Trek Bicycle, Corp.v.Alyx Fier

Trademark Trial and Appeal Board

Feb 12, 1998

No. 91094948 (T.T.A.B. Feb. 12, 1998)

Paper No. 44
EWH/TF
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 12, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Trek Bicycle, Corp.
v.
Alyx Fier
_____
Opposition No. 94,948
to application Serial No. 74/365,185
filed on March 8, 1993
_____
David C. Brezina of Lee, Mann, Smith, McWilliams, Sweeney &
Ohlson for Trek Bicycle Corp.
Alyx Fier, pro se.
______
Before Cissel, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Alyx Fier (applicant) seeks registration of TREKNOLOGY
and design in the form shown below for “travel bags and all
purpose athletic bags.” The intent-to-use application was
filed on March 8, 1993.
Opposition No. 94,948
2
Trek Bicycle, Corp. (opposer) filed a notice of
opposition on June 14, 1994 alleging that long prior to
March 8, 1993, opposer had used the mark TREK on bicycles,
travel bags and all purpose athletic bags, and further
alleging that “applicant’s trademark is [so] similar in
sound, spelling, appearance and meaning to opposer’s
trademark TREK, and appropriates the whole of opposer’s
mark, so that when applied to the goods of applicant, as
described in the application, which goods are actually sold
by opposer, there is a likelihood of confusion.” (Notice of
opposition paragraphs 2, 3 and 8). In its notice of
opposition, opposer also noted that it owns Registration No.
1,168,276 for the mark TREK depicted in typed capital
letters for “bicycles and bicycle frames.” This
registration issued on September 8, 1981 with a claimed
first use date of March 10, 1977. (Notice of opposition
paragraph 5).
Applicant filed an answer which, among other things,
denied that the allegations of paragraphs 2, 3 and 8 of the
notice of opposition. As for paragraph 5 of the notice of
opposition, applicant stated that it lacked sufficient
knowledge to admit or deny said allegation.
On May 23, 1996 opposer filed a motion for leave to
amend its notice of opposition along with a proposed amended
Opposition No. 94,948
3
notice of opposition. The proposed amended notice of
opposition set forth Count I (which essentially reiterated
the allegations of the original opposition) and Count II
which set forth a new claim, namely, that “since August 1991
… opposer used and promoted TREKNOLOGY as a trade identity
designation in its catalogs and sales literature in
connection with its sales of bicycles and related products
to its dealers.” (Amended notice of opposition paragraph
7). Opposer further alleged that applicant’s mark “is
essentially identical in sound, spelling, appearance and
meaning to opposer’s TREKNOLOGY, and appropriates the whole
of opposer’s mark, so that when applied to the goods of
applicant, as described in the application, there is a
likelihood of confusion.” (Amended notice of opposition
paragraph 14).
In a order dated September 4, 1996 this Board noted
that opposer’s motion to amend its notice of opposition was
uncontested and granted the motion to amend. At page 2 of
its order, the Board made the following comments:
“Applicant is allowed thirty days from the mailing of this
order to file an answer to the amended notice of opposition.
Furthermore, in order to mitigate any possible prejudice to
applicant, applicant is allowed forty-five days from the
mailing date of this order in which to take discovery on the
Opposition No. 94,948
4
added allegations.” The Board’s order concluded by
resetting the trial dates.
Applicant never filed an answer to opposer’s amended
notice of opposition. However, opposer did not move for a
default judgment and instead filed its trial brief on March
21, 1997. (Opposer took the trial testimony of its three
witnesses in June 1996, after filing its motion to amend on
May 23, 1996, but prior to the Board’s order of September 4,
1996.) With regard to applicant’s failure to file an answer
to the amended notice of opposition, opposer makes the
following comments at page 2 of its trial brief: “Because
no answer to the amended notice of opposition has been filed
within the time set, opposer is entitled to a default
judgment under 37 CFR 2.106(a). However, opposer believes
that it is also entitled to a judgment on the merits, and
respectively requests such.”
