Alzheimer's Foundation of Americav.Alzheimer's Drug Discovery Foundation

Trademark Trial and Appeal Board

Jan 16, 2020

91223128 (T.T.A.B. Jan. 16, 2020)

Mailed: January 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Alzheimer’s Foundation of America
v.
Alzheimer’s Drug Discovery Foundation
_____

Opposition No. 91223128
_____

Mark J. Ingber of The Ingber Law Firm for Alzheimer’s Foundation of America.

Randy M. Friedberg & Jacqueline C. Hatherill for Alzheimer’s Drug Discovery
Foundation.
_____

Before Cataldo, Ritchie and Kuczma, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Alzheimer’s Drug Discovery Foundation, applied for registration on the
Principal Register of the mark
identifying the following services:

Charitable fundraising services and accepting and administering monetary
charitable contributions to support the provision of educational information to
the general public, physicians, and caregivers on suggested therapies and
related issues to prevent Alzheimer’s and maintain cognitive vitality, as well
as to fund research to find a means to end, cure, or otherwise treat Alzheimer’s
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91223128

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disease; charitable services, namely, providing fundraising to support medical
research funding, in Class 36; and

Charitable services, namely, providing educational information to the general
public, physicians, and caregivers on suggested therapies and related issues to
prevent, treat, and cure Alzheimer’s and maintain cognitive vitality, in Class
44.1

Applicant disclaimed the exclusive right to use the wording “ALZHEIMER’S DRUG
DISCOVERY FOUNDATION.” Applicant also provided the following description of
the mark and color statement:
The mark consists of the following: a central white triangle surrounded by a
hexagon comprised of different colored sections of dark blue, light blue, blue,
green and light green, within a larger hexagon comprised of different colored
sections of dark blue, light blue, and green, to the left of the words “Alzheimer’s
Drug Discovery Foundation” in dark blue all against a white background.

The color(s) blue, dark blue, light blue, green, light green and white is/are
claimed as a feature of the mark.

Opposer, Alzheimer’s Foundation of America, has opposed registration of
Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground of likelihood of confusion with its pleaded marks; and under Section 2(a),
15 U.S.C. § 1052(a), on the ground of false suggestion of a connection with Opposer.2
Opposer pleaded ownership of nine registrations, of which the following six remain
valid and subsisting:3

1 Application Serial No. 86326483 was filed on July 2, 2014 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of use of the mark in
commerce since November 14, 2001 in connection with both classes of services.
2 1 TTABVUE.
3 1 TTABVUE 1-7. Three of Opposer’s pleaded registrations subsequently were cancelled
under Section 8 of the Trademark Act, 15 U.S.C. § 1058. Opposer further pleaded ownership
of a pending application that issued to registration during pendency of this proceeding. In an
Opposition No. 91223128

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ALZHEIMER’S FOUNDATION (issued in standard characters on the
Supplemental Register with a disclaimer of “FOUNDATION”) identifying
“promoting public interest and awareness of and understanding of Alzheimer’s
disease and related illnesses,” in Class 35; “Education services, namely,
providing seminars and lectures to families and professionals in the fields of
the diagnosis, treatment and care of individuals with Alzheimer’s disease and
related illnesses,” in Class 41; Providing non-medical personal assistant
services for others in the nature of planning, organizing, coordinating,
arranging and assisting individuals to perform daily tasks in Class 45;4
(issued on the Principal Register with a disclaimer
of “ALZHEMIER’S FOUNDATION OF AMERICA”) identifying “providing
information relating [to] diagnosis, treatment and care of Alzheimer’s disease,”
in Class 44;5

(issued on the Principal Register with a disclaimer of
“ALZHEIMER’S FOUNDATION OF AMERICA” and “QUILT”) identifying
“charitable fundraising services featuring a dementia related quilt,” in Class
36;6

order issued on September 12, 2019, the Board, inter alia, denied Opposer’s motion to amend
its notice of reliance to include its subsequently issued registration. 55 TTABVUE 8-9.
4 Reg. No. 4661324 issued on December 23, 2014. (Section 8 reminder issued by USPTO on
December 23, 2019.)
5 Reg. No. 3179067 issued on December 5, 2006. First Renewal. “Color is not claimed as a
feature of the mark.” The registration issued without a description of the mark.
6 Reg. No. 3681855 issued on September 15, 2009. First Renewal. “The color(s) white, gold,
yellow, and orange is/are claimed as a feature of the mark.” “The mark consists of the wording
“ALZHEIMER'S FOUNDATION OF AMERICA” and “TO REMEMBER” in orange; the word
“QUILT” is in gold. There is an interior square and a design of raised arms in white
intersecting a yellow heart. In the center of the outer rectangle is a star design with
alternating points in orange and yellow. The interior of the rectangle is light yellow. The
outer edge of the rectangle consists of an alternating design of triangles in orange with an
inner edge of triangles in yellow.”
Opposition No. 91223128

