Trek Bicycle Corporationv.Christina Isaacs

Trademark Trial and Appeal Board

Aug 4, 2021

91232164 (T.T.A.B. Aug. 4, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: May 5, 2021 Mailed: August 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Trek Bicycle Corporation
v.
Christina Isaacs
_____

Opposition No. 91232164
_____

Mary Catherine Merz of Merz & Associates PC
for Trek Bicycle Corporation.

David A. Lowe of Lowe Graham Jones PLLC
for Christina Isaacs.
_____

Before Kuhlke, Greenbaum and English,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Christina Isaacs, seeks registration of the following marks on the
Principal Register:
RANGER TREK (in standard characters) for “Children’s
activity books; Crayons; Decals; Markers; Pencils;
Publications, namely, journals, newsletters and workbooks
in the fields of national parks; Stickers” (International
Class 16); “Backpacks; Hiking bags; Sports bags; Travel
bags” (International Class 18); “Lunchboxes”
(International Class 21); “Hats; Jackets; Shirts”
(International Class 25); “Ornamental novelty badges”
(International Class 26); “Stuffed dolls and animals”
Opposition No. 91232164

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(International Class 28); and “Providing information, news
and commentary in the field of recreation and leisure
activities; Provision of information in the field of
recreational activities, namely, national parks”
(International Class 41);1
(Outline of the map of the United States
disclaimed; described as consisting of “the term ‘RANGER
TREK’ in a shield design and above a U.S. map design and
two children in uniform”) for “Backpacks; Hiking bags;
Sports bags; Travel bags” (International Class 18);
Lunchboxes (International Class 21); “Hats; Jackets;
Shirts” (International Class 25); “Stuffed dolls and
animals” (International Class 28); “Providing information,
news and commentary in the field of recreation and leisure
activities; Provision of information in the field of
recreational activities, namely, national parks”
(International Class 41);2 and
(EXPEDITION JOURNALS and the outline of
the map of the United States disclaimed; described as
consisting of “the term ‘RANGER TREK EXPEDITION
JOURNALS’ in a shield design and above a U.S. map
design and two children in uniform”) for “Children’s
activity books; Crayons; Decals; Markers; Pencils;
Publications, namely, journals, newsletters and workbooks
in the fields of national parks; Stickers” (International
Class 16); and “Providing information, news and
commentary in the field of recreation and leisure activities;
Provision of information in the field of recreational

1 Serial No. 87123067, filed August 1, 2016, based on an allegation of a bona fide intention to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Serial No. 87123091, filed August 1, 2016, based on an allegation of a bona fide intention to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91232164

3

activities, namely, national parks” (International Class
41).3
Opposer, Trek Bicycle Corporation, has opposed registration of Applicant’s marks
on the ground that, as used in connection with Applicant’s goods and services, the
marks so resemble Opposer’s previously used and registered TREK and TREK-
formative marks and TREK trade name, for a variety of goods and services including
backpacks, wind jackets, hats, shirts, stickers and providing news and information in
the field of cycling, as to be likely to cause confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). Amended Not. of Opp., 19 TTABVUE.4 By her
answer, Applicant denies the salient allegations.5 24 TTABVUE.
I. Preliminary Issues
A. Numerous evidentiary objections.
Applicant has asserted numerous objections and Opposer has also asserted
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

3 Serial No. 87123082, filed on August 1, 2016, based on an allegation of a bona fide intention
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
4 Opposer acknowledged it was not pursuing its claim that Applicant lacked a bona fide
intention to use her marks in commerce when she filed the opposed applications, therefore,
that claim is forfeited. Opp. Br., 123 TTABVUE 11 n.1. Cf. Alcatraz Media, Inc. v. Chesapeake
Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded
descriptiveness and geographical descriptiveness claims not argued in brief deemed waived;
respondent’s affirmative defense of failure to state a claim not argued in brief deemed
waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).
5 The asserted defense of failure to state a claim is not a true affirmative defense because it
relates to an assertion of the insufficiency of the pleading. John W. Carson Found. v.
Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). Nonetheless, our consideration of the
opposition illustrates that we find Opposer to have properly set forth a claim of likely
confusion under Section 2(d). Applicant relies on her defense of “Trademark prosecution
history estoppel” as an admission against interest for Opposer, discussed infra.
Opposition No. 91232164

