Trek Bicycle Corporationv.Tektite Industries, Inc.

Trademark Trial and Appeal Board

Aug 5, 2008

No. 91164982 (T.T.A.B. Aug. 5, 2008)

Mailed: 8/5/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Trek Bicycle Corporation
v.
Tektite Industries, Inc.
_____

Opposition No. 91164982
to application Serial No. 78124164
filed on April 25, 2002
_____

Mary Catherine Merz and Ameen Imam of Merz & Associates for
Trek Bicycle Corporation.

Joseph F. Posillico and Lisa B. Lane of Synnestvedt &
Lechner for Tektite Industries, Inc.
______

Before Quinn, Hohein and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Tektite Industries, Inc. filed an application to
register the mark TREK for “flashlights.” The application
alleges first use anywhere and first use in commerce on
January 10, 1997.
Trek Bicycle Corporation opposed registration. As
grounds for opposition opposer asserts that applicant’s
mark, when used in connection with applicant’s goods, so
resembles opposer’s famous mark TREK, previously used and
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91164982
2
registered for bicycles and bicycle parts and accessories,
including lights, as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations regarding the likelihood of confusion claim.
Applicant set forth several allegations captioned as
“Affirmative Defenses” that amplify the reasons why it
believes there is no likelihood of confusion between the
parties’ marks.
The record consists of the pleadings; the file of the
involved application; trial testimony, taken by each party,
with related exhibits;1 status and title copies of opposer’s
pleaded registrations, applicant’s responses (including
documents) to certain of opposer’s interrogatories, and
excerpts from printed publications, all introduced by way of
opposer’s notices of reliance; and copies of five third-
party registrations and one application, all for the mark
TREK, made of record by applicant’s notice of reliance.
Both parties filed briefs.
Evidentiary Objections
Applicant first objects to all documents opposer
introduced as trial evidence, due to opposer’s alleged
failure to produce those documents during discovery “as
fully indicated and articulated in Applicant’s Motion In

1 Applicant took the testimony of Scott Mele, its president and
chief executive officer. The transcript was filed with the Board
concurrently with the brief at final hearing.
Opposition No. 91164982
3
Limine filed on August 27, 2007, which motion is repeated
and renewed here.”
As opposer is quick to point out in response,
applicant’s earlier motion was denied by the Board in an
order dated August 27, 2007 following a telephone
conference. Further, as spelled out by opposer, opposer
informed applicant that the documents were available to
applicant for inspection, but applicant, despite several
indications that it wished to inspect the documents, never
followed through with the inspection.
Applicant’s first objection is therefore overruled.
As for applicant’s second objection, applicant seeks to
strike the testimony, and related exhibits, of Messrs. Joe
Siefkes (opposer’s vice president for finance) and Patrick
Sullivan (opposer’s general manager of aftermarket
products). Applicant contends that the testimony was
“improperly presented” because the witnesses were never
identified during discovery.
As opposer has responded, it was not required, in
advance of trial, to identify all of its witnesses.
Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2041 (TTAB 1989). Moreover, applicant did not
avail itself of the opportunity to cross examine those
witnesses, nor did it request an extension or postponement
if it felt that the circumstances of the substitution of
Opposition No. 91164982
4
witnesses left it inadequately prepared to cross examine the
witnesses. Beech Aircraft Corp. v. Lightning Aircraft Co.,
Inc., 1 USPQ2d 1290, 1291 (TTAB 1986).
Accordingly, applicant’s second objection is overruled.
Applicant next objected to opposer’s third notice of
reliance on the grounds that the documents were never
properly authenticated, that a proper foundation was
lacking, and that the documents are inadmissible hearsay.
The documents relied upon are printed publications
available to the general public in libraries or of general
circulation among members of the general public.
The documents relied upon in the notice of reliance
were properly introduced. The listed publications qualify
for submission by notice of reliance because they are
considered essentially self-authenticating. TBMP §704.08
(2d ed. rev. 2004). In connection with the hearsay
objection, the printed publications are probative only for
what they show on their face, not for the truth of the
matters contained therein.2
In view thereof, applicant’s third objection is
overruled.
Finally, applicant objected to all documents comprising
surveys, consumer studies and Internet articles introduced