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(issued on the Principal Register with a disclaimer of
“NATIONAL BRAIN GAME” and “AN ONLINE GAME OF SKILL FROM THE
ALZHEIMER’S FOUNDATION OF AMERICA”) identifying “charitable
fundraising services” in Class 36;7

(issued on the Principal Register with a disclaimer of
“ALZHEIMER’S FOUNDATION”) identifying “promoting public awareness of
Alzheimer’s disease and related illnesses.” In Class 35; “providing medical
information related to diagnosis and treatment of, and care for patients with,
Alzheimer’s disease,” in Class 44;8 and

NATIONAL BRAIN GAME CHALLENGE AN ONLINE GAME OF SKILL
FROM THE ALZHEIMER'S FOUNDATION OF AMERICA (issued in
standard characters on the Principal Register with a disclaimer of
“NATIONAL BRAIN GAME” and “AN ONLINE GAME OF SKILL FROM THE
ALZHEIMER'S FOUNDATION OF AMERICA”) identifying “Providing on-line
computer games in the nature of puzzles, math testing games, memory games
and other games, all for teaching cognitive brain fitness for individuals with
Alzheimer’s disease and related dementias in the field of Alzheimer’s disease”
in Class 41.9

7 Reg. No. 4483885 issued on February 18, 2014. (Section 8 reminder issued by USPTO on
February 18, 2019.) “The color(s) blue, yellow and white is/are claimed as a feature of the
mark.” “The mark consists of a vertical blue rectangle containing the words ‘NATIONAL
BRAIN GAME CHALLENGE’, each word appearing on a separate line, with the words
‘NATIONAL’ and ‘CHALLENGE’ in yellow, and the words ‘BRAIN’ and ‘GAME’ in white.
Below in white on two lines is the phrase ‘AN ONLINE GAME OF SKILL FROM THE
ALZHEIMER’S FOUNDATION OF AMERICA’.”
8 Reg. No. 3948014 issued on April 19, 2011. Section 8 affidavit accepted. The registration
recites additional services in Class 44. “The mark consists of a round blue image of a figure
holding a blue heart over its head, all of which is above the blue wording ‘ALZHEIMER’S
FOUNDATION’.” “The color(s) blue is/are claimed as a feature of the mark.”
9 Reg. No. 4750421 issued on June 9, 2015.
Opposition No. 91223128

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Applicant, in its answer, denied the salient allegations in the notice of
opposition.10 The Board presumes the parties’ familiarity with the post-briefing
procedural history of this proceeding.11
I. Preliminary Issue – Applicant’s Motion to Amend
On October 13, 2016, Applicant filed a motion to amend the identification of
services in the involved application.12 In an interlocutory order issued on January 31,
2017, the Board deferred consideration of the motion to amend to final decision.13
Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a), provides that “[a]n application
subject to an opposition may not be amended in substance nor may a registration
subject to a cancellation be amended or disclaimed in part, except with the consent of
the other party or parties and the approval of the Trademark Trial and Appeal Board,
or upon motion granted by the Board.” Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a),
restricts amendments to the identification of goods or services as follows: “The
applicant may amend the application to clarify or limit, but not to broaden, the
identification of goods and/or services . . . .” This rule applies to all applications,
including those that are the subject of an opposition proceeding. See, e.g., Johnson &

10 8 TTABVUE. In addition, Applicant asserted certain affirmative defenses. However,
Applicant did not pursue them at trial or present arguments related thereto in its brief.
Accordingly, they are deemed waived. See, e.g., Harry Winston, Inc. v. Bruce Winston Gem
Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (pleaded affirmative defenses not pursued in
the brief considered waived); Research in Motion Ltd. v. Defining Presence Marketing Group
Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012) (affirmative defenses not pursued at trial
considered waived). Applicant further asserted as “affirmative defenses” matters that are
more in the nature of amplifications of its denials and have been so construed.
11 47 TTABVUE – 55 TTABVUE.
12 14 TTABVUE.
13 31 TTABVUE.
Opposition No. 91223128

