GoNitro Inc.

Trademark Trial and Appeal Board

Mar 1, 2022

88675139 (T.T.A.B. Mar. 1, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: March 1, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re GoNitro Inc. _____ Serial No. 88675139 _____ Paul W. Kruse of Bone McAllester Norton PLLC, for GoNitro Inc. Brittany Johnson, Trademark Examining Attorney, Law Office 126, Andrew Lawrence, Managing Attorney. _____ Before Cataldo, Adlin and Goodman, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, GoNitro Inc., seeks registration on the Principal Register of HOME OF THE HYBRID TIRE (in standard characters), as a mark for the following goods, as amended: “pneumatic tires,” in International Class 12.1 During prosecution, Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 1 Application Serial No. 88675139, was filed on October 31, 2019, based upon Applicant’s assertion of February 15, 2014 as a date of first use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 88675139 - 2 - 2(f), 15 U.S.C. § 1052(f), in part as to “HYBRID TIRE” and disclaimed “TIRE” apart from the mark as shown. The Trademark Examining Attorney has finally refused registration of Applicant’s proposed mark under Section 6(a) of the Trademark Act, 15 U.S.C. §1056 on the basis that the wording “HYBRID TIRE” in the mark is descriptive of Applicant’s goods and thus requires a disclaimer; and under Section 2(f), 15 U.S.C. § 1052(f) on the basis that Applicant’s claim of acquired distinctiveness in part as to “HYBRID TIRE” is insufficient to overcome the disclaimer requirement. After the Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Examining Attorney filed briefs.2 We reverse the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. The Examining Attorney submitted with her brief evidence consisting of dictionary definitions and screenshots from internet webpages.3 One definition was previously introduced during prosecution by the Examining Attorney.4 Resubmitting this definition with her brief was redundant and unnecessary. 2 Applicant did not submit a reply brief. 3 10 TTABVUE 17-41 (Examining Attorney’s brief); 11 TTABVUE 2-14 (additional attachments to Examining Attorney’s brief). Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 4 February 5, 2020 first Office Action at 5-8. Serial No. 88675139 - 3 - We need not rely upon the additional definitions submitted for the first time by the Examining Attorney with her brief, inasmuch as they are unnecessary to our determination of the issues under consideration. Accordingly, we decline to take judicial notice thereof.5 With regard to the webpage evidence submitted by the Examining Attorney with her brief, Trademark Rule 2.142(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. (1) In an appeal from a refusal to register, if the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination. The website evidence submitted for the first time with the Examining Attorney’s appeal brief is manifestly untimely and we give it no consideration.6 II. Applicable Law Mere Descriptiveness and Acquired Distinctiveness The Director of the U.S. Patent and Trademark Office “may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Trademark 5 Cf., e.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018) (The Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format.). 6 The proper procedure for an applicant or examining attorney to introduce evidence after an appeal has been filed is to submit a written request with the Board to suspend the appeal and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See also TBMP § 1207.02 and authorities cited therein. Serial No. 88675139 - 4 - Act § 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if, “when used on or in connection with the goods of the applicant,” it is “merely descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent and Trademark Office may require a disclaimer as a condition of registration if the term at issue is merely descriptive of any of the identified goods or services. In re Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is merely descriptive of goods or services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Applicant, having amended the involved application to seek registration under Section 2(f) of the Trademark Act in part, has conceded that the wording “HYBRID TIRE” in the mark is merely descriptive under Section 2(e)(1) of the Trademark Act.7 See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019). Thus, we need only determine whether 7 Applicant did not present in the alternative its claim that the wording “HYBRID TIRE” in the mark sought to be registered has acquired distinctiveness under Section 2(f). An alternative claim of acquired distinctiveness under Section 2(f) does not constitute a concession that the matter sought to be registered is not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Prof’l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986). Serial No. 88675139 - 5 - Applicant has carried its burden of establishing by a preponderance of the evidence that the merely descriptive wording, “HYBRID