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Lanham Act Overview
According to the Lanham Act, any person who shall, without the consent of the registrant – use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive … shall be liable in a civil action by the registrant for the remedies hereinafter provided. This can lead to trademark infringement claims.
Further, any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person or with another person shall be liable in a civil action.
Types of Trademark Confusion
- Product (e.g. Rolac watches)
- Source (e.g. Rolex scarves)
- Sponsorship (e.g. Rolex on a car model)
- Initial interest (e.g. “buy Rolex’s here”)
- Post-sale confusion
- Reverse confusion
Typical Trademark Confusion Factors
- Strength of mark
- Similarity of marks
- Proximity of goods
- Actual confusion
- Marketing channels
- Types of goods and consumer care
- Defendant’s intent
- Likelihood of expansion in product lines
General Standards of Trademark Survey Admissibility
The Manual for Complex Litigation sets factors courts often consider when determining the admissibility of a survey:
- the population was properly chosen and defined
- the sample chosen was representative of that population
- the data gathered were accurately reported
- the data were analyzed in accordance with accepted statistical principles
- whether the questions asked were clear and not leading
- whether the survey was conducted by qualified persons following proper interview procedures
- whether the process was conducted to ensure objectivity
Fame Surveys and Trademark Dilution Claims
The owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who commences use of a mark in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark.
Elements of a Dilution Claim - (1) The plaintiff owns a famous mark that is distinctive; (2) The defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark; (3) The defendant’s use of its mark began after the plaintiff’s mark became famous, and; (4) The defendant’s use of its mark is likely to cause dilution by blurring or tarnishment
The Fame Standard - A mark is famous if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Dilution fame requires “more stringent showing” than fame for likelihood of confusion.
The Fame Factors - The duration, extent, and geographic reach of advertising and publicity of the mark; (2) The amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) The extent of actual recognition of the mark, and; (4) Whether the mark was registered.
Source of Goods - The mark must be widely recognized as a source designation, so the recognition cannot be derived from generic or descriptive properties, and it is not sufficient to show that respondents have heard the term before.
Sample questions for fame surveys:
- What is the first brand that comes to mind in X industry?
- What brand is the most recognizable in X industry?
- Have you seen this brand in the past month?
- Visual surveys: show respondents image and ask what brand comes to mind
Tarnishment and Blurring
After proving that its mark is famous, a plaintiff must prove that “the defendant’s use is likely to cause dilution by blurring or tarnishment. Tarnishment is the association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. It usually concerns unsavory associations with sex, drugs, or crime.Tarnishment is easier to prove than blurring, and generally does not require the use of surveys.
Blurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.
The Lanham Act sets forth nonexclusive six factor test for likelihood of dilution by blurring:
- The degree of similarity between the mark or trade name and the famous mark
- The degree of inherent or acquired distinctiveness of the famous mark
- The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark
- The degree of recognition of the famous
- Whether the use of the mark or trade name intended to create an association with the famous
- Any actual association between the mark or trade name and the famous
Rhonda Harper - Expert Witness
Rhonda Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys in cases involving trademark infringement claims. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and methodological pitfalls that introduce bias or systematic error.
Located in Dallas, TX, Rhonda Harper is a former Fortune 100 C-Suite Executive in marketing, branding, consumer research, strategy, licensing, and advertising. Also a former Adjunct Marketing Professor, she has been retained by more than 95 law firms since 2005. Harper has a focus on Trademark and Trade Dress Infringement, Misleading and Deceptive Advertising, Licensing, and Commercial Reasonableness cases. She has conducted 50+ intellectual property Lanham Act surveys, produced 75+ reports, been deposed 50+ times, and served in 20+ trials and arbitrations.