Bridgestone Firestone North American Tire, LLC and Bridgestone Corporationv.Federal Corporation

Trademark Trial and Appeal Board

Feb 24, 2010

No. 91168556 (T.T.A.B. Feb. 24, 2010)

Hearing: December 8, 2009 Mailed: February 24, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Bridgestone Firestone North American Tire, LLC
and Bridgestone Corporation
v.
Federal Corporation
_____

Opposition No. 91168556
to application Serial No. 78495477
filed on October 6, 2004
_____

Douglas A. Rettew and Danny M. Awdeh of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P. for Bridgestone Firestone
North American Tire, LLC and Bridgestone Corporation.

Everett E. Fruehling of Christensen O’Connor Johnson
Kindness PLLC and W. David Shenk of Whyte Hirschboeck Dudek
S.C. for Federal Corporation.
______

Before Hairston, Holtzman and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Federal Corporation (“applicant”) filed an intent-to-
use application for the mark MILANZA, shown below, for
“tires,” in Class 12.

Bridgestone Firestone North American Tire, LLC and
Bridgestone Corporation (“opposers”) opposed the
registration of applicant’s mark on the ground of priority
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91168556
2
of use and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Specifically,
opposers alleged that they own the trademarks POTENZA,
TURANZA and ALENZA for tires, that their three trademarks
form an “NZA” suffix family of marks, and that MILANZA for
tires so resemble opposers’ individual marks and “NZA”
suffix family of marks as to be likely to cause confusion.
Opposers pleaded ownership of the following registrations:
1. Registration No. 1281463 for the mark POTENZA, in
typed drawing form, for “tires and tubes”;1 and
2. Registration No. 2842949 for the mark TURANZA, in
typed drawing form, for, inter alia, “tires.”2
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
Evidentiary Issue
During its main testimony period, opposers introduced
the testimony deposition of Hal Poret, Vice President of
Guideline, a company that specializes in designing and
conducting surveys to measure consumer perception. Mr.
Poret, through Guideline, conducted a likelihood of
confusion survey to determine whether the mark MILANZA for

1 Issued June 12, 1984; renewed. In the registration, opposers
state that “‘Potenza’ is an Italian word which may be translated
as ‘power’ or ‘potency’ in English.” Opposers also claimed
ownership of registrations for POTENZA RE91 and POTENZA RE050A
SCUDERIA. Because it is the similarity of applicant’s MILANZA
mark that is the gravaman of opposers’ claim, we focus our
attention on opposers’ POTENZA mark.
Opposition No. 91168556
3
tires is likely to cause confusion with opposers’ POTENZA
and TURANZA marks.
Applicant introduced the testimony deposition of Harvey
H. Sundel, Ph.D., applicant’s expert witness regarding
surveys to measure consumer perception. Dr. Sundel
critiqued the survey conducted by Guideline. Dr. Sundel
also opined as to how the survey should have been conducted.
During opposers’ rebuttal testimony period, Guideline
conducted a likelihood of confusion survey to determine
whether the mark MILANZA for tires is likely to cause
confusion with opposers’ POTENZA and TURANZA marks in
accordance with the suggestions offered by Dr. Sundel.
Opposers introduced the results of the second survey through
Mr. Poret’s rebuttal testimony deposition.
Applicant objected to the second survey as improper
rebuttal. Applicant’s objection is overruled. Guideline’s
second survey and Mr. Poret’s rebuttal testimony regarding
that survey are proper rebuttal to the extent that they bear
on the validity and probative value of the first survey.
Thus, we have considered the second survey and Mr. Poret’s
rebuttal testimony deposition to that extent. We have not
considered the second survey and the corresponding testimony
for purposes of supporting opposers’ case-in-chief on its
claim of likelihood of confusion. Helene Curtis Industries