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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 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. Appendices A, C, D, and E to Applicant’s brief
Opposer objects to the entirety of Applicant’s Appendices A, C, D and E as
“attempts to extend the length of Ms. Isaacs’ brief beyond 55 pages, as they do not
represent legitimate evidentiary objections.” 125 TTABVUE 6. Opposer requests that
the Board not consider Applicant’s brief, but if chooses to consider the Appendices A,
D and E, the Board should give the information therein no weight.
Applicant’s brief stands separately and we have considered it. Appendix A is
simply a compilation of Opposer’s pleaded registrations which were made of record.
Although convenient, the table is superfluous and the Board has relied on the
registration printouts made of record. Appendix D is a table of the third-party
registrations made of record during trial. Again, we have relied on the printouts made
of record during trial. Appendix E is essentially further argument presented on
specific materials or facts and we have not considered it. Appendix C-1 suffers from
the same infirmity and has not been considered. Appendix C-2 essentially serves as
an objection to evidence based on a timing issue that is not relevant in this proceeding
brought under Section 2(d) based on a likelihood of confusion where fame may be
Opposition No. 91232164

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shown up through the time of trial, as such, this appendix has also not been
considered.
II. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the files of the applications subject to the notice
of opposition. In addition the record includes:
 Opposer’s 1-16 Notices of Reliance consisting of: 1) TESS printouts of
Opposer’s pleaded and other Registrations (Exhs. A-HH);6 2) excerpts of
online and printed publications showing use of the TREK trade name and
mark;7 3) copies of Board opinions in five other proceedings involving the
TREK mark;8 4) Opposer’s First Set of Requests for Admission and
Applicant’s Responses;9 5) Opposer’s First Set of Interrogatories to
Applicant and Applicant’s Supplemental Responses thereto;10 6) online
publications and promotional materials from 2017 and 2019 showing use
and promotion of the TREK mark and trade name;11 7) excerpts from
National Park Service websites showing the Junior Ranger cycling
programs;12 8) excerpts from the National Park Service and Adventure
Cycling Association showing promotion of cycling in national parks;13 9)
excerpts from the websites of Opposer’s dealers and bike rental shops
located in close proximity to national parks which rent and/or sell TREK
bicycles;14 10) excerpt from Applicant’s website showing National Parks
that have a Junior Ranger Program;15 11) excerpts of articles from online
publications and promotional materials from 2018 about Trek and Trek
products;16 12) screenshots from Opposer’s Facebook page and third-party
websites showing cyclists wearing backpacks;17 13) screenshots of third-
party websites showing TREK children’s bicycles;18 14) screenshots of

6 25 TTABVUE.
7 26 TTABVUE.
8 27 TTABVUE.
9 29 TTABVUE.
10 30 TTABVUE.
11 31 TTABVUE.
12 32 TTABVUE.
13 33 TTABVUE.
14 34 TTABVUE.
15 35 TTABVUE.
16 36 TTABVUE.
17 37 TTABVUE.
18 38 TTABVUE.
Opposition No. 91232164

6

websites showing clothing items bearing Opposer’s design or TREK
marks;19 15) screenshots of websites showing TREK TRAVEL tours in
national parks;20 16) screenshots from Applicant’s social media;21

 Testimony of Dean Gore (Opposer’s Vice President of Marketing),22 and
Peter Kokko (Opposer’s Global Finance Director);23

 Opposer’s Rebuttal Notices of Reliance on 1) screenshots from the National
Park Service websites for various parks and their onsite stores;24 2)
screenshots from Opposer’s websites;25 3) screenshots of Opposer’s and
third-party websites;26 4) additional registrations filed after the Opposition
and issued to Opposer after the first trial period;27 5) screenshots from
National Park Service websites and third-party website on the junior
ranger program;28 6) screenshots from third-party websites about bike
rentals near national parks;29 7) screenshots from the National Park
Service and Federal Highway Administration websites showing guides for
biking;30 8) screenshots from Bureau of Land Management and state park
websites that involve bicycling;31 9) screenshots from Opposer’s travel
website;32 10) screenshots from third-party websites about bicycling in
Dinosaur National Monument Park;33 11) screenshots from third-party
websites about Opposer’s ride sharing program generally and ride sharing
station in the San Antonio Missions National Historic Park;34

 Rebuttal Declaration Testimony of Peter Kokko;35

 Applicant’s Notices of Reliance 1-9 on: 1) several third party registrations
that include the word TREK in various classes;36 2) printout of prosecution

19 39 TTABVUE.
20 40 TTABVUE.
21 41 TTABVUE.
22 62-63 TTABVUE (public); 64 TTABVUE (confidential).
23 65 TTABVUE (public); 66 TTABVUE (confidential).
24 109 TTABVUE.
25 110 TTABVUE.
26 111 TTABVUE.
27 112 TTABVUE.
28 113 TTABVUE.
29 114 TTABVUE.
30 115 TTABVUE.
31 116 TTABVUE.
32 117 TTABVUE.
33 118 TTABVUE.
34 119 TTABVUE.
35 120 TTABVUE (public); 121 TTABVUE (confidential).
36 76 TTABVUE.
Opposition No. 91232164