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Johnson v. Stryker, 109 USPQ2d 1077, 1078-79 (TTAB 2013); Drive Trademark
Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007).
Applicant seeks to amend its identified services to the following:
Charitable fundraising services and accepting and administering monetary
charitable contributions to accelerate the discovery of drugs to prevent, treat
and cure Alzheimer’s disease; charitable services, namely, providing
fundraising to support drug research funding in International Class 36; and

Charitable services, namely, providing educational information to the general
public and researchers on suggested therapies and related issues to prevent,
treat, and cure Alzheimer’s and maintain cognitive vitality in International
Class 44.

Although Applicant argues that the proposed amendments “serve to narrow the
scope of the services,”14 we do not agree. The proposed amendment to the recitation
of Class 36 services deletes certain activities that are the focus of Applicant’s
charitable fundraising services, while impermissibly adding “to accelerate the
discovery of drugs to prevent, treat and cure Alzheimer’s disease,” which is absent
from the original services. The proposed amendment to the identification of Class 44
services deletes “physicians” and “caregivers” among those to whom the services are
rendered, but impermissibly adds “researchers” who are absent from the services as
originally identified. Both amendments thus are plainly beyond the scope of the
current identifications. The proposed amendments are unacceptable because they do
not limit the identified services. We therefore deny the motion to amend.

14 24 TTABVUE 3.
Opposition No. 91223128

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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file.15
In addition, Opposer submitted by Notice of Reliance16 copies of
• Opposer’s pleaded registrations;
• Applicant’s involved application;
• Applicant’s responses to Opposer’s written discovery requests;
• Printed materials and internet materials.
Applicant submitted by Notice of Reliance17 copies of
• Applicant’s involved application;
• Opposer’s pleaded registrations;
• Third-party registrations;
• Opposer’s supplemental discovery responses;
• Printed materials and internet materials.
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);

15 Thus, it was unnecessary for the parties to introduce the involved application file because
it was already part of the record.
16 34 TTABVUE.
17 36 TTABVUE. In addition, Applicant introduced duplicate copies of its own discovery
documents produced in response to Opposer’s interrogatories. Normally, a party may not
introduce its own discovery responses by notice of reliance. 37 C.F.R. § 2.120(k)(5); see also,
e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1342-43 (TTAB 2017).
Nonetheless, because Opposer submitted substantially identical documents with its notice of
reliance, the interrogatory responses are part of the record.
Opposition No. 91223128

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John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). A belief in likely
damage can be shown by establishing a direct commercial interest. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Opposer’s standing in this proceeding is established by its six live pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer.18 Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v. BaseOneLabs LLC,
105 USPQ2d 1252, 1254 (TTAB 2012).
Once a plaintiff shows standing on one ground, it has the right to assert any other
grounds in an opposition or cancellation proceeding. See Corporacion Habanos SA v.
Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing
as to at least one ground, primarily geographically deceptively misdescriptive, they
may assert any other legally sufficient claims including those under Section 2(a), the
Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co. v. Liberty & Co.,
Ltd., 222 USPQ 357, 358 (TTAB 1983).

18 32 TTABVUE 4, 12-19.
Opposition No. 91223128

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IV. Priority
Because Opposer’s pleaded registrations are of record, priority is not an issue with
respect to the services identified in the registrations. Penguin Books Ltd. v. Eberhard,
48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont
factor that is relevant or for which there is evidence of record. See M2 Software, Inc.
v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
Opposition No. 91223128

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fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all du Pont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
64 USPQ2d at 1375, 1380 (Fed. Cir. 2002)).
A. Focus on Pleaded Registration No. 4661324.
We will focus our likelihood of confusion analysis on the mark ALZHEIMER’S
FOUNDATION and services in Opposer’s pleaded Reg. No. 4661324 because when
that mark is considered vis-à-vis the applied-for mark and identified services, it is
that mark and services that are most likely to support a finding of likelihood of
confusion. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
B. The strength of the wording “ALZHEIMER’S FOUNDATION” in
Opposer’s mark, including the number and nature of similar marks in
use in connection with similar services.

