Bridgestone/ Firestone, Inc.v.Interco Tire Corp.

Trademark Trial and Appeal Board

Sep 25, 1998

No. 91096405 (T.T.A.B. Sep. 25, 1998)

Hearing: Paper No. 37
September 16, 1997 GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Bridgestone/Firestone, Inc.
v.
Interco Tire Corporation
_____
Opposition No. 96,405 to application Serial No. 74/279,000
filed on May 27, 1992
_____
Peter G. Mack, Lisa A. Smith and Cameron C. Powell of Foley &
Lardner for Bridgestone/Firestone, Inc.
Edward J. Kondracki and Joseph S. Presta of Kerkam, Stowell,
Kondracki & Clark, P.C. for Interco Tire Corporation.
______
Before Cissel, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Interco Tire Corporation has filed an application to
register the tread design reproduced below
Opposition No. 96,405
2
as a trademark for "tires".1 Registration on the Principal
Register is sought on the basis that the tread design, which the
parties in this proceeding refer to as a "three-stage lug" design
or configuration, has acquired distinctiveness.
Bridgestone/Firestone, Inc. has opposed registration on
the ground that, since long prior to applicant’s alleged date of
first use of its tread design on October 3, 1977, opposer "has
been engaged in the manufacture, offering for sale and sale of
tires having various tread designs ... and is now still so
engaged"; that "[a]s a manufacturer and seller of tires, opposer
is in a position to use on its tires tread designs that are the
same as or similar to the applicant’s tread design which is the
subject of the application herein opposed"; that granting the
registration sought by applicant "would be inconsistent with
opposer’s freedom to use such tread designs on its tires"; that
continuously, "[s]ince at least as early as 1954, opposer has
used on one of its FIRESTONE® brand tires, known as its 'SUPER
ALL TRACTION' tire, a tread design ('opposer's tread design')
that closely resembles and is substantially similar to
applicant's tread design"; that in view of such use by opposer,
"applicant's use of applicant's tread design has not been
substantially exclusive for the five years preceding the filing
date of the application herein opposed or for any other period of
time"; and that, accordingly, "applicant's tread design does not

1 Ser. No. 74/279,000, filed on May 27, 1992, which alleges a date of
first use anywhere of October 3, 1977 and a date of first use in
commerce of October 25, 1977. It is also stated in the application
that: "The stippling in the mark is for shading purposes only."
Opposition No. 96,405
3
serve to identify the source of applicant’s tires from tires made
and sold by opposer."2
Additionally, in the event that applicant is found to
have acquired distinctiveness in its three-stage lug tire tread
design, opposer further alleges as an alternative ground that it
"adopted opposer’s tread design long before applicant adopted
applicant’s tread design"; that "opposer has continuously used
opposer’s tread design in commerce from the time of its adoption
through the present"; that, in consequence thereof, "if any one
of the parties to this proceeding is entitled to claim exclusive
rights in a design like opposer’s and applicant’s tread designs,
opposer, and not applicant, would be entitled to make such claim
of exclusive rights"; and that the registration sought by
applicant "would be inconsistent with opposer’s rights":
Because applicant’s tread design closely
resembles and is substantially similar to
opposer’s tread design, because opposer would
have prior and superior rights in and to its
tread design if any party is entitled to such
exclusive rights, because the goods of
opposer and applicant to which their
respective tread designs are applied are of
the same kind and type and are sold to the
same or similar classes of purchasers through
the same or similar channels of trade, the
tread design sought to be registered by
applicant so resembles opposer’s tread design

2 Although opposer has also set forth, as a separately stated ground
for opposition, that "[t]he evidence submitted by applicant in
connection with the prosecution of the application herein opposed to
show acquired distinctiveness is inadequate, incomplete, and
insufficient to demonstrate acquired distinctiveness," such allegation
would appear to be simply another way of asserting the claim that
applicant’s tire tread design is unregistrable because, as a de facto
functional design, it lacks distinctiveness. Such ground consequently
will be so construed.
Opposition No. 96,405
4
as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.3
The record includes the pleadings; the file of the
opposed application; and, as opposer’s case-in-chief, a notice of
reliance on applicant’s responses to certain of opposer’s first
set of interrogatories, and the testimony, with exhibits, of Alan
D. Clark, an off-the-road and truck tire development engineer
employed by opposer, and Franklin Dale Rettig, an engineer with
opposer’s truck tire engineering group. Applicant, as its case-
in-chief, submitted a notice of reliance on opposer’s answers to
various interrogatories propounded in applicant’s first set of
interrogatories and applicant’s responses to several other
interrogatories contained in opposer’s first set of
interrogatories;4 and the testimony, with exhibits, of Warren L.
Guidry, applicant’s president, and Nick Pathiakis, an operator of
a mail-order 4-wheel drive accessories business, which includes
the sale of tires, and a former owner of a retail shop
specializing in such accessories.5 Briefs have been filed and an
oral hearing, attended by counsel for the parties, was held.

3 While applicant has also alleged what it asserts to be various
affirmative defenses, such "defenses" are not, properly speaking,
affirmative defenses and thus will not be given further consideration.
4 Submission of the latter, applicant states in its notice of reliance,
is necessary in order to "complete the evidence regarding the issues
in this proceeding and to avoid the possibility of a decision being
based on selected interrogatory answers which, in isolation, may not
present a complete picture regarding the issues presented herein ...."
5 Applicant’s uncontested requests for substitution of photographs for
certain bulky exhibits introduced during the testimony depositions of
Opposition No. 96,405
5
The issues to be determined are whether applicant’s
three-stage lug tire tread design has acquired distinctiveness;
whether opposer has priority of use of any tire tread design;
and, if so, whether applicant’s three-stage lug tire tread
design, when used in connection with its tires, so resembles a
tread design used by opposer for its tires that confusion is
likely as to the source or sponsorship of the parties’ products.
According to the record, opposer is a wholly owned
subsidiary of Bridgestone Corporation, which purchased The
Firestone Tire & Rubber Company, as opposer was formerly known
for many years, in 1988. Following such acquisition, opposer
changed its name to its present name, Bridgestone/Firestone,
Inc., in early 1989. Opposer’s principal products are tires,
which it sells primarily under the "FIRESTONE" brand. Since
1954, opposer has continuously manufactured and sold a tire,
known as the Firestone "Super All Traction," which it contends is
the same or substantially similar in appearance to the tire tread
design which applicant seeks to register. Such tire has been
available in a directional model, shown on the right below, and
has been offered, since about 1979 or 1980, in non-directional
versions, depicted on the left and in the center below:

its witnesses and to submit the previously retained videotape exhibit
from the testimony deposition of Mr. Pathiakis are granted.
Opposition No. 96,405
6
Each of the above variations of opposer’s "Super All Traction"
tire has had the same tread pattern during the entire time each
has been sold.
All of the versions of opposer’s "Super All Traction"
tire, as of the March 13, 1996 date of the depositions of
opposer’s witnesses, are in use. Such tires, like tires which
feature applicant’s subject design, are categorized as maximum
traction tires and are primarily used on sport utility vehicles,
including pickups and other light trucks, with opposer’s tires
also being used on heavy-duty trucks, delivery trucks,
recreational vehicles, off-road vehicles, school buses, dump
trucks and mining equipment. Opposer sells its tires to
consumers through tire dealers and to large volume users like
automobile manufacturers and fleet operators. In addition,
Opposer has advertised the versions of its "Super All Traction"
tire in advertisements, brochures, fliers, tire guides, price
lists and other promotional materials which illustrate such tires
and tout them as providing maximum traction and stability in off-
road, mud and snow conditions.
One of opposer’s witness, Alan D. Clark, testified that
he first learned of applicant when someone in opposer’s legal
department asked him if he could identify applicant’s tire from
the subject three-stage lug configuration which was published in
the Official Gazette. According to Mr. Clark, his first reaction
was that applicant’s subject design "was a direct copy of our
Opposition No. 96,405
7
Super All Traction design that we use for maximum traction type
service." (Clark dep. at 9.) Mr. Clark described the particular
designs as each consisting basically of a "discontinuous center
rib and separate or discontinuous shoulder lugs." (Id. at 11.)
Specifically, it is the non-directional, discontinuous lug model
of opposer’s "Super All Traction" tire (previously illustrated on
the left above) which, in the appearance of its tread pattern, is
the most similar to applicant’s three-stage lug configuration6
Although, on cross-examination, Mr. Clark admitted that
it was "fair to say" that applicant’s subject design is not a
direct copy of either of the other two versions of opposer’s
"Super All Traction" tire and that he could tell each of those
tire patterns apart by looking at them, he nevertheless believed
such design was a direct copy, when he first saw it, of the non-
directional, discontinuous lug tire offered by opposer.7 (Id. at
48.) While he no longer believes applicant’s subject design to
be a direct copy thereof, his "reaction has only changed in the
fact that they are very, very similar," notwithstanding that on
opposer’s tire each lug has a slit in it; the spacing between the
lugs appears to be substantially constant; and the lugs and

