Alzheimer's Foundation of America v. Alzheimer's Disease and Related Disorders Association, Inc. et al

Filing 234

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

--------------------------------------x
ALZHEIMER'S FOUNDATION OF AMERICA,
INC., d/b/a ALZHEIMER'S FOUNDATION,
Plaintiffs and
Counterclaim Defendant,
10 Civ. 3314
- against OPINION
ALZHEIMER'S DISEASE AND RELATED
DISORDERS ASSOCIATION, INC.,
Defendant and
Counterclaim Plaintiff.

--------------------------------------x
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
By:
Martin D. Edel, Esq.
Kerrin T. Klein, Esq.
THE INGBER LAW FIRM
374 Millburn Avenue, Suite 301
Millburn, NJ 07041
By:
Mark J. Ingber, Esq.

Attorneys for the Defendants
BAKER & MCKENZIE LLP
452 Fifth Avenue
New York, NY 10018
By:
John Basinger, Esq.
Lisa Rosaya, Esq.
Michael Atkins, Esq.

(RWS)

Sweet, D.J.

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.
"Association").

(The

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.

The

Association has also moved to compel the AFA to produce
documents that are relevant and material to the Association's
counterclaims.

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

Prior Proceedings

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.

That

Alzheimer's Foundation of

America, Inc. v. Alzheimer's Disease & Related Disorders
Association, Inc., No. 10 Civ. 3314, 2014 WL 4290455

(S.D.N.Y.

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
2

September 13, 2013.

On July 15, 2014,
preliminary injunction.

1

the Association moved for a

On September 4, 2014, the Association

moved to compel AFA to produce documents relating to the
Association's counterclaims.

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
early 2015.

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.

1

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,
185.)

3

-----------

------

--

The AFA's motion to compel was filed on March 10, 2015
and was marked fully submitted on April 1, 2015.

A subsequent

judicial mediation held on April 30, 2015 was unsuccessful,
necessitating the resolution of the pending motions.

Facts

1. The Association And Its Marks

The Association was formed in 1980.

(Declaration of

John Basinger in Support of Association's Motion for Preliminary
Injunction, Dkt. No. 189 (the "Basinger Deel."), Ex. 53

~

9.)

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
research funder.

The Association has a national office in

Chicago and more than 80 local chapters across the nation
providing services within each community.
53

~

(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."),

~

7(a) .)

The Association owns numerous marks containing the
4

--

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.)

The

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.

(Id.)

The Association has been

using the '223 Mark and identifying itself by the two-word
moniker "Alzheimer's Association" since 1988.

(Id.)

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.)

(See AC

~~

15-16;

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.

Exs. 34-35.)

In its fiscal year ending June 30, 2013, the
5

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.
<j[

7 (c).)

(Geiger Deel.

In 2013, more than 42,000 teams participated in nearly

650 walks across the United States, raising more than $55
million.

(Id.)

The Association has used the '223 Mark, as well as
other of the Association Marks, for over 25 years to promote and
market its services in outlets including printed publications,
various local and national TV and other media and, more
recently, via its Internet website www.alz.org, in order to
"build the Association's valuable reputation and increase its
recognition among consumers."

(Geiger Deel.

<j[<j[

4-6.)

In the

2013 fiscal year, the national Association expended $87.5
million on program activities, including more than $27 million
on public awareness and education.

6

(Geiger Deel.

<j[

6.)

2. The AFA And Its Marks

The AFA was founded in 2002 by a consortium of
organizations across the United States.
Complaint, Dkt. No. 47,

~

10.)

(Third Amended

In 2009, the AFA raised

$3,793,782 in contributions and grants, as compared to
$3,956,630 in 2011 and $5,566,367 in 2012.
40-42.)

(Basinger Deel. Exs.

Since its inception, the AFA has identified itself as

"Alzheimer's Foundation of America" or "AFA."
~~

3-5, 16, Ex. 2-4, 48.)

(Basinger Deel.

Until 2009, AFA rarely referred to

itself as "Alzheimer's Foundation" without also using the
geographical designator "of America."

In 2007, the Association and the AFA engaged in litigation
in Virginia state court, of which the Court has previously taken
judicial notice, concerning which entity was the intended
beneficiary of a gift from a trust where the trustee had made a
check out to "Alzheimer's Foundation" but sent it to the
Association at the Association's Chicago address.
Alzheimer's, 796 F. Supp. 2d at 468-69.

See

In 2009, in proceedings

in connection with that litigation, the AFA learned that donors
sometimes confuse the Association's name as "Alzheimer's
Foundation" and that the Association cashes those checks when
7

sent to its address or its lockboxes.
Dkt. No. 47,

~~

35-37.)

(Third Amended Complaint,

The AFA similarly received hundreds or

thousands of checks made out to "Alzheimer's Association" or
similar names.

(Basinger Deel.

~

17.)

terminated in early December 2009.

The proceedings

Alzheimer's, 796 F. Supp. 2d

at 469.

In late December 2009, AFA first began to register
"Alzheimer's Foundation" as an assumed name.
Ex. 4.)

(Basinger Deel.

At the same time, AFA filed for its first trademark

using the two-word moniker "Alzheimer's Foundation" without the
geographic designation "of America."

(Basinger Deel. Ex. 47.)

Up until this point, AFA had never previously registered
"Alzheimer's Foundation" as an assumed name, nor had it applied
for any trademarks using "Alzheimer's Foundation" without also
including "of America."

(See Basinger Deel. Exs. 43-46.)

In

its trademark filing, the mark disclaims any exclusive right to
"Alzheimer's Foundation" apart from the graphic mark and AFA did
not claim first use in commerce of that mark until October 2010.
(Basinger Deel. Ex. 47.)

On April 20, 2010, AFA commenced the instant lawsuit,
claiming that the Association infringed AFA's marks by cashing
8

checks bearing the word "Foundation" or an abbreviation in the
payee line and setting forth other causes of action.
generally Complaint, Dkt. No. 1.)

(See

Ten days later, on April 30,

2010, AFA filed an assumed name application in New York, where
AFA is headquartered, for the name "Alzheimer's Foundation."
(Basinger Deel. Ex. 4 at 15-19.)

The AFA claimed that it was entitled to "thousands of
checks" that had been sent to the Association that contained the
word "Foundation" or an abbreviation (see FAC 'll'll 7, 53, 72) and
sought $50 million in punitive damages.

(FAC

<JI

92.)

Around the

same time, AFA was conducting internet search engine advertising
campaigns purchasing the Association's trademarked names and
events as keywords, causing its name to appear in the sponsored
ad section of internet search result pages which were generated
by user internet searches for "Alzheimer's Association," "Memory
Walk," and other Association trademark terms.
<j[<j[

6-8.)

(Basinger Deel.

The AFA appears to have used its "Alzheimer's

Foundation" graphic mark only in two small advertisements that
appeared in the Fall 2010 and Spring 2011 issues of its own Care
Advantage magazine.

(Basinger Deel.

<JI

16.)

