Monday, August 09, 2021

TTAB Dismisses TREK Bicycle's Opposition to RANGER TREK for Overlapping, Non-Bicycle Goods

Frequent TTAB plaintiff Trek Bicycle finished second in this Section 2(d) opposition to registration of the marks RANGER TREK . RANGER TREK & Design and RANGER TREK EXPEDITION JOURNALS & Design for various goods and services in International Classes 16, 18, 21, 25, 26, 28 and 41, on the ground of likelihood of confusion with the allegedly famous common law and registered mark TREK and formatives thereof (34 registrations) for a variety of products, including bicycles, clothing, backpacks, travel bags, all-purpose sports bags, flashlights, wrist watches, powder mixes for energy drinks and snack bars. In a nutshell, the Board found "the differences between the marks sufficient to avoid likely confusion despite the identical goods and trade channels and the fame of Opposer’s marks for bicycles, in particular given the differences in overall commercial impression." Trek Bicycle Corporation v. Christina Isaacs, Opposition No. 91232164 (August 4, 2021) [not precedential] (Opinion by Judge Karen Kuhlke).

Based on Trek Bicycle's sales figures, market share, promotional efforts, and media attention, the Board found the mark TREK to be famous, but only for bicycles and bicycle accessories. Applicant Isaacs argued that TREK is conceptually weak, pointing to dictionary definitions (e.g., "a slow or difficult journey, hike or trip)," and third-party registrations for TREK-containing marks for clothing, bags, or recreation-related information services.

Although the third-party registrations (without proof of the extent of use of the marks) do not affect the commercial strength of the TREK mark, they overall "tend to show the common adoption of the word TREK by third parties to carry the suggestion the goods or services may be appropriate for 'trekking' or simply to evoke the idea of hiking in connection with the goods or services."

Thus, conceptually the mark TREK appears to be somewhat suggestive in connection with backpacks, clothing, and recreation-related information services and the commercial strength for bicycles and bicycle accessories has not been shown to apply to these goods and services. We accord Opposer’s TREK marks the scope of protection to which somewhat suggestive marks are entitled, keeping in mind the mark’s wider scope of protection in the bicycle industry.

The Board also found RANGER to be somewhat suggestive in connection with the involved goods and services, but the word RANGER "is more dominant, placed at the beginning of Applicant’s mark, and presents a different overall commercial impression, sufficient to avoid likely confusion. TREK by itself simply references a journey or hike. RANGER TREK evokes a person on a journey or hike and not any person but a specific type of person with a mission on a RANGER TREK."

[G]iven the dissimilarities in appearance, sound, connotation and commercial impression, even ignoring the somewhat conceptually weak nature of the word TREK in connection with the various Class 18 and 25 goods and Class 41 services to the extent it suggests they are for trekking or simply evokes the idea of trekking, we find the marks are not confusingly similar when used on the goods or services for which Opposer has established priority.

Applicant Isaacs pointed to statements made by Opposer Trek in prosecuting applications for several TREK marks, distinguishing them over cited TREK-containing marks. The Board found that those statements, although not in "full conflict" with Trek's positions here, suggest that "Applicant’s marks, where the addition of “RANGER” creates a sufficient distinction, may coexist as well."

And so the Board dismissed the opposition. 

Read comments and post your comment here.

TTABlogger comment: Applicant Isaacs put up quite a fight here: four and one half years and 132 TTABVUE entries, topped off with oral argument. One might say it was a long trek to registration.

Text Copyright John L. Welch 2021.


At 9:28 AM, Anonymous Anonymous said...

Sometimes I wonder: at what point does aggressive brand enforcement become bullying? I don't wonder anymore.

At 1:28 PM, Anonymous Seth Gardenswartz said...

A long expensive fight against an international brand known for taking tough positions. Was it worth it? Could they have found another name? Hard to call it a clean win when the prize is a conceptually weak brand.

At 6:21 PM, Anonymous Anonymous said...

Do you agree with this decision? I would appeal to Federal Circuit.

At 1:53 PM, Anonymous Anonymous said...

Good on this applicant to put up a fight against a highly over-reaching opposer.


Post a Comment

<< Home