Federal Circuit Finds MILANZA for Tires Confusingly Similar to Bridgestone's POTENZA and TURANZA for Tires
Jennifer Gaeta | Bloomberg Law
The U.S. Court of Appeals for the Federal Circuit reversed a decision of the Trademark Trial and Appeal Board (“TTAB”), and sustained an opposition to the registration of MILANZA for tires brought by Bridgestone Americas Tire Operations, LLC and Bridgestone Corporation (collectively, “Bridgestone”).
Bridgestone owns the two trademarks, POTENZA and TURANZA, for tires. Bridgestone instituted the instant opposition on the grounds that the intent-to-use MILANZA application (for intended use in connection with tires) by Federal Corporation was likely to cause confusion with Bridgestone’s previously registered marks. The TTAB had determined, however, that while the goods were identical, and that they would be sold to the same classes of consumers, the marks were not similar enough, and Bridgestone’s marks had not achieved significant consumer recognition apart from its Bridgestone mark for there to be a likelihood of confusion. Moreover, the TTAB had given little weight to Bridgestone’s consumer survey evidence.
Federal Circuit Finds Confusion Likely
The Federal Circuit explained that the fame of an opposer’s mark plays a dominant role in opposition proceedings. Bridgestone had argued that there was extensive evidence demonstrating the independent commercial strength of the POTENZA and TURANZA marks. The Federal Circuit agreed that even though the marks were used concurrently with the BRIDGESTONE mark, that concurrent use did not diminish the strength of the marks. The court cited the prolonged, exclusive use of the marks, extensive promotion and advertising, and billions in sales as evidence of the commercial strength of the marks.
The court further explained that if the goods are identical, a similar mark is more likely to cause confusion. “There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source.” Bridgestone at 10. Therefore, the court found that based on the evidence that the goods were the same, as well as the length and prior use of the POTENZA and TURANZA marks, their market strength, and the similarity of the terms, sound, and connotation of the marks with MILANZA, there was sufficient similarity to cause confusion. Accordingly, the court reversed the TTAB, and sustained the opposition.
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