On June 17, 2014, the Association contacted the AFA, noting
9

that it had "recently come to [the Association's] attention"
that AFA had engaged on an online advertising campaign which
involved, among other things, the purchase from Google and other
internet search providers keywords that used the Association's
'233 Mark and other marks, in order to trigger search results
that displayed ads and text identifying the AFA as "Alzheimer's
Foundation" with the first line of body text beginning "An
Association of Care and Support."

(See Basinger Deel. Ex. 49.)

The AFA agreed to discontinue the use of the phrase
"Association" in the content of its ads, but declined to cease
the purchase of Association marks as keywords.

(Basinger Deel.

Ex. 50.)

On July 8, 2014, counsel for the Association reviewed
the AFA's trademarks and applications through the USPTO online
trademark status and document retrieval system, as well as
appended documents, and noticed that a specimen submitted by the
AFA appeared to omit the words "of America" in a space where it
would otherwise have been visible.

At the preliminary

injunction hearing, Kristen Ann Traina, the attorney who
submitted the application on the AFA's behalf, testified that
the omission was a mistake and that she promptly corrected it
after discovery by attaching a specimen evidencing use in
10

commerce of "Alzheimer's Foundation" by the AFA.

(Transcript of

September 30, 2014 Preliminary Injunction Hearing, Dkt. No. 214,
at 4:19-37:12; Declaration of Mark J. Ingber in Opposition to
Motion for Preliminary Injunction, Dkt. No. 196 (the "Ingber
Deel."),

~~

5-11.)

As noted above, the Association filed for a
preliminary injunction on July 15, 2014.

Hearings on the motion

were held on September 15, September 30, and October 1, 2014,
during which both organizations put forward fact witnesses.
Over the following months, the organizations attempted to solve
their dispute via mediation, first privately and then with the
assistance of the Court.

Those efforts failed,

leading to this

Opinion on the motion's merits.

Applicable Standard

Preliminary injunctions are "extraordinary and drastic
remed[ies] that should not be granted unless the movant, by a
clear showing, carries the burden of persuasion."
Armstrong, 520 U.S. 968, 972

(1997).

Mazurek v.

A party seeking a

preliminary injunction must establish, in addition to a showing
of likelihood of success on the merits, that
11

(1)

"he is likely

to suffer irreparable injury in the absence of an injunction;"
(2) "remedies available at law, such as monetary damages, are
inadequate to compensate for that injury;" (3) the balance of
hardships tips in his favor; and (4) "the 'public interest would
not be disserved' by the issuance of a preliminary injunction."
Salinger v. Colting, 607 F.3d 68, 80 (2d Cir. 2010)

(citing

eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391

(2006));

see also New York City Triathlon LLC v. NYC Triathlon Club,
Inc., 704 F. Supp. 2d 305, 328
standard to trademark case).

(S.D.N.Y. 2010)

(applying eBay

When a party is seeking a

preliminary injunction that will alter, rather than maintain,
the status quo, it is required to show "a clear or substantial
likelihood of success," Sunward Elecs., Inc. v. McDonald,
F.3d 17, 24

362

(2d Cir. 2004).

With respect to discovery disputes, district courts
have broad discretion in deciding motions to compel.
Cent. P'ship. Inc. v. Cuomo, 166 F.3d 473,

488

See Grand

(2d Cir. 1999).

Federal Rule of Civil Procedure 26 states:

Parties may obtain discovery regarding any
nonprivileged matter that is relevant to any
party's claim or defense--including the existence,
description, nature, custody, condition, and
location of any documents or other tangible things
and the identity and location of persons who know
12

of any discoverable matter.
For good cause, the
court may order discovery of any matter relevant
to the subject matter involved in the action.

Fed. R. Civ. P. 26.

If a party objects to discovery requests,

that party bears the burden of showing why discovery should be
denied.

Freydl v. Meringolo, No. 09 Civ. 07196 (BSJ) (KNF), 2011

WL 2566087, at *3 (S.D.N.Y. June 16, 2011).

Specifically, the

resisting party must show how, "despite the broad and liberal
construction afforded the federal discovery rules, each request
is not relevant, or how each request is overly broad,
burdensome, or oppressive, by submitting affidavits or offering
evidence revealing the nature of the burden."

Sokol v. Wyeth,

Inc., No. 07 Civ. 8442, 2008 WL 3166662, at *3 (S.D.N.Y. Aug. 4,
2008) .

I.

The Association's Motion For A Preliminary Injunction Is
Denied

a. Likelihood Of Success On The Merits

The Association has alleged claims against AFA under
Section 43(a) of the Lanham Act, which protects trademark
holders from unfair infringement.

In specific, Section 43(a)

prohibits the use in commerce of any word, term, name, symbol,
13

device, or combination thereof that:

is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection,
or association of such person with another person,
or as to the origin, sponsorship, or approval of
his or her goods, services, or commercial
activities by another person .

15 U.S.C. §§ 1125 (a) (1)

&

(a) (1) (A).

Section 32 of the Lanham

Act provides that:

(1) Any person who shall, without the consent of
the registrant(a) use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale .
of any goods or services on or in connection with
which such use is likely to cause confusion, or to
cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably
imitate a registered mark and apply such .
. to
labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used
in commerce upon or in connection with the sale .
. of goods or services on or in connection with
which such use is likely to cause confusion, or to
cause mistake, or to deceive, shall be liable in a
civil action .

15

u.s.c.

§

1114.

In order to prevail in an action for

trademark infringement under Sections 32 and 43(a), a party must
establish:

(1) that its mark is entitled to protection, and (2)

that the defendant's mark is likely to cause confusion as to the
14

origin or sponsorship of the product at issue.

See 15 U.S.C. §

112 5 (a) ( 1) (A) ; see also Rescuecom Corp. v. Google,

Inc., 5 62

F.3d 123, 128 (2d Cir. 2009); Virgin Enters. v. Nawab, 335 F.3d
141, 146 (2d Cir. 2003).

In some fact situations, as in those

found here, the Court must also examine whether the defendant's
use of a plaintiff's mark constitutes a "use in commerce" under
the Lanham Act.

Rescuecom, 562 F.3d at 128, 130.

With respect to the first inquiry, under 15 U.S.C.

§

1057(b), a certificate of registration of a mark on the USPTO
Principal Register is prima facie evidence of the validity of
the mark and its registration, as well as the registrant's
ownership and exclusive right to use the mark in commerce.

See

Dress for Success Worldwide v. Dress 4 Success, 589 F. Supp. 2d
351, 358

(S.D.N.Y. 2008)

("A mark is presumed to merit

protection when the plaintiff has a valid registered trademark."
(citation omitted)).

The Association has represented, and the

AFA has not disputed, that the ALZHEIMER'S ASSOCIATION® mark and
the other Association Marks are registered on the Principal
Register, and that the registrations are owned by the
Association.

As such, the first prong is satisfied and the

marks are entitled to protection against infringement.

15

With respect to whether the AFA's purchase of the
Association's Marks as keywords constitutes a "use in commerce"
under the Lanham Act, the Second Circuit has definitively stated
that it does.

