Allegation rests on secondary meaning

Market Analysis

Allegation of likelihood of confusion rests on erroneous assumption of secondary meaning of lapsed mark

This case involved an entertainment product that had resulted in licensed merchandise across numerous product categories. Following a brief period of market success the products essentially disappeared from the marketplace apart from a small group of devoted fans who traded in these “nostalgic” items. The original owner of the mark in seeking to revive the brand after more than 20 years alleged that Mind/Share’s client had introduced a confusingly similar brand into one of the previously licensed categories of product and that this behavior had prevented the re-introduction of the brand because of the likely confusion that would occur. As the essential argument hinged on an assumption of residual secondary meaning of the original mark, Mind/Share conducted a large-scale consumer survey demonstrating that the original mark in fact retained little if any secondary meaning. The case settled prior to trial.