Will Tire Tread Trademarks Gain Traction?

by Winthrop & Weinstine, P.A.
Contact

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?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Winthrop & Weinstine, P.A. | Attorney Advertising

Written by:

Winthrop & Weinstine, P.A.
Contact
more
less

Winthrop & Weinstine, P.A. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.