These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

Marketing types and legal types who review labels, be well advised to choose words used carefully.

In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol.

Frito-Lay’s successful 2014 generic challenge (pretzel crisps = pretzel crackers), was appealed to the Federal Circuit by the claimed trademark owner Princeton Vanguard, now Snyder’s Lance.

We followed this case up to the Federal Circuit appeal, then watched on the sidelines for a while:

Our friend, John Welch, over at the TTABlog, did a nice job summarizing the Federal Circuit’s decision vacating the Board’s genericness decision, sending it back for another and closer look.

John also nicely summarized the Board’s second look too, once again ordering cancellation of the Supplemental Registration and sustaining the Principal Register opposition on genericness grounds.

I’d like to remind our faithful readers again about the danger of self-inflicted wounds that can kill a trademark, one example being generic use in the Serving Size portion of the Nutrition Facts labels:

Makes it hard to avoid admitting during the litigation “that ‘crisps’ can be used as a term” for “pretzel crackers,” and that “packages for its PRETZEL CRISPS products provide nutrition facts for a serving size of a stated number of ‘crisps.’” These admissions proved helpful to Frito-Lay.

Another danger, it appears, is the lower case lettering use by others in mentioning the “pretzel crisps” product, a multitude of references apparently unpoliced by the claimed mark owner:

“[W]e note that there are many instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof. We note that many of these excerpts, from business as well as industry publications, are the work of authors who indicate an understanding that a brand is referenced by use of uppercase letters. Yet they use lower case letters to spell ‘pretzel crisps’ . . .”

Does that focus validate trademark counsel’s desire to steer away from using lower case branding, given the Board’s focus on type style? Or, if carefully managed, might the ills still be avoided?

Stay tuned on Princeton Vanguard’s next move following this loss, will it appeal again? If so, as John rightly asks, which appeal route makes the most sense, Federal Circuit again, or federal district court this time?

What’s more, Princeton Vanguard has been busy at the U.S. Trademark Office, apparently planning for a worst case scenario if it were to lose all protection for the bare wording “pretzel crisps” for “pretzel crackers,” which is where things stand for the moment. It has filed two new standard character word marks for slightly different goods, instead of “pretzel crackers”: “Peanut butter-covered pretzel snacks,” and “Chocolate-covered pretzel snacks.” And, this script for bare-bones “pretzel crackers”:

What say you, are the different goods descriptions enough to avoid genericness, and is the above shown script unique enough to permit exclusive ownership of a generic set of words?

Or, is it a little too light in the creativity department to infuse exclusive ownership potential into generic wording?

These questions will decided at some point along the line, since Frito-Lay has opposed these applications too.

InterstateBattery

An oil change and tire rotation over the holiday yielded a little free time for me in our local Goodyear dealer’s waiting room, and it left me wondering about the Outrageously Dependable tagline of Interstate Batteries, so I captured the above image to tell a little blogworthy — if not blimpworthy — trademark story.

My question was whether the Outrageously Dependable tagline is federally-registered on the Principal Register, and if so, whether acquired distinctiveness was required to achieve this status, since Outrageously Good Coffee was recently refused registration, as it “merely describes, in a laudatory manner, a feature of the coffee—how good the coffee is.”

Turns out Outrageously Dependable is registered on the Principal Register without a showing under Section 2(f) — no acquired distinctiveness needed, so it is apparently considered inherently distinctive and suggestive of a desirable quality of the goods, not merely descriptive.

For some reason, Outrageously Dependable, does not merely describe, in a laudatory manner a feature of the batteries– how good or dependable they are, instead it is creative enough to suggest this without connecting all the leads and wires for the consumer.

Ponder that through the end of the year, and let us know whether you agree.

Last week a federal lawsuit was filed in Minnesota by Blu Dot to protect alleged intellectual property rights in the floor lamp shown on the left below. The accused “strikingly and confusingly similar” floor lamp shown on the right below is sold by Canadian Rove Concepts:

stilt-floor-lamp-walnutNordicLamp

So, what type of intellectual property do you suppose is being asserted here?