2 Issued May 18, 2004.
Opposition No. 91168556
4
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1625 n. 33 (TTAB
1989).
After opposers took Mr. Poret’s rebuttal testimony
deposition and introduced the second likelihood of confusion
survey, applicant filed a motion to reopen its testimony
period to take the deposition of its expert, Dr. Sundel.
The Board denied applicant’s motion to reopen its testimony
period in an order dated March 4, 2009. In its brief,
applicant again argued that it should have been allowed to
take Dr. Sundel’s testimony regarding opposers’ second
likelihood of confusion survey.
The Board’s March 4, 2009 order was correct. Our rules
of practice do not make any provision for rebuttal testimony
by the defendant. Osage Oil & Transportation Co. v.
Standard Oil Co., 226 USPQ 905, 907 n.10 (TTAB 1985).
Therefore, it was incumbent upon applicant, being cognizant
of our rules, to have anticipated that opposers would
attempt to rehabilitate the purported deficiencies in its
first survey, including, however unlikely, a second survey
correcting the purported deficiencies.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:
Opposition No. 91168556
5
A. Opposers’ evidence.
1. Notice of reliance on copies of opposers’ pleaded
registrations prepared from the electronic database records
of the U.S. Patent and Trademark Office showing both the
current status of and current title to the registrations.3
2. Stipulated testimony declaration of Dana
Nicoletti, a litigation legal assistant for opposers’
counsel, introducing excerpts from third-party websites.
3. Notice of reliance on applicant’s responses to
opposers’ requests for admission Nos. 1-6, 10-15 and 41-42.
4. Notice of reliance on applicant’s responses to
opposers’ interrogatory Nos. 7(a), (b), (e) and (f), 10 and
12.
5. Notice of reliance on printed publications
pursuant to Trademark Rule 2.122(e).
6. Notice of reliance on a copy of an amended
petition for cancellation filed by opposers in another
proceeding purportedly to show that opposers police their
marks.
7. Testimony deposition of Hal Poret with attached
exhibits.
8. Rebuttal testimony deposition of Hal Poret with
attached exhibits.

3 See Research In Motion Limited v. NBOR Corporation, 92 USPQ2d
1926, 1928 (TTAB 2009).
Opposition No. 91168556
6
9. Testimony deposition of Philip J. Pasci, opposers’
Vice President of Consumer Marketing, with attached
exhibits.
B. Applicant’s evidence.
1. Notice of reliance on two third-party
registrations for marks ending in “NZA.”4
2. The stipulated testimony declaration of Anne
Calico, litigation paralegal for applicant’s counsel,
introducing excerpts from third-party websites.
3. The testimony deposition of Yeh Chia-Che,
applicant’s Deputy Manager for Sales, with attached
exhibits.
4. The testimony deposition of Dr. Harvey H. Sundel,
Ph.D.
Standing
Because opposers have properly made their pleaded
registrations of record, opposers have established their
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,

4 Applicant also included three applications. However, an
application has “no probative value other than as evidence that
the application was filed.” In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1049 n.4 (TTAB 2002). Also, the notice of reliance
included only a list of registrations. Applicant did not include
copies of the registrations. If applicant wanted to make third-
party registrations of record, it must introduce copies of the
registrations, not just a list, through a notice of reliance in
accordance with Trademark Rule 2.122(e). Andre Oliver Inc. v.
Products Exchange Company, Inc., 1 USPQ2d 1817, 1818 (TTAB 1986);
see also In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974).
Nevertheless, because opposers did not object and, in fact
treated the registrations as if they were properly made of
record, we have considered this evidence on its merits.
Opposition No. 91168556
7
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
Priority
Because opposers’ pleaded registrations for the marks
POTENZA and TURANZA are of record, Section 2(d) priority is
not an issue in this case as to the marks and the products
covered by the registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Although opposers did not allege ownership of
Registration No. 3169216 for the mark ALENZA for “vehicle
tires; inner tubes for vehicle tires; wheel rims for
vehicles,” opposers introduced a copy of the registration
through the testimony of Philip Pasci. However, Mr. Pasci
did not testify as to the current status of the
registration. Because opposers did not allege ownership of
the ALENZA registration and because Mr. Pasci did not
testify as to the current status of the ALENZA registration,
opposers may not rely on the registration for purposes of
establishing priority. With respect to priority of the
ALENZA mark, Mr. Pasci testified that opposers began using
the ALENZA trademark in March 2005.5 Because the filing

5 Pasci Dep., p. 22.
Opposition No. 91168556
8
date of the application at issue is October 10, 2004,
applicant has priority vis-à-vis opposers’ ALENZA trademark.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re
Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. Opposers did not establish a family of “NZA” marks.

