Alzheimer's Foundation of America v. Alzheimer's Disease and Related Disorders Association, Inc. et al
Filing
364
OPINION & ORDER [CORRECTED]: For the foregoing reasons, the Court finds in favor of Counterclaim Defendant Alzheimer's Foundation of America and dismisses Counterclaim Plaintiff's claims in the entirety. The Court does not award attorney's fees. The Clerk of Court is respectfully directed to enter judgment and to close the case. SO ORDERED. (Signed by Judge Alison J. Nathan on 4/20/2018) (mml)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
Alzheimer's Disease and Related Disorders
Association, Inc. d/b/a Alzheimer's Association,
10-CV-3314 (AJN)
[Rel: 10-CV-5013 (AJN)]
Counterclaim Plaintiff,
-vAlzheimer's Foundation of America, Inc. d/b/a
Alzheimer's Foundation,
OPINION & ORDER
[CORRECTED]
Counterclaim Defendant.
ALISON J. NATHAN, District Judge:
In September 2017, the Court held a bench trial between two Alzheimer's charities Counterclaim Plaintiff Alzheimer's Disease and Related Disorders Association (hereafter,
"Alzheimer's Association" or the "Association" or "Counterclaim Plaintiff') and Counterclaim
Defendant Alzheimer's Foundation of America (hereafter, "Alzheimer's Foundation" or "AFA"
or "Counterclaim Defendant") - on certain Lanham Act claims. Specifically, the Association
contends that AF A's purchase of Association trademarks as search engine keywords and use of
the two-word name "Alzheimer's Foundation" constitute trademark infringement and false
designation of origin under the Lanham Act.
For the following reasons, the Court finds that the Association failed to prove that AF A's
actions were likely to cause consumer confusion and enters judgment for the Counterclaim
Defendant.
1
I. Procedural History
The history of the facts and prior proceedings in this matter is too voluminous to warrant full
description here. Prior decisions of Judge Sweet, from whom this case was reassigned to the
undersigned on November 21, 2016, provide additional background. See Alzheimer's Found. of
Am., Inc. v. Alzheimer's Disease & Related Disorders Ass 'n, Inc., 796 F. Supp. 2d 458 (S.D.N.Y.
2011); No. 10-CV-3314, Dkt. No. 170 1; Alzheimer's Found. ofAm., Inc. v. Alzheimer's Disease
& Related Disorders Ass 'n, Inc., No. 10-CV-3314 (RWS), 2014 WL 4290455 (S.D.N.Y. Aug.
29, 2014); See Alzheimer's Found. ofAm., Inc. v. Alzheimer's Disease & Related Disorders
Ass'n, Inc., No. 10-CV-3314 (RWS), 2015 WL 4033019 (S.D.N.Y. June 29, 2015). For the
purposes of this bench opinion, the Court offers the following summary.
In 2007, the two Alzheimer's charities began suing each other. The first suit, in Virginia
state court, concerned which entity was entitled to a trust bequest when the trustee made the first
check out to "Alzheimer's Foundation," but sent it to the Association. The state judge dismissed
the suit in 2009.
In April 2010, AF A sued the Association in this Court related to other checks cashed by the
Association but made payable to AFA. In June 2010, the Association countersued, alleging
trademark infringement and related state and common-law claims. See No. 10-CV-5013, Dkt.
No. 1. On May 25, 2011, Judge Sweet dismissed all of the claims brought by AFA and by the
Association except for those under and related to the Lanham Act. Alzheimer's Found. ofAm.,
Inc., 796 F. Supp. 2d at 468. In 2014, Judge Sweet dismissed AF A's remaining claims. 2 That
1
Unless otherwise specified, all docket numbers refer to the docket in 10-CV-3314, and not to the related
action.
2
Judge Sweet dismissed AF A's Fourth Amended Complaint on the grounds that AFA lacked standing as
the named payee on checks received and deposited by the Association, and that AF A failed to show that the
2
left only the Lanham-related claims in the Association's countersuit for resolution. 3 The
Association amended their remaining counterclaims on September 13, 2013, and the Amended
Counterclaims are operative here. See Amended Counterclaims ("Am. Count."), Dkt. No. 125.
In July 2014, the Association brought a motion for a preliminary injunction, see Dkt. Nos.
183, 185, seeking to enjoin AFA "from purchasing Association-owned trademark terms from any
search engine provider and from utilizing the phrase 'Alzheimer's Foundation' .. .in its
.
.
advertising." See Alzheimer's Found., 2015 WL 4033019, at *1. Following a two-day hearing,
on June 29, 2015, Judge Sweet denied the Association's motion for a preliminary injunction. See
generally id. After performing much of the same analysis the Court undertakes in this post-trial
opinion, Judge Sweet concluded that "[t]he 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." Id.
at *14. While Judge Sweet acknowledged that "the Association makes strong points on several
of the Polaroid factors," he found that "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." Id. (quoting Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 24-25 (2d Cir. 2004)).
Following reassignment to the undersigned, the Court set a motions and trial schedule. AF A
submitted motions to exclude the report and testimony of both of the Association's expert
witnesses, see Dkt. Nos. 269-71, 287-89, as well as a motion in limine to exclude one of the
Association's theories of damages. See Dkt. Nos. 293-95. The Court reserved judgment on the
Association had used AF A trademarks in commerce. See Dkt. No. 170. AF A then moved for and was granted
reargument, but the Court upheld its prior decision. Alzheimer's Found., 2014 WL 4290455.
