Tires, Tires, Tires, Inc.

Trademark Trial and Appeal Board

Nov 4, 2009

No. 77091459 (T.T.A.B. Nov. 4, 2009)

Hearing: Mailed:
August 5, 2009 November 4, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tires, Tires, Tires, Inc.
________

Serial No. 77091459
_______

Janet E. Phipps Burkhead of McKee, Voorhees & Sease, P.L.C.
for Tires, Tires, Tires, Inc.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Tires, Tires, Tires, Inc. has applied to register the
designation TIRES TIRES TIRES (in standard character form)
for services identified as “retail tire store[s]” in
International Class 35.1
Registration was first refused under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis

1 Application Serial No. 77091459, filed January 25, 2007,
claiming first use anywhere and first use in commerce on October
28, 1986.
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Ser. No. 77091459
2
that applicant’s proposed mark is merely descriptive of
applicant's services. In its response to the initial
Office action, applicant amended its application to seek
registration under the provisions of Trademark Act § 2(f),
15 U.S.C. § 1052(f), and submitted a declaration attesting
to use of its proposed mark in commerce for at least the
five years immediately before the date of the declaration.
The examining attorney was not persuaded by applicant's
showing of acquired distinctiveness, even when applicant
supplemented its initial showing based on the declaration,
eventually finding TIRES TIRES TIRES generic and incapable
of serving as a source-identifier. In his final Office
action, the examining attorney refused registration under
Section 2(e)(1) maintaining either (a) TIRES TIRES TIRES is
generic,2 or (b) TIRES TIRES TIRES is merely descriptive and
applicant's Section 2(f) showing is insufficient.
Applicant has appealed the examining attorney’s final
refusal to the Board. Both applicant and the examining
attorney have filed briefs and the Board conducted a
hearing on August 5, 2009. We affirm the refusal to
register on both grounds.

2 Even though the refusal is under Section 2(e)(1), genericness
is an issue in this case because applicant has amended its
application to seek registration under Section 2(f) and the
examining attorney has raised the issue of genericness. See TMEP
§ 1209.02.
Ser. No. 77091459
3
Genericness
The Court of Appeals for the Federal Circuit, our
primary reviewing court, has stated that “[t]he critical
issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
to be protected to refer to the genus of goods or services
in question.” H. Marvin Ginn Corp. v. Int'l Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). Ginn explains that:
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

Id. In an appeal, the Office bears the burden of
establishing genericness based on clear evidence of generic
use. In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999).
Genus of applicant's services
Applicant’s services are identified as “retail tire
stores.” We accept this identification as identifying the
genus of services, which is the genus advocated by
applicant. See brief pp. 5 – 6.

Ser. No. 77091459
4
The relevant public for applicant's services
The specimen of use states “YOUR FAMILY CAR CARE
CENTER.” (Underlining and capitalization in original.) The
services are suited to the public at large. We therefore
conclude that the relevant public for applicant's services
is substantially composed of members of the general public
who own vehicles.
The meaning of TIRES TIRES TIRES to the relevant public
We now consider whether members of the relevant public
would understand TIRES TIRES TIRES to refer to the genus of
the services. Marvin Ginn, 228 USPQ at 530. Evidence of
the relevant public's understanding of a term may be
obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. See In re Reed Elsevier Properties Inc., 482
F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007). We have
considered, as we must, all the evidence of record
including the evidence applicant has submitted in support
of its claim of acquired distinctiveness. See In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
One preliminary issue raised by applicant, however,
warrants our consideration. Applicant maintains that TIRES
TIRES TIRES is a unitary phrase and that the examining
attorney must provide evidence of use of TIRES TIRES TIRES
Ser. No. 77091459
5
as a whole. Applicant cites to American Fertility where
the Federal Circuit stated that in the context of a mark
consisting of a phrase, “[t]he Board must … apply the
Marvin Ginn test to the phrase as a whole, and not focus
only on the individual terms.” American Fertility, 51
USPQ2d at 1837. As further explained in In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1810 (Fed. Cir. 2001):
[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.”

