the goods or services of the mark’s owner.” Marks that are “famous” can be protected from dilution. Although indirect evidence, such as sales figures or advertising expenditures, can be used to establish a mark’s fame, survey evidence may be the preferable method to establish fame because other forms of evidence don’t assess the “general consuming public.”
To learn more about surveys in trademark litigation, watch our webinar on demand