In a decision issued today, the Federal Circuit has reverse the TTAB’s finding that there is no likelihood of confusion between Bridgestone’s POTENZA and TURANZA marks, used for tires, and Federal Corporation’s MILANZA mark, also for use with tires. The Circuit court reversed the TTAB’s finding and sustained the opposition by Bridgestone.
The opinion of the Circuit Court is relatively straightforward. Bridgestone’s marks were found to be inherently distinctive, in use for a long period of time, and if not famous at least extensively promoted. The goods of the Applicant were identical. The TTAB had found the strength of Bridgestone’s mark to be diminished by the use of BRIDGESTONE currently in promotions. But the Circuit agreed with Bridgestone, stating “[w]e agree that the concurrent use of the BRIDGESTONE mark does not diminish the status of POTENZA and TURANZA as strong marks for tires.” In conclusion, the court said:
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.
For the full opinion (PDF), see here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1376.pdf
For the audio from the Federal Circuit’s oral hearing, see here: http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2010-1376.mp3
For the TTAB decision (now reversed) see here: http://ttabvue.uspto.gov/ttabvue/v?pno=91168556&pty=OPP&eno=82
TTABulator 