Thus, says applicant, because the examining attorney has
only offered web pages showing use of the singular term
“tires,” and evidence that words considered individually
may be generic is not sufficient to prove that a phrase is
generic, the examining attorney has not demonstrated that
the phrase “tires tires tires” has been used in a generic
sense.
The examining attorney disagrees and maintains that
the Office’s burden is only to demonstrate that “tires” is
generic for applicant's services. According to the
examining attorney, the “repetition of a merely descriptive
or generic word does not negate the mere descriptiveness of
Ser. No. 77091459
6
the mark as a whole.” Brief at unnumbered pp. 4 – 5. The
examining attorney cites to two Board decisions which found
that repeated wording is unregistrable as a whole under
Section 2(e)(1). One decision is In re Litehouse Inc., 82
USPQ2d 1471 (TTAB 2007), where the Board found
CAESAR!CAESAR! for salad dressing not unitary, and stated
that “neither the mere repetition of the word CAESAR in
applicant's mark, nor the presence of the exclamation
points in the mark, nor both of these features combined,
suffices to negate the mere descriptiveness of the mark as
a whole as applied to salad dressings.” Id. at 1474. The
other decision is In re Disc Jockeys, Inc., 23 USPQ2d 1715
(TTAB 1992), where the Board found DJDJ to be merely
descriptive of disc jockey services, and explained that
“the combinations of these words [DJ] would not, simply
because of their repetition, be rendered something more
than descriptive.” Id. at 1716. The Board noted that
“[n]othing new or different is imparted by the simple
repetition of the descriptive expression DJ”; and commented
that:
There is nothing in the composite which changes
the meaning of the letters in any manner which
would give them a different meaning. If one were
to express the view that milk was “creamy creamy”
or that a red bicycle was “red red” or that a
razor was “sharp sharp,” the repetition of the
words “creamy,” “red” and “sharp” would be
Ser. No. 77091459
7
understood as emphasis and the combinations of
these words would not, simply because of their
repetition, be rendered something more than
descriptive.

Id.
We too disagree with applicant’s argument that the
examining attorney must establish that TIRES TIRES TIRES
per se has been used by others in order to find the
designation generic. Applicant's argument implies that a
generic term would be rendered non-generic simply by
repeating the term. 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.” There is no “additional meaning” in “tires
tires tires” that separates the designation from “tires” or
even other designations solely comprising a repetition of
“tires.” See American Fertility, 51 USPQ2d at 1837 (“[t]he
PTO here failed to provide any evidence that the phrase as
a whole, SOCIETY FOR REPRODUCTIVE MEDICINE, has acquired no
additional meaning to the relevant public than the terms
Ser. No. 77091459
8
‘society’ and ‘reproductive medicine’ have individually.”)
Additionally, the Board has already made clear in In re
Litehouse and In re Disc Jockeys that the simple repetition
of a merely descriptive term does not imbue the composite
with the distinctiveness of a mark. Further, Professor J.
Thomas McCarthy, in his treatise, has considered the issue
we now face:
Repetition of a Generic Term. Repeating a
generic name does not turn an otherwise invalid
designation into a protectable trademark. The
Trademark Board observed: “It is settled that a
mark's mere repetition of a merely descriptive
word does not negate the mere descriptiveness of
the marks as a whole.” The same principle should
apply to a generic name. For example, merely
repeating a generic name such as CHAIRS! CHAIRS!
CHAIRS! in connection with the sale of chairs
will not create a protectable mark.

