Bridgestone/Firestone Research, Inc.v.Automobile Club de L'Ouest de la France (A. C. O.)

Trademark Trial and Appeal Board

Jul 21, 1999

No. 92019683 (T.T.A.B. Jul. 21, 1999)

Hearing: Paper No. 80
July 22, 1998 BAC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 22, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Bridgestone/Firestone Research, Inc., substituted for
Bridgestone/Firestone, Inc.1
v.
Automobile Club De L’Quest De La France (A.C.O.)
_____
Cancellation No. 19,683
_____
Cameron C. Powell of Foley & Lardner for
Bridgestone/Firestone Research, Inc., substituted for
Bridgestone/Firestone, Inc.
Michael J. Striker, Esq. for Automobile Club De L’Quest De
La France (A.C.O.)
_____
Before Hanak, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
This case involves only a counterclaim petition to
cancel. In 1991 Bridgestone/Firestone, Inc. (hereinafter

1 The records of the Assignment Branch of this Office indicate
that in 1998 petitioner/counterclaim respondent’s pleaded
Registration No. 756,436 was assigned to Bridgestone/Firestone
Research, Inc. (See reel 1772, frame 758). Accordingly,
Cancellation No. 19683
2
Bridgestone) filed a petition to partially cancel
Supplemental Registration No. 1,386,349 owned by Automobile
Club De L’Quest De La France (A.C.O.) (hereinafter the
Automobile Club) for the mark shown below
for “automobile tires” in International Class 12.2 The
Automobile Club filed a counterclaim to cancel Bridgestone’s
pleaded Registration No. 756,4363 for the mark LEMANS for
“pneumatic rubber tires.”
On July 29, 1994, the Board granted Bridgestone’s
petition to partially cancel pursuant to Trademark Rule
2.134(a) and (b) based on the Automobile Club’s failure to
file a Section 8 affidavit with regard to its goods
“automobile tires” in its Supplemental Registration No.
1,386,349. The Board explained that the counterclaim would
go forward.

Bridgestone/Firestone Research, Inc. is substituted as the
petitioner/counterclaim respondent.
2 Reg. No. 1,386,349, issued March 11, 1986 with goods in Classes
4, 7, 12, 16, 28 and 34; Section 8 affidavit filed for part of
the Class 16 goods accepted.
3 Reg. No. 756,436, issued September 10, 1963, on the Principal
Register, Section 8 affidavit accepted, Section 15 affidavit
acknowledged, renewed. The claimed date of first use and first
use in commerce is October 26, 1962. This registration
originally issued to Seiberling Rubber Company; was assigned to
The Firestone Tire & Rubber Company in 1965; which changed its
Cancellation No. 19683
3
In its counterclaim, the Automobile Club pleaded, inter
alia, that Bridgestone filed the partial petition to cancel
against the Automobile Club’s registration alleging a
likelihood of confusion and that tires offered by the
Automobile Club would be sold to the same classes of
purchasers through the same channels of trade as
Bridgestone’s tires; that Bridgestone is the owner of
Registration No. 756,436, and Bridgestone offers for sale
automobile tires under the mark LEMANS; that since 1923 the
Automobile Club and its predecessors have sponsored,
organized and promoted the Le Mans 24-Hour Grand Prix
d’Endurance race; that said race is the world’s best known
automobile race; and that the Le Mans automobile race is
generally known throughout the United States and has been
since its inception because it is reported through
newspapers, sporting magazines and automobile magazines as
well as being broadcast on television and radio in the
United States.
The Automobile Club further alleges that winning the Le
Mans race is a “coveted achievement” (paragraph 20) which is
used by the winner to promote sales of the winning
automobile in the United States and elsewhere; that since
long prior to any use of the mark LEMANS by Bridgestone, the
term had become famous and inextricably linked with the

