Likelihood of Confusion? Bridgestone v. Federal Corp.
The Federal Circuit Court of Appeals reversed the decision of the Trademark Trial and Appeal Board in dismissing Appellants’ opposition to registration of a trademark. The TTAB held that there was no likelihood of confusion between the opposed mark and the marks of Appellant. The Federal Circuit Court of Appeals disagreed.
Likelihood of confusion is a concept very familiar to trademark attorneys. It is the cornerstone of a trademark application and the essential idea that a mark cannot be registered as a trademark if it risks being confused with another mark. Here, in Bridgestone v. Federal Corp., the Court of Appeals for the Federal Circuit examines the opposition of a company on the very basis of likelihood of confusion.
Appellants Bridgestone Americas Tire Operations, LLC and Bridgestone Corporation (together "Bridgestone") had registered in 1984 to use the mark POTENZA for tires.
They registered the mark TURANZA in 2004, which mark they had been using since 1991.
Federal Corporation (Appellee) filed an intent-to-use application in order to begin trademark registration for the mark MILANZA in 2004. Federal intended to use this mark for tires, too.
Bridgestone opposed the registration based on the likelihood of confusion of the MILANZA mark with the other two marks currently being used by Bridgestone.
The TTAB ruled in favor of Federal Corporation. Bridgestone appealed.
Bridgestone argued that the common sounding names, coupled with the fact that they all represented tires, would cause market confusion and make consumers think that the tires were all coming from the same source. Federal Corporation argued that the Italian meaning behind the names was very distinct. Federal Corp. also cited that the suffix "NZA" was very commonly used in the automotive industry.
The longevity of Bridgestone's use of the marks was a huge probative factor in the court's decision. Essentially, the court stated that "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."
The fact that the goods were the same played a crucial role in the court's decision. Thus, in light of the similarities in the names, coupled with the longevity of the use by Bridgestone, the Federal Circuit Court of Appeals held that there was a likelihood of confusion.
The decision of the TTAB was reversed.