The U.S. Court of Appeals for the Federal Circuit reversed a decision of the Trademark Trial and Appeal Board (TTAB) dismissing tire manufacturer Bridgestone’s opposition to the registration of the mark MILANZA for use with tires. The Federal Circuit found that the mark MILANZA did not lose its strength as a trademark simply because the BRIDGESTONE mark was used concurrent with MILANZA. Bridgestone Americas Tire Operations v. Federal Corp., Case No. 10-1376 (Fed. Cir., Mar. 16, 2012) (Newman, J.).
Applicant Federal filed an intent-to-use application to register the mark MILANZA for tires. Bridgestone opposed applicant’s registration of MILANZA on the ground of likelihood of confusion with Bridgestone’s marks POTENZA and TURANZA for tires. The TTAB concluded that confusion as to source of tires was not likely because it determined that there was no commercial strength or fame of the POTENZA and TURANZA marks independent of the mark BRIDGESTONE. Specifically, the TTAB found that the POTENZA and TURANZA marks were not strong or famous marks because they were usually accompanied in advertising by the mark BRIDGESTONE or Bridgestone’s “B” logo. Thus, the TTAB found that while Bridgestone’s marks were inherently distinctive, any market strength was tied to the BRIDGESTONE mark. Bridgestone appealed.
Reversing the TTAB, the Federal Circuit explained that concurrent use of the BRIDGESTONE mark did not diminish the status of POTENZA and TURANZA as strong marks for tires. The Federal Circuit found that Bridgestone’s marks had commercial strength independent of its BRIDGESTONE mark based on the prolonged exclusive use of the marks, extensive promotion and marketing and billions of dollars of sales of tires bearing the marks. The Federal Circuit concluded that a unique arbitrary word mark does not lose its strength as a trademark when the manufacture is identified along with the branded product, as each identification may have trade significance.
The Federal Circuit noted that prior users of marks are entitled to the traditional protections of its marks of trade as against newcomers choosing a confusingly similar mark for the same goods. In light of the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the market strength of the marks, and the similarities of words, sounds, and connotation with MILANZA, the Federal Circuit found sufficient similarly was shown that the mark would cause consumer confusion, deception or mistake. Thus, the Federal Circuit reversed the Board’s decision.