Opposers contend that they have “rights in the family
of –NZA suffix marks through substantial use and promotion
of those distinctive marks together.”6 Opposers assert that
the “POTENZA, TURANZA, and ALENZA marks are prominently
displayed together through the strategic placement of those
marks and tires throughout 2,200 company-owned stores”
(emphasis in the original),7 they appear together in
promotional materials and in-store point-of-sale displays,
and “on large signs covering the front entrance of stores.”8
In addition, opposers have introduced advertisements that
opposers contend show the marks used together, as well as

6 Opposers’ Brief, p. 31.
7 Opposers’ Reply Brief, p. 13.
8 Opposers’ Reply Brief, p. 14.
Opposition No. 91168556
9
noting news articles referencing the marks.9 In particular,
opposers reference a November 1994 article in Modern Tire
Dealer magazine quoting the following passage:
To create a stronger family image among
its tires a manufacturer may use names
that complement each other.

Bridgestone did this when it developed a
touring line, changing “Potenza” to
create “Turanza.”

The Court of Appeals for the Federal Circuit has
defined a family of trademarks as follows:
A family of marks is a group of
marks having a recognizable common
characteristic, wherein the marks
are composed and used in such a way
that the public associates not only
the individual marks, but the
common characteristic of the
family, with the trademark owner.
Simply using a series of similar
marks does not of itself establish
the existence of a family. There
must be a recognition among the
purchasing public that the common
characteristic is indicative of a
common origin of the goods. …

Recognition of the family is
achieved when the pattern of usage
of the common element is sufficient
to be indicative of the origin of
the family.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
In order to create the requisite recognition of the
common element of the marks or “family surname,” the common

9 Opposers’ Reply Brief, p. 15.
Opposition No. 91168556
10
element must be so extensively used and advertised that the
public recognizes the “family surname” as a trademark.
Reynolds & Reynolds Co. v. I.E. Systems, Inc.,
5 USPQ2d 1749, 1751 (TTAB 1987) (the marks must be used in a
manner calculated to impress upon the relevant public that
the marks indicate a single source).
In order to establish a “family of
marks,” it must be demonstrated that the
marks asserted to comprise its “family”
or a number of them have been used and
advertised in promotional material or
used in everyday sales activities in
such a manner as to create common
exposure and thereafter recognition of
common ownership based upon a feature
common to each mark.

American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457,
461 (TTAB 1978).
Furthermore, to establish a family of marks, it must be
shown that prior to applicant’s first use of its mark, the
marks containing the claimed family feature (i.e., the “NZA”
suffix) were used and promoted together by opposers in such
a manner as to create public recognition in the family
feature. Marion Laboratories v. Biochemical/Diagnostics,
6 USPQ2d 1215, 1218 (TTAB 1988). Because opposers must
prove that they established a family of marks prior to
applicant’s first use its mark, and because applicant’s
effective first use date of MILANZA precedes opposers’ first
use of ALENZA, we will not consider any promotion or use of
Opposition No. 91168556
11
ALENZA in determining whether opposers have established a
family of marks.
In the absence of direct testimony by purchasers, we
must place ourselves in the position of average consumers
and attempt to understand their reaction to the marks as
they are encountered in the marketplace. Id. In this
regard, the “‘family’ concept is bottomed on recognition of
the common feature as the distinguishing feature of each
mark.” Id.
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.10 In fact, the vast majority
of advertising by opposers feature the BRIDGESTONE mark in
connection with a specific sub-brand. 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. Even the
advertisements referenced by opposers in their reply brief,

10 See for example Pasci Dep., Exhibit 116. Mr. Pasci identified
BIDGESTONE and FIRESTONE as opposers’ primary brands. POTENZA,
TURANZA, and DUELER are sub-brands within the BRIDGESTONE brand.
(Pasci Dep., p. 6). ALENZA is a sub-brand of the DUELER sub-
brand. The name of the tire is the DUELER H/L ALENZA. (Pasci
Dep., pp. 17 and 216). “The Alenza mark in print or on the tire
never appears by itself.” (Pasci Dep., p. 217).
Opposition No. 91168556
12
shown below, do not emphasize or highlight the purported
“NZA” suffix or draw the consumer’s attention to the “NZA”
suffix as indicating a single source.

Opposition No. 91168556
13

The advertising by third-party retailers also
emphasizes the BRIDGESTONE mark. The third-party
advertising does not draw attention to the “NZA” suffix.
Representative advertisements from the Nicoletti Declaration
are shown below.

