BRIDGESTONE AMERICAS TIRE OPERATIONS, LLC (formerly Bridgestone Firestone North American Tire, LLC) and Bridgestone Corporation v. FEDERAL CORPORATION
No. 2010-1376
United States Court of Appeals, Federal Circuit
March 16, 2012
The district court did not clearly err in finding that Hamilton‘s declination of the transfer was not a resignation. Although he may have declined the transfer in part because of his dеsire not to move, this does not prevent a finding that his absence from his job at ADMH was “necessitated by his military service.” Therefore, the court did not err in determining that Hamilton‘s absence from ADMH was necessitated by his military service.
C. THE DISTRICT COURT DID NOT ERR IN AWARDING DAMAGES
The district court ordered ADMH to pay more than $25,000 for the wages and benefits that Hamilton lost because of ADMH‘s failure to rehire him promptly as USERRA requires. Without citing any authority, ADMH asserts that the United States must show that Hamilton would have taken a position if one had been offered.
Howеver, ADMH mistakenly assigns this burden of proof to the employee. Under the plain language of USERRA, “the employer has a duty to offer the employee” a position. There is no requirement that the employee prove that he would have aсcepted the position had it been offered.
Here, it is undisputеd that ADMH did not offer Hamilton a position. ADMH cannot now avoid paying damages for violating USERRA by claiming that “it would have been an exercise in futility” to offer Hamilton a position to which he was entitled under the law. Therefore, Hamilton is entitled to damages for wages and benefits lost.
CONCLUSION
The district court‘s order denying ADMH‘s motion to dismiss based on Eleventh Amendment sovereign immunity is AFFIRMED. The district court‘s findings that ADMH violated USERRA and that Hamilton is entitled to damages are AFFIRMED.
Everеtt E. Fruehling, Christensen, O‘Connor Johnson Kindness PLLC, of Seattle, Washington, argued for appellee.
Before NEWMAN, PLAGER, and BRYSON, Circuit Judges.
NEWMAN, Circuit Judge.
Bridgestone Americas Tire Operations, LLC and Bridgestone Corporation (together “Bridgestone“) appeal the decision of the Trademark Trial and Appeal Board (“TTAB” or “Board“) dismissing Bridgestone‘s opposition to registration of the mark MILANZA for use with tires. The Board concluded that there is no likelihood of confusion as to source, as between Bridgestone‘s marks POTENZA and TURANZA, on one hand, and Federal Corporation‘s mark MILANZA, all for use with tires.1 We reverse the Board‘s decision, and sustain the opposition.
BACKGROUND
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. Fеderal filed an intent-to-use application to register the mark MILANZA for tires in October 2004. Bridgestone opposed registration of MILANZA on the ground of likelihood of confusion as to source, arguing that the established POTENZA and TURANZA marks possess market strength and аre similar enough to MILANZA to cause confusion, as to source, since all of the marks are used for tires.
The Board applied the principal factors relevant to whether there may be a likelihood of confusion between speсific marks, as collected in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Weighing in favor of confusion, the Board found that both Bridgestone and Federal use the marks for the same goods, and that the goods are sold to the same classes of consumers, under similar conditions of sale. Weighing agаinst confusion, the Board found that the MILANZA mark is not similar to the POTENZA and TURANZA marks, and that the marks PO
DISCUSSION
The question of likelihood of confusion is a question of law based on underlying facts, and receives plenary judicial review. In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003) (“The question whether there is a likelihood of confusion between a registered mark and a mark for which a registration application has been filed is an issue of law based on underlying facts.“). In turn, the PTO‘s findings as to the DuPont factors are reviewed for support by substantial evidence. See Dickinson v. Zurko, 527 U.S. 150, 165 (1999) (factual findings of PTO tribunals are reviеwed in accordance with the standards of the Administrative Procedure Act,
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, сonsumers are likely to deem these products to have the same source. Federal argues that the marks have different connotations, in that POTENZA is Italian for power and is a performance tire, and TURANZA suggests a touring tire. Federal states that MILANZA invokes Milan, a famous European city. Federal states that it chose the ZA ending because ZA is used to impart emphasis in Chinese (Federal is a company of Taiwan). Federal argues that NZA marks are common in the automotive industry, citing the mark MONZA for vаrious automotive products, the Suzuki FORENZA for “automobiles and structural parts therefor,” and the Toyota VENZA crossover vehicle. Federal states that POTENZA and TURANZA are weak marks, and not entitled to breadth.
