No. 91213696 (T.T.A.B. Jan. 19, 2018)

Trek Bicycle Corporationv.Celestron Acquisition LLC

Trademark Trial and Appeal BoardJan 19, 2018

No. 91213696 (T.T.A.B. Jan. 19, 2018)

This Opinion is Not a Precedent of the TTAB Hearing: January 11, 2018 Mailed: January 19, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Trek Bicycle Corporation v. Celestron Acquisition LLC _____ Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 _____ Catherine Merz and Jennifer A. Widmer of Merz & Associates, P.C., for Trek Bicycle Corporation. Michael K. Grace of Grace+Grace LLP, For Celestron Acquisition LLP. _____ Before Bergsman, Wolfson and Lynch, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Celestron Acquisition LLC (“Applicant”) seeks registration on the Principal Register of the marks listed below: Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 2 - TREKGUIDE (standard characters) for “barometer; magnetic compasses; thermometers,” in International Class 9;1 THERMOTREK (standard characters) for “electric hand warmers,” in International Class 11;2 and TREKCEL (standard characters) for “transformers; portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets,” in International Class 9.3 Trek Bicycle Corporation (“Opposer”) filed Notices of Opposition against the registration of Applicant’s marks on the ground of likelihood of confusion under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d). Opposer alleges first and continuous use of its TREK trademarks in connection with bicycles and bicycle parts and accessories and ownership of numerous TREK trademark registrations including the registrations listed below: • Registration No. 2060274 for the mark TREK (typed drawing) for, inter alia, “bicycles” and “lighting systems for bicycles,” in Class 12, and “cycling computers,” in Class 9;4 1 Application Serial No. 86042283 (Opposition No. 91213696) was filed on August 19, 2013, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 1, 2011. 2 Application Serial No. 86022350 (Opposition No. 91213957) was filed on July 29, 2013, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s claim of bona fide intent to use the mark in commerce. 3 Application Serial No. 86013814 (Opposition No. 91213962) was filed on July 18, 2013, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s claim of bona fide intent to use the mark in commerce. 4 Registered May 13, 1997; second renewal. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 3 - • Registration No. 2745442 for the mark TREK for “bicycling apparel, namely, bicycling jersey; form fitting and reinforced seat elastic shorts; ankle length socks; wind resistant jackets with enhanced visibility fabric, extra sleeve length, high collar and extended length back panel; vests with enhanced visibility fabric, high collar and extended length back panel,” in Class 25, and “padded and reinforced fingerless bicycling gloves,” in Class 28;5 and • Registration No. 4077999 for the mark PRO TREK (standard characters) for “electric wrist watches,” in Class 14.6 Applicant, in its Answers, denied the salient allegations in the Notices of Opposition. Proceedings were consolidated in the Board’s November 14, 2014 Order.7 I. Preliminary Issues A. Numerous evidentiary objections. The parties have lodged numerous objections. None of the evidence sought to be excluded is outcome determinative. Moreover, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations. As necessary and appropriate, we will point out any limitations in the evidence or otherwise note that the evidence cannot be relied 5 Registered August 23, 2003; renewed. 6 Registered December 27, 2011; Sections 8 and 15 affidavits accepted and acknowledged. 7 9 TTABVUE. Citations to the prosecution history entries in TTABVUE are to Opp. No. 91213696 unless otherwise indicated. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 4 - upon in the manner sought. We have considered all of the testimony and evidence introduced into the record. In doing so, we have kept in mind the various objections raised by the parties and we have accorded whatever probative value the subject testimony and evidence merit. B. Illegible exhibits. Numerous evidentiary exhibits are illegible.8 It is the responsibility of the party making submissions to the Board via the electronic database to ensure that the testimony or evidence has, in fact, been properly made of record. See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 170, 1758 n.16 (TTAB 2013) (“the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board”); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible and identified as to source and date.”). We have given illegible evidence probative value to the extent that we can read and understand what it says. 8 See e.g., Opposer’s fourth notice of reliance (26 TTABVUE), Opposer’s amended fourth notice of reliance (29 TTABVUE), Opposer’s sixth notice of reliance (30 TTABVUE), Opposer’s seventh notice of reliance (31 TTABVUE), and Opposer’s twelfth notice of reliance (36 TTABVUE). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 5 - C. Improper designation of testimony and evidence as confidential. Because, as in these proceedings,9 parties routinely improperly designate testimony and evidence as confidential, the rules were amended to permit the Board to disregard the confidential designation when appropriate. Pursuant to Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), “[t]he Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.” D. Applicant’s objection to Opposer’s notice of reliance on webpages retrieved from the WAYBACK MACHINE website. During its case-in-chief, Opposer filed a notice of reliance on excerpts from websites explaining how the WAYBACK MACHINE search and retrieval function operates and from Applicant’s website advertising its TREKGUIDE products retrieved from the WAYBACK MACHINE search and retrieval engine.10 Applicant filed an objection to Opposer’s notice of reliance on the evidence retrieved from the WAYBACK MACHINE search and retrieval engine on the ground that that “there is no foundation to establish that such content is reliable evidence of the past appearance of webpages at specific times in the past. The proffered evidence 9 See e.g., Applicant’s responses to Opposer’s interrogatories (25 TTABVUE), Opposer’s Brief, p. 15 (81 TTABVUE 21) (redacting the name of a sporting goods store that sells Opposer’s products). 10 42 TTABVUE. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 6 - is not reliable, especially when the best evidence is a screenshot or printout taken directly from the actual live website on that given day.”11 Applicant, during its testimony period, filed a notice of reliance on excerpts from the Bontrager.com, the Trekbikes.com, and the Celestron.com websites printed from the WAYBACK MACHINE search and retrieval engine.12 Applicant waived its objection to Opposer’s notice of reliance on evidence retrieved from the WAYBACK MACHINE search and retrieval engine by introducing its own notice of reliance on evidence retrieved from the WAYBACK MACHINE search and retrieval engine. Cf. Miss Am. Pageant v. Petite Prod. Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (“a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary.”); Sentrol, Inc. v. Sentex Sys., Inc., 231 USPQ 666, 667 (TTAB 1986) (parties who served identical discovery requests on each other in effect waived their right to object and must answer each request completely); Textronix, Inc. v. Tek Assoc., Inc., 183 USPQ 623, 623 (TTAB 1974) (each party was estopped from objecting to interrogatory requests served upon them by the opposing party which were essentially the same requests); Gastown Inc. of Del. v. Gas City, Ltd., 180 USPQ 477, 477 (TTAB 1974) (opposer must answer applicant’s interrogatories which are similar to those which were served by opposer upon applicant). 11 49 TTBVUE 3. 12 73 TTABVUE 2-21, 27-38. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 7 - II. The Record. The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files.13 The record also includes the following testimony and evidence: A. Opposer’s testimony and evidence.14 1. Notice of reliance on copies of Opposer’s pleaded registrations showing their current status and title;15 2. Notice of reliance on excerpts from printed publications in general circulation;16 3. Notice of reliance on Applicant’s responses to Opposer’s interrogatories;17 13 Accordingly, it was redundant and unnecessary for Applicant to introduce its trademark applications in its first notice of reliance (57 TTABVUE 4-24) and its fifteenth notice of reliance (58 TTABVUE 15-19). 14 We give no consideration to Opposer’s First Rebuttal Notice of Reliance (74 TTABVUE) because it is product packaging and product packaging is not matter that may be introduced into evidence through a notice of reliance. The types of evidence admissible by notice of reliance are identified in in Trademark Rules 2.122(d)(2) (registration owned by a party to a proceeding), 2.122(e)(1) (printed publications and official records), 2.122(e)(2) (Internet materials) and 2.120(k) (discovery depositions, initial disclosures, and answers to interrogatories and requests for admission). See Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g). Likewise, we give no consideration to Applicant’s notices of reliance on the BONTRAGER Trip 100 Bicycle Computer packaging posted at 57 TTABVUE 107-109 and 60 TTABVUE 42- 49. 15 22 TTABVUE. 16 23 TTABVUE. 17 24 TTABVUE. Applicant’s responses to Opposer’s interrogatories designated as confidential are posted on 25 TTABVUE. As noted above, Applicant improperly designated its responses as confidential (e.g., the products that have been sold in connection with Applicant’s mark and the general sale price and suggested list price for each products at 25 TTABVUE 6-7). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 8 - 4. Notice of reliance on excerpts from shopcasio.com;18 5. Notice of reliance on Applicant’s responses to Opposer’s requests for admissions;19 6. Notice of reliance on excerpts from third-party websites purportedly to show advertising of Opposer’s TREK gloves;20 7. Notice of reliance on excerpts from third-party websites purportedly to show advertising of Opposer’s TREK arm, knee and leg warmers;21 8. Notice of reliance on excerpts from Opposer’s websites and third-party websites purportedly to show advertising of Opposer’s TREK computers;22 18 26 TTABVUE. The excerpts are partially illegible and difficult to read. Opposer filed an amended notice of reliance at 29 TTABVUE, but the excerpts remain partially illegible. As noted in the “Preliminary Issues,” we will give such partially illegible documents consideration to the extent that we can read them. 19 27 TTABVUE. Applicant’s responses to Opposer’s requests for admission designated as confidential are posted on 28 TTABVUE. 20 30 TTABVUE. As noted above, these excerpts while generally illegible may be clear enough to have limited probative value. 21 31 TTABVUE. As noted above, these excerpts are also partially illegible. Also, these excerpts were printed on November 13, 2015 or January 29, 2016, after the filing date of Applicant’s applications, and therefore do not support Opposer’s assertion of priority. Dean Gore’s testimony that Opposer has been selling arm warmers “for years” is not sufficient to prove Opposer’s priority. Gore Testimony Dep., p. 65 (55 TTABVUE 69). See Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (while the clear implication of opposer’s testimony was that it was using its mark prior to applicant’s constructive use date, the testimony did not clearly state when opposer began using its mark and, therefore, opposer failed to prove priority); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1722-23 (TTAB 2008) (testimony was not specific enough to establish priority). Because there is no testimony or evidence that Opposer used the TREK mark to identify these products prior to the filing date of Applicant’s applications, on the record before us, Opposer does not have priority for these goods. 22 32 TTABVUE. While these excerpts are generally illegible, they may be clear enough to have limited probative value. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 9 - 9. Notice of reliance on excerpts from Applicant’s website and third-party websites purportedly to show advertising of Applicant’s TREKGUIDE digital compasses which include a barometer and thermometer, and the sale of bicycle accessories by these same retailers;23 10. Notice of reliance on excerpts from third-party websites purportedly to show advertising of Applicant’s TREKCEL power packs, as well as advertising for bicycle products;24 11. Notice of reliance on excerpts from third-party websites purportedly to show advertising of Applicant’s THERMOTREK hand warmers, as well as advertising for bicycle products;25 12. Notice of reliance on excerpts from Amazon.com purportedly to show advertising for Applicant’s TREKGUIDE, TREKCEL and THERMOTREK products, as well as bicycles and bicycle accessories;26 23 33 TTABVUE. While these excerpts are generally illegible, they may be clear enough to have limited probative value. 24 34 TTABVUE. These excerpts are partially illegible. 25 35 TTABVUE. While these excerpts are generally illegible, they may be clear enough to have limited probative value. 