name to Bridgestone/Firestone, Inc. in 1989; and in 1998, there
Cancellation No. 19683
4
Automobile Club and its Le Mans race; that pneumatic tires
are “closely linked” (paragraph 21) to automobile racing;
that one of the most noticeable and important aspects of
automobile racing is the automobile tires which are used and
replaced during the race; that persons seeing the term
LEMANS, particularly when used in association with
automotive products, will assume some link, association or
sponsorship with or by the Automobile Club; and that
Bridgestone intended, actually or impliedly, to create a
false association with the Automobile Club and its race
through the use of the mark LEMANS for pneumatic rubber
tires.
Based on the above, the Automobile Club contends that
Registration No. 756,436 should be cancelled under Section
2(a) of the Trademark Act, 15 U.S.C. §1052(a), because the
mark is deceptive4 and falsely suggests a connection with
the Automobile Club.
In its answer to the counterclaim Bridgestone admitted,
inter alia, that it owns the registration and that it offers
tires for sale under the involved mark; and that it filed
the petition for partial cancellation alleging a likelihood
of confusion and that tires offered by the Automobile Club
and those offered by Bridgestone involve the same channels

was an assignment to Bridgestone/Firestone Research, Inc.
Cancellation No. 19683
5

4 The Automobile Club submitted no evidence on the claim that the
mark is deceptive, and did not argue the issue in its brief.
Thus, this claim will not be further considered.
Cancellation No. 19683
6
of trade and the same classes of purchasers. Bridgestone
otherwise denied the salient allegations of the
counterclaim.
Further, Bridgestone raised the affirmative defenses
that the counterclaim fails to state a claim; that the
counterclaim is barred under the doctrines of laches,
acquiescence, estoppel and waiver; that the counterclaim is
essentially a claim of trademark priority and is barred by
the statute of limitations; that the Automobile Club cannot
be damaged because it is not the true and rightful owner of
the marks LEMANS for tires; and that at the time the
Automobile Club filed its application for its mark for,
inter alia, tires, it knew or should have known it was not
the rightful owner of the mark for tires.5

5 The only affirmative defenses maintained by Bridgestone in its
brief were “laches” and “estoppel by laches.” The record does
not reflect evidence on these defenses; and in Bridgestone’s
brief, it stated only very general information about its alleged
reliance on the Automobile Club’s delay in seeking cancellation
of Bridgestone’s registration. For example, Bridgestone stated
that “... in reliance on the lack of any objection for so many
decades [27 years], [Bridgestone] has designed, marketed, and
sold many tires under the name LEMANS.” (brief, p. 37); and
“Firestone would obviously not have invested so much time and
money in its LEMANS tires had [the Automobile Club’s] objections
been timely raised...”. (brief, p. 38) (Emphasis ours).
Bridgestone provided absolutely no specific information regarding
its alleged reliance on the Automobile Club’s alleged silence.
While it is clear that there has been a delay in seeking
cancellation of Bridgestone’s registration, Bridgestone has not
proven the elements of the affirmative defenses of laches and
estoppel by laches.
None of Bridgestone’s remaining affirmative defenses were tried
or briefed by Bridgestone and therefore will not be further
considered herein.
Cancellation No. 19683
7
The record consists of the counterclaim pleadings; the
file of Bridgestone’s registration; and as counterclaim
petitioner’s (the Automobile Club) case-in-chief the
testimony, with exhibits, of Jacques Grelley, a retired
French race car driver; a notice of reliance on its
Registration No. 1,393,543 for the mark shown below
for “organization and conducting of automobile races”6; and
notices of reliance on several printed publications.
Counterclaim respondent (Bridgestone) submitted the
testimony, with exhibits, of Michael Mileski, manager of
marketing and product planning at Dayton Tire, a division of
Bridgestone; the testimony, with exhibits, of Michel Bonny,
a 30-year employee of Michelin Tires; the testimony, with
exhibits, of Vincent Desnoes, a librarian at the Alliance
Francaise and a student at George Mason University; the
testimony, with exhibits, of Donna Lee Rowe, a photographer;
and a notice of reliance on a variety of items under
Trademark Rule 2.122.

