Bridgestone Corp. and Bridgestone Americas Tire Operations, LLCv.Zhanjiang Deni Carburetor Co., Ltd.

Trademark Trial and Appeal Board

Aug 7, 2015

No. 91193955 (T.T.A.B. Aug. 7, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bridgestone Corp. and Bridgestone Americas Tire Operations, LLC
v.
Zhanjiang Deni Carburetor Co., Ltd.
_____

Opposition No. 91193955
_____

Patrick J. Jennings and William P. Atkins of Pillsbury Winthrop Shaw Pittman
LLP for Bridgestone Corp. and Bridgestone Americas Tire Operations, LLC.

Matthew H. Swyer of The Trademark Company PLLC for Zhanjiang Deni
Carburetor Co., Ltd.
_____

Before Cataldo, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On April 9, 2009, Zhanjiang Deni Carburetor Co., Ltd. (“applicant”) filed an
application to register the mark D DENI and design, shown below,

Opposition No. 91193955

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for the goods set forth below:
Carburetor feeders; gas engine not for land vehicles;
igniting devices for internal combustion engines for
vehicles; gasoline engine not for land vehicles; fuel
catalytic conversion apparatus for internal combustion
engines; spark economizer not for land vehicles; fuel
economizer not for land vehicles; diesel engine not for
land vehicles; carburetor; automobile engine flywheel;
automotive engine exhaust purifying apparatus, namely,
catalytic converter, in Class 7; and
Cycle cars; anti-theft devices for vehicles; engines for land
vehicles; electric motors for land vehicles; motorcycles;
automobiles; vehicle wheels; propulsion mechanisms for
land vehicles, namely, transmission mechanisms, internal
combustion engines, drive shafts, engines, and electric
motors for motor cars; repair kits for inner tubes sold as a
unit for land vehicles; vehicles for locomotion by land, air,
water or rail, namely, buses, cars, airplanes, boats, and
locomotives, in Class 12.1
Applicant describes its mark as “the word ‘DENI’ appearing in stylized font below
two triangle designs which together represent the letter ‘D.’”
The application is based on a request for extension of protection filed under
Section 66(a) of the Trademark Act of 1946, 15 U.S.C. § 1144f(a). The International
registration on which the application was based issued on February 18, 2009. The
February 18, 2009 International registration date constitutes applicant’s
constructive date of first use. Section 66(b) of the Trademark Act, 15 U.S.C. §
1144f(b).

1 Serial No. 79066403.
Opposition No. 91193955

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Bridgestone Corp. and Bridgestone Americas Tire Operations, LLC
(“opposers”) opposed the registration of applicant’s mark on the grounds of
likelihood of confusion under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), and dilution under Section 43(c) of the Trademark Act, 15 U.S.C.
§ 1125(c). With respect to the claim of likelihood of confusion, opposers alleged that
applicant’s mark so resembles opposers’ previously used and registered marks
shown below for a wide variety of products as to be likely to cause confusion.

Opposers specifically claimed ownership of 11 registrations. The registrations set
forth below are the most relevant.
1. Registration No. 1416070 for the stylized letter “B,” shown below

for the following goods:
Clothing, namely, shirts, caps and hats, in Class 25; and
Sporting equipment, namely, golf bags, in Class 28.2
Opposers describe the mark as the “stylized letter ‘B.’” Opposers do not claim color
as a feature of the mark.

2 Registered November 4, 1986; renewed.
Opposition No. 91193955

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2. Registration No. 2607465 for the mark BRIDGESTONE and design,
shown below, for “tires and inner tubes therefor,” in Class 12;3

Opposers do not claim color as a feature of the mark.
Opposers have also alleged that they have been using the above-noted marks
in the United States in connection with tires and related goods and services since
long prior to February 18, 2009, applicant’s constructive date of first use.4 During
their testimony period, opposers’ witness Theodore C. Martens, Senior Program
Manager for Bridgestone Automotive Parts Manufacturing, testified that opposers
have made common law use of the stylized “B” mark on “engine mounts, torque
rods, strut mounds, dust boots, and body mounts.”5 In its brief, applicant
acknowledged that opposers claimed ownership of “one common law trademark [the
stylized letter “B”].”6 To the extent that there is any question as to whether
opposers properly pleaded their common law rights in the stylized “B” mark, we find
that it was tried by consent and the notice of opposition is amended to conform to
the evidence pursuant to Fed. R. Civ. P. 15(b).

3 Registered August 13, 2002; renewed.
4 Notice of Opposition ¶¶5 and 14 (TTABVue 1).
5 Martens Dep., pp. 4 and 13 (TTABVue 24, pp. 4 and 5). See also Opposers’ Brief, p. 3
(TTABVue 32, p. 9).
6 Applicant’s Brief, p. 1 (TTABVue 34, p. 5). See also Applicant’s Brief, p. 7 (TTABVue 34,
p. 11).
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Applicant denied the salient allegations in the notice of opposition.
I. Preliminary Issues
A. Evidence attached to opposers’ brief.
Opposers attached eight evidentiary exhibits to their brief, including
applicant’s responses to opposers’ interrogatories and request for production of
documents. In its brief, applicant confirmed those documents were part of the
record.7 In view thereof, we will treat the evidence attached to opposers’ brief as if
it were stipulated into the record.8
B. “Other Authorities” referenced in opposers’ brief and not made of record.

In their brief, opposers referenced the following news stories and website that
were not introduced into evidence:
1. Global Tire: Bridgestone No. 1; Sumitomo, Hankook Go Up,
RubberNews (August 23, 2013);9
2. Bridgestone Surrenders Super Bowl Halftime Show, AdAge (June 12,
2013);10
3. Nielsen Tops of 2012: Television, NIELSEN (December 11, 2012);11
and

7 Applicant’s Brief, pp. 2-3 (TTABVue 34, pp. 6-7).
8 Generally, a brief may not be used to introduce evidence. Evidentiary materials attached
to briefs are not given any consideration unless they were properly made of record during
the time for taking testimony. See, e.g., Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90
USPQ2d 1112, 1116 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman Warehouse,
Inc., 89 USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1955 (TTAB 2008).
9 Opposers’ Brief, p. 4 (TTABVue 32, p. 10).
10 Opposers’ Brief, p. 6 (TTABVue 32, p. 12).
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4. Dekni.com.12

Because the news articles and website were not introduced into evidence, we have
given them no consideration.
C. Opposers’ Section 2(a) false suggestion of a connection claim raised for the
first time in opposers' brief.

