Non profit trademark owners can be protective about their brand names, too.

Competing Alzheimer’s foundations recently battled it out in a trademark opposition before the Board.  In the end, the Board was more charitable to the Opposer, ruling in its favor on its likelihood of confusion claim.

Background.  In Alzheimer’s Disease and Related Disorders Association, Inc. v. Alzheimer’s New Jersey, the Applicant sought to register the design composite mark ALZHEIMER’S NEW JERSEY WALK TO FIGHT ALZHEIMER’S.  The services were for a wide variety of charitable foundation and fundraising in International Class 36.  Opposer took issue with Applicant’s mark, and filed a notice of opposition.   As the Board indicated,

For thirty years between 1985 and 2015, Opposer and Applicant were affiliated, and since 1998 the parties’ relationship was governed by a Statement of Relationship which granted to Applicant a non-exclusive license to use Opposer’s trademarks

The Opposer relied on its prior rights and registration for the word-mark WALK TO END ALZHEIMER’S  (with “WALK” and “ALZHEIMER’S disclaimed) for charitable foundation and related services in International Class 36.   In addition, the Opposer also relied on an application for unregistered, common law trademark rights in and to the composite design mark  WALK TO END ALZHEIMER’S (with the words ALZHEIMER’S ASSOCIATION) in smaller font.  The Opposer had disclaimed “WALK,” “ALZHEIMER’S,” and “ASSOCIATION.”

In its answer, the Applicant denied the allegations, arguing that the claims were barred under the prior registration defense, also known as the Morehouse defense.  Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969).  The Applicant based its defense on ownership of the following registered marks:

  • Reg. No. 5053635 of the mark WALK TO FIGHT ALZHEIMER’S (with “WALK” and “ALZHEIMER’S” disclaimed) for charitable fundraising services in International Class 36; and
  • Reg No. 5373234 of the composite design mark ALZHEIMER’S NEW JERSEY, the depiction of the state of New Jersey, and WALK TO FIGHT ALZHEIMER’S with a sneakers design (with all of the foregoing disclaimed of the words “to fight” and the sneakers design).  The mark, like the others, was for charitable fundraising services in International Class 36.

The issues presented before the Board were (a) whether Opposer had established that Applicant’s Mark is likely to cause confusion with Opposer’s Marks; (b) whether Opposer had established that Applicant’s Mark was likely to dilute Opposer’s Marks; and (c) whether the Applicant’s Morehouse defense warranted dismissal of the Opposition.

Analysis.   Below is a summary of the main issues that the Board addressed.

  • Standing.   In any proceeding before the Board, an Opposer must establish its entitlement to a statutory cause of action.  This concept is formerly known as “standing.”  To do so, the Opposer must show that its opposition is within the zone of interests protected by 15 U.S.C. Section 1063, and that is has a reasonable belief that it will be damaged by registration.   Standing is a low threshold before the Board.  Here, since Opposer is relying on its own valid trademark registrations as a basis for the opposition, it has met its burden that is has a legitimate interest to oppose the Applicant’s trademark application.
  • Morehouse Defense.   The Morehouse defense, also known as the prior registration defense, is an equitable defense that can be invoked by an Applicant.  It applies where an Applicant owns a prior registration for the same or substantially identical mark for the same mark and substantially similar goods or services for which is it now applying.  In theory, this defense can be successful since there already exists a registration that would damage Opposer.  In other words, allowing the later-filed application of the Applicant to issue would not add to Opposer’s injury.   Here, the Board did not accept Applicant’s defense as for it to be applicable it requires that the Plaintiff not be able to cancel the prior registration.  Since here, the prior registration is less than five years old, the Opposer still has the ability to procure trademark cancellation of the mark under Section 2(d) of the Trademark Act.

Likelihood of Confusion.  In any Section 2(d) case, the Opposer must establish priority rights and a likelihood of confusion.  Priority rights can be established by introducing into evidence of a prior trademark registration, prior use as a trade name or common law rights that predate the Applicant’s rights.  Finally, priority can also be established through evidence of use analogous to trademark use.  In this case, Applicant did not challenge Opposer’s priority.   With regard to likelihood of confusion, any one factor may be determinative. Yet, two key considerations are similarity of the marks and similarity of the goods or services.

  • Similarity of the marks.  Here, the Board confined its analysis between Applicant’s mark and Opposer’s pleaded logo mark.  This is due to the fact that Opposer’s pleaded logo mark is the most similar to Applicant’s mark.  Opposer argued that the parties’ marks have identical commercial impressions.  Both involve Alzheimer’s charitable fundraising walks, share common core words (Alzheimer’s and walk),  and contain dominant purple backgrounds.  Applicant argued that the words should be accorded greater weight, and that each mark contains additional wording the key wording is merely descriptive.  Nonetheless, the Board found in comparing the marks, the two had quite similar visual and word elements.  Therefore, it concluded that the marks were similar in appearance, commercial impressions, and meaning.
  • Similarity of the services.  With regard to the similarity of the services of the parties, the Board found that charitable fundraising services and fundraising in the nature of walks for Alzheimer’s are legally identical.  Accordingly, this factor weighed in favor of a finding of likelihood of confusion.  As to the similarity of the channels of trade, since the Opposer relied on its common law rights, the analysis was confined to those trade channels that Opposer had established on the record.  Where, as here, the Applicant did not limit its trade channels in it application, it is presumed that its services move in all channels of trade and are available to all classes of purchasers.  Therefore, based on the evidence presented, and due to the fact that the parties’ services offered under their respective marks are offered on at least one common social media platform, it was found that the trade channels overlapped.

The Board reviewed the strength of the Opposer’s ALZHEIMER’s Mark, as this could have a bearing on the likelihood of confusion analysis.  The Board noted that Opposer’s log mark is comprised of several elements, including colors.  While Opposer’s mark had some disclaimed matter, Applicant did not demonstrate that the overall conceptual strength of Opposer’s log mark as a whole was weak.  Furthermore, while the Board recognized the existence of numerous other “Alzheimer’s walk” marks, the purple color component of Registrant’s mark constituted a large visual component that was not impacted by other third-party marks introduced by Applicant that did not include the dominant color purple for Alzheimer’s charity services.

Holding.  Based on all of the relevant likelihood of confusion factors, the Board held in favor of Opposer and entered judgment in its favor in accordance with Section 2(d) of the Trademark Act.