New Survey Methods May Assess TM Dilution With More Detail

Law360, 2020

In the field of intellectual property (IP) litigation, trademark infringement known as “dilution by blurring” occurs when two entities use similar marks and cause consumers to stop and think for a moment to determine which brand is represented. Such a delay may reflect a barrier to recognizing a trademark correctly. In dilution matters, a majority of courts have held that plaintiffs need only show that consumers associate the defendant’s mark with the plaintiff’s famous brand to prove infringement. Although most courts accept methods that establish association but not necessarily impairment, some have held that plaintiffs must also demonstrate impairment to a mark’s distinctiveness. A team of Analysis Group consultants has published an article in Law360 discussing two new survey-based experimental methods that assess whether alleged infringement actually negatively impacts consumers’ association with brands and causes them to prefer or favor a business or brand less.

In their article “New Survey Methods May Assess TM Dilution With More Detail,” Principal Rene Befurt, Manager Anne Cai, and Professor Joel H. Steckel of New York University (NYU) discuss two survey methods put forth by an NYU research team (which included Professor Steckel) to assess impairment caused by trademark dilution. One method measures strength of brand association, i.e., whether alleged infringement weakens consumers’ associations between a brand and its positive characteristics. The second method measures whether consumers’ brand preferences are adversely affected by the alleged infringement. Dr. Befurt, Ms. Cai, and Professor Steckel opine that these survey methodologies, if designed appropriately, may be more accurate and robust than the current standard in case law.

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Befurt R, Cai A, Steckel J