Thursday, November 05, 2009

Precedential No. 45: "TIRES TIRES TIRES" Generic for, or Merely Descriptive of, Tire Store Services

This applicant's attempt to register the designation TIRES TIRES TIRES for "retail tire stores" got no traction with the TTAB. The Board affirmed two alternative refusals to register: genericness and Section 2(e)(1) mere descriptiveness. In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) [precedential]

Genericness: Applicant maintained that TIRES TIRES TIRES is a unitary phrase and therefore that, to prove genericness, Examining Attorney Timothy J. Finnegan must provide evidence of use of TIRES TIRES TIRES as a whole, citing the CAFC rulings in American Fertility and Dial-A-Mattress.

[W]here the proposed mark is a phrase (such as “Society for Reproductive Medicine”), the board “cannot simply cite definitions and generic uses of the constituent terms of a mark”; it must conduct an inquiry into “the meaning of the disputed phrase as a whole.”

The Board disagreed.

There is no valid reason to require an examining attorney to demonstrate that a designation composed solely of a repeating word has been used by others, when the examining attorney has demonstrated that the repeated term is generic and that the repetition does not result in a designation with a different meaning. Here, “tires” and “tires tires tires” have the same meaning. So does “tires tires” as well as “tires tires tires tires.” [What about five or more of them, to the point of annoyance? -ed.]

The Board then perused the evidence and found that the Examining Attorney had established that relevant retailers do use the term "tires" to identify the items they sell. Since "[a] term that names the central focus or subject matter of the services is generic for the services themselves," the Board affirmed the genericness refusal.

Mere Descriptiveness: For the sake of completeness, and assuming that TIRES TIRES TIRES is not generic, the Board considered the Section 2(e)(1) issue, including Applicant's claim of acquired distinctiveness under Section 2(f). The Board began by ominously noting that "[t]ypically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be unlikely to believe that it indicates source in any one entity."

Applicant submitted four declarations, claiming use of TIRES TIRES TIRES for more than twenty years, operation of three service centers in two different cities, promotional expenditures of $100k to $200k per year, and public identification of the phrase with Applicant.

Not enough, said the Board. "[G]given the highly descriptive nature of the designation TIRES TIRES TIRES, we would need substantially more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's services."

And so the Board affirmed the alternative Section 2(e)(1) refusal.

TTABlog note: Little Caesar's owns three registrations for PIZZA! PIZZA! How do you like them apples? See discussion here.

I suspect that if Applicant did a survey in its trading area, the survey results might well point to Applicant. Would that have helped, or would that just be de facto secondary meaning that would not suffice to defeat the genericness refusal?

Text Copyright John L. Welch 2009.


At 1:00 AM, Blogger Ron Coleman said...

Ok, I literally laughed out loud while reading that excerpt!

Laughed, laughed, laughed!


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