3
Because only the trademark counterclaims remain, all following references to the parties will be as
Counterclaim Plaintiff and Counterclaim Defendant.
3
motions. See Dkt. No. 286; Transcript of July 26, 2017 Final Pretrial Conference.
The Court held a six-day bench trial beginning on September 6, 2017 in accordance with its
Individual Practices in Civil Cases for non.:.jury proceedings. Prior to trial, the parties submitted
declarations of direct and rebuttal testimony as well as copies of anticipated exhibits and
deposition designations that they intended to use at trial. The parties also submitted proposed
findings of fact and conclusions of law. At trial, the parties called only those witnesses whom
they intended to cross-examine and read into the record deposition designations and counterdesignations for all other witnesses. In all, the Court received direct testimony from 25
witnesses, 13 of whom also provided live testimony, and admitted roughly 280 exhibits from
both parties. Following trial, the parties submitted post-trial memoranda oflaw and updated
proposed findings of fact and conclusions oflaw that were fully submitted on October 25, 2017. 4
The Court then heard closing arguments on December 5, 2017.
II. Findings of Fact5
A. Counterclaim Plaintiff Alzheimer's Association and Its Marks
The Alzheimer's Association, formed in 1980, is the world's largest private non-profit funder
of Alzheimer's research. FOF ,r,r 1-2. Since 2005, Harry Johns has served as the Association's
4
See Dkt. Nos. 344-50. Both parties submitted post-trial proposed findings of fact and were provided an
opportunity to respond to each other's proposed findings of facts with opposing record citations. See Dkt. Nos. 344,
346, 347 & 349. The abbreviation "FOF" represents Dkt. No. 347 which incorporates the Association's proposed
findings of facts and AF A's responses. The abbreviation "AFA FOF" represents Dkt. No. 349, which incorporates
AF A's additional proposed findings of fact and the Association's responses. If a party did not oppose a proposed
finding of fact with an appropriate record citation, and if that unopposed proposed finding of fact was supported by
an appropriate record citation, the Court deemed that fact admitted and incorporates such unopposed facts as factual
findings of the Court.
5
To the extent that any finding of fact reflects a legal conclusion, it shall to that extent be deemed a
conclusion of law, and vice versa.
4
CEO. Ex. 256 ,r 2. 6 Based in Chicago, the Association is comprised of more than 80 local
chapters across the nation providing services within each community. FOF ,r 3. Until 2016, most
of these chapters were independent, operating under contract with the Association; in late 2015
and early 2016, a number of the chapters merged into the Association, while a few others
disaffiliated. See Tr. (Johns) 252:10-253:12; AFA FOF ,r 6(viii)-(xi). In fiscal year 2016, the
Association raised more than $160 million in contributions, an increase from the $87 .9 million
.
.
the Association reported in "total revenues, gains and other support" in fiscal year 2010. FOF ,r
13, 25. In fiscal year 2016, the Association spent $133.6 million on program activities, including
more than $44 million on public awareness and education. FOF ,r 27. The Association had
nearly 9 billion media impressions and more than 41 million website visits in fiscal year 2016.
Ex. 256 if 30.
Surveys show that the Association is somewhat well-known. The Association commissioned
a finn named Copernicus to conduct consumer awareness surveys (the "Copernicus Surveys").
AFA FOF ,r 65. Copernicus measured both unaided- that is, "top of mind" - and aided
awareness of the Association among different demographic groups. AFA FOF ,r,r 66, 69, 70. In
2015, when respondents in the general population were prompted for the first two "health charity
organizations that support research, help provide and enhance care and support, build disease
awareness and provide tips to reduce risks of different diseases" that come to mind, respondents
were vastly more likely to name the American Cancer Society (46%), St. Jude Children's
Research Hospital (28%), American Heart Association (19%), and Susan G. Komen for the Cure
(10%), than they were to name the Alzheimer's Association (3%). See Ex. AF at ALZ0058612.
6
Exhibits offered by Counterclaim Plaintiff Alzheimer's Association are denoted numerically. Exhibits
offered by Counterclaim Defendant Alzheimer's Foundation of America are denoted alphabetically.
5
When respondents were asked which organizations "involved in the fight against Alzheimer's
disease" they have heard of- the Association registered 8-12% awareness throughout 20112015. AFA FOF ,r 71. Amongst "Champions," a subpopulation comprised of the demographic
groups that the Association targets with its advertising messages, unaided awareness of the
Association among organizations "involved in the fight against Alzheimer's disease" has
hovered between 10% and 20% between 2009 and 2015. See Ex. AF at ALZ0058614. The
Copernicus Surveys show aided awareness of "Alzheimer's Association" - that is, where
respondents are prompted with the specific name - at roughly 25-32% among the general
population, and at 35-47% among "Champions" between 2011 and 2015. Id. at ALZ0058618.
For AFA, those numbers were 15-19% and 25-32% respectively. Id. at ALZ0058619.
The Association owns a number of marks containing the term "Alzheimer's Association,"
including the standard character mark ALZHEIMER'S ASSOCIATION®, U.S. Reg. No.
