March 2012 Issue
Bridgestone Ams. Tire Operations, LLC v. Fed. Corp.,
2012 WL 954267 (Fed. Cir. Mar. 16, 2012)
Bridgestone Corporation (“Bridgestone”), represented by Finnegan in this case, owns the federally registered trademarks POTENZA and TURANZA for tires, which are among Bridgestone’s top-selling brands. Over the years, POTENZA and TURANZA tires have been the subject of extensive sales and promotion, and have received considerable recognition and praise.
In 2006, Bridgestone opposed Federal Corporation’s (“Federal”) intent-to-use application for the mark MILANZA for tires based on a likelihood of confusion with Bridgestone’s POTENZA and TURANZA marks.
Despite evidence of extensive sales and advertising, which was found by the TTAB to be “impressive under any standard,” the TTAB concluded that “[t]here is simply nothing in the record to demonstrate that the marks POTENZA and TURANZA have achieved any significant recognition independent of the BRIDGESTONE mark.” Based on this assessment of the strength of Bridgestone’s marks and, despite acknowledging certain “obvious points of similarity,” the TTAB concluded that no likelihood of confusion existed between POTENZA/TURANZA and MILANZA.
Bridgestone appealed the TTAB’s decision to the Federal Circuit on the ground that the TTAB ignored substantial evidence (and the Federal Circuit’s precedent) in failing to find the POTENZA and TURANZA marks famous and strong. Bridgestone contended that this error contaminated the TTAB’s analysis, particularly its examination of the similarities between the marks.
On appeal, Bridgestone pursued two primary arguments. First, Bridgestone argued that the TTAB should be reversed for failing to follow the Federal Circuit’s precedent in Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367 (Fed. Cir. 2002). There, the Federal Circuit held that product trademarks can achieve commercial strength and fame even when the marks frequently appear in the same advertisements and materials with an even more famous house mark. Bridgestone argued that the TTAB strayed far from both the letter and spirit of this precedent in ways that could have profound adverse ramifications for trademark owners and the public by essentially holding that product marks can never be deemed commercially strong or famous unless they are completely divorced from house marks, like BRIDGESTONE.
Second, Bridgestone argued that the TTAB failed to follow the evidentiary record in favor of its own unsubstantiated theories on how POTENZA and TURANZA would be perceived differently from MILANZA by consumers. Bridgestone noted the lack of record evidence establishing that consumers perceive POTENZA, TURANZA, or MILANZA as anything other than fanciful marks sharing the same Italian theme, sound, cadence, three-syllable rhythm, rhyme, and unifying -NZA suffix. In contrast to this evidentiary void, Bridgestone pointed to two surveys conducted during the opposition empirically confirming that consumers perceive these very similarities.
The Federal Circuit agreed with Bridgestone, concluding that the concurrent use of the BRIDGESTONE house mark does not diminish the status of POTENZA and TURANZA as strong marks. The Federal Circuit found that Bridgestone established commercial strength through evidence of prolonged exclusive use, extensive promotion and marketing, and billions of dollars of sales of tires bearing the marks.
The Federal Circuit also agreed that where, as here, the parties’ goods are identical, similarities in sound, appearance, or connotation are more likely to cause confusion than where the goods are significantly different. Citing Bose, which involved the marks WAVE, ACOUSTIC WAVE, and POWERWAVE, the Federal Circuit noted that the presence of a common root element may on its own create “a strong similarity” between marks.
Finally, the Federal Circuit cautioned that there is a heavy burden on a newcomer to avoid consumer confusion when selecting a mark, admonishing that there is “no excuse for even approaching the well-known trademark of a competitor.”
Considering the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the strength of those marks, and the similarities between POTENZA, TURANZA, and MILANZA, the Federal Circuit held that MILANZA is likely to cause consumer confusion, deception, or mistake. Thus, the Federal Circuit concluded that the TTAB erred in denying Bridgestone’s opposition and reversed the TTAB’s decision.
This Federal Circuit’s decision reverses a potentially harmful ruling by the TTAB that could have marginalized the strength of product marks that appear with house marks, making it increasingly difficult for brand owners to enforce those marks.