Opposition No. 91168556
14

The store signs and in-store displays do not draw
attention to the “NZA” suffix. In the signs and displays,
the TURANZA and POTENZA marks appear with other sub-brands,
such as DUELER, FIREHAWK, and WILDERNESS.11 Because the
marks are featured together, nothing draws attention to the
“NZA” suffix and it does not stand out.
With the exception of the one article in the Modern
Tire Dealer magazine referenced above, the news articles
submitted by opposers do not support opposers’ contention
that it has a family of “NZA” marks. Most of the articles
reference only one of the marks. Those articles that
mention both the TURANZA and POTENZA marks do so in
conjunction with the BRIDGESTONE mark and they do not
emphasize the “NZA” suffix or show any recognition of that

11 Pasci Dep., Exhibit 75.
Opposition No. 91168556
15
an “NZA” suffix points exclusively to opposers. The excerpt
shown below is representative of the manner in which the
articles reference opposers’ marks.
UNI-T is already incorporated in the
Bridgestone Potenza S-02 ultra-high
performance tire (introduced in 1995),
and some are incorporated into the new
generation of Bridgestone Turanza
touring tires which arrived in retail
stores last month.12

Opposers’ internal marketing plans belie opposers’
contention that they have a family of “NZA” marks. Opposers
never referenced the “NZA” family of marks in any of its
internal marketing bulletins.13 In opposers’ promotional
materials catalogue for dealers (e.g., consumer handouts,
banners, posters, decals, patches, pennants, etc.), there
are no products highlighting the “NZA” suffix.14 In fact,
opposers articulated its intention to promote the
BRIDGESTONE mark, not a family of “NZA” marks.
BRIDGESTONE

Bridgestone advertising goes
BIG time in the U.S.

The new executions capitalize on the
equity we’ve built with our spots
featuring “The Wheel.” Now we’re taking
the brand to an even higher level,
continuing to promote the premium image
of Bridgestone. We’re targeting both
current and new customers, creating
awareness and demand for the Potenza,

12 Opposers’ Notice of Reliance No. 4, Exhibit 73.
13 Pasci Dep., Exhibits 79-89.
14 Pasci Dep., Exhibit 74.
Opposition No. 91168556
16
Turanza, Dueler and Blizzak families of
products.15

In other words, opposers intended to build BRIDGESTONE brand
recognition using sub-brands directed to different market
segments.
We’ve tested our messages to our target
customers and they have told us that;
Potenza = performance, Turanza = wet and
quiet, Dueler = SUV elegance and
Blizzak = snow and ice.16

There is nothing in the record indicating that opposers’
“target customers” recognize the “NZA” suffix as pointing
exclusively to opposers.
Based on the record before us, opposers have failed to
establish that they have advertised or promoted their
TURANZA and POTENZA marks sufficiently to establish
recognition or awareness in the public or the trade as to a
family of marks identified by the “NZA” suffix.
Accordingly, opposers’ claim of likelihood of confusion must
be based solely on whether MILANZA so resembles POTENZA or
TURANZA as to be likely to cause confusion.17

15 Pasci Dep., Exhibit 83.
16 Pasci Dep., Exhibit 85.
17 As indicated in the discussion regarding priority, applicant
has priority vis-à-vis opposers’ ALENZA trademark. Accordingly,
we focus the remainder of the likelihood of confusion analysis on
the POTENZA and TURANZA trademarks.
Opposition No. 91168556
17
B. The similarity or dissimilarity and nature of the
products described in the application and registration
and likely-to-continue trade channels and classes of
consumers.

Both parties use their marks to identify tires.
Because the goods are identical, we must presume that they
are sold in the same channels of trade and to the same
classes of consumers.
C. The strength of opposers’ marks.
Opposers contend that their POTENZA and TURANZA marks
are both inherently strong and have marketplace strength,
thus, entitling their marks to a broad scope of protection.
With respect to the inherent strength of the marks, opposers
assert that both marks are fanciful terms that have no
meaning when applied to tires.18
With respect to the marketplace strength, opposers have
been using the POTENZA mark since 1981 and the TURANZA mark
since 1991.19 Because opposers designated their sales and
advertising figures as confidential, we may only refer to
them in general terms. In that regard, opposers’ sales and
advertising figures are impressive under any standard.
According to the January 30, 2008 issue of Modern Tire
Dealer magazine, in 2007, opposers were “leader in U.S. and
Canadian new-tire sales.”20 In 2007, opposers’ POTENZA,