In Rescuecom, the Court explained:

We did not imply .
. that an alleged
infringer's use of a trademark in an internal
software program insulates the alleged infringer
from a charge of infringement, no matter how
likely the use is to cause confusion in the
marketplace.
If we were to adopt Google and its
amici's argument, the operators of search
engines would be free to use trademarks in ways
designed to deceive and cause consumer
confusion.
This is surely neither within the
intention nor the letter of the Lanham Act.

Rescuecom, 562 F.3d at 130.

Moreover, in a recent decision in

this Circuit, the Honorable Gabriel W. Gorenstein found no
"meaningful difference" between a search engine's act of selling
to an advertiser and the advertiser's action in purchasing the
benefit from the use of a trademark.

LBF Travel, Inc. v.

Fareportal, Inc., No. 13 CIV. 9143 LAK GWG, 2014 WL 5671853, at
*7 (S.D.N.Y. Nov. 5, 2014).

Judge Gorenstein wrote that both

the search engine and the advertiser "have 'used' the trademark
in the same way by engaging in a commercial transaction - the
search engine as the seller and the advertiser as the purchaser
- to produce a display of search result advertisements that
derives from the use of a trademark."
16

Id.

Although the AFA's purchase of the Association's trademarks
in search engine advertising does qualify as use in commerce,
using another company's trademark in commerce is not in itself a
violation of the Lanham Act.

See Rescuecom, 562 F.3d at 130

("Needless to say, a defendant must do more than use another's
mark in commerce to violate the Lanham Act.

The gist of a

Lanham Act violation is an unauthorized use, which is likely to
cause confusion .

." (internal quotations omitted)).

Companies can and do regularly purchase other companies' marks
as search keywords and use those companies' trademarks in the
text of their search advertising in order to draw a contrast
with the searched-for product and offer their own as an
alternative.

For instance, a Yahoo! search for the term "Honda

Civic" brings up ads linking to websites from Hyundai,
Volkswagen, and Toyota, comparing the Civic to their cars and
suggesting that the consumer purchase an Elantra, Jetta, or
Corolla instead.

Although such advertisements use trademarked

terms in commerce and are geared toward increasing the ad
buyer's business at the trademark holder's expense, they do not
implicate the Lanham Act because they draw a clear distinction
between the products and do not imply the trademark holder's
sponsorship or approval.

While use of a trademark in commerce
17

is a key element of a Lanham Act violation, a defendant is only
liable "when a trademark holder can establish that the use of
its trademark by another is likely to confuse consumers as to
the source of the product."

Home Box Office, Inc. v.

Showtime/The Movie Channel Inc., 832 F.2d 1311, 1314
1987).

(2d Cir.

Put simply, the AFA's purchase of the Association's

trademarks only violates the Act if the advertisements are
likely to cause confusion.

Federal courts determine whether a mark is likely to
cause confusion in the marketplace based on an assessment of
various points of consideration, commonly referred to as the
Polaroid factors.

These factors include:

the plaintiff's mark,
competing marks,

(i) the strength of

(ii) the degree of similarity between the

(iii) the proximity of the products,

likelihood that the prior owner "will bridge the gap,"
actual confusion,

(vi) defendant's good faith,

(iv) the
(v)

(vii) the quality

of defendant's product, and (viii) the sophistication of the
consumers.

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d

492, 495 (2d Cir. 1961); see also Merck & Co., Inc. v. Mediplan
Health Consulting, Inc., 425 F. Supp. 2d 402, 411
2006).

(S.D.N.Y.

Although the Second Circuit has not yet explicitly

adopted an approach for determining the issue of consumer
18

confusion when a competitor uses a trademark to purchase
keywords, the majority of courts at the district level appear to
apply the Polaroid factors or their Circuit's equivalent.

See

CJ Prods. LLC v. Snuggly Plushez LLC, 809 F. Supp. 2d 127, 15859 (E.D.N.Y. 2011).

In principal, the Court "must focus on the

ultimate question of whether consumers are likely to be
confused."

i.

Merck, 425 F. Supp. 2d at 411.

Strength Of The Mark

"The strength of a trademark is assessed with
reference to its distinctiveness," Pretty Girl, Inc. v. Pretty
Girl Fashions, 778 F. Supp. 2d 261, 267

(E.D.N.Y. 2011), and

registered marks enjoy "a conclusive presumption of
distinctiveness."
(2d Cir. 2004).

Savin Corp. v. Savin Grp., 391 F.3d 439, 457
Additionally, "[u]nder the Lanham Act, when a

registered mark has been in continuous use for five consecutive
years it becomes incontestable," Dress for Success, 589 F. Supp.
2d at 358 (quotation omitted).

The ALZHEIMER'S ASSOCIATION®

mark has been used since 1988 and has been registered with the
USPTO since June 2004.

(Basinger Deel. Ex. 31.)

The WALK TO

END ALZHEIMER'S® and MEMORY WALK® marks are both registered and
have been continuously used by the Association for over five
19

consecutive years.

(Basinger Deel. Exs. 31-35.)

As such, the

first Polaroid factor weighs strongly in the Association's
favor.

ii.

Similarity Of Marks

In the search engine keyword context, the Court's inquiry
must differ slightly from the typical application of second
Polaroid factor.

In examining the similarity of the marks, the

Court must consider the similarity between a plaintiff's service
mark and the defendant's advertisements appearing on the searchresults page.

CJ Prods., 809 F. Supp. 2d at 159 (citing 1-800

Contacts, Inc. v. Lens.com, Inc., 755 F. Supp. 2d 1151, 1175 (D.
Utah 2010)).

The Association has submitted numerous search

engine screen shots that display ads for AFA resulting from a
search of the term "Alzheimer's Association."

In the "organic,"

meaning non-paid-for, search results, AFA's website appears as
"Alzheimer's Foundation of America."

By contrast, in the paid

ad resulting from a search of the term "Alzheimer's Association"
the AFA's website is marketed with the two-word moniker
"Alzheimer's Foundation."

The website URLs are also very

similar - www.alz.org versus www.alzfdn.org.

While the websites

are not similar in appearance, as has been the case in other
20

litigation, see, e.g., CJ Prods., 809 F. Supp. 2d at 159, AFA's
ad has a strongly similar aesthetic to that of the Association's
organic search engine listing, which appears to be purposeful,
given the fact that AFA's organic search engine listing still as
of February 2015 refers to AFA by its full name: Alzheimer's
Foundation of America.

iii.

(See Ass'n Suppl. Mem. at 4.)

Competitive Proximity

This factor turns on "whether the products are in
competition with each other in the marketplace."
F. Supp. 2d at 154

CJ Prods., 809

(citing Cadbury Beverages, Inc. v. Cott

Corp., 73 F.3d 474, 480 (2d Cir. 1996)).

Although the

Association and AFA perform different functions and focus on
different areas of advocacy

AFA focuses on aid to caregivers

while the Association focuses on research as well as direct
services (AFA Suppl. Mem. at 2) - both organizations are
charities serving a donor community with an interest in
Alzheimer's disease.

As such, they can be said to be in direct

competition and this factor favors the plaintiff's likelihood of
success on the merits.

iv.