26 36 TTABVUE. These excerpts are totally illegible and, therefore, have no probative value. In any event, because Amazon.com sells numerous unrelated products, even if the excerpts were legible, the evidence would have little probative value regarding whether the goods are related and whether the products are offered in the same channels of trade. See Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899-100 (Fed. Cir. 2000) (absent some evidence that the products are sold in close proximity to one another, the fact that the products at issue are sold in supermarkets did not weigh in favor of confusion being likely); Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1142 (TTAB 2009) (“It has long been held that the mere fact that two different items can be found in a supermarket, department store, drugstore or mass merchandiser store is not a sufficient basis for a finding that the goods are related.”). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 10 - 13. Notice of reliance on excerpts from third-party websites purportedly to show the strength of Opposer’s TREK trademark;27 14. Notice of reliance on three non-precedential Board decisions purportedly to show the strength of Opposer’s TREK trademarks;28 15. Notice of reliance on excerpts from Opposer’s website and third-party websites purportedly to show the breadth of goods identified by the TREK mark, channels of trade and the similarity of the goods of the parties;29 16. Notice of reliance on excerpts from two third-party websites purportedly to show the channels of trade for Applicant’s products;30 17. Notice of reliance on excerpts from third-party websites purportedly to show Opposer’s TREK mark used in connection with headlights;31 18. Notice of reliance on Internet website excerpts purportedly to explain the WAYBACK MACHINE search and retrieval engine and excerpts from Applicant’s website purportedly to show how Applicant’s TREKGUIDE product has been marketed;32 27 37 TTABVUE. Opposer filed an amended notice of reliance posted on 45 TTABVUE. 28 38 TTABVUE. Opposer filed an amended notice of reliance posted on 46 TTABVUE. 29 39 TTABVUE. These excerpts are partially illegible. 30 40 TTABVUE. 31 41 TTABVUE. The evidence in this notice of reliance displays BONTRAGER branded products, not TREK brand products. On the other hand, the websites appear to show that the online retailers sell other TREK branded products or are independent TREK dealers. 32 42 TTABVUE. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 11 - 19. Notice of reliance on excerpts from two third-party websites purportedly to show the channels of trade for Opposer’s products;33 20. Notice of reliance on excerpts from third-party websites purportedly to show information about the data compiling services provided by Datalogix, Inc.;34 21. Notice of reliance on the discovery deposition of Michelle Meskill, Applicant’s Marketing Manager;35 22. Testimony deposition of Lisa Farina, a paralegal for Opposer’s counsel’s law firm;36 23. Testimony deposition of Chad Brown, Opposer’s Chief Financial Officer;37 24. Testimony deposition of Dean Gore, Opposer’s Vice President of Marketing;38 33 43 TTABVUE. 34 44 TTABVUE. 35 47 TTABVUE. The portions of the Meskill deposition designated confidential are posted on 48 TTABVUE. 36 51 TTABVUE. 37 53 TTABVUE. The portions of the Brown deposition designated confidential are posted on 54 TTABVUE. 38 55 TTABVUE. The portions of the Brown deposition designated confidential are posted on 56 TTABVUE. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 12 - 25. Notice of reliance on excerpts from the discovery deposition of Dean Gore which Opposer asserts that “in fairness be considered so as to make not misleading what was offered by” Applicant;39 and 26. Excerpts from websites purportedly showing the TREK BONTRAGER Trip 200 Computer being offered for sale and listing its functions.40 B. Applicant’s testimony and evidence. 1. Notice of reliance on excerpt from the Bontrager.com website purportedly depicting bicycle computer accessories;41 2. Notice of reliance on excerpt from the Bontrager.com website purportedly depicting bicycle computer accessories;42 3. Notice of reliance on Opposer’s website purportedly depicting bicycle computer accessories;43 4. Notice of reliance on excerpts from the discovery deposition of Dean Gore, Opposer’s Vice President of Marketing;44 39 75 TTABVUE. Opposer filed an amended notice of reliance posted on 77 TTABVUE. Opposer also filed a notice of reliance on confidential portions of the Dean Gore discovery deposition posted on 79 TTABVUE. 40 76 TTABVUE. While these excerpts are generally illegible, they may be clear enough to have limited probative value. 41 73 TTABVUE 2-6. 42 73 TTABVUE 7-11. 43 73 TTABVUE 12-21. 44 57 TTABVUE 41-68 and 67 TTABVUE 11-16. The portions of the Gore deposition designated confidential are posted on 59 TTABVUE. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 13 - 5. Notice of reliance on excerpts from third-party websites purportedly depicting Opposer’s bicycle travel computers;45 6. Notice of reliance on excerpts from Applicant’s website purportedly depicting a handheld compass, thermometer and barometer;46 7. Notice of reliance on excerpts from Applicant’s website purportedly depicting a portable electric charger;47 8. Notice of reliance on excerpts from Applicant’s website purportedly depicting electric hand warmers;48 and 9. Testimony deposition of Michelle Meskill, Applicant’s Marketing Manager.49 III. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. SeeEmpresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s standing to oppose registration of Applicant’s marks is established by its pleaded registrations, which the record shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. 45 57 TTABVUE 69-103 and 67 TTABVUE 17-20. 46 73 TTABVUE 22-26. 47 73 TTABVUE 27-33. 48 73 TTABVUE 34-38. 49 61 TTABVUE 2-46. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 14 - Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P'ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). IV. Priority Because Opposer’s pleaded registrations are of record, priority is not at issue with respect to the goods identified in Opposer’s pleaded registrations. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). V. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant or for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 15 - Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. The strength and fame of Opposer’s TREK mark. In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on the marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (5th ed. 2017) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). Market Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 16 - strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at 1899. 