6 Unlike directional tires, which maximize functions such as traction
only when operating in a certain direction, non-directional tires can
be mounted in any direction. A simple way to tell the former from the
latter is that "as you look at the [opposing shoulder] lugs, they both
form a ’V’" on a directional tire. (Clark dep. at 18.) The general
trend in tires, however, is away from directional types.
7 On redirect examination, Mr. Clark noted that his initial reaction
was influenced by the fact that, when he first saw applicant’s subject
design as depicted in the Official Gazette, he was looking at "an
artist’s concept of what the tread ought to look like" and that "that
[rendering] was what I referred to as being a direct copy to our Super
All Traction" tire. (Id. at 82.)
Opposition No. 96,405
8
centerline chevrons are substantially the same in size and shape.
In contrast, Mr. Clark admitted that in looking closely at
applicant’s three-stage lug pattern, the discontinuous lugs
therein vary significantly in size and shape, as do the spaces
between adjacent lugs and the centerline chevrons, and that some
of the lugs extend outwardly from the sidewall. (Id. at 50.)
Moreover, while further conceding that the two other
versions of opposer’s "Super All Traction" tire have "some
differences" from applicant’s three-stage lug configuration which
are apparent on a side-by-side comparison, he maintained that
such are "[n]ot significant differences". (Id. at 49.) In
essence, Mr. Clark testified that while "up close, certainly
there are differences" between applicant’s subject design and the
tread patterns on the various versions of opposer’s "Super All
Traction" tire, "[a]t a distance" of about 20 to 30 feet he
"would take it as being similar," as would be the case with many
other tires, since the size of the individual lugs could no
longer be distinguished. (Id. at 72-73.) Mr. Clark added, on
redirect examination, that as a tire engineer he can quickly spot
tread details due to his "trained eye" in tire design. (Id. at
81.) He also indicated, upon looking at one of the specimen
photographs of applicant’s tire with its non-directional three-
stage lug design, that such tire and the non-directional versions
of opposer’s "Super All Traction" tire overall have a generally
similar appearance due to the patterns of their discontinuous
center ribs and discontinuous shoulder lugs.
Opposition No. 96,405
9
Opposer’s other witness, Franklin Dale Rettig, offered
basically the same testimony. In particular, he indicated that
he first learned of applicant’s application when a paralegal in
opposer’s legal department called and requested him to look at
applicant’s subject three-stage lug design as published in the
Official Gazette. According to Mr. Rettig, his "immediate
reaction was, it is a Firestone tire, it was a copy of a tire we
had." (Rettig dep. at 7.) Specifically, upon looking at such
design, he thought that it "was very similar, if not identical,
to the Super All Traction tire," which opposer sells under its
"FIRESTONE" brand rather than as a private label product. (Id.)
Mr. Rettig, however, had not previously heard of applicant and,
like Mr. Clark, described such designs as consisting basically of
a "disconnected center rib ... with independent shoulder lugs
which are not connected to the center ribs." (Id. at 10.)
Mr. Rettig further indicated that, in his opinion, the
size or width of a tire "very definitely" has a bearing on the
appearance of the tread and that such appearance is "absolutely"
going to be different if the same tread pattern is applied to a
narrow rather than a wide tire. (Id. at 47-48.) In addition, he
noted that engineering considerations dictate variations in the
size of tread elements to minimize tire noise or pitching:
[M]ost tires today are designed with
different size elements in the tread. This
is part of a system called the noise
treatment in a tire, and it is done to break
up the pitch or the frequency at which the
tire is turning, so that it does not generate
an objectionable noise.
(Id. at 46.) Specifically, he explained that:
Opposition No. 96,405
10
If every element is exactly the same
size, when the tire is turning at a
particular speed, they will all hit the road
in sequence and it will generate a particular
pitch. Now, by making the size of the
elements larger and smaller and spacing these
around the tire, what happens is you generate
different frequencies with those. Because of
that, they tend to cancel each other out, and
the tire becomes much quieter on the road.
(Id. at 47.)
On cross-examination, Mr. Rettig conceded that, from a
visual standpoint, it was fair to say that, unlike the case with
applicant’s subject design, both the shoulder lugs and centerline
chevrons on opposer’s "Super All Traction" tire are substantially
identical in size and shape. He added, however, that if noise
reduction treatment were currently to be done with such a tire,
one "simple" version thereof "would [be to] have three different
sizes of elements in the shoulder lugs and the center chevrons
would be made correspondingly in three different lengths, small,
medium and large length." (Id. at 56.) When asked whether the
variations in pitch would be immediately recognizable when one
looks at such a tire, Mr. Rettig answered that they would not be
since "[i]t takes a trained eye" to spot such differences. (Id.
at 57.) He admitted, however, that noticing the differences in
size of tread elements was dependent upon the complexity of the
particular design, with the variations in some patterns, such as
applicant’s three-stage lug design, being easier to discern
"because the elements are so large ... that you could actually
pick it up." (Id.) Mr. Rettig also stated that, while he has
never designed a tire which, like applicant’s subject design,
Opposition No. 96,405
11
features lugs which protrude or overhang the sidewall, such a
design in his engineering judgment "could affect the noise
[generated], ... but I don’t know that for a fact." (Id. at 59.)
Mr. Rettig further indicated his belief that many
others in the tire industry have copied opposer’s "Super All
Traction" tire tread design. Thus, when he sees a tire that has
discontinuous lugs extending from a centerline pattern of
chevrons, he often confuses such a tire as being a "FIRESTONE"
brand, even though the design thereof is not unique to opposer.
In particular, with respect to third-party tire tread
designs, Mr. Rettig, testified that he is familiar with an annual
publication known as the Tread Design Guide, which "is a
compilation of most of the tread patterns that are available on a
commercial basis in passenger, trucks and off-the-highway ...
designs." (Rettig dep. at 39.) Such guide thus lists and
illustrates tires which are actually being sold in a particular
year. Mr. Rettig noted, however, that he has never seen any of
applicant’s tires, including its "Super Swamper TSL" brand tires
which incorporates applicant’s three-stage lug design, listed in
an issue of the Tread Design Guide.
Excerpts from editions of such guide for each of the
years 1966 through 1994 illustrate various models of opposer’s
"Super All Traction" tire which were then in use. In addition,
other excerpts from the 1996 edition of the Tread Design Guide,
introduced as applicant’s Exhibit 5, reveal that a number of
tread designs listed under the heading of "SMALL HIGHWAY & LIGHT
TRUCK TIRES," which is the category into which both applicant’s
Opposition No. 96,405
12
"Super Swamper TSL" and opposer’s "Super All Traction" tires
fall, are akin to applicant’s subject design and are in use by
third parties. The most relevant thereof are shown below:
Atlas (Canada) Mud Brunswick Mud Cascade Radial
King XT King XT Mud XT
Cavalier Mud King Ceat Traction Grip Co-op Mud King
XT N.D. X/T
Crown Mud King Delta Mud Trac Hood Mud King
XT X/T XT
Opposition No. 96,405
13
Madison Radial Mud Medalist Mud King Miller Mud King
King XT XT XT
National Mud Trac Regul Trailblazer Spartan Radial
MT Mud King XT
Stratton Mud King
XT Steel Radial
Among other things, Mr. Rettig’s testimony specifically
confirms that, as shown above, such non-directional tires as the
Atlas (Canada) Mud King XT, Brunswick Mud King XT, Ceat Traction
Grip N.D. and Hood Mud King XT all feature a discontinuous lug
and chevron pattern.8 In fact, according to Mr. Rettig, the 1996

8 However, with respect to the Atlas (Canada) tire, Mr. Rettig conceded
that he could "see a distinction in the lugs" and thus at first glance
he would "probably ... not" think that it is a "FIRESTONE" tire.
(Rettig dep. at 67.) Likewise, he admitted that since the Brunswick
tire "is distinguished by its sharp angles on the shoulder lugs," he
would not immediately think of it as a "FIRESTONE" tire. (Id. at 68.)
The Ceat tire, he observed, "has considerably more siping, which are
Opposition No. 96,405
14
edition of the Tread Design Guide shows many tire designs which
are characterized by a discontinuous lug and chevron pattern, but
which are still distinguishable from one another. The reason why
such a tread design has become fairly common, he added, is
"because it has been very successful over the years, and people
copy something that is going to perform." (Id. at 71-72.) Mr.
Rettig reiterated, however, that he has a "trained eye more or
less for these things" and accordingly can readily detect
differences in tread patterns. (Id. at 74.)
As to applicant’s three-stage lug design, Mr. Rettig
testified, with respect to the drawing thereof shown in the
Official Gazette, that at first glance all of the lugs in the
configuration looked identical inasmuch as "[i]t is not what I
would call a drawing that you use to distinguish one particular
tire from another". (Id. at 75.) He acknowledged, however, that
upon a second glance, "there are [distinguishing] differences in
several parts of the tire," although "the drawing is so bad that
it ... is very difficult to tell." (Id. at 75-76.) In
particular, Mr. Rettig further testified with respect to
applicant’s subject design as follows:
Q And when you see these various ... lugs,
those ... vary from lug to lug, isn’t
that true?
A Yes, as a matter of fact, they do. But
that isn’t what you see when you first
look at the tire. When you first look