6 Reg. No. 1,393,543 issued May 13, 1986 on the Principal
register under Section 2(f), Section 8 affidavit accepted,
Section 15 affidavit acknowledged. The registration includes a
statement that “The mark consists of the term ‘LE MANS’ inside a
design of the Le Mans auto raceway”; and the design of the
raceway route is disclaimed. This registration is based on
Section 44(e) under a French registration.
Cancellation No. 19683
8
Both parties filed briefs on the case, and were
represented by counsel at an oral hearing held before the
Board on July 22, 1998.
As a preliminary matter, we note that both parties’
attorneys made several objections during the trial testimony
depositions, and the Automobile Club filed a written
objection to seven items in Bridgestone’s notice of
reliance. None of the objections was preserved by raising
same in the respective briefs on the case, with two
exceptions. See TBMP §718.04. In its brief, Bridgestone
objected to (i) Exhibits 19-22 introduced on cross-
examination at Bridgestone’s deposition of Vincent Desnoes;
and (ii) the Automobile Club’s cross-examination of
Bridgestone’s witness Michael Mileski using the term
“association.”
With regard to the first objection, Exhibits 19-22 of
the Desnoes testimony each consist of the cover page, title
page, and relevant page from four separate travel guides;
and Bridgestone objected on the basis that these were
neither properly authenticated nor introduced under the
Federal Rules of Evidence. This objection is overruled
because these documents could be properly introduced as
printed publications under Trademark Rule 2.122(e). The
Automobile Club offering the items as exhibits on cross-
examination testimony is fully the equivalent of offering
Cancellation No. 19683
9
the documents by way of a notice of reliance under Trademark
Rule 2.122(e). See Volkswagenwerk Aktiengesellschaft v.
Clement Wheel Company, Inc., 204 USPQ 76, 80 (TTAB 1979).
Bridgestone’s objection to the Automobile Club’s
questioning of the witness Michael Mileski about an
“association” as vague and ambiguous is also overruled.
Bridgestone’s objection goes to the probative value of the
testimony, not the admissibility thereof.
The issue before this Board is whether Bridgestone’s
mark LEMANS as applied to “pneumatic rubber tires” falsely
suggests a connection with the Automobile Club and its 24
Hour Le Mans Race within the meaning of Section 2(a) of the
Trademark Act, 15 U.S.C. §1052(a).
As discussed by our primary reviewing court in the case
of University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), the portion of Section 2(a) dealing with false
suggestion of a connection resulted from the desire to give
statutory effect to the notions of rights of privacy and of
publicity, the elements of which are distinctly different
from elements of a trademark or trade name infringement
claim, which are the essence of Section 2(d). Specifically,
the Court stated as follows:
Under concepts of the protection of
one’s “identity,” in any of the forms which
have so far been recognized, the initial
and critical requirement is that the name
Cancellation No. 19683
10
(or an equivalent thereof) claimed to be
appropriated by another must be
unmistakably associated with a particular
personality or “persona.” .....
Thus, to show an invasion of one’s
“persona,” it is not sufficient to show
merely prior identification with the name
adopted by another. Nor is it sufficient,
as urged by the University, that the fame
of the name of an institution provides the
basis for protection in itself. The mark,
NOTRE DAME, as used by Gourmet, must point
uniquely to the University. (footnotes
omitted)
Following the University of Notre Dame case, the Board
then enumerated the elements necessary to establish a claim
under Section 2(a) (false suggestion of a connection). The
plaintiff must prove (i) that the defendant’s mark is the
same or a close approximation of plaintiff’s previously used
name or identity; (ii) that the mark would be recognized as
such (i.e., that the mark points uniquely and unmistakably
to the plaintiff); (iii) that the plaintiff is not connected
with the activities performed by the defendant under the
mark; and (iv) that the plaintiff’s name or identity is of
sufficient fame or reputation that when the defendant’s mark
is used on its goods or services, a connection with the
plaintiff would be presumed. See Buffett v. Chi-Chi’s,
Inc., 226 USPQ 428 (TTAB 1985). See also, In re Sloppy
Joe’s International Inc., 43 USPQ2d 1350 (TTAB 1997); and In
re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB 1993).
Cancellation No. 19683
11
Further, in a petition to cancel under Section 2(a)
(false suggestion), the plaintiff must demonstrate that at
the time of issuance of the registration sought to be
cancelled, the term must have pointed uniquely to the
plaintiff such that the defendant’s mark used in connection
with the goods (or services) listed in the registration
falsely suggests a connection with the plaintiff. See The
Board of Trustees of the University of Alabama v. BAMA-
Werke Curt Baumann, 231 USPQ 408 (TTAB 1986). Both parties
referred to the date of registration as the operative time
frame in their briefs on the case.
There is no dispute that Bridgestone’s mark (LEMANS) is
the same or a close approximation of the Automobile Club’s
previously used name or identity (LE MANS); and that the
Automobile Club is not connected with the activities
performed by Bridgestone under the mark.
The dispute arises over whether the term LE MANS points
uniquely and unmistakably to the Automobile Club and/or its
race, and whether the Automobile Club’s name or identity is
of such fame or reputation that, when the mark LEMANS is
used by Bridgestone on its goods, a connection with the
Automobile Club would be presumed (as of the date of
registration).7