18 Opposers’ Brief, p. 35.
19 Pasci Dep., pp. 19 and 21.
20 Pasci Dep., p. 208, Exhibit 130. This evidence of market share
is ambiguous. First, opposers comprise two primary brands:
Opposition No. 91168556
18
TURANZA, DUELER H/P SPORT, and DUELER H/L ALENZA received
the Consumer’s Digest magazine “Best Buy Award.”21 The
POTENZA and TURANZA tires are offered as original equipment
on many new cars.22
Despite this evidence of renown, opposers’ POTENZA and
TURANZA marks are always used in tandem with BRIDGESTONE.
Cf. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1308 (Fed. Cir. 2002) (if product marks are
used in tandem with a famous house mark, the party asserting
that the product marks are famous should prove that the
product marks “can properly be seen as independent of the
famous house mark”). In the newspaper and magazine

BRIDGESTONE and FIRESTONE. Second, the BRIDGESTONE brand is
comprised of at least the following sub-brands: POTENZA,
TURANZA, DUELER and BLIZZAK. It is not clear what percentage of
market share the BRIDGESTONE brand and the POTENZA and TURANZA
sub-brands comprise.
21 Pasci Dep., p. 70.
22 Pasci Dep., p. 31. This fact is ambiguous in analyzing the
meaning of the sales figures. First, it is common knowledge that
other tire manufacturers provide their tires as original
equipment on new cars. Thus, selling tires as original equipment
to vehicle manufacturers is standard practice in the tire
industry. Second, it is not clear whether opposers’ brands are
offered as an option to a new car purchase or as a default
selection. Finally, 45% of the consumers will replace the tires
on their vehicle with the same tire brand currently on the
vehicle. (Pasci Dep., p. 32). While some of the consumers may
be aware of the tire model or sub-brand on their vehicle, others
may request BRIDGESTONE or they may simply request the same,
albeit unknown, brand that is currently on their vehicle.
Accordingly, some percentage of replacement tire customers
purchase opposers’ tires without regard to the brand, thus,
reducing the probative value of opposers’ sales to some unknown
extent.
Opposition No. 91168556
19
advertisements referenced in opposers’ brief, POTENZA and
TURANZA always appear with the BRIDGESTONE mark.23 The
BRIDGESONE mark is also highly prominent in opposers’
product placement efforts where POTENZA tires have been
featured in third-party programs or commercials.24 In this
regard, the Sponsors Reports for the Champ Car World Series
prepared by Joyce Julius and Associates, Inc. demonstrate
that opposers’ sponsorship of a Formula 1 World Championship
series redounds to the benefit of the BRIDGESTONE mark with
minimal benefit to the POTENZA mark.25 Because the Sponsors
Reports were designated as confidential, we may only refer
to them in general terms. The report measures the
television exposure of sponsorship brands and converts them
into the equivalent of 30 second television commercials.26
Suffice it to say that advertising value of POTENZA mark was
less than 1.5% of the value to the BRIDGSTONE mark and
Bridgestone B logo.
Opposers’ point-of-sale materials, brochures, mailers
and other print materials feature the BRIDGESTONE mark in
conjunction with the POTENZA and TURANZA marks.27
Opposers contend that they have advertised their
POTENZA tires on billboards at locations with significant

23 Pasci Dep., Exhibits 17-42.
24 Pasci Dep., Exhibits 15, 16, and 131.
25 Pasci Dep., Exhibits 110 and 111.
26 Pasci Dep., p. 171.
27 Pasci Dep., Exhibits, 61, 72, and 75.
Opposition No. 91168556
20
exposure to the public and the media (e.g., in Times Square
in New York City and at the Indianapolis Speedway).28
However, these billboards also prominently feature the
BRIDGESTONE trademark.
Opposers’ television advertisements emphasize
BRIDGESTONE.29 There are two commercials: one for POTENZA
and one for TURANZA. While POTENZA and TURANZA appear
briefly on a tire in their respective commercials, the
emphasis is unmistakably on BRIDGESTONE.
Finally, opposers assert that their “tremendous
investment in developing, promoting, and marketing its
POTENZA, TURANZA, and ALENZA tires, and the commercial
success of those tires, has attracted significant
unsolicited media attention.”30 While opposers’ tires have
been referenced in the media, the references are news
reports involving industry news such as the introduction of
new products, new sponsorships and the like. The news
articles do not demonstrate that opposers’ marks have
achieved a high degree of recognition and renown.
Furthermore, POTENZA and TURANZA are identified as
BRIDGESTONE brands and are not referenced separate and apart
from BRIDGESTONE.