the slots in the center [of the] lugs," and thus is distinguishable
from opposer’s "Super All Traction" tire. (Id. at 69.) Nevertheless,
as to the Hood tire, Mr. Rettig stated that it "could be misconstrued
as a Firestone tire" but that he knows that it "definitely" is not
one. (Id. at 70.)
Opposition No. 96,405
15
at the tire, you see the chevrons in the
center and they appear the same, and you
see lugs coming off there that are
disconnected from them. And then you
start to look at the minor details ...
and you see there are differences, but
they are not the things that strike you
in the eye right off the bat.
Q At least not in the first fraction of a
second?
A Correct.
Q But as soon as you spend more than a
second or two looking at it, those
become readily apparent to you?
A But to a layman, I think you would look
at that and never pick those details up.
Q We are asking you what your testimony is
here today?
A My testimony is after I look at it, I
can pick up differences.
Q After you look at it for more than a
second or so?
A Yes, that’s correct.
Q You can also pick up differences on the
outside lug pattern, as well as on the
inside lug pattern?
A That is correct.
(Id. at 78-79.)
Mr. Rettig added, however, that as to the variations in
the size of the lugs in applicant’s subject design, "it is
extremely difficult to tell if this one is smaller or this one or
this one," and thus he "couldn’t tell which of those is larger or
smaller," due to the perspective utilized in the drawing of such
design, which he characterized as "a very poor attempt to
duplicate" the actual tread pattern on applicant’s "Super Swamper
Opposition No. 96,405
16
TSL" tires. (Id. at 81 and 87.) Nevertheless, he admitted that
after taking a closer look, he "could tell that there were
probably some differences, [and] that it probably was not a
Firestone tire." (Id. at 93-94.) He also conceded that he was
not aware of any version of opposer’s "Super All Traction" tire
which, like applicant’s subject design, has variations in the
width of the lug elements. Mr. Rettig stressed that when it
comes to tire tread designs, he is "probably one of the oldest
experts around"; that as a senior project engineer, he spends
most of his time looking at tire tread designs; and that given
his trained eye, it is very common for him to notice differences
or distinctions in tread patterns which other people, such as
customers for tires, do not see. (Id. at 94.) In particular, he
stated that, unlike ordinary consumers, "I can immediately see
things that they have no idea exist in a tire." (Id.)
In consequence thereof, Mr. Rettig ultimately conceded
that, despite what to him is a poor quality representation, the
drawing of applicant’s subject design does in fact depict the
actual tread configuration of applicant’s "Super Swamper TSL"
tires. While also offering the opinion that such design "is a
poor design" from an engineering standpoint,9 he acknowledged
upon viewing one of applicant’s tires that, unlike the three-
stage lug configuration featured thereon, none of the models of
opposer’s "Super All Traction" tire has a large discrepancy in

9 Specifically, he stated that "there is a lot of trouble with this
design" and that, "if I were designing it, I would not design it like
this" because the overhanging or protruding lugs "are going to tear
Opposition No. 96,405
17
both lug sizes and in the spacing between lugs, nor do any of the
lugs overhang the sidewall. (Id. at 100.) He further testified,
however, that while he could see such differences when looking
"very closely" at one of applicant’s "Super Swamper TSL" tires,
he "might have trouble" detecting them at a distance of beyond
ten to 15 feet away since he "would see the center ribs and the
lugs and ... would assume it was a Firestone tire:"
Q Do you think that that tire that you see
in front of you is distinct ... from the
Super All Traction tire ....?
A As I am looking at it directly above,
yes, I can see differences ....
Q So, in your mind, it is a distinct tread
design from the Super All Traction tread
design?
A Let me qualify that. It has the same
center as ours, except these [chevrons]
are variable in length. It has
different bars [or lugs], but the bars
[or lugs] are basically curved, the same
as ours. It has differences. But I
would not consider them distinct
differences.
(Id. at 104-06.)
Applicant, the record shows,10 is a small family-run
enterprise which is engaged in the design, development and

off very quickly. You get up against a stump, and they are gone."
(Id. at 100-01.)
10 In its main brief, opposer has renewed its objection to applicant’s
introduction of "pictures and photographs of applicant’s SUPER SWAMPER
tires into the record ... on the grounds that only the drawing in the
application and the specimens filed with the application are
relevant." In particular, opposer states that:
[O]pposer objects to Interco’s attempt to introduce
photographs of its tires, and actual tires, which are
different from Interco’s tire tread design as shown in the
drawing of [opposed] application Ser. No. 74/279,000.
Evaluation of whether or not Interco’s tire tread design
Opposition No. 96,405
18
marketing of light truck and all-terrain vehicle ("ATV") tires.
Applicant, through its predecessors, has been involved in such
business since its incorporation, originally as Interco
Marketing, Inc., in July 1975. Interco Marketing, Inc., which
operated such business through its Interco Tire Company division,
amended its articles of incorporation on October 10, 1983 to
change its name to applicant’s present name, Interco Tire
Corporation.
Applicant’s president, Warren L. Guidry, is the
designer of its two-stage lug tires, which were introduced under
the "Swamper" name in 1970, and its three-stage lug tires, which
were first marketed under the "Super Swamper" designation in
October 1977, although the design thereof was begun in late 1972
and completed around 1973. Around 1982, applicant began
marketing its three-stage lug concept tires under the "Super
Swamper TSL" brand name. According to Mr. Guidry, the
terminology "three-stage lug" designates a tire design which has
"three distinctly different length lugs in the tread pattern."
(Guidry dep. at 11.) In the case of applicant’s "Super Swamper
TSL" tires, the three-stage lug design therein includes a

[has acquired distinctiveness or] is confusingly similar is
limited to the tire tread design [as shown on the drawing].
While opposer is correct that it is the registrability of the mark as
shown on the drawing which is at issue in this proceeding, the
pictures and actual samples of applicant’s tires, like the photographs
thereof submitted as specimens, are admissible to demonstrate the
manner in which applicant uses its purported mark. The fact that the
proportions--and hence the actual appearance--of applicant’s subject
design must necessarily vary, depending upon both the width and the
circumference of tires on which it is used, does not alter the fact
that the basic overall tread pattern, as shown on the drawing, remains
essentially the same. Accordingly, opposer’s objection is overruled.
Opposition No. 96,405
19
repetitive pattern of lugs which Mr. Guidry described as being
"[l]ong or large, short or small, and intermediate" in length.11
(Id.) Although applicant once owned a design patent, covering
the ornamental design depicted below,
for its three-stage lug tread design, such patent expired after
14 years on October 13, 1995.12 Applicant’s two-stage lug tread
pattern, as shown below,

11 Applicant’s brief specifically describes its subject design as one
in which "the overall tread design includes two outer circumferential
rows of tread elements called ’lugs’ and two inner circumferential
rows of tread elements called ’center treads’." However, "using the
letter ’L’ for large lug, ’S’ for small lug and ’I’ for intermediate
lug," applicant states in a footnote to its brief that "[t]he
repetitive pattern [of its subject design] is made up of sets of four
lugs, L,S,I and S. Thus, each set includes two lugs of the same
length, and lugs of three different lengths." This description, we
note, differs somewhat from the description indicated by Mr. Guidry in
the testimony quoted above in that the small lug repeats itself every
other element while the large and intermediate lugs repeat themselves
every fourth element. Mr. Guidry further testified, in any event,
that he "doesn’t know of any tires that incorporate a sequence of more
than three lugs." (Guidry dep. at 11.)
12 U.S. Patent Des. No. 261,257, issued on October 13, 1981, which
states that the figure shown above "is a perspective view of a tire
showing" a new ornamental design, "it being understood that the tread
pattern is repeated throughout the circumference of the tire as shown
schematically by solid lines, the opposite side being the same as that
shown".
Opposition No. 96,405
20
is the subject of a Supplemental Register registration which it
has received.13 Applicant’s two-stage lug design, however, has
not been shown to have been the subject of any utility or design
patent, nor has its three-stage lug configuration been the
subject of any utility patent or a Supplemental Register
registration.
Applicant does not manufacture the tires which it
sells. Instead, they are made for applicant, using its molds, by
Denman Tire Corporation and Specialty Tires of America. Although
applicant still markets its original "Swamper" tire on a limited
basis, the focus of its business is principally on the sale of
tires bearing its three-stage lug design, rather than those with
a two-stage lug configuration, since Mr. Guidry considers the
newer design to have a "much better appearance". (Guidry dep. at
10.) Besides the repetition in the pattern of large or long,
small or short, and intermediate lugs around the circumference,
Mr. Guidry pointed out that tires with applicant’s subject design
have variations in the spacing between both the shoulder lugs and
the centerline chevrons. In addition, he observed that some of