As noted above, opposers pleaded likelihood of confusion and dilution as the
grounds for opposition. Also, those were the only two grounds listed in the ESTTA
cover sheet filed with the notice of opposition. Nevertheless, for the first time in
their brief, opposers asserted that applicant’s mark should be refused registration
because it creates a false suggestion of connection with opposers pursuant to
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).13 Applicant did not address
or reference opposers’ Section 2(a) claim in its brief.
Applicant’s application was filed under Section 66(a) of the Trademark Act.
An opposition against an application filed under Trademark Act § 66(a), 15 U.S.C.
§ 1141f(a), may not be amended to add a new ground for opposition. Trademark
Rule 2.107(b), 37 CFR § 2.107(b). See also O.C. Seacrets Inc. v. Hotelplan Italia
S.p.A., 95 USPQ2d 1327, 1330 (TTAB 2010). Furthermore, the scope of the grounds
for an opposition against an application filed under Trademark Act § 66(a),
15 U.S.C. § 1141f(a), is limited to the grounds set out in the ESTTA form,
notwithstanding what is set forth in the supporting pleading. See CSC Holdings

11 Opposers’ Brief, pp. 6 and 15 (TTABVue 32, pp. 12 and 21).
12 Opposers’ Brief, pp. 8 and 10 (TTABVue 32, pp. 14 and 16).
13 Opposers’ Brief, pp. 1, 2 and 20-21 (TTABVue 32, pp. 7, 8 and 26-27).
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LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011) (“The ESTTA
online form, and only that portion of the supporting statement that relates to the
ground for opposition set forth in the form, namely, priority and likelihood of
confusion, constitute the notice of opposition in this proceeding.”). Thus, an
opposition against a Trademark Act § 66(a) application may not be amended to add
an entirely new claim as opposers have tried to do here. Opposers’ false association
of a connection claim will not be considered.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, opposers
introduced the following testimony and evidence:
1. Copies of opposers’ pleaded registrations attached to the notice of
opposition and printed from the electronic database of the USPTO showing the
status of and title to the registrations;14
2. Testimony deposition of Philip Pacsi, Vice President of Marketing and
Training for Bridgestone American Tire Operations, with attached exhibits;15
3. Testimony deposition of William C. Martens, Senior Program Manager
for Bridgestone Automotive Part Manufacturing, with attached exhibits;16 and
4. Applicant’s responses to opposers’ interrogatories and request for
production of documents.17

14 TTABVue 1.
15 TTABVue 27-29.
16 TTABVue 24.
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Applicant did not introduce any testimony or evidence.18
III. Standing
Because opposers have properly made of record their pleaded registrations,
opposers have established their standing. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Priority
A. Opposers’ pleaded registrations.
Because opposers have properly made of record their pleaded registrations,
Section 2(d) priority is not an issue in this case as to the marks and the goods
covered by the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
B. Opposers’ common law use.
Applicant did not submit any evidence about its use of its mark, and
therefore the earliest date on which it may rely is the registration date of its
international registration, February 18, 2009, its constructive use date. See Section
66(b) of the Trademark Act, 15 U.S.C. § 1141f(b). See also Herbko International Inc.

17 As discussed above, some of these documents were attached to opposers’ brief rather than
being introduced through a notice of reliance during opposers’ testimony period. Responses
to written discovery may be made of record through a notice of reliance during that party’s
testimony period pursuant to Trademark Rule 2.120(j)(3)(i), except that “[a] party that has
obtained documents obtained from another party through disclosure or under Rule 34 of the
Federal Rules of Civil Procedure may not make the documents of record by notice of
reliance alone, except to the extent that they are admissible by notice of reliance under the
provisions of § 2.122(e).” Trademark Rule 2.120(j)(3)(ii).
18 Applicant filed a notice of deposition upon written question for Zheng, Li Wen but did not
file the transcript. Because neither party referenced the deposition upon written questions
in their briefs, we consider the deposition to have been cancelled.
Opposition No. 91193955

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v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto
Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981);
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844-45 (TTAB 1995).
With respect to the issue of priority for opposers’ common law use of their
stylized “B” mark, it is opposers’ burden to show that they acquired trademark
rights in that mark prior to applicant’s February 18, 2009 constructive first use
date.
Mr. Martens testified that opposers have been using the stylized B since at
least 1987 on “[t]ires, our parts, our automotive parts, it’s used on sporting goods,
it’s used on corporate logo merchandise such as hats, T-shirts, jackets, race team
banners, Formula 1 uses it, MotoGP uses it.”19
Q. Besides tires, what other vehicle parts with the
Bridgestone B mark on them does Bridgestone sell to
OEMs?
A. Our personal – our products from Bridgestone APM
[Automotive Parts Manufacturing] would include engine
mounts, torque rods, strut mounds, dust boots, body
mounts. I think that’s exhaustive.20
“Oral testimony, if sufficiently probative, is normally satisfactory to establish
priority of use.” Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144
USPQ 430, 432 (CCPA 1965). In this regard, oral testimony should be clear,
consistent, convincing, and uncontradicted. See National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be

19 Martens Dep., pp. 9 and 11 (TTABVue 24, pp. 4 and 5).
20 Martens Dep., p. 13 (TTABVue 24, p. 5).
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sufficient to prove the first use of a party’s mark when it is based on personal
knowledge, it is clear and convincing, and it has not been contradicted); Liqwacon
Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the facts and the testimony is
clear, convincing, consistent, and sufficiently circumstantial to convince the Board
of its probative value); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ
576, 577 (TTAB 1976) (oral testimony may establish prior use when the testimony
is clear, consistent, convincing, and uncontradicted). Mr. Marten’s testimony is
clear, convincing, consistent and uncontradicted.
We find that opposers used the stylized B mark on “engine mounts, torque
rods, strut mounds, dust boots, and body mounts” prior to the filing date of
applicant’s application and, therefore, has established common law priority for the
stylized B mark for those products. There is no evidence that opposers used the
BRIDGESTONE mark on those products and, therefore, opposers do not have
priority for the BRIDGESTONE mark for “engine mounts, torque rods, strut
mounds, dust boots, and body mounts.”
V. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
Opposition No. 91193955