McCarthy on Trademarks and Unfair Competition, § 12:39 (4th
ed. updated September 2009). Professor McCarthy’s CHAIRS!
CHAIRS! CHAIRS! example addresses the same issue raised in
this case, the repetition of a term for retail sales of
goods identified by that term. Finally, the composition of
TIRES TIRES TIRES, through its repetition of a single word,
is different from the composition of other marks which have
been found to be “phrases.” See, e.g., In re Active Ankle
Systems Inc., 83 USPQ2d 1532, 1534 (TTAB 2007) (“DORSAL
NIGHT SPLINT is a phrase. … In the present case, ‘dorsal,’
‘night,’ and ‘splint’ are multiple words joined together as
Ser. No. 77091459
9
a phrase.”); In re Outdoor Recreation Group, 81 USPQ2d
1392, 1397 (TTAB 2006) (“OUTDOOR PRODUCTS is somewhat more
analogous to the phrase considered by the court in American
Fertility”); and In re Rodale Inc., 80 USPQ2d 1696 (TTAB
2006) (NUTRITION BULLETIN is a phrase). The number of
terms in the designation does not determine whether the
designation constitutes a unitary phrase or merely a
repeating word, for, as shown above, even two words have
been held to constitute a unitary phrase. Rather, the
critical factor is that the two or more words serve to
modify each other and enhance the meaning of the composite,
which is something that does not occur merely by repeating
a word.
With the foregoing in mind, we consider whether the
examining attorney has established that “tires” is generic
for the retail sale of tires.
The examining attorney has made of record a definition
of “tire” taken from the Encarta online dictionary, namely,
a “rubber edging for wheel: a hollow band of rubber, often
reinforced with fibers of other material, fitted around the
outer edge of a vehicle’s wheel and filled with compressed
air.” Such items are the subject of applicant's retail
store services, and are featured in applicant’s yellow
pages advertisement for its retail tire services submitted
Ser. No. 77091459
10
as a specimen of use. The advertisement states, “When we
need tires we just look for the huge tire man,”
“Siouxland’s #1 Tire & Auto Repair Center” and “FREE
ALIGNMENT with every 4 tires purchased,” and appears under
the heading “Tire Dealers.”
Further, the examining attorney has submitted webpages
from retail tire stores showing the following uses of
“tires” by other retailers of tires. See, for example:
tiresplus.com – stating “Shop for Tires” and “The
online place to shop for tires”;

1010tires.com – stating “buy tires” and including
a link to “tires” as a product category;

toyo.com – stating “tire basics,” “tire
recommender” and “tire registration,” and
depicting tires;

merchantstire.com – including a link to “tires”
as a product category;

tiresunlimited.com – stating “We specialize in
many types of tires, including Motorcycle tires,
ATV tires, and Specialty Tires” and “Just enter
the weight of the tires you plan on ordering”;

tirerack.com – listing “tires” as a product
category and identifying as links “tires by size”
and “Tires by Brand”;

kauffmantire.com – including a link to “tires” as
a product category and stating “Search for your
tires on the left,” “Reserve your tires &
schedule your appointment” and “Search Tires for
Vehicle”;

vulcantire.com – including a link to “search
tires” and including “tires” as a product
category; and
Ser. No. 77091459
11

parishtire.com – stating “In 1946, J.H. Parish
founded Parish Tire Company as a one location
retail and commercial tire store in Winston Salem
N.C.”