28 Pasci Dep., pp. 148-149, Exhibits 98 and 99.
29 Pasci Dep., Exhibits 13 and 14
30 Opposers’ Brief, p. 17.
Opposition No. 91168556
21
Unlike the use of the ACCOUSTIC WAVE and WAVE
trademarks by Bose Corporation, 63 USPQ2d at 1308, opposers
have not established that POTENZA and TURANZA have brand
recognition separate and apart from BRIDGESTONE. There is
simply nothing in the record to demonstrate that the marks
POTENZA and TURANZA have achieved any significant
recognition independent of the BRIDGESTONE mark. In view of
the foregoing, we find that while opposers’ POTENZA and
TURANZA marks are inherently distinctive, any market
strength that they have is tied to the BRIDGESTONE mark.
D. Evidence of actual confusion.
Survey evidence is circumstantial evidence of actual
confusion. See Blue Cross & Blue Shield Association v.
Harvard Community Health Plan, Inc., 17 USPQ2d 1075, 1078
n.7 (TTAB 1990); McCarthy On Trademarks and Unfair
Competition §32:184 (4th ed. 2010). Opposers submitted a
likelihood of confusion survey taken by Guideline. Mr.
Poret testified that the survey showed that there is a 29.9%
level of confusion between the mark MILANZA and the marks
POTENZA, TURANZA and DUELER.31
However, there is a problem with the survey format that
affects its probative value. The relevant survey
instructions are set forth below.
All respondents were first handed 3 blue
cards, one displaying the name DUELER,

31 Poret Testimony Dep., p. 48 and Exhibit 1, p. 5.
Opposition No. 91168556
22
one the name POTENZA, and one the name
TURANZA. Respondents were informed that
the names on the blue cards are 3 models
of automobile tires made by the same
tire company.

* * *

After the blue cards were put out of
sight, respondents were handed a white
card containing one of four other tire
model names, either MILANZA, EAGLE,
ZEON, or PILOT. Respondents were then
asked whether or not they thought the
tire model on the first white card is
made by the same company as, or by a
company that is connected or affiliated
with, the tire company that makes the
tire models listed on the blue cards. …
The first white card was then taken back
and respondents were given a second
white card containing another of the
above-mentioned tire model names.
Respondents were identically questioned
about the name on the second white card,
and this process was repeated until
respondents had been separately shown
and questioned about each of the four
tire model names, Milanza, Eagle, Zeon,
and Pilot.32

As indicated previously, the record does not support
the existence of an “NZA” suffix family of marks. There is
no pattern of advertising, promotion or use that draws
attention to the “NZA” suffix. However, in 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

32 Poret Dep., Exhibit 1, pp. 3-4.
Opposition No. 91168556
23
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. There was no basis to state that TURANZA,
POTENZA and DUELER were related in the minds of the relevant
consumers. In other words, the survey format led the
respondents to the desired response that MILANZA was
associated or affiliated with the company that owns the
TURANZA, POTENZA and DUELER marks.
Opposers contend that Dr. Sundel, applicant’s survey
expert, approved the format of showing respondents both
TURANZA and POTENZA because they reflect the existing
marketing conditions.
Q. Now, could you - - because in this
case, you understand Bridgestone
uses Potenza and Turanza. They
often appear together in stores.
Is it proper to show people those
two tires because those two tires
are - -

A. Together?

Q. - - shown and marketed together?

A. If that’s how they’re marketed
together, then you’d probably keep
them together.

Q. And get rid of Dueler?

Opposition No. 91168556
24
A. I would not have Dueler in there
because it sets up a different
situation, as I explained earlier.

Q. Sorry to interrupt. So on the blue
cards, to fix this, Guideline
should have gotten rid of Dueler
and then just kept Potenza and
Turanza?

