From The Fashion Law:

It is common knowledge that the Hells Angels logo and the club’s other insignia are utterly off-limits to all but a select group of individuals. In the “rule-bound world of the Hells Angels Motorcycle Club,” investigative reporter Serge F. Kovaleski, stated in 2013, “only full members are permitted to wear the provocative death’s-head patch or the two words of the club’s name, which, like the logo,” are protected by law across the globe. Patches cannot be bought. They may only be earned, and oftentimes, that takes years.

Fontana is an arid, highly-populated inland expanse in San Bernardino County, California bordering on the San Gabriel Mountains. It was here that the Hells Angels got its start. A handful of young World War II veterans, “bored with the tedium of civilian life,” came together in the late 1940s to drink, ride cheaply-acquired motorcycles thanks to a post-war surplus, and generally, pass the time back on U.S. soil. In the process, these men – many in their late teens – laid the foundation for what would become “a uniquely American subculture of hardened individualism, fierce fraternity and contempt for society’s mores,” as Kovaleski so aptly put it.

In the decade that followed the Fontana chapter’s founding, it would be joined by a number of other, similar groups. According to the New York Times, “Throughout the 1950s, Hells Angels groups spread out across California, eventually uniting into a confederation with each club maintaining its own autonomy.” The now-notorious club has since extended much further than the bounds of California to include independently-operated charters that dot the globe – from Southern California and Manhattan to Paris, Rio de Janeiro and Sydney, just to name a few.

. . . .

Despite a lack of clarity about the group’s numbers, at least one aspect of its history is relatively clear; it is littered with legal matters that speak to a vast empire of drug dealing, trafficking in stolen goods, racketeering and extortion. If court dockets across the U.S. are to be believed, where members of this organization go, violent crime tends to follow.

But look beyond the headline-making Racketeer Influenced and Corrupt Organizations Act indictments, jury verdicts, and lengthy prison sentences, and you will see that over the past two decades or so, a different type of lawsuit has come to be associated with the group: intellectual property litigation.

As the stories go, if a Hells Angel member “sees somebody with a Hells Angel patch that doesn’t belong on his back,” he will rip it off and bestow upon him a brutal, often-bloody lesson. “The Angels have always dealt swiftly with fakes, phonies – imposters,” Intellectual Property Magazine wrote a few years ago. “That’s one of the reasons why the patch is so important – it’s a mark of authenticity.”

If the 70-year old club learns of a company making use of its legally – and sometimes physically – protected logos, its members take a markedly different approach; they take legal action.

Court filings across the country evidence this. In 1992, for instance, the Hells Angels Motorcycle Club (“HAMC”) filed suit against Marvel Entertainment Group over a Hells Angels-themed comic book. In the spring of 2006, the group took on a division of Walt Disney over the PG-13 rated film “Wild Hogs,” a comedy about middle-aged bikers, starring Tim Allen, John Travolta, Martin Lawrence and William H. Macy. In 2011, they went up against Alexander McQueen, Saks Fifth Avenue and Zappos.com, taking issue with the manufacture and sale of handbags, jewelry and garments bearing designs that were – in their eyes – far too similar to the club’s skull-and-wings death’s-head design.

In all of those lawsuits and the frenzy of others like them, Fritz Clapp, counsel for the HAMC – the elite group of motorcycle enthusiasts or the vicious gang that uses violence and intimidation to further its criminal objectives, depending on whose definition you adopt, the group’s or the U.S. Department of Justice’s – pointed to federal trademarks registered to the HAMC, some dating back to the 1970s, and called infringement.

Link to the rest at The Fashion Law

PG will note that the websites of Hell’s Angels MC and Hells Angels Media.com demonstrate a unique design sensibility bristling with evidence of a distinctive artistic oeuvre which telegraphs aggressive defense of the organizations’ intellectual property.

As a brief introduction, PG disparaged semicolons on TPV yesterday. He stated that some types of lawyers tend to overuse this punctuation mark and that writers should be careful when using it.

Many defenders of the semicolon commented on its usefulness and relevance to 21st Century writing.

Following is an example of legal issues arising with using a semicolon when a comma is needed.