13 Reg. No. 1,206,827, issued on August 31, 1982, which sets forth a
date of first use anywhere of December 31, 1970 and a date of first
use in commerce of February 26, 1971.
Opposition No. 96,405
21
the lugs extend beyond the sidewall of the tire, a feature of
applicant’s three-stage lug design which "makes it distinctly
different from any tire on the market today." (Guidry dep. at
15.) In fact, according to Mr. Guidry, who among other things
admitted that he is familiar with opposer’s "Super All Traction"
tire, "there is no other tire in existence today ... that
resembles" applicant’s three-stage lug design. (Guidry dep. at
13.) Thus, in his opinion, none of the versions of opposer’s
"Super All Traction" tire is substantially similar in appearance
to applicant’s "Super Swamper" tires, including its "Super
Swamper TSL" products.
Although the application identifies applicant’s goods
simply as "tires," all of the goods which it sells fall into the
category of light truck tires. Applicant has continuously sold
tires featuring its subject three-stage lug design since their
introduction, as noted earlier, in October 1977. Moreover,
according to Mr. Guidry, he knows of no other company, at least
with respect to light truck tires, which incorporates a three-
stage lug design into their tires. Sales of applicant’s original
"Super Swamper" tires, which as previously noted began around
1970 and feature the two-stage lug tread pattern which is the
subject of its Supplemental Register registration, have also been
continuous.
Applicant, during the ex parte prosecution of its
application, submitted several declarations in support of its
contentions that, inter alia, its three-stage lug design has
Opposition No. 96,405
22
acquired distinctiveness.14 According to the declaration from
Mr. Guidry, the tread pattern for which applicant seeks
registration "is one of dozens of many possible tire tread
designs available for and used by other manufacturers of tires";
its tread design "is also the subject of its U.S. Design Patent
No. 261,257 for the ornamental features of the tread design" and
"[i]t is that same ornamental appearance for which ... protection
as a trademark" is now sought; its predecessor, Interco
Marketing, Inc., obtained Supplemental Register Reg. No.

14 Ordinarily, as set forth in TBMP §704 (emphasis in original):
While the file of a particular application ... may be
of record in a Board inter partes proceeding, by operation
of [Trademark Rule] ... 2.122(b) (see TBMP §703.01) or
otherwise, the allegations made, and documents and other
things filed, in the application ... are not evidence in the
proceeding on behalf of the applicant .... Allegations must
be established by competent evidence properly adduced at
trial, and the documents and other things in an application
or ... are not evidence, in an inter partes proceeding, on
behalf of the applicant ... unless they are identified and
introduced in evidence as exhibits during the testimony
period. See: [Trademark Rule] ... 2.122(b). ....
....
Affidavits or declarations in an application ... file
cannot be relied upon by the applicant ..., in an inter
partes proceeding, as evidence of the truth of the
statements contained therein; the statements must be
established by competent evidence at trial. ....
....
Although the allegations made and documents and things
filed in an application ... are not evidence, in a Board
inter partes proceeding, on behalf of the applicant ...
(unless they are properly proved at trial), they may be used
as evidence against the applicant ..., that is, as
admissions against interest and the like. ....
We note, however, that in this case, opposer states in its main brief
that, among other things, the record includes "the file history of
application Ser. No. 74/279,000". Consequently, such declarations are
deemed to have been stipulated into the record. See Trademark Rule
2.123(b).
Opposition No. 96,405
23
1,206,827 for a two-stage lug tire tread design; and applicant is
"not aware that the subject tread design has been legally used on
tires by any manufacturer, distributor, or dealer" other than
applicant and its authorized manufacturers, distributors and
dealers since the origination of such design in late 1977.
(Guidry dec. at 1-3; emphasis added.) Mr. Guidry additionally
notes in his declaration that, as of June 16, 1993, applicant
"has sold $56,000,000 of tires bearing the subject trademark";
that "[t]hose sales have involved 740,000 units of tires being
sold and distributed"; and that applicant "has expended $300,000
in advertising and promoting the tires to which the subject mark
is applied". (Id. at 3.)
In a similar vein, each of the form declarations
submitted by applicant from three independent tire sellers
states, except for respectively reciting eight, 17 and 18 years
of experience (as of early February 1994) in the selling
applicant’s tires, that among other things the declarant "is
familiar with [applicant’s] application ... and the tire tread
design which is the subject matter" thereof; that such design "is
one of many possible tire tread designs available for and used by
other manufacturers for tires" and "is sold in competition with
tires of other named manufacturers"; that the declarant is
familiar with and sells several other particular brands of tires;
and that, based upon his experience, the declarant believes that
the tread design which is the subject matter of applicant’s
application "is recognized in the trade and by consumers of tires
Opposition No. 96,405
24
as the design of ... and denoting products of" applicant alone
(emphasis added).
According to applicant’s witness, Mr. Nick Pathiakis,15
he has been involved in the sale of tires for a number of years.
His experience with selling tires began as the owner and
operator, until about 1992, of a retail establishment which sold
tires, wheels and other accessories for 4-wheel drive vehicles.
Since then, he has run a mail-order business which likewise
involves the sale of such 4-wheel drive accessories as tires,
wheels, winches and suspension lifts. Mr. Pathiakis is familiar
with applicant’s products, which he buys from a distributor, as a
result of both reselling such products through his mail-order
business and using them personally on his show truck, which he
exhibits in "Show and Shine" competitions16 held at exhibitions

15 Opposer, in its main brief, has renewed its objection "to the
admission into evidence [of the] deposition testimony of Mr. Pathiakis
on the grounds that the deponent was not identified during the
discovery process." Opposer, however, has failed to substantiate its
objection by pointing to any interrogatory or other discovery request
which requests the identity of the witness(es) which applicant
intended to present at trial. Opposer’s objection is therefore
overruled. In any event, such objection would appear to have been
waived since, as asserted by applicant in its brief:
Opposer was notified of Applicant’s intention to take the
testimony of Mr. Pathiakis by Notice of Taking Testimony
served April 25, 1996. However, the testimony of Mr.
Pathiakis was not actually taken until June 24, 1996, two
months after Opposer was notified of Applicant’s intent to
take such testimony. Opposer made no attempt during this
two-month period to reopen the discovery period, and,
therefore, no prejudice to Opposer should be inferred.
Opposer had a full opportunity to cross-examine the witness.
The record is devoid of any indication that Applicant
intentionally or in bad faith failed to identify Mr.
Pathiakis during the discovery process, and Opposer does not
and cannot so contend. ....
16 Such competitions are judged solely on the basis of appearance. In
1992, Mr. Pathiakis won first prize for best mini-truck in the "Show
Opposition No. 96,405
25
of 4-wheel drive and off-road vehicles. Applicant’s "Super
Swamper TSL" tires have accounted for about 75 to 80 percent of
Mr. Pathiakis’ sales due, in his opinion, to the fact that they
are "probably one of the most aggressive looking tires on the
market, [and are] pretty much a unique design ...." (Pathiakis
dep. at 8.) By an "aggressive looking tire," Mr. Pathiakis
indicated that he meant that "the lug pattern on the tire[,] as
far as the way the lugs appeared on the sidewall and the way they
were staggered[,] made it look above and beyond the normal tire
...." (Id.)
Mr. Pathiakis, who is also familiar with tires made by
such manufacturers as Bridgestone/Firestone, Goodyear, Dick
Cepek, Denman and Gateway, testified that he can identify
applicant’s subject tire tread design "[b]y the different sized
lugs on the side of the tire" and by "how they stagger the
pattern back and forth and raise from small to large." (Id. at
9.) He further indicated that he has not seen any other tires
which have a tread pattern like that shown in applicant’s three-
stage lug design. In this regard, Mr. Pathiakis stated that he
bought and uses applicant’s "Super Swamper TSL" tires
"[b]asically for the way they look" rather than how they
function. (Id. at 10.) The reason why the appearance of such
tires was the factor leading to their selection, he indicated,
was that he "competed in a lot of shows with a truck that we