2,850,223 (the "'223 Mark"), which has been registered since June 8, 2004, but which has been
in use since 1988. FOF ,r,r 5-7. The Association also owns U.S. registrations for marks using the
two-word name "Alzheimer's Association" along with other words or with graphical elements,
as well as standard character marks for WALK TO END ALZHEIMER'S® and MEMORY
WALK®. See FOF ,r,r 8-9. Together, these marks are hereafter referred to as the "Association
Marks," although the '223 Mark is most central to the present litigation. The walk-related marks
refer to an event organized by the Association that raises awareness and funds for Alzheimer's
care, support, and research; in 2016, nearly 500,000 participants took part in walks in 630
communities, raising more than $78.6 million. FOF ,r,r 14-15. The Association maintains a
website accessible at www.alz.org, on which it displays "alz.org" and "Alzheimer's Association"
6
at the top of its landing page. AFA FOF ,r 15. The Association's principal color is purple. AFA
FOF ,r 16.
The Association did not register, and has no rights to the terms "Alzheimer's" or
"Association" standing alone. AF A FOF ,r,r 82, 126.
B. Counterclaim Defendant Alzheimer's Foundation of America and its Marks
The Alzheimer's Foundation of America was founded in 2002 with the primary purpose of
providing optimal care and services to individuals living with Alzheimer's disease and to their
families and caregivers. AFA FOF ,r,r 17-19. Since January 1, 2014, Charles J. Fuschillo, Jr. has
served as AF A's President and CEO. Ex. DS
,r 3.
AFA has more than 2,600 member
organizations throughout the country that collaborate on education, resources, best practices and
advocacy to meet the needs of those with Alzheimer's and related illnesses and their families and
caregivers. AF A FOF ,r 20. AF A has awarded millions of dollars in grant funding to its member
organizations for services such as respite care. AFA FOF ,r 21. In 2010, AF A's "revenues, gains
and other support" from "contributions and special events including telethons" was
approximately $6.6 million. Ex. 118 at 59. AF A maintains a website at www.alzfdn.org, and
principally uses the colors teal and white. AF A FOF
,r 26.
AFA owns various composite and standard character trademarks. The organization's first
registered mark - registered in 2006 - is for "AF A Alzheimer's Foundation of America" with the
organization's "heart in hands" logo, U.S. Reg. No. 3,179,067 (the '067 Mark), as shown below.
Ex.AK.
7
(t;AFA
.Alzheimer's Foundation of America
In December 2009, AF A filed for the assumed or "doing business as" two-word name
"Alzheimer's Foundation" in four jurisdictions. Exs. 29-31, 33. Before December 2009, AFA
had not applied for any trademarks using the two-word name without "of America." FOF ,r,r 41,
155. At that time, AFA also filed for a composite mark using the two-word moniker
"Alzheimer's Foundation" and displaying its heart in hands logo. AFA now owns this composite
mark, U.S. Reg. No. 3,948,014 (the '014 Mark), as shown below. Ex. AL.
AUHEIMER'S FOUNDATION
AFA did not use the '014 Mark in commerce until October 2010. FOF ,r 39.1. AFA
disclaimed any exclusive right to the literal element of the '014 mark as well as all literal
elements of the '067 composite mark. FOF ,r,r 39, 154; Ex. AK.
Finally, and most crucially for the issues at bar, on July 3, 2014, AFA filed for a standard
character mark for "Alzheimer's Foundation." FOF ,r 208. On December 23, 2014, this mark
was registered on the supplemental USPTO register as U.S. Reg. No. 4,661,324 (the '324 Mark).
FOF ,r 209; Ex. AM. According to the registration, the first use in commerce of the two-word
name dates to March 31, 2004. Ex. AM.
AFA claims to have identified itself by the two-word moniker "Alzheimer's Foundation"
since its inception. See Tr. (Fuschillo) 47:9-48:1; Tr. (Hall) 555:9-14; Tr. (Steinberg) 564:9-12.
8
Prior to 2009, AF A's uses of the two-word name were largely limited to the headlines of press
releases, and to sponsored advertising online, although AF A did identify singular instances of
use on a billboard in ,Times Square, in its Care Advantage magazine, and in a radio ad. Exs. 19,
97, BR-1 - BR-4, CO, CP; Tr. (Fuschillo) 30:8-25, 34:16-20. APA has also used the two-word
name on its Twitter account, which is space limited. FOP ,i 232. Throughout AF A's history, the
most pervasive use of "Alzheimer's Foundatio11" without "of America" has come in its online
advertising. APA FOP ,i 73.
The Association does not claim any rights to the term "Alzheimer's Foundation," and does
not use the phrase to refer to itself in any of its ads nor on its website. AF A FOP ,i,i 82-83.
C. Keyword Advertising and Competitor Campaigns
Search engines, such as Google and Bing, use algorithms to identify various web pages
relevant to the search terms input by users. FOP ,i,i 46, 48. Search engines list both "organic," or
unpaid, and "sponsored," or paid, search results. FOP ,i 47. The search engine results page
displays sponsored ads first, followed by organic listings. APA FOP ,i 38. The term SEO, or
"search engine optimization," describes techniques used to enhance a website's appearance in
organic search results. FOP ,i 49. Metatags, including keyword metatags, are tools used in SEO,
although evidence suggests that Google abandoned using metatags in their search algorithm by
2009. Ex. DV ,i,i 102; Tr. (Leone) 789:1-791:2. Metatags are contained in a website's coding
and are generally not visible to users unless they use a function to view the web page code. Ex.
258 ,i 8. .