From Troy & Schwartz, Attorneys at Law:

Although the usage of commas and semicolons in the description of goods and services included in a trademark application may seem to be nothing more than compliance with a  grammatical rule, the fact is that the presence of a comma and/or semicolon can have a substantive law effect.  Section 1402.01(a) of the Trademark Manual of Examining Procedure (“TMEP”) has specific guidelines governing the usage of semicolons and commas:

Semicolons should be generally used to separate distinct categories of goods or services within a single class.  For example, “cleaners, namely glass cleaners, oven cleaners, and carpet cleaners; deodorizers for pets” is an acceptable classification for [International] Class 3.  In this example, the word “cleaners” means the category covering “glass cleaners, oven cleaners, and carpet cleaners.”  The semicolon prior to “deodorizers for pets” indicates that the deodorizers are a separate category of goods from the cleaners. 

Seems straight forward enough, doesn’t it?   Just use the right punctuation in describing the goods and services.  Yet the 2013 precedential opinion by the Trademark Trial and Appeal Board (“Board”) in In re Midwest Gaming & Entertainment, LLC* demonstrates that punctuation can impact the interpretation of the “reach” of the described goods and services.  In Midwest Gaming, the examining attorney had rejected the standard character word mark LOTUS for “bar services located in a casino” under International Class 43 on likelihood of confusion grounds with the previously registered mark LOTUS, also for Class 43 services.  The registrant’s specified services were for “providing banquet and social function facilities for special occasions; restaurant and bar services.” Note the usage of the semicolon in the registrant’s description of services.

In appealing the examining attorney’s rejection, the applicant argued that the registrant’s bar and restaurant services were limited to services involving banquet and social function facilities.   Thus, the registrant was restricting its services to trade channels and purchasers distinct from the applicant’s trade channels and purchasers associated with casinos and casino patrons.  Since the trade channels were distinguishable, any likelihood of confusion among purchasers of the registered mark owner’s services and the applicant’s own services was eliminated.

The registrant’s usage of a semicolon “ruined” the applicant’s argument.  The Board emphasized that under the standard examination practice, a semicolon is user to separate distinct categories of goods and services.  Here, the semicolon separates the registrant’s restaurant services and bar services into a discrete category of services which are not connected to or dependent on the “ ‘providing banquet and social function facilities for special occasions’ ” services set out on the other side of the semicolon.”

. . . .

The outcome may well have been different if the registrant’s description of goods and services had included a comma instead of the semicolon.   Why?  Because then the applicant would have had a stronger argument that the registrant was limiting its restaurant and bar services to banquet and social function facilities.

Link to the rest at Troy & Schwartz

From Writer Beware:

If you’re a writer, and you hang out on Twitter and Facebook, you’ve probably heard about #cockygate.

If you haven’t….An author named Faleena Hopkins has registered two separate trademarks for the word “cocky”, which is used in all the titles of her multi-book romance series. One of the trademarks is a design mark (the word “cocky” in a stylized font, as seen above); the other is a word mark (just the word “cocky”). Both refer to “a series of downloadable e-books in the field of romance” and “a series of books in the field of romance.”

That description is significant. Because over the past week, Hopkins has begun threatening other romance writers who use “cocky” in their titles–even where those titles are not part of a series, or the word is not used in a series title–with legal action unless they re-title and re-publish their books.

. . . .

Note that neither of [Hopkins’ trademarks] is, for example, “a trademark on the word ‘COCKY’ as used in book titles.” The registrations cover a book series, and this is made evident if one looks at the 9-page specimen of use she submitted to the Trademark Office to support the registration: http://tsdr.uspto.gov/documentviewer?caseId=sn87604968&docId=ORC20180416120311#docIndex=9&page=1. Note that “Cocky” appears in each of the titles in a manner that connotes that the book is printed as part of the “Cocky”-brand book series. Indeed, without the fact the word is used as part of a book series, it is unlikely Hop Hop Productions [Hopkins’ company] could have obtained the registrations.

This is because–and this is critical–in order for a trademark to exist and be registrable and enforceable, it must perform a “source identification function.” Here, Hop Hop was able to convince the Trademark Office that it has, since June of 2016, used the word “Cocky” to indicate the SOURCE of a series of romance books, and thus it was able to get it registered. There likely had to be a series of books for Hop Hop to convince the Trademark Office that the word “Cocky” performed this source identification function—one book with “Cocky” in the title would likely not have been enough to convince the Trademark Office, especially given that Hop Hop has ostensibly used the mark for less than two years. Just like when people see “Harlequin” on a book, they think of Harlequin Enterprises as the SOURCE of that book because “Harlequin” indicates more than just a book title. It indicates the SOURCE. See http://tsdr.uspto.gov/documentviewer?caseId=sn72184920&docId=ORC20081030112630#docIndex=10&page=1.