At page 2 of its trial brief dated May 12, 1997,
applicant explained its failure to file an answer to the
amended notice of opposition in the following fashion:
“When applicant received notice of opposer’s motion to
amend, applicant called the [interlocutory attorney] of
record to inquire about opposer’s motion. Applicant was
informed that the bar to granting such a motion was very low
and that it was likely that opposer’s motion would be
granted. Applicant stated to the [interlocutory attorney]
Opposition No. 94,948
5
that such being the case applicant would not oppose the
motion. Applicant was not told, and did not know, that it
was still necessary to file a response to the motion to
avoid a potential default judgment. Applicant assumed that
not filing a response would only mean that the motion was
uncontested, thereby expediting the process of allowing
opposer’s motion, and having the overall effect of
shortening the length of time it would take to conclude
these proceedings. Applicant apologizes to this Board for
this misunderstanding. However, opposer has requested
judgment on the merits, and have prepared their case in
anticipation of this. Therefore, applicant submits that
opposer has not been unduly prejudiced by applicant’s
failure to file an answer.”
Trademark Rule 2.106(a) provides that “if no answer is
filed within the time set, the opposition may be decided as
a case of default.” (Emphasis added). By not filing a
motion for a default judgment after the time had lapsed for
applicant to file an answer pursuant to this Board’s order
of September 4, 1996, opposer has created a situation where
applicant, operating pro se, has gone to the considerable
effort of preparing a 31 page trial brief. In addition,
applicant filed with this Board on September 3, 1996 his
notice of reliance with exhibits attached thereto. Under
such circumstances, the Board will not enter a default
Opposition No. 94,948
6
judgment in favor of opposer. Instead, this case will be
decided on the merits. Moreover, it is clear from
applicant’s brief that he would have denied the pertinent
allegations of Count II of the amended notice of opposition.
At page 27 of its brief, applicant contends that he coined
the term TREKNOLOGY in April 1991 and first used this term
in June 1991, prior to opposer’s alleged first use of said
term in August 1991. Moreover, at page 26 of his brief,
applicant alleges that opposer’s use of the word TREKNOLOGY
“does not qualify as trademark usage.”
Opposer’s record in this case consists of the testimony
depositions (with exhibits) of Jerry Norquist, Pat Sullivan
and Howard Gordon. In addition, by means of a notice of
reliance, opposer has also made of record, among other
things, applicant’s responses to certain of opposer’s
interrogatories and requests for admissions, and a certified
status and title copy of opposer’s pleaded Registration No.
1,168,276 for the mark TREK for “bicycles and bicycles
frames.” In a second notice of reliance, opposer has made
of record certified status and title copies of its
registrations for the marks TREK 100 and TREKKING. Neither
of these marks were even mentioned in opposer’s notice of
opposition or amended notice of opposition. Hence, in our
likelihood of confusion analysis, we will give no
consideration to these two registrations.
Opposition No. 94,948
7
Applicant has attempted to make of record by means of a
notice of reliance what it characterizes as “printed
publications and official records.” Presumably, applicant
is attempting to rely upon Trademark Rule 2.122(e) entitled
“Printed publications and official records.” However, the
majority of the documents attached to applicant’s notice of
reliance are simply not printed publications or official
records, and thus, do not form part of the evidentiary
record. Many of applicant’s documents are what applicant
characterizes as “sales catalogs.” It has been held that
such sales catalogs do not constitute publications
“available to the general public,” and hence are not
admissible by means of a notice of reliance. Glamorene
Products Corp. v. Earl Grissmer, 203 USPQ 1090, 1092 (TTAB
1979). In addition, applicant has attempted to make of
record by means of its notice of reliance a list of third-
party trademark registrations. Such a list does not
constitute either a printed publication or an official
record, and thus is not admissible. See Trademark Trial and
Appeal Board Manual of Procedure (1st ed. 1995) at Section
703.02(b). Finally, applicant seeks to make of record by
means of its notice of reliance a letter from applicant to
IBM dated June 28, 1991, and a response from IBM to
applicant dated September 14, 1991 (applicant’s exhibits 14b
and 14c). It is clear that “letters [are] not properly
Opposition No. 94,948
8
submitted into evidence under a notice of reliance pursuant
to Trademark Rule 2.122(e) since they are neither printed
publications nor official records.” Cadence Industries
Corp. v. Kerr, 225 USPQ 331, 332 (TTAB 1980). The exclusion
of these letters is of particular pertinence inasmuch as
applicant relies upon these letters to attempt to
demonstrate that it was applicant who first used the term
TREKNOLOGY.