In marketing, the term "keywords" generally refers to search keywords, which are terms
purchased by advertisers so that their ads will appear in sponsored results in response to certain
9
searches. FOF ,r 52. Google's advertising program is called "Google AdWords." Each time a
sponsored ad appears on a results page, this counts as one impression. AFA FOF ,r 37.
Advertisers pay for their paid ads based on the number of times a user "clicks" on the ad and.
goes to the advertiser's website. AFA EOF ,r 39. Google and Bing require that the advertiser's
URL appears in the ad. AF A FOF ,r 54. Paid ads are labeled as "ads" or "sponsored" in some
manner on the search results page. AFA FOF ,r 40.
Google and Bing conduct real-time auctions 24/7 in which advertisers or their agents bid on
keywords that will result in having their online ads displayed on a search engine results page.
AF A FOF ,r,r 41-42. The bidding is not visible to the public, users do not know which keywords
organizations have bid on, and the bidding is largely non-exclusive. AF A FOF ,r,r 43-44. Google
and Bing do not limit the number of advertisers that can bid on a keyword or the number of
advertisers who may have their ads displayed in response to a search query. AF A FOF ,r 51.
While Google and Bing each uses a proprietary algorithm to determine the order in which
paid ads appear, generally, the higher the bid the more likely the bidder's online ad will appear at
or near the top of the sponsored search engine results. AFA FOF ,r 45; Ex. 258 ,r 11. The
proprietary algorithms are also reported to use relevancy in its calculations, the score for which
may be improved by using the keywords entered by the user in the organization's paid ad or on
its website. AFA FOF ,r,r 46-47. SEM, or search engine marketing, refers to the process of
buying keywords so that an advertiser's sponsored link appears prominently in response to
particular searches. FOF ,r 55.
Since prior to 2007, Google has not restricted the use of trademarks as keywords, even in
cases in which it receives a complaint from the trademark holder. AFA FOF ,r 48. Bing has a
10
similar policy regarding trademarked keywords. See Ex. DV ,r 43; Ex. DU ,r 37. Google and
Bing have never prevented AF A from p1:1rchasing Association Marks as keywords. AF A FOF ,r
52. Moreover, advertisers often bid on and purchase competitors' trademarks as keywords. AFA
FOF ,r 55.
D. Parties' History of Online Advertising
Both AF A and the Association have used online marketing to attract a broader audience to
their websites. AFA FOF ,r 74. Part of AF A's objective in driving traffic to its website was to
increase "conversions" - or online donations. See, e.g., Ex. 60. To that end, AF A retained
consultants, including Correlative, to advise them on what keywords to purchase and to create
the content of online ads. AF A FOF ,r 78.
Since June 7, 2004, AF A has described itself in the header of online ads using the two-word
name "Alzheimer's Foundation." AFA FOF ,r 79. Ads using this two-word name resulted in
over 30 million impressions between June 7, 2004 and the end of 2009. AFA FOF ,r 80. AFA
understood that Google limited the number of characters an advertiser could use in the title of its
paid ad to 25 or 30. FOF ,r 59. Evidence at trial did not conclusively establish Google's current
policy regarding character limitations. See Tr. (Marquardt) 905: 11-15. From 2010 to date, AF A
has spent $300,000 to $500,000 annually to purchase keywords. AF A FOF ,r 86.
From June 2004 to the present, AF A has also purchased Association Marks as keywords.
FOF ,r,r 68, 146. By late 2007, AF A was frequently purchasing "alzheimers association" and
variants as search keywords. FOF ,r 149. For part of this time -April 2012 to June 2014-AFA
ran sponsored ads that used the word "Association" in the text. FOF ,r 71. After correspondence
from the Association's counsel, AF A discontinued the use of the word "Association" in the
11
content of its ads, FOF ,r 72, however AF A continues to purchase Association Marks as
keywords and to advertise itself as "Alzheimer's Foundation" in responsive ads. FOF ,r,r 73, 204.
TheAssociation began its own keyword marketing program in April 2007. FOF ,r 65. The
Association spent approximately $150,000 annually on keyword advertising in 2015-16, but also
utilized Google Grants for an additional $480,000 of keyword advertising. Tr. (Carson) 292: 11293 :8. Initially, the Association purchased "Alzheimer's Foundation" as a keyword, but all
foundation-related keywords were removed from the Association's SEM in August 2010. Exs.
BU, CB. The Association did not believe it was acting improperly in purchasing foundationrelated keywords. Tr. (Geiger) 874:25-875: 18. The Association has never purchased as an SEM
keyword the search term "Alzheimer's Foundation of America." FOF ,r,r 245, 247. In August
2016, AF A's trademark counsel wrote to the Association to complain that Alzheimer's
Association's Northern California and Northern Nevada chapter had purchased "Alzheimer's
Foundation" as a keyword and displayed resulting advertising text with "Alzheimer's
Foundation" in the title. Ex. 15. The chapter had recently merged with the Alzheimer's
Association, FOF ,r 237, and upon receipt of the letter, the chapter discontinued purchase of the
keyword. FOF ,r 240.