Because source identification is necessary to create and register a trademark, in order for there to be trademark INFRINGEMENT, as Hop Hop has apparently alleged in certain cases, the allegedly infringing “thing” must also be performing a source identification function. Thus, not all uses of a word perform a source identification function, and if there is no such use, there likely can be no trademark infringement.

. . . .

Thus, if you have one book and it is titled, for example, “The Gardener was a Cocky Lad,” I invite you to ask: is your use of the word “cocky” performing a source identification function such that people would be confused into thinking that Hop Hop was the source of your book? Is it being used only in a classic fair use sense to describe the gardener in your story as cocky, as defined by Webster?

Link to the rest at Writer Beware and thanks to Rachel and others for the tip.

From The Fashion Law:

In the mid-1970’s, a group of famed European luxury brands decided to tap into the resurgent globalization of the post-World War I and World War II economy to grow significantly beyond the pool of their existing customers. In order to do so, they implemented a new marketing strategy, one that aimed to allow them to expand their consumer base but also enable them to remain firmly within the luxury sector. That strategy – or the Luxury Strategy – consists of (among other things), 24 “anti-laws” by which all luxury brands should abide, according to the strategy’s creator (and also the former CEO of Louis Vuitton), Vincent Bastien, to maintain this delicate balance.

The tenets of the Luxury Strategy dictate that “true luxury brands” do not compete with each other, as each luxury brand’s selling proposition is inherently unique. They also do not “pander to customers’ wishes,” respond to rising demand, rely on celebrities to do their advertising for them, let price be the defining feature of luxury, relocate their factories, openly sell online, and so on.

Other sources have put forth additional – and oftentimes complentary – elements that may be used to form a definition of “luxury.” As the late Vogue Italian editor-in-chief Franca Sozzani put it in 2011, “Craftsmanship is luxury. A product is luxe when it is handmade, tailored for few. Luxury meaning exclusiveness.” Pamela N. Danziger echoed this in her book, “Putting the Luxe Back in Luxury: How New Consumer Values are Redefining the Way We Market Luxury,” stating that “Superior performance, craftsmanship, exclusivity, innovation, heritage, unique design aesthetic, and creative expression” are some of the core qualities of a luxury house.

As reporter-turned-VC Om Malik put it just this week, “Mass produced, average products worn/consumed by millions aren’t luxury.” And still yet, Dan Herman, Ph.D., stated in his 2006 article, “The Eternal Principles for Creating Luxury Brands,” luxury goods in the most traditional sense “are not designed and planned according to consumer tastes and expectations.” Instead, he noted, “A luxury brand sets its own standards and does not adhere to fashions.”

. . . .

In theory, the modern-day utilization (or more accurately, the lack of utilization) of these tactics by brands may enable us to gauge where, exactly, brands that have traditionally been categorized as luxury ones (i.e., the Louis Vuitton’s, Gucci’s, Chanel’s, of the world) stand in 2018, in comparison to say, Hermès or potentially, Goyard.

Interestingly, but unsurprisingly, many of the fashion industry’s “luxury” stalwarts – many of which originated as luxury brands – no longer fit neatly within this larger set of definitions, for any number of reasons, ranging from their attempts to meet consumer demand (by upping production) and their obvious desires to pander to consumers’ trend-specific or seasonal whims; the penchant for streetwear-centric collections immediately comes to mind.

It appears that as consumers have made demands of brands, many stalwart luxury participants have altered their way of doing things in order to be meet those demands and operate in the way that is most profitable. As Marketing Week’s Lucy Tesseras stated in an article in 2015, “As wealth is redistributed and the number of luxury consumers rises brands must adapt to meet changing consumer behavior.” It seems that this is exactly what brands have done, particularly publicly-held ones that have shareholders to answer to when it comes to revenue and growth.

With that in mind, the question is this: Since so few of the brands that have been traditionally characterized as luxury brands still fall within the bounds of the term, are we to adapt our definition of luxury? 