"Bridging The Gap"
21

"This factor concerns the likelihood that a plaintiff that
is not in direct competition with the defendant at the time a
suit is brought will later expand the scope of its business so
as to enter the defendant's market."
2d at 268.

Pretty Girl, 778 F. Supp.

This factor is not relevant in the instant case as

the parties appear to operate in the same market.

v.

Actual Confusion

Generally speaking, "a likelihood of confusion is
actionable even absent evidence of actual confusion," 1-800
Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d 467, 491 (S.D.N.Y.
2003), rev'd on other grounds, 414 F.3d 400

(2d Cir. 2005),

since "actual confusion is very difficult to prove and the Act
requires only a likelihood of confusion as to source" Lexington
Mgmt. Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271,
287

(S.D.N.Y. 1998).

As an initial matter, the AFA has previously conceded that
actual confusion exists between the terms "Alzheimer's
Association" and "Alzheimer's Foundation."
22

In its Second

Amended Complaint, the AFA alleged that the similarity between
its trademarks and those of the Association, combined with the
Association's actions in accepting checks made out to the
Alzheimer's Foundation, "have resulted in a likelihood of
confusion in commerce, whereby numerous ordinary prudent donors
have been, and are likely to be, misled into believing that the
Association and the Foundation are the same organization."
(Second Amended Complaint, Dkt. No. 40,

~

60.)

Such statements

made in earlier pleadings can be considered against the parties
who filed them.
1984).

See U.S. v. McKeon, 738 F.2d 26, 31 (2d Cir.

Additionally, the parties point out that checks intended

for the AFA or Alzheimer's Foundation are received by the
Association (First Amended Complaint, Dkt. No. 13,

~~

49-53) and

that checks intended for the Association are received by the AFA
(Basinger Deel.,

~17).

The scale of the confusion is unclear,

however; although the Association argues that documents produced
by the AFA show that "hundreds or thousands of checks" intended
for the Association were ultimately received by the AFA (Id.),
the Association did not include any portion of the documents in
its papers or introduce them at the preliminary injunction
hearing.

It is thus difficult for the Court to determine if the

actual confusion is significant or de minimis.

Cf. Nora

Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 115, 124
23

(2d Cir. 2001).

The Association has also been unable to demonstrate
significant actual confusion as a result of the AFA's internet
advertising practices, or any intentional deception.

Unlike in

other cases such as CJ Products, where parties provided evidence
such as a review of website visitor data or customer reviews
complaining of confusion in the competing websites and products,
the Association has failed to causally link AFA's purchase of
Association trademark terms and use of a two-word designation
with actual consumer confusion.

The evidence offered by the Association of actual confusion
from the AFA's internet advertising is scant at best.

In its

briefing, the Association points to a declaration from Meika
Slotsema, its Estates and Trusts lawyer, stating that she
received phone calls from an accountant in Chicago who intended
to direct funds to the Association on behalf of a deceased
client, but was confused by AFA's presence on internet search
results.

(Affidavit of Meika Slotsema, Dkt. No. 187,

~~

3-4.)

Ms. Slotsema also testified at the preliminary injunction
hearing, estimating that she received similar calls "a couple of
times a week," and that some of those calls came from persons
24

confused by internet searches.
214, at 41, 52.)

(Hearing transcript, Dkt. No.

However, inquiries about the relationship

between an owner of a mark and an alleged inf ringer do not
amount to actual confusion.

Nora Beverages, 269 F.3d at 124.

In fact, they arguably demonstrate a lack of confusion because
the consumer was put on sufficient notice to ask the question.
Id.

The Association also puts forward a declaration by Brigitte
Lee, an administrative assistant at the Association, who had a
family friend who clicked on the AFA's link while Ms. Lee was
attempting to direct her to the Association's website,
www.alz.org, for information about Alzheimer's disease.
(Declaration of Brigitte Lee, Dkt. No. 188,

~

2.)

Christine

Foh, the Association's general counsel, testified at the hearing
regarding an incident where an obituary was published requesting
donations to the Association, prompting mourners to send in a
number of checks accompanied by forms that had been downloaded
from the AFA's website.

When Ms. Foh called up one of the

donors to ask why the AFA's form accompanied her donation, the
donor replied, "I typed your name in the search bar and I
clicked on the first name that came up and I downloaded the form
and filled it out."

(Hearing Transcript, Dkt. No. 212, at 1825

20.

Ms. Foh testified that similar incidents happen "on a

regular basis."

(Id. at 20.)

The evidence of actual confusion offered by the Association
amounts to a small handful of anecdotes, accompanied by
assertions that they are representative of a larger number of
incidents.

This showing is insufficient to establish the

presence of actual confusion, particularly when weighed against
the nearly $100 million in successful donations that the
Association receives annually (Geiger Deel., Docket No. 190,
~8).

See Nora Beverages, 269 F.3d at 124; C.L.A.S.S.

Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 18

(2d

Cir. 1985); Real News Project, Inc. v. Independent World
Television, Inc., No. 06 Civ. 4322, 2008 WL 2229830, at *17-18
(Lynch, J.) .

In the website context, courts have applied the doctrine of
initial interest confusion, "which posits that a likelihood of
confusion can arise when 'a consumer who searches for the
plaintiff's website with the aid of a search engine is directed
instead to the defendant's site because of a similarity in the
parties' website address.'"

CJ Prods. 809 F. Supp. 2d at 160

(quoting Savin, 391 F.3d at 462 n. 13.).
26

Even if the customer

quickly becomes aware of the competing source's actual identity
and can rectify the mistake, the damage to the first user may
already have been done.

See BigStar Entmn't, Inc. v. Next Big

Star, Inc., 105 F. Supp. 2d 185, 207

(S.D.N.Y. 2000).

However,

because consumers who are diverted on the Internet can more
readily get back on track if they notice a discrepancy, the
initial interest doctrine generally requires "a showing of
intentional deception."

Savin, 391 F.3d at 462 n. 13.

The Association has not solidly established
intentional deception for the purposes of the initial interest
doctrine.

Unlike in CJ Products, where the defendants both

employed a color and format on their copycat website
substantially similar to that of the plaintiff's and prominently
featured the plaintiff's trademark, the AFA's website is
distinct from the Association's in both content and
presentation.

The Association has alleged bad faith on the part

of the AFA, both in asserting that the AFA purposely began using
the two-word designation "Alzheimer's Foundation" in
anticipation of litigation with the Association and in asserting
that the AFA made a false representation to the USPTO regarding
its use of the two-word designation.
Suppl. Mem. 2-3.)

(Ass'n Mem. 6; Ass'n

Such practices are placed in sharp relief
27

when reviewing over four years of litigation by AFA in which the
primary complaint was confusion between the two charitable
organizations.

However, while intentional deception might be

implied, it is not firmly enough established to demand the
determination that this critical factor weighs in the
Association's favor.

In sum, although some amount of actual confusion from the
two-word designation has been conceded by the AFA, the
Association has not established at this point that the scale of
that confusion is significant.

It has also failed to establish

any actual confusion stemming from the AFA's internet search
engine advertising practices, or to show the intentional
deception needed to prevail under the initial interest doctrine.

vi.