Presently, one of the at-issue ads run by AF A might show "Alzheimer's Foundation" in the
ad title, in standard typeface without any graphic element, followed by the associated website
URL and a brief description or tagline. For example, as can be seen below, a Google search of
"alzheimer's association" from June 2014 shows AF A's ad as the top result, with the main
header as "Alzheimer's Foundation - alzfdn.org" followed by a yellow marker reading "ad," the
URL "www.alzfdn.org" and a tagline of"An Association of Care and Support. Reach Out to Us
12
for Help .... " See Ex. 71. The advertisement also contains links to pages within AF A's website
for those looking to "Make a Donation," to learn "About AFA," or to "Reach Out to Us for
Help/' Id. The second and only other ad result is from the Association. Their header reads
"alz.org- Alzheimer's Association," is also followed by the yellow "ad" marker and the URL
for their donation page, "www.alz.org/donate." Id. The Association's tagline was "Honor a
Loved One with ,a Tribute Donation - Support Research & Care" and included links to subtopics
on their website. Exhibit 71 is reproduced here:
13
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Other trial exhibits showing Google search results for "alzheimer's association" might have
the ads in a different order, or might show different text used by each organization, but
consumers are presented with the same basic context shown above. See, e.g., Exs. 90, 161, 212;
see also Ex. 97 (listing the various headers and textual elements of AF A's advertisements). The
parties introduced other examples in which AFA used "Alzheimer's Foundation" in its ad text.
14
See, e.g., Exs. 148-58, 245.
Purchasing keywords such as "Alzheimer's Association" was part of the AF A's so-called
competitors campaign. Ex. 49. In October 2011, Chris Leone, AF A's SEO consultant,
recommended increasing the daily budget for the competitor's campaign, and AF A agreed. Exs.
50, 51. At times, the keyword "Alzheimer's Association" received more clicks on AF A's
sponsored ad than those received from its own brand. FOF ,r 174. In early 2012, Mr. Leone
reported that campaigns targeting AF A's competitors perfonned the best. Exs. 54, 55. The
competitors campaign comprised roughly 40% of AF A's keyword marketing budget. Ex. 60 at
AF A002 l 419. AF A also worked with a vendor named Vizions on an SEO plan involving
keywords such as "alzheimers association," Exs. 42, 43, but there is no specific evidence in the
record that AFA adopted Vizions' recommendations.
AF A rejected recommendations from Mr. Leone to include Association Marks in the content
of AFA's online ads or website. Ex. DU ,r,r 68-74; Tr. (Leone) 775:14-778:17; Tr. (Steinberg)
568:24-570:5; Exs. 63, 96-98. However, as described above, AFA did run an ad with the text
"An Association of Care and Support," Ex. 66, which AF A removed after receiving a complaint
from the Association. Ex. H; Tr. (Foh) 345:20-346:16; Tr. (Johns) 147:17-150:3; Ex. DS ,r 61.
The ad used the words "Alzheimer's" and "Association" but they were not next to each other.
Ex. DS ,r 60; Tr. (Foh) 345:11-18; Tr. (Leone) 778:18-779:9.
At trial, Mr. Leone opined that the "common strategy" of competitor-targeted ads was
effective here because "Alzheimer's Association is the larger organization" and "if someone is
searching for Alzheimer's Association, which they are frequently, then we're providing a[n] ad
as another option for them. It is the same thing that most competitors do." Tr. (Leone) 797:2-13.
15
Mr. Leone did not recall AF A ever using the word "compare" in the content of its ads resulting
from Association-related keywords. Tr. 791: 18-21.
The Association also incorporates AF A's metatag coding into its arguments in this case. The
Association claims that from early 2005 through spring 2008 and then again starting in mid2011, AFA was coding its website with metatag keywords including Alzheimer's Association,
Alzheimer's and Related Disorders Association, memory walk, and Maintain Your Brain - all
terms used and trademarked by the Association. See Ex. 240B. Exhibit 240B, o·n which the
Association relies in making this argument, was admitted at trial solely "for what it may
permissibly be considered for." Tr. 988:3-5. AFA fairly notes that 240B does not show how or
when AF A's website was coded and no witness was called to explain the meaning of240B. Tr.
986:22-988:2. Regardless, the Court finds that AF A's metatag practices are largely immaterial
to the present issue, as they have likely not been used by search engines since before 2009, and
so have little effect on the ordinary prudent consumer. See Exs. CW; DV ,r,r 99-102; Tr. (Leone)
789:1-791:2; see Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,
1146 n.3 (9th Cir. 2011) ("Modem search engines such as Google no longer use metatags.
Instead they rely on their own algorithms to find websites."); Ascentive, LLC v. Opinion Corp.,
842 F. Supp. 2d 450,467 (E.D.N.Y. 2011) (citing 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition§ 25:69 (4th ed. 2013)).
In order to make an online donation to AF A, a consumer could not simply enter a keyword or
click on an online ad, but would have to visit AF A's website. AFA FOF ,r 109. If after looking
at AF A's website, a computer user determines that AF A is not the entity to which she wants to
donate, the user can click back to return to her original screen page. Ex. DV ,r 79; DU ,r 93. To
16
continue on to the donation page, a user would have to click on "Donate" or "Support Us" within
the AFA website. AFA FOF ,r 112. On the donation page, there are many references to "AFA"
or "Alzheimer's Foundation of America," and no references to the Association or use of any the
Association Marks. AFA FOF ,r 113. At no point while on the AFA website during the donation
process would a consumer see any of the Association Marks. AFA FOF ,r 115. A similar multistep process would be required to make an online donation to the Association. AF A FOF ,r 116.