Link to the rest at The Fashion Law

Brand Protection: More than a Luxury for Luxury Names

From MarkMonitor:

It’s estimated that the total value of fakes sold worldwide each year numbers as high as $1.8 trillion, with watches, bags, clothing, jewelry and perfume making up the bulk of goods seized at borders. Welcome to the life of countless luxury brands, now an appealing target for online counterfeiters who lure consumers to rogue sites under the guise of their prestigious names.

. . . .

Sophisticated counterfeiters employ savvy marketing tactics, including illicit promotions in search and social media, to confuse consumers and intercept web traffic. This is especially the case with luxury good spamming, which siphons traffic away from a genuine brand and directs customers to sites selling counterfeit goods.

Legitimate brands pay a heavy price: lost revenue, flagging demand, angry channel partners, skyrocketing warranty and service costs and increased product liability, all while their consumers are duped into buying substandard goods. As counterfeiting in digital channels proliferates, fashion and luxury brands find themselves in a seemingly never-ending battle to shut down rogue websites.

. . . .

Instead of taking down rogue sites one-by-one, get more efficient with a wider lens that takes down entire networks. Taking on counterfeiters at scale results in massive, timely and cost-effective shutdowns and boosts the effectiveness of litigation for greater return on your investment.

Link to the rest at MarkMonitor

From The National Post:

Here is a list of just some popular romance novel titles: Cocky Bastard, Cocky Chef, Cocky Biker, Cocky Fiancé, Cocky Cage Fighter, Cocky Client, Her Cocky Doctors, Mr. Cocky, My Cocky Cowboy, The Cocky Thief and, my personal favourite, simply, Cocky.

Notice a pattern? Yes, romance literature loves a rugged, arrogant heartthrob. And a double-entendre.

 But with an entire 17-book series based on a pair of, well, cocky bastards, writer Faleena Hopkins decided to trademark not just the title of her series, Cocker Brothers of Atlanta, but the word “cocky” itself.

It’s worth noting that Hopkins’s trademark for “cocky” is as a word mark, meaning a text-only logo treatment of the word. Hopkins has a specific font and style for her use of the word, so if others use that same style, they’d have a problem.

. . . .

Despite this, and what looks like a misunderstanding of her own trademark, Hopkins has been sending various romance authors, including Nana Malone, Jamila Jasper and Claire Kingsley, who have used the word “cocky” in their book titles, copyright notices and cease-and-desist letters, even regarding those books that were previously published.

On Twitter, Hopkins defended herself against claims of copyright bullying, saying, “Copying a series to be found in keywords is the money grab. They keep their money and everything if they retitle. I am taking nothing.”

Link to the rest at The National Post

PG has received several questions about a female author named Faleena Hopkins who has apparently obtained a U.S. trademark registration for the word, “Cocky” as used in connection with romance novels.

Evidently, Ms. Hopkins has been threatening other authors with claims of trademark infringement for their use of the word, Cocky, in titles and as names for their characters.

Here’s the text of an email Ms. Hopkins has reportedly sent to another romance author per a post by Nate Hoffhelder on The Digital Reader:

Hi Jamilla,

My name is Faleena Hopkins, author of Cocker Brothers, The Cocky Series,

The Federal Trademark Commission has granted me the official registered trademark of the word/mark “Cocky”, no matter the font.

Trademark Registration number: 5447836

I am writing to you out of professional respect so that you may rename your book “Cocky Cowboy” which shares the same title as my book, and republish all of the versions (ebook, paperback, and Audible) on Amazon to keep your ratings and money earned.

My attorney at Morris Yom Entertainment Law has advised me that if I sue you I will win all the monies you have earned on this title, plus lawyer fees will be paid by you as well.

I will do that – but I would rather give you the option.

I have had this series established since June 16, 2016 and I take all of the hard work I put into establishing it very seriously.

Your hard work I also take seriously.

You have the opportunity to adjust, rename, and republish before taking further action. You can do so on Amazon without losing reviews.

Thank you,

Faleena Hopkins

PG does not practice trademark law, but somewhere in the back of his mind, a memory stirred. He has done a little quick and dirty research which appears to have confirmed that memory.

