Alzheimer's Foundation of America v. Alzheimer's Disease and Related Disorders Association, Inc. et al
OPINION re: 225 MOTION to Compel Alzheimer's Disease and Related Disorders Association, Inc. to Produce Documents. filed by Alzheimer's Foundation of America, 202 MOTION to Compel Alzheimer's Foundation of A merica, Inc. to Produce Documents and Things. filed by Alzheimer's Disease and Related Disorders Association, Inc., 185 MOTION for Preliminary Injunction . filed by Alzheimer's Disease and Related Disorders Associa tion, Inc. Based upon the facts and conclusions of law set forth above, the Association's motion for a preliminary injunction isdenied. Both the Association's and the AFA's motions to compelare granted in their entirety. It is so ordered. (As further set forth in this Order.) (Signed by Judge Robert W. Sweet on 6/26/2015) (ajs)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
ALZHEIMER'S FOUNDATION OF AMERICA,
INC., d/b/a ALZHEIMER'S FOUNDATION,
10 Civ. 3314
- against OPINION
ALZHEIMER'S DISEASE AND RELATED
DISORDERS ASSOCIATION, INC.,
A P P E A RA N C E S:
Attorneys for the Plaintiff
MILLER & WRUBEL P.C.
570 Lexington Avenue
New York, NY 10022
Martin D. Edel, Esq.
Kerrin T. Klein, Esq.
THE INGBER LAW FIRM
374 Millburn Avenue, Suite 301
Millburn, NJ 07041
Mark J. Ingber, Esq.
Attorneys for the Defendants
BAKER & MCKENZIE LLP
452 Fifth Avenue
New York, NY 10018
John Basinger, Esq.
Lisa Rosaya, Esq.
Michael Atkins, Esq.
There are three motions pending between PlaintiffCounterclaim Defendant Alzheimer's Foundation of America, Inc.
(The "AFA") and Defendant-Counterclaim Plaintiff Alzheimer's
Disease and Related Disorders Association, Inc.
The Association has moved for a preliminary
injunction to prevent the AFA from purchasing Association-owned
trademark terms from any search engine provider and from
utilizing the phrases "Alzheimer's Foundation" and "an
association of care and support" in its advertising.
Association has also moved to compel the AFA to produce
documents that are relevant and material to the Association's
The AFA, in turn, has moved to compel the
production of documents relevant to the Association's claims and
the AFA's defenses, and to require the Association to identify,
by production number, documents that the Association asserts it
has produced in response to specified requests.
Based on the conclusions set forth below, the
Association's motion for a preliminary injunction is denied.
Both the Association's and the AFA's motions to compel are
granted in their entirety.
1. AFA's Claims Against The Association
The facts and prior proceedings regarding the
litigation of AFA's claims against the Association are set forth
in two prior decisions and orders of this Court dated May 25,
2011 and August 29, 2014, familiarity with which is assumed.
Alzheimer's Foundation of America, Inc. v. Alzheimer's Disease &
Related Disorders Association, Inc., 796 F. Supp. 2d 458
(S.D.N.Y. 2011); Dkt. No. 170.
On April 7, 2014, AFA moved for
reconsideration of the Court's dismissal of AFA's claims.
motion was denied on August 22, 2014.
Alzheimer's Foundation of
America, Inc. v. Alzheimer's Disease & Related Disorders
Association, Inc., No. 10 Civ. 3314, 2014 WL 4290455
Aug. 2 9, 2014)
2. The Association's Counterclaims Against AFA
On August 22, 2011, the Association filed an answer
and counterclaim in response to AFA's third amended complaint.
The Association filed an amended counterclaim ("AC") on
September 13, 2013.
On July 15, 2014,
the Association moved for a
On September 4, 2014, the Association
moved to compel AFA to produce documents relating to the
These two motions were heard and
marked fully submitted at the conclusion of the preliminary
injunction hearing on October 1, 2014.
On November 25, 2014, the Court stayed the
Association's motions for a preliminary injunction and to compel
discovery until the conclusion of mediation set to begin in
On February 10, 2015, the parties informed the
Court that the mediation had concluded without resolution of the
dispute and requested a lift of the stay, as well as permission
to submit supplementary briefing with respect to the
Association's preliminary injunction motion.
The parties each submitted supplementary memoranda
regarding the preliminary injunction on February 20, 2015.
The Association's motion was received in July but, due presumably to a
clerical error, appears on the docket in late August.
(See Dkt. Nos. 183,
The AFA's motion to compel was filed on March 10, 2015
and was marked fully submitted on April 1, 2015.
judicial mediation held on April 30, 2015 was unsuccessful,
necessitating the resolution of the pending motions.
1. The Association And Its Marks
The Association was formed in 1980.
John Basinger in Support of Association's Motion for Preliminary
Injunction, Dkt. No. 189 (the "Basinger Deel."), Ex. 53
Since that time, it has become the world's largest private
voluntary health organization in Alzheimer's care and support,
as well as the world's largest private non-profit Alzheimer's
The Association has a national office in
Chicago and more than 80 local chapters across the nation
providing services within each community.
(Basinger Deel. Ex.
lO(i)-(ii); Declaration of Angela Geiger in Support of
Association's Motion for Preliminary Injunction, Dkt. No. 190
(the "Geiger Deel."),
The Association owns numerous marks containing the
term "Alzheimer's Association," chief among which is ALZHEIMER'S
ASSOCIATION®, U.S. Reg. No. 2,850,223 (the "'223 Mark"), which
according to its filing covers a variety of services including
promoting the interests of those with neuro-degenerative brain
disease, charitable fundraising, medical research, and providing
information and support groups.
(Basinger Deel. Ex. 31.)
Association applied for the '223 Mark on September 3, 2002 and
the United States Patent and Trademark Office ("USPTO")
registered it on June 8, 2004.
The Association has been
using the '223 Mark and identifying itself by the two-word
moniker "Alzheimer's Association" since 1988.
The Association owns a number of other U.S.
registrations for marks containing the term "Alzheimer's
Association" which cover identical or closely-related services
to those enumerated in U.S. Reg. 2,850,223.
Basinger Deel. Exs. 31-35.)
The Association also owns WALK TO
END ALZHEIMER'S®, U.S. Reg. No. 4,122,255, and MEMORY WALK®,
U.S. Reg. No. 2,860,307
(together with the '223 Mark and WALK TO
END ALZHEIMER'S®, the "Association Marks").
(See Basinger Deel.
In its fiscal year ending June 30, 2013, the
Association raised $108,946,787 in contributions and grants.
(Basinger Deel. Ex. 55 at 1.)
The Association received
contributions and grants of $75.8 million in 2010, $86.1 million
in 2011, and $92.5 million in 2012.
(Basinger Deel. Ex. 56-58.)
The Association's MEMORY WALK® and WALK TO END
ALZHEIMER'S® marks refer to an event which raises awareness and
funds for Alzheimer care, support, and research.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?