Bridgestone Americas Tire Operations, LLC v. Federal Corp. , 673 F.3d 1330 ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
BRIDGESTONE AMERICAS TIRE OPERATIONS,
LLC (FORMERLY BRIDGESTONE FIRESTONE NORTH
AMERICAN TIRE, LLC) AND BRIDGESTONE
CORPORATION,
Appellants,
v.
FEDERAL CORPORATION,
Appellee.
__________________________
2010-1376
(Opposition No. 91168556)
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
___________________________
Decided: March 16, 2011
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DOUGLAS A. RETTEW, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
appellants. With him on the brief was DANNY M. AWDEH.
EVERETT E. FRUEHLING, Christensen, O’Connor Johnson
Kindness PLLC, of Seattle, Washington, argued for appel-
lee.
BRIDGESTONE v. FEDERAL CORP 2
__________________________
Before NEWMAN, PLAGER, and REYNA, Circuit Judges.
NEWMAN, Circuit Judge.
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.
BACKGROUND
Bridgestone registered the mark POTENZA for tires in
June 1984, stating use in commerce since 1981. Bridge-
stone registered the mark TURANZA for tires in May 2004,
stating use in commerce since 1991. Federal filed an intent-
to-use application to register the mark MILANZA for tires
in October 2004. Bridgestone opposed registration of
MILANZA on the ground of likelihood of confusion as to
source, arguing that the established POTENZA and
TURANZA marks possess market strength and are similar
enough to MILANZA to cause confusion, as to source, since
all of the marks are used for tires.
The Board applied the principal factors relevant to
whether there may be a likelihood of confusion between
1 Bridgestone Firestone N. Am. Tire, LLC, v. Federal
Corp., Opposition No. 91168556, 2010 WL 985350 (TTAB
Feb. 24, 2010).
3 BRIDGESTONE v. FEDERAL CORP
specific marks, as collected in In re E.I. DuPont deNemours
& Co., 476 F.2d 1357, 1361 (CCPA 1973). Weighing in favor
of confusion, the Board found that both Bridgestone and
Federal use the marks for the same goods, and that the
goods are sold to the same classes of consumers, under
similar conditions of sale. Weighing against confusion, the
Board found that the MILANZA mark is not similar to the
POTENZA and TURANZA marks, and that the marks
POTENZA and TURANZA had not achieved significant
consumer recognition independent of the BRIDGESTONE
mark. The Board gave “little” weight to Bridgestone’s
survey evidence of consumer confusion as to the source of
tires bearing the MILANZA mark, and held that the “dis-
similarity of the markssimply outweighs the other relevant
factors.” TTAB op. at 28, 2010 WL 985350 at *11. The
Board concluded that confusion was not likely as to the
source of the tires, and dismissed the opposition. Bridge-
stone appeals, stating that the Board erred in fact and law.
DISCUSSION
The question of likelihood of confusion is a question of
law based on underlying facts, and receives plenary judicial
review. In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed.
Cir. 2003) (“The question whether there is a likelihood of
confusion between a registered mark and a mark for which
a registration application has been filed is an issue of law
based on underlying facts.”). In turn, the PTO’s findings as
to the DuPont factors are reviewed for support by substan-
tial evidence. See Dickinson v. Zurko, 527 U.S. 150, 165
(1999) (factual findings of PTO tribunals are reviewed in
accordance with the standards of the Administrative Proce-
dure Act, 5 U.S.C. §706).
Bridgestone argues that in view of the market strength
and public familiarity with the POTENZA and TURANZA
BRIDGESTONE v. FEDERAL CORP 4
marks for tires, the common suffix of MILANZA and the
shared cadence and sound and Italian connotation, consum-
ers are likely to deem these products to have the same
source. Federal argues that the marks have different con-
notations, in that POTENZA is Italian for power and is a
performance tire, and TURANZA suggests a touring tire.
Federal states that MILANZA invokes Milan, a famous
European city. Federal states that it chose the ZA ending
because ZA is used to impart emphasis in Chinese (Federal
is a company of Taiwan). Federal argues that NZA marks
are common in the automotive industry, citing the mark
MONZA for various automotive products, the Suzuki
FORENZA for “automobiles and structural parts therefor,”
and the Toyota VENZA crossover vehicle. Federal states
that POTENZA and TURANZA are weak marks, and not
entitled to breadth.
It is the opposer’s burden to establish facts sufficient to
support the conclusion that confusion, mistake, or deception
is likely. See 15 U.S.C. § 1052(d) (refusing registration of a
mark that so resembles a registered mark “as to be likely,
when used on or in connection with the goods of the appli-
cant, to cause confusion, or to cause mistake, or to deceive”);
Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359
(Fed. Cir. 2001). Although the opposer bears the burden of
coming forward with sufficient evidence, a new entrant
presenting a new mark for registration has an obligation to
avoid confusion with established marks in the same market.