On the other hand, applicant has properly made of
record by means of its notice of reliance advertisements and
an article from newspapers and magazines. Moreover, by
means of a supplemental notice of reliance, applicant has
properly made of record third-party trademark registrations.
While opposer notes at page 7 of its brief that these third-
party registrations were “not submitted in the form of
status copies showing title,” it is clear that third-party
registrations need not be in the form of certified status
and title copies. See Trademark Trial and Appeal Board
Manual of Procedure (1st ed. 1995) at Section 703.02(b).
Turning to the merits of this case, we note at the
outset that priority of use rests with opposer. Of course,
in addition, opposer has properly made of record its
Registration No. 1,168,276 for TREK depicted in typed
capital letters for “bicycles and bicycle frames.” As
previously noted, this registration issued on September 8,
Opposition No. 94,948
9
1981 with a claimed first use date anywhere and in commerce
of March 10, 1977.
Indeed, applicant has admitted that opposer first used
its TREK mark on bicycles “at least as early as March 10,
1977.” (Applicant’s responses to opposer’s requests for
admission nos. 41 and 42.). In 1988, opposer first used its
TREK mark on bags. (Norquist deposition 31). Opposer first
promoted its TREK bags in its TREK catalog of 1989. The
bags appearing in this 1989 catalog bearing the TREK
trademark included not only bags or packs designed
specifically for use on bicycles, but also fanny packs,
packs designed to hold water bottles and larger, general
purpose athletic bags. (Opposer’s exhibit no. 12 at page
entitled TREK GEAR).
In September 1991, opposer first introduced its
TREKNOLOGY program to its dealers. Opposer’s TREKNOLOGY
program “was a way for Trek Bicycle dealers to bring in the
highly technical and generally higher priced bicycle
products that Trek offered to the marketplace.” (Norquist
deposition 36). Opposer’s TREKNOLOGY program was introduced
to bicycle purchasers in March 1992 in a multi-page
“pullout” appearing in Bicycle magazine. (Opposer’s exhibit
21). This pullout advertisement has as its title, in large
letters, the following: “Introducing The Revolutionary
Modern Art Of High Treknology.” On most pages of this
Opposition No. 94,948
10
pullout, there appears the word TREKNOLOGY within a circular
design device. Opposer has demonstrated that it has
continuously used the term TREKNOLOGY in connection with the
promotion of its products since 1991. (Sullivan deposition
7).
In view of the fact that many of applicant’s exhibits
were not properly made of record, and in particular exhibits
14b and 14c, applicant’s earliest priority date is the
filing date of its application for TREKNOLOGY and design,
namely, March 8, 1993. By that time, opposer had long since
been making use of TREK on bicycles and various types of
bags/packs including specifically athletic bags. In
addition, while opposer did not make technical trademark use
of the term TREKNOLOGY, opposer had long prior to March 8,
1993 used this term to promote its entire line of products
including bicycles and bags. We should also note that even
if applicant’s exhibits 14b and 14c had properly been made
of record, these exhibits do not demonstrate that applicant
used the term TREKNOLOGY in a public fashion. Exhibit 14b is
letter dated June 28, 1991 from applicant to IBM wherein
applicant talks of its Treknology Security System. Exhibit
14c is a response from IBM to applicant dated September 14,
1991 wherein IBM states that “we have no interest in
pursuing your offer of a license to the [personal security
system] invention.” Thus, not only was applicant’s June
Opposition No. 94,948
11
1991 use of TREKNOLOGY not exposed to be public, but in
addition, said use was not in connection with bags or packs
of any type. Rather, it was in connection with a personal
security system for computers.
Turning to the issue of likelihood of confusion, we
note that applicant’s mark TREKNOLOGY and design is depicted
in a manner such that the design feature separates the TREK
portion of applicant’s mark from a NOLOGY portion of
applicant’s mark. Stated somewhat differently, the TREK
portion of applicant’s mark clearly stands out by itself.
Obviously, the TREK portion of applicant’s mark is identical
to opposer’s TREK mark.
Moreover, we note that long prior to applicant’s filing
date of March 8, 1993, opposer had made very extensive use
of its mark TREK on bicycles since 1977 and had made
significant use of its mark TREK on athletic bags and other
bags/packs since at least 1988. Indeed, opposer’s use of
TREK in connection with higher priced bicycles has been so
long standing and so extensive that applicant has
acknowledged that, at least with regard to such higher
priced bicycles, opposer’s mark TREK “is very well known.”