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1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du
Pont factors are discussed below.
A. The fame of opposers’ marks.
This du Pont factor requires us to consider the fame of opposers’ marks.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread
critical assessments, and through notice by independent sources of the products
identified by the marks, as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising expenses may have
sufficed in the past to prove fame of a mark, raw numbers alone may be misleading.
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Some context in which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
Opposers introduced the evidence set forth below to demonstrate the fame of
their marks. Much of opposers’ evidence was designated as confidential and filed
under seal and, therefore, we refer to such evidence only in general terms.
1. Opposers are “a world leading manufacturer of tires and rubber
products”;21
2. Since at least as early as 1967, opposers have sold billions of dollars of
tires and related products bearing opposers’ marks;22
3. “On an annual basis from a unit standpoint, in the replacement
market, only, we sell upwards of 30 million units [tires and related products]” in the
United States;23

21 Pacsi Dep., p. 11 (TTABVue 27, pp. 14). There was no evidence or testimony regarding
opposers’ market share.
22 Pacsi Dep., pp. 11-12 (TTABVue 27, pp. 14-15). As indicated above, opposers did not
introduce any evidence regarding their market share.
23 Pacsi Dep., pp. 12-13 (TTABVue 27, pp. 15-16). However, Mr. Pacsi testified that
opposers supply tires to original equipment manufacturers (i.e., automobile manufacturers)
in part because “there’s a JD Power Study that indicates that about 50 percent of all
consumers will buy the same brand of tire that comes original on their vehicle. So it’s very
important to have original equipment fitments.” Pacsi Dep., pp. 95-96 (TTABVue 98-99).
This testimony is ambiguous. On the one hand, it may signify brand indifference (i.e., the
consumers’ desire to replace the worn out tires with what was previously there, whatever it
was). On the other hand, it may signify a type of brand loyalty (i.e., a desire to replace
one’s tires with the same brand).
Opposition No. 91193955

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4. For the period of 2003 – 2009, Opposers’ sales of BRIDGESTONE
brand products in units and dollars has been substantial by any standard or
measurement;24
5. For the period of 2005 – 2010, Opposers’ have spent tens of millions of
dollars advertising products with their stylized B and BRIDGESTONE marks;25
6. “In 2008, we started our relationship with the National Football
League that included advertising and promotion of the Bridgestone brand and the
Super Bowl halftime show as well as other NFL related properties.”;26
7. “In 2008, [opposers] also had a relationship with the PGA tour. … It
was a sponsorship agreement that we had where we used the Bridgestone brand to
promote as the official tire of the PGA tour.”27 In addition, opposers sponsor the
Bridgestone Invitational played every summer at the Firestone Country Club in
Akron, Ohio.28 “There are also Bridgestone golfers that are of the Bridgestone golf
team that wear and prominently wear and promote the Bridgestone stylized B mark

24 Pacsi Dep., pp. 21-23 (TTABVue 27, pp. 24-26) and Exhibit 105.
25 Pacsi Dep., pp. 26-27 (TTABVue 27, pp. 29-30) and Exhibit 106. There is no evidence
regarding how opposers’ advertising expenditures compare with the advertising
expenditures of its competitors (e.g., more, less, comparable).
26 Pacsi Dep., p. 27 (TTABVue 27, p. 30). One reason for the high advertising costs is that
opposers have chosen to run commercials on television programs, including the Super Bowl,
where air time is expensive. As noted by the Federal Circuit, “a 30-second sport
commercial shown during the Super Bowl football game may cost a vast sum, but the
expenditure may have little if any impact on how the public reacts to the commercial
message.” Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
27 Pacsi Dep., pp. 27 and 84-85 (TTABVue 27, p. 31 and 87-88).
28 Pacsi Dep., pp. 84-85 (TTABVue 27, pp. 87-88).
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on their hats, shirts, golf bags, and the golf balls that they play.”29 Thus, the mark
appears on national television and in print publications when one of the
Bridgestone golfers does well.30
8. In 2008 or 2009, opposers became “the official tire of the National
Hockey League.”31 Opposers are “the presenting sponsor of the Bridgestone NHL
Winter Classic. It’s an outdoor hockey game that’s held annually on New Year’s
day.”32
9. Opposers sponsor drivers in various forms of motor sports including
Formula One, MotoGP, Motocross and Supercross.33 For example, any Formula
One race car that uses opposers’ tires display the stylized “B” mark on the nose of
the car thereby generating exposure.34 World champion Jenson Button is
sponsored by Bridgestone, as well Valentino Rossi, the 2009 MotoGP champion.35
10. Opposers also advertise in “print publications, magazines such as
industry trades enthusiast magazines [e.g., Motor Trend, Sports Illustrated],
general consumer magazines [e.g., USA Today, Fortune, Jet, Maxim, Rolling Stone,

29 Pacsi Dep., p. 87 (TTABVue 27, p. 90). Mr. Pacsi did not identify any of the Bridgestone
golfers.
30 Pacsi Dep., p. 87 (TTABVue 27, p. 90).
31 Pacsi Dep., pp. 37, 81 and 109 (TTABVue 27, p. 40, 84 and 112).
32 Pacsi Dep., p 81 (TTABVue 27, p. 84).
33 Pacsi Dep., pp. 88 – 91 (TTABVue 27, pp. 91-94.
34 Pacsi Dep., p. 89 (TTABVue 27, p. 92). However, there is no testimony or evidence
regarding the extent of that exposure.
35 Pacsi Dep., p. 89 (TTABVue 27, p. 92).
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People], national television, cable networks [e.g., ESPN, HGTV, Comedy Central],
potentially radio advertising, Internet advertising.”;36
11. Opposers promote their products through “collateral merchandise
material like coffee cups, shirts, pens, even golf balls, sporting good equipment.”;37
12. Opposers’ marks have extensive visibility.
Point of sale recognition - - we have about 10,000 points of
sale that include independent tire dealers, dealers that
sell exclusively on the Internet, big box retailers like
Costco, independent tire retailers like Discount Tire.
So 10,000 points of sale across the United States,
including car dealerships, that sell our product are very
good ways to have recognizability and make the brand
famous.38
Even though Mr. Pacsi testified about opposers’ increasing brand awareness,
Q. Have you seen your brand awareness increase?
A. We conduct monthly surveys that go out to the
general public and ask questions about the brand, and
we’ve seen steady increases since 2008 in both our aided
and unaided brand awareness.39
opposers did not introduce any evidence to corroborate that testimony.

