COJK Secures Win for Federal Corporation before Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board handed down a significant victory for Federal Corporation, allowing its application to register the MILANZA mark for use with tires, thanks in large part to COJK attorney Everett Fruehling and co-counsel W. David Shenk of Whyte Hirschboeck Dudek S.C. The February 24, 2010 ruling dismissed an opposition filed by Bridgestone Firestone North American Tire LLC and Bridgestone Corporation ('Bridgestone'), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. The Board ruling resolves a long running dispute over Federal's use and registration of the MILANZA mark. After Federal Corporation filed an intent-to-use application for the MILANZA mark in October of 2004, Bridgestone opposed registration of the MILANZA mark, claiming a likelihood of confusion with its POTENZA, TURANZA, and ALENZA "family of marks."
However, finding in favor of Federal Corporation, the Board noted that Bridgestone did not claim use of the ALENZA mark until after Federal Corporation filed its MILANZA application. Furthermore, Bridgestone failed to show that its use of POTENZA and TURANZA caused the public to recognize the alleged "-NZA family of marks" prior to Federal Corporation's application to register MILANZA. The Board also stated that Bridgestone's own internal marketing documents failed to support the alleged "-NZA family of marks." Thus, in the absence of the alleged trademark family, the Board analyzed likelihood of confusion solely between Federal Corporation's MILANZA mark and Bridgestone's POTENZA and TURANZA marks.
Despite Bridgestone's evidence that its sales and advertising figures were "impressive" under the POTENZA and TURANZA marks and use of the marks was extensive, the Board rejected Bridgestone's argument that the marks were particularly strong, because they were always used in tandem with, and tied to, the prominently placed BRIDGESTONE house mark. The Board stated that "[t]here is simply nothing in the record to demonstrate that the marks POTENZA and TURANZA have achieved any significant recognition independent of the BRIDGESTONE mark." The Board also criticized Bridgestone's survey evidence, which was alleged to show a 29.9% rate of confusion amongst survey participants. The Board held that such evidence was of "little probative value" due to the survey's flawed methodology, which "planted the seed that the NZA suffix was significant" in the minds of participants before their exposure to Federal Corporation's MILANZA mark. The Board also noted that "POTENZA and TURANZA appear together along with BRIDGESTONE, DUELER, FIRESTONE, BLIZZAK, AFFINITY and many other brand owned by opposers" in the marketplace, but were not shown in this manner to survey participants.
The Board ultimately held that the dissimilarity in appearance, sound, meaning [and] commercial impression," between Federal Corporation's MILANZA mark and Bridgestone's POTENZA and TURANZA marks outweighed the identical nature of the parties' goods and channels of trade, such that no likelihood of confusion existed. If you have any questions about this development, please contact a member of COJK's Trademark practice group.