TIRE,” has acquired distinctiveness as a mark indicating source under Section 2(f). See Yamaha, 6 USPQ2d at 1005; In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999). “To establish acquired distinctiveness, applicant must show that the primary significance of the [mark] in the minds of consumers is not the product but the producer.” In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284 (TTAB 2000). As discussed above, Applicant bears the burden of demonstrating that its mark has acquired distinctiveness. See Yamaha, 6 USPQ2d at 1006; In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant”). “[L]ogically that standard becomes more difficult as the mark’s descriptiveness increases.” Yamaha, 6 USPQ2d at 1008. Acquired distinctiveness may be shown by direct or circumstantial evidence. Direct evidence includes actual testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive amounts of sales and advertising, or evidence showing wide exposure of the mark to relevant consumers. We determine whether a mark has acquired distinctiveness on the basis of all competent evidence, including “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the Serial No. 88675139 - 6 - name to a source).” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; the evidence required is in proportion to the degree of non- distinctiveness of the mark at issue. Yamaha, 6 USPQ2d 1001 at 1008. “The greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha, 6 USPQ2d 1001 at 1008). Thus, even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness when the term in question is highly descriptive. III. Evidence In support of her position that the applied-for mark is merely descriptive, the Examining Attorney made of record the following dictionary definition: hybrid - “a mixture of different things or styles; a vehicle that uses two or more kinds of power, for example a car that can run using either gas or electricity.”8 The Examining Attorney further made of record copies of pages from third-party Internet websites in which the term “hybrid tire” is used in connection with various types of tires.9 The evidence is excerpted below. 8 MacMillanDictionary.com. Examining Attorney’s February 5, 2000 first Office Action at 5- 8. See also Examining Attorney’s October 10, 2014 Office action at 6-17. 9 August 3, 2020 non-final Office Action at 5-13; 31-45. Capitalization has been added to certain of the website addresses to enhance readability. Serial No. 88675139 - 7 - The first is an article from OEMOffHighway.com, using the term “hybrid tires” to describe tires for farm tractors that are capable of fast inflation and deflation for road and field use. This article is probative of the degree of descriptiveness of “HYBRID TIRE.” Serial No. 88675139 - 8 - Serial No. 88675139 - 9 - Next is an article from the blog CustomWheelOffset.com, discussing its picks for the five best “hybrid tires” for trucks, described as tires capable of handling both on and off-road conditions. This article is also probative of the degree of descriptiveness of “HYBRID TIRE.” Serial No. 88675139 - 10 - Serial No. 88675139 - 11 - Serial No. 88675139 - 12 - Serial No. 88675139 - 13 - Serial No. 88675139 - 14 - Serial No. 88675139 - 15 - In addition, TireRack.com discusses “hybrid tire” in the context of its recommendations for the best tires for hybrid vehicles, i.e., that run on fossil fuel and electricity. This article is far less probative of the degree of descriptiveness of “HYBRID TIRE” inasmuch as it does not discuss “hybrid” in terms the characteristics of tires, but rather to describe the vehicles themselves. Serial No. 88675139 - 16 - Serial No. 88675139 - 17 - In addition, the Examining Attorney introduced an abstract from Google Patents, excerpted below, for a deflation-proof, solid-filled tires used particularly for vehicles bearing heavy loads. Serial No. 88675139 - 18 - Serial No. 88675139 - 19 - The Examining Attorney’s evidence establishes that “HYBRID TIRE” possesses several meanings in relation to tires for vehicles. The first meaning, used by two entities on their websites excerpted above, denotes tires for trucks, tractors and other vehicles that are suitable for “hybrid” use both on paved roads and off road or in fields. OEMOffHighway.com discusses Continental brand “hybrid tires” for tractors. CustomWheelOffset.com lists its five preferred “hybrid tires” for use on trucks driven on and off-road. There is no indication from this article whether the five tire manufacturers mentioned therein refer to their products as “hybrid tires.” The Examining Attorney’s evidence thus consists of two examples of use of “HYBRID TIRE” as an on or off-road tire. The second meaning denotes tires used on hybrid vehicles that run using fossil fuel and electricity. As discussed above, the term “hybrid tire” in this article discusses tires recommended for use on hybrid vehicles, and does not describe a feature of the tires themselves. The third meaning denotes tires that are largely solid and non- inflatable but also feature limited air or gas fills. This third meaning