7 We note that in its brief as counterclaim petitioner the
Automobile Club states the following:
Cancellation No. 19683
12
The record shows that the 24-hour Le Mans automobile
race was started in 1923, and has been run annually (with a
few exceptions) since that time at a track near Le Mans,
France. There are of record three issues of the Britannica
Book of the Year, for the years 1961, 1962 and 1963, each of
which includes an entry under the “Automobile Racing”
section for the “Le Mans race”. Each one sets forth the
particulars of the race, such as the dates, the winning
drivers and the winning cars.
A slightly later publication, The Encyclopedia of Motor
Sport (1971), includes a section titled “Le Mans Circuits”,
with a subsection titled “Le Mans 24-Hour Race” with the
following statement:
This is undoubtedly the most widely-
known motor race in the world, a standing
which is sometimes difficult to justify
and which is at least in part due to the
fascination it has for British and
American enthusiasts.

It is beyond discussion that [the
Automobile Club] has clearly met the first three
arms of the Section 2(a) test. The mark
involved is identical and would be clearly
recognized as such, and there is no connection
between the plaintiff and the defendant.
Rather, [Bridgestone] apparently seeks to
hang its hat on the fourth arm of the Section
2(a) test, and it is this issue which will be
principally addressed in this brief. (brief, p.
4)
It appears to the Board that the Automobile Club does not
understand that it is the second element in the Section 2(a)
false suggestion test which relates to the question of whether
the mark points uniquely and unmistakably to the plaintiff.
Cancellation No. 19683
13
This encyclopedia also includes in this section
information that the first such race was run on May 26,
1923; and that when the capacity limit was lifted in 1960
American cars appeared again (Corvettes in that year).
The New Encyclopedia Britannica (appears to be dated
1973-1974) entry refers to the “Le Mans 24-hour Grand Prix
d’Endurance” as “probably the world’s best-known automobile
race, run annually with few exceptions since 1923 at the
Sarthe road racing circuit near Le Mans, France.”
In Motor Sports, A Pictorial History (1975) by Raymond
Flower, under a section titled “Bentleys at Le Mans”, it
states as follows in referring to the French town of Le
Mans: “But the real reason for its fame was the sports car
race - Les 24 Heures du Mans - that still stands supreme as
the international test of speed and endurance.”
These materials clearly evidence that the LE MANS race
was highly publicized in the United States; and the entries
in the Britannica yearbooks of 1961, 1962 and 1963 evidence
the fact that the LE MANS automobile race was of sufficient
fame, notoriety and interest that it achieved mention
therein at least as of the early 1960s.8

