United States: Product Marks Are Entitled To Independent Strength Even When Advertised With Famous House Marks

This article previously appeared in Last Month at the Federal Circuit, April 2012

Judges: Newman (author), Plager, Reyna

[Appealed from TTAB]

In Bridgestone Americas Tire Operations, LLC v. Federal Corp., No. 10-1376 (Fed. Cir. Mar. 16, 2012), the Federal Circuit reversed the TTAB's decision dismissing Bridgestone Americas Tire Operations, LLC and Bridgestone Corporation's (collectively "Bridgestone") opposition to Federal Corporation's ("Federal") registration of the mark MILANZA for tires, where the TTAB found no likelihood of confusion with Bridgestone's prior registered marks POTENZA and TURANZA for tires.

In rendering its decision, the TTAB applied the principal factors relevant to determining whether a likelihood of confusion exists, as set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). On the one hand, the TTAB found that both Bridgestone and Federal use the marks for the same goods sold to the same classes of consumers, under similar sales conditions, which weighed in favor of a likelihood of confusion. On the other hand, the TTAB found that the marks POTENZA and TURANZA had not achieved significant recognition independent of the BRIDGESTONE house mark and that MILANZA differs sufficiently from POTENZA and TURANZA such that confusion is not likely. Bridgestone offered survey evidence empirically proving that consumers are likely to be confused, but the TTAB afforded little weight to the evidence and held that the dissimilarity of the marks outweighed the other relevant factors. Ultimately, the TTAB concluded that confusion was not likely and dismissed Bridgestone's opposition.

On appeal, Bridgestone pursued two primary arguments. First, Bridgestone argued that the TTAB should be reversed for failing to follow the Court's precedent in Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367 (Fed. Cir. 2002). There, the Court 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.

"This court has cautioned that there is no excuse for even approaching the well-known trademark of a competitor. 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." Slip op. at 10 (citation and quotation omitted).

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. Bridgestone pointed to two surveys conducted during the opposition empirically confirming that consumers perceive these very similarities. In response, Federal argued that POTENZA and TURANZA are weak marks and that MILANZA has a different commercial impression tied to the famous Italian city, Milan. Federal also argued that it used the suffix "ZA" because it imparts emphasis in the Chinese language and Federal is a Taiwanese company.

The Court reversed the TTAB, agreeing with Bridgestone and concluding that the concurrent use of the BRIDGESTONE house mark does not diminish the status of POTENZA and TURANZA as strong marks. The Court 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 Court noted that a "unique arbitrary word mark does not lose its strength as a trademark when the manufacturer is identified along with the branded product. Each identification may have trade significance." Slip op. at 9.

The Court 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 Court noted that the presence of a common root element may on its own create "a strong similarity" between marks. Id. at 9. Finally, the Court noted that there is a heavy burden on a newcomer to avoid consumer confusion when selecting a mark, cautioning that there is "no excuse for even approaching the well-known trademark of a competitor." Id. at 10 (citation omitted).

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 Court held that MILANZA is likely to cause consumer confusion, deception, or mistake. Thus, the Court concluded that the TTAB erred in denying Bridgestone's opposition and reversed the TTAB's decision.

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