The record also includes other advertisements under the
caption “Tire Dealers” adjacent to applicant’s yellow pages
advertisement that use the word “tire” or “tires” to
identify the items the advertisers sell. See (a) Ben Fish
Tire Co., offering “New & Used Tires & Wheels Special Order
High Performance Tires” and “Great Deals on Tires &
Wheels”; and (b) Fremont Tire Inc., offering “24 Hour Truck
Tire Service.” Evidence of competitors’ use of a term as
the name of their goods and services is persuasive evidence
that the relevant consumers perceive the term as generic.
Continental Airlines Inc. v. United Airlines Inc., 53
USPQ2d 1385 (TTAB 1999).
Because the term “tires” identifies a key aspect of
applicant's services, i.e., the goods sold in applicant's
retail store, and the recitation of services specifically
uses the term “tires” to name the subject matter of
applicant's retail services, the term is generic for the
retail sales of tires. A term that names the central focus
or subject matter of the services is generic for the
services themselves. See In re Candy Bouquet
International, Inc., 73 USPQ2d 1883 (TTAB 2004) (because
Ser. No. 77091459
12
CANDY BOUQUET is generic for gift packages of candy, it
also is generic for applicant's retail, mail and computer
ordering services therefor); In re A La Vielle Russie,
Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for
particular field or type of art and also for dealership
services directed to that field); In re Log Cabin Homes
Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic
for type of building and also for architectural design
services directed to that type of building and for retail
outlets featuring kits for construction of that type
building); In re Web Communications, 49 USPQ2d 1478 (TTAB
1998) (WEB COMMUNICATIONS generic for publication and
communication via the World Wide Web, and also for
consulting services directed to assisting customers in
setting up their own Web sites for such publication and
communication); and In re Harcourt Brace Jovanovich, Inc.,
222 USPQ 820 (TTAB 1984) (LAW & BUSINESS incapable of
distinguishing applicant's services of arranging and
conducting seminars in the field of business law). Also,
because “tires” is generic for retail sales of tires, and
because TIRES has the same meaning as TIRES TIRES TIRES, we
find that the examining attorney has met his substantial
burden of establishing that TIRES TIRES TIRES is generic
Ser. No. 77091459
13
for, and hence incapable of identifying and distinguishing
the source of, the identified services.
Descriptiveness and Acquired Distinctiveness
Although we have concluded on the record before us,
that TIRES TIRES TIRES is generic for applicant services,
should this conclusion be found in error in any appeal that
may follow, we now consider whether applicant's proffered
evidence of acquired distinctiveness is sufficient to
support registration under Section 2(f).3
It is applicant's burden to establish a prima facie
case of acquired distinctiveness. See Yamaha International
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d
1001 (Fed. Cir. 1988). In determining whether secondary
meaning has been acquired, the Board may examine copying,
advertising expenditures, sales success, length and
exclusivity of use, unsolicited media coverage, and
consumer studies (linking the name to a source). Cicena
Ltd. v. Columbia Telecomms Group, 900 F.2d 1546, 14 USPQ2d
1401 (Fed. Cir. 1990). On this list, no single factor is
determinative. The amount and character of evidence
required to establish acquired distinctiveness depends on

3 “[B]y seeking registration under Section 2(f), applicant has
conceded lack of inherent distinctiveness and must prove acquired
distinctiveness.” In re MGA Entertainment, Inc., 84 USPQ2d 1743,
1747 (TTAB 2007).

Ser. No. 77091459
14
the facts of each case and particularly on the nature of
the mark sought to be registered. See Roux Laboratories,
Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA
1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381
(CCPA 1960); and In re Gammon Reel, Inc., 227 USPQ 729
(TTAB 1985). Typically, 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. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
1316, 13 USPQ2d 1727, 1727 n. 4 (Fed. Cir. 1990), citing
Yamaha Int'l, 6 USPQ2d at 1008 (“the greater the degree of
descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning”).
Applicant initially claimed acquired distinctiveness
based on the declaration of Daniel J. Northdurft,
applicant’s President, who stated that TIRES TIRES TIRES
had become distinctive of the services through applicant's
substantially exclusive and continuous use in commerce for
at least five years; that applicant has been using “TIRES,
TIRES, TIRES” in commerce for a period of over twenty
years; and that consumers associate “TIRES, TIRES, TIRES”
Ser. No. 77091459
15
with applicant.4 After the examining attorney found
applicant's claim insufficient to establish acquired
distinctiveness, applicant supplemented its claim with
three additional declarations, which state as follows in
relevant part:
Supplemental Declaration of Mr. Northdurft

• Applicant’s business comprises three service
centers in two different cities; and

• Applicant has spent between $106,000 and
$122,000 annually in 2002 – 2006, and
approximately $231,000 in 2007 “promoting the
trademark ‘TIRES, TIRES, TIRES.’”

Declaration of Mary Ann Johnson

• Ms. Johnson is the General Sales Manager for a
CBS affiliate in Sioux City, Iowa;

• Applicant “has spent over $75,000 with [two
television stations] advertising its ‘TIRES,
TIRES, TIRES’ trademark”; and

• Ms. Johnson and the public associate the
designation as a symbol identifying the services
of applicant.