The “strikingly similar” allegation is a hint that copyright infringement is being alleged, although Blu Dot admits it hasn’t yet obtained a copyright registration, which used to be considered a predicate to the court having jurisdiction over a copyright claim. Instead Blu Dot filed for copyright registration only the week before filing suit in Minnesota federal district court.

Given that delay, what is clear about Blu Dot’s copyright claim is that waiting to seek copyright registration will cost it any hope of obtaining statutory damages or attorneys fees against Rove Concepts, even if it has a copyright and even if it was infringed. What remains unclear is whether Blu Dot actually has a copyright and whether it will be able to obtain the necessary registration to sustain a copyright infringement cause of action.

Copyright registration and protection is denied to useful articles such as lamps, unless an original sculptural work of authorship can be identified separately from, or exist independently of, the utilitarian aspects of the article. So stay tuned, as it is certainly debatable whether copyright is a proper form of intellectual property protection for this particular floor lamp.

The “confusingly similar” allegation by Blu Dot is a further hint that non-traditional trademark infringement is being alleged here too. This won’t be an easy claim to pursue for Blu Dot either, since it will have to prove its design is “non-functional” (as it is not federally-registered as a non-traditional trademark product configuration) and it will have to establish acquired distinctiveness in its claimed trade dress elements (before addressing likelihood of confusion):

  • three legs that descend from a single base leg of the same width and depth;
  • each of the three legs pivots horizontally away from the center before angling down to the floor;
  • a portion of upper limb of each leg is stacked on top of each other making the legs different heights;
  • the legs angle out to form a tripod-like base; and
  • smooth fabric-covered shade.

A year and half ago we wrote about an interesting chandelier configuration trademark application — despite more than five years of use, registration on the Principal Register was refused as a non-distinctive product design, so the applicant amended to the Supplemental Register. It will be interesting to see what kind of evidence Blu Dot is able to establish in support of acquired distinctiveness, as five years of exclusive use won’t be enough.

Probably what is most surprising about Blu Dot’s federal complaint is that it alleges no ownership of or infringement of any design patents. Design patent protection seems ideally suited for this very kind of useful product, and it is not at all cost prohibitive to obtain.

Finally, back to Blu Dot’s non-traditional trademark infringement claim again, to the extent copyright is applicable, the Supreme Court’s Dastar case may very well knock out any trademark or unfair competition protection sought by Blu Dot. As the Chief Judge of the United States District Court for the District of Minnesota recently noted in Bruce Munro and Bruce Munro Studio v. Lucy Activewear, Inc. et al:

Courts, however, are “‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright.” [quoting Dastar] Copyright and patent laws are meant to protect against copying the originality and creativity of another, for a certain time and under certain guidelines, while the Lanham Act and trademark law serve a distinct purpose. * * * The Lanham Act “‘does not protect the content of a creative work on artistic expression’ because an ‘artist’s right in an abstract design or other creative work’ is protected by copyright law.” * * * [E]xtending trademark protection to a particular style of artistic expression would improperly extend trademark law into the area of copyright protection.” * * * Thus, the Court will dismiss with prejudice the trademark and trade dress claims to the extent they are based on Munro’s style and the elements of Munro’s artistic works.

So, how do you come down on the lamp case — is Blu Dot going to face red lights on its copyright and trademark claims? Will it end up wishing it had a design patent to assert against Rove Concepts?

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries.

When an applicant seeking to register its mark is refused registration based on Section 2(d), it is not uncommon for applicant’s counsel to immediately argue for coexistence, explaining all the reasons why no likelihood of confusion exists, and sometimes that strategy will work.

My preference is to pause after receiving the refusal, to assess the strength of the refusal, to examine the cited mark and registration or application, to consider the relative priority positions, and determine the real necessity for and consequences of arguing no likelihood of confusion.

For example, if it could be determined that the cited registration is actually “deadwood,” the mark no longer in use and abandoned, wouldn’t it be better to hit the pause button on the refusal while the deadwood registration is removed through the filing of a petition to cancel?