See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 1265 (Fed. Cir. 2002) (“This court resolves doubts
about the likelihood of confusion against the newcomer
because the newcomer has the opportunity and the obliga-
tion to avoid confusion with existing marks.”); Planters Nut
& Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 924-25
(CCPA 1962) (“all doubt as to whether confusion, mistake,
or deception is likely is to be resolved against the new-
5 BRIDGESTONE v. FEDERAL CORP
comer”). A “strong mark . . . casts a long shadow which
competitors must avoid.” Kenner Parker Toys, Inc. v. Rose
Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992). As
Professor McCarthy states: “It is illegal to share in another’s
good will by confusing buyers into mistaking the source of a
product.” J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 23:20 (4th Ed.).
A
The fame of the opposer’s mark plays a “dominant role
in the process of balancing the DuPont factors,” Recot Inc.,
v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000), for well
known marks are more likely to be associated in the public
mind with the reputation of the source. “Famous marks
thus enjoy a wide latitude of legal protection.” Id. A strong
mark is one “with extensive public recognition and renown.”
Kenner Parker Toys, 963 F.2d at 353. The Board found that
there is no commercial strength or fame of the POTENZA
and TURANZA marks independent of the mark
BRIDGESTONE.
Bridgestone argues that POTENZA and TURANZA are
strong marks, for the words are unique, and these branded
tires are well known, heavily advertised, and widely sold.
Bridgestone presented evidence that it had billions of dol-
lars in sales of POTENZA and TURANZA marked tires from
2004-2007, and had conducted extensive advertising, promo-
tion, and marketing for POTENZA and TURANZA marked
tires from 2002-2007. Bridgestone states that these marks
are sufficiently famous and unusual that the public would
be likely to believe that tires bearing the MILANZA mark
were of the same origin.
The Board found that Bridgestone has been using the
POTENZA mark since 1981 and the TURANZA mark since
BRIDGESTONE v. FEDERAL CORP 6
1991, and that Bridgestone’s sales and advertising figures
were “impressive under any standard.” The Board observed
that the January 30, 2008 issue of Modern Tire Dealer
magazine stated that, in 2007 Bridgestone was the “leader
in U.S. and Canadian new-tire sales,” and that in 2007
Bridgestone’s POTENZA and TURANZA tires received the
Consumer’s Digest magazine “Best Buy Awards.” The
Board found that the POTENZA and TURANZA marks are
inherently distinctive because both words are fanciful
terms. However, the Board found that the POTENZA and
TURANZA marks are not strong or famous marks because
they are usually accompanied in advertising by the mark
BRIDGESTONE or Bridgestone’s “B” logo. For example:
The Board concluded that “while opposers’ POTENZA and
TURANZA marks are inherently distinctive, any market
strength they have is tied to the BRIDGESTONE mark.”
TTAB op. at 21, 2010 WL 985350 at *7.
Bridgestone argues that extensive evidence showed that
the POTENZA and TURANZA marks have independent
commercial strength and recognition, and that the Board
erred in ruling that by identifying Bridgestone as the source
of the tires, Bridgestone precluded recognition of these
marks as strong marks. Bridgestone cited many commercial
7 BRIDGESTONE v. FEDERAL CORP
examples in which the marks POTENZA and TURANZA are
prominently featured while showing BRIDGESTONE as the
manufacturer. For example:
BRIDGESTONE v. FEDERAL CORP 8
Bridgestone provided photographs of displays in the
Bridgestone tire stores, featuring the POTENZA and
TURANZA brand tires. Bridgestone also points to its acces-
sories and giveaway items at road events and in stores,
which feature the POTENZA and TURANZA tires, with or
without mention of BRIDGESTONE. Bridgestone argues
that the evidence of advertising, media publicity, and criti-
cal acclaim for POTENZA and TURANZA brand tires estab-
lished the independent fame and strength of these tire
9 BRIDGESTONE v. FEDERAL CORP
marks, undiminished by the identification of Bridgestone as
the manufacturer. We agree that the concurrent use of the
BRIDGESTONE mark does not diminish the status of
POTENZA and TURANZA as strong marks for tires. The
prolonged exclusive use of these marks, the extensive pro-
motion and marketing, the billions of dollars of sales, of
tires bearing these marks, shows commercial strength. 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. In Bose Corp. v. QSC Audio Prods., Inc., 293
F.3d 1367, 1375 (Fed. Cir. 2002), this court held that the
marks WAVE and ACOUSTIC WAVE have trademark
strength independent of the Bose “house mark,” although
the marks appear in the same sales literature.
B
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 differ-
ent. 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
BRIDGESTONE v. FEDERAL CORP 10
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.
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, suffi-
cient 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.
REVERSED