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history for Opposer’s trademark application Serial No. 87565645 file;37 3)
prior Board decisions;38 4) Opposer’s responses to Applicant’s First Set of
Requests for Admission;39 5) Opposer’s responses to Applicant’s First set of
Interrogatories;40 6) excerpts from Opposer’s website;41 7) dictionary
definitions for the words “trek” and “ranger”;42 8) excerpts from Applicant’s
website;43 9) printout of search results for Opposer’s proceedings before the
Board;44

 Declaration Testimony and Opposer’s oral cross examination of Christina
Isaacs (Applicant),45 Eric Isaacs (Applicant’s Husband),46 Caroline Ward
(owner of Wildlife Artists, Inc.),47 Ron Litton (Operations Manager and
Buyer for the Dinosaur National Monument Cooperating Association),48
Phyllis Bergland (Applicant’s Mother);49 James Koenig (creator of
Applicant’s logos),50 Jennifer Dye (business advisor for Small Business
Development Center).51

III. SECTION 2(d) CLAIM
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a

37 77 TTABVUE.
38 78 TTABVUE.
39 79 TTABVUE.
40 80 TTABVUE.
41 81 TTABVUE.
42 82 TTABVUE.
43 83 TTABVUE.
44 84 TTABVUE.
45 54 TTABVUE; 106 TTABVUE (Opposer’s oral cross examination).
46 55 TTABVUE; 107 TTABVUE (Opposer’s oral cross examination).
47 56 TTABVUE; 99 TTABVUE (Opposer’s oral cross examination).
48 57 and 61 TTABVUE; 100 TTABVUE (Opposer’s oral cross examination).
49 58 TTABVUE; 108 TTABVUE (Opposer’s oral cross examination).
50 59 TTABVUE; 98 TTABVUE (Opposer’s oral cross examination).
51 60 TTABVUE; 97 TTABVUE (Opposer’s oral cross examination).
Opposition No. 91232164

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preponderance of the evidence, that it is entitled to a statutory cause of action, has
priority with respect to its previously used and registered TREK and TREK formative
marks and trade name vis-à-vis Applicant’s marks RANGER TREK, and
, and that Applicant’s use of her marks in connection with her goods and
services is likely to cause confusion, mistake, or deception as to the source or
sponsorship of those goods. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000).
Opposer pleaded and proved 34 registrations for TREK or TREK-formative marks.
Some of the more relevant registrations are summarized below.
 Registration No. 1168276 for the mark TREK for
“Bicycles and Bicycle Frames,” in International
Class 12;
 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 International Class 25;
 Registration No. 2876977 for the mark TREKLITE
for “orienteering equipment and clothing for outdoor
sporting activities, namely, leggings, pants, gators,
shirts, and jackets,” International Class 25;
 Registration No. 3031210 for the mark TREK
TRAVEL for “Arranging travel tours featuring
hiking, river rafting, whale watching, kayaking, and
bicycling; cultural tours, namely, conducting
Opposition No. 91232164

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sightseeing tours for others,” in International Class
39, “Sporting and cultural activities related to
bicycling, namely, wine tastings and cultural tours,
namely, guided tours of wineries,” in International
Class 41 and “Services for providing food and drinks
and temporary lodging for those participating in
bicycling activities and cultural activities related to
bicycling, namely, hiking, river rafting, cultural
tours, wine tastings, whale watching and kayaking,”
in International Class 43;
 Registration No. 3053077 for the mark TREK for
“backpacks, textile tote bags, messenger bags, rack
trunks, saddle bags, bicycle seat packs, all purpose
sports bags,” in International Class 18;
 Registration No. 3516346 for the mark TREK for
“On-line retail and wholesale store services
featuring a wide range of consumer products except
footwear all provided via the Internet,” in
International Class 35;
 Registration No. 3709688 for the mark TREK for
“Powders used in the preparation of sports drinks
and energy drinks,” in International Class 32;
 Registration No. 37896682 for the mark TREK for
“Charitable fund raising services by means of bicycle
rides and entertainment events,” in International
Class 36;
 Registration No. 3979036 for the mark for
“Cycling apparel, namely, jerseys and shorts, hats,
tshirts,” in International Class 25;
 Registration No. 4690248 for the mark
TREKMATES for “Headgear, namely, hats, caps,
gloves; gaiters; clothing, namely, jackets,” in
International Class 25; and
 Registration No. 5004800 for the mark TREK for
“Streaming of audio material on the Internet;
streaming of video material on the Internet;
electronic delivery of