E. Non-Study Based Evidence of Confusion
The Association presents various types of evidence of purported confusion. First, the
Association cites evidence that AF A has previously acknowledged confusion and, in fact, was
the first to complain of confusion. In 2004, AF A's CEO at the time drafted a letter to the
Association's then-CEO stating "I was therefore quite surprised when a routine web search under
'alzheimers foundation' led me to [the Association's] site. 'Alzheimer's Foundation of America'
is a registered service mark of our organization. It distresses me that supporters of our respective
organizations may be confused when searching the internet." Ex. 20. No witness was called to
explain the letter, which may not relate to sponsored ads, and thus may be irrelevant to the
purported confusion at issue here. Additionally, in AFA's suit against the Association, AFA
alleged that the Association's "unauthorized conversion of checks made payable to Alzheimer's
Foundation, constitutes an unauthorized use of Alzheimer's Foundation's Marks and is likely to
continue to cause Plaintiff damage by confusing the general public .... " FOF ,r 106.4 (quoting Ex.
36 ,r 61). The confusion caused by check-related practices is also not at issue here. Finally, in
2014, AF A's Kristen Leesment wrote to CEO Charles Fuschillo that she was "surprised" by the
results of a survey AF A was taking of online donors that showed many people saying they
17
donated before or were "introduced to AF A through a fund raising event," and speculated that
"several respondents may have us confused with the Association or with 'the cause."' Ex. 70 at
AFA0021358.
Second, the Association points to check-related evidence. In 2009, in connection with
litigation in Virginia, AF A learned that the Association receives checks made out to
'"Alzheimer's Foundation" and that it cashes those checks. FOF ,r 151. Between 2007 and 2012,
Alzheimer's Association received more than 5,700 checks made payable to "Alzheimer's
Foundation" or a variant totaling over $1.5 million. Ex. CI. The Association notes that it
receives many more checks made out to "Alzheimer's Foundation," than to "AFA" or
"Alzheimer's Foundation of America." FOF ,r,r 111-12.2. AFA, in tum, received more than
5,000 checks between 2006 and June 2016 made payable to "Alzheimer's Association" or near
variants. FOF ,r 107. While AF A receives checks made payable to a number of erroneous
names, the most common error is checks payable to Alzheimer's Association. FOF ,r 108.
AF A's documents suggest that a large percentage of AF A's online donors are first-time donors,
and that the average online donation, as well as check donation, is under $100. See Ex. 60 at
AFA0021415; FOF ,r,r 262-63.
The parties have substantial disagreements about the value of this evidence with respect to
the quantity of confusion and with respect to any causal links between the mislabeled checks and
AFA's actions.
AF A claims that the number of checks received by the Association from January 2009 to
January 2012 that were payable to AF A was only 0.1 % of the total number of checks received,
and 0.252% of the total value of checks received, but the Association disputes these figures as
18
misleading. AF A FOF ,i 154. The Association concedes that "the checks so received were a
small percentage of the total number and value of checks received during the periods identified."
Id. Similarly, Mr. Fuschillo opined that the number of checks AF A received annually that were
made out to Alzheimer's Association was "de minimis," but could not identify how many total
checks AF A received annually or the number made payable to the Association, and had done no
personal review of these records. Tr. 63 :9-74: 15. Consequently, his opinion carries little weight.
In one instance, on July 30, 2014, the Association's cashiering department brought Christine
Foh, the Association's general counsel, checks made payable to the Association and an obituary
indicating donations were to be sent to the Association that were received alongside a printout of
AFA's internet donation form. FOF ,i 115. The Association followed upon the issue, with Ms.
Foh calling a donor listed on the AFA form. FOF ,i 116-25. The donor confirmed that the
donation was intended for the Association. FOF ,i 126. When asked why she had submitted the
AF A form, the donor claimed that she had typed the Alzheimer's Association name into her web
browser and clicked on the first entry that came up to download the form for donations and that
she was unaware that the form she downloaded was for AF A or that she was on the AF A
website. FOF ,i,i 127-28. Aside from this one instance, the Association did not provide further
evidence - anecdotal or otherwise - that directly confirmed that AF A's practices in purchasing
Association Marks as keywords or in using the two-word name "Alzheimer's Foundation"
caused the check-related confusion nor did the Association provide evidence that confirmed
donors' intent one way or another. Moreover, no witness testified about other donors or
potential donors contacting one organization looking to donate to the other, apart from people
asking about the difference between the Association and AFA. See Tr. (McCullough) 585:2-6;
19
Tr. (Geiger) 857:12-20; Tr. (Steinberg) 573:1-574:20. Third parties have also testified that they
were not aware of or did not remember instances of confusion between the Association and
APA. APA FOP ,r,r 140-41.
Third, the Association points to an assortment of purported incidents of actual confusion,
none of which have a clear link to any of AF A's allegedly infringing actions. For example, the
parties engaged in a legal dispute concerning the·estate of Sandra Lynch in which Ms. Lynch's
will left a bequest to "Alzheimer's Foundation, Pennsylvania Chapter" even though the
Association had a Pennsylvania chapter and APA did not. FOP ,r,r 129-32. Nonetheless, no
evidence was adduced that Ms. Lynch's confusion was born from any of AF A's behaviors at
issue here. See Ex. 11. Additionally, the Association presented evidence ofNBC's Today show
running a quotation the Association has provided alongside AF A's logo. FOP ,r 134; Ex. 13.