First, the obligatory disclaimer: PG is a lawyer, but he is not your lawyer. You obtain legal representation by hiring a lawyer, not reading a blog post, whether created by a lawyer or not. PG is not planning to start practicing trademark law and, if he did, he would do much more than quick and dirty internet research before issuing an opinion about trademark law.

If you can imagine any more disclaimer language, please feel free to include it in a comment so PG can add it to his disclaimer.

Now that everyone is thoroughly disclaimed, here’s the little memory that stirred in PG’s mind:

In some jurisdictions based upon English common law – Great Britain (of course), Ireland and the United States – a hardy entrepreneur could obtain a common law trademark. The entrepreneur obtained this trademark by using it in connection with goods and services sold by him/her. If you marketed your ale as Mangy Dog Ale on a regular basis and Mangy Dog Ale became associated with the refreshment you produced, you had an enforceable trademark. If a brewer in a neighboring village started calling his/her ale Mangy Dog Ale, you could make him/her stop using your trademark.

No government registration was required to obtain a common law trademark to the name you chose and used. If your competitor said he/she should be able to use the trademark, the answer to a simple question decided the issue – “Who used the trademark first?”

In some jurisdictions that have not built their legal systems on the foundation of the English common law, the owner of a trademark is the first person to file for the trademark. These systems are often called first-to-file systems.

Here are some quotes from various trademark attorneys on the first-to-use vs. first-to-file question in the US:

From Tyler Hampy of Widerman Malik:

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

That being said, trademark ownership is not acquired by federal or state registration, although registration is absolutely beneficial. Ownership rights flow from prior use, either actual or constructive. As the Federal Circuit observed: “[t]he requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration.” Therefore, even if you had a trademark registration and it was later cancelled, the underlying common law rights in a mark continue.

To acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in commerce. Therefore, a party pursuing a trademark claim must meet a threshold “use in commerce” requirement.

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade. The use must be more than merely to reserve a right in a mark. Trademark protection is granted only to marks that are used to identify and to distinguish goods or services in commerce, which typically occurs when a mark is used in conjunction with the actual sale of goods or services.

From Keith A. Barritt of Fish & Richardson:

It is commonly assumed that once a federal trademark registration is obtained it confers the exclusive right to use the mark on particular goods or services and can readily prevent use by any other party. Indeed, the Trademark Act appears to say precisely that. However, trademark law is not quite so easy, and in fact having a trademark registration – even a valid and “incontestable” one – does not guarantee the exclusive right to use the mark in all circumstances.

Unlike many countries, the United States confers trademark rights by use of the mark. At the outset, trademark “registration” is little more than a formal acknowledgement of rights already in existence. This contrasts sharply with patents, which actually grant substantive rights the patentee otherwise would never have.

. . . .

If a prior user sold goods bearing the mark in an area prior to use in that area by the owner of an incontestable registration and prior to the registration date, the prior user would have superior rights and could in fact block the registrant’s use of the mark in that area. A prior user could even be the prior user nationwide, and thereby be entitled to block a registrant’s use of the mark throughout the entire country.

From Brian Hall of Traverse Legal, PLC:

Today I will be looking at the issue of the difference between the first to file rules and the first to use rules as it pertains to trademark rights.  This is a common question that I get, “Is it enough that I was the first to file for trademark registration in the United States?”  Put another way, “Does it give me the rights that I want?”  And the short answer is no.

Within the United States, it is the first to use who has rights in a trademark.  The reason this becomes important is because people tend to go to the United States Patent and Trademark Office or USPTO database and look up registered trademarks or even applied for trademarks to determine who has rights in that particular mark.

While that’s a good start, it’s not entirely complete.  And the reason being, is that the United States follows the first to use rule under trademark law.  What that means is that the first entity to make a valid use in commerce of the particular mark is the one that has rights.  This is because under common law, as opposed to statutory law, the first to use is the one that gets the rights to use it moving forward, even if they do not pursue a trademark registration.  This doesn’t mean that one should avoid getting a trademark registered with the USPTO.  But what it does mean is that if you determine that someone has applied for or registered a trademark with the USPTO, and you believe you were the first to use it, you may have actions that you can take to further establish your rights.  You might be able to file what’s known as a cancellation proceeding in front of the TTAB or you may jump right to litigation.