In determining the strength of a mark, we consider both its inherent or conceptual
strength based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co.,
Opposition No. 91223128

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Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined
by assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). Market strength is the
extent to which the relevant public recognizes a mark as denoting a single source.
Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899. For purposes of analysis
of likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).
The proper standard is the mark’s “renown within a specific product market,” id., and
“is determined from the viewpoint of consumers of like products,” id. at 1735, and not
from the viewpoint of the general public.
The wording ALZHEIMER’S FOUNDATION used in connection with Opposer’s
recited services, describes a quality or characteristic of those services, namely, that
they are performed by a donation-financed institution focusing on Alzheimer’s
disease and related illnesses.19 We further base this finding in part on Opposer’s six
live pleaded registrations:20

19 The word “foundation” is defined, inter alia, as “an institution financed by a donation or
legacy to aid research, education, the arts, etc.: the Ford Foundation.” Dictionary.com based
on the RANDOM HOUSE UNABRIDGED DICTIONARY (2020) accessed January 8, 2020. The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome
Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006).
20 34 TTABVUE 42-98.
Opposition No. 91223128

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• Reg. No. 4661324 for the mark ALZHEIMER’S FOUNDATION (in
standard characters) issued on the Supplemental Register with a
disclaimer of “FOUNDATION”;

• Reg. No. 3179067 for the mark AFA ALZHEIMER’S FOUNDATION OF
AMERICA and design issued on Principal Register with a disclaimer of
“ALZHEIMER’S ASSOCIATION OF AMERICA”;

• Reg. No. 3948014 for the mark ALZHEIMER’S FOUNDATION and
design issued on the Principal Register with a disclaimer of
“ALZHEIMER’S FOUNDATION”;

• Reg. No. 3681855 for the mark ALZHEIMER’S FOUNDATION OF
AMERICA QUILT TO REMEMBER and design issued on the Principal
Register with a disclaimer of “ALZHEIMER’S FOUNDATION OF
AMERICA” and “QUILT”;

• Reg. No. 4483885 for the mark NATIONAL BRAIN GAME
CHALLENGE AN ONLINE GAME OF SKILL FROM THE
ALZHEIMER’S FOUNDATION OF AMERICA and design issued on the
Principal Register with a disclaimer of “NATIONAL BRAIN GAME” and
“AN ONLINE GAME OF SKILL FROM THE ALZHEIMER’S
FOUNDATION OF AMERICA”; and

• Reg. No. 4750421 for the mark NATIONAL BRAIN GAME
CHALLENGE AN ONLINE GAME OF SKILL FROM THE
ALZHEIMER’S FOUNDATION OF AMERICA issued on the Principal
Register with a disclaimer of “NATIONAL BRAIN GAME” and “AN
ONLINE GAME OF SKILL FROM THE ALZHEIMER’S
FOUNDATION OF AMERICA”.

Accordingly, Opposer’s ALZHEIMER’S FOUNDATION mark when used in
connection with personal assistant services, education services and promoting public
interest and awareness in the field of Alzheimer’s disease is inherently or
conceptually weak.
Because Opposer’s pleaded ALZHEIMER’S FOUNDATION mark is conceptually
weak, and is registered on the Supplemental Register, in order to demonstrate
commercial strength, Opposer must rely on evidence in the nature of evidence
Opposition No. 91223128

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showing acquired distinctiveness of the mark. In this regard, Opposer introduced a
brand identity report produced by Applicant in response to Opposer’s
interrogatories.21 While this report was created for Applicant with regard to its
services under its involved mark, certain of the findings therein are also probative of
the strength of the terms comprising Opposer’s mark. This report discusses the
“crowded space dominated by the Alzheimer’s Association and with most of the not-
for profits in the space using Alzheimer’s as their first name.”22 The report lists the
following such organizations by revenue and tagline:23

21 34 TTABVUE 144-169.
22 34 TTABVUE 153.
23 34 TTABVUE 149, 151.
Opposition No. 91223128

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This evidence indicates ten organizations, including Applicant and Opposer, using
the term “Alzheimer’s” as the first term in their names, and six, also including
Applicant and Opposer, using both “Alzheimer’s” and “Foundation” in their names.
There is little evidence in the record regarding the nature and extent of use of the
eight third-party “Alzheimer’s” formative marks or trade names listed above beyond
what is displayed in the report.
Opposer, in its brief, contends as follows:24