36 Pacsi Dep., pp. 28, 35, 46, 49-50, 69-70 and 106-107 (TTABVue 27, p. 31, 38, 49, 52-53,
72-73 and 109-110).
37 Pacsi Dep., p. 16, (TTABVue 27, p. 19).
38 Pacsi Dep., pp. 96-97 (TTABVue 27, pp. 99-100). There is no testimony or evidence
comparing opposers’ points of sale recognition with its competitors (e.g., more, less,
comparable).
39 Pacsi Dep., p. 98 (TTABVue 27, p. 101).
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After carefully reviewing this evidence, we find that opposers’ marks have
become famous for purposes of likelihood of confusion for its “tires.”40 The
testimony and evidence regarding products other than tires are not specific enough
to support finding fame of the marks for products other than tires. To the extent
that consumers recognize opposers’ marks in connection with automotive parts,
clothing, sporting equipment, etc., that is a result of the renown of opposers’ marks
in connection with tires.
In view of the foregoing, we find that for purposes of the likelihood of
confusion analysis, opposers’ marks are famous for “tires” and otherwise strong
marks for automotive parts, clothing, and sporting equipment.
While having established that their marks are famous for purposes of
likelihood of confusion, this fact alone is not enough to prove likelihood of confusion.
As the Board explained in Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1819 (TTAB 2005):
If that were the case, having a famous mark would entitle
the owner to a right in gross, and that is against the
principles of trademark law. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 703
F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983):
The fame of the [plaintiff's] name is insufficient in
itself to establish likelihood of confusion under §
2(d). “Likely* * * to cause confusion” means more
than the likelihood that the public will recall a

40 For purposes of likelihood of confusion, the Board generally accepts and considers
evidence related to likelihood of confusion for the period up to the time of trial, and this
includes evidence of the fame of a plaintiff’s mark. This is distinct from a claim of dilution
under Section 43(c) of the Trademark Act where an element of the claim is the acquisition
of fame prior to the defendant's first use or application filing date. General Mills Inc. v.
Fage Dairy Processing Industry SA, 100 USPQ 1584, 1595 n. 13 (TTAB 2011).
Opposition No. 91193955

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famous mark on seeing the same mark used by
another. It must also be established that there is a
reasonable basis for the public to attribute the
particular product or service of another to the
source of the goods or services associated with the
famous mark. To hold otherwise would result in
recognizing a right in gross, which is contrary to
principles of trademark law and to concepts
embodied in 15 USC § 1052(d).
See also Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000) (“fame alone cannot
overwhelm the other du Pont factors as a matter of law”).
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We turn now to the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
1. Opposers’ stylized “B” mark vs. applicant’s mark.
Applicant is seeking to register the mark D DENI and design shown below:
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Opposers’ have pleaded and proved use of the stylized letter “B” mark shown
below.

Our analysis cannot be predicated on dissection of the involved marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather,
we are obliged to consider the marks in their entireties. Id. See also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion”). However,
different features may be analyzed to determine whether the marks are similar.
Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ
266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 224 USPQ at 751.
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Consistent with these principles, we observe that applicant’s mark is the
term DENI below a stylized letter “D.” Prospective consumers will pay more
attention to the term DENI because that is the way they will refer to or call for
applicant’s automotive parts. In this regard, we are reminded of the often-recited
principle that when a mark consists of a literal portion and a design portion, the
literal portion is more likely to be impressed upon a purchaser’s memory and to be
used in calling for the goods; therefore, the literal portion is normally accorded
greater weight in determining whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v.
Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela
Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). This is especially true
with respect to applicant’s mark where the stylized letter “D” placed over the term
DENI serves to reinforce the dominance of that term.
With respect to applicant’s stylized letter “D” vis-à-vis opposers’ stylized
letter “B,” the letters D and B are visually different, they sound somewhat different,
and they engender different commercial impressions (i.e., applicant’s “D” is a
reference to DENI and opposers’ “B” is a reference to BRIDGESTONE). We note,
however, that the black triangle comprising the upper left-hand corner of the letter
“D” and the letter “B” is the only point of similarity.
In view of the foregoing, we find that the marks are not similar in terms of
appearance, sound, connotation or commercial impression.

Opposition No. 91193955

20

2. Opposers’ BRIDGESTONE mark vs. applicant’s mark.
As indicated above, applicant is seeking to register the mark D DENI and
design shown below:

Opposers’ have pleaded and proved use of their BRIDGESTONE mark shown
below.

In the previous section, we discussed how the term DENI is the dominant
element of applicant’s mark. Likewise, we find that the term BRIDGESTONE is
the dominant element of opposers’ mark. The only point of similarity between
applicant’s mark and opposers’ mark is that the upper left-hand corner of
applicant’s letter D and opposers’ letter “B” is a black triangle. However, that point
of similarity is not sufficient to outweigh dissimilarities of the marks.
In view of the foregoing, we find that applicant’s mark and opposers’ mark
are not similar in terms of appearance, sound, connotation or commercial
impression.

Opposition No. 91193955

21

C. The similarity or dissimilarity and nature of the goods.
1. Opposers’ Registration No. 1416070 for the stylized letter “B” for
clothing and sporting goods.

There is no testimony or evidence regarding the relationship of automotive
equipment with clothing or sporting goods. Nor do we find these goods to be related
on the face of their respective identifications. In view thereof, we find that the
applicant’s automotive products are not related to opposers’ clothing or sporting
goods.
2. Opposers’ Registration No. 2607465 for the mark BRIDGESTONE and
design for “tires and inner tubes therefor.”

