CAFC Affirms TTAB's Dismissal of RANGER TREK Opposition: Not Confusable With TREK for Non-Bicycle Goods

The CAFC upheld the Board's dismissal [TTABlogged here] of Trek Bicycle's Section 2(d) opposition to registration of the mark RANGER TREK , in standard character and design form, for bags and clothing. The Board found confusion unlikely with the allegedly famous common law and registered mark TREK for bags and bicycling apparel. The appellate court determined that substantial evidence supported the Board's factual findings and the Board did not err in concluding that "the difference between the [parties'] marks [were] sufficient to avoid likely confusion." Trek Bicycle Corporation v. Christina Isaacs, 2023 USPQ2d 1356 (Fed. Cir. 2023) [not precedential].

Trek challenged the Board's factual findings as to the dissimilarity of the marks, the lack of fame and the strength of the TREK mark, and the Board's consideration of the prosecution history of one of Trek's trademark applications. Trek also challenged the Board's weighing of the DuPont factors.

As to the first DuPont factor, Trek contended, inter alia, that TREK is the dominant portion of applicant's marks, but the court concluded that the Board "reasonably found that 'RANGER' was more dominant" because RANGER is the first word in the mark and "reasonably concluded that the parties' marks differed in their overall commercial impression because 'TREK by itself simply references a journey or hike' whereas 'RANGER TREK evokes . . . a specific type of person with a mission on a RANGER TREK.'"

As to the fame of the TREK mark, the Board properly discounted Trek's raw sales and advertising numbers as insufficient. Trek argued that it had provided contextual evidence as well, but the court pointed out that Trek did not make that argument before the Board. In any case, as the Board pointed out, Trek's evidence was "not broken down by product and [did] not appear to be for only clothing and bags."

As to conceptual strength, the Board "reasonably relied on" certain dictionary definitions and third-party registrations to show that TREK is somewhat conceptually weak and suggestive of the involved goods. In any case, any error by the Board on this issue was harmless because "it appears that the Board concluded there was no likelihood of confusion without accounting for this finding."

With regard the Board's consideration of the prosecution history of the TREK mark, wherein Trek argued that its mark was not confusable with five other marks containing the word TREK, the Board found that the RANGER TREK mark could co-exist with TREK as well. The CAFC found no error in the Board's interpretation of the prosecution history. Again, if there were an error, it was harmless because the Board stated that it would not change the result.

Finally, as to the weighing of the DuPont factors, the court disagreed with Trek's contention that the Board gave too much weight to the dissimilarity of the marks, "especially given the Board's findings that the marks noticeably differed in appearance, sound, connotation, and commercial impression."

And so, the CAFC affirmed the Board's decision.

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TTABlogger comment: It took nearly seven years from the commencement of the oppostion to this CAFC affirmance. Quite a trek!

Text Copyright John L. Welch 2023.