The Goodyear Tire and Rubber Co.v.Interco Tire Corp.

Trademark Trial and Appeal Board

Sep 11, 1998

No. 91096404 (T.T.A.B. Sep. 11, 1998)

Hearing: Paper No. 38
September 16, 1997 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/11/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Goodyear Tire and Rubber Company
v.
Interco Tire Corporation
_____
Opposition No. 96,404 to application Serial No. 74/279,000
filed on May 27, 1992
_____
Albert Robin and Howard B. Barnaby of Robin, Blecker, Daley &
Driscoll for The Goodyear Tire and Rubber Company.
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. 96,404
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.
The Goodyear Tire and Rubber Company has opposed
registration on the grounds that, since long prior to applicant’s
alleged date of first use of its tread design on October 3, 1977,
opposer "has been and now is engaged in the manufacture, offering
for sale and sale of tires"; that opposer "uses a number of
different tread designs on the tires which it manufactures, most
of which tread designs are primarily functional in nature"; that,
"[a]s a manufacturer of tires, opposer is in position to use on
its tires tread designs which are the same as or similar to those
depicted in applicant’s [a]pplication ... in order to benefit
from their functional advantages"; that, on information and
belief, "other tire manufacturers have used tread designs which
are the same as or similar to that shown in [the application] ...
in order to obtain the functional advantages provided by such
tread designs"; that "[s]ince the tire tread design which
applicant seeks to register is de jure functional, it cannot
serve a source-identifying function"; that registration thereof
"would be inconsistent with the rights of ... others in the tire
industry to use treads of the same or similar design for their
functional advantages"; and that inasmuch as "[t]he evidence

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. 96,404
3
submitted by applicant [with its application] to support its
claim of acquired distinctiveness is insufficient on its face,"
applicant "has failed to prove that the tire tread design shown
[in its application] ... has acquired distinctiveness".2
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, the
testimony, with exhibits, of Michael A. Kolowski, chief engineer
of opposer’s advanced tire design section for multi-purpose
vehicles, and Thomas P. Lewandowski, a tire patent attorney in
opposer’s legal department. Applicant, as its case-in-chief,
submitted a notice of reliance on opposer’s answers to certain of
applicant’s first set of interrogatories; copies of the
declarations filed with its involved application in support of
its claim of acquired distinctiveness;4 and the testimony, with

2 Although opposer has also set forth, as a separately stated ground
for opposition, that applicant’s "tire tread design ... does not serve
among the relevant universe to identify the source of applicant’s
tires and distinguish them from tires made or sold by others," 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
will accordingly be so construed.
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 Applicant’s motion on consent for the stipulated entry thereof,
without authentication and after the close of testimony periods, is
granted. Such declarations are from applicant’s president and three
independent tire sellers.
Opposition No. 96,404
4
exhibits,5 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.6 Opposer, in
rebuttal, filed a notice of reliance upon copies of a magazine
devoted to 4-wheel drive and off-road vehicles, a tire tread
design patent and a tire tread utility patent.7 The parties also
furnished, as rebuttal testimony for opposer, stipulated
testimony from Stephanie C. Brown, an employee of opposer’s tire
engineering staff, and stipulated testimony and accompanying
exhibits from Randy L. Hershey, a photographer employed by
opposer. In addition, the parties filed, as surrebuttal
testimony for applicant, stipulated testimony and related
exhibits from applicant’s president.8 Briefs have been filed and
an oral hearing, attended by counsel for the parties, was held.

5 Applicant’s uncontested request for substitution of its Exhibit Nos.
3 through 20 and opposer’s Exhibit Nos. 2, 5 and 6, due to the court
reporter having erroneously labeled such exhibits as pertaining to a
related opposition involving applicant rather than this proceeding, is
approved.
6 Applicant’s uncontested requests for substitution of photographs for
certain bulky exhibits introduced during the testimony depositions of
its witnesses are granted.
7 Opposer’s motion on consent for leave to file such notice outside of
its rebuttal testimony period is granted.
8 Although the Board’s rules of practice do not provide for the
submission of surrebuttal evidence, we have considered such since the
parties have so stipulated.
Opposition No. 96,404
5
The issues to be determined are whether applicant’s
three-stage lug tire tread design is de jure functional and, if
not, whether such design has acquired distinctiveness.9
According to the record, opposer is one of the three
main tire manufacturers in the United States. Opposer currently
sells two tires, known as the "Wrangler MT" and "Workhorse Extra
Grip," which are each categorized, like applicant’s subject tire,
as a mud tire. Neither of such tires, however, has a tread
design which is the same as or similar to applicant’s three-stage
lug design. One of opposer’s witness, Mr. Kolowski, in fact
admitted that applicant’s subject design is clearly distinct in
appearance from the tread designs on opposer’s two mud tires.
Opposer, moreover, is not aware of any tire tread designs which
it has manufactured or sold which are the same as or similar to
the three-stage lug configuration which applicant seeks to
register.
The testimony of Mr. Kolowski indicates that the
function of the tire tread design which applicant seeks to
register is, generally speaking, that of a typical "off-road"
tire and, in particular, that of a "mud area" tire. (Kolowski
dep. at 7.) Applicant’s specific design is one of "a very open
tire" in that the "material hitting the road is low compared to
most other types of tires." (Id. at 7-8.) The shoulder area of
applicant’s design has "very lateral functional elements that