may be most applicable to Applicant’s goods, which it explains in its brief are “pneumatic tires designed to be inflated with nitrogen.”10 Nonetheless, Applicant identifies its goods in its application as “pneumatic tires,” which is broad enough to encompass all three types of tires discussed in the Examining Attorney’s evidence. The Examining Attorney’s evidence, consisting of a dictionary definition, pages from three websites, and a patent abstract, is hardly overwhelming support for the 10 8 TTABVUE 3 (Applicant’s brief); March 5, 202 Response to Office Action at 7-26. Serial No. 88675139 - 20 - Examining Attorney’s contention that “HYBRID TIRE” is “highly descriptive” of Applicant’s goods. Rather, based upon the evidence of record, we find that “HYBRID TIRE” is merely descriptive of Applicant’s recited goods and, as a result, Applicant does not need to introduce a heightened degree of evidence to show that its mark has acquired distinctiveness in connection therewith. See Yamaha, 6 USPQ2d at 1008 (“in general, the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”) Applicant asserts three separate grounds in support of its claim of acquired distinctiveness: 1. Applicant is the owner of a registration of the mark HYBRIDTIRES (Reg. No. 4504704) identifying “nitrogen-filled canisters for use in inflating vehicle tires;” 2. The public recognizes that HYBRID TIRE has acquired distinctiveness in connection with Applicant’s goods and services; 3. Applicant has made substantially exclusive and continuous use in commerce of the mark HOME OF THE HYBRID TIRE since 2007.11 In support of its claim of acquired distinctiveness, Applicant submitted the following declaration of its CEO, Kenneth Lawton:12 11 8 TTABVUE 6-10. 12 December 16, 2020 Request for Reconsideration at 17-20. Serial No. 88675139 - 21 - Serial No. 88675139 - 22 - Serial No. 88675139 - 23 - Serial No. 88675139 - 24 - Applicant further submitted the results of studies of the environmental and practical advantages of nitrogen-inflated tires.13 These studies, technical in nature, are intended to tout advantages to nitrogen inflation of tires, but are not probative of the acquired distinctiveness of “HYBRID TIRE” in connection with Applicant’s tires. Applicant also submitted a screenshot from Mr. Lawton’s appearance on Fox News 13 Id. at 22-65. Serial No. 88675139 - 25 - and Friends14 discussing tips for drivers to save money at the filling station, and copies of advertising brochures for Applicant’s goods displaying its involved mark.15 This evidence similarly does not support Applicant’s claim of acquired distinctiveness, but rather touts the advantages of nitrogen-filled tires. Finally, Applicant submitted copies of twenty form declarations of consumer recognition of “HYBRID TIRE” as a source identifier for Applicant, its products and services.16 The following declaration is illustrative. These declarations, identical except for the identifying headings and signature lines, possess limited probative value compared to declarations written by the declarants and reflecting their individual exposure to “HYBRID TIRE” as a source identifier. Nonetheless, they tend to corroborate the statements made by Mr. Lawton in his declaration. 14 Id. at 67. 15 Id. at 90-102. 16 Id. at 69-88. Serial No. 88675139 - 26 - Applicant’s declaration and other evidence establish that Applicant has used its HOME OF THE HYBRID TIRE mark for thirteen years (at the time of prosecution); has enjoyed considerable success marketing its products under its marks; has engaged in outreach and promotion of its goods under its marks HYBRIDTIRES and HOME OF THE HYBRID TIRE on a major television entertainment outlet; and has received recognition of “HYBRID TIRE” as a source indicator from individuals, auto Serial No. 88675139 - 27 - dealerships, delivery fleet operators, environmental and industry groups. We find that Applicant’s declaration and direct and circumstantial evidence are sufficient to demonstrate that “HYBRID TIRE” has acquired distinctiveness as an indicator of source for Applicant’s goods under its HOME OF THE HYBRID TIRE mark. See, e.g., In re Steelbuilding.com, 75 USPQ2d at 1424 (Fed. Cir. 2005); Yamaha, 6 USPQ2d 1001 at 1008. IV. Summary Based upon the evidence of record, including any evidence not specifically discussed herein, we find that Applicant has made a prima facie showing of acquired distinctiveness, in part, as to “HYBRID TIRE” under Trademark Act Section 2(f) based its declaration and supporting evidence.17 The disclaimer of “TIRE” stands as currently set forth. Decision: The refusal to register Applicant’s mark HOME OF THE HYBRID TIRE in the absence of a disclaimer of “HYBRID TIRE” is reversed.18 17 As a result, we need not consider Applicant’s alternative claim of acquired distinctiveness based upon its prior registration. 18 We observe that any interested parties that demonstrate entitlement to a statutory cause of action may challenge the registration of Applicant’s mark in an opposition or cancellation on a different record that may be adduced in such a proceeding.