It is the opposer‘s burden to establish facts sufficient to support the conclusion that confusion, mistake, or deception is likely. See
The fame of the opposer‘s mark plays a “dominant role in the process of balancing the DuPont factors,” Recot Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000), for well known marks are more likely to be associated in the public mind with the reputation of the source. “Famous marks thus enjoy a wide latitude of legal protection.” Id. A strong mark is one “with extensive public recognition and renown.” Kenner Parker Toys, 963 F.2d at 353. The Board found that there is no commercial strength or fame of the POTENZA and TURANZA marks independent of the mark BRIDGESTONE.
Bridgestone argues that POTENZA and TURANZA are strong marks, for the words are unique, and these branded tires are well known, heavily advertised, and widely sold. Bridgestone presented evidence that it had billions of dollars in sales of POTENZA and TURANZA marked tires from 2004-2007, аnd had conducted extensive advertising, promotion, and marketing for POTENZA and TURANZA marked tires from 2002-2007. Bridgestone states that these marks are sufficiently famous and unusual that the public would be likely to believe that tires bearing the MILANZA mark were of the same origin.
The Boаrd found that Bridgestone has been using the POTENZA mark since 1981 and the TURANZA mark since 1991, and that Bridgestone‘s sales and advertising figures were “impressive under any standard.” The Board observed that the January 30, 2008 issue of Modern Tire Dealer magazine stated that, in 2007 Bridgestone was the “leader in U.S. and Canadian new-tire sales,” and that in 2007 Bridgestone‘s POTENZA and TURANZA tires received the Consumer‘s Digest magazine “Best Buy Awards.” The Board found that the POTENZA and TURANZA marks are inherently distinctive because both words are fanciful terms. However, the Board found that the POTENZA and TURANZA marks аre not strong or famous marks because they are usually accompanied in advertising by the mark BRIDGESTONE or Bridgestone‘s “B” logo. For example:
The Board concluded that “while opposers’ POTENZA and TURANZA marks are inherently distinctive, any market strength they have is tied to the BRIDGESTONE mark.” TTAB op. at 21, 2010 WL 985350 at *7.
Bridgestone argues that extensive evidence showed that the POTENZA and TURANZA marks have independent com
Bridgestone provided photographs of displays in the Bridgestone tire stores, featuring the POTENZA and TURANZA brand tires. Bridgestone also points to its accessories and giveaway items at road events and in stores, which feature the POTENZA and TURANZA tires, with or without mention of BRIDGESTONE. Bridgestone argues that the evidence of advertising, media publicity, and critical acclaim for POTENZA and TURANZA brand tires established the independent fame and strength of these tire marks, undiminished by the identification of Bridgestone as the manufacturer. We agree that the concurrent use of the BRIDGESTONE mark does not diminish the status of POTENZA and TURANZA as strong marks for tires. The prolonged exclusive use of these marks, the extensive promotion and marketing, the billions of dollars of sales, of tires bearing these marks, shows commercial strength. A unique arbitrary word mark does not lose its strength as a trademark whеn the manufacturer is identified along with the branded product. Each identification may have trade significance. In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed. Cir. 2002), this court held that
B
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. See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.“). Exact identity is not necessary to generate confusion as to source of similarly-marked produсts. See Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33, 21 S.Ct. 7, 45 L.Ed. 60 (1900) (“It is not necessary to constitute an infringement that every word of a trademark would be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article.“). In Bose, in comparing WAVE and ACOUSTIC WAVE with POWERWAVE, this court found that the “presence of the root element WAVE, upon this court‘s review, introduces a strong similarity in all three marks,” Bose, 293 F.3d at 1378, although in that case the goods were not identical, for the POWERWAVE product was an amplifier rather than a radio.
There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. Precedent illustrates many examples in which registration was denied to the second entrant, in view of a mark in prior use, e.g., Kimberly-Clark Corp. v. H. Douglas Enters., 774 F.2d 1144 (Fed. Cir. 1985) (HUGGIES and DOUGIES); Magnavox Co. v. Multivox Corp. of Am., 52 CCPA 1025, 341 F.2d 139, 141 (1965) (MAGNAVOX and MULTIVOX). See generally McCarthy, supra, § 23:23 (collecting еxamples). This court has cautioned that there is “no excuse for even approaching the well-known trademark of a competitor.” Kenner Parker Toys, 963 F.2d at 353; Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989). This caution applies here; 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.
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 wоuld be likely to cause consumer confusion, deception, or mistake. We conclude that the Board erred in denying Bridgestone‘s opposition to the registration of MILANZA for intended use with tires. The Board‘s decision is reversed.
REVERSED
Ginette J. EBEL, Claimant-Appellant, v. Eric K. SHINSEKI, Secretary of Veterans Affairs, Respondent-Appellee.
No. 2011-7125.
United States Court of Appeals, Federal Circuit.
March 21, 2012.