9 It is well settled that "[e]vidence of distinctiveness is of no avail
to counter a de jure functionality rejection" or claim. In re R.M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
Opposition No. 96,404
6
help in traction, especially deep type traction like mud," while
the centerline elements, which provide directional stability, "go
more circumferential" to "give ... a more directional type feel".
(Id. at 8.) In particular, the chevrons which form the
"centerline rows or elements" of applicant’s tread design and
which "help the tire [to] have directionality" and give it "some
traction features" as well, are a common shape for the centerline
treads on tires. (Id. at 10.) Mr. Kolowski, in fact, has seen
similar chevron shapes in the centerlines of other tires.
As to the other treads on applicant’s design, namely,
the shoulder area lugs, Mr. Kolowski noted that such features are
"basically lateral ... to get traction in deep stuff in the
forward direction". (Id. at 11.) The reason why "[t]here is a
lot of void between the [lug] elements ... is so that stuff such
as mud ... does not stick in that area" and cause a loss of
traction. (Id.) The need for variation in the size of the lugs
is due to "pitching" considerations since, when a tire is
rotating, "if the size of a lug or even the design of an element
in a rib remain[s] constant, the tire would have at one peak a
tremendously high frequency or noise generation." (Id.) To
avoid such, tire designers "jumble or scramble the tread, so that
a tread design is basically always made up of at least three
different size elements."10 (Id. at 12.) Pitching, in fact, is

10 Although Mr. Kolowski also testified that he was "sure" that opposer
has used the same pattern of lug sizes as featured in applicant’s
design (Kolowski dep. at 14), no examples thereof were produced and,
as previously noted, an interrogatory answer by opposer indicates that
it is not aware that any of the tire tread designs which it has
Opposition No. 96,404
7
a noise abatement feature common to most tire tread designs,
including applicant’s subject design.
Similarly, as stated in a review which appeared in the
July 1983 issue of 4-Wheel & Off-Road magazine, applicant’s
"Super Swamper TSL" tire, which features the subject tread
design, "was designed for one thing: mud." The review also
points out that:
From the standpoint of what a mud tire
must accomplish, the TSL displays an
intelligent design concept. TSL stands for
three-stage lug, a design that incorporates
three alternating lug sizes and corresponding
gaps .... The tall, massive lugs and wide-
open lug gaps provide excellent directional
traction, digging deep into the slush for
more solid footing. As the tread bites, it
picks up huge chunks of mud that, due to
their sheer weight and mass, are easily
thrown as the tire revolves. Self-cleaning
characteristics are important in mud tires,
and the TSL rates very high.
Staggered between these big lugs are
medium and small lugs. By alternating the
lug (and lug gap) size, harmonic resonance is
dampened and tire noise is reduced. By
integrating small and large lugs, the tire
can lay down more lugs on the surface at one
time. With more lugs on the ground, traction
is increased. Finally, staggering the lug
size better distributes the punishing
leverage created by a wide-open design.
Although the TSL’s mud performance was
impressive, we were surprised at how well it
performed overall. Its protruding sidewall
lugs were especially functional in hard-
packed snow and ice. ....
Likewise, one of applicant’s earliest brochures, which
appeared in 1982 in conjunction with applicant’s introduction of

manufactured or sold are the same as or similar to the three-stage lug
configuration which applicant seeks to register.
Opposition No. 96,404
8
the current version of its "Super Swamper TSL" tire, touts the
three-stage lug design as a "tread concept [which] offers
unsurpassed traction" and asserts that "[n]ine years of testing
and developing have produced the ultimate tire tread design
featuring a uniquely arranged short, intermediate, and long lug,
each proportioned and spaced to dig deep and self-clean rapidly."
Such brochure, which is applicant’s Exhibit 13, states in
particular that its "tires are designed for maximum traction and
rapid cleaning at minimum RPM (Revolutions Per Minute)" and also
claims that applicant’s subject design "offers increased
mileage"; provides "a quieter, smoother ride, [with] less rolling
resistance, and tougher sidewalls"; and "gives ... a tire that is
both directionally and laterally stable."
While opposer, in addition, introduced a copy of U.S.
Patent No. 5,259,429, issued to a third party on November 9,
1993, for what is described in the abstract thereof as "[a]n all
terrain vehicle tire [which] has an improved tread including
primary lugs arranged in sets equally spaced around the periphery
of the tire on each side of the tire centerline with each set
including a long lug, at least one intermediate lug and a short
lug, with the sets on opposite sides of the centerline being
offset substantially one half the pitch of the lug sets," the
tread design which is shown in such utility patent, although
nominally a three-stage lug design, is strikingly different in
appearance from applicant’s three-stage lug configuration and
there is nothing of record which indicates that the patented

Opposition No. 96,404
9
design is actually in use. Moreover, as the utility patent shows
and Mr. Kolowski conceded on cross-examination, the tread design
on mud tires can present a variety of appearances.
In addition, Mr. Kolowski noted that from 1995 to 1996,
opposer produced about "half a dozen" all-terrain tire tread
designs (id. at 29); that in the ten years prior thereto, it
produced some 12 to 15 tire tread designs for all-terrain tires;
and that all of such designs were distinct from applicant’s
subject design. The record also reflects that opposer has
received numerous design patents for various tire tread designs
and that none of such designs resembles applicant’s three-stage
lug design. In fact, the record reveals that there are many
alternative tread designs which are in use by competitors for mud
and other types of tires.
Mr. Kolowski further admitted that, unlike design
patents for tires, which typically pertain only to the ornamental
appearance or design of a tread pattern, utility patents for
tires generally are directed to the function of the tire tread.
Applicant, however, has not sought utility patent protection for
either its three-stage lug or its two-stage lug tread designs,
although it did own a design patent for the former, covering the
ornamental design depicted below,
Opposition No. 96,404
10
which expired after 14 years on October 13, 1995.11
One of applicant’s witnesses, Mr. Guidry, acknowledged
that the traction characteristics of applicant’s subject tire
tread pattern are affected by both the dimensions and spacing
between the lugs and that the pitch or width thereof is used for
noise abatement. On cross-examination, Mr. Guidry also confirmed
that the previously mentioned review from the July 1983 edition
of 4-Wheel & Off Road magazine was correct in stating that the
subject tread design featured on applicant’s "Super Swamper TSL"
tire provides excellent traction (although such tire is not a
directional tire). While he further agreed with the statement
therein that, by alternating the lug (and lug gap) size, harmonic
resonance is dampened and tire noise is reduced, he noted that
"all tires do that." (Guidry dep. at 38.) However, Mr. Guidry
expressed the opinions that, on the whole, the review was "pretty
poorly written"; that whoever wrote it did not have a good
understanding of tires; and that he could not say that the review
was otherwise accurate. (Id.) Nevertheless, as to the
statements noted previously from applicant’s Exhibit 13, Mr.
Guidry agreed that the statements in that 1982 brochure, like
those in its other brochures of record, are accurate.