However, the logo mistakenly used by NBC was the '067 Mark with the words "of America,"
and is not at issue in this litigation. The Association also submitted a video clip from Celebrity
Family Feud in which the host suggested the show was raising money for "Alzheimer's
Foundation," when it was actually raising money for the Association. FOP ,r 133; Ex. 12. Again,
no evidence was presented that explained the reason for the mistake, let alone evidence
connecting it to AF A's actions.
F. Dr. Van Liere's Studies
In addition to the evidence presented above, the Association also presented the survey
evidence and opinion testimony of Dr. Kent Van Liere, Ph.D., Vice President at NERA
Economic Consulting. FOP ,r 135; Ex. 262. Over the course of 30 years, Dr. Van Liere has
designed and analyzed hundreds of surveys focused on marketing related issues, including
20
likelihood of confusion surveys, and his testimony has been admitted by a variety of courts. FOF
il 136.
Van Liere and his firm conducted two studies, both of which were the subject of a Daubert
motion brought by AFA to exclude Van Liere's testimony. AFA did not challenge Dr. Van
Liere's credentials as an expert. Instead, AFA hired its own expert, Hal Poret, to review and
provide opinions regarding Van Liere's. surveys and conclusions. AFA FOF il 170; Ex. DX; Ex.
DY. Mr. Poret did not conduct his own survey. The Court denied AF A's Daubert motion at the
end of Dr. Van Liere's examination, Tr. 740:6-10, and again at the close of trial, deciding instead
to "[take] into account all of the record evidence." See Tr. 996:24-997:2.
1) Study 1
In his first study, Dr. Van Liere conducted a lineup, or "Squirt" style study meant to gauge
the likelihood of confusion between the standard character marks "Alzheimer's Association" and
"Alzheimer's Foundation." FOF il 139. Study 1 operated as follows: Survey respondents were
shown the Alzheimer's Association standard character mark. Then, after a "distractor" question,
they were shown either a list of names of charitable organizations that included "Alzheimer's
Foundation" (test condition), or a list of names of charitable organizations that included
"Alzheimer's Trust" (control condition). Ex. 262 il 15. Respondents were then asked questions
meant to measure whether they believed the Alzheimer's Foundation or Alzheimer's Trust was
the same as, or affiliated with, the first organization they were shown - namely, "Alzheimer's
Association." Id. ,I 16; see Ex. 191 (screen prints of Study 1). In the test condition, 50% of
respondents believed that Alzheimer's Foundation was the same as, or affiliated with,
Alzheimer's Association. Ex. 262 il 23". In the control condition, only 16% believed so about
21
Alzheimer's Trust. Id. As a result, Study 1 was said to demonstrate 34% net confusion. Id.
Based on this result, Dr. Van Liere opined that "AFA's use of the name 'Alzheimer's
Foundation' is likely to confuse a substantial proportion of consumers in the relevant population
into believing that 'Alzheimer's Foundation' is the same as, or is affiliated with Alzheimer's
Association." Ex. 262 ,i 33; FOF ,i 138.
Through Mr. Poret's testimony, AFA makes three criticisms of Study 1. First, it alleges that
Van Li ere failed to use the most relevant universe of consumers. Ex. DX ,i,i 77-104. Van Liere
determined that the relevant universe for testing should be people who either donated in the
recent past or were likely to donate in the near future to "charitable organizations focused on
Alzheimer's disease." Ex. 262 ,i 10; Tr. (Van Liere) 641 :7-12. To qualify for the study,
prospective participants could have either answered that they had donated to an Alzheimer's
organization within the past 12 months or that they would consider donating to an Alzheimer's
organization within the next 12 months. AFA FOF ,i 214. The screening data for Study 1
showed that at least 85% of the respondents for the Study 1 qualified on the basis of a potential
future donation,' and not on the basis of any past donation. AF A FOF ,i 215. Moreover, roughly
65% ofrespondents in Study 1 said they would consider donating to at least three of the four
types of charitable organizations about which they were questioned (the others being breast
cancer, animal rescue, and homelessness). AFA FOF ,i 217; Ex. DX ,i,i 80, 91. Mr. Poret
concluded that "[t]here is simply nothing in the data that suggests that most respondents are
anything more than members of the general public who might theoretically consider donating to
any of a number of charities." Ex. DX ,i 102.
While Poret's criticism is well-taken, the Court sees no substantial error in the definition of
22
the survey universe. Relevant consumers who would search for Alzheimer's Association on the
internet would not only include those who have made donations in the past year. And while it is
likely that respondents were inflating their willingness to give in the near future, it would be
manifest error to exclude those who happened to also be considering a donation to a
homelessness charity, for example. Finally, a stricter screen of prospective participants may not
have substantially altered the results given the relatively low awareness of either charity.
Second, AF A argues that Study 1 fails to replicate marketplace conditions. Study 1 showed
respondents the bare words "Alzheimer's Association" and "Alzheimer's Foundation," with both
phrases in plain, black and white, and bolded text. AFA FOF ,r 173. AFA argues that in the real
world, consumers would see color, stylization, and additional content that surrounds and defines
those terms, and so Van Liere's word association bears no relationship to marketplace·
conditions. See Ex. DX ,r,r 110-126; Dkt. No. 287 at 18. The Association responds that since the
two marks would appear in close proximity, in large, plain text, and without any accompanying
logos or colors in the online search context most at issue, a study of this nature is appropriate to
test for confusion between the marks. Ex. 262 ,r,r 15, 18-19, Tr. (Van Liere) 664:24-665:7. Still,
AFA notes that the marks are still seen with accompanying content or context, which is different
for each mark, including different URLs and descriptive words. See Exs. AX, AY, AZ, BA, DL,
DQ; Ex. DX ,r,r 111-16.