24 43 TTABVUE 28.
Opposition No. 91223128

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Opposer has submitted limited evidence in support of these contentions.25
Finally, Applicant introduced into the record copies of the following three third-
party registrations for marks containing both “ALZHEIMER’S” and
“FOUNDATION:”

25 34 TTABVUE 19-40.
Opposition No. 91223128

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Reg. No. 5268187 for the mark GLOBAL ALZHEIMER’S PLATFORM
FOUNDATION (issued in standard characters on the Supplemental Register
with a disclaimer of “FOUNDATION”) identifying
Promoting public awareness of Alzheimer’s disease and issues related thereto,
such as patient registries, research, patient advocacy and fundraising; public
advocacy to promote awareness of health care issues for patients with
Alzheimer’s disease, and the importance of patient registration on Alzheimer’s
disease registries; charitable services, namely, organizing and developing
programs that aim to improve the lives of Alzheimer’s patients, their
caregivers and families; business services, namely, administration of programs
for enabling participants to receive services for Alzheimer’s patients, their
caregivers and families; recruitment of participants for neuroscience clinical
research; maintaining a registry of participants for neuroscience clinical
research relating to the treatment and prevention of brain disease; promoting
participation in clinical trials and research in the neuroscience field in Class
35;

Reg. No. 4608297 for the mark
(issued on the Principal Register with a disclaimer of “FOUNDATION FOR
EARLY ONSET ALZHEIMER’S & CARE”) identifying “Providing a website
featuring information about health and wellness, namely, Early Onset
Alzheimer’s Disease” in Class 44;26 and

26 “Color is not claimed as a feature of the mark.” “The mark consists of a design of a Forget-
Me-Not flower with six petals surrounding a filled-in circle in the middle of the flower with
the stylized text ‘Gayle Wells Foundation for Early Onset Alzheimer[’]s & Care’ to the right
of the flower.”
Opposition No. 91223128

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Reg. No. 2201207 for the mark (issued on the Principal Register
with a claim of acquired distinctiveness under Trademark Act Section 2(f) and
a disclaimer of “ALZHEIMER’S FOUNDATION”) identifying
promoting public awareness of the needs of Alzheimer[’s] patients and
providing information related to diagnosis, treatment, and care of Alzheimer’s
disease; providing day care services and support groups for Alzheimer’s
patients; providing safety programs for Alzheimer’s patients, namely,
providing information and materials for use by fire, police, rescue squads and
emergency medical service workers responding to emergency situations in the
homes of Alzheimer’s patients in Class 42.27

Based upon the evidence of record, we find that Opposer has been in existence
since 2004, has endeavored to increase awareness of its marks and services, and has
received some recognition for its efforts. The brand identity report discussed above
places Opposer in the middle of similarly-named entities in terms of donations, with
the notable exception of the Alzheimer’s Association. Otherwise, there is little, if any,
evidence of Opposer’s market position, or the recognition of its ALZHEIMER’S
FOUNDATION mark or its other pleaded marks. Based upon the evidence, Opposer
appears to enjoy moderate commercial recognition of its services under its marks. On
the other hand, at least eight third parties utilize Alzheimer’s formatives to identify

27 The registration issued without a description of the mark. “The stippling is a feature of the
mark and does not indicate color.”
Opposition No. 91223128

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activities potentially related to those provided by Opposer, and three third-parties
have registered marks containing both “ALZHEIMER’S” and “FOUNDATION.”
Considering the record as a whole, we find that Opposer’s ALZHEIMER’S
FOUNDATION mark is conceptually weak with evidence of some commercial
recognition of Opposer and its activities, but little evidence of recognition of the marks
in Opposer’s pleaded registrations, in particular, its ALZHEIMER’S FOUNDATION
mark. As a result, the mark is appropriately placed in the weaker side of the spectrum
of “very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
LLC, 122 USPQ2d at 1734 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d at 1059 (“The commercial strength of Petitioner’s TAO mark outweighs
any conceptual weakness.”).
C. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation, and commercial impression.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead ‘whether
the marks are sufficiently similar in terms of their commercial impression’ such that
Opposition No. 91223128