AFA's Good Faith

As noted above, the Association has put forward a
suspicious, though inconclusive, timeline of AFA's use of the
two-word designation "Alzheimer's Foundation" as evidence of bad
faith.

The timeline laid out by the Association, taken with the

AFA's selective, advertising-only use of two-word moniker
"Alzheimer's Foundation," is certainly dubious.
28

While bad faith

may not be sufficiently established for purposes of the initial
interest doctrine, it can be said to weigh at least somewhat in
the Association's favor in the Polaroid analysis.

vii.

Quality Of AFA's Product

The Association has made no serious argument against the
quality of the AFA's efforts against Alzheimer's Disease,
choosing instead to merely affirm the quality of its own.
Ass'n Mem. 17).

(See

Thus, this factor weighs somewhat in the AFA's

favor, although the quality of a defendant's product is less
important in determining customer confusion at the preliminary
injunction stage.

viii.

CJ Prods., 809 F. Supp. 2d at 156.

Sophistication Of The Consumer

"This factor examines the extent to which a buyer
evaluates a product before purchase."

Id. at 155.

It is

assumed that highly trained professionals are less likely to be
misled, while ordinary consumers are not assumed to exercise the
same level of care as professional, trained buyers.

See Kraft

Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123,
133 (S.D.N.Y. 1993); Pretty Girl, 778 F. Supp. 2d at 268-70.
29

It is difficult, as the Association admits (see Ass'n
Mem. 17), to broadly characterize the sophistication of
consumers in this case, the donors or potential donors to
Alzheimer's charities and consumers of Alzheimer's support
services.

However, common sense dictates that a large number of

donors are ordinary citizens seeking to give money to
Alzheimer's-related research because Alzheimer's has somehow
touched their lives, or are friends or family members seeking
help dealing with a loved one's condition.

Some consumers may

even have diminished capacity as they struggle with the early
stages of the disease.

Furthermore, there is a long history of

litigation over checks made out to an incorrect payee in the
instant case.

As such, this factor can be said to weigh in

favor of the Association.

ix.

Conclusion

Taken together, most factors are either neutral or
weigh in the Association's favor, although the weakness of its
case for actual confusion casts some doubt the strength of the
evidence it will ultimately put forward.

Since the Association

is seeking an injunction that will alter, rather than maintain,
the status quo, it is required to show "a clear or substantial
30

likelihood of success," Sunward Elecs., Inc. v. McDonald, 362
F.3d 17, 24

(2d Cir. 2004), a higher showing than the likelihood

of success on the merits required under the traditional
preliminary injunction standard.

While the Association's case

is persuasive, and there is a real possibility that it will
prevail on its claims, at this stage it has not made a showing
sufficient to meet this bar.

b. Irreparable Harm

"Irreparable harm exists in a trademark case when the party
seeking the injunction shows that it will lose control over the
reputation of its trademark pending trial because loss of
control over one's reputation is neither calculable nor
precisely compensable."

N.Y. City Triathlon, LLC v. NYC

Triathlon Club, Inc., 704 F. Supp. 2d 305, 343 (S.D.N.Y. 2010)
(citation omitted).

In cases like the one here, "damage to [a

plaintiff's] goodwill and reputation cannot be quantified, as it
is unknown how many potential customers plaintiffs will lose
from their loss of reputation and goodwill due to consumers
confusing their products with defendant's products."

CJ Prods.,

809 F. Supp. 2d at 156; see also Pretty Girl, 778 F. Supp. 2d at
270-71.

However, conclusory statements of loss of reputation
31

will not justify an irreparable harm finding.
Players Ass'n v. N.F.L. Props., Inc., No.
19 91 WL I 9 3 2 5'

at * 4

( s. D. N.

y.

See N.F.L.

90 Civ. 4244

(MJL),

May 7' 19 91) .

As noted above, the Association has not adequately
demonstrated actual confusion between the two charities as a
result of the purchase of its trademark terms and use of the
two-word designation "Alzheimer's Foundation" in web
advertising.

Nor has the Association shown irreparable harm

from the Foundation's use of the word "association" in
advertising which, as of the time that the preliminary
injunction was filed, AFA represented it had discontinued.
Declaration of Bert E. Brodsky, Dkt. No. 193,

~~

24-26.)

(See
The

Association's claim for irreparable harm is further undercut by
its impressive growth in revenue over the past few years.
Ass'n Mem. 4; Geiger Deel.

~

(See

8, Exs. 55-58.)

Additionally, "[s]ignificant delay in applying for
injunctive relief in a trademark case tends to neutralize any
presumption that infringement alone will cause irreparable harm
pending trial, and such delay alone may justify denial of a
preliminary injunction for trademark infringement."
N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985).
32

Citibank,
Any

presumption of irreparable harm "is inoperative if the plaintiff
has delayed either in bringing suit or in moving for preliminary
injunctive relief."

Marcy Playground, Inc. v. Capitol Records,

Inc., 6 F. Supp. 2d 277, 282

(S.D.N.Y. 1998).

In this case, the

Association has known of the AFA's use of the two-word
designation "Alzheimer's Foundation" since at least 2010.
generally AC; Ass'n Mem. at 7.)

(See

It also, due to discovery in

this case, has apparently known since at least 2012 that AFA was
purchasing Association trademark keywords from search engines.
(Ingber Deel.

~~

13-15.)

Although what appears to have sparked

the Association to action was a new AFA advertising campaign
which displayed ads, triggered by searches for the Association's
Marks, which included the language "An Association of Care and
Support," the AFA has discontinued that language, and the
remaining behavior complained of has been known to the
Association for years.

"Preliminary injunctions are generally granted under the
theory that there is an urgent need for speedy action to protect
the plaintiff's rights.

Delay in seeking enforcement of these

rights, however, tends to indicate at least a reduced need for
such drastic, speedy action.

While delay does not always

undermine an alleged need for preliminary relief, months-long
33

delays in seeking preliminary injunctions have repeatedly been
held by courts in the Second Circuit to undercut the sense of
urgency accompanying a motion for preliminary relief."

Silber

v. Barbara's Bakery, Inc., 950 F. Supp. 2d 432, 439 (E.D.N.Y.
2013)

(quotation omitted).

Given the years that have passed

since the Association became aware of the AFA's use of the twoword designation and its subsequent search engine advertising
campaigns, as well as the Association's tremendous growth in
donation revenue during that time, its application for a
preliminary injunction is entirely lacking in urgency.

c. Absence Of Remedies At Law

Because the losses of reputation and goodwill and resulting
loss of customers are not precisely quantifiable, remedies at
law generally cannot adequately compensate a trademark plaintiff
for its injuries. See Mrs. U.S. Nat'l Pageant, Inc. v. Miss U.S.
Org., LLC, 875 F. Supp. 2d 211, 231

(W.D.N.Y. 2012)

(citing Koon

Chun Hing Kee Soy & Sauce Factory Ltd. v. Kun Fung USA Trading
Co. Inc., No. 07-CV-2568, 2012 WL 1414872, at *5 (E.D.N.Y. Jan.
20, 2012)).