Applicant is seeking to register its mark for automobile engine parts in Class
7 and automotive parts, including vehicle wheels and repair kits for inner tubes sold
as a unit for land vehicles, in Class 12. According to opposers,
As the opposed application covers a number of goods –
such as repair kits for inner tubes sold as a unit for land
vehicles and engine parts – that are virtually identical to
the goods upon which Opposers’ use the B Stylized Mark,
it seems clear that Applicant’s Mark is likely to cause
confusion among consumers in the marketplace.41
The problem with opposers’ argument is that opposers have not pointed to any
testimony or evidence to support it, and we did not find any such evidence in our
review of the record. Nevertheless, we find that by their inherent nature,
applicant’s “vehicle wheels” and “repair kits for inner tubes sold as a unit for land
vehicles” are related to opposers’ tires. In a case such as this, opposers need not
prove and we need not find similarity as to each and every one of the different Class

41 Applicant’s Brief, p. 17 (TTABVue 32, p. 23).
Opposition No. 91193955

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12 goods identified in the application in order to find that the goods are related. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods in
the application). See also Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d
1482, 1492 n.30 (TTAB 2007); Baseball America Inc. v. Powerplay Sports Ltd., 71
USPQ2d 1844, 1848 n.9 (TTAB 2004).
3. Opposers’ common law use of the stylized letter “B” in connection with
engine mounts, torque rods, strut mounds, dust boots, and body
mounts.

Opposers have made common law use of their stylized letter “B” mark in
connection with engine mounts, torque rods, strut mounds, dust boots, and body
mounts. To properly analyze the relationship of the goods, we must first discuss
what they are. In this regard, opposers identified “engine mounts” and “torque
rods,” but did not identify “strut mounds,” “dust boots,” or “body mounts.”42
An engine mount is “a rubber-to-metal product that is designed to not only
mount the engine into the vehicle, but also specifically tuned to that vehicle … to
control the movement of the engine and also to optimize the vibration isolation
removing engine vibrations – preventing the engine vibrations from reaching the

42 Because the definition or purpose of automotive parts may not be readily apparent to lay
persons, the better practice would have been for opposers to have introduced evidence about
these products.
Opposition No. 91193955

23

occupant.”43 In other words, “[i]t‘s how you hold the engine in position and try to
keep the shaking from rattling everyone in the car.”44
A torque rod is “used in certain types of engine mounting systems to control
the – primarily the fore-aft motion of the engine.”45 In other words, when the driver
“pulls out to pass and steps hard on the gas, the engine wants to move in the engine
compartment, and the torque rods are what hold it in place.”46
As indicated above, opposers did not define the remaining automotive parts
on which they use their marks. Nevertheless, we have done our best to identify
those products. A “strut” is defined as follows:
Components connected from the top of the steering
knuckle to the upper strut mount that maintain the
knuckle position and act as shock absorbers to control
spring action in a vehicle’s suspension system. This is
used on most front wheel drive cars and some rear wheel
drive cars.47
We assume that the term “mound” in “strut mound” is a “mount” because we
cannot find an automotive meaning for the term “mound.” A “mount” is “a device

43 Marten’s Dep., p. 13 (TTABVue 24, p. 5).
44 Marten’s Dep., p. 14 (TTABVue 24, p. 6).
45 Marten’s Dep. p. 14 (TTABVue 24, p. 6).
46 Marten’s Dep. p. 14 (TTABVue 24, p. 6).
47 DELMAR’S AUTOMOTIVE DICTIONARY, p. 223 (1997). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91193955

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for attaching something. See motor mounts.”48 Thus, a “strut mound” or “strut
mount” is a device for attaching a strut to the body of a vehicle.
A “boot” is defined as follows:
2. The rubber or plastic cover located at either end of
the spark plug cable to insulate the connections between
the cable ends and the spark plug and distributor
terminal. Always grasp the cable by the boot when
removing it.
3. The protective cover of the ball joint that holds the
grease.
4. The covering around the CV joint.49
Accordingly, we presume that a “dust boot” is a rubber or plastic cover placed
around an automotive part to shield it from dust.
“Body mounts” are “rubber cushions, at strategic locations, to dampen noise
and vibration” and “to place a car body on the chassis.”50
With the exception of the dust boots, opposers’ products are used to affix
engines and other parts to a vehicle body.
a. Applicant’s Class 7 goods.
Many of applicant’s products in Class 7 are “not for land vehicles.” The
products that are related to land vehicles include the following:
1. Carburetor. A “carburetor” is “a device that vaporizes fuel and mixes it
with air in proper quantities and proportions to suit the varying needs of the

48 Automotive Dictionary (automotivedictionary.org). The Board may take judicial notice of
online dictionaries that have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006).
49 Automotive Dictionary (automotivedictionary.org).
50 TheAutoGlossary.com
Opposition No. 91193955

25

engine. A filter screens the air which drawn into the carburetor. Here the gasoline
mixes with the air and this fuel vapor enters the combustion chamber through the
intake valve where it is compressed and burned.”51
2. Carburetor feeders. A carburetor feeder probably functions similarly
to a “fuel injector nozzle.” A “fuel injector nozzle” is a “device that works like a
hypodermic needle to inject the proper amount of fuel into the combustion chamber
in response to signals from electronic sensing devices on cars with fuel injection
systems.” It receive [sic] fuel at low pressure and shoot [sic] it into the engine
cylinders at predetermined intervals under higher pressure.”52
3. Igniting devices for internal combustion engines for vehicles. These
may be spark plugs. A “spark plug” is “a device containing two electrodes across
which electricity jumps to produce a spark to fire the fuel charge.”53 It may also be
an electronic throttle body.
An electronic throttle body has replaced carburetors as
the preferred method of fuel delivery. The fuel flows into
the throttle body, and the engine control unit, which is an
electronic device, an electronic computer, reads – takes
readings throughout the engine, monitors the operating
condition and adjusts the fuel delivery and air mix ratio
to provide optimal economy and power.54
4. Fuel catalytic conversion apparatus for internal combustion engines
and automotive engine exhaust purifying apparatus, namely, catalytic converter. A

