Here is to sharing a photo I took using my iPad on a recent Canadian fishing trip, and yes, there is a trademark story here to share as well, not just a beautiful sunset positioned behind this ATV tire.

In my purchase of automobile tires over the years, one of the key selling points has been traction — especially with our extreme deep-snow winters here in Minnesota, how well do the tires permit me to handle my car in the snow? Having solid traction in the rain, of course, is important too, and my assumption always (perhaps informed by television ads touting functional benefits) has been that the tread patterns on competing tires are designed for functional performance, not ornamental or aesthetic purposes. A fair assumption, it appears from Techsplanations.

So, I’ve never given much thought to the possibility of tire tread patterns serving as non-traditional trademarks, since functionality is an absolute bar to trademark ownership or protection. But, this photo inspired me to test my per se assumptions about tire tread pattern functionality.

As it turns out, based on my quick search on the USPTO’s patent database, there are a multitude of issued and expired utility patents referencing tire treads, but also finding a large number of design patents claiming the “ornamental design for a tire tread,” challenged my prior assumptions about per se functionality, and opened my eyes to the possibility of non-traditional tire tread trademarks, since design patents often go hand in hand with the potential for trademark protection (as design patents cannot be issued on functional design features).

One of the challenges to gaining the benefit of eternal trademark ownership, registration, and protection for tire tread designs, long-outlasting the expiration of any design patent on the same features, will be convincing the USPTO or a court that the ornamental design for tire tread actually operates as a trademark, to (a) identify someone’s goods, (b) distinguish them from the goods of others, and (c) indicate the source of the goods (even if that source is unknown).

Another challenge will be establishing acquired distinctiveness in the tire tread design — the possibility of an inherently distinctive tire tread design, at least for tires, does not exist since we are operating within the realm of product configuration trademarks as opposed to product packaging and container trademarks. I’m thinking look-for advertising has a role to play here. And, if trademark types and marketing types aren’t working closely together in formulating suitable advertising that isn’t counter-productive from a legal and trademark perspective, disproving the functionality of the design might also be a challenge.

Having said all that, there is at least one example of a tire tread design that enjoys the status of a federally-registered trademark on the Principal Register:

There are several examples of tire tread design segments operating as trademarks for goods other than tires, such as watches, gloves, among others, and Pirelli obtained a multi-class registration a few years back for a tire tread design applied to a variety of goods falling within Int’l Classes 14, 18, and 25.

These non-tire marks enjoy status as inherently distinctive design trademarks that more easily avoid many of the non-traditional trademark challenges listed above.

Yet, Tire Mart’s tire tread designs (here and here), for tires, have been relegated to the Supplemental Register (note the wildly narrow and overly-specific description of the mark in each), so it did overcome any questions about functionality, but apparently Tire Mart was unable to establish acquired distinctiveness in the tread designs. We’ll see if it seeks Principal Register protection after five years of use . . . .

So, I ask again, a little differently though, when will tire tread trademarks gain traction?