(Applicant’s brief page 16). Based on a complete review of
the record, we concur with applicant’s accessment that is
applied to higher priced bicycles, the mark TREK is very
well known. Indeed, at least with regard to this particular
Opposition No. 94,948
12
product category (i.e. higher priced bicycles), we find that
opposer’s mark is a famous mark.
Of course, in support of its Section 2(d) claim,
opposer relies not only upon its rights in the mark TREK for
bicycles, but also upon its rights in the mark TREK for
athletic bags and other bags/packs. In this regard, we note
that the goods of the parties are identical. That is to
say, applicant’s chosen description of goods for its
TREKNOLOGY and design application includes athletic bags,
the very same type of bags on which opposer has continuously
used its TREK mark since 1988.
Based upon the foregoing, we find there exists a
likelihood of confusion resulting from applicant’s use of
TREKNOLOGY and design in connection travel bags and athletic
bags and opposer’s use of its famous mark TREK in connection
with bicycles. We also find there exists a likelihood of
confusion resulting from applicant’s use of its mark for the
aforementioned goods and opposer’s prior use of its mark
TREK for legally identical goods (i.e. athletic bags). In
making these two separate determinations, we have taken into
account that applicant has chosen to depict its mark
TREKNOLOGY and design in a manner such that the design
feature splits the TREK portion of applicant’s mark from the
NOLOGY portion of applicant’s mark. Moreover, we have also
taken into account that long prior to applicant’s filing
Opposition No. 94,948
13
date, opposer had made use of the identical term TREKNOLOGY,
not as a technical trademark, but rather as a term to
promote its bicycles and bags/packs. In our view, opposer’s
prior use of TREKNOLOGY to promote opposer’s TREK bicycles
and TREK bags simply enhances the likelihood that consumers
will assume that applicant’s TREKNOLOGY and design bags
emanate from opposer. In light of our finding that there
exists a likelihood of confusion as to Count I of opposer’s
amended notice of opposition, we elect not to consider
whether or not there exists a likelihood of confusion as to
Count II of opposer’s amended notice of oppostion. That is
to say, we elect not consider whether opposer’s prior use of
TREKNOLOGY as a promotional term in and of itself and of
itself and applicant’s subsequent “use” of TREKNOLOGY and
design for bags is likely to cause confusion.
In arguing that there is no likelihood of confusion,
applicant has alleged that TREK is a widely used term by
third parties; that TREK is “relatively weak because of its
generic and descriptive nature” (applicant’s brief page 24);
and that there have been no instances of actual confusion.
Suffice it to say, there simply is no evidence that the term
TREK has been used extensively by others. The third-party
registrations made of record by applicant do not show that
the marks containing the term TREK are in use, and they
certainly do not show the extent of use of TREK by others.
Opposition No. 94,948
14
Moreover, again because of applicant’s failure of proof, we
have no way of knowing the extent of applicant’s use of TREK
in connection with bags so as to make a judgment as to
whether there has been the opportunity for actual confusion
to have occurred. Finally, applicant’s contention that TREK
is “generic and descriptive” is simply not supported by any
evidence of record. Moreover, with regard to opposer’s TREK
mark for bicycles, given the fact that opposer has a
registration for this mark for bicycles, applicant’s
allegation that TREK is descriptive and generic for bicycles
constitutes an impermissible collateral attack on opposer’s
registration. See 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, Section 20:22 at page 20-46 (4th ed.
1997) and cases cited therein.
In conclusion, we wish to reiterate that our finding of
likelihood of confusion is based, in part, on the fact that
opposer’s TREK mark is famous for higher priced bicycles and
on the fact that certain of opposer’s goods for which it is
the prior user of TREK (i.e. athletic bags) are absolutely
identical to certain of applicant’s goods as set forth in
the application. As our primary reviewing in Court as
stated, it is beyond dispute that “more protection against
confusion [should be afforded] for famous marks.” Kenner
Parker Toys v. Rose Art, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). Likewise, our primary reviewing Court has
Opposition No. 94,948
15
stated that “when marks would appear on virtually identical
goods or services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Decision: The opposition is sustained.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board