Tuesday, March 09, 2010

TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires

Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in the stylized form shown here, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors." Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential].

Family of Marks: Bridgestone had a third registration (ALENZA), but it failed to get it into evidence because its witness "did not testify as to the current status of the regsitration." [Doh! - ed.] In any case, Bridgestone's claim to ownership of an "-NZA" family of marks got no traction. The Board (after reviewing Bridgestone's advertising) punctured that assertion:

Based on the record before us, opposers have failed to establish that the "NZA" suffix is recognized by the purchasing public as exclusively identifying opposers in connection with tires. Opposers' advertising emphasizes the BRIDGESTONE mark and identifies sub-brands such as POTENZA, TURANZA, DUELER and BLIZZAK. *** By highlighting the BRIDGESTONE mark and using POTENZA and TURANZA with DUELER and/or BLIZZAK with the BRIDGESTONE mark, opposers do not draw attention to the purported "NZA" family.

Since Bridgestone did not establish a family of marks, its 2(d) claim rested solely on the likelihood of confusion between the applied-for mark and the marks POTENZA and TURANZA individually.

Strength of Opposer's Marks: As to the strength of Bridgestone's marks, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark."

Flawed Survey Evidence: The Board then let the air out of Bridgestone's survey evidence, finding "a problem with the survey format that affects its probative value."

[I]n the survey, the respondents were shown TURANZA, POTENZA and DUELER and told that these marks were owned by one company and then asked whether the control marks and MILANZA were associated or affiliated with the owner of the first three marks. By telling the respondents that TURANZA, POTENZA and DUELER were owned by the same company, Guideline planted the seed that the "NZA" suffix was significant and, therefore, it influenced respondents by stating the marks were related and suggesting that one or more of the marks shown later might also be related.

Comparing the Marks: Turning then to the marks themselves, the Board found the dominant portion of each to be the first two syllables. The "ZA" provides an Italian accent. "In considering the marks in their entireties, the final syllable is too insignificant to hold that the marks are similar." Moreover, the meaning and commercial impression of the marks are not similar. POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. And so the Board found the marks not similar in appearance, sound, meaning, and commercial impression. [Query: does TURANZA suggest Turin? - ed.]

Customer Care: Noting that some 45% of consumers purchase replacement tires without regard to brand [I choose by color - ed.], this factor slightly favored opposer.

Balancing all the factors, the Board concluded that the "dissimilarity of the marks simply outweighs the other relevant factors."

TTABlog comment: When Bridgestone's family of marks argument went flat, that seriously undermined the acceptability of its survey. Had their been a family of marks, it seemingly would have been ok to show the two family members together during the survey. But then, had there been a family, would Bridgestone have needed a survey?

Family of Marx

Text Copyright John L. Welch 2010.


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