## Facts

- Big O Tire Dealers, Inc. operated a network of independent tire dealers using the “Big O” trade name and selling private-brand tires in multiple states.
- Big O adopted and used the “BIG FOOT” mark for automobile tires, including “Big O Big Foot 60” and “Big O Big Foot 70,” with production preparations beginning in 1973 and sales starting in early 1974.
- In mid-1974, Goodyear launched a large nationwide advertising campaign using “Bigfoot” to market a new radial tire through extensive television and print advertising.
- Evidence showed Goodyear knew (or became aware) of Big O’s prior “Big Foot” use but proceeded; negotiations failed, and Big O sued in November 1974.
- Market evidence showed actual confusion consistent with reverse confusion: consumers and dealers believed Big O’s “Big Foot” tires were made by, affiliated with, or unauthorized copies of Goodyear’s “Bigfoot.”
- Big O also alleged disparagement based on Goodyear’s advertising allegedly implying that “Bigfoot” tires were available only from Goodyear, casting doubt on the legitimacy of Big O’s “Big Foot” tires.
- After a jury trial, Big O prevailed on Colorado common-law trademark infringement and trademark disparagement; the jury awarded substantial compensatory and punitive damages, and the trial court entered a permanent injunction against infringing use.

## Issues

1. Whether Colorado common-law trademark infringement permits liability for “reverse confusion,” where consumers mistakenly believe the senior user’s goods originate with the junior user.
2. Whether Goodyear’s advertising supported liability for trademark disparagement under Colorado law.
3. Whether intent to pass off or trade on the senior user’s goodwill is required for infringement in a reverse-confusion case.
4. What compensatory damages are permissible for injury to a mark and goodwill, including corrective advertising, and whether punitive damages were excessive.

## Decision

- The court affirmed liability for Colorado common-law trademark infringement, holding that reverse confusion is actionable when the junior user’s use creates a likelihood of confusion about the source of the senior user’s product.
- The court affirmed liability for trademark disparagement based on evidence that Goodyear’s campaign could be understood as claiming exclusive authenticity for “Bigfoot,” implicitly denigrating Big O’s “Big Foot” tires.
- The court held that proof of intent to “palm off” was not required to establish infringement; likelihood of confusion controlled.
- The court affirmed the permanent injunction as appropriate to prevent continuing confusion and harm.
- The court affirmed an award of substantial compensatory damages, including corrective advertising in principle, but reduced the damages to require proportionality to Big O’s market position and realistic corrective needs rather than mirroring Goodyear’s advertising spend.
- The court found the punitive damages excessive under Colorado standards and reduced them to a more reasonable amount relative to compensatory damages.

## Legal Principles

- Trademark infringement can occur through reverse confusion when a powerful junior user’s marketing overwhelms a smaller senior user’s mark, leading consumers to believe the senior user’s goods are connected to the junior user.
- Under Colorado common-law trademark and unfair competition principles, intent to pass off is not an element of infringement; likelihood of confusion and resulting injury are sufficient.
- Trademark disparagement may be shown when advertising implies that only the defendant’s goods are the “real” goods associated with the mark, thereby casting the plaintiff’s goods as illegitimate or inferior.
- Corrective advertising may be a permissible measure of compensatory damages for loss of distinctiveness and injury to goodwill, but the amount must be tied to the plaintiff’s market scope and reasonably necessary corrective efforts.
- Punitive damages must be supported by the governing state-law standard (e.g., willful or wanton disregard) and must be reduced when grossly disproportionate to the compensatory award.

## Conclusion

The Tenth Circuit recognized reverse confusion as actionable under Colorado trademark law, upheld findings of infringement and disparagement and a permanent injunction, and required damages—especially corrective advertising and punitive awards—to be scaled to the plaintiff’s actual market position and the proven scope of harm.


Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)