51 Automotive Dictionary (automotivedictionary.org).
52 Automotive Dictionary (automotivedictionary.org).
53 Automotive Dictionary (automotivedictionary.org).
54 Martens Dep., pp. 25-26 (TTABVue 24, pp. 8-9).
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“catalytic converter” is “a pollution control device found on the exhaust system of all
cars since its introduction in 1974 which acts like an afterburner to reburn
unburned gas in the tail pipe. It looks like a small muffler and is usually made of
stainless steel.”55
5. Automobile engine flywheel. A “flywheel” is “a relatively large and
heavy wheel that is attached to the back of the crankshaft to smooth out the firing
impulses. It provides inertia to keep the crankshaft turning smoothly during the
periods when no power is being applied. It also forms the base for the starter ring
gear and, in manual transmission, for the clutch assembly.”56
Applicant’s relevant Class 7 products are devices for fueling and operating an
engine. Opposers argue, in essence, that because the products are all automotive
products, they are related.57 Specifically, Mr. Martens testified as follows:
Q. And where is an electronic throttle body typically
located on a car or truck engine?
A. Most normally that will be on the top of the engine,
someplace close to the valve covers. Basically that would
be something that would be in normal vehicles pretty
much in full view of the consumer if you opened the hood.
Q. Would an electronic throttle body be located near
an upper torque valve?
A. Yes, they would be situated – could be situated
very, very close together. They both operate at the top of

55 Automotive Dictionary (automotivedictionary.org).
56 Automotive Dictionary (automotivedictionary.org).
57 Martens Dep., pp. 25-26 (TTABVue 24, pp. 8-9).
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the engine, so they’re sharing some of the same real
estate in the engine compartment.58
* * *
Q. So would an electronic throttle body be anywhere
near one of Bridgestone’s torque mounts?
A. Very possibly.59
In analyzing the relatedness of the products, the issue is whether the relevant
consumers believe that the products emanate from the same source. See Recton v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); In re Buck Stop
Lure Co., 226 USPQ 190, 191-92 (TTAB 1985) (“the question is, are the uses so
related that they are likely to be connected in the mind of an average prospective
purchaser irrespective of whether there are manufacturers who make both
products?”). “A broad general market category is not a generally reliable test of
relatedness of products.” Bose v. QSC Audio, 63 USPQ2d at 1310; Cooper
Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983 (“the mere
fact that the products involved in this case (or any products with significant
differences in character) are sold in the same industry does not of itself provide an
adequate basis to find the required ‘relatedness.’”).
As applied to applicant’s Class 7 goods, the only evidence and argument by
opposers is that both marks identify automotive products. However, in AUTO
FUNDAMENTALS (2000), a reference book written by Martin W. Stockel, Martin T.
Stockel, and Chis Johanson, the authors discuss the multiple systems that comprise

58 Martens Dep., pp. 26-27 (TTABVue 24, p. 9).
59 Martens Dep., p. 28 (TTABVue 24, p. 9).
Opposition No. 91193955

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an automobile. For example, there is an engine, electrical system, ignition system,
fuel injection system, fuel supply and carburetors, cooling system, lubrication
system, exhaust system, emission system, computer system, charging and starting
system, chassis electrical system, engine clutches, axles and drives, brakes,
suspension systems, steering systems, wheels and tires, and air conditioning and
heating systems. There is no evidence or testimony that explains how and why
consumers would expect products from the different systems to emanate from one
source. Based on the record before us, opposers did not meet their burden of
showing that applicant’s Class 7 goods are related to any of opposers’ products.
b. Applicant’s Class 12 goods.
Applicant’s goods in Class 12 are listed below:
1. Cycle cars;
2. Anti-theft devices for vehicles;
3. Engines for land vehicles;
4. Electric motors for land vehicles;
5. Motorcycles; automobiles;
6. Vehicle wheels;
7. Propulsion mechanisms for land vehicles, namely, transmission
mechanisms,
8. Internal combustion engines, drive shafts, engines, and electric motors
for motor cars;
9. Repair kits for inner tubes sold as a unit for land vehicles; and
Opposition No. 91193955

29

10. Vehicles for locomotion by land, air, water or rail, namely, buses, cars,
airplanes, boats, and locomotives.60
As with applicant’s goods in Class 7, opposers have failed to introduce any
evidence to show that the relevant consumers will believe that opposers’ engine
mounts, torque rods, strut mounds, dust boots, and body mounts emanate from the
same source as applicant’s goods in Class 12. While it could be argued that engine
mounts and engines are related because engine mounts are used to affix the engine
to the body of a vehicle, we have no idea whether manufactures of one tend to
produce the other as well or whether potential consumers believe those products
emanate from a single source. Any conclusion that we draw based on this record is
strictly speculation. In view of the foregoing, we find that opposers did not meet
their burden of proof. We point out that this finding of fact, or lack thereof, rests
solely on the evidence, or lack of evidence, before us. We might reach a different
finding of fact if we were presented with a better record.
D. Established, likely-to-continue channels of trade and classes of consumers.
Opposers sell their products to original equipment manufacturers (i.e.,
automobile and truck manufacturers), independent tire dealers, their own retail
company stores, and then ultimately to the end consumer.

60 In response to opposers’ interrogatory No. 7, applicant stated that its products include
camshaft brackets, thermostat assemblies, rocker shaft brackets and electronic throttle
bodies and the like. (TTABVue 37, p. 60). However, in determining whether the goods are
related, we must analyze the goods as listed in the identification of goods in the application
regardless of what the record may reveal as to the particular nature of applicant’s goods.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958).
Opposition No. 91193955

30

Q. Who does Bridgestone sell its tire and other related
products to?
A. We have various distribution channels. We will sell
to original equipment manufacturers such as Ford,
Nissan, Honda, General Motors. We also sell to
independent tire dealers, our own retail company stores,
and then ultimately to the end consumer.
Q. So does Bridgestone sell to OEMs, dealers,
individual tire dealers and consumers?
A. Yes.61
Mr. Martens testified, however, that channels of trade for opposers’ engine
mounts, torque rods, strut mounds, dust boots, and body mounts were not as
extensive as described by Mr. Pacsi. With respect to those products, opposers sell to
Nissan, Toyota, Subaru and Honda who use them in cars and light trucks.62
Nevertheless, it is clear that Opposers sell tires and some automotive-related
products “to virtually every original equipment manufacturer out there including
companies like Nissan, Honda, Ford, General Motors, Ferrari, Porsche.”63
Opposers have “about 10,000 points of sale that include car dealerships,
independent tire dealers, dealers that sell exclusively on the Internet, big box
retailers like Costco, independent tire retailers like Discount Tire”64 and Tire
Rack.65