8 While articles in books and magazines are not proof of the
truth of the statements made in them, they do show that the
public has been exposed to the statements. See Kabushiki Kaisha
Hattori Seiko v. Satellite International Ltd., 29 USPQ2d 1317,
footnote 1 (TTAB 1991). With regard to the encyclopedias, we may
Cancellation No. 19683
14
The Automobile Club’s witness, Jacques Grelley, a
retired race car driver from France, testified that he
attended the Le Mans race from 1949 to 1962 as a spectator
at first, but as a race car driver in 1959, 1960 and 1961,
and about 10 to 12 times as a spectator since 1962; and that
the Le Mans race is the most important race to him because
“It’s sports car racing. Le Mans is the top of the list”
(Dep., p. 9). He explained that the race is a 24-hour
endurance race, 4pm Saturday to 4pm Sunday, and
“the overall winner is the most powerful car who does the
most miles, the distance winner” (Dep., p. 12); and there is
a winner for using the least gas in attaining the fastest
speed.
Mr. Grelley testified that Ford Motor Company
participated in the Le Mans race from 1967 to 1969 and that
it was then televised on ABC; and the race is still
televised on the ESPN and Speedvision channels. His
understanding of Firestone’s9 first participation in the
race was in 1929, but he personally remembers Firestone’s
attendance in 1972, as well as later years.
He further testified that sponsorship by companies of
racing cars and teams began when the factories not only

take judicial notice of the information in standard reference
materials. See Sprague Electrical Company, Inc. v. Electrical
Utilities Company, 209 USPQ 88, footnote 3 (TTAB 1980).
9 Firestone Tire & Rubber Company changed its name to
Bridgestone/Firestone, Inc. in 1989.
Cancellation No. 19683
15
built the car but supported the team financially; that in
the United States companies such as Hertz, Texaco, and Tide
sponsor race cars or race teams; that manufacturers of parts
for cars sponsor race cars, such as Champion; and all of the
tire companies (“Michelin, Dunlop, Firestone, Goodyear,
Goodrich” — Dep., p. 15) sponsor race cars. When asked why
tire companies sponsor race cars he testified:
To them it’s part of their
promotion. If their tire, any
company, can win a race, so they are
good enough. If they were good
enough to win a race, they are good
enough for the consumer, all the
people. (Dep., p. 15).
When asked why tire companies would manufacture racing
car tires, he answered:
Commercially the tires used in
racing are not the same that you use
on the street, but the name being
there, many people think that if
Goodyear or Firestone used their
tire for racing and win, the tire
must be good on their car. (Dep.,
p. 23).
He explained there is a huge commercial advantage to
winning the car race, for the manufacturers of the
automobile, the tires and the engine. Mr. Grelley gives an
example that in the 1950’s Jaguar won the Le Mans race
several times and sales were very good, and when Jaguar quit
racing their sales went down by half in five years (Dep., p.
24).
Cancellation No. 19683
16
Mr. Grelley also testified that there are Dunlop tire
bridges over the Le Mans raceway in three different places;
and that about 20 years ago in the United States there was a
movie called “Le Mans” starring Steve McQueen.
Bridgestone’s witness, Michael Mileski, an employee of
the Dayton Tire Division of Bridgestone, testified that he
started with the company in 1975, and Bridgestone was
involved in auto racing “well before my time.” When asked
if Bridgestone was always involved, he answered “Bridgestone