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persons who encounter the marks would be likely to assume a connection between
the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed.
Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721.
Opposer’s mark is ALZHEIMER’S FOUNDATION in standard characters.
Applicant’s mark is . To state the obvious, the marks are
similar inasmuch as the wording in Applicant’s mark fully encompasses the terms
comprising Opposer’s ALZHEIMER’S FOUNDATION mark. The wording thus is
similar in appearance and sound to the extent they consist of common terms. With
regard to connotation or meaning, Opposer’s mark describes a donation-financed
institution focusing on Alzheimer’s disease and related illnesses while Applicant’s
mark similarly describes such an institution focusing on the discovery of drugs to
address Alzheimer’s disease and related illnesses.
Applicant argues that the wording in Opposer’s mark is weak:28
This is highly significant: (1) first, and perhaps most importantly,
because of the disclaimers none of [Opposer]’s marks provide
Opposer the right to exclude Applicant or any other third party from
using the words “Alzheimer” and/or “Foundation,” as alleged by
Opposer; (2) second, because the words “Alzheimer’s” and
“Foundation” are descriptive, they have little to no significance in
determining likelihood of confusion, and the fact that each word is
common to the ADDF and Design Mark and [Opposer’s] Marks does
not render them similar.

28 44 TTABVUE 17.
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Applicant is correct that disclaimed or descriptive matter may have less significance
in likelihood of confusion determinations. See In re Detroit Athletic Co., 903 F.3d 1297,
1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Clorox
Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978). However, there is no evidence
that the additional wording in Applicant’s mark, namely, “DRUG DISCOVERY,” is
any less descriptive than the terms “ALZHEIMER’S” and “FOUNDATION.” As noted
above, the entire wording in Applicant’s mark is disclaimed, as is the term
“FOUNDATION” in Opposer’s mark, which is registered on the Supplemental
Register.
Furthermore, disclaimers of terms comprising the marks at issue do not
necessarily serve to avoid confusion. See Cancer Care, Inc. v. Am. Family Life
Assurance Co. of Columbus, 211 USPQ 1005 (TTAB 1981). As the wording of the
disclaimer indicates (i.e., “no claim is made to the exclusive use of … apart from the
mark as shown” – emphasis added), the disclaimed matter is accorded significance as
an integral part of the composite mark. See Am. Dietaids Co., Inc. et. al. v. Plus Prods.,
191 USPQ 146 (DCNY 1976). The disclaimer of matter in a mark does not have the
effect of removing the matter from the mark. Bordon, Inc. v. W.R. Grace & Co., 180
Opposition No. 91223128

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USPQ 157 (TTAB 1973). It is well established that a disclaimer is of no legal
significance in determining likelihood of confusion, rather, the disclaimed matter
must be considered. See Kellogg Co. v. Pack ‘Em Enterprises Inc., 14 USPQ 2d 1545
(TTAB 1990); Glamorene Prods. Corp. v. Boyle-Midway, Inc., et. al., 188 USPQ 145
(SDNY 1975). Moreover, the public viewing the mark is unaware of what, if any,
portions of a mark may be disclaimed in a federal registration. See In re Nat’l Data
Corp., 224 USPQ 749 (Fed. Cir. 1985). Thus, contrary to Applicant’s assertions, we
must consider all of the wording in the marks in determining their points of similarity
and dissimilarity.
We do not discount the presence of the multicolored hexagonal design in
Applicant’s mark. We note nonetheless that the design consists of abstract, geometric
shapes that are less significant than the wording in creating the overall commercial
impression conveyed thereby. It is settled that where, as here, a mark is comprised
of both words and a design, the words are normally accorded greater weight, in part
because consumers are likely to remember and use the word(s) to request the services.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal
portion of a word and design mark likely will be the dominant portion”); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the
marks comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services” and “because applicant’s mark shares with registrant’s mark that element
Opposition No. 91223128