61 Pacsi Dep., p. 20 (TTABVue 27, p. 23). See also Pacsi Dep., pp. 95-96 (TTABVue 27, pp.
98-99) (“We supply tires to these original equipment manufacturers. …”)
62 Martens Dep., pp. 12-13 (TTABVue 24, p. 5).
63 Pacsi Dep., pp. 98-99 (TTABVue 27, pp. 101-102)
64 Pacsi Dep., pp. 96-97 (TTABVue 27, pp. 99-100).
65 Pacsi Dep., p. 99 (TTABVue p. 102).
Opposition No. 91193955

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Because applicant provides auto parts to Nissan, Ford North America,
Honda, Siemens, and other OEMs,66 we find that the channels and trade and
classes of consumers are in part identical. However, the overlap in channels of
trade and classes of consumers is with original equipment manufacturers who are
knowledgeable consumers that would know the source of the product that they are
buying for use in their automobiles and trucks, as well as for resale.
E. Balancing the factors.
A. Opposers’ Stylized “B” design.
Despite the fact that opposers’ mark is famous and the products of the parties
move in the same channels of trade, because the marks are not similar and because
opposers failed to show that the goods are related, we find that applicant’s mark
D DENI and design for the goods listed in its application in Classes 9 and 12 is not
likely to cause confusion with opposers’ stylized “B” mark for clothing, sporting
goods, or engine mounts, torque rods, strut mounds, dust boots, and body mounts.
B. Opposers’ BRIDGESTONE mark.
Despite the fact that opposers’ BRIDGESTONE mark is famous, the products
of the parties are in part related and move in the same channels of trade, because
the marks are not similar we find that applicant’s mark D DENI and design for the
goods listed in its application in Classes 9 and 12 is not likely to cause confusion
with opposers’ BRIDGESTONE mark for tires and inner tubes and related
automotive parts. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d

66 Applicant’s Supplemental Responses to Opposers’ Interrogatory Nos. 8 and 10 (TTABVue
32, p. 39); applicant’s response to Opposers’ Interrogatory No. 11 (TTABVue 32, p. 61).
Opposition No. 91193955

32

1344, 98 USPQ2d 1253, 1261 (Fed. Cir 2011) (despite the fame of opposer’s
CITIBANK mark, the similarity of the services and the channels of trade, “[t]he
dissimilarity of the marks in their entireties as to appearance, sound, connotation,
and commercial impression strongly supports a finding of no likelihood of
confusion”).
VI. Dilution
The Trademark Act provides a cause of action for the dilution of famous
marks. See Sections 13 and 43(c) of the Trademark Act, 15 U.S.C. §§ 1063 and
1125(c). Section 43(c) provides as follows:
Subject to the principles of equity, the owner of a famous
mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to an injunction against
another person who, at any time after the owner's mark
has become famous, commences use of a mark or trade
name in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous mark,
regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury.
Opposers contend that applicant's mark D DENI and design will dilute the
distinctiveness of opposer's marks. The Trademark Act defines dilution by blurring
as follows:
“[D]ilution by blurring” is association arising from the
similarity between a mark or trade name and a famous
mark that impairs the distinctiveness of the famous
mark.
Section 43(c)(2)(B) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B). “Dilution
diminishes the ‘selling power that a distinctive mark or name with favorable
associations has engendered for a product in the mind of the consuming public.’”
Opposition No. 91193955

33

Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) (internal citation
omitted) (“Toro”).
Our primary reviewing court, the Court of Appeals for the Federal Circuit,
has set forth the following four elements a plaintiff must prove in order to prevail
on a claim of dilution by blurring in a Board proceeding:
(1) that plaintiff owns a famous mark that is distinctive;
(2) the defendant is using a mark in commerce that
allegedly dilutes the plaintiff's famous mark;
(3) the defendant's use of its mark began after the
plaintiff's mark became famous; and
(4) the defendant's use of its mark is likely to cause
dilution by blurring.
Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1723-4 (Fed. Cir. 2012) (“Coach Services”). However, in this case, the application is
based on a request for extension of protection filed under Section 66(a) of the
Trademark Act, not use in commerce. In such situations, we treat the dilution issue
in same manner as if the application were based on intent-to-use. Opposers’ burden
is to show that its marks became famous prior to the filing date or constructive use
date of applicant’s application. Cf. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1174
(“We hold that in the case of an intent-to-use application, an owner of an allegedly
famous mark must establish that its mark had become famous prior to the filing
date of the trademark application or registration against which it intends to file an
opposition or cancellation proceeding.”). See also Midwestern Pet Foods Inc. v.
Opposition No. 91193955

34

Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir.
2012).
A. Whether opposers’ marks are famous and distinctive?
Under §1125(c)(2)(A), a mark is “famous” for dilution purposes —
… if it is widely recognized by the general consuming
public of the United States as a designation of source of
the goods or services of the mark's owner. In determining
whether a mark possesses the requisite degree of
recognition, the court may consider all relevant factors,
including the following:
(i) The duration, extent, and geographic reach of
advertising and publicity of the mark, whether advertised
or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of
goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
Opposers have the burden of establishing that their marks have become
famous. “It is well-established that dilution fame is difficult to prove.” Coach
Services, 101 USPQ2d at 1724, quoting Toro, 61 USPQ2d at 1180. As noted in the
statute, fame for dilution requires “widespread recognition by the general public.”
Coach Services, 101 USPQ2d at 1725, citing 15 U.S.C. § 1125(c)(2)(A). An opposer
must show that, when the general public encounters the mark “in almost any
context, it associates the term, at least initially, with the mark’s owner.” Id.,
quoting Toro, 61 USPQ2d at 1180. In other words, a famous mark is one that has
Opposition No. 91193955

35

become a “household name.” Coach Services, 101 USPQ2d at 1725 (internal
citations omitted).
In addition, “a mark must be not only famous, but also so distinctive that the
public would associate the term with the owner of the famous mark even when it
encounters the term apart from the owner’s goods or services, i.e., devoid of its
trademark context.” Toro, 61 USPQ2d at 1177, citing H.R. REP. No. 104-374, at 3
(1995) (“the mark signifies something unique, singular, or particular”). The
requirement of “distinctiveness” is derived from Section 43(c), which provides that
distinctiveness of a famous mark can be shown either through inherent or acquired
distinctiveness.67 Fame and distinctiveness are “two overlapping, but slightly
different, concepts.” Toro, 61 USPQ2d at 1177. That is to say, “[a] trademark
cannot be ‘famous’ unless it is ‘distinctive,’ but it can certainly be ‘distinctive’
without being ‘famous.’ A designation cannot be a trademark at all unless it is
‘distinctive.’ By definition, all ‘trademarks’ are ‘distinctive’—very few are ‘famous.’”
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:104 (4th ed.).
Based on the record before us, we find that opposers’ marks are distinctive.
Opposers’ marks are registered on the Principal Register and their use of those