1. The inherent strength of Opposer’s TREK trademark. The word “Trek” is defined, inter alia, as “to travel or migrate, especially slowly or with difficulty” and as “a journey or trip, especially one involving difficulty or hardship.”50 When TREK is used in connection with bicycles or bicycle accessories, it is inherently distinctive. As noted above, Opposer has made of record its pleaded TREK registrations which are not subject to any counterclaims for cancellation. The registrations are “prima facie evidence of the validity of the registered mark[s] and of the registration of the mark[s], of the owner’s ownership of the mark[s], and of the owner’s exclusive right to use the registered mark[s] in commerce on or in connection with the goods or services specified in the certificate.” Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). In assessing the inherent strength of Opposer’s TREK mark, we note that there is no testimony or evidence regarding the number and nature of similar marks in use on similar goods or third-party registrations consisting in whole, or in part, of the word “Trek.” See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (the extent of third-party use or 50 Dictionary.com based on the Random House Dictionary (2017). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). See also Meskill Testimony Dep., p. 9 (61 TTABVUE 10) (“Trek is a word that defines a long outdoor walk or journey.”). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 17 - registrations may indicate that a term carries a suggestive or descriptive connotation and is weak for that reason). 2. The commercial strength of Opposer’s TREK trademark. Opposer alleges that “[p]rior to the first use date for Applicant’s Mark, [Opposer’s] TREK mark had become famous for [Opposer’s] goods and services.”51 Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 54 USPQ2d at 1897; Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). “[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003))). Fame may be measured indirectly by the volume of sales of and advertising expenditures for the goods and services identified by the marks at issue, “the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice, by independent sources, of the 51 Notice of Opposition ¶11 (1 TTABVUE 19). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 18 - products identified by the marks, as well as the general reputation of the products and services. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06, 1309. Although raw numbers of product sales and advertising expenses sometimes suffice to prove fame, raw numbers alone may be misleading. Some context in which to place raw numbers may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services). Id. at 1309. Finally, because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Opposer introduced the following evidence to prove that TREK is a famous mark: • From 2009 through 2015, Opposer’s sales and advertising and marketing expenditures in the United States have been substantial;52 • Opposer has sponsored the U.S. Postal Service professional bicycling team. The team wears jerseys displaying the TREK trademark and the TREK marks were 52 Brown Testimony Dep., pp. 3-7 and Exhibits 1 (54 TTABVUE 7-11 and 35) (Confidential). Because Opposer’s sales and advertising and marketing expenditures were designated confidential, we refer to them only in general terms. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 19 - purportedly featured on priority mail envelopes available through the U.S. Postal Service;53 • The TREK trademark has appeared on a bicycle on the front of a WHEATIES cereal box;54 • The TREK trademark has received publicity in magazines and newspapers in general circulation, including, but limited to, Allure Magazine, Autoweek, Maxim, Men’s Health, Men’s Journal, Outside Buyer’s Guide, Popular Science, Design, Chicago Tribune, Time, Sports Illustrated, New York Times, and Consumer Reports;55 • Lance Armstrong, multiple winner of the Tour de France bicycle race, rode TREK bicycles;56 • Consumers visit Opposer’s website 40 million times per year;57 • Bicycling.com, the online component of Bicycling Magazine, conducted a reader’s survey in 2012 and reported that TREK was the brand owned by most responders;58 and 53 Gore Testimony Dep., pp. 13-14 and Exhibit 101 (55 TTABVUE 17-18 and 159). The photograph on the envelope purportedly showing the racing team wearing jerseys displaying the TREK trademark is illegible. 54 Gore Testimony Dep., pp. 15-16 and Exhibits 102 and 103 (55 TTABVUE 19-20 and 161- 163). 55 23 TTABVUE. 56 23 TTABVUE 41-42, 47, 49, 51-52, 57, 59, 85, 91, 101 and 104. 57 Gore Testimony Dep., p. 51 (55 TTABVUE 55). 58 Gore Testimony Dep., pp. 37-39 and Exhibit 108 (55 TTABVUE 41-43 and 170). See also 45 TTABVUE 10. Applicant objects to the results of the reader’s survey and to the National Bicycle Dealer’s Association “Industry Overview 2014, discussed below, on the grounds that they lack Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 20 - • The National Bicycle Dealers Association “Industry Overview 2014” reported that TREK was the largest company “specializing in bicycles for the independent bicycle dealer channel of trade.”59 While Applicant “agrees” that TREK “is a well-known trademark in the United States for middle-market bicycles,” it argues that TREK is not entitled to a “monopoly over the use of the word ‘trek’ as a component of a mark for all goods that might be used outdoors.”60 We agree, but nevertheless find that the Opposer’s TREK mark is famous for bicycles and bicycle accessories. Nevertheless, we hasten to add that having found Opposer’s TREK mark to be famous does not end the likelihood of confusion analysis. While the fame of Opposer’s TREK mark must be accorded great weight in a likelihood of confusion analysis, “fame alone cannot overwhelm the other du Pont factors as a matter of law.” Recot foundation, are speculative, and are hearsay. 83 TTABVUE 17-18. However, they are admissible pursuant to Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2) (“Internet materials may be admitted into evidence under a notice of reliance … in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.”). Such documents are admissible only to show what has been printed, not the truth of what has been printed. See Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1040 (TTAB 2010). On the other hand, Applicant’s objection to the NPD Group data on industry market share (Brown Testimony Dep., pp. 20-23 (53 TTABVUE 24-27) and Brown Confidential Testimony Dep., pp. 13-15 and Exhibit 4 (54 TTABVUE 17-19 and 39)) at 83 TTABVUE 19 is sustained because Opposer failed to lay a foundation for that evidence. Chad Brown’s testimony that Opposer pays for a subscription to NPD, a company that provides information to various industries, does not lay the proper foundation because the testimony does not tell us what kind of information is provided, how that information is compiled, or whether Opposer relies on the information in the ordinary course of its business. 59 45 TTABVUE 47, 50. 