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The Pep Boys chain of automotive stores has lost its bid for an injunction against the Goodyear Tire & Rubber Co. now that a federal judge has found that Goodyear’s new “Fortera” line of tires does not infringe on the trademark for the “Futura” line of tires sold by Pep Boys. Senior U.S. District Judge Lowell A. Reed Jr. in Philadelphia found that while the two brand names are visually and auditorily similar, they are also distinct because Goodyear’s advertisements always include the company’s name and Mercury flying foot logo more prominently than the Fortera name. Reed also found that the suggestive meanings of the two trademarks set them apart since the word Fortera “conjures an image of strength (a fort) but is otherwise an arbitrary name with no particular meaning,” while the word Futura “connotes the idea of a tire that, while manifest in the present, invokes a tire for the future.” As a result, Reed concluded that the two trademarks are “similar in some respects,” but “do not create the ‘same overall impression’ when viewed separately in their respective contexts.” Reed’s decision in The Pep Boys Manny Moe & Jack of Calif. v. Goodyear Tire & Rubber Co. is a victory for Goodyear’s attorneys, M. Kelly Tillery of Leonard, Tillery & Sciolla in Philadelphia and William D. Coston and Christopher E. Gatewood of Venable, Baetjer, Howard & Civiletti in Washington, D.C. Applying the 3rd U.S. Circuit Court of Appeals’ 10-factor test for analyzing trademark claims announced in Interpace Corp. v. Lapp Inc., Reed found that only three weighed in Pep Boys favor — that its Futura mark is strong enough to merit trademark protection; that there is overlap in the target audience; and that the products are similar. But the rest of the factors either weighed in Goodyear’s favor or didn’t favor either side, Reed found. “Although the parties’ channels of marketing overlap, there is almost no overlap in the channels at the point of sale,” Reed wrote. Reed also found that Pep Boys didn’t have enough evidence to prove that Goodyear intentionally chose a brand name that resembled the Futura mark. Significantly, Reed rejected the findings of a survey conducted by an expert for Pep Boys that said consumers were likely to be confused by the two names. Instead, Reed sided with an expert called by Goodyear who testified that the survey was flawed because the consumers were never asked why they had answered the way they did. According to court papers, Pep Boys began selling private label tires under the registered trademark “Cornell Futura” in 1964. In 1990, Pep Boys registered the trademark Futura as one of its private label brand tires. Pep Boys does not manufacture the tires themselves, but instead contracts out the manufacturing on a periodic basis. The Futura brand currently includes 16 separate lines of tires, covering more than 80 sizes. In 1999, Akron, Ohio-based Goodyear began planning the development and marketing of a new line of high-end SUV and crossover vehicle tires under its Goodyear brand. In October 2001, Goodyear introduced the new line under the name Fortera. Pep Boys, which is represented by attorneys Marsha G. Gentner and Philip L. O’Neill of Jacobson Holman in Washington, D.C., and Theodore H. Jobes of Fox, Rothschild, O’Brien & Frankel in Philadelphia, filed suit under the Lanham Act alleging trademark infringement and unfair competition. The suit also includes Pennsylvania statutory and common law claims. Reed found that the Futura mark is legally “incontestable” since it was registered and has been in use for more than five years. The only issue in the case, Reed found, was whether a likelihood of confusion would result from Goodyear’s use of its Fortera mark. In his findings of fact and conclusions of law, Reed analyzed each of the Lapp factors, beginning with the first — and most important — which focuses on “the degree of similarity between the owner’s mark and the alleged infringing mark.” The test for similarity, Reed said, is “whether the labels create the ‘same overall impression’ when viewed separately.” Comparing the Futura and Fortera marks, Reed found that both have three syllables; the first syllable begins with the letter F, the second begins with T and the third syllable is “ra.” As a result, Reed found there was “some similarity between the sound of the marks.” Turning to the sight of the two marks, Reed found that both are presented in block capital letters in white outline on the sidewall area of the tires themselves, although the fonts or style of the lettering used on each tire is different from each other. But while the Futura mark on the tire is always accompanied by the name of the line of the tire, such as “Adventurer,” the Fortera tire always presents the distinctive stylistic Goodyear name and Mercury flying foot logo in radial fashion on the sidewall opposite the Fortera name. And in print advertisements of the products, Reed found that ads for the Futura tire generally include both the name of the specific line of tire within the Futura brand and the Pep Boys name or three-man icon, while the few print advertisements for the Fortera tire “not only prominently feature the distinctive stylistic Goodyear name and Mercury flying foot logo, but in fact are designed so that the size of the lettering of the word Fortera is much smaller and somewhat more difficult to read than the word Goodyear.” As a result, Reed concluded that “while there is some similarity, viewing the products overall, the visual presentations of the words Futura and Fortera are generally distinct.” And since the meanings suggested by the two marks are different, Reed concluded that, overall, the marks “are not confusingly similar.” The second Lapp factor weighed in Pep Boys favor, however, because Reed found that it has spent $40 million to advertise the Futura line and has sold more than 24 million tires for revenues of $1.1 billion. “I find that the Futura mark has sufficient commercial strength and distinction to warrant trademark protection,” Reed wrote. Reed also found that Pep Boys had properly pleaded a claim of “reverse confusion” since Goodyear sold more than 116 million tires in 2000 in North America alone, for revenues of $7.1 billion, and is therefore “commercially stronger than Pep Boys as a vendor of private label tires.” But Reed found that while there was some evidence that Goodyear was aware of the Futura brand name when it chose the name Fortera, there was not enough evidence to show that the name was chosen with the intent to confuse consumers. “It is possible that defendant picked a name … and proceeded to adopt it regardless of whether the mark infringed or not,” Reed wrote, noting that Goodyear’s in-house counsel opted not to wait until after the end of the U.S. Patent and Trademark Office examination phase before approving the new design molds for the Fortera tire. “Yet, carelessness is not probative for purposes of the Lapp factors test of whether defendant intended to rely upon plaintiff’s goodwill by copying its mark,” Reed wrote. Reed also found that while the target audience for the two products overlap, there were also significant differences since Goodyear’s Fortera line is aimed only at SUV drivers and its higher price targets a more affluent consumer, while the Futura line at Pep Boys is aimed at thriftier consumers, with only a small portion of the line suitable for SUVs. “I find that Goodyear is targeting a higher-end niche market of luxury SUV owners and that Pep Boys Futura tires are sold not only to consumers of all income levels, but also to owners of many different motor vehicles other than SUVs,” Reed wrote.

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