From B. Brett Heavner and Marcus H.H. Luepke of Finnegan:

Under U.S. trademark law, being the first to file an application to register a trademark does not guaranty priority to the applicant. In general, under U.S. common law it is the date on which a mark was first used by its owner in the United States that decides the right of priority, irrespective of whether the mark is ever registered in the U.S. Trademark Office. Unlike other jurisdictions, mere use of an unregistered common law mark in the United States gives the user territorial priority trademark rights even without requiring a certain level of notoriety. Such earlier use establishes a right of priority even over a later-filed U.S. application to register a similar mark if the first use of the mark of the application was commenced after the prior first use of the unregistered common law mark.

. . . .

[F]oreign applicants sometimes adopt a mark knowing it was already in use in the United States by another party under the mistaken belief that the mark must be registered with the U.S. Trademark Office for that party to have trademark rights. After confirming that the other party had failed to apply for a registration, these foreign applicants commonly believe that they are safe to launch their product in the United States by being the first to apply for a U.S. registration.

Unfortunately, such foreign applicants often receive cease and desist letters from the prior user and only then learn that they cannot successfully rely upon their application filing date due to the other party’s prior common law use, and must therefore cease use of their mark in the United States. Under U.S. trademark law, actual knowledge of another party’s prior use can even lead to claims for willful trademark infringement and liability for treble damages.

PG says you can Google other statements of the First to Use trademark principles to your heart’s delight by searching on trademark “first to use”

Or you can search Amazon books for the word, “Cocky” in a title to see when they were first published.

Ms. Hopkins’ trademark registration, number: 5447836, helpfully provides the information that she first used the mark, “Cocky”, on June 16, 2016. If authors were using the mark, “Cocky”, prior to that date, they might be the rightful owners of the trademark.

Several online discussions of Ms. Hopkins’ trademark mentioned that RWA was planning to look into the matter.

From The Wall Street Journal:

Huge numbers of Chinese citizens are seeking trademarks in the U.S., flooding the U.S. Patent and Trademark Office with applications that officials say appear to be rife with false information.

The surge of filings from China has surprised the patent office. Officials say it could be fueled by cash subsidies that Chinese municipal governments are offering to citizens who register a trademark in a foreign country.

Trademark applications from China have grown more than 12-fold since 2013 and for fiscal 2017 totaled thousands more than the combined filings from Canada, Germany and the U.K. About one in every nine trademark applications reviewed by the U.S. agency is China-based, according to government data.

Patent and trademark officials say cash incentives could be a factor. As part of a national effort to ramp up intellectual-property ownership, China’s provincial governments are paying citizens hundreds of dollars in Chinese currency for each trademark registered in the U.S.

. . . .

The Patent and Trademark Office has found numerous instances of Chinese applicants asserting that a proposed trademark is used in commerce, while submitting multiple nearly-identical images of the same consumer product with a different word on the brand tag. FORLISEA, CINYIFAAN, ENJOYSWEETY and GOOKET are some of the two dozen Chinese brands shown on an identically designed pair of zebra-print pants, for example.

. . . .

Having a trademark registered in the U.S. is crucial for sellers on Amazon, whose brand-registry program rewards officially trademarked products with more site visibility and a higher listing in search results.

A number of Chinese merchants appear to be represented by foreign attorneys who aren’t licensed to practice law in the U.S., violating application rules. In one recent application, a Shenzhen address was listed for an attorney representing a Hong Kong client who had photoshopped the word “Instamarket” over a Walmart storefront.

And more than a dozen Chinese applicants entered the name “Wendy” into the entry box for the attorney name on the trademark application.

Link to the rest at The Wall Street Journal

From Rebecca Tushnet’s 43(B)log:

Alzheimer’s Disease & Related Disorders Association, Inc. v. Alzheimer’s Foundation of America, Inc. 2018 WL 1918618, No. 10-CV-3314 (S.D.N.Y. Apr. 20, 2018)

The Association (counterclaim plaintiff) sued the Foundation (counterclaim defendant), alleging that the Foundation’s purchase of Asssociation trademarks as search engine keywords and use of the two-word name “Alzheimer’s Foundation” constituted trademark infringement and false designation of origin under the Lanham Act. The court found that confusion was unlikely.