60 Applicant’s Brief, p. 9 (83 TTABVUE 10). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 21 - Inc. v. M.C. Becton, 54 USPQ2d at 1898; see also Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983) (“The fame of the [plaintiff’s] name is insufficient in itself to establish likelihood of confusion under §2(d).”). The strength of Opposer’s TREK mark is a du Pont factor that weighs in Opposer’s favor. B. The similarity or dissimilarity and nature of the goods. 1. Applicant’s “barometer; magnetic compasses; thermometers.” Opposer is the owner of Registration No. 2060274 for the mark TREK for, inter alia, “cycling computers.” Opposer’s TREK INCITE ALPINE cycling computer includes a compass function and Opposer’s TREK INCITE 9i WIRELESS (a cycling computer) includes a temperature gauge.61 The computers may be removed from the bicycle for handheld use.62 Opposer’s cycling computer and Applicant’s digital compass are similar in appearance, size and mobility which goes to the ability to use them in a similar manner for similar purposes as evidenced by Applicant’s having advertised its TREKGUIDE compass for use in connection with bicycling.63 Applicant’s TREKGUIDE product and Opposer’s TREK cycling computer are reproduced below: 61 Gore Testimony Dep., Exhibit 112 (56 TTABVUE 120-128) (a catalogue improperly designated as confidential). 62 Gore Testimony Dep., p. 22 (56 TTABVUE 26) (improperly designated as confidential). 63 Meskill Discovery Dep., p. 26 (47 TTABVUE 13). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 22 - Applicant’s TREKGUIDE 64 Opposer’s TREK cycling computer65 Opposer is the owner of Registration No. 4077999 for the mark PRO TREK for “electric wrist watches.” The watches may include a thermometer and compass function.66 Considering the fame accorded to Opposer’s TREK mark when used in connection with bicycles and bicycle accessories and the fact that Opposer’s cycling computers and wrist watches may include a thermometer and compass function, and are used in similar contexts for outdoor sporting activities, they are related to Applicant’s magnetic compasses and thermometers, which can be used for similar purposes. 2. Applicant’s “electric hand warmers.” Consumers use Applicant’s THERMOTREK hand warmer by holding it in their hands. It is a mobile device that one can carry in a bag or affix to the wrist while on the move. 64 57 TTABVUE 24; see also Applicant’s TREKGUIDE specimen filed with its application. 65 39 TTABVUE 13. 66 26 TTABVUE 6, 8, 10, and 16. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 23 - Q. Is this a product [THERMOTREK electric hand warmer] that’s suitable for use on a bicycle? A. You can take it with you in a bag or, you know, it has a wrist strap when you are on a bike. Q. Is it meant to be mounted on a bike? A. No.67 A THERMOTREK package is reproduced below:68 Opposer argues that because Applicant’s THERMOTREK electric hand warmers have a strap for affixing to one’s wrist, they “could be worn while bicycling” and, therefore, they are related to Opposer’s bicycles and bicycle accessories because they can be carried by a bicycle rider.69 In other words, electric hand warmers and bicycles are complementary products. 67 Meskill Testimony Dep., p. 13 (61 TTABVUE 14). 68 27 TTABVUE 114. 69 Opposer’s Reply Brief, p. 5 (84 TTABVUE 8). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 24 - Further, Applicant’s easily portable TREKGUIDE, TREKCEL and THERMOTREK products do not have to be mounted on a bicycle, or used while sitting on a bike, for them to be effectively used by a cyclist or consumers of [Opposer’s] products.70 While bicycle riders may carry electric hand warmers, the use of electric hand warmers is not conducive to safe bicycle riding because it works when the user holds it in his/her hands.71 Thus, we doubt that consumers perceive an electric hand warmer as being associated with bicycles or bicycle accessories inasmuch as it is counter-intuitive that a product you hold in your hands to use would be related to a bicycle which requires the use of both hands. There is no testimony or evidence that bicycle riders use electric hand warmers.72 Opposer is the owner of Registration No. 2745442 for the mark TREK for “bicycling apparel, namely, bicycling jersey; form fitting and reinforced seat elastic shorts; ankle length socks; wind resistant jackets with enhanced visibility fabric, extra sleeve length, high collar and extended length back panel; vests with enhanced visibility fabric, high collar and extended length back panel,” in Class 25, and “padded and reinforced fingerless bicycling gloves,” in Class 28. 70 Id. 71 Meskill Testimony Dep., p. 13 (61 TTABVUE 14). 72 Ms. Meskill’s testimony that a webpage advertising its THERMOTREK electric hand warmer may be used by “men, women, kids, climb, bike, hike, camp, run, travel, and life, snow, water, your; all,” is problematical for two reasons. See Meskill Discovery Dep., pp. 38- 39 and Exhibit 13 (47 TTABVUE 16 and 46). First, it refers to a webpage posted on www.mec.ca, a Canadian website. There is no testimony or evidence regarding the extent to which consumers in the United States, if any, access that website when shopping for products used in any of those activities. Second, because the website is partially illegible, we cannot find or read the excerpt quoted in the testimony. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 25 - There is no evidence or testimony regarding how an electric hand warmer and Opposer’s apparel, including bicycling gloves, are related products. Nevertheless, Opposer argues that it is developing battery-powered clothing and that electric hand warmers fall within Opposer’s natural zone of expansion.73 However, there is no evidence that consumers expect electric hand warmers and battery-powered clothing to emanate from the same source. Among the factors to be considered in determining whether an expansion, either actual or potential, is natural are: (1) whether the second area of business (that is, the subsequent user's area of business, into which the first user has or potentially may expand) is a distinct departure from the first area of business (of the prior user), thereby requiring a new technology or know-how, or whether it is merely an extension of the technology involved in the first area of business; (2) the nature and purpose of the goods or services in each area; (3) whether the channels of trade and classes of customers for the two areas of business are the same, so that the goodwill established by the prior user in its first area of business would carry over into the second area; and (4) whether other companies have expanded from one area to the other. See: Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37 (TTAB 1981), and Porta-Tool, Inc. v. DND Corp., 196 USPQ 643 (TTAB 1977). Finally, the determination of whether an expansion is or would be natural must be made on the basis of the circumstances prevailing at the time when the subsequent user first began to do business under its mark, i.e., what was “natural” in the relevant trade at that time. See: Viking Boat Co., Inc. v. Viking Camper Supply, Inc., 191 USPQ 297 (TTAB 1976). Mason Eng’g and Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 962 TTAB 1985). There is no testimony or evidence regarding factors one (whether battery 73 Opposer’s Brief, p. 27 (81 TTABVUE 33). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 26 - powered clothing is a distinct departure from Opposer’s existing products) and four (evidence that third parties offer both products indicating that an entity could expand its business to include both types of goods) and there is no testimony or evidence regarding any of the factors as of Applicant’s 2013 constructive use date. We find that the record does not support the relatedness of Opposer’s clothing products and bicycling gloves to Applicant’s electric hand warmers. 3. Applicant’s “transformers; portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets.” Opposer introduced excerpts from third-party websites advertising the sale of a TREKCEL combination power charger and flashlight.74 Opposer also introduced evidence that it sells TREK bicycle lights that may be removed from a bicycle and used as a flashlight.75 Opposer contends that because Opposer’s bicycle lights may be used as a flashlight and Applicant’s power charger may be combined with a flashlight, bicycle lights and power chargers are related.76 We disagree. This evidence shows that both parties sell goods that may generally be referred to as “lights.” Applicant’s TREKCEL combination power charger and flashlight does not fall within the TREKCEL application description of goods which encompasses “portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets.” 74 34 TTABVUE. 75 55 TTABVUE 67, 190-193. 76 Applicant’s Brief, p. 27 (81 TTABVUE 33). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 27 - Q. And can you describe for the Court here, the Board, exactly what is meant by a charger? What is it’s [sic] function? A. You can charge it through your computer USB and then you can take it out into the field with you and recharge your handheld computer, like smart phones and iPads.77 It is axiomatic that we must consider the goods as they are described in the application and registration at issue. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). Also, we do not read limitations into the identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). Therefore, we must not presume that Applicant’s power chargers as described in the description of goods include flashlights. 77 Meskill Testimony Dep., p. 12 (61 TTABVUE 13). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 28 - There is no testimony or evidence regarding how Opposer’s bicycle lights are related to Applicant’s power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets. Accordingly, we cannot find that bicycle lights and power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets are related products. C. Established, likely-to-continue channels of trade. 1. TREKGUIDE TREKGUIDE products are widely available through all of Applicant’s dealers78 and through various “mass retailers and specialty stores,” such as “B and H, Gulls, Maynards [sic], Canadian Tire, High Point Scientific,” and “Walmart.com.”79 Applicant promoted its TREKGUIDE products at the 2012 and 2013 Outdoor Retailer Show, the 2012 and 2014 CES Show, and the 2014 Shot Show.80 Applicant has marketed its TREKGUIDE products in connection with bicycles because bicycling is an outdoor activity.81 Applicant’s TREKGUIDE products are sold through its own website (celestron.com),82 as well as the websites listed below, none of which appear to 78 Meskill Discovery Dep., p. 20 (47 TTABVUE 11). 79 Meskill Testimony Dep. pp. 21-22 (61 TTBVUE 22-23). 80 Applicant’s response to Opposer’s Interrogatory No. 7 (24 TTABVUE 13). 81 Meskill Discovery Dep., p. 26 (47 TTABVUE 13). See also Applicant’s response to Opposer’s request for admission No. 5 and Exhibit B (27 TTABVUE 8-9 and 19); Applicant’s supplemental response to Opposer’s request for admission No. 5 and Exhibit B (27 TTABVUE 32-33 and 41); 42 TTABVUE 20-53. 82 33 TTABVUE 8. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 29 - advertise the sale of any of Opposer’s TREK products. However, many of the websites feature bicycles or bicycle accessories. • Opticsplanet.com whose menu identifies sport optics, hunting, shooting gear, outdoor gear, apparel, eyewear, “military & tactical,” police, EMS, and fire, “sports & hobbies”, and “lab & science.”83 Opticsplanet.com also advertises a third-party ankle bicycle light, mount, and spoke wheel light.84 • Highpointscientific.com whose menu identifies telescopes, computerized telescopes, telescopes accessories, and telescope mounts.85 There is no evidence that this website advertises bicycles or bicycle accessories. • Adorama.com advertises the sale of a POLOROID bicycle mount for a camera, as well as other third-party bicycle accessories such as a bike mount to hold other products, a seat pack, bicycle light, and a Bluetooth sensor.86 • Astronomics.com advertises the sale of, inter alia, telescopes and spotting scopes.87 • Bhphotovideo.com also advertises third-party bike mounts, cycling computers, and bike lights.88 83 33 TTABVUE 10-20. 84 33 TTABVUE 12-20. 85 33 TTABVUE 22. 86 33 TTABVUE 24-36. 87 33 TTABVUE 38. 88 33 TTABVUE 40-48. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 30 - • Focuscamera.com.89 • Realrecreationusa.com, based on the menu in the website excerpt, appears to be an online department store.90 Inasmuch as Applicant sells its products for use in connection with outdoor sports,91 including bicycling,92 Applicant’s products are offered in the same channels of trade as Opposer’s TREK products to the extent that they are sold to the same consumers. 2. THERMOTREK and TREKCEL “ThermoTrek and TrekCel are limited distribution, so they are not widely available.”93 They are sold to “select retailers,” such as Cabela’s and Target.94 There is no evidence that Cabela’s or Target sell any of Opposer’s TREK products. There is no testimony or evidence that Cabela’s sells bicycles or bicycle accessories. Applicant’s THERMOTREK hand warmers also are sold through the following online websites, none of which advertise the sale of any of Opposer’s TREK products: 89 27 TTABVUE 27. 90 27 TTABVUE 29. 91 Applicant’s response to Opposer’s Interrogatory No. 1 (24 TTABVUE 8, 28 and 47). 92 Meskill Discovery Dep., p. 26 (47 TTABVUE 13). See also Applicant’s response to Opposer’s request for admission No. 5 and Exhibit B (27 TTABVUE 8-9 and 19); Applicant’s supplemental response to Opposer’s request for admission No. 5 and Exhibit B (27 TTABVUE 32-33 and 41); 42 TTABVUE 20-53. 