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Keywords

appealtrialmotiontrademarkcorporation

judicial review

Related Cases

Bridgestone Americas Tire Operations, LLC v. Federal Corp., 673 F.3d 1330, 102 U.S.P.Q.2d 1061

Facts

Bridgestone, the holder of the 'POTENZA' and 'TURANZA' marks for tires, filed an opposition against Federal Corporation's intent-to-use application for the mark 'MILANZA' for tires. The Trademark Trial and Appeal Board dismissed the opposition, concluding that there was no likelihood of confusion between the marks. Bridgestone argued that the established marks were strong and similar enough to 'MILANZA' to cause confusion, while Federal contended that the marks had different connotations.

Bridgestone registered the mark POTENZA for tires in June 1984, stating use in commerce since 1981. Bridgestone 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.

Issue

Is there a likelihood of confusion between the registered marks 'POTENZA' and 'TURANZA' and the applied-for mark 'MILANZA'?

Rule

The likelihood of confusion is determined by evaluating the DuPont factors, which include the similarity of the marks, the similarity of the goods, and the strength of the marks. The burden is on the party opposing the registration to establish that confusion is likely, and a strong mark enjoys a wide latitude of protection.

The question of likelihood of confusion is a question of law based on underlying facts, and receives plenary judicial review.

Analysis

The court analyzed the similarities between the marks 'POTENZA', 'TURANZA', and 'MILANZA', noting that they are used for identical goods (tires) and that the public may associate them due to their phonetic similarities. The court found that Bridgestone's marks have significant market strength and consumer recognition, which supports the likelihood of confusion. The Board's conclusion that the marks were not similar enough was deemed erroneous.

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.

Conclusion

The court reversed the Board's decision, sustaining Bridgestone's opposition to the registration of 'MILANZA' for tires due to the likelihood of consumer confusion.

We conclude that the Board erred in denying Bridgestone's opposition to the registration of MILANZA for intended use with tires.

Who won?

Bridgestone prevailed in this case as the court found that the marks 'POTENZA' and 'TURANZA' were strong and had sufficient similarity to 'MILANZA' to likely cause consumer confusion. The court emphasized the extensive use, promotion, and recognition of Bridgestone's marks, which warranted the sustaining of the opposition against the registration of 'MILANZA'.

Bridgestone argues that in view of the market strength and public familiarity with the POTENZA and TURANZA marks for tires, the common suffix of MILANZA and the shared cadence and sound and Italian connotation, consumers are likely to deem these products to have the same source.

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