I’m not as clear on. The Firestone brand image was
developed through auto racing in various formats in the
endurance racing, drag racing.” (Dep., p. 26). He went on
to testify as follows:
Firestone had created their
brand image based on the early
endeavors in racing and gotten out
of racing in the mid ‘70s, and the
brand image began to decline. The
brand name still had very high
recognition among dealers and
consumers, but the image was
declining. So two years ago,
Firestone embarked on a program to
improve their brand image. They
went racing again is what they did.
(Dep., p. 36).
Mr. Mileski further explained Bridgestone backed out of
racing in the 1970’s because of cost considerations, but it
got back into “big time racing” in the last few years. In
fact, Firestone sponsors the Firehawk Indy Light race, which
is the race before the Indy 500, and that it has returned to
Cancellation No. 19683
17
participation in the Indy 500; and that Bridgestone produces
auto racing tires (one such tire is sold under the mark
“Firestone Firehawk”).
In discussing Bridgestone’s LEMANS tires, Mr. Mileski
testified that the LEMANS tire is the lowest price tire for
its segments (e.g., touring, light truck). According to Mr.
Mileski the most significant attribute of these types of
tires is price. The LEMANS tires are generally advertised
in newspapers (sometimes by price only), and these tires are
also on the floor of the retail stores. “That’s the tire
that you’re advertising to build traffic to come into the
store, brand name means nothing. They usually have minimal
performance characteristics.” (Dep., p. 30). “Its function
is strictly to build traffic. ... The whole intent is to
drive traffic based on this, and actually step them up to a
branded product, a non LEMANS branded product.” (Dep., p.
51).
Mr. Mileski also testified that the LEMANS brand tires’
getting any sort of recognition based on the annual race in
Le Mans, France would be only to “hard-core motor sports
enthusiasts” (Dep., p. 54), and that “the majority of the
people that would have heard of it [the Le Mans race] have
to be the hard-core enthusiasts”.10 (Dep., p. 55). But,
when asked on cross examination, if the hard-core
Cancellation No. 19683
18
enthusiasts would make some association between the mark
LEMANS on tires and the Le mans race, he answered “yes, they
will.” (Dep., p. 56); and that “there could be or there is
a small segment I’m sure that could make the association
[between the tire and the automobile race].” (Dep., pp. 56-
57). He further testified that he did not know how large a
segment of the general population that would be, but
probably “extremely small.” (Dep., p. 57). He acknowledged
that he is one (of the few people) who would associate the
word LEMANS with the race.
In addition, he testified the Firestone brand was, in
part, formed by racing in that it had won the Indianapolis
500 several times and it was able to advertise “they had the
winning tires and it created a recognition factor for the
consumer." (Dep., p. 60). He explained that the reason
people would buy normal tires just because the races were
won is that “you can assume that if they won a race, they
make good tires. If they make good race tires, that could
translate into good passenger.” (Dep., p. 61).
During the deposition of Bridgestone’s witness Mr.
Michel Bonny, a retired Michelin employee, he testified that
the first Le Mans 24-hour race was run in 1923; that it was
popular in the mid-seventies, declined in the mid-eighties
due to big auto makers not appearing in the race, and it is