11 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. 96,404
11
Furthermore, with respect to the functionality of
applicant’s three-stage lug design, applicant’s other witness,
Mr. Pathiakis, confirmed on cross-examination that the "Super
Swamper TSL" tire which bears applicant’s subject tread pattern
"was designed to be a mud tire" and is purchased for such
purpose, although some of his customers also utilize them as
"show tires". (Id. at 34.) The function of the overhanging or
protruding lugs in applicant’s design, he admitted, is "for a
traction purpose," while the use of three differently sized lugs,
he believes, is to reduce tire noise. (Id. at 35.) Similarly,
Mr. Guidry acknowledged on cross-examination that the function of
the protruding or overhanging lugs on the sidewall of applicant’s
various "Super Swamper" tires is to provide extra traction as
well as to protect the sidewall.
Mr. Pathiakis testified on direct examination, however,
that tires with applicant’s subject design do not provide better
traction, noting that "on the other vehicles that I drive and
have sold them to, they don’t seem to be any better in mud than
most of these other tires that are available." (Pathiakis dep.
at 25.) The significance of the lugs as shown in applicant’s
subject design, Mr. Pathiakis added, is "mainly more for looks
than anything else," resulting in what he characterized as an
"overly aggressive, almost alien-like looking tire." (Id. at
26.) Mr. Pathiakis admitted, however, that he is not familiar
with the term "pitching" as it relates to tire engineering since
he "is not that far into the manufacturing and designing of a
tire." (Id.) Nevertheless, he also indicated that "in the mud
Opposition No. 96,404
12
design or heavy lug pattern" category of tires, "there’s probably
... at least a hundred" alternative designs available, all of
which to him are distinctly different in appearance from
applicant’s subject design. (Id. at 30.) In fact, he testified
that he "is not aware of anybody that has copied that pattern."
(Id. at 32.) Mr. Pathiakis reiterated, on cross-examination, his
opinion that applicant’s three-stage lug tread design is "not any
better in the mud than any other tire out there. It doesn’t
perform any better." (Id. at 39.)
Under cross-examination, Mr. Guidry similarly insisted
that the purpose behind the third lug in applicant’s subject
tread pattern was to create a design which "was uniquely
different" in appearance since "[t]he industry had nothing like
it." (Guidry dep. at 35.) While conceding that "[a]ll treads
serve some degree of function or we wouldn’t put them on the
tire," Mr. Guidry indicated that, as to applicant’s three-stage
lug concept, he could not say that it "serves a function more or
less than any other tread." (Id.) Also, while applicant’s
"Super Swamper" tires are the only tires with a three-stage lug
design in the marketplace, Mr. Guidry could not say that such
tires are the best performing tires of their type. Instead, Mr.
Guidry stated that while he wished that were true, "we get beat
pretty regular" by such other brands as "a Gumbo Mudder, ... a
Ground Hawg, a Buckshot. Numerous tires beat us." (Id. at 39.)
Furthermore, for tires of similar weight and type of
construction, Mr. Guidry testified that applicant’s three-stage
lug design tires "may be a little more expensive because these
Opposition No. 96,404
13
tires take a longer cure time." (Guidry dep. at 27.) Cure time,
Mr. Guidry explained, "is a variable that will affect cost" and,
thus, tires with applicant’s subject design are more expensive to
manufacture than comparable tires. (Id.)
Thomas P. Lewandowski, who has knowledge of tread
designs used in the tire industry, testified that a periodical
publication known as the Tread Design Guide "is an annual
collection of tires that are commercial in the industry".
(Lewandowski dep. at 10.) Such guide lists and illustrates tires
which are actually being sold. A search of copies of the Tread
Design Guide for the years 1967, 1968, and 1970 through 1995 for
"tires that have similar appearance" to the tread design
applicant seeks to register revealed a number of tread designs in
use by third parties and which, according to Mr. Lewandowski,
would be "the most difficult to distinguish" from applicant’s
subject design. (Id. at 12 and 14.) The most pertinent of such
designs, and the years in which they appeared, are indicated
below:
Security Commercial Phillips 66 Super General Ameri*Lug
Traction 1967-1978 X-T 1976-1979 1986-1994
Opposition No. 96,404
14
Regul Mud King Firestone Super All Co-op Mud King
X/T 1988-1995 Traction 1988-1995 X/T 1994-1995
(directional model)
Opposer also introduced photographs of the following two tires,
which are illustrated below as they appear in the 1996 edition of
the Tread Design Guide, along with testimony that such tires were
purchased by Stephanie C. Brown for opposer on October 25, 1996:
Gateway Gumbo Mudder Gateway Buckshot Radial Mudder
Strictly speaking, however, neither of such tires has chevrons
for centerline tread elements like applicant’s subject design,
although applicant’s president claims that the two-stage lug
design therein is a copy of the two-stage lug design originally
utilized by applicant.
In addition, other excerpts from the 1996 edition of
the Tread Design Guide, introduced as applicant’s Exhibit 11,
reveal that not only are the Regul Mud King X/T, Firestone Super
All Traction (directional model) and Co-op Mud King X/T tread
designs shown above still in use, but a number of tread designs
listed under the heading of "SMALL HIGHWAY & LIGHT TRUCK TIRES,"
which is the category into which applicant’s "Super Swamper TSL"
Opposition No. 96,404
15
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 Crown Mud King
XT N.D. X/T
Delta Mud Trac Firestone Super Hood Mud King
X/T All Traction XT
(non-directional)
Opposition No. 96,404
16
Madison Radial Mud Medalist Mud King Miller Mud King
King XT XT XT
Regul Trailblazer Spartan Radial Mud Stratton Mud King
MT King XT XT Steel Radial
Applicant, the record shows, is a small family-run tire
business which was incorporated in 1975. Its president, Warren
Guidry, is the designer of applicant’s two-stage lug tires, which
were introduced in 1970, and its three-stage lug tires, which
were first marketed in October 1977, although the design thereof
was completed around 1972 or 1973. Applicant, however, does not
manufacture the tires which it sells. Instead, they are made for
applicant by Denman Tire Corporation and Specialty Tires of
America. Although its application identifies its goods simply as
"tires," all of the goods which applicant sells fall into the
category of light truck tires. Moreover, while applicant’s tires
are primarily directed to the "entire market" for 4-wheel drive
vehicles, that market is composed of such segments as show
trucks, other competition trucks, and general or utility service
trucks, which include farm and other commercial vehicles.
According to the declaration submitted by Mr. Guidry in
support of the contentions in applicant’s application that its
Opposition No. 96,404
17
three-stage lug tire tread design is not de jure functional and
that such design has acquired distinctiveness, 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 "tire tread design is not more cost
effective to produce than other designs"; 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. 1,206,827 for a two-stage lug tire
tread design which "is no more and no less ’functional’" than
applicant’s current three-stage lug tire tread design; the three-
stage lug tread design "is no more functional than any of dozens
of other tread designs that are known to exist"; applicant is not
aware of any "objective proof" that such design "is so superior
to any other tread design of a competing manufacturer that such
[a] manufacturer would be at a competitive disadvantage to be
without its use"; and applicant is also "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
Opposition No. 96,404
18
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 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 applicant’s subject design
"is no more functional than any of the other tread designs that
are known to exist" (although no such designs were specifically
identified); 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 as the design
of ... and denoting products of" applicant alone (emphasis
added).
According to applicant’s witness, Mr. Pathiakis, he has
been involved in the sale of tires for just over 10 years. His
experience with selling tires began in 1986 as the owner and
operator, until 1992, of a retail shop which specialized in the
installation of tires, wheels and related accessories for 4-wheel
Opposition No. 96,404
19
drive vehicles. Since then, he has run a mail-order business
which involves the sale of such 4-wheel drive accessories as
tires, wheels, suspensions, winches and shock absorbers. 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" competitions12
held at exhibitions of 4-wheel drive and off-road vehicles. Mr.
Pathiakis, who is also familiar with tires made by such
manufacturers as Bridgestone/Firestone, BF Goodrich, Goodyear,
Kelly and Gateway, testified that he can identify applicant’s
subject tire tread design "[b]y the unique, three-stage lugs on
the side of the tire" and by the way such lugs "protrude out of
the sidewall." (Pathiakis dep. at 7.) He further indicated
that, while is also familiar with differences in tire appearance
in light of his experience in attending over 50 truck shows since
1989 and seeing what other competitors are using, he is not
familiar with any other tires that have a lug pattern like that
shown in applicant’s subject design.
In particular, Mr. Pathiakis stated that he uses
applicant’s "Super Swamper TSL" tires because, "[b]asically, in
the market there is nothing else available to the public at this
time that is as radically design-looking as the Super Swamper

