Citation. Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 195 U.S.P.Q. (BNA) 417 (10th Cir. Colo. Sept. 2, 1977)
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Brief Fact Summary.
Reverse confusion was claimed not to be actionable if Goodyear Tire & Rubber Company’s (Defendant) second use of Big O Tire Dealers, Inc.’s (Plaintiff) trademark only created likelihood of confusion concerning the source of Plaintiff’s “Big Foot†tires.
Synopsis of Rule of Law.
The second use of a trademark is actionable if it simply creates a likelihood of confusion about the source of the first user’s product.
Facts.
Big O Tire Dealers, Inc. (Plaintiff) asserted claims of unfair competition against Goodyear Tire & Rubber Company (Goodyear) (Defendant) based on false designation of origin and common law trademark infringement. The jury found that Goodyear (Defendant) was liable for trademark infringement and trademark disparagement only and awarded general compensatory and punitive damages. The district court permanently enjoined Defendant from infringing on Plaintiff’s “Big Foot†trademark. Defendant appealed, arguing that its second use of the “Bigfoot†trademark was not actionable if it simply created a likelihood of confusion about the source of the first user’s product.
Issue.
Is the second use of a trademark actionable if it simply creates a likelihood of confusion about the source of the first user’s product?
Held.
(Lewis, C.J.) Yes. The second use of a trademark is actionable if it simply creates a likelihood of confusion about the source of the first user’s product. If given the opportunity, the Colorado Courts would extend their common law trademark infringement actions to include reverse confusion situations. The jury could have reasonably inferred a likelihood of confusion from witnesses’ testimony of actual confusion. Affirmed.
Discussion.
The court also ruled that Goodyear (Defendant) must pay money damages for the cost of corrective advertising to undo the damage done when it had used the trademark name. Defendant’s lack of intent to trade on the good will of Big O (Plaintiff) or to palm off its products was not relevant in this case. The court found that Colorado’s policy was to widen the scope of its policy of protecting trade names and preventing public confusion.
