May 2012 Archives

Do the Names Potenza, Turanza and Milanza Confuse You?

May 5, 2012

An appellate decision from the Federal Circuit finds that the term Milanza is confusing when used in the same class of goods as Potenza and Turanza. Seemingly, these marks sound and feel similar.

Bridgestone Corporation, owns trademark registrations for the marks Potenza and Turanza and conclusively established that it used those marks in connection with popular and successful tires. Federal Corporation sought trademark registration for Milanza, and Bridgestone objected arguing that when used on tires, that mark was confusing. The United States Patent and Trademark Trial Appeal Board (the "TTAB"), finding no confusion between the marks despite Bridgestone's survey that consumers were confused, refused to block Federal's application. Bridgestone appealed.

In reversing and finding that market confusion existed sufficient to bar Federal's application, the court highlighted the standards that a party must meet to establish confusion with an ordinary registered trademark compared with the strength of a famous mark.

The court found that Bridgestone's trademarks were famous marks, meaning that they were marks that were heavily advertised and well known in their market, and therefore would be given deferential treatment in the face of a new application. While the TTAB conceded that Bridgestone's tires were commercially successful, it tied the reputation of the goods and trademarks to the fact that those marks were always used in conjunction with the Bridgestone name. Alone, the TTAB decided, those trademarks were not sufficiently famous or well known.

The appeals court refused to endorse the TTAB's finding that the marks alone, without the Bridgestone name attached, were not strong marks. The court found that the prolonged use of the Potenza and Turanza trademarks, and their commercial exposure, highlighted the strength of the marks standing alone.