12 Such competition is judged solely on the basis of appearance. In
1992, Mr. Pathiakis won first prize for best mini-truck in the "Show
and Shine" category at an exhibition, attended by 2,000 participants
and 45,000 spectators, held in Bloomsburg, Pennsylvania. A previous
version of his truck, featuring applicant’s "Super Swamper TSL" tires,
Opposition No. 96,404
20
is." (Id. at 12.) To Mr. Pathiakis, the reason why applicant’s
tread design is such a radically appearing or "eye-catching" tire
is "[t]he oversized lugs on the outside of the tire." (Id.) It
is by the "staggered appearance" created by such lugs, which
protrude from or overhang the tire’s sidewall and create "a
distinctive look over most tires," that Mr. Pathiakis recognizes
the subject tread design as applicant’s "Super Swamper" tire.
(Id. at 13.) In his experience, applicant is "the only
manufacturer that builds such an outrageous lug pattern with
their tire." (Id.) Likewise, according to Mr. Guidry, 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 distinguishing feature of its tires.
Furthermore, while confirming that "[o]ther tires
definitely have lugs," Mr. Pathiakis indicated that the pattern
in applicant’s tread design is different therefrom in that the
lugs on applicant’s tires "are staggered over the edge that
overhang the sidewall." (Id.) Thus, while he has seen some
other tires which similarly are "aggressive" looking, such as the
lug patterns on the National Mud Trac, reproduced below,13

appeared in a photograph on the front cover of the October 1990 issue
of Off-Road magazine.
13 Mr. Pathiakis, who uses National Mud Trac tires on another of his
vehicles, testified that while such a tire has a stagger to it, the
lugs do not actually overhang the sidewall.
Opposition No. 96,404
21
National Mud Trac
and the Gateway Buckshot Radial Mudder, shown previously,14
there are no tires which, in his opinion, look like or are
similar to the staggering or protruding lugs in applicant’s
subject tread design.15 (Id. at 18.) Although he has also
observed a number of two-stage lug designs, he indicated that he
has never seen another tire manufacturer’s tire which "actually
had three ... different size lugs on it." (Id. at 35.) Mr.
Pathiakis further noted that he readily recognizes the
differences in competitors’ tread patterns and indicated that he
would not be confused as to the source thereof in any side-by-
side comparison with applicant’s tire design due, chiefly, to the