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responsible for creating its overall commercial impression, the marks are confusingly
similar”).
We find that this general principle is applicable here. In Applicant’s mark,
ALZHEIMER’S DRUG DISCOVERY FOUNDATION is the only literal element, and
appears prominently to the right of the design. Those interested in Applicant’s
services would rely on the wording ALZHEIMER’S DRUG DISCOVERY
FOUNDATION which more clearly identifies a source of services than the geometric
design.
As noted above, Applicant’s mark fully incorporates the
wording in Opposer’s ALZHEIMER’S FOUNDATION mark. “[T]he presence of an
additional term in the mark does not necessarily eliminate the likelihood of confusion
if some terms are identical.” In re Mighty Leaf Tea, 94 USPQ2d at 1260-61 (finding
ML in standard characters confusingly similar to ML MARK LEES in stylized form).
Cf. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014) (finding STONE LION CAPITAL confusingly
similar to LION and LION CAPITAL); In re Toshiba Medical Systems Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN likely to be confused with
TITAN). We recognize that the terms comprising Opposer’s ALZHEIMER’S
FOUNDATION mark are separated in Applicant’s mark by the intervening terms
“DRUG DISCOVERY.” Nonetheless, in this case Applicant has merely added two
non-distinctive terms and a geometric design to Opposer’s registered mark.
Opposition No. 91223128

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Based upon the foregoing, we find Applicant’s mark is
more similar to than dissimilar from Opposer’s ALZHEIMER’S FOUNDATION mark
in appearance, sound and connotation and, overall creates a similar commercial
impression. The marks appear to be variations of each other that nonetheless suggest
a single source, describing donation-based activities in the field of Alzheimer’s
disease, with Applicant’s mark denoting activities relating more specifically to the
discovery of drugs for the treatment therefor.
D. The similarity or dissimilarity and nature of the services.
This du Pont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1159. The analysis of this factor is premised
on the identifications of goods in Applicant’s involved application and Opposer’s
pleaded application. Id. at 1161-63; Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Relatedness may be shown on
the basis of those identifications alone, without resort to extrinsic evidence. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed.
Cir. 2002).
In this regard “likelihood of confusion can be found ‘if the respective products are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
Opposition No. 91223128

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source.”’ Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)).
Applicant’s mark identifies the services listed below:
Charitable fundraising services and accepting and administering
monetary charitable contributions to support the provision of
educational information to the general public, physicians, and
caregivers on suggested therapies and related issues to prevent
Alzheimer’s and maintain cognitive vitality, as well as to fund research
to find a means to end, cure, or otherwise treat Alzheimer’s disease;
charitable services, namely, providing fundraising to support medical
research funding, in Class 36; and

Charitable services, namely, providing educational information to the
general public, physicians, and caregivers on suggested therapies and
related issues to prevent, treat, and cure Alzheimer’s and maintain
cognitive vitality, in Class 44.

Opposer’s services under its ALZHEIMER’S FOUNDATION mark include the
following:
Education services, namely, providing seminars and lectures to families
and professionals in the fields of the diagnosis, treatment and care of
individuals with Alzheimer’s disease and related illnesses,” in Class 41.

Applicant’s services in both classes are directed, inter alia, toward providing
“educational information to the general public, physicians, and caregivers on
suggested therapies and related issues” to prevent, treat and cure Alzheimer’s
disease. Opposer’s Class 41 services include providing educational seminars and
lectures “to families and professionals in the fields of the diagnosis, treatment and
care of individuals with Alzheimer’s disease and related illnesses.” Applicant’s
charitable fundraising services in Class 36 and charitable services in Class 44 as well
as Opposer’s Class 41 services both concern the provision of educational information,
Opposition No. 91223128

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with Opposer’s services provided more specifically in the form of lectures and
seminars. Applicant services seek to provide educational services to the general
public, physicians and caregivers. Opposer provides its educational services to
families, who are members of the general public and may also be caregivers, and to
professionals, who as broadly identified include physicians and professional
caregivers. Applicant provides its services in the field of “suggested therapies and
related issues” to prevent, treat and cure Alzheimer’s disease. Opposer provides its
services for the “treatment and care of individuals with Alzheimer’s disease and
related illnesses.” Simply put, both Applicant and Opposer provide services directed
toward providing education to the public, families and professionals in the field of the
treatment, prevention and care of individuals with Alzheimer’s disease. We find as a
result that both classes of Applicant’s services are related on the face of their
respective identifications to Opposer’s recited services.29
E. Established, likely-to-continue channels of trade and classes of
consumers.