If the Association ultimately succeeds in proving

that AFA's actions have infringed on its trademarks and damaged
its brand, it will be difficult to put a dollar value on the
34

damage, leaving it without an adequate remedy at law.

d. The Balance Of Hardships

In deciding a preliminary injunction motion, a court "must
balance the competing claims of injury and consider the effect
of granting or withholding the requested relief."
N.R.D.C., 555 U.S. 7, 24

(2008).

Winter v.

A preliminary injunction may

not issue unless the movant clearly shows that the balance of
equities is in its favor.

Litwin v. OceanFreight, Inc., 865 F.

Supp. 2d 385, 401 (S.D.N.Y. 2011).
The parties devote little attention to this issue in their
briefing.

The Association argues that AFA's continued use of

the term "Alzheimer's Foundation" and purchase internet
advertising related to the Association will harm the
Association's brand in ways that "likely cannot be undone."
(Ass'n Mem. at 21.)

The Foundation makes a similar argument,

declaring that if it were to stop referring to itself by the
two-word name or cease purchasing its targeted keywords, it
would suffer "fundamental changes to [its] marketing and
recognition among donors."

(AFA Mem. at 24.)

The AFA has the better of the arguments, but only
marginally.

Since the purchase of targeted keywords is
35

invisible to the consumer and the AFA could achieve somewhat
similar search results without purchasing the Association's
marks as keywords, it is difficult to say that the AFA would
suffer significant hardship if it were forced to discontinue
purchasing those specific keywords.

The question of the damage

to the parties' brands caused by the use of the term
"Alzheimer's Foundation" is a closer one.

The hardship that the

Association would suffer from the AFA's continued use of the
term between now and trial is more speculative, particularly
given the lack of clear evidence of significant confusion among
donors and the Association's impressive fundraising growth in
the last few years.

(See Geiger Deel. Ex. 56-58 11. 8.)

e. The Public Interest

"In exercising their sound discretion, courts of equity
should pay particular regard for the public consequences in
employing the extraordinary remedy of injunction."
U.S. at 24
312 (1982))

Winter, 555

(quoting Weinberger v. Romero-Barcelo, 456 U.S. 305,
This case presents a unique set of circumstances

where the public interest is harmed not by the conduct of one
party or another, but by continuation of the litigation itself.
The parties in this case are two legitimate and respected
36

charities working to combat a cruel disease that robs its
victims of their cognitive ability and sense of self.

Their

work is both admirable and desperately needed, yet in this
litigation they are spending immense financial resources in
order to gain an entirely speculative edge in fundraising.

This

serves neither their constituencies' interests nor that of the
public at large.
But for the parties' intransigence and inability to find
common ground, resources expended on discovery, summary judgment
motions, trial, and appeals would be directed toward providing
care and support to people suffering from Alzheimer's Disease,
or toward research that might make progress on finding a cure.
The expense is particularly frustrating because the applicable
law provides an outline for how the parties can peacefully
coexist.

Since the use of another company's trademark in

commerce does not off end the Lanham Act absent consumer
confusion, see Rescuecom, 562 F.3d at 130, and the Association
does not contend that the terms "Alzheimer's Federation of
America" or "AFA" cause confusion (See Ass'n Mem. at 5-7, 22),
it takes little imagination to arrive at an outcome where the
AFA can continue its online outreach without engaging in conduct
the Association would view as confusing the public.

Regardless

of the merits of the parties' claims, therefore, to the extent
37

that issuance of a preliminary injunction might push them to
resolve their dispute now rather than litigate further,

the

public interest weighs in favor of granting the Association's
motion.

See John M. Newman, Raising the Bar and the Public

Interest: On Restraints, "Traditional Contours," and
Constitutionalizing Preliminary Injunctions in Copyright Law, 10
Va. Sports & Ent. L.J. 323, 327
power of injunctive relief .

(Spring 2011)

("The enormous

frequently forces preliminarily

enjoined defendants to negotiate settlements-even where they
might have raised a meritorious defense at trial.").

f. Conclusion

The Association has failed to clearly establish the three most
important factors in the preliminary injunction analysis: a
likelihood of success on the merits, the prospect of irreparable
harm, and the balance of the hardships tipping in its favor.
Though the Association makes strong points on several of the
Polaroid factors,

its case for confusion falls short of the

"clear or substantial likelihood of success" required for a
preliminary injunction that would alter the status quo.

See

Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 24-25 (2d Cir.
2004).

The Association also fails to adequately establish
38

irreparable harm, and its argument on that point is fatally
undermined by its delay in seeking relief.

See Citibank, N.A.

v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985).

The balance of

hardships also tips slightly in favor of the AFA.

The motion

for a preliminary injunction is therefore declined.

II.

The Association's Motion To Compel Is Granted

The Association separately moves to compel production of
several categories of documents that relate to the AFA's
internet advertising campaign and the decisionmaking process
behind it.

In specific, the Association seeks 1) documents

showing all of the AFA's purchases of internet search keywords
since 2010; 2) documents showing what advertising text was used
with each set of keywords; 3) documents concerning the AFA's
decision to purchase the Association's trademarks as keywords;
4) documents concerning the AFA's decision to refer to itself as
the "Alzheimer's Foundation"; 5) documents concerning the AFA's
decision to use the phrase "an association of care and support"
in advertising; and 6) documents concerning the expected return
on investment for purchases of various keywords.

As the party

resisting discovery, the AFA must show how, "despite the broad

39

and liberal construction afforded the federal discovery rules,
each request is not relevant or how each request is overly
broad, burdensome, or oppressive, by submitting affidavits or
offering evidence revealing the nature of the burden."
Wyeth,

Inc., No. 07 CIV. 8442, 2008 WL 3166662, at *3

Sokol v.
(S.D.N.Y.

Aug. 4, 2008).

The AFA first argues that documents regarding its keyword
advertising practices are irrelevant because purchasing keywords
does not amount to use in commerce under the Lanham Act.

This

argument fails for the reasons stated in section I(a), supra.
Next, the AFA argues that keyword-related advertising is
irrelevant because keywords cannot create consumer confusion.
The AFA notes that the keywords purchased by an advertiser are
not visible to consumers and argues that they simply place the
AFA's ads in a search result list, meaning that "[i]nternet
users are no more likely to confuse the Foundation with the
Association than they are to confuse a branded product in the
drug store aisle with its unbranded equivalent that appears in
the same aisle."

(AFA Mem. in Opposition to Motion to Compel,

Dkt. No. 208, at 7.)

The Second Circuit rejected this argument

in Rescuecom, noting that the product placement argument is not
"a magic shield against liability;" rather, the placement of
40

generic drugs does not off end the Lanham Act because they are
clearly labelled differently from the branded options, rendering
their placement "a benign practice which does not cause a
likelihood of consumer confusion."

562 F.3d at 130.

If two

products are intentionally placed next to each other for the
purpose of causing confusion (as the Association alleges the AFA
to have done), the Second Circuit writes that "we see no reason
to believe the practice would escape liability merely because it
could claim the mantle of 'product placement.'"