14 While, in particular, Mr. Pathiakis indicated that he is familiar
with the Gateway Buckshot Radial Mudder tire and confirmed that the
lugs thereon overhang the sidewall a little bit, we again note that
the centerline of such tire does not feature a chevron pattern which
is either the same as or substantially similar to that of applicant’s
subject design.
15 Among other things, Mr. Pathiakis testified that the Co-op Mud King
X/T tire, which he has actually used on one of his vehicles, is "not
at all like" applicant’s subject design in appearance; that the
Firestone Super All Traction tire is "not at all" similar to such a
design because "the side lugs don’t protrude beyond the tire" and
"seem to be repetitious all the way down"; and that the General
Ameri*Lug tire, which he has sold, is "[n]ot at all" similar to
applicant’s subject design. (Pathiakis dep. at 19 and 21.) He also
expressed the opinion that "[t]here’s no similarity" in the Regul Mud
King X/T, the Phillips 66 Super X-T or the Security Commercial
Traction tires to the tread design applicant seeks to register. (Id.
at 23 and 24.) Moreover, as to the tread designs displayed in the
1996 edition of the Tread Design Guide, he indicated that none of the
tires therein looked at all like applicant’s subject design.
Opposition No. 96,404
22
"profound" manner by which the lugs on applicant’s "Super Swamper
TSL" tire overhang the sidewall. (Id. at 36.)
Mr. Kolowski testified that, as a tire engineer, he can
distinguish the appearance of applicant’s three-stage lug design
from that of two-stage lug designs, such as the tread pattern Mr.
Guidry designed for applicant’s original "Swamper" tire around
1970 and for which applicant received a Supplemental Register
registration for the tread design shown below:16
However, Mr. Kolowski acknowledged that while, to a tire
engineer, a tire with a two-stage lug design would be different
in appearance to a tire with a three-stage lug design, he added
that he was "not sure" that such would be apparent to a non-
engineer. (Id. at 27.) Mr. Guidry, however, maintains in his
testimony that a three-stage lug pattern is distinct in
appearance from a two-stage lug pattern. He also indicated that,
just as the lugs and the gaps between lugs vary in size in
applicant’s three-stage lug design and thereby affect the
appearance of the tread, the chevrons in the centerline of
Opposition No. 96,404
23
applicant’s subject design correspondingly alternate in three
different sizes and thus likewise contribute to the overall
aggressive appearance of applicant’s "Super Swamper TSL" tires.
Although Mr. Guidry could not remember the exact date
when sales of applicant’s "Super Swamper" tires began, he
indicated that sales of applicant’s original "Super Swamper"
tires, which featured a two-stage lug design, commenced sometime
in the early 1970s and have been continuous. Mr. Guidry also
stated, however, that the two-stage lug tread design thereon
"differs significantly in appearance" from applicant’s three-
stage lug design, which was designed by him "to be uniquely
different in appearance than other tread designs, including the
Two Stage Lug design of the [original] Swamper, Gumbo Mudder and
Buckshot Mudder tires." (Stipulated testimony at 3.)
Sales of applicant’s "Super Swamper" tires featuring
the three-stage lug tread design which is the subject of both
this proceeding and its expired design patent began in October
1977 and have been continuous. While the precise figures (unlike
those 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 its president referred to
as being "a steady increase," with sales of some sizes and models
rising to a level of at least several hundred thousand dollars

16 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. 96,404
24
annually.17 (Guidry dep. at 17.) According to Mr. Guidry,
except for "slight differences depending on the diameter of the
tire" (and which affect the sequencing of the lug patterns), all
models of its "Super Swamper" tires are similar in appearance,
regardless of size, and differ only in terms of the proportions
in their tread designs. (Id. at 19.)
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. Other pieces of product
literature, while evolving over time, have been utilized since
about 1975 and have been distributed to individuals, distributors
and dealers. Applicant has also distributed T-shirts imprinted
with a "footprint" of its subject tread design (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". Such T-shirts are sold to
applicant’s distributors, who give them away to customers who
request them. In addition, applicant has promoted its goods
through the use of caps, stickers and banners. In particular,
banners picturing the various models of applicant’s tires,

17 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. Mr. Guidry,
we note, made the same assumption, although he added that he was "not
sure". (Guidry dep., confidential portion, at 3.) Mr. Guidry also
noted that sales of applicant’s tires with its two-stage lug design do
not represent a significant portion of applicant’s total sales.
Opposition No. 96,404
25
including those which incorporate its three-stage lug design,
have been provided to applicant’s distributors to hang as
advertising in their retail establishments.
Applicant also 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, Four Wheeler, Peterson’s
Four Wheeler & Off-Road and Sport Utility. Moreover, while
applicant does not presently advertise in any publications, 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
(reproduced earlier in this opinion) and a Sport King Mud King
XT.18
Turning first to the issue of de jure functionality,
our principal reviewing court, in the leading case of In re
Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16
(CCPA 1982), outlined the following general evidentiary factors
to be considered in determining such an issue (emphasis by the
court):
Keeping in mind ... that "functionality"
is determined in light of "utility," which is