Using this approach could prevent the narrowing of applicant’s trademark rights and protect the applicant from taking public positions that could be used against it by adversaries in a future enforcement matter. This strategy is frequently used by sophisticated trademark counsel.

What if the cited prior registration is not “deadwood” though, and the applicant actually has priority of use — if so, and the cited registration is not yet five years old, then it’s fair to ask why arguing for coexistence makes any sense at all, at least as an opening strategy.

Many experienced trademark attorneys with those facts would recognize the leverage given by the refusal and, at a minimum, reach out to counsel for the owner of the cited mark to discuss the multitude of options available to applicant as the senior user of the mark in question.

A tool infrequently used by trademark counsel is the option of a petition for partial cancellation, by invoking the remedy found in Section 18 of the Trademark Act. This can be a powerful tool when an applicant lacks priority and/or the cited registration is more than 5 years old.

Under Section 18, the TTAB may modify or partially cancel a cited registration by limiting and narrowing the specified goods or services. This can be a particularly powerful tool, when an applicant’s options are otherwise quite limited, without priority, or if facing an old registration.

To properly employ this tool, applicant’s counsel must plead and prove that the proposed narrowing in the cited registration would avoid a likelihood of confusion, and that the proposed narrowing of the goods/services description is consistent with the actual marketplace usage.

Think of it as a way to narrow a blocking registration enough to allow for coexistence of applicant’s mark on the Principal Register — it is a way to cure the problem of an over-broad registration, making room for your client’s pending application, if the facts support coexistence.

Even if an applicant may not have the appetite for seeing a Section 18 petition for partial cancellation through to conclusion, it can be a powerful attention-getting device that may level the playing field and spur a dialogue between the parties to explore the possibility of consent.

On a related note, in the context of possible strategies ripe for an applicant whose mark has been opposed by a registration owner having an over-broad description of goods/services, you may recall that we wondered out loud whether Section 18 might become a creative solution:

“I’m looking more forward to hearing about what in-house, corporate trademark counsel think about the decision and how it will influence their trademark enforcement strategies. . . .

But, in the meantime, what no one seems to be talking about (yet) is how the Supreme Court’s B&B Hardware decision might impact the lingering concerns surrounding trademark bullying. (I haven’t seen anyone talking about Section 18 counterclaims as a creative response strategy either, but we’ll save that topic for another day).

Although trademark bullying concerns were not before the Supreme Court, it seems likely this decision scored a victory for those who might fall into the category of trademark bullies. And, as you may recall, a couple of years ago, the Supreme Court didn’t allow trademark bullying concerns to influence its interpretation of the laws in question there: Supreme Court Upholds Nike’s Promise to “Break the Wrist, and Walk Away”.”

To the extent you’re in the Twin Cities or can get here fast, we’ll explore this topic more in tomorrow’s continuing legal education program called “Mastering U.S. Trademark Registration Practice,” during my session at 2:35 PM session entitled: “Strategic Use of Trademark Trial and Appeal Board Proceedings to Advance Trademark Registration Goals.

We hope to see you there, for details on registration, here is the link to the Minnesota Continuing Legal Education site. If you can’t make it tomorrow, the video replay of tomorrow’s live session is Monday March 7, 2016.

Excerpt from Chudleigh’s Website

As if we all haven’t already indulged a little too much over the holidays, we chose our first day back to write about non-traditional trademark protection for the configuration of single-serving apple pie pastries. It’s OK, don’t worry, if the Blossom pastry to the left is tempting, you always can get back on track tomorrow!

Having said that, I’m afraid that neither counting calories, nor exercising a healthy dose of dietetic discipline will protect the once-believed “distinctive configuration for baked goods” from the fiery furnace of the deadly trademark functionality doctrine.