and Shine" category at an exhibition held in Bloomsburg, Pennsylvania.
A previous version of his truck, featuring applicant’s "Super Swamper
TSL" tires, appeared in a photograph on the front cover of the October
1990 issue of Off-Road magazine.
Opposition No. 96,405
26
built, and we were trying to find the most radically looking tire
that was on the market ..., and this one definitely stuck out."
(Id.) Specifically, he noted that he chose applicant’s "Super
Swamper TSL" tires "because they were the most aggressive,
unnatural looking tires that were available." (Id. at 22.)
While Mr. Pathiakis added that the 1996 Tread Design
Guide shows that there are "quite a numerous amount" of competing
tire designs, such as the Atlas (Canada) Mud King XT (illustrated
previously), which are "aggressive tread-wise," he observed that
none of those "is at all similar [in appearance] to the Super
Swamper tire." (Id. at 16-17.) To Mr. Pathiakis, the reason
therefor is that "the Super Swamper tire is quite a unique tire"
in that "the side lugs ... protrude out beyond the sidewall of
the tire" to a "profound" degree which is "really noticeable"
compared to what is "the norm of a regular mud tire." (Id.)
Moreover, with respect to both the directional and non-
directional versions of opposer’s "Super All Traction" tire, Mr.
Pathiakis noted that he does not consider such models to be
designs which are in competition with applicant’s subject design
because the former are "older design tires" and, as such:
"They’re not ... the state-of-the-art design that they have
nowadays. They don’t have protruding lugs on the side at all."
(Id. at 18.) In consequence thereof, Mr. Pathiakis indicated
that, while the parties’ tires are classified as traction tires,
Opposition No. 96,405
27
he can "definitely" distinguish applicant’s three-stage lug
design from the designs utilized by opposer.17 (Id.)
Mr. Pathiakis also remarked, when asked whether he had
seen many other tires which look similar to the various versions
of opposer’s "Super All Traction" tire, that "[q]uite a few
manufacturers make a traction tire like that." (Id. at 32.) He
stated, however, that since applicant’s "Super Swamper TSL" tires
are the only ones which feature aggressive, overhanging lugs, the
company with which he associates such a distinguishing feature is
applicant. To him, "[t]he thing that comes to mind every time
you see a Super Swamper[,] that catches your attention[,] is that
three-stage lug, the large lugs that protrude out the side of the
tire." (Id. at 33.) According to Mr. Pathiakis, not only has no
other manufacturer copied applicant’s subject design, but he is
not aware, as of the June 24, 1996 date of his deposition, of
"anybody that’s built anything closely" resembling such design
"at all."18 (Id. at 35.)

17 The latter, in his opinion, bear no resemblance "at all" to
applicant’s subject design. (Pathiakis dep. at 29-30.)
18 Mr. Pathiakis nevertheless conceded on cross-examination that, as an
enthusiast who exhibits his show truck in contests which are judged
solely upon the appearance of the vehicles, he is cognizant of details
which ordinary consumers might miss. In particular, he testified as
follows:
Q With all the time you’ve spent with your truck, you’ve
really gotten to know a lot of the details about the
tread on your tires.
A Yes.
....
Q You have an enthusiast’s perspective on your tires?
A Yes.
Opposition No. 96,405
28
In the opinion of Mr. Pathiakis, applicant’s "Super
Swamper" tires, particularly in the larger sizes thereof, are
"well known" inasmuch as "[t]hey’re basically the most ... asked
for when one’s selling tires." (Id. at 36.) Their popularity,
he added, is due "more for the look of the tire" rather than
because they provide better traction. (Id.) Nevertheless, on
cross-examination, he admitted that when he ran his retail store,
he only "rarely" (once or twice) sold tires to customers who
owned sport utility vehicles which had not been modified and thus
were primarily for street rather than off-road use. The reason
therefor, he indicated, is that "[t]he people that buy new
vehicles like that aren’t looking for a tire like the Super
Swamper, because to them, it’s too aggressive, and they want a
tire that’s more like an all-terrain, quieter looking tire."
(Id. at 58.)
Consequently, while applicant’s "Super Swamper TSL"
tires are approved for street use by the U.S. Department of
Transportation and Mr. Pathiakis has seen such tires on trucks
which are highway driven, he admitted that it typically would
take a lot of time and attention before an ordinary consumer
would recognize that such tires look different from other tires,
even though for him the differences therein are immediately
apparent. Still, according to Mr. Pathiakis, the reaction of his

Q And its different from a commercial truck owner’s
perspective?
A Yes; definitely.
(Id. at 55-56.)
Opposition No. 96,405
29
retail store customers upon seeing applicant’s subject three-
stage lug design was that "[t]hey were amazed that there could be
anything that radically designed as far as being a tire" was
concerned. (Id. at 61.) He further admitted, however, that
while not drawing "quite as big a reaction, ... there are other
tires on the market that are a little bit unique, too." (Id.)
Mr. Guidry, in his testimony, admitted that, of the
tires shown in the 1996 edition of the Tread Design Guide, it was
fair to say that those with large, aggressive tread designs, such
as the Ceat Traction Grip N.D., Cascade Radial Mud XT and various
brands of Mud King XT tires,19 are in competition with
applicant’s Super Swamper TSL" tire. Mr. Guidry maintained,
however, that in his opinion, none of the tires shown in such
guide is either substantially similar to or otherwise closely
resembles the three-stage lug design utilized by applicant.
Furthermore, Mr. Guidry indicated that he has never known any
other tire manufacturers to produce a tread design which to him
is similar in appearance to the three-stage lug design of
applicant’s "Super Swamper" tires, which he regards as the

19 According to Mr. Guidry, those tires and others with similar tread
patterns are "generic" in the sense that "they’re made from the same
green tire. They make slight changes so that they can market it under
a different brand name." (Guidry dep. at 76.) In this regard, he
further testified that:
Q Who makes it; do you know?
A General makes a lot of them, B.F. Goodrich makes a lot
of them, such as all of these that were shown as Mud
King .... The Mud King is a tire made by B.F.
Goodrich that may be sold under five, six, seven,
eight different names. I’m not sure.
(Id. at 76.)
Opposition No. 96,405
30
distinguishing feature of its tires. He observed, instead, that
most tire sellers "in the industry use what I would call no-stage
or two-stage" lug designs. (Guidry dep. at 66.) In particular,
he characterized the directional version of opposer’s "Super All
Traction" tire as having a two-stage lug design with a "[m]edium"
aggressive tread. (Id.)
Mr. Guidry also acknowledged, however, that the two-
stage lug tread design on applicant’s original "Swamper" tire is
"distinct" in appearance from the subject three-stage lug design
utilized in its "Super Swamper TSL" tires. (Id. at 118.) The
former, however, presently is not one of applicant’s main
products and thus does not account for a large amount of its
sales. Applicant, in any event, has not taken legal action
against the many third parties who are selling tires which are
essentially copies of such design due to a recognition, according
to Mr. Guidry, that its ownership of a Supplemental Register
registration for the design is not necessarily indicative of
having exclusive rights therein and that the design has "become
public domain, essentially." (Id. at 120.) Mr. Guidry noted,
moreover, that applicant has principally "moved on from that
design" to marketing tires with its subject three-stage lug
configuration. (Id.) While the precise sales figures for the
latter (unlike those stated in Mr. Guidry’s declaration) are
confidential, sales of applicant’s "Super Swamper" tires during
the period from 1981 to 1995 generally reflect a pattern which
may be characterized as one of a steady increase, with sales of

Opposition No. 96,405
31
some sizes and models rising to a level of at least several
hundred thousand dollars annually.20
Applicant has advertised the three-stage lug design of
its tires in its product literature, including the use since
about March 1995 of a brochure which features a die-cut picture
of its "Super Swamper TSL" tire to emphasize the staggered or
protruding lugs in the tread design. Such literature has been
disseminated to individuals, distributors and dealers. Applicant
has also distributed T-shirts imprinted with a "footprint" of its
subject tread design21 (although a pattern of three differently
sized lugs is not readily apparent) and bearing the phrases
"INTERCO SUPER SWAMPER," "THREE STAGE LUG" and "THE SUPER
PERFORMER" (with the last two phrases in much smaller size than
the first phrase). Such T-shirts have been disseminated to
applicant’s distributors and to retail customers.22 In addition,
applicant has promoted its goods through the use of banners
picturing various models of its tires, including those which
incorporate its three-stage lug design. Such banners have been
provided to applicant’s dealers to hang as advertising in their

20 While the sales tabulation, which was prepared by one of the
manufacturers of applicant’s tires, does not indicate whether the
amounts shown represent units sold or dollar volume, we have assumed,
in light of the negative amounts for certain sizes and models in some
years, that the sales figures represent dollar amounts.
21 According to Mr. Pathiakis, the term "footprint" means the imprint
or "actual pattern [which] the tire makes" upon contact with a
surface. (Pathiakis dep. at 38.)
22 It would appear, however, that the distribution of such T-shirts has
neither been continuous nor relatively extensive. Specifically, when
Mr. Pathiakis was shown one of applicant’s T-shirts and asked whether
he had "seen the footprint promoted on any clothing or other
advertising materials from Interco," he replied: "I’ve seen it on a
Opposition No. 96,405
32
retail stores and service areas. Currently, since applicant is
"not doing any magazine advertising," the only advertising which
it does "is in the form of making banners and product brochures
available." (Id. at 49.)
Applicant, however, has received some free publicity
for its subject design due to the fact that pictures of its tires
have appeared in publications directed to the 4-wheel drive
market, including magazines such as Off-Road, Dirt Wheeler, Four
Wheeler, Peterson’s Four Wheeler & Off-Road and Sport Utility.
Moreover, unlike applicant, its distributors advertise its
products in magazines, such as those mentioned above, which
appeal to persons interested in 4-wheel drive vehicles and their
accessories. In fact, a two-page ad by one of applicant’s
distributors in the June 1995 issue of Four Wheeler pictures
applicant’s "Super Swamper TSL" tire along with illustrations of
such tires as the Gateway Buckshot Mudder, which Mr. Guidry
testified is a copy of the two-stage lug design of applicant’s
original "Swamper" tire,23 and a Sport King Mud King XT.24
Applicant’s distributors also advertise its tires in trade
journals at no cost to applicant.