18 The Sport King Mud King XT is identical in appearance to the other
brands of "Mud King XT" tires which have been illustrated previously
in this opinion.
Opposition No. 96,404
26
determined in light of "superiority of
design," and rests upon the foundation
"essential to effective competition," ...
there exist a number of factors, both
positive and negative, which aid in that
determination.
Previous opinions of this court have
discussed what evidence is useful to
demonstrate that a particular design is
"superior". In In re Shenango Ceramics,
Inc., 53 CCPA 1268, 1273, 362 F.2d 287, 291,
150 USPQ 115, 119 (1966), the existence of an
expired utility patent which disclosed the
utilitarian advantage of the design sought to
be registered as a trademark was evidence
that it was "functional". .... It may also
be significant that the originator of the
design touts its utilitarian advantages
through advertising. ....
Since the effect upon competition "is
really the crux of the matter," it is, of
course, significant that there are other
alternatives available. ....
It is also significant that a particular
design results from a comparatively simple or
cheap method of manufacturing the article.
....
However, as the court subsequently pointed out in In re Teledyne
Industries, Inc., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982):
Simply dissecting ... [an] alleged
trademark into its design features and
attributing to each a proven or commonly
known utility is not, without more,
conclusive that the design, considered as a
whole, is de jure functional and not
registrable. .... In other words, merely
labeling each design feature as "useful" or
as "serving a utilitarian purpose" cannot, as
a matter of law, render the entire
configuration de jure functional. Rather,
the decisive consideration is whether the
overall design ... is so superior in de facto
function or economy of manufacture that
recognition of that design as a trademark
would hinder competition in the ... trade.
....
Opposition No. 96,404
27
While this case, especially in light of the utilitarian
advantages touted in applicant’s advertising literature, presents
a close question, we find on consideration of the above
evidentiary factors that, on balance, applicant’s three-stage lug
tire tread design as a whole is not de jure functional.
Opposer correctly contends that the critical question
determinative of whether applicant’s subject configuration is de
jure functional is whether a three-stage lug tire tread design
works better than other tread designs and, hence, is a superior
design which others should be permitted to copy in order to
compete effectively. Opposer argues that U. S. Patent No.
5,259,429, a utility patent issued to a third party, describes a
tire tread with sequences of small, intermediate and large lugs
which are "remarkably applicable to three lug configuration" that
applicant seeks to register, including lugs which protrude or
overhang the tire sidewall, and that "[g]iven the functional
advantages of a three-lug tread design, there is a need to copy
such ... in order to compete effectively." In addition, opposer
claims that applicant’s advertising and promotional materials
tout the utilitarian advantages of applicant’s three-stage lug
tread design, which opposer insists "is one of a few superior
designs for mud tires". The availability of alternative designs
which assertedly work equally as well as applicant’s subject
design, opposer maintains, does not overcome the fact that
applicant’s tread design is marketed as providing improved
traction under off-road conditions. Moreover, notwithstanding
that applicant’s "Super Swamper TSL" tires are a bit more
Opposition No. 96,404
28
expensive to produce, and hence cost more, because they require a
longer cure time than comparable tires, opposer urges that the
additional cure time does not affect the cost of producing or
molding the three-stage lug design itself. Opposer asserts that
the cost differential accordingly does not establish "the non-
functionality of the tread design at issue" since such design
"could be produced by competitors at comparable cost".
We concur with applicant, however, that its subject
three-stage lug pattern has not been shown on the whole to be a
superior design. Such design, on this record, is not any more
functional than other tire tread designs, whether of a two-stage
lug or three-stage lug variety, for achieving maximum traction
while providing directional stability and reducing generation of
road noise. While the different sized lugs and the
correspondingly different spacing between them affect the
traction, self-cleaning and noise characteristics of applicant’s
subject design, other sizes and arrangements of lugs provide
comparable levels of traction and self-cleaning in mud and on
other surfaces. Noise reduction or pitching, however, is related
to the width of the lugs and the gaps between lugs rather than to
the length of the lugs or to their protrusion or overhang of the
sidewall of a tire. Moreover, as illustrated below,
Opposition No. 96,404
29
the tire tread design disclosed by the third-party utility patent
introduced by opposer, although nominally a three-stage lug
design, is sharply and strikingly different in appearance from
applicant’s three-stage lug configuration.
Plainly, whatever improved traction, directional
stability or other benefits a three-stage lug design may provide
over the more common or traditional two-stage lug patterns may be
achieved without resort to the particular arrangement of short-,
intermediate- and large-length lugs and centerline chevrons
utilized in applicant’s subject tread design. Furthermore, the
fact that such design is the subject of a recently expired design
patent owned by applicant, while not precluding a finding of de
jure functionality, establishes a rebuttable presumption that
applicant’s three-stage lug design is basically ornamental rather
than essentially utilitarian in concept. See, e.g., In re
Morton-Norwich Products, Inc., supra at 17 n. 3 [ownership of
design patent "for the design in issue, ... at least
presumptively, indicates that the design is not de jure
functional"].
Thus, while the absence of a utility patent which
specifically discloses the utilitarian advantages of the tire
tread design applicant seeks to register is an evidentiary factor
which favors applicant, it is significant that applicant touts
the utilitarian advantages of its three-stage lug configuration
in its advertising and promotional materials. Applicant claims
in its ads that, inter alia, its subject three-stage lug tire
Opposition No. 96,404
30
design offers unsurpassed traction; that such configuration is
the ultimate in tire tread design inasmuch as the lugs are
portioned and spaced to dig deep and self-clean rapidly; and that
its design offers increased mileage, provides a quieter, smoother
ride, and results in a tire that is both directionally and
laterally stable. Product reviews of applicant’s "Super Swamper
TSL" tire likewise contain the same or similar statements as to
the functional advantages of its tread design. Applicant asserts
in its brief, however, that such claims do not demonstrate that
its subject tire tread design is de jure functional, contending
instead that:
Applicant, like any manufacturer[,]
extols the benefits of its unique design, but
this is no more than standard advertising
puffery used by all manufacturers to
advertise their products. Applicant