To that point, and in case you’re wondering what the trademark registration symbol to the left is supposed to say, for now, it references the federal configuration trademark registration that Chudleigh’s obtained back in 1999, and renewed in 2009, for this shape of pastry:

 

 

We say, for now, because the federal district court in the Eastern District of Pennsylvania — just prior to Christmas — granted summary judgment against Chudleigh’s, concluding as a matter of law, that the pastry design is “essential to the use or purpose” of the pastry, and the design “affects the cost or quality of” the pastry, rendering the pastry design functional and incapable of trademark protection and registration. So, unless Chudleigh’s appeals the decision and is able to overturn the functionality ruling, its fifteen year old non-traditional trademark registration will be burned to a crisp (revoked/cancelled, for the benefit of our non-pastry-chef-readers).

The court summarized its functionality determination without a lot of legalese:

“The product’s size, shape, and six folds or petals of upturned dough are all essential ingredients in the Blossom’s ability to function as a single-serving, fruit-filled dessert pastry. The six folds or petals of upturned dough are essential to contain the filling, and the number of folds or petals is determined in part by the size of the product and the need to limit the number of openings in the top for reheating. Furthermore, permitting Chudleigh’s to maintain proprietary rights in the Blossom Design would have the deleterious impact on competition that the functionality doctrine aims to prevent.”

Now, to the extent you’re wondering how exclusive trademark protection can go up in flames fifteen years after the USPTO granted a federal registration in the first place, it’s worth knowing, there is no time limit on challenging non-traditional trademark rights based on functionality grounds — even incontestability does not validate protection for a design shown to be functional at any later point in time.

To the extent you’re wondering why the USPTO didn’t smoke out functionality sooner and flip the claimed configuration trademark before issuing the registration in 1999, another good question, and the prosecution history at the USPTO provides some interesting answers.

The pastry design trademark application was examined at the USPTO in 1998, before the Supreme Court had decided Wal-Mart (2000) or Traffix (2001), so the examination focused on the product configuration lacking inherent distinctiveness, the USPTO’s initial registration refusal did not raise functionality.

Chudleigh’s was able to overcome the refusal with argument and evidence, convincing the USPTO that the design was sufficiently unique to be considered inherently distinctive, since the USPTO had not yet been informed by the U.S. Supreme Court that product configurations can never be inherently distinctive. Following the Supreme Court’s decisions in Wal-Mart and Traffix, it is settled that only non-functional product configuration designs that have acquired distinctiveness are capable of trademark protection and registration on the Principal Register.

Last, to the extent you’re wondering how this trademark validity challenge came before the federal district court in the Eastern District of Pennsylvania, that’s an interesting story too. But for our limited purposes here, Chudleigh’s noticed that Applebee’s was selling a similarly shaped dessert pastry, so it sent to Applebee’s a cease and desist letter. Applebee’s supplier of the pastry ended up bringing a declaratory judgment action, asking the federal court in Pennsylvania, for a number of things, including a declaration that Chudleigh’s configuration trademark registration is invalid and was not infringed.

One possible takeaway: To the extent your trademark portfolio includes pre-Wal-Mart/Traffix non-traditional trademark registrations, it is probably a good idea to make sure they can withstand the heat of the fiery furnace of functionality, before you seek to enforce them.

If December 2014 was the month for configuration trademark filings, will 2015 be the year of functionality decisions?

In case you missed SHARKNADO last year, fear not, the sequel SHARKNADO 2 — The Second One, is taking the country by storm, and it is reportedly even better than the first SHARKNADO film. Not having seen either, I’m not sure whether that’s saying much.

What is even harder to avoid seeing, however, is all the media attention and publicity SHARKNADO 2 has amassed over the last few days.

Entertainment Weekly reported yesterday “3.9 million viewers tuned in to SyFy Wednesday night to watch the premiere” of SHARKNADO 2, making it “SyFy’s most watched original movie ever.”

CNN also reported yesterday on the feeding frenzy SHARKNADO 2 has stirred up on Twitter.

NBC’s Today Show even played a role in SHARKNADO fever with silly cameo apperances by Matt Lauer and Al Roker.

