IP Law News

Discount Tire Lawsuit Claims Mavis Rebrand Treads on Trademark (1)

Dec. 28, 2018, 4:07 PM

Wheel retailer Discount Tire claims a rebrand by Mavis Tire Supply LLC—labeling its stores Mavis Discount Tire—violates its trademark rights.

The company’s Dec. 26 lawsuit says Mavis started renaming stores after buying multiple chains located in the South and Midwest, where Discount Tire does business. Mavis intends to confuse customers and profit from goodwill built up in the Discount Tire trademark over decades, according to the complaint filed in the U.S. District Court for the District of Georgia.

Mavis previously used Mavis Discount Tire branding only in northeastern states with no competing Discount Tire stores, according to The Renialt-Thomas Corp., Discount Tire’s corporate name.

The case raises the issue of whether Discount Tire has acquired sufficient distinctiveness for trademark protection. A “descriptive” mark that merely describes a product can become distinct if consumers attribute secondary meaning to it.

The lawsuit says the Patent and Trademark Office determined “Discount Tire” acquired that distinctiveness when it registered it as a simple word mark in 2014, and that Mavis’ use implies a connection with the company.

Discount Tire also requested a preliminary injunction against Mavis for using the mark in Florida and Georgia two days after the filing suit. The motion cites examples of actual confusion by consumers—and even of Mavis’ own employees accidentally contacting Discount Tire. The court should block Mavis’ use of the mark during litigation because Discount Tire will likely win the case and would suffer irreparable harm without an injunction, according to the motion.

Mavis, founded in New York in 1972, according to its website, applied to register two “Mavis Discount Tire” logos as trademarks in 2017. Those applications are pending before the PTO.

Discount Tire has grown to more than 1,000 locations since its founding in 1960. The PTO registered a stylized “Discount Tire” logo in 1985.

Spokespersons for Mavis and Discount Tire did not immediately respond to requests for comment. An attorney for Discount Tire declined to comment.

Ballard Spahr LLP and Kilpatrick Townsend & Stockton LLP represents Discount Tire.

The case is The Reinalt-Thomas Corporation v. Mavis Tire Supply LLC, C.C.N.D. Ga., Complaint 12/26/18

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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