While it is true that in instances with competing ad results, consumers would see both marks
simultaneously, and surrounded by distinguishing content, the Court cannot conclude that Van
Liere's word association test, however artificial, is unreliable or lacks probative value as a result.
That the comparison is between the two marks outside the context relevant to this litigation does
23
lessen its probative value in determining actual confusion, but it does not negate its value to the
general analysis of whether AF A's actions are likely to confuse consumers.
AF A's third major criticism of Study 1 more clearly militates against placing great weight on
the survey results. AF A questions Van Li ere' s choice of and process in choosing "Alzheimer's
Trust" as a control, arguing that the choice artificially inflated the net confusion numbers. The
Court agrees. ·
A control term should "share[] as many characteristics of the test stimulus as possible, with
the key exception being the characteristics whose influence is being assessed." AFA FOF ,r 192.
A control term that generates higher levels of confusion would yield lower net confusion when
compared to the test stimulus - "Alzheimer's Foundation."
Dr. Van Liere spoke with his staff about what a proper control would be. AF A FOF ,r 191.
Ultimately, Dr. Van Liere selected "Alzheimer's Trust" as the control for the lineup survey. AFA
FOF ,r 193. NERA staff had "pre-tested" two controls, "Alzheimer's Charity" and "National
Alzheimer's Foundation," which, by generating more confusion, would have yielded net
confusion rates for Alzheimer's Foundation of 12% and 11 % respectively, far lower than the
34% Van Liere computed using "Alzheimer's Trust." Ex. DX ,r,r 44-57, 145, 148-49; Exs. DG,
DI. Dr. Van Liere considered using "Alzheimer's Charity" as a control, but switched to using
"Alzheimer's Trust." AFA FOF ,r 185. Dr. Van Liere testified that he rejected "Alzheimer's
Charity" because it "sounded like a product category rather than a single real entity." Ex. 262 ,r
22.
Pr. Van Liere testified that his staff never disclosed the results of these pre-test surveys to
him, even though the results were disclosed to the Association's attorneys. AFA FOF ,r 184. He
24
also claimed to be entirely ignorant about the methodology employed by NERA staff in
conducting the pre-test studies. AF A FOF ,i 183. At trial, the Court asked Dr. Van Li ere: "Do
you understand your ultimate product to ever have been influenced in any way by what's done in
the pretest studies?" Dr. Van Liere answered: "That's a hard question to answer, the way you've
asked it. Certainly I design the work. I do the work. I oversee the work. I say yes or no to how
we're going to ultimately do my study. That's how I do it. I can't really kind of evaluate
influences, either from other studies we've done in other matters or other studies that staff have
worked on for other people. I wouldn't want to make a general statement about that, how that
influence passes." Tr. 698:9-19. Based on the substance of his answers, and his demeanor on the
witness stand, the Court did not find Dr. Van Liere candid on the subject of the influence of pretest surveys. While it is legitimate to run a pre-test or pilot study for the purposes of improving a
study, no credible explanation was offered for the changes made between the pre-test survey and
the reported survey, and this suggests a potentially improper purpose. See Louis Vuitton
Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415,450 n.196 (S.D.N.Y. 2004), vacated in
part on other grounds, 454 F.3d 108 (2d Cir. 2006).
But even putting this issue aside, "Alzheimer's Trust" is a weak control term. Dr. Van Liere
testified that he and his staff chose "Alzheimer's Trust" because they wanted a two-word
combination that sounded like a real organization but that was not actually a real brand in the
marketplace, and not for any reason related to the pre-test surveys. Tr. (Van Liere) 720:24721: 11. Having a two-word control term was important to filter out any inflation of confusion
that might result if "Alzheimer's Foundation" were the only two-word name on a list being
compared with the two-word mark "Alzheimer's Association." Tr. (Van Liere) 727:10-728:6.
25
Nonetheless, the presence of the word "Trust" as a descriptor for a charity, is both more unique
than "Foundation," and more easily distinguished from "Association." As AFA notes, "trust" is
an ambiguous word that also denotes other meanings, such as "to have confidence in"· or
"estate." Tr. (Van Liere) 687:15-688:5; Ex. DX ,r,r 129, 133-35. For example, "Alzheimer's
Federation" is also a two-word name that sounds like areal organization but is not, and that
could more clem.-ly control for the confusion created by reasons other than Foundation-specific
reasons. Dr. Van Liere could have also used "Alzheimer's Foundation of America" as a control.
The Association's contention is that AF A's use of the two-word mark in particular causes
consumer confusion, so what better way to test that proposition than to compare its use with that
of AF A's full, and undisputedly non-infringing name?
While the Court recognizes that the perfect control may not exist, as a measure of consumer
confusion between two marks, Study 1 - a test of mere words, shown sequentially, and with the
unique word "trust" in the control term - is not particularly persuasive, especially in light of
evidence that other potential controls, including those comprised of three or five words
("National Foundation for Alzheimer's Research" and "Alzheimer's Awareness Foundation")
an
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