Friday, March 16, 2012

CAFC reverses TTAB; Bridgestone prevails on opposition

The issue: Bridgestone Americas Tire Operations, LLC and Bridge- stone Corporation (together “Bridgestone”) appeal the decision of the Trademark Trial and Appeal Board (“TTAB” or “Board”) dismissing Bridgestone’s opposition to registra- tion of the mark MILANZA for use with tires. The Board concluded that there is no likelihood of confusion as to source, as between Bridgestone’s marks POTENZA and TURANZA, on one hand, and Federal Corporation’s mark MILANZA, all for use with tires.1 We reverse the Board’s decision, and sustain the opposition.

A big factor was the commonality of the goods being marked.

When the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly different. See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir.1992) (“When marks would appear on virtually identical goods or services, the degree of simi- larity necessary to support a conclusion of likely confusion declines.”). Exact identity is not necessary to generate confusion as to source of similarly-marked products. See Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33 (1900) (“It is not necessary to constitute an infringement that every word of a trademark would be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article.”). In Bose, in comparing WAVE and ACOUSTIC WAVE with POWERWAVE, this court found that the “presence of the root element WAVE, upon this court’s review, introduces a strong similarity in all three marks,” Bose, 293 F.3d at 1378, although in that case the goods were not identical, for the POWERWAVE product was an amplifier rather than a radio.


There is a heavy burden on the newcomer to avoid con- sumer confusion as to products and their source. Precedent illustrates many examples in which registration was denied to the second entrant, in view of a mark in prior use, e.g., Kimberly-Clark Corp. v. H. Douglas Enters., 774 F.2d 1144 (Fed. Cir. 1985) (HUGGIES and DOUGIES); Magnavox Co. V. Multivox Corp. of Am., 341 F.2d 139, 141 (CCPA 1965) (MAGNAVOX and MULTIVOX). See generally McCarthy, supra, § 23:23 (collecting examples). This court has cau- tioned that there is “no excuse for even approaching the well-known trademark of a competitor.” Kenner Parker Toys, 963 F.2d at 353; Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989). This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.

Bottom line, Bridgestone wins:

In light of the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA, sufficient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake. We conclude that the Board erred in denying Bridgestone’s opposition to the registration of MILANZA for intended use with tires. The Board’s decision is reversed.


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