93 Meskill Discovery Dep., p. 20 (47 TTABVUE 11). 94 Meskill Discovery Dep., p. 20 (47 TTABVUE 11). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 31 - • Menards.com, an online retail department store.95 The menu listing the categories of products carried by Menards.com includes building materials, doors and windows, electrical, groceries, home & décor, etc. Menards.com also advertises third- party bicycle accessories. As noted above, evidence that department stores sell the products at issue has limited value in proving that the products are offered in the same channels of trade. See Recot, Inc. v. Becton, 54 USPQ2d at 1899-100; Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d at 1142. • Mackspw.com advertises itself as “America’s Premier Waterfowl Outfitter,” and its menu lists decoys, calls, hunting, hunting clothing, casual, footwear, and bargain blind. There is no evidence that this website advertises bicycles or bicycle accessories.96 • Opticscamp.com advertises itself as selling “Sports Optics & Outdoor Gear,” and its menu lists binoculars, rifle scopes, night vision, spotting scopes, telescopes, scope rings and mounts, as well as Applicant’s products. There is no evidence that this website advertises bicycles or bicycle accessories.97 • Galls.com specializes in public safety equipment and apparel. It also advertises third-party cycling gloves and bike lights.98 95 35 TTABVUE 9-15. 96 35 TTABVUE 17. 97 35 TTABVUE 19. 98 35 TTABVUE 23-25. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 32 - • Midwayusa.com.99 There is no evidence that this website advertises bicycles or bicycle accessories. • Leacockcolemancenter.com.100 There is no evidence that this website advertises bicycles or bicycle accessories. Applicant’s TREKCEL combination power charger and flashlight is advertised on the websites listed below, none which advertise the sale of any of Opposer’s TREK products: • Duckhole.com.101 • Opticscamera.com.102 • Homedepot.com also advertises third-party bicycles and bicycle lights.103 • Huntersrefuge.com.104 Because there is no testimony or evidence that Applicant’s THERMOTREK or TREKCEL products are offered in the same channels of trade as Opposer’s TREK products, we analyze below Opposer’s channels of trade to determine whether there is any similarity. 3. Opposer’s TREK marks. 99 35 TTABVUE 27. 100 35 TTABVUE. 101 34 TTABVUE 6. 102 34 TTABVUE 8. 103 34 TTABVUE 10-14. 104 34 TTABVUE 16. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 33 - Opposer sells its products through independent bicycle dealers and general sporting goods stores. Opposer’s TREK gloves and computers are sold at cahabacycles.com, western-cycle.com, landiscyclery.com, villagecycle.com, topgearbicycleshop.com, trekbicyclestores.com, trekbikestoreusa.com, trekbicyclesuperstore.com, trekbikes.com, suncyclecenter.com, bloomfieldbike.com, bontrager.com, bertsbikes.com, revolutioncycles.com, and casio-usa.com.105 Also TREK computers are sold through trekdg.com, trekstorecincinnati.com, and wheelworks.com.106 There is no evidence that these websites advertise Applicant’s TREKGUIDE, TREKCEL, or THERMOTREK products. Kristi Mountain Sports (kristiemountainsports.com) and Seacoast Sports (seacoastsports.com) advertise the sale of TREK bicycles, as well as camping equipment, clothing, electronics, eyewear, footwear, maps, and ski equipment.107 There is no evidence that either of these websites advertise Applicant’s TREKGUIDE, TREKCEL, or THERMOTREK products. Opposer, in its brief, asserts that both parties sell their products at Scheel’s sporting goods store.108 Although we cannot find the supporting evidence in the 105 30-32 and 39 TTABVUE. 106 32 TTABVUE. 107 43 TTABVUE. Opposer does not include any evidence that these retailers advertise the sale of Applicant’s products. 108 Opposer’s Brief, p. 28 (82 TTABVUE 34) (improperly designated as confidential). Opposer cited to the record ROF, A.8 and B.3, but there is no definition to interpret those citations. Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 34 - record, and neither party cited to it, Applicant acknowledged and addressed Opposer’s assertion that both parties sold products at Scheel’s sporting goods store.109 Inasmuch as there is only one retailer who assertedly sells the products of both parties, one third party that sells Applicant’s THERMOTREK product as well as bicycle accessories, and two third parties that sell Opposer’s bicycles as well as electronics, we find that the evidence is insufficient to prove that Applicant’s electric hand warmers and portable chargers are offered in the same channels of trade as Opposer’s bicycles and bicycle accessories. In other words, it is unlikely that the same consumers will encounter Applicant’s products and Opposer’s products in the same marketing milieu. D. The nature and extent of any actual confusion. While Opposer concedes that it has not proven that there are any reported instances of actual confusion, it argues that this du Pont factor is neutral because it is not required to prove actual confusion.110 The absence of any reported instances of confusion is meaningful if the record indicates appreciable and continuous use by Applicant of its mark for a significant period of time in the same markets as those served by Opposer under its marks. In 109 Applicant’s Brief, p. 9 (83 TTABVUE 10). Applicant did not identify that portion of the record referring to Scheel’s sporting goods store. 110 Opposer’s Brief, p. 29 (81 TTABVUE 35). Michelle Meskill, Applicant’s Marketing Manager, testified that she is unaware of any reported instances of confusion between Applicant’s TREKGUIDE, TREKCEL, and THERMOTREK products and Opposer’s TREK products. Meskill Testimony Dep., p. 23 (61 TTABVUE 24). See also Applicant’s response to Opposer’s Interrogatory No. 14 (26 TTABVUE 18). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 35 - other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. See Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). Applicant first used TREKGUIDE in connection with digital compasses in January 2011.111 Applicant first used its TREKCEL and THERMOTREK marks in October 2013.112 Applicant has sold approximately 50,000 units of the TREKGUIDE, TREKCEL, and THERMOTREK products.113 Opposer’s sales of electronic products from 2009-2015 have been substantial.114 Moreover, we have previously found that Opposer’s TREK mark is famous for bicycles and bicycle accessories, and Applicant’s TRKEGUIDE products are offered through the same channels of trade.115 Therefore, at the time of trial, there had been 4-6 years of simultaneous use of actively marketed products under the marks in some of the same channels of trade, particularly with respect to Applicant’s TREKGUIDE products, with no reported instances of confusion. Based on this evidence, we find that there has been a reasonable 111 Meskill Testimony Dep., p. 21 (61 TTABVUE 22); Applicant’s response to Opposer’s Interrogatory No. 3 (24 TTABVUE 9). 