Bridgestone Corp. v. Zhanjiang Deni Carburetor Co. Ltd.

• Decision Date: 07 August 2015
• Docket Number: Opposition 91193955
• Court: Trademark Trial and Appeal Board
• Parties: Bridgestone Corp. and Bridgestone Americas Tire Operations, LLC v. Zhanjiang Deni Carburetor Co., Ltd.

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

Opposition No. 91193955

United States Patent and Trademark Office, Trademark Trial and Appeal Board

August 7, 2015

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

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

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, (IMAGE OMITTED)

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).

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.

(IMAGE OMITTED)

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

(IMAGE OMITTED)

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. Registration No. 2607465 for the mark BRIDGESTONE and design, shown below, for "tires and inner tubes therefor, " in Class 12;^[3]

(IMAGE OMITTED)

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).

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

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 U.S.P.Q.2d 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 LLC v. SAS Optimhome, 99 U.S.P.Q.2d 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]

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 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 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 U.S.P.Q. 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. v. Kappa Books Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 U.S.P.Q. 40, 43 (CCPA 1981); Larami Corp. v. Talk to Me Programs, Inc., 36 U.S.P.Q.2d 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...