As discussed above, both parties provide their services to the general public,
amateur caregivers and families of Alzheimer’s disease patients as well as physicians,
professional caregivers and other professionals. Because these services recite no
restrictions or limitations as to their channels of trade and classes of consumers, we

29 We observe that two of Opposer’s live pleaded registrations, Reg. Nos. 3681855 and
4483885, respectively recite “charitable fundraising services featuring a dementia related
quilt” and “charitable fundraising services” among their identified services. These services
are also closely related in particular to Applicant’s Class 36 services. However, the marks in
these two pleaded registrations are far less similar to the applied-for mark than Opposer’s
ALZHEIMER’S FOUNDATION mark.
Opposition No. 91223128

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must presume that these services are rendered in all the normal channels of trade
and to all the classes of consumers who would use such services. See Viterra, 101
USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at
1005); Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983).
Further because we do not read limitations into the identifications of services, we
must presume that the parties’ related services are offered in the same channels of
trade and to the same classes of consumers. See In re i.am.symbolic, 123 USPQ2d at
1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration”); In re Thor Tech,
90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions
or limitations into the registrant’s description of goods.”).
F. Conditions under which sales are made, that is, “impulse” vs. careful,
sophisticated purchasing.

Applicant has introduced evidence in the form of its brand identity report
indicating that its intended potential donors include high net worth individuals,
corporations, pharmaceutical and biotech companies, organizations in the health care
and insurance industries, and private foundations.30 However, Applicant has not

30 36 TTABVUE 83.
Opposition No. 91223128

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introduced evidence regarding the makeup of its actual donors. We further note that
both parties’ services, as discussed above, are directed toward the general public,
families, and caregivers in addition to healthcare professionals and there is no
indication of the level of sophistication among those consumers. Moreover, even if we
accept that Applicant’s donors carefully deliberate prior to supporting Applicant, in
cases where there are similar marks, related services, and similar channels of trade
and classes of consumers, even a careful, sophisticated consumer of these services
may not note the differences in the marks. Cunningham v. Laser Golf, 55 USPQ2d at
1846 (“The alleged sophistication of golfers is outweighed by the Board’s findings of
strong similarity of marks and identity of goods.”); Weiss Assocs. Inc. v. HRL Assocs.,
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed.Cir.1990) (similarities in marks
and products overshadowed sophistication of purchasers); In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)). Furthermore, careful purchasers who do notice the difference in the
marks will not necessarily conclude that there are different sources for the services,
but will see the marks as variations of each other, pointing to a single source. See,
e.g., Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed.
Cir. 1992) (“What is important is not whether people will necessarily confuse the
marks, but whether the marks will be likely to confuse people into believing that the
goods they are purchasing emanate from the same source.”) (citations omitted).

Opposition No. 91223128

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G. Actual Confusion
Applicant points out that there is no evidence of actual confusion in over six years
of use by the parties of their respective marks. However, it has often been recognized
that such evidence is very difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf
Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). We further note that Applicant’s
own branding report states:
It’s a crowded space dominated by the Alzheimer’s Association and with
most of the not-for-profits in the space using Alzheimer’s as their first
name. This creates confusion among potential donors. Since the ADDF
name is not memorable, associated with ADD and not well known
outside the scientific community, serious consideration should be given
to adopting a new name.31

Moreover, the test under Section 2(d) is not actual confusion but likelihood of
confusion. It is not necessary to show instances of actual confusion to establish
likelihood of confusion. Herbko Int’l. v. Kappa Books, 64 USPQ2d at 1380; Weiss
Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir.
1990).
H. Summary
Because the marks are similar, the services are related and we must presume that
the services are offered in the same channels of trade and to the same classes of
consumers, we find that the applied-for mark used in connection with Applicant’s
recited services is likely to cause confusion with Opposer’s previously used and
registered mark. While we recognize that Opposer’s mark is weak and entitled to a

31 36 TTABVUE 85.
Opposition No. 91223128

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relatively narrow scope of protection, even weak marks are entitled to protection from
the use of a similar mark for related services. See In re Chica Inc., 84 USPQ2d 1845,
1850 (TTAB 2007).
In light of our finding that Applicant’s mark is likely to cause confusion with
Opposer’s mark, we need not make a determination as to Opposer’s other claim. See
Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (citing Multisorb
Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013)).
Decision: The notice of opposition is sustained on the ground of priority and
likelihood of confusion with the mark in Registration No. 4661324 and registration
to Applicant of application Serial No. 86326483 is refused.