The interpretive nature of trademark related litigation as it correlates to issues such as public perception, confusion, dilution, and deception, can be highly problematic when attempting to prove or disprove the existence of a trademark infringement. Pursuant to 15 U.S.C 1127, commonly known as the Lanham Act, the term “trademark” is defined to include “any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.”


The standard used to evaluate a potential infringement, pursuant to 15 U.S.C. 1114, is whether or not the use or intended use of a particular “word, name, symbol, device, or any combination thereof” will cause confusion, mistake or deception. Determination as to the existence of such confusion, mistake or deception, and therefore possible infringement, presents a variety of issues requiring careful assessment of evidence either supporting or negating the presence or absence of infringing qualities.

Historically, quantitative analysis techniques, such as the use of surveys were utilized to present evidence of infringement. However, these surveys were often questioned in terms of face validity; construct validity; sample population; and legitimacy of results obtained from analytical inferences. More recently, technological advancements enabled investigation of trademark issues through comprehensive online research methods. However, like survey methodology, the use of such independent online research has resulted in a variety of evidentiary issues relating to accuracy, validation, interpretation, and credibility. With large amounts in controversy often at stake, the value of supporting evidence is critical to the potential outcome of a matter, and therefore is more aptly directed at a trademark expert witnesses who possesses the requisite level of skill, knowledge, and expertise applicable to the specific matter at hand.

Accordingly, trademark experts have undoubtedly become a palpable force in resolving litigated matters involving infringement through providing valuable evaluative insight to both judge and juror. These experts can provide the necessary interpretation of trademark related matters such as intellectual property, industry standard and/or standards of practice, advertising, trade dress, and damage assessment, to name a few, which can either support or negate the existence of an infringement. However, the necessity of such expert services often arises as a result of the failure to assess potential infringement issues prior to accruement of a cause of action. Consequently, the often overlooked use of trademark expert consultation has thereby created the presence of unnecessary litigation, which may have otherwise been avoidable through consideration of trademark expertise as an aforethought. These trademark consultants can also evaluate applications for trademark registration, or assist in determining the appropriate course of action when an application has been opposed, denied or otherwise placed under scrutiny prior to litigation.

The use of expert testimony during litigation is unquestionably crucial to trademark related litigation, however, through consideration of trademark expert consulting services as an aforethought, you may realize the benefit in such preliminary actions have resulted in avoiding costly litigation.

By: Alicia McKnight, J.D.