T-shirt long ago similar to this quite a few years back. I didn’t
know they still made these shirts." (Pathiakis dep. at 40.)
23 According to Mr. Guidry, Gateway "copied it around 1972 or ’73" and,
as far as he knows, is still using such design. (Guidry dep. at 73.)
24 The Sport King Mud King XT is identical in appearance to the other
brands of "Mud King XT" tires which have been depicted previously in
this opinion. In addition, Mr. Guidry confirmed that all of the other
brands of tires shown in such ad are in the same general category as
are applicant’s "Super Swamper" tires.
Opposition No. 96,405
33
Mr. Guidry, like Mr. Pathiakis, demonstrated an ability
in his testimony to identify certain brands of tires by their
tread designs. For example, when shown an article from the
October 1990 issue of Off-Road magazine, which pictured a sport
utility vehicle with tires having a prominently displayed tread
pattern, he testified on cross-examination as follows:
Q [I] ask you whether you know whose tires
those are?
A It’s the Gumbo Monster Mudder, which is
a copy of our original Swamper.
Q How are you able to identify the tire?
A I have to answer that humorously. It’s
like knowing your own child.
Q You know tire designs real well.
A Yes.
Q And you pick up little details that
other people would miss.
A Yes; and I designed that tire.
(Id. at 85.)
Mr. Guidry, as mentioned earlier, is familiar with
opposer’s "Super All Traction" tire and testified that such tire
"has been around for twenty-five or thirty years ... or longer".
(Id. at 110-11.) He admitted, in fact, that such tire was in use
not only before applicant was started, but was also in use prior
to his designing both the three-stage lug and two-stage lug
designs utilized, respectively, in connection with applicant’s
"Super Swamper" and "Swamper" tires. Applicant, however, has no
knowledge of anyone who has been confused, mistaken or deceived
as to the source of the parties’ goods or as to any relationship
Opposition No. 96,405
34
between the parties. In particular, Mr. Guidry testified that he
knows of no one who has mistakenly identified one of applicant’s
tires as opposer’s "Super All Traction" tire. Mr. Guidry
additionally noted, however, that while he has been in the tire
business for 30 to 40 years, to his knowledge none of applicant’s
tire tread designs has ever been shown in an issue of the Tread
Design Guide even though applicant presently has "many tread
designs" instead of just one. (Id. at 68.)
Turning first to the issue of whether applicant’s
subject tire tread design, although de facto functional, has
nevertheless acquired distinctiveness, we note at the outset that
inasmuch as applicant seeks registration thereof on the basis of
a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, it is opposer who has the initial burden of
showing that the evidence which applicant submitted with its
application is insufficient to establish such a claim. Once such
burden is met, the burden of going forward shifts to applicant to
show, by a preponderance of the evidence of record, that its
three-stage lug design has in fact acquired distinctiveness and
thus functions as a trademark for tires. As set forth in Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1004-05 (Fed. Cir. 1988), in which registration of
the shape or appearance of a guitar peg head was sought, our
principal reviewing court noted that:
[O]ne opposing a Section 2(f) registration
published for opposition on the basis of that
section must have at least the initial burden
of challenging or rebutting the applicant’s
evidence of distinctiveness made of record
Opposition No. 96,405
35
during prosecution which led to publication
of the proposed mark.
An opposer to an application submitted
under Section 2(f) sufficiently meets its
initial burden if it produces sufficient
evidence or argument whereby, on the entire
record then before the board, the board could
conclude that the applicant has not met its
ultimate burden of showing acquired
distinctiveness. ....
....
Where, as here, an applicant seeks a
registration based on acquired distinctive-
ness under Section 2(f), the statute accepts
a lack of inherent distinctiveness as an
established fact. ....
....
If the opposer does present its prima
facie case challenging the sufficiency of
applicant’s proof of acquired distinctive-
ness, the applicant may then find it
necessary to present additional evidence and
argument to rebut or overcome the opposer’s
showing and to establish that the mark has
acquired distinctiveness.
Thus, as further noted by the court, "the ultimate
burden of persuasion under Section 2(f) on the issue of acquired
distinctiveness is on ... [the] applicant." 6 USPQ2d at 1006.
Moreover, as to whether it must be shown initially that others,
including opposer, are using tire tread designs which have
virtually the same pattern of features as applicant’s subject
design, we observe that the court also pointed out that (emphasis
added): "In most oppositions to registrations under Section
2(f), prevailing opposers have presented some evidence that the
mark has not acquired distinctiveness, such as others’ use of the
proposed mark or similar marks." Id. at 1008-09.
Opposition No. 96,405
36
We find that opposer has satisfied its initial burden
of establishing a prima facie case, the principal facet of which
is that the showing applicant made in its application does not
suffice to establish acquired distinctiveness, and that on the
entire record applicant has not met its ultimate burden of
persuasion to establish that its three-stage lug design has
acquired distinctiveness. This is because the record shows that
applicant’s subject design essentially is a mere refinement of a
common basic design for mud, ATV and other maximum traction tires
which has been utilized for many years by opposer and other in
the tire industry.25 Thus, notwithstanding applicant’s almost 20
years of continuous use of its particular three-stage lug design,
as reflected, inter alia, in the declarations from its dealers
attesting to their recognition of such design, its steadily
increasing sales of tires bearing that design and the use thereof
by applicant and its distributors in advertising and promotional
materials, the evidence nevertheless is insufficient to establish
acquired distinctiveness. As applicant acknowledges in its
brief, "meeting this standard of preponderance of the evidence
becomes more difficult as the descriptiveness of the mark
increases," citing Yamaha International Corp. v. Hoshino Gakki
Co. Ltd., supra at 6 USPQ2d 1008. In this case, because

25 Although applicant, among other things, repeatedly emphasizes the
"unique" or novel appearance of its subject tire tread design and the
record reflects that no one else in the tire industry has made or sold
a tire with exactly the same tread pattern as applicant’s three-stage
lug design, the fact that applicant’s design is the one and only of
its kind does not necessarily mean that it is inherently distinctive,
much less that it has it has acquired distinctiveness through use and
promotion as a mark. See, e.g., In re In re E S Robbins Corp., 30
USPQ2d 1540, 1542-43 (TTAB 1992) and cases cited therein.
Opposition No. 96,405
37
applicant’s three-stage lug tire tread design, like the guitar
peg head in Yamaha, constitutes the appearance of the product, it
is highly descriptive of the applicant’s goods.
As shown by the pages from the various editions of the
Tread Design Guide which have been made of record, there are
numerous tire tread designs which have been in use by opposer and
others over the years in which, like applicant’s subject design,
chevrons are used in dual centerline rows. Chevrons plainly are
a common shape for the centerline treads on tires. The fact,
therefore, that those in the centerline of applicant’s "Super
Swamper TSL" tires alternate in three different sizes, so as to
correspond with the variations in lengths of the sidewall lugs,
would not be readily apparent (as a look at applicant’s actual
tire and the photographs thereof confirms) to the average
purchaser of tires in general or mud tires in particular.
Similarly, while no other manufacturer or seller of
tires markets a tire which features a pattern of three different
length lugs in which the larger lugs extend appreciably beyond
the sidewall, such a design is in essence a mere refinement of
long-standing two-stage lug designs like applicant’s widely
copied "Swamper" tire. Moreover, in light of the fact that
applicant’s design patent for its subject three-stage lug design
did not expire until October 13, 1995, it is not surprising,
inasmuch as the trial of this proceeding closed less than a year
later on September 26, 1996, that neither opposer nor any third
party has utilized a tread pattern for their tires which is
Opposition No. 96,405
38
either the same or virtually identical to that for which
applicant now seeks trademark protection.
Thus, contrary to the insistence by applicant that its
subject design is completely different in all respects from any
of the other tire tread patterns in the record, we find upon a
comparison thereof that its three-stage lug configuration is
substantially similar in its overall design elements and
appearance to such third-party tread patterns as those on the
Cascade Radial Mud XT, the Delta Mud Trac, the National Mud Trac,
the Regal Trailblazer MT and the various brands of Mud King XT
and X/T tires. All of these designs, like applicant’s "Super
Swamper TSL" tires, have an aggressive or radical appearance due
to their common dual centerline chevrons and large, different
length lugs. Also similar in their design concept, although
admittedly not quite as close visually to applicant’s subject
design as those just mentioned, are the tread patterns on
opposer’s "FIRESTONE" brand "Super All Traction" tire (both
directional and non-directional models)26 and the tread pattern
on the Ceat Traction Grip tire. Applicant, in this regard,
concedes in its brief that it "does not dispute the fact that
many tire designs, including Opposer’s Super All-Traction tires,
include tread patterns incorporating two outer rows of lugs and

