OPINION & ORDER[CORRECTED] In September 2017, the Court held a bench trial between two Alzheimer’s charities — Counterclaim Plaintiff Alzheimer’s Disease and Related Disorders Association (hereafter, “Alzheimer’s Association” or the “Association” or “Counterclaim Plaintiff”) and Counterclaim Defendant Alzheimer’s Foundation of America (hereafter, “Alzheimer’s Foundation” or “AFA” or “Counterclaim Defendant”) — on certain Lanham Act claims. Specifically, the Association contends that AFA’s purchase of Association trademarks as search engine keywords and use of the two-word name “Alzheimer’s Foundation” constitute trademark infringement and false designation of origin under the Lanham Act.For the following reasons, the Court finds that the Association failed to prove that AFA’s actions were likely to cause consumer confusion and enters judgment for the Counterclaim Defendant.I. Procedural HistoryThe history of the facts and prior proceedings in this matter is too voluminous to warrant full description here. Prior decisions of Judge Sweet, from whom this case was reassigned to the undersigned on November 21, 2016, provide additional background. See Alzheimer’s Found, of Am., Inc. v. Alzheimer’s Disease & Related Disorders Ass’n, Inc., 796 F. Supp. 2d 458 (S.D.N. Y. 2011); No. 10-CV-3314, Dkt. No. 1701; Alzheimer’s Found, of Am., Inc. v. Alzheimer’s Disease & Related Disorders Ass’n, Inc., No. 10-CV-3314 (RWS), 2014 WL 4290455 (S.D.N.Y. Aug. 29, 2014); See Alzheimer’s Found, of Am., Inc. v. Alzheimer’s Disease & Related Disorders Ass’n, Inc., No. 10-CV-3314 (RWS), 2015 WL 4033019 (S.D.N.Y. June 29, 2015). For the purposes of this bench opinion, the Court offers the following summary.In 2007, the two Alzheimer’s charities began suing each other. The first suit, in Virginia state court, concerned which entity was entitled to a trust bequest when the trustee made the first check out to “Alzheimer’s Foundation,” but sent it to the Association. The state judge dismissed the suit in 2009.In April 2010, AFA sued the Association in this Court related to other checks cashed by the Association but made payable to AFA. In June 2010, the Association countersued, alleging trademark infringement and related state and common-law claims. See No. 10-CV-5013, Dkt. No. 1. On May 25, 2011, Judge Sweet dismissed all of the claims brought by AFA and by the Association except for those under and related to the Lanham Act. Alzheimer’s Found, of Am., Inc., 796 F. Supp. 2d at 468. In 2014, Judge Sweet dismissed AFA’s remaining claims.2 That left only the Lanham-related claims in the Association’s countersuit for resolution.3 The Association amended their remaining counterclaims on September 13, 2013, and the Amended Counterclaims are operative here. See Amended Counterclaims (“Am. Count.”), Dkt. No. 125.In July 2014, the Association brought a motion for a preliminary injunction, see Dkt. Nos. 183, 185, seeking to enjoin AFA “from purchasing Association-owned trademark terms from any search engine provider and from utilizing the phrase ‘Alzheimer’s Foundation’…in its advertising.” See Alzheimer’s Found., 2015 WL 4033019, at *1. Following a two-day hearing, on June 29, 2015, Judge Sweet denied the Association’s motion for a preliminary injunction. See generally id. After performing much of the same analysis the Court undertakes in this post-trial opinion, Judge Sweet concluded that “[t]he Association has failed to clearly establish the three most important factors in the preliminary injunction analysis: a likelihood of success on the merits, the prospect of irreparable harm, and the balance of the hardships tipping in its favor.” Id. at *14. While Judge Sweet acknowledged that “the Association makes strong points on several of the Polaroid factors,” he found that “its case for confusion falls short of the ‘clear or substantial likelihood of success’ required for a preliminary injunction that would alter the status quo.” Id. (quoting Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 24-25 (2d Cir. 2004)).Following reassignment to the undersigned, the Court set a motions and trial schedule. AFA submitted motions to exclude the report and testimony of both of the Association’s expert witnesses, see Dkt. Nos. 269-71, 287-89, as well as a motion in limine to exclude one of the Association’s theories of damages. See Dkt. Nos. 293-95. The Court reserved judgment on the motions. See Dkt. No. 286; Transcript of July 26, 2017 Final Pretrial Conference.The Court held a six-day bench trial beginning on September 6, 2017 in accordance with its Individual Practices in Civil Cases for non-jury proceedings. Prior to trial, the parties submitted declarations of direct and rebuttal testimony as well as copies of anticipated exhibits and deposition designations that they intended to use at trial. The parties also submitted proposed findings of fact and conclusions of law. At trial, the parties called only those witnesses whom they intended to cross-examine and read into the record deposition designations and counter-designations for all other witnesses. In all, the Court received direct testimony from 25 witnesses, 13 of whom also provided live testimony, and admitted roughly 280 exhibits from both parties. Following trial, the parties submitted post-trial memoranda of law and updated proposed findings of fact and conclusions of law that were fully submitted on October 25, 2017.4 The Court then heard closing arguments on December 5, 2017.II. Findings of Fact5A. Counterclaim Plaintiff Alzheimer’s Association and Its MarksThe Alzheimer’s Association, formed in 1980, is the world’s largest private non-profit funder of Alzheimer’s research. FOF
1-2. Since 2005, Harry Johns has served as the Association’s CEO. Ex. 256 2.6 Based in Chicago, the Association is comprised of more than 80 local chapters across the nation providing services within each community. FOF 3. Until 2016, most of these chapters were independent, operating under contract with the Association; in late 2015 and early 2016, a number of the chapters merged into the Association, while a few others disaffiliated. See Tr. (Johns) 252:10-253:12; AFA FOF 6(viii)-(xi). In fiscal year 2016, the Association raised more than $160 million in contributions, an increase from the $87.9 million the Association reported in “total revenues, gains and other support” in fiscal year 2010. FOF 13, 25. In fiscal year 2016, the Association spent $133.6 million on program activities, including more than $44 million on public awareness and education. FOF 27. The Association had nearly 9 billion media impressions and more than 41 million website visits in fiscal year 2016. Ex. 256 30.Surveys show that the Association is somewhat well-known. The Association commissioned a firm named Copernicus to conduct consumer awareness surveys (the “Copernicus Surveys”). AFA FOF 65. Copernicus measured both unaided — that is, “top of mind” — and aided awareness of the Association among different demographic groups. AFA FOF