All this attention made me wonder what kind of trademark filings have been done on the SHARKNADO franchise and whether any trademark bottom feeders improperly have attempted to cash in on the sudden popularity of the coined SHARKNADO brand and trademark.

As it turns out, I was a bit surprised to only find one USPTO filing for SHARKNADO, given all the hype, focus, and attention. But, what is even more bizarre than the film’s absurd plot (as seen in the onslaught of trailers) is that this single filing matured into a Supplemental Registration, as opposed to a Principal Registration.

Remember, Supplemental Registrations cover marks only capable of becoming distinctive and they are toothless in the protection they provide the owner — the Principal Register at the USPTO is the coveted prize reserved for those marks that are distinctive for their associated goods and services.

So, why did SHARKNADO land on the floor, i.e., the USPTO’s Supplemental Register?

Perhaps an overzealous Examining Attorney refusing registration because SHARKNADO is the title of a film and doesn’t function as a trademark? Actually, no — that refusal wasn’t made and couldn’t have been sustained because the goods covered by the resulting registration involve “beer mugs” and other items in Int’l Class 21, along with “whoolly hats” and other clothing items in Int’l Class 25, not entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

It would be hard to sustain an argument that the coined mark SHARKNADO is not distinctive and registrable for “beer mugs” and “whoolly hats,” even if it also functions as the title of a film.

No, the SHARKNADO registration landed on the Supplemental Registration floor, because that is how the application was filed by The Global Asylum, Inc. on July 24, 2013, seeking registration on the Supplemental Register in Int’l Classes 21 and 25.

My question is, assuming no mistake, why bother spending $650 filing anything? If you’re going to go through the minor trouble of filing something, why ask for nothing close to what you’re entitled to receive? The filing fee is the same, so it’s not like the owner of the admittedly B horror franchise was able to save a few bucks — to pay Tara Reid more — in accepting the lesser registration.

I don’t know, maybe they misunderstood the law. And, just maybe they’ll get it right yet, with a trademark application sequel.

Although the names of single creative works cannot be registered as trademarks for tangible copies of those works or the entertainment services they may embody (not even on the Supplemental Register), and putting aside any personal challenges as to whether the film in question is fairly called “entertainment,” now that there is a sequel using the SHARKNADO name, it should be considered inherently distinctive and registrable on the Principal Register even for entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

And, just to make sure two is really more than one, SHARKNADO 3 is apparently already in the works, given the growing cult following — resolving any possible doubt about whether SHARKNADO represents the mere title of a single creative work. We’re talking series, now.

My only hope for Global Asylum is that their needed second and third trademark application sequels aren’t as much of a joke as their first attempt, or the SHARKNADO storyline.

To be on the safe side, let’s put on some whoolly hats, fill our beer mugs, and stay tuned for some more entertainment . . . .

What best describes your work? Inexpensive? Cost effective? Robotic? Low budget? High volume?

Or, do you deliver excellence — unique, distinctive, valuable, sculpted, tailored, and handmade  solutions with your wealth of professional skill and expertise?

If your main focus is on delivering the lowest possible cost, you best be selling a commodity.

Creating and protecting valuable intellectual property is not commodity work for assembly lines.

So, what level of craft would you say was involved in creating this chocolate-flavored tagline?

Might the answer be different depending on whether you’re a marketing or trademark type?

At least from the perspective of a trademark type, “Handcrafted in Small Batches” is hopelessly and most certainly merely descriptive of chocolates (assuming it is not deceptive or misdescriptive), which explains why the registration symbol, in this case, signifies registration on the Supplemental Register as opposed to the Principal Register.

When it comes to protecting intellectual property, creative counsel with a handcrafted approach is required, especially when corners are cut during the creation of a merely decriptive tagline.

Any predictions on how easy it will be to move the “Handcrafted in Small Batches” tagline from the Supplemental Register to the Principal Register with this kind of reinforcing merely descriptive use?

Here’s to celebrating and rewarding the handcrafted creation and protection of valuable intellectual property assets, especially those made and protected in small batches, in 2014!

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?