certainly believes it has an excellent
product and makes claims to this effect as
any manufacturer would, but such claims are
nothing more than the reality of the market
place and have been recognized by the Board
to be within acceptable limits of advertising
puffery. ....
Furthermore, contrary to the claims of superior performance in
applicant’s advertising and in product reviews, Mr. Pathiakis
testified that, as noted earlier, tires with applicant’s subject
design do not provide better traction, while its president
similarly insisted that, although he wished otherwise, he could
not say that such tires are the best performing tires of their
type.
Opposer, in its reply brief, points out that the Board
has rejected a party’s efforts to discount claims of functional
Opposition No. 96,404
31
superiority as mere puffery or to dismiss utilitarian features
which, while touted in advertising as being better, are claimed
not to be so in reality. In particular, as noted by opposer, the
Board in In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989),
stated with respect to a claim that statements in promotional
literature were mere puffery that: "This explanation is not
persuasive to rebut the specific statements touting the
functional advantages of these features, in view of the
significant number of promotional materials ..., which focus
directly on the advantages of the configuration ...." Likewise,
as stated by the court in In re Bose Corp., 772 F.2d 866, 227
USPQ 1, 6 (Fed. Cir. 1985): "In concluding that the ... design
is one of the best from the standpoint of performance ..., we
need only believe [the party’s] ... own statements [in its
advertising]." Consequently, the statements in applicant’s
advertising, as well as those made in reviews of its products,
favor opposer’s position that applicant’s subject design is de
jure functional.
The record also shows, however, that the competitive
need for tires which provide maximum traction in mud or on other
types of terrain may be met by a variety of alternative designs
which are in actual use or which are potentially available,
through licensing of patent rights, for use by opposer and third
parties. Opposer, in fact, currently sells two different mud
tires, but neither has a tread pattern which is the same as or
similar to applicant’s three-stage lug design. Such design is
also clearly distinct from any of the other tire tread patterns
Opposition No. 96,404
32
which opposer has manufactured or sold, including roughly six
designs for all-terrain tires which it produced during the period
from 1995 to 1996 and another 12 to 15 designs for such tires
which it utilized in the preceding ten-year interval. In fact,
opposer has received numerous design patents for its tire tread
designs and none of such designs resembles applicant’s subject
configuration.
As Mr. Kolowski acknowledged and the record reflects,
the tread pattern on mud or all-terrain tires can take a variety
of appearances and still function for the general purposes of
providing increased traction and directional stability. The
testimony and the portions from the various editions of the Tread
Design Guide establish that there are many alternative tread
designs for mud and other types of tires which have been and/or
are presently in use by competitors and which are not identical
or even similar to applicant’s subject design. While the
evidence also shows that there are and have been a number of
third-party tire tread designs in use which are substantially
similar to the overall appearance of applicant’s three-stage lug
configuration (as discussed later in this opinion), no one in the
tire industry has copied that exact configuration (although
applicant’s two-stage lug design, which served as the precursor
thereto, has been copied by others in the tire trade). In
particular, the record reveals that overhanging or protruding
lugs found in applicant’s subject design and their three
different lengths, which applicant regards as the features
primarily responsible for the uniqueness of its "Super Swamper
Opposition No. 96,404
33
TSL" tires, are mainly for the sake of appearance, rather than
for any specific functional advantage. Thus, the third Morton-
Norwich factor dictates a finding that applicant’s three-stage
lug tire tread design is not de jure functional.
The last of the Morton-Norwich factors also favors
applicant’s position. Although the evidence is sparse, Mr.
Guidry’s unrebutted testimony indicates that in comparison to
tires of similar weight and type of construction, applicant’s
three-stage lug design tires are a bit more expensive to
manufacture because they require a longer cure time. Opposer’s
speculative assertion that the additional cure time does not
affect the cost of producing or molding the three-stage lug
design itself, even if true, does not negate the fact that once a
tire with such a design has left the mold, its longer cure time
in the production process nevertheless increases the overall cost
of its manufacture and thus results in a slightly more expensive
product. Accordingly, because for tires of similar weight and
type of construction, applicant’s subject design does not result
from a comparatively simple or cheaper method of manufacturing
its product, the fourth Morton-Norwich factor does not
demonstrate that such design is de jure functional.
On balance, therefore, while the advertising and
product reviews for tires containing applicant’s three-stage lug
design are strongly indicative of a superior design which others
should be permitted to copy in order to compete effectively, the
absence of any utility patent directed specifically to the
elements of applicant’s subject design (as contrasted to
Opposition No. 96,404
34
applicant’s recently expired design patent for the ornamental
features thereof), the availability of a wide variety of
alternative tread designs for mud and all-terrain tires, and the
slightly more expensive cost of producing tires with applicant’s
subject design convince us that applicant’s overall design is not
so superior in function or economy of manufacture that
recognition of its subject design as a trademark would hinder
competition in the tire trade. Opposer, of course, has the
burden establishing a prima facie case of de jure functionality
for applicant’s three-stage lug design in order to shift the
burden to applicant of showing that its subject design is not
functional. See, e.g., Textron, Inc. v. U.S. International Trade
Commission, 753 F.2d 1029, 224 USPQ 625, 629 (Fed. Cir. 1985).
Opposer, on this record, has failed to meet its burden of proof
to demonstrate prima facie that in its entirety applicant’s
three-stage lug design is de jure functional.
Turning next to the remaining issue in this case, we
note at the outset that inasmuch as applicant seeks registration
for its subject design 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
Opposition No. 96,404
35
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
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, contrary to applicant’s strenuous contentions that
opposer must initially show that others are using tread designs
Opposition No. 96,404
36
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.
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, all-terrain and other maximum
traction tires which has been utilized for many years in the tire
industry.19 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

