Monday, January 03, 2022

TTAB Sustains Section 2(d) Opposition to ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design for Charitable Fundraising

The Board sustained this opposition to registration of the mark ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design on the ground of likelihood of confusion with the common law mark WALK TO END ALZHEIMER'S & Design, both marks for charitable fundraising services. The Board readily rejected the applicant's prior registration (a/k/a Morehouse ] defense. Alzheimer's Disease and Related Disorders Association v. Alzheimer's New Jersey, Opposition No. 91245121 (December 31, 2021) [not precedential] [Opinion by Judge Robert H. Coggins].

Prior Registration:The Morehouse defense is an equitable doctrine that applies when an applicant owns a prior registration for the same or substantially identical mark for the same or substantially identical goods or services as those of the opposed application. "In such case, 'the opposer cannot be further injured because there already exists an injurious registration,' and therefore the additional registration does not add to the injury."

The Board "quickly dispatch[ed] this defense because for Morehouse to be applicable, it requires that the plaintiff not be able to cancel the prior registration." The prior registration on which applicant relied issued in 2018 and thus was still vulnerable to cancellation under Section 2(d).

Likelihood of confusion: The Board's likelihood-of-confusion analysis was straightforward, summarized as follows:

We have found that the services are in-part legally identical, with overlapping channels of trade and classes of consumers; donors include members of the general public who are not sophisticated and may contribute but spare change to support Alzheimer’s-related organizations; Opposer’s mark has achieved some commercial strength, and is entitled to a slightly increased scope of protection; the marks have similar overall appearances and create similar commercial impressions when used in connection with legally identical services; there is no evidence of actual confusion, and the record does not demonstrate whether there has been a real opportunity for actual confusion to have occurred; and the record evidence is insufficient to support a contention that Applicant adopted the subject mark in bad faith.

And so, the Board sustained the opposition.

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TTABlogger comment: Opposer and Applicant were affiliated from 1985-2015, during which period applicant enjoyed a non-exclusive license to use opposer’s trademarks.

Text Copyright John L. Welch 2022.


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