Federal Circuit Takes Another Look at Likelihood of Confusion
What This Means To You
- When clearing marks, consider the renown of other marks in the field.
- The appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion if the goods are identical rather than if they are significantly different.
In Bridgestone Americas Tire Operations, LLC v. Federal Corporation
, the Court of Appeals for the Federal Circuit (Federal Circuit) examined the familiar concept of likelihood of confusion. The court reversed the decision of the Trademark Trial and Appeal Board (TTAB) – which held there was no likelihood of confusion between the marks in question – emphasizing the similarities between the marks and the long use by the senior user.
In 1984, Bridgestone registered the mark POTENZA for tires. They also registered the mark TURANZA in 2004, which they had been using since 1991.
In 2004, Federal Corporation filed an intent-to-use application to begin trademark registration for the mark MILANZA which it intended to use for tires. Bridgestone opposed the registration based on the likelihood of confusion of the MILANZA mark with the other two marks being used by Bridgestone. The TTAB ruled in favor of Federal Corporation. Bridgestone appealed.
On appeal, Bridgestone argued that the common sounding names, coupled with the fact that they all represented tires, would cause market confusion and make consumers think the tires were all coming from the same source. Federal Corporation argued that the Italian meaning behind the names was very distinct and 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 also played a crucial role in the court's decision and , coupled with the longevity of the use by Bridgestone, resulted in findingthe Federal Circuit’s decision that there was a likelihood of confusion.
This case highlights the importance of considering senior marks and their renown when clearing trademarks for use and registration. Remember that 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 different.