19 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. 96,404
37
materials, the evidence nevertheless is insufficient to establish
acquired distinctiveness. As applicant concedes 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. While, as applicant has also admitted,
its three-stage lug tire tread design "is only de facto
functional," it is still the case that, like the guitar peg head
in Yamaha, such a design--because it constitutes the appearance
of the product--is highly descriptive of the goods.
As shown by the pages from the various annual editions
of the Tread Design Guide which have been made of record by both
opposer and applicant,20 there are numerous tire tread designs

20 Applicant, in its brief, has reiterated the objection it interposed
at the deposition of Mr. Lewandowski to the introduction of opposer’s
Exhibit 3, which constitutes a compilation of excerpted pages from
various issues of the Tread Design Guide together with a summary sheet
listing the tire tread designs which Tina Taylor, an administrator in
opposer’s trademark group who did the search of such guides, found to
"have similar appearance" to applicant’s subject design. (Lewandowski
dep. at 12.) Applicant, characterizing Exhibit 3 in its brief as a
"report," has objected to "the introduction of this report based on
the fact that it was not authenticated and that it constitutes
inadmissible hearsay" since, as Mr. Lewandowski admitted on cross-
examination, he did not prepare such compilation and summary listing,
he did not give instructions to Ms. Taylor and he thus did not know
what instructions were given. However, as opposer persuasively points
out in its reply brief:
[T]he excerpts from the 1967-1995 Tread Design Guides
... should be admissible on this issue. These excerpts are
from a recognized publication which depicts tires of many
manufacturers, each of them being displayed with their
identifying word marks. While Tina Taylor ... marked
certain tires which appeared to be visually similar to the
Super Swamper [TSL] tire, this determination of similarity
can be made by the Board from its own examination of the
tires in these publications. Interco’s inability to cross-
examine Tina Taylor as to her selection process has no
bearing on the authenticity of these excerpts from the Tread
Opposition No. 96,404
38
which have been in use over the years in which, like applicant’s
subject design, chevrons are used in dual centerline rows to give
tires directionality and other traction features. Chevrons
plainly are a common shape for the centerline treads on tires.
In consequence thereof, the fact 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

Design Guides. The Board need not rely on Goodyear’s
statement that the designs are similar any more than it
should rely on Interco’s insistence that they are
dissimilar.
Accordingly, while we have not considered the hearsay statement on the
summary sheet that the excerpted designs are "similar," we have
otherwise considered Exhibit 3 and note that, in any event, the
excerpted pages are not inadmissible as hearsay. Specifically, Fed.
R. Evid. 803(17) provides that the following are not excluded by the
hearsay rule: "Market quotations, tabulations, lists, directories, or
other published compilations, generally used and relied upon by the
public or by persons in particular occupations." The testimony in
this case establishes that editions of the Tread Design Guide are
relied upon not only by law enforcement agencies but also by those in
the tire industry to identify tires by their tread patterns.
Opposition No. 96,404
39
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 only about 15
months later on January 10, 1997, that neither opposer nor any
third party has utilized a tread pattern for their tires which is
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
General Ameri*Lug, the Cascade Radial Mud XT, the Delta Mud Trac,
the Regul Trailblazer MT, the National Mud Trac 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
Opposition No. 96,404
40
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 the Security Commercial Traction, the Firestone Super
All Traction (both directional and non-directional models) and
the Ceat Traction Grip tires. Applicant, in this regard, admits
in its brief that it "does not dispute the fact that many tire
designs include tread patterns incorporating two outer rows of
lugs and 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,21 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 all-terrain tires by

21 Although Mr. Pathiakis indicated, for example, that there definitely
were distinct differences between applicant’s three-stage lug design
and the more than 100 alternative mud tire designs shown in the 1996
Tread Design Guide, he further testified that:
Q Is it differences that you can readily recognize as
soon as you look at the tire?
A For me, yes.
Q Why do you say for you?
A It’s just that I have an opportunity to see all these
tires. That tire still stands out above all of them.
Opposition No. 96,404
41
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."]
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 design22 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

(Pathiakis dep. at 30.)
22 Although applicant, since 1970, has also continuously sold tires
featuring the two-stage lug design which is the subject of its
Supplement Register registration, such sales have not only been
relatively insubstantial, but more importantly, as applicant’s
Opposition No. 96,404
42
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
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.23
Furthermore, as previously mentioned, applicant has
acknowledged that the greater the degree of descriptiveness which

president admitted, such design differs significantly in appearance
from applicant’s subject design.
23 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. 96,404
43
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 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
particular three-stage lug configuration, it simply cannot be
said, in light of the many uses by 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.24 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

24 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. 96,404
44
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
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].

Opposition No. 96,404
45
In particular, we observe that except for the sale of
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",25 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 distributes 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
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].

25 Although applicant promotes that descriptive phrase, as well as the
terminology "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. 96,404
46
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
In re Honeywell Inc., 187 USPQ 576, 578 (TTAB 1975), stated in In
re R.M. Smith, Inc., supra at 222 USPQ 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

Opposition No. 96,404
47
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
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, all-terrain and other maximum traction
tires, by their tread patterns. Admittedly, those in the
Opposition No. 96,404
48
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.
Decision: The opposition is dismissed as to the ground
that applicant’s three-stage lug tire tread design is de jure
functional, but the opposition is sustained, and registration to
applicant is refused, on the ground that such design is de facto
functional and has not acquired distinctiveness.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Opposition No. 96,404
49
Trademark Trial and Appeal Board