26 To be clear, we find that the heavy-duty, non-directional version of
such tire (which was introduced about 1979 or 1980 and is the one
depicted on the left in the illustration of the models of opposer’s
tire previously reproduced in this opinion), is the most similar
version of opposer’s tire to the subject three-stage lug design of
applicant’s "Super Swamper TSL" tires.
Opposition No. 96,405
39
two inner rows of center tread elements arranged in a more or
less chevron pattern."
Accordingly, while persons with many years of
experience in the tire industry, such as tire engineers, tire
dealers and tire producers, can upon inspection distinguish
applicant’s "Super Swamper TSL" tire from various other brands of
tires by their specific tread designs, applicant simply has not
shown that the differences in appearance of such designs are of
source-indicative significance to ordinary retail purchasers of
tires or that such consumers, in particular, would be aware of
and consequently would distinguish mud or ATV tires by the
relatively minor refinements or differences in the appearance of
their tread patterns. See, e.g., In re General Tire & Rubber
Co., 404 F.2d 1396, 160 USPQ 415, 417 (CCPA 1969) [in light of
general public’s long familiarity with whitewalls as trade dress
or ornamentation for tires, "a typical purchaser ... would be
more likely to consider a 3-ring whitewall as just a refinement
of this general ornamental concept, rather than as a trademark."]
This is especially so since applicant’s particular design
repetitively covers the entirety of the tread surface of its
tires. See In re Soccer Sport Supply Co., Inc., 507 F.2d 1400,
184 USPQ 345, 347 (CCPA 1975) [design which is mere refinement of
commonly-adopted and well-known form of ornamentation for class
of goods would presumably be viewed by public as trade dress or
ornamentation, "[e]specially ... when such design is applied
repetitively to the entire surface of the goods."]
Opposition No. 96,405
40
Measured against this marketplace reality, applicant’s
evidence is insufficient to establish that its subject tire tread
design has acquired distinctiveness. While applicant, commencing
in October 1977, has had continuous sales of tires bearing its
three-stage lug design27 and such sales, during the period from
1981 to 1995, reflect a steady increase, with sales of some sizes
and models reaching a level of at least several hundred thousand
dollars annually, mere sales alone, even over an appreciable time
period, do not suffice to establish acquired distinctiveness in
and of themselves. At best, applicant’s sales figures may be
said to demonstrate a growing degree of popularity or commercial
success for its tires, but such evidence does not demonstrate
recognition by the purchasing public of its three-stage lug
configuration as a trademark. See, e.g., In re Bongrain
International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727,
1729 (Fed. Cir. 1990) [growth in sales may be indicative of
popularity of product itself rather than recognition of a term or
design as denoting origin] and WLWC Centers, Inc. v. Winners
Corp., 221 USPQ 701, 707 (M.D. Tenn. 1983) [popularity in sales
alone cannot establish secondary meaning]. Moreover, although
sales, as stated in Mr. Guidry’s June 16, 1993 declaration, of
$56,000,000, which represent 740,000 tires sold, may appear in
the abstract to be appreciable, such figures cannot be said to

27 Although, as previously indicated, applicant has also continuously
sold tires since 1970 which feature the two-stage lug design which is
the subject of its Supplement Register registration, such sales have
not only been relatively insignificant, but more importantly, as
applicant’s president admitted, such design is distinctly different in
appearance from applicant’s subject design.
Opposition No. 96,405
41
have made a substantial impact either in the market as a whole or
in the category of mud tires, particularly in light of the fact
that applicant is such a small producer of tires that its
products are not even listed in any of excerpts from or issues of
the Tread Design Guide which are of record.28
Furthermore, as indicated previously, applicant has
acknowledged that the greater the degree of descriptiveness which
a design possesses, the heavier is a party’s burden of proving
that such a design has in fact become distinctive of the goods
with which it is associated. Here, given the high degree of
descriptiveness inherent in tire tread designs, together with the
fact that opposer and many third parties have used designs
similar to that of applicant--including a significant number of
substantially similar, but not identical, tire tread designs for
mud and other all-terrain tires, we are not convinced that the
purchasing public has come to view applicant’s three-stage lug
configuration as a trademark for its tires. Being a mere
refinement of a common basic design, applicant’s subject design,
like the substantially similar tread patterns of on a number of
third-party tires, shares essentially the same aggressive or
radical appearance due to the presence in each of the designs of
dual centerline chevrons and large, different length lugs. Thus,
while applicant has had nearly 20 years of continuous use of its

28 While, as reflected earlier in this opinion, we have also considered
the additional sales figures revealed in the confidential portion of
Mr. Guidry’s deposition and the exhibit thereto, such amounts do not
alter our conclusion.
Opposition No. 96,405
42
particular three-stage lug configuration, it simply cannot be
said, in light of the uses by opposer and many third parties of
similar and, in some instances, substantially similar designs for
maximum traction tires, that applicant, as required by Section
2(f) of the Trademark Act, has had substantially exclusive use.29
See, e.g., Levi Strauss & Co. v. Genesco, Inc., 840 F.2d 1579,
222 USPQ 939, 940-41 (Fed. Cir. 1984) ["When the record shows
that purchasers are confronted with more than one ... independent
users of a term [or design]..., an application under Section 2(f)
cannot be successful, for distinctiveness upon which purchasers
may rely is lacking under such circumstances."]; Racine
Industries Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1840 (TTAB
1994); and British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d
1197, 1204 (TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed.
Cir. 1994).
Applicant’s advertising expenditures and promotional
materials also fail to demonstrate that its subject design has
acquired distinctiveness. Although, in particular, its
advertising and promotional expenditures, as of Mr. Guidry’s June
16, 1993 declaration, have totaled $300,000, such amount is quite
modest when viewed over the course of nearly twenty years of use
of its three-stage lug design and, in any event, is not
determinative of the success of applicant’s attempts to develop

29 Section 2(f) of the statute provides, in relevant part, that
(emphasis added): "The Commissioner may accept as prima facie
evidence that the mark has become distinctive, as used on or in
connection with the applicant’s goods in commerce, proof of
substantially exclusive and continuous use thereof as a mark by the
applicant in commerce ...."
Opposition No. 96,405
43
distinctiveness for its tread pattern. See, e.g., In re Semel,
189 USPQ 285, 287 (TTAB 1975) ["in evaluating the significance of
advertising figures ..., it is necessary to consider not only the
extent of advertising but also whether the use of the designation
[or design] therein has been of such nature as to create in the
minds of the purchasing public an association of the designation
[or design] with the user and/or his goods"] and Ralston Purina
Co. v. Thomas J. Lipton, Inc., 173 USPQ 820, 824 (S.D.N.Y. 1972)
[promotional expenditures indicate efforts to establish secondary
meaning, but do not determine the success thereof].
In particular, we observe that except for distributing
some T-shirts bearing a relatively indistinct reproduction of the
"footprint" of applicant’s three-stage lug tread pattern and the
phrase "THREE STAGE LUG",30 applicant’s attempt in its product
literature to promote its subject design as a trademark for its
"Super Swamper TSL" tires, through the use of a single die-cut
brochure, only commenced in March 1995, and there is no
indication as to the extent of the distribution of such
advertising. Moreover, while applicant also furnishes banners
for use by retailers of its tires, such banners, as is the case
with its earlier advertising literature, merely picture
applicant’s goods. Such promotional materials, however, do not
indicate that the tire tread pattern depicted in the