2 Contrary to opposer’s contention, the hearsay objection may be
timely raised in the brief, rather than by a motion to strike.
TBMP § 707.02(c) (2d ed. rev. 2004).
Opposition No. 91164982
5
during Mr. Sullivan’s testimony. Applicant objected on the
grounds that the documents were not properly authenticated,
that a proper foundation was not laid, and that the
documents are inadmissible hearsay.
Mr. Sullivan testified that the documents were kept in
opposer’s ordinary course of business. Further, Mr.
Sullivan had personal knowledge of the documents and the
information contained therein. Thus, the documents are
properly of record and have been given appropriate probative
value.
Applicant’s fourth objection is accordingly overruled.
In sum, we have considered the entire record presented
to us, and we have given the testimony and documents
whatever probative value is merited.
The Parties
Opposer has been manufacturing bicycles and related
bicycle products for over thirty years and, in the process,
has become the second largest bicycle company in the world.
Although its specific sales figures for the United States
have been designated “confidential,” we are able to
generally state that its annual sales under the mark TREK
are in the hundreds of millions of dollars and that its
sales this decade exceed one billion dollars. Opposer’s
annual advertising expenditures are in the tens of millions
of dollars. Opposer began using its mark TREK in connection
Opposition No. 91164982
6
with bicycle lights in 1993, and total sales of opposer’s
lighting products in 2006 exceeded one million dollars.
Applicant has been using its mark TREK in connection
with flashlights since 1996. In that time applicant has
sold more than one million flashlights under the mark.
Applicant’s first flashlights were designed for use in scuba
diving, and applicant later expanded its line of flashlights
into high-end outdoor use, mountain climbing use, fire and
police department use, and military use.
Standing
Opposer has established its standing to oppose
registration of the mark in the involved application. In
particular, opposer has properly made its pleaded
registrations of record (see infra) and, further, has shown
that it has a personal interest in this proceeding.
Opposer’s use of and registrations for its marks establish
that opposer has standing. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Opposer introduced during its testimony period
certified copies of its sixteen pleaded registrations
covering its TREK marks and TREK-formative marks. Such
Opposition No. 91164982
7
copies show each registration to be subsisting and owned by
opposer. The registrations include registration of the mark
TREK for, inter alia, “bicycles, bicycle frames, and a full
line of parts and accessories for bicycles, namely ...
lighting systems for bicycles.”3 The other valid and
subsisting registrations are of the mark TREK or marks
including TREK as a portion thereof, including TREKKING,
TREK 100, ETREK, TREKLITE, TREKBIKES.COM, TREK TRAVEL, TREK
UNIVERSITY and TREKER. In addition to bicycles, and bicycle
parts and accessories, the various registered marks cover a
variety of goods and services, including bicycle apparel,
orienteering equipment and clothing for outdoor sporting
activities, backpacks, fanny packs, saddle bags, all purpose
sports bags, off-road all-terrain utility vehicles, non-
alcoholic beverages, on-line retail and wholesale store
services, bicycle touring services, and arranging travel
tours featuring outdoor activities such as hiking, river
rafting and bicycling.
As indicated above, we highlight opposer’s Registration
No. 2060274 because, of all the pleaded registrations, that
one is closest to the involved application in terms of the
similarities between the goods and the identity between the
marks.