A. Correct.33

Dr. Sundel’s objection to showing DUELER to the
respondents in conjunction with TURANZA and POTENZA is that
it created a “comparative” bias toward Italian-sounding-
names (i.e., MILANZA is closer to TURANZA and POTENZA than
the controls are to DUELER).34 Moreover, opposers’
statement that POTENZA and TURANZA appear together is
misleading. POTENZA and TURANZA appear together along with
BRIDGESTONE, DUELER, FIRESTONE, BLIZZAK, AFFINITY and many
other brand owned by opposers.
In view of the foregoing, we find that the opposers’
likelihood of confusion survey has little probative value.
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont

33 Sundel Testimony Dep., pp. 131-132.
34 Sundel Testimony Dep., pp. 33-37 and Exhibit 2, p. 5.
Opposition No. 91168556
25
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the
goods at issue are tires, we are dealing average consumers.
We also note that where, as here, the goods are
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Opposition No. 91168556
26
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).
Applicant’s mark MILANZA and opposers’ marks POTENZA
and TURANZA have obvious points of similarity: the marks
end in “NZA” and they are Italian-sounding. On the other
hand, the marks look different, sound different and they
have different meanings and engender different commercial
impressions.
With respect to appearance and sound, we find that the
dominant portion of the marks is the first two syllables
(i.e., MILAN, POTEN, and TURAN) with the final syllable, the
letters “ZA,” providing an Italian accent. In considering
the marks in their entireties, the final syllable is too
insignificant to hold that the marks are similar.
With respect to the meaning and commercial impression
of the marks, the marks are not similar. POTENZA is Italian
for “power.” It is used to identify a high performance tire
and engenders the commercial impression of potency or
power.35 TURANZA is used to identify a touring tire and,
although a coined term, it engenders the commercial

35 Pasci Dep., p. 16.
Opposition No. 91168556
27
impression of touring.36 MILANZA engenders the commercial
impression of something from Milan.
In view of the foregoing, we find that the marks are
not similar in appearance, sound, meaning or commercial
impression.
F. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Just based on the products involved in this proceeding,
one would expect that purchasers would exercise a high
degree of care when making their purchasing decision.
However, there was very little testimony and evidence
proffered regarding this factor, and neither party
referenced this factor in their briefs.
The following facts demonstrate that consumers exercise
a high degree of care when purchasing tires. The products
are relatively expensive. The price of opposers’ tires may
range from $70 to $400 per tire.37 The price of applicant’s
tire may range from $70 to $200 per tire.38 Individuals do
not purchase tires frequently; tires tend to last several
years.39 Clearly, the purchase of tires is not an impulse
purchase because some degree of thought goes into it.

36 Pasci Dep., p. 16. The Italian word for “touring” is
“turismo.” Cassell’s Italian Dictionary, p. 1028 (1977).
37 Pasci Dep., p. 17.
38 Chia-Che Dep., p. 134.
39 In selecting the universe of respondent’s for opposers’
likelihood of confusion survey, Mr. Poret testified that
potential candidates purchased tires within the past two years or
Opposition No. 91168556
28
On the other hand, the universe of potential consumers
include everyone who owns an automobile, SUV, or truck,
including consumers who do not exercise a high degree of
care in making their tire purchasing decisions and those who
make their decision based only on price. In this regard,
Mr. Pasci testified that tire industry research shows that
45% of vehicle owners replace old tires with the same tire
brand that is currently on their vehicle.40 Thus,
potentially 45% of the consumers purchase replacement tires
without regard to the brand.
To the extent a consumer cares about which tire he/she
is buying, this factor weighs slightly in favor of opposer.
G. Balancing the factors.
Despite the identity of the goods, channels of trade
and classes of consumers, we find that the differences
between the marks warrant a finding that there is no
likelihood of confusion. Simply put, we find that the
dissimilarity of the marks simply outweighs the other
relevant factors. Kellogg Co. v. Pack’em Enterprises, Inc.,
14 USPQ2d 1545, 1550 (TTAB 1990), aff’d, 951 F.2d 330,

intended to purchase tires within the next two years because he
wanted the universe to reflect the life cycle of the product.
“Tires are not a product that people are buying every week or
month, or even every year, they’re a product that people replace
every several years.” (Poret Testimony Dep., p. 26). Dr. Sundel
approved of Mr. Poret’s criteria for selecting the universe of
respondents.
40 Pasci Dep., p. 32.
Opposition No. 91168556
29
21 USPQ2d USPQ2d 1142 (Fed. Cir. 1991). In reaching this
conclusion, we have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto (including
any evidence and arguments not specifically discussed in
this opinion).
Decision: The opposition is dismissed with prejudice.