The parties first litigated confusion in 2007, starting with fighting over checks made out to one entity but sent to the other.   The Association was formed in 1980 and is the world’s largest private non-profit funder of Alzheimer’s research. It has more than 80 local chapters across the nation providing services within each community. In fiscal year 2016, the Association raised more than $160 million in contributions and spent $133.6 million on program activities, including more than $44 million on public awareness and education. The Association had nearly 9 billion “media impressions” and more than 41 million website visits in that FY.

. . . .

The Association has a standard character mark registration for ALZHEIMER’S ASSOCIATION, registered since June 8, 2004, but in use since 1988. The Association also has other registrations using “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. In 2016, nearly 500,000 participants took part in Association walks in 630 communities, raising more than $78.6 million. The Association websitet displays “alz.org” and “Alzheimer’s Association” at the top of its landing page. Its principal color is purple.

The Alzheimer’s Foundation of America was founded in 2002 and has more than 2,600 member organizations throughout the country that collaborate on education, resources, best practices and advocacy. AFA has awarded millions of dollars in grant funding to its member organizations for services such as respite care. In 2010, AFA’s “revenues, gains and other support” from “contributions and special events including telethons” was approximately $6.6 million. Its website is at www.alzfdn.org, and principally uses the colors teal and white. Its first registered mark, from 2006, is for “AFA Alzheimer’s Foundation of America” with the organization’s “heart in hands” logo.

. . . .

The Association also used keyword advertising, including buying “Alzheimer’s Foundation” as a keyword until 2010.

A Google search of “alzheimer’s association” from June 2014 showed the Foundation’s ad as the top result, with the main header as “Alzheimer’s Foundation – alzfdn.org” with the tagline “An Association of Care and Support. Reach Out to Us for Help….” The second and only other ad was from the Association. Their header reads “alz.org – Alzheimer’s Association,” and the tagline “Honor a Loved One with a Tribute Donation – Support Research & Care.”

. . . .

“Alzheimer’s Association” sometimes led to more clicks on the Foundation’s sponsored ad than those received from its own brand. Indeed, campaigns targeting Foundation’s competitors performed the best and comprised roughly 40% of AFA’s keyword marketing budget.   During some of the relevant period, the Foundation may have been using Association-related metatags, though the court found this immaterial “as [site metatags] have likely not been used by search engines since before 2009, and so have little effect on the ordinary prudent consumer.”

On the Foundation’s 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’s marks. “At no point while on the AFA website during the donation process would a consumer see any of the Association Marks.” So too in reverse for the Association.

The Foundation was the first to complain of confusion, in 2004, when its then CEO wrote “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.” This might not have related to sponsored ads, though. In 2014, a Foundation employee wrote that a survey showed many people saying they donated before or were “introduced to AFA through a fund raising event,” and speculated that “several respondents may have us confused with the Association or with ‘the cause.’ ”

Between 2007 and 2012, the Association received more than 5,700 checks made payable to “Alzheimer’s Foundation” or a variant totaling over $1.5 million. The Foundation received more than 5,000 checks between 2006 and June 2016 made payable to “Alzheimer’s Association” or near variants. A large percentage of the Foundation’s online donors are first-time donors, and that the average online donation, as well as check donation, is under $100.  The Foundation argued that the number of Foundation-labeled checks received by the Association was only 0.1% of the total number of checks received, and 0.252% of the total value of checks received.

. . . .

There was also two studies from the Association and an expert critique by the Foundation.  Study 1 found 34% net confusion between the standard character marks “Alzheimer’s Association” and “Alzheimer’s Foundation.”  The court found that this was somewhat artificial but still probative to actual confusion. However, the court found that the control—“Alzheimer’s Trust”—artificially inflated the net confusion numbers.  They “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.

Link to the rest at Rebecca Tushnet’s 43(B)log

PG found this litigation interesting because, in a (distant) past life, he developed a startup tech company’s Google keyword and Google Adwords programs.

One of his first Adwords buys was ads that were keyed to the names of the main competitors of the startup. In his recollection, this later became a standard Adwords strategy for a lot of different products, tech and non-tech.

As far as general Google search results are concerned, they’re governed by Google’s proprietary algorithms and the order in which the search results appear is entirely controlled by Google (although search engine optimization techniques can help improve search rankings).

Google results are far from being finally dispositive on the issue of whether the Foundation’s mark infringes the Association’s mark, but it’s interesting that those results apparently played a large role in the court’s consideration of the matter.