3 Registration No. 2060274, issued May 13, 1997; renewed.
Opposition No. 91164982
8
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only
issue to decide herein is likelihood of confusion.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence. The relevant
du Pont factors in the proceeding now before us are
discussed below.
The Marks
Turning first to the marks in this proceeding, the TREK
marks are identical in sound, appearance, meaning and
commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
Opposition No. 91164982
9
USPQ2d 1689 (Fed. Cir. 2005). This factor heavily favors
opposer.
Fame
Inasmuch as opposer introduced evidence bearing on the
fame of its TREK mark, we now turn to consider this du Pont
factor. Fame of the prior mark plays a dominant role in
likelihood of confusion cases featuring a famous mark. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). Fame for likelihood of
confusion purposes arises “as long as a significant portion
of the relevant consuming public ... recognizes the mark as
a source indicator.” Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694.
The relevant consuming public herein comprises the general
public.
Opposer has continuously used its mark TREK for over
thirty years. Opposer’s sales figures under the mark TREK,
both in terms of revenue dollars and units sold, are
impressive. As indicated earlier, opposer’s annual sales
under the mark TREK are in the hundreds of millions of
dollars; opposer’s sales this decade exceed one billion
dollars. Further, opposer has expended great effort in
Opposition No. 91164982
10
promotional activities to support the mark TREK. Annual
advertising expenditures are in the tens of millions of
dollars. The purchasing public has been exposed to the mark
TREK in a variety of national publications such as Time,
Sports Illustrated and Bicycling. Opposer has sponsored two
professional cycling teams, the U.S. Postal Team and the
Discovery Channel team. Opposer’s mark also has been the
beneficiary of unsolicited publicity, especially in the
years Lance Armstrong rode TREK bikes on his way to an
unprecedented seven-straight wins in the Tour de France
bicycle race. Armstrong has been pictured in many
advertisements and articles riding a TREK bike and wearing
clothing that both prominently display opposer’s TREK mark.
Surveys conducted by independent magazines featuring
bicycles and bicycling-related information show strong TREK
brand awareness among the bicycle-purchasing public.
Based on the record before us, we find that the mark
Trek is famous for bicycles and bicycle accessories. These
accessories include opposer’s bicycle lighting systems. Our
finding of fame in the present case is consistent with the
Board’s finding of fame in Trek Bicycle Corp. v. Alyx Fier,
56 USPQ2d 1527 (TTAB 2000).
The fame factor weighs heavily in opposer’s favor.
Opposition No. 91164982
11
The Goods
It is well established that the goods of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there
is a likelihood of confusion as to the source of the goods.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In comparing the goods, we initially note that where
identical marks are involved, as is the case here with
respect to opposer’s mark TREK, the degree of similarity
between the parties’ goods that is required to support a
finding of likelihood of confusion declines. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir.
1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d
Opposition No. 91164982
12
1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001).
Opposer’s “lighting systems” include bicycle headlights
that may be attached to the handlebars by way of a clamp.
These lights are sold separate and apart from opposer’s
bicycles or other lights. The headlights are removable and,
according to Mr. Sullivan, can be used as a flashlight. Mr.
Sullivan testified that “consumers could use TREK lights in
a wide variety of circumstances,” including night bicycle
riding, camping and as a flashlight during outdoor
activities. (Sullivan dep., p. 16). Opposer’s headlights,
as shown in the pictures in opposer’s catalogs, look very
similar to a typical, hand-held flashlight.
Mr. Mele testified that detachable bicycle lights are
not flashlights, but he acknowledged that it is “certainly
possible to dismount [the bicycle] and use the light for
other purposes.” (Mele dep., p. 73). Mr. Mele also
acknowledged that it is possible for one of applicant’s TREK
flashlights to be part of the packed gear of a bicyclist who
is riding a TREK bicycle. (Mele dep., p. 84). Mr. Mele
further testified that “[w]e certainly had correspondence
from people asking if products are suitable for use on
bicycles. Usually we reply in the negative.” (Mele dep.,
p. 24). Mr. Mele indicated this happened on six occasions.
(Mele dep., p. 72).
Opposition No. 91164982
13
We find that opposer’s bicycle lights and applicant’s
flashlights are sufficiently related that, when sold under
the identical mark TREK, confusion is likely to occur among
consumers in the marketplace. Both goods serve the same
purpose and, because opposer’s headlights are detachable
from the bicycle, it is inevitable that bicyclists may use
the headlight as a flashlight when necessary.
With respect to trade channels and classes of
purchasers, it is well settled that the question of
likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods identified in opposer’s pleaded
registration(s). Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where
the goods in the application at issue and/or in the pleaded
registration(s) are broadly identified as to their nature
and type, such that there is an absence of any restrictions
as to the channels of trade and no limitation as to the
classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods
of the nature and type described therein, but that the
identified goods are offered in all channels of trade which
would be normal therefore, and that they would be purchased
by all potential buyers thereof. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Opposition No. 91164982
14
In the present case, both the identifications in the
application and the pertinent pleaded registration have no
restrictions relating to trade channels or classes of
purchasers. Normal trade channels for bicycles and bicycle
accessories include retail bicycle stores. However, normal
trade channels also include the same mass merchandisers
(e.g. Wal-Mart, Target, Sears and the like) that sell
flashlights. Further, the goods would be bought by the same
consumers, and these would include ordinary ones who would
exercise nothing more than ordinary care in making their
purchasing decision involving such goods.
The similarities between the goods, trade channels and
purchasers are factors that weigh in opposer’s favor.
Third-Party Uses and Registrations
The record includes a dictionary definition of the term
“trek” showing the term means “journey or leg of a journey,
migration.” Webster’s New Twentieth Century Dictionary of
the English Language (unabridged ed. 1983). Given this
commonly understood and recognized meaning of “trek,” it is
not surprising that others have been attracted to adopt it
as a mark for their various goods and services.
Mr. Mele testified about several third-party uses of
TREK marks. These uses have no impact on the degree of
distinctiveness of opposer’s mark for bicycles and bicycle
accessories. Firstly, the uses are in connection with goods
Opposition No. 91164982
15
(and services) far different from the types involved herein
(e.g., barcode scanners, medical equipment, musical
instruments and air ambulance services). Secondly, there is
no evidence bearing on the extent of use of these marks by
the third parties. That is to say, there is no information
concerning actual revenues under the marks or that the
public is familiar with such marks. See Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995).
Applicant also introduced five third-party
registrations of the mark TREK for a variety of goods and
services (e.g., floor varnishes and sealers, shock
absorbers, internal combustion engines, office furniture and
educational services), but none related to bicycles. As
often stated, third-party registrations are not evidence of
use of the marks shown therein, or that consumers have been
exposed to them. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973). Thus, while
we have considered the third-party registrations to the
extent that they act like a dictionary definition showing
that a term has a normally understood meaning (as shown by
the dictionary definition itself), they are of limited
probative value in deciding this case. Red Carpet Corp. v.
Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406
(TTAB 1988). The one application is evidence of nothing
Opposition No. 91164982
16
more than that it was filed. Moreover, this evidence has no
effect on the level of distinctiveness of opposer’s mark.
Mr. Mele indicated that he selected the mark TREK “to
indicate outdoor travels of one description or another ...
an outdoorsy feel.” (Mele dep., p. 15). To the extent that
opposer’s mark TREK is a suggestive mark, applicant’s mark
conveys a similar suggestion (namely, of an outdoor
journey).
This factor is neutral.
Actual Confusion
Opposer has not presented any evidence of actual
confusion, and Mr. Mele testified that he is unaware of any
instances of actual confusion. The absence of actual
confusion does not compel a different result in the
likelihood of confusion analysis. Although each party is
unaware of any actual confusion over a twelve-year period of
contemporaneous use of the marks, evidence of actual
confusion is not essential to proving a case of likelihood
of confusion. Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). This
factor is neutral or, at best, weighs only slightly in
applicant’s favor.
Bad Faith Intent
Opposer contends that opposer contacted applicant prior
to the time applicant’s mark was published, yet applicant
Opposition No. 91164982
17
“refused to heed Trek’s warnings.” Further, applicant was
on constructive notice of opposer’s TREK registered marks,
and, opposer contends, it must be assumed that applicant’s
attorney would have apprised applicant of opposer’s prior
trademark rights. Opposer also argues that applicant has
misused the registration symbol (applicant’s mark was the
subject of an inadvertently issued registration), “an
obvious indication of applicant’s bad faith in its trademark
use of TREK.” (Brief, pp. 33-34).
At the time applicant adopted its mark, Mr. Mele was
unaware of opposer’s use of its mark TREK in the bicycle
field. Suffice it to say that opposer’s bad faith argument
is not supported by the record. We have given no weight to
opposer’s contentions in this regard. This factor is
neutral.
Conclusion
Upon balancing the relevant du Pont factors, we
conclude that consumers familiar with opposer’s bicycles and
bicycle accessories, namely lighting systems for bicycles
sold under its famous mark TREK would be likely to believe,
upon encountering applicant’s mark TREK for flashlights,
that the goods originate with or are somehow associated with
or sponsored by the same entity.
Lastly, to the extent that there may be any doubt on
our finding of likelihood of confusion, we resolve that
Opposition No. 91164982
18
doubt, as we must, in favor of opposer as the prior user and
registrant. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., Id.
Decision: The opposition is sustained and registration
to applicant is refused.