10 He pointed out that performance enthusiasts are not generally
Cancellation No. 19683
19
now back in popularity as it was in the mid-seventies; that
the Le Mans race is most popular with the French, then the
British; and that the world’s most famous car races are the
Monte Carlo rally, the Monte Carlo Grand Prix, the Indy 500,
and Le Mans.
Regarding the promotion of tires, Mr. Bonny testified
“Racing is part of the promotion for tires”, and winning a
race was good because you could say you beat the other cars
using other tires in the race. (Dep., p. 90-92). He
acknowledged that if you have a sports enthusiast who knows
about racing that person might associate LEMANS on tires
with the Le Mans race; and on cross-examination after some
interesting banter between counsel, Mr. Bonny testified that
automobile tires have been promoted at the Le Mans
automobile race, and that he sees an association between
LEMANS on tires and the famous automobile race. (He did
point out that there is also a car by that name, the Pontiac
LeMans.) Also, according to Mr. Bonny, one could associate
Dunlop tires with Le Mans race because they are run there;
and that he believes only a few people in the United States
would be able to identify Le Mans as a race.
The party asserting a claim of false suggestion must
prove its claim by a preponderance of the evidence. See
Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,

looking for entry level tires.
Cancellation No. 19683
20
892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989).
Further, the Court of Appeals for the Federal Circuit
cautioned in the case of West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 3l USPQ2d 1660 (Fed. Cir.
1994) that individual pieces of evidence must be taken
together, so that the body of evidence is viewed as a whole.
The Court of Appeals for the Federal Circuit noted in
The University of Notre Dame case, supra, 217 USPQ at 509
that “Notre Dame” was not a term uniquely associated with
the University, as it also served to identify the famous
Cathedral in Paris, and therefore the term could name a
persona other than the University. However, the Court went
on to explain:
This conclusion could be
changed if the evidence showed that
Gourmet intended to identify the
University, as the university
argues. Evidence of such intent
would be highly persuasive that the
public will make the intended false
association. The defense that the
result intended was not achieved
would be hollow indeed.
Although the Automobile Club’s submission of evidence
in this case is not overwhelming, when it is coupled with
the testimony, and the concessions by two of Bridgestone’s
witnesses, we find that the record sufficiently establishes
that in the United States, the term LE MANS pointed uniquely
and unmistakably to the Automobile Club; that the Automobile
Club’s mark LE MANS and design had achieved fame; and that
Cancellation No. 19683
21
there was a connection between pneumatic rubber tires and
automobile racing in 1963.
Bridgestone conceded (through the cross-examination of
its witnesses Michael Mileski and Michel Bonny) that serious
racing enthusiasts in the United States would be aware of
the 24-hour Le Mans race, and would associate the term
LEMANS on tires with the LE MANS race. Bridgestone’s
identification of goods in the involved registration
(LEMANS) is very broad — “pneumatic rubber tires” – with no
restriction as to type of performance tire (e.g., high or
low ratings); nor to any particular type of tire (e.g.,
racing, passenger, or even automobile or tractor); nor to
any specific class of consumers (e.g., sports enthusiasts).
Therefore, automobile racing enthusiasts are certainly
included within the classes of possible relevant purchasers
of Bridgestone’s LEMANS tires. And this record clearly
shows that racing enthusiasts would associate the term
LEMANS on tires with the LE MANS race.
We look by analogy to a case decided by the Board
regarding the question of genericness, wherein it is stated
that if a mark is found to be generic of one or more items
of goods in an application, but it is descriptive or
suggestive as to other items of goods, then registration is
properly refused registration because the term is generic
for any of the goods sought to be registered. See In re
Cancellation No. 19683
22
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988) [aff’d, in a
decision marked not citable as precedent, but published at
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989)]. See also,
2 McCarthy on Trademarks and Unfair Competition, § 11:51 and
12:57 (4th ed. 1999).
Moreover, the record before us shows that Bridgestone,
through its promotional efforts, intended to draw a
relationship between tires and racing, (e.g., Mr. Mileski’s
testimony that Firestone created their brand image on early
endeavors in automobile racing). We emphasize the Court of
Appeals for the Federal Circuit stated evidence relating to
such intent is “highly persuasive.”
Bridgestone introduced evidence attempting to show that
the term LE MANS does not point uniquely and unmistakably to
the Automobile Club because the term also refers to such
things as the town itself; the town history as the center of
invention for the automobile, the steam train, and the
airplane; a cathedral; a type of potted pork; the Pontiac
LeMans automobile; and even Bridgestone’s tires.
Bridgestone contends therefrom that the term LEMANS does not
point solely and uniquely to the Automobile Club. This is
unpersuasive. Just because the term Le Mans has been used
to identify a cathedral, potted pork, the history of the
town, and the like simply does not detract from the fact
that when the term LE MANS is used on tires, it is uniquely
Cancellation No. 19683
23
and unmistakably associated with the very famous automobile
race. We take the term “solely,” as used in prior case law,
to mean in the context of the relevant goods or services
(i.e., tires), not in the context of absolutely no other
possible meaning or connotation. Cf. In re McIlhenny Co.,
278 F.2d 953, 126 USPQ 138 (CCPA 1960); Ex parte Haig &
Haig, Ltd., 118 USPQ 229 (Asst. Comm. 1958); and In re E S
Robbins Corp., 30 USPQ2d 1540 (TTAB 1992). Thus, the fact
that a term may have even one other meaning does not
automatically negate the term pointing uniquely and
unmistakably to one “persona” or “identity” within the
meaning of Section 2(a) of the Trademark Act.
While we acknowledge that the existence of the Pontiac
LeMans car may have bolstered Bridgestone’s defense in this
case, Bridgestone presented no specific evidence to show
exactly which years that car was produced, nor the amount of
sales or advertising to show the exposure to the purchasing
public, especially in relation to the relevant time frame
around 1963.
In summary, the record before us establishes that the
term LEMANS points uniquely and unmistakably to the
Automobile Club, and that the Automobile Club’s race is of
sufficient fame or reputation that when Bridgestone’s mark
LEMANS is used on tires, a connection with the Automobile
Club would be presumed. We find that this was true as of
Cancellation No. 19683
24
1963, the registration date of Registration No. 756,436,
forty years after the LE MANS race was first run.
Decision: The counterclaim petition to cancel is
granted, and Registration No. 756,436 will be cancelled in
due course.
E. W. Hanak
T. J. Quinn
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board