Id.

And in any

event, the standard for relevance in discovery is much lower
Even if the AFA's "product

than the standard for liability.

placement" argument were valid, a decision to deliberately place
AFA's ads next to the Association's search results would be
relevant to the questions of competitive proximity and good
faith,

key factors in the Polaroid analysis.

Thirdly, the AFA contends that its keyword practices are
not relevant to the issue of willfulness and damages, since
purchasing keywords is a "legitimate business practice."

(AFA

Mem. in Opposition to Motion to Compel, Dkt. No. 208, at 8.)

On

the contrary, the standard for willfulness is "whether the
defendant had knowledge that his conduct represented
infringement or perhaps recklessly disregarded the possibility."
41

Nike, Inc. v. Top Brand Co., Ltd., No. 00 Civ. 8179, 2005 WL
1654859, at *6 (brackets and quotation marks omitted) (quoting
Kepner-Treqoe,

Inc. v. Vroom, 186 F.3d 283, 288

(2d Cir. 1999)).

To the extent that documents concerning the AFA's keyword buying
practices might show a deliberate intent to muddy the waters,
they may be relevant to the willfulness issue.

Lastly, the AFA argues that the discovery sought by the
Association is unduly burdensome.

It writes that granting the

motion to compel will "force the Foundation to produce extensive
documents concerning its internal purchases, and detailed and
proprietary marketing information about its costs, revenues, and
traffic."

(Pl.'s Mem. of Law in Opposition to Motion to Compel,

Dkt. No. 208, at 8.)
insufficient.

This assertion, without more, is

The AFA offers no affidavits or other evidence

regarding the scale of the effort necessary to comply with the
Association's document requests, or why doing so would be beyond
the AFA's capabilities.

As the party resisting discovery, that

showing was its burden.

The Association's motion to compel is granted.

III.

AFA's Motion To Compel Is Also Granted

42

The AFA has filed a motion to compel of its own, seeking
documents that it deems relevant to the Association's claims of
harm, the existence of confusion, the Association's good faith,
and the Association's claims of damages.

The AFA argues that

the Association has refused to produce documents in response to
two sets of requests, one from 2012 and the other from 2014.
This opinion will deal with each set of requests in turn.

On

each request the Association, as the party resisting discovery,
has the burden of demonstrating why the documents requested are
irrelevant or unduly burdensome.

See Sokol, 2008 WL 3166662 at

*3.
a. 2012 Discovery, Request 30

This request concerns allegations made in the Association's
original set of counterclaims that the AFA's former CEO, Eric
Hall, took photographs of slides created by the Association at a
conference in Paris in violation of that conference's rules.
(Association's Answer, Dkt. No. 48,

~~

14-48.)

The Association

notes that it has removed those allegations from its amended
counterclaims and argues that the documents are therefore not
relevant.

Leaving aside the fact that the AFA served its 2012

discovery requests many months before the Association amended
43

its counterclaims in September 2013, a pleading that has
subsequently been amended is not entirely dead letter.

It can

be used to impeach or undermine the credibility of the party
that filed it, as the AFA says it intends to do here.

See

Andrews v. Metro N. Commuter R. Co., 882 F.2d 705, 707

(2d Cir.

1989).

The AFA is entitled to this discovery.

b. 2012 Discovery, Request 45

This request covers "documents concerning the goodwill
attached to the use of [the Association's] marks, including any
documents upon which [the Association] may rely."

The parties

later agreed to narrow the request's scope to a representative
set of documents, rather than all documents potentially
relevant.

(Edel Dec., Dkt. No. 227-1, at 9.)

The dispute here

regards which documents produced by the Association actually
concern this request.

The Association claims that its

representative documents include advertisements, Forms 990,
pledge cards, and "other documents produced, among others," a
phrase that the AFA correctly points out is vague to the point
of incomprehensibility.

The Association has not specifically

indicated which of its documents were responsive to Request 45,
44

making it difficult for the AFA to know just which documents the
Association views as representative.

The AFA argues that it is entitled to all documents on
which the Association may rely; the Association says it
currently intends to rely only on the representative documents
it has produced, although it has not designated which documents
those are and may decide to rely on additional documents later,
(in which case it promises to produce them).

The AFA replies

that this arrangement leaves the contents of the
"representative" sample unclear and allows the Association to
withhold important documents now and produce them only when it
decides to rely on them later.

The manner in which documents are produced is governed by
Rule 34, which provides in relevant part that a party "must
produce documents as they are kept in the usual course of
business or must organize and label them to correspond to the
categories in the request."

Fed. R. Civ. P. 34 (b) (2) (E) (i).

Representative samples of documents that a party intends to rely
on to prove a claim in litigation are by definition not kept in
the usual course of business, but rather generated as part of
45

the discovery process.

Therefore, by Rule 34's terms, the

representative documents that comprise the Association's
response to Request 45 must be labelled as such.

As to the

Association's suggestion that it may decide to rely on documents
outside its production and turn them over to the AFA later, the
agreement between the parties to produce "representative
. including any documents upon

documents concerning goodwill
which [they] may rely"

(Edel Dec. Ex. 1, Dkt. No. 227-1, at 9)

does not allow such wiggle room.

c. 2012 Discovery, Requests 57 and 58

These requests concern all non-privileged studies, surveys,
searches, and/or questionnaires regarding the Association's
marks and all related nonprivileged documents.

According to the

AFA, the Association's production did not include any studies,
searches, or questionnaires, although a February 24, 2015 letter
from the Association's counsel indicated that such documents
existed (Edel Dec. Ex. 5, Dkt. No. 227-5, at 3).

In its

opposition, the Association writes that it "represented to AFA
that survey results that have been identified will be produced.
Expert discovery has not yet begun, and any expert reports and
46

accompanying documents will be produced according to the
schedule for expert discovery."
Although expert discovery may bring additional disclosure
obligations in the future,

it is not relevant to the

Association's current duty to disclose.

Any surveys, searches,

studies or questionnaires responsive to Requests 57 and 58,
along with any nonprivileged documents that relate to them, must
be turned over now, not later.

d. 2012 Discovery, Requests 69 and 70

These requests seek any documents the Association intends
to use as evidence that the AFA misrepresented its identity or
appropriated the Association's goodwill.
four arguments against disclosure - first,

The Association raises
that the AFA did not

take issue with these requests at a February 2015 meet-andconfer session; second, that the Association has produced
responsive documents; third, that it has no obligation to
identify the types of documents responsive to the requests; and
fourth,

that it does not need to produce documents because the

AFA has not produced documents that the Association deems
material to the issue.

The first and fourth arguments are
47

easily dismissed.

The AFA's failure to raise the issue in 2015

does not relieve the Association from a duty to disclose that
arose in 2012, nor does the AFA's failure to produce documents
relieve the Association of its own discovery responsibilities.
As to the production and identification of documents, the
AFA's request to have the Association identify which documents
are responsive to Requests 69 and 70 is a reasonable one,
particularly since the Association argues in its brief that the
documents are easily searchable and that the documents it
intends to use are "self-evident."

