Trek Bicycle Corp.

Trademark Trial and Appeal Board

Mar 26, 2001

No. 75428345 (T.T.A.B. Mar. 26, 2001)

03/26/01 Paper No. 18
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trek Bicycle Corporation1
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Serial No. 75/428,345
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Mary Catherine Merz of Merz & Associates, PC for Trek
Bicycle Corporation.
Jessie W. Billings, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney).
_______
Before Walters, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 3, 1998, Trek Bicycle Corporation’s
predecessor-in-interest filed an application to register
the mark TREKKING on the Principal Register for
“educational services, namely, providing seminars and
clinics relating to the use of exercise equipment” in
International Class 41. The application was based on
applicant’s assertion of a bona fide intention to use the
mark in commerce. Applicant filed, on April 12, 1998, an
1 Trek Bicycle Corporation is the owner of application Serial No.
75/428,345 by assignment from Unisen, Inc. (Reel 1895, Frame
359.)
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/428345
2
amendment to allege use setting forth a date of first use
and first use in commerce of March 23, 1998.
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that the mark TREKKING,
when used in connection with the identified services of
applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney contends that the mark TREKKING
“describes a type of exercise performed on a treadmill
wherein a teacher leads a workout for students on the
treadmills” (Final Office action, p. 2), and she attached
several excerpted stories from Nexis, all including the
words “trekking” and “exercise.” In her brief, she argues
that the record shows the word TREKKING describes a form of
exercise; and that because applicant’s educational clinics
involve the use of treadmills on which a person walks or
runs, the term TREKKING merely describes the exercise
benefits of walking indoors on a treadmill. She submitted
Ser. No. 75/428345
3
The American Heritage Dictionary definition of “trek” as
“to journey on foot, especially through mountainous areas.”2
Applicant argues that its mark is arbitrary, or at
worst, is suggestive of applicant’s services; that
according to the TMEP §1209.01(a), “a mark does not have to
be devoid of all meaning in relation to the goods or
services” to be registrable on the Principal Register; that
four of the eight excerpted Nexis stories submitted by the
Examining Attorney refer to applicant (through Star Trac,
its fictitious business name) as the developer of a new
service which applicant markets under the mark “TREKKING”;
that there are several excerpted Nexis stories (submitted
by applicant), which discuss treadmill exercise classes
without using the term “TREKKING”, but rather use terms
such as “Treading classes,” “treadmill classes,” and “High
Energy Aerobic Training or HEAT classes”; and that there
are several registered marks which indicate that a
dictionary term may be arbitrary (or at worst, suggestive)
with respect to instructional services, such as SPINNING
for training and instruction to others by simulating an
outdoor bicycle workout done on a stationary bike indoors
2 The Examining Attorney’s request that the Board take judicial
notice of this dictionary definition is granted. See TBMP
§712.01.
Ser. No. 75/428345
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(Registration No. 1,780,065), and JAZZERCISE for conducting
a class in dance and exercise (Registration No. 1,079,083),
and TREKKING for bicycles (Registration No. 1,989,281--
owned by applicant). From this, applicant concludes that
its mark is not merely descriptive because the mark
TREKKING does not immediately convey information to
prospective purchasers about applicant’s services, but
instead requires imagination and thought to make a
connection between the mark and applicant’s services.
The test for determining whether a mark is merely
descriptive is whether the mark immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used, or intended to be
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); and In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979). Whereas, a mark is suggestive if
imagination, thought or perception is required to reach a
conclusion on the nature of the goods or services. See In
re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d 505
(CCPA 1980).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
Ser. No. 75/428345
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services for which registration is sought, the context in
which the term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
In the present case, we conclude that the mark
TREKKING requires a degree of imagination or perception to
determine the nature of applicant’s educational services.
The Nexis stories of record do not evidence use of the word
TREKKING descriptively in relation to the services which
are the subject of this application. In fact, the
Examining Attorney’s own Nexis evidence shows use of the
term TREKKING as applicant’s mark for the exercise classes
developed by applicant.
We agree with the Examining Attorney’s statement that
applicant’s specimens of record show that applicant’s
clinics involve the use of treadmills, but the term is not
used in a descriptive manner on the specimens.
The mark TREKKING does not readily and immediately
evoke an impression and an understanding of the subject
matter of applicant’s educational seminars and clinics
relating to the use of exercise equipment.
Ser. No. 75/428345
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Decision: The refusal to register under Section
2(e)(1) is reversed.