Declaration of Dennis J. Bullock

• Mr. Bullock is the General Manager of a
broadcasting company that owns and operates
several radio stations in Sioux City, Iowa and
the surrounding area;

• Applicant “has achieved substantial brand
recognition for its business due to its

4 Though the Northdurft declaration refers to use of TIRES,
TIRES, TIRES, i.e., a designation employing commas, we accept the
declaration as support for applicant’s claim of acquired
distinctiveness of TIRES TIRES TIRES without commas.

Ser. No. 77091459
16
substantial investment of approximately $1
million for advertising its ‘TIRES, TIRES, TIRES’
mark, and further due to the diverse forms of
media though which the trademark is advertised,
including through print, outdoor, electronic, and
direct mail”; and

• “the public associates ‘TIRES, TIRES, TIRES’ as
a symbol identifying the services of [applicant]
only, and not of any other company in the field.”

It has long been held that the fact that an applicant
has used its mark for a long time does not necessarily
establish that the mark has acquired distinctiveness. In
re The Interstate Folding Box Co., 167 USPQ 241, 245 (TTAB
1970) (“We are not persuaded by this record that the term
‘INNER-LINED’ has become distinctive of applicant's goods
and does in fact serve as an indication of origin for such
goods. It may well be that applicant, by reason of its
long and continuous use, has acquired a de facto secondary
meaning in the term ‘INNER-LINED’ in the sense that some or
even many people have come to associate ‘INNER-LINED’ with
applicant; but this falls far short of establishing a
propriety or a legal or dejure right therein necessary to
support registration”). Because at best applicant's mark
is highly descriptive, the facts asserted in Mr.
Northdurft’s original declaration are not persuasive. In
re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) (“[T]o
support registration of PROTECTIVE EQUIPMENT [for burglar
Ser. No. 77091459
17
and fire alarms and burglar and fire alarm surveillance
services] on the Principal Register a showing considerably
stronger than a prima facie statement of five years'
substantially exclusive use is required”).
Even applicant's supplemental showing, combined with
its original showing, does not establish the acquired
distinctiveness of applicant's proposed mark. First,
applicant's advertising and the fact that it now has three
service centers in two different cities are not persuasive
because we cannot determine from the record whether the
advertising and the increase in the number of service
centers have had any impact on the recognition of TIRES
TIRES TIRES as a source indicator by an appreciable number
of purchasers. See In re Kwik Lok Corp., 217 USPQ 1245
(TTAB 1983). As the court said in In re Andes Candies
Inc., 478 F.2d 1264, 178 USPQ 156, 158 (CCPA 1973),
“[b]ecause of long use, large sales and advertising, it may
be assumed that some persons might recognize a mark as
designating origin, but that alone is not enough.” Second,
the fact that applicant has three service centers, without
any context in the trade, is not so impressive as to
elevate applicant's designation to the status of a
distinctive mark. See Target Brands Inc. v. Hughes, 85
USPQ2d 1676 (TTAB 2007). Third, Mr. Bullock does not
Ser. No. 77091459
18
provide any specifics regarding applicant's advertising
“through print, outdoor, electronic and direct mail,” such
as the quantity, frequency and scope of such advertising.
Fourth, because applicant provides services other than
retail tire store services, we are not able to determine
from Mr. Bullock’s and Ms. Johnson’s general statements how
much applicant has spent in advertising the specific
services identified in the identification of services.
(According to applicant's original specimen, applicant
provides other services in addition to the retail sales of
tires.) Fifth, Mr. Bullock’s and Ms. Johnson’s statements
regarding customer recognition of the designation as the
source of applicant's services are not particularly
probative because they do not indicate how they know that
the public associates the designation as identifying
applicant's services.
Thus, even if the designation TIRES TIRES TIRES were
found to be not generic, but only merely descriptive, 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.
In re Lens.com Inc., 83 USPQ2d 1444 (TTAB 2007).
Ser. No. 77091459
19
Decision: The refusal under Section 2(e)(1) of the
Trademark Act on the ground that the proposed mark is
generic, and the refusal based on the examining attorney’s
finding that the Section 2(f) showing is insufficient, are
both affirmed.