67 In 2006, Congress enacted the Trademark Dilution Revision Act (“TDRA”) and amended
Section 43(c) of the Trademark Act of 1946 to overrule the view in some federal courts that
its predecessor, the Federal Trademark Dilution Act (“FTDA”) applied only to inherently
distinctive marks. See e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882,
1887 n. 2 (2d Cir. 1999) (“We think the inclusion of the requirement of distinctiveness was
intended, for good reason, to deny the protection of the statute to non-distinctive marks.”);
Savin Corp. v. Savin Group, 391 F.3d 439, 73 USPQ2d 1273 (2d Cir. 2004), cert. denied, 126
S. Ct. 116, 163 L. Ed. 2d 64 (2005) (the surname SAVIN used as a mark is “not as obviously
distinctive as, for example ‘Honda’ or ‘Acura.’”).

Opposition No. 91193955

36

marks is national in scope. Opposers have made substantial sales, demonstrated
considerable recognition of their marks and there is no evidence that any other
company uses the stylized “B” or BRIDGESTONE mark.
However, opposers have presented little evidence of widespread recognition.
While opposers presented evidence regarding their advertising and marketing
activities in connection with the National Football League and Super Bowl, the
National Hockey League, and the PGA golf tour, there is no evidence regarding the
impact of that marketing and advertising. There is no testimony or evidence
regarding how many people are aware of opposers’ association with the NFL, NHL
or PGA. In other words, it is one thing to advertise during the Super Bowl
broadcast, it is another thing to prove how many Super Bowl viewers were aware
that opposers advertised during the Super Bowl broadcast. Opposers did not
introduce any news articles discussing opposers’ Super Bowl commercials.
Likewise, Mr. Pacsi did not identify any Bridgestone golfers or the extent to which
consumers are aware that Bridgestone is a PGA sponsor.
Even if, as Mr. Pacsi testified, opposers are a leading manufacturer of tires,68
this fact does not establish that opposers’ marks are truly famous, such that when
the public encounters the marks on unrelated goods, this use would immediately
call to mind opposers’ marks. We have little evidence of how famous the mark is
among potential purchasers of opposers’ products beyond the evidence relating to
advertising and sales figures. The record does not contain the evidence needed to

68 Pacsi Dep., p. 11 (TTABVue 27, pp. 14). There was no evidence or testimony regarding
opposers’ market share.
Opposition No. 91193955

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demonstrate that opposers’ marks are members of the select class of marks – those
with such powerful consumer associations that even non-competing uses can
impinge on their value. “Fame for FTDA purposes cannot be shown with general
advertising and sales figures and unsupported assertions of fame by the party.”
Toro, 61 USPQ2d at 1179.
Examples of evidence that show the transformation of a
term into a truly famous mark include:
1. Recognition by the other party. [Internal citation
omitted].
2. Intense media attention. [Internal citation
omitted].
3. Surveys. [Internal citation omitted].
Toro, 61 USPQ2d at 1181.
There is no evidence regarding recognition by applicant, media attention
[other than opposers’ advertising], or surveys. Even though Mr. Pacsi testified that
opposers “do ongoing consumer research that shows our brand continues to grow in
both aided and unaided brand awareness,” opposers failed to introduce any of that
research.69
We are not setting any limits on the type of evidence that a party can use to
show fame, nor are we requiring any specific type of evidence. But in order to
prevail on a dilution claim, the owner of a mark alleged to be famous must show a
change has occurred in the public’s perception of the term that it is now primarily
associated with the owner of the mark even when considered outside of the context

69 Pacsi Dep., p. 96 (TTABVue 27, p. 99).
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of the owner’s goods or services. Toro, 61 USPQ2d at 1181. Based on this record,
we cannot find that opposers’ marks are famous for purposes of dilution.
B. Whether opposers’ marks became famous prior to the filing date or
constructive use date of applicant’s application?

If the opposers appeal this decision and the reviewing court finds that
opposers’ marks are famous for purposes of dilution, then the record shows that
opposers’ marks became famous prior to the constructive use date of applicant’s
application (i.e., February 18, 2009).
C. Whether applicant’s mark is likely to dilute opposers’ marks?
Dilution by blurring is an “association arising from the similarity between a
mark or trade name and a famous mark that impairs the distinctiveness of the
famous mark,” 15 U.S.C. § 1125(c)(2)(B), and may be found “regardless of the
presence or absence of actual or likely confusion, of competition, or of actual
economic injury,” 15 U.S.C. § 1125(c)(1). Dilution by blurring occurs when a
substantial percentage of consumers, upon seeing the junior party’s use of a mark
on its goods, are immediately reminded of the famous mark and associate the junior
party’s use with the owner of the famous mark, even if they do not believe that the
goods come from the famous mark’s owner. See e.g., National Pork Board v.
Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (TTAB 2010). In addition, we
must determine not only whether there is an ‘association’ arising from the
similarity of the marks, but whether such association is likely to ‘impair’ the
distinctiveness of the famous mark. Nike Inc. v. Maher, 100 USPQ2d 1018, 1023
(TTAB 2011) (“Nike v. Maher”). In determining whether a mark or trade name is
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39

likely to cause dilution by blurring, the Board may consider the following six non-
exhaustive factors:
(i) The degree of similarity between the mark or trade
name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness
of the famous mark.
(iii) The extent to which the owner of the famous mark
is engaging in substantially exclusive use of the
mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name
intended to create an association with the famous
mark.
(vi) Any actual association between the mark or trade
name and the famous mark.
15 U.S.C. § 1125(c)(2)(B)(i)-(vi).
We find that the marks are so different that even if we find that all the other
factors weigh in favor of finding dilution, applicant’s mark will not dilute the
distinctiveness of opposers’ marks.
Decision: The opposition is dismissed on the ground of likelihood of
confusion and dilution.