To the extent that the

Association intends to introduce any documents on these subjects
that it has not yet turned over, they must be disclosed now.

e. 2012 Discovery, Request 71

Through this request, the AFA seeks documents relating to
the Association's alleged damages stemming from use of its
marks.

The Association argues that the motion should be denied

because it has produced responsive documents and "has identified
the nature of the documents produced that it regards as bearing
most closely on injury and damages."

(Association Mem. In

Opposition to Motion to Compel, Dkt. No. 228, at 7.)
48

The AFA

points out that the Association admits it has only turned over
"representative" documents and indicated broad categories of
documents that might be relevant.

While the parties agreed that

Request 45 would be satisfied by production of a representative
sample of documents, no such agreement took place here.

The

Association must turn over all documents relating to damages and
identify them as such.

f. 2014 Discovery, Request 85

This request seeks information on the search engine
advertising keywords purchased by the Association and the amount
of money the Association spent on each purchase.

The

Association argues that this data is only relevant to a
potential unclean hands defense from the AFA.

The Association

asserts that an unclean hands defense would not apply because it
is only viable where the misconduct alleged in the defense has
an "immediate and necessary relation" to the equity the
plaintiff (or in this case, counterclaim plaintiff) is seeking,
Specialty Minerals,

Inc. v. Pluess-Staufer AG, 395 F. Supp. 2d

109, 112 (S.D.N.Y. 2005), and that relation is not present

49

because it is uncontested that the Association has not purchased
the AFA's marks as search engine advertising keywords.
Leaving aside the merits of any unclean hands defense on
the part of the AFA, the discovery sought is appropriate because
it is also relevant to the question of confusion under Polaroid.
Evidence of the keywords purchased by the Association and the
amounts spent on them would help to demonstrate where the
Association's own advertisements appeared.

It is at least

arguable that a consumer is less likely to be confused when the
Association and the AFA both have ads at the top of his or her
search results, as compared to a situation where the AFA's
advertisement stands alone.

Since the placement of the

Association's advertisements is relevant to a claim or defense,
the Association must fully respond to Request 85.

g. 2014 Discovery, Requests 86 and 87

These requests seek information about and court filings
from all other lawsuits the Association has filed alleging
trademark infringement, as well as any filings or motions by the
Association concerning trademark applications at the U.S. Patent
and Trademark Office.

The Association argues that this
50

discovery is unwarranted because it could only be relevant to
the defense of abandonment, which the AFA has failed to plead.
The AFA responds that "failure to police its marks against
similarly situated entities negates [the Association's] claims
of irreparable harm, confusion, and damages" and shows "that the
Association is acting in bad faith in singling out AFA for legal
action."

(AFA's Reply Mem. in Support of Motion to Compel, Dkt.

No. 229, at 7.)

While federal courts differ on the proposition,

at least some courts have found that a party's failure to
prosecute third-party inf ringers can negate the presence of
irreparable harm.

See, e.g., Warner Lambert Co. v. McCrory's

Corp., 718 F. Supp. 389, 393-94

(D.N.J. 1989); Parfums Stern,

Inc. v. U.S. Customs Serv., 575 F. Supp. 416,

420

(S.D. Fla.

1983); but see Ortho Pharm. Corp. v. Cosprophar, Inc., 828 F.
Supp. 1114, 1123 (S.D.N.Y. 1993).
Although the connection between this case and the
Association's trademark litigation history is tenuous, "the Rule
26(b) (1) standard presents a relatively low threshold for a
party to show that the material sought is relevant."

John Wiley

& Sons, Inc. v. Book Dog Books, LLC, 298 F.R.D. 184, 186
(S.D.N.Y. 2014).

The Association must turn over the requested

information about its trademark enforcement activity, whether in

51

court or at the USPTO, to the extent that any such activity
exists.

h. 2014 Discovery, Requests 88 and 89

These requests seek documents concerning any people the
Association claims were confused by the AFA's search engine
advertisements, and any instances of confusion between the
Association's marks and those of the AFA.

The Association

contends that it has conducted a reasonable search and produced
documents concerning instances of confusion discussed in three
declarations it has filed in this case, but it objects to
producing all documents regarding all persons that it claims
were confused because it has no way of knowing the identity of
every single person on the internet who has been confused by the
AFA's ads.

(Association Mem. in Opposition to Motion to Compel,

Dkt. No. 228, at 9.)

However, the Association's inability to

ascertain the identity of every person who was confused by the
advertisements does not release it from its obligation to
produce documents in its possession concerning all persons of
whose confusion it is aware.

52

i. 2014 Discovery, Requests 91, 92 and 94

These requests seek documents pertaining to any other
entities referring to themselves as "Alzheimer's Association" or
"Association" in internet advertising, communications between
the Association and such entities, and communications between
the Association and internet search providers about other
entities' purchase of keywords.

The Association argues that the

discovery is irrelevant for the same reason as Requests 86 and
87.

However, discovery is proper here for the same reason as it

was on those requests: because information about the
Association's efforts to protect its marks from infringement by
third parties is at least potentially relevant to the existence
of irreparable harm or confusion.

The Association is ordered to

produce these documents.

j. 2014 Discovery, Request 96

This request seeks "[d]ocuments sufficient to show, by
month and year, the number of donor checks that the Association
received from 2007 to the present and the amount thereof."
According to the AFA, this data helps to show that any confusion
created by the use of the term "Alzheimer's Association" and the
53

AFA's internet advertising campaign is de minimis.

The

Association contends in its brief that its systems are not set
up to record this information and that it has already provided
the AFA with access to electronic records from which it can
determine the information on its own.

The AFA denies that it

has been given access to such information.

Given the Association's significant year-over-year
expansion in revenue (See Ass'n Mem. 4; Geiger Deel.

~

8, Exs.

55-58.), it seems likely that any signal showing a negative
effect caused by the AFA's practices will be drowned out by the
noise of the Association's general growth.

Unfortunately, the

merits of the Association's undue burden argument are impossible
to evaluate because it has not introduced any affidavits or
other evidence supporting it.

See Sokol, 2008 WL 3166662 at *3.

As the party resisting discovery, that showing was the
Association's burden.

The Association must comply with the

request.

k. 2014 Discovery, Request 97

54

This request seeks documents concerning each item of
damages claimed by the Association, including a computation of
each category of damage alleged.

The Association argues that

the request is premature and that "documents to support the
Association's damages claims will be provided prior to trial or
as otherwise ordered by the Court."

(Association Mem. in

Opposition to Motion to Compel, Dkt. No. 228, at 12.)

Its brief

provides no support for the proposition that such documents
should be produced prior to trial rather than when requested in
discovery.

The Association also argues that this discovery is

not warranted because the AFA is withholding damages-related
documentation of its own.

Discovery-related misconduct by one

party does not excuse the other party from its disclosure
obligations, and in any event the Association's motion to compel
the disclosure of those documents was granted in Section II,
supra.

The AFA's motion for production of these documents is

granted.

55

Conclusion

Based upon the facts and conclusions of law set forth
above, 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.

It is so ordered.

New Yory NY
June
201s

Aro'

U.S.D.J.

57