307 F. Supp. 3d 260
S.D. Ill.2018Background
- Two nonprofits—the Alzheimer's Disease and Related Disorders Association ("Association") and the Alzheimer's Foundation of America ("AFA")—litigated over trademark claims arising from AFA's purchase of Association-owned trademark terms as search-engine keywords and AFA's use of the two-word name "Alzheimer's Foundation" in online ads.
- The Association owns registered marks (notably the standard-character ALZHEIMER'S ASSOCIATION®) and alleged AFA's keyword purchases and ad copy caused consumer confusion under the Lanham Act and related New York law.
- AFA purchased Association marks as keywords for Google/Bing, ran competing sponsored ads showing the header "Alzheimer's Foundation," and at times used "association" in ad text (later discontinued after complaint).
- The Association introduced anecdotal evidence of confusion (misaddressed checks, isolated media mistakes) and two NERA surveys designed to measure confusion; AFA attacked survey methodology and introduced contrary expert critiques.
- The district court conducted a six-day bench trial, evaluated the Polaroid factors (likelihood-of-confusion test), found the Association's mark conceptually and commercially weak, discounted the surveys for flawed controls and bias, and concluded the Association failed to prove a likelihood of consumer confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether AFA's purchase of Association trademarks as search keywords and use of the two-word name in ads constitutes "use in commerce" and actionable trademark infringement/false designation under the Lanham Act | Association: Keyword purchases plus ad copy using "Alzheimer's Foundation" create initial-interest and point-of-sale confusion, causing diversion of donors | AFA: Keyword purchases alone are insufficient; ads and landing pages differentiate AFA; consumers see ad labeling and URLs; surveys are methodologically flawed | Court: "Use in commerce" established but no likelihood of confusion; judgment for AFA |
| Strength and protectability of Association's mark | Association: Registered mark entitled to protection and has secondary meaning | AFA: Mark is descriptive/weak and widely used generically; limited consumer recognition reduces protection scope | Court: Registration gives prima facie validity, but mark is descriptively weak and commercially weak; factor favors AFA |
| Weight and reliability of Association's survey evidence of consumer confusion | Association: Two surveys (lineup and search simulation) show substantial confusion and support likelihood of confusion | AFA: Surveys suffer from poor controls, order bias, improper universe selection, and thus overstate confusion | Court: Surveys admissible but substantially discounted due to flawed controls and bias; afforded minimal weight |
| Whether Association proved actual confusion, bad faith, and damages causally linked to AFA's conduct | Association: Misaddressed checks, anecdotal incidents, and surveys show actual confusion; AFA acted willfully to exploit goodwill; damages follow | AFA: Check incidents not tied to keyword/ad practices; limited anecdotal confusion; benign circumstantial explanations; damages assumptions lack causal basis | Court: Actual confusion not credibly tied to AFA's keyword/ad practices; bad-faith evidence weak; causation for damages not proved; related claims fail |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (purchases of competitors' marks as search keywords can constitute "use in commerce")
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (announcing the multi-factor likelihood-of-confusion test)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (discussing relative mark strength and online-ad context)
- 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013) (keyword bidding alone often insufficient for liability; focus on ad content and likelihood of confusion)
- Savin Corp. v. Savin Grp., 391 F.3d 439 (2d Cir. 2004) (initial-interest confusion online and the relevance of intentional deception)
- CJ Prods. LLC v. Snuggly Plushez LLC, 809 F. Supp. 2d 127 (E.D.N.Y. 2011) (contrast case where strong mark, bad faith, and evidence of confusion supported relief)
- Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (framework for assessing mark strength and secondary meaning)
- Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44 (2d Cir. 1978) (likelihood-of-confusion standard requiring an appreciable number of ordinarily prudent purchasers likely to be misled)