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Disease and Related Disorders Association v. Alzheimer's New Jersey, Opposition No. 91245121 (December 31, 2021) [not precedential] [Opinion by Judge Robert H. Coggins].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:
And so, the Board sustained the opposition.
Read comments and post your comment here.
TTABlogger comment: Opposer and Applicant were affiliated from 1985-2015, during which period applicant enjoyed a non-exclusive license to use opposer's trademarks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