112 Meskill Testimony Dep., p. 28 (61 TTABVUE 29). 113 Meskill Testimony Dep. p. 21 (61 TTBVUE 22). 114 Brown Testimony Dep., p. 7 and Exhibit 1 (54 TTABVUE 11 and 35) (Confidential). 115 Opposer argues that its publicity is “far reaching” and that its “famous status has been underscored by appearances in, or on the cover of, numerous high-profile, general circulation publications as well as publications in the field of cycling.” Opposer’s Brief, p. 26 (81 TTABVUE 32). Opposer also asserts that “the market place bears out the overlap in the parties’ channels of trade.” Opposer’s Brief, p. 28 (81 TTABVUE 34). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 36 - opportunity for confusion to have occurred with respect to Applicant’s TREKGUIDE mark and that the lack of any reported instances of confusion weighs against finding that there is a likelihood of confusion. Because we find that Applicant’s TREKCEL and THERMOTREK products are offered in different channels of trade and have been offered for sale for only 2-3 years of simultaneous use with Opposer’s TREK products, we find that there has not been a reasonable opportunity for actual confusion to have occurred and this factor is neutral with respect to these marks. E. The similarity or dissimilarity of the marks. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d at 1905); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 37 - Applicant’s marks TREKGUIDE, TREKCEL, and THERMOTREK are similar to Opposer’s TREK marks because they share the term “Trek” and, to that extent, they are similar in appearance and sound. In addition, the word “Guide” in the mark TREKGUIDE for a “magnetic compass,”116 the term “Cel” in the mark TREKCEL for “portable electrical power chargers,”117 and the term “Thermo” in the mark THERMOTREK for “electric hand warmers”118 are descriptive thereby making the word “Trek” the dominant portion of the marks that consumers are likely to remember. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a 116 The word “Guide” is defined, inter alia, as “to assist (a person) to travel through, or reach a destination in, an unfamiliar area, as by accompanying or giving directions to the person” and “ a person who guides, especially one hired to guide travelers, tourists, hunters, etc.” Dictionary.com based on the Random House Dictionary (2017). 117 The word “Cell” is defined, inter alia, as “Electricity. a. Also called battery, electrical cell, electrochemical cell, galvanic cell, voltaic cell. a device that generates electrical energy from chemical energy, usually consisting of two different conducting substances placed in an electrolyte.” Dictionary.com based on the Random House Dictionary (2018). 118 The term “Thermo” is defined as “a combining form meaning ‘heat,” ‘hot,’ used in the formation of compound words: thermoplastic.” Dictionary.com based on the Random House Dictionary (2018). Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 38 - mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. As noted above, the word “Trek” is defined as a long or difficult trip. When “Trek” is used in connection with bicycles or bicycle accessories it means and engenders the commercial impression of products for traveling. The mark TREKGUIDE used in connection with a barometer, thermometer or compass, means and engenders the commercial impression of assistance or an assistant for traveling or pointing the way or path to take. The mark TREKCEL used in connection with “transformers; portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets” means and engenders the commercial impression of an energy source for use on a journey. The mark THERMOTREK used in connection with an electric hand warmer means and engenders the commercial impression of a heat source for a journey. While there are differences between Opposer’s TREK mark and Applicant’s TREKGUIDE, TREKCEL, and THERMOTREK marks, in view of the fame of Opposer’s mark and the fact that the commercial impression of all the marks center on a traveling or a long, difficult journey, we find that the similarities of the marks outweigh the differences. “[T]he tolerance for similarity between competing marks varies inversely with the fame of the prior mark.” Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 22 USPQ2d at 1456; see also B.V.D. Licensing v. Body Action Design, Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 39 - 846 F.2d 727, 6 USPQ2d 1719, 1722 (Fed. Cir. 1988) (Nies, J., dissenting) (“a purchaser is less likely to perceive differences from a famous mark.”) (emphasis in original). Accordingly the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. F. Analyzing the factors. “When an opposer’s trademark is a strong, famous mark, it can never be ‘of little consequence.’ The fame of a trademark may affect the likelihood purchasers will be confused inasmuch as less care may be taken in purchasing a product under a famous name.” Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Thus, an applicant has the obligation to avoid confusion with the well-known marks of others. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.3d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). In view of the fame of Opposer’s TREK mark, the similarity of TREKGUIDE and TREK, the fact that Applicant’s “barometer; magnetic compasses; thermometers” are related to Opposer’s cycling computers, and that those goods are offered in the same channels of trade, we find that Applicant’s TREKGUIDE mark for “barometer; magnetic compasses; thermometers” is likely to cause confusion with Opposer’s registered TREK mark for “cycling computers.” On the other hand, because Applicant’s THERMOTREK mark for “electric hand warmers” and TREKCEL mark for “transformers; portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets” are not related to the products in any of Opposer’s pleaded registrations and that Opposition No. 91213696 Opposition No. 91213957 Opposition No. 91213962 - 40 - those products are not offered in the same channels of trade, we find that Applicant’s marks THERMOTREK and TREKCEL are not likely to cause confusion with Opposer’s TREK marks in any of Opposer’s pleaded registrations. Decision: Opposition No. 91213696 involving Application Serial No. 86042283 for the mark TREKGUIDE is sustained and registration to Applicant is refused. Opposition No. 91213957 involving Application Serial No. 86022350 for the mark THERMOTREK is dismissed. Opposition No. 91213962 involving Application Serial No. 86013814 for the mark TREKCEL is dismissed.