30 Although applicant promotes that descriptive phrase, as well as the
term "TSL," in its advertising, the issue of acquired distinctiveness
depends upon whether the particular tread pattern which constitutes
applicant’s subject design per se has come to be recognized by the
purchasing public as denoting the source of applicant’s goods.
Opposition No. 96,405
44
representation of applicant’s "Super Swamper TSL" tires is to be
regarded as one of applicant’s trademarks. Consequently, in the
absence of any significant promotion by applicant of its subject
design as a trademark for its tires, its meager advertising
expenditures and limited promotional materials cannot be said to
establish that the purchasing public has come to view applicant’s
three-stage lug design as a trademark. See, e.g., In re Pingel
Enterprise Inc., 46 USPQ2d 1811, 1823 (TTAB 1998) [applicant’s
catalog and advertisements showed use of its motorcycle fuel
valve and filter configuration solely as product illustration].
Likewise, while applicant’s distributors have
advertised its "Super Swamper TSL" tires by picturing them in
their ads, purchasers and potential customers for applicant goods
would regard such pictures as nothing more than illustrations of
the products being offered for sale and not as indicia of origin.
Similarly, while tires bearing applicant’s subject design have
been given free publicity by being depicted in a number of
publications directed to those interested in 4-wheel drive and
other off-road activities, in each instance applicant’s three-
stage lug design is presented merely as a photograph of its
product, i.e., a representation of what applicant’s tires look
like, and not as an indication of source for such product.
Additionally, the fact that the ornamental appearance
of applicant’s three-stage lug design was formerly the subject of
a now expired design patent does not mean that such design has
become distinctive for purposes of trademark law. As our
principal reviewing court, quoting from the Board’s decision in
Opposition No. 96,405
45
In re Honeywell Inc., 187 USPQ 576, 578 (TTAB 1975), stated in In
re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3: "’[T]he fact
that a device ... was the subject of a design patent does not,
without more, bestow upon said device the aura of distinctiveness
or recognition as a trademark.’"
Finally, with respect to the declarations applicant
submitted from three independent tire sellers having many years
of experience in selling applicant’s tires, the conclusory
statements, in each instance, that the declarant, who is familiar
with and has sold various other brands of tires, believes that
applicant’s subject tread design "is recognized in the trade and
by consumers of tires as the design of ... and denoting products
of" applicant alone fail to establish that such design has
acquired distinctiveness. This is because the declarations, like
the testimony of Messrs. Guidry and Pathiakis, essentially reveal
nothing as to how or why the ultimate purchasers of tires
recognize or otherwise regard applicant’s subject tread pattern
as a source indicator. However, as pointed out in In re Semel,
supra at 288: "It is well settled that the assertions of
retailers, who know full well from whom they are buying, that
they themselves recognize a particular designation [or design] as
a trademark ... cannot serve to establish that members of the
purchasing public, who come to the marketplace without such
specialized knowledge, would in fact recognize the designation
[or design] as an indication of origin." See also In re Meyer &
Wenthe, Inc., 267 F.2d 945, 122 USPQ 372, 376 (CCPA 1959) [it was
incumbent upon applicant to submit proof that its mark is
Opposition No. 96,405
46
distinctive, not only to experts in the field, but to purchasing
public].
Consequently, viewing the totality of the evidence of
record, applicant has not met its burden of establishing that its
de facto functional three-stage lug design has in fact acquired
distinctiveness. Nothing in the record shows that the purchasing
public identifies and distinguishes the source of tires of any
kind, much less mud, ATV and other maximum traction tires, by
their tread patterns. Admittedly, those in the industry, such as
tire manufacturers, engineers, distributors and retailers, can
distinguish tires (in some instances more readily than in others)
by their tread designs, but the evidence is simply lacking that
ordinary retail purchasers, without the years of experience and
specialized knowledge of those in the tire field, are likewise
able to do so, especially in cases where the tread patterns
essentially involve mere refinements of a common basic design.
More importantly, despite almost 20 years of continuous use and
steadily increasing sales, applicant’s meager advertising and
promotional outlays, coupled with the virtual absence, until very
recently, of any advertisements which even arguably promote its
three-stage lug configuration as a source-signifying design, are
insufficient to demonstrate that applicant’s subject design has
in fact acquired distinctiveness in the marketplace for tires.
Nevertheless, in the event that our finding that
applicant’s de facto tire tread design lacks distinctiveness is
ultimately reversed, we turn to the remaining issues of priority
of use and likelihood of confusion raised by opposer’s
Opposition No. 96,405
47
alternative claim. Opposer argues basically that in light of its
continuous use of the tread patterns on its "Super All Traction"
tire since 1954, it has priority of use. While applicant "does
not dispute that the Super All-Traction directional tire shown on
the right [of the illustration of the versions of opposer’s tire
reproduced previously] has been sold since 1954," applicant
correctly points out that "the record is undisputed that the
other two tread designs were not introduced until at least
twenty-five (25) years after the introduction of the first Super
All-Traction tire in 1954." Specifically, inasmuch as the non-
directional versions of such tire, including the heavy-duty model
which is the most similar of the tread designs used by opposer,
were not marketed by opposer until 1979 or 1980 at the earliest,
applicant maintains, in light of the continuous use of its
subject tread design since October 1977, that it "enjoys priority
of use of its mark with respect to both of Opposer’s Super All-
Traction tires." According to applicant, "the only issue under
... [the alternative claim of priority of use and likelihood of
confusion] is Opposer’s use of its Super All-Traction directional
tire."
Neither party, however, has focused its attention on
the real issue determinative of the question of priority in this
case, which is which party has priority of secondary meaning
(i.e., acquired distinctiveness) for its respective tire tread
pattern(s). Given the fact that both parties utilize what, as
stated earlier, is essentially a common basic design for the
tread patterns found on mud, ATV and other maximum traction
Opposition No. 96,405
48
tires, such patterns are lacking in inherent distinctiveness.
Applicant, as also noted above, has properly acknowledged that
the greater the degree of descriptiveness which a design--such as
a tire tread pattern--possesses, the heavier is a party’s burden
of proving that the design has in fact become distinctive of the
goods with which it is associated. See Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., supra at 6 USPQ2d 1008. Here,
given the high degree of descriptiveness inherent in tire tread
designs, opposer must show, in order to have priority therein,
that the tread pattern for each of the versions of its "Super All
Traction" tire has acquired distinctiveness prior to either
applicant’s subject design having acquired distinctiveness or, in
the absence thereof, the May 27, 1992 filing date of the involved
application, which is otherwise the earliest date upon which
applicant can rely for priority purposes. See, e.g., Lone Star
Manufacturing. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182
USPQ 368, 369 (CCPA 1974) and Columbia Steel Tank Co. v. Union
Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960).
Thus, as pointed out by the Board in Perma Ceram
Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1138
(TTAB 1992):
[T]he controlling law ... is that where
the mark [or trade dress] relied upon by a
plaintiff in support of its priority of use
and likelihood of confusion claim is ...
descriptive ..., then the plaintiff must
establish priority of acquired distinctive-
ness. As noted above, the priority contest
... is not solely one of who used the mark
[or trade dress] first chronologically--
rather, the test is which party first
achieved secondary meaning in its mark [or
Opposition No. 96,405
49
trade dress]. See: J. T. McCarthy,
Trademarks and Unfair Competition, Section
16:12 (2d ed. 1984). ....
As we have previously found in this opinion, nothing in the
record shows that the purchasing public, unlike some members of
the tire industry, identifies and distinguishes the source of
tires of any kind, much less mud, ATV and other maximum traction
tires, by their tread patterns. The evidence is simply lacking
that ordinary retail purchasers, without the years of experience
and specialized knowledge of those in the tire field, are able to
discern relatively minor differences in the details of tread
designs, particularly in instances where the tread patterns
essentially involve mere refinements of a common basic design.
The record in this proceeding reveals, as is the case
with applicant’s subject design, that third parties have used
tread designs for maximum traction tires which are substantially
similar to those utilized by opposer in the versions of its
"Super All Traction" tire. Moreover, in some instances, the
third-party tread designs have been indicated to be virtually
identical to opposer’s tread patterns. In particular, one of
opposer’s own witnesses testified that:
Q All right. Mr. Rettig, do you believe
that many other people have copied the
Super All Traction tire tread design?
A Yes, I believe it has been copied many
times.
Q And so when you see a tire that has a
lug that is discontinuous [and has a
centerline] in a chevron pattern, do you
believe that that is a Firestone tire?
Opposition No. 96,405
50
A We often confuse them, yes. You see
them in the field on a truck, and you
think that is your tire and you walk up
to it and it is not.
Q Okay. So having a discontinuous lug
[and a centerline] in a chevron pattern
is not something that is unique to
Firestone?
A No, I believe that’s correct, it is not
unique to Firestone.
(Rettig dep. at 65-66.) Just as in the case of applicant’s
three-stage lug configuration, we are not convinced in view
thereof that the purchasing public has come to view any of the
tread patterns on opposer’s "Super All Traction" tire as having
acquired secondary meaning as a source indicator. Such designs,
instead, are merely minor variations of a common basic design for
mud, ATV and other maximum traction tires, and thus they share
essentially the same aggressive or radical appearance due to the
presence in each of dual centerline chevrons and prominently
large lugs. As applicant persuasively points out, "[i]f Mr.
Rettig, a tire engineer who has been working for Opposer for 37
years, cannot tell when he sees a tire having the asserted tread
design that it is a tire of Opposer, the asserted design clearly
is not distinctive and ... cannot operate as [a] source
identifier to ordinary tire consumers."
Consequently, notwithstanding over 40 years of
continuous use by opposer of the directional version of its
"Super All Traction" tire and over 25 years of continuous use of
the non-directional models thereof, such use plainly has not been
substantially exclusive on the part of opposer and has not
Opposition No. 96,405
51
resulted in secondary meaning for the tire’s tread patterns.
Furthermore, in light of the total absence on this record of any
sales and advertising figures, along with the lack of any
advertisements or other marketing materials which even arguably
demonstrate that opposer has promoted its various tread designs
as trademarks instead of just picturing what its products look
like, opposer has simply failed to establish that any of the
tread pattern designs on the versions of its "Super All Traction"
tire has acquired distinctiveness prior to any date upon which
applicant can rely.
Accordingly, even if one or more of opposer’s tire
tread designs were to be considered as so closely resembling
applicant’s subject tire tread design as to be likely to cause
confusion, because opposer has not shown priority of secondary
meaning therein, its alternative claim must fail.
Decision: The opposition is sustained, and
registration to applicant is refused, as to the ground that
applicant’s three-stage lug tire tread design is de facto
functional and has not acquired distinctiveness, but the
opposition is dismissed with respect to the ground of priority of
use and likelihood of confusion.
R. F. Cissel
E. W. Hanak
Opposition No. 96,405
52
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board