Consumer confusion and secondary meaning

Market Analysis                

• Judge Rules in favor of home appliance manufacturer in license dispute

False Advertising/Confusion

• Health products company succeeds in false advertising/trademark confusion case

Secondary Meaning

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

• Consumer confusion and secondary meaning established at trial

  Both Likelihood of Confusion and Secondary Meaning were issues in this case involving the Plaintiff’s nationally known brand of a Steak House restaurant, and the defendant’s restaurant, located in Park City Utah, a national destination ski resort. A nationally representative sample of the relevant population was taken to assess evidence on the issue of consumer confusion, and an intensive marketing audit of the plaintiff was conducted, following the criteria in Union Carbide Corp. v. Ever-Ready, Inc. to assess secondary meaning. Depositions were taken, and testimony in Federal Court followed. The judgment decree cited both the consumer data and marketing audit analysis as basis for the favorable rulings for our client on both issues.

Trademark Confusion

• Renamed professional association results in marketplace confusion

• Fashion knock-offs result in consumer confusion

• New brand introduction in healthcare industry results in consumer confusion

• Trade dress of over-the-counter dietary supplement blurs the distinction between house and national brands

Search Engine Issues

• Confusion due to search engine use of trademarked terms as keywords

• Contextual marketing practices confusing to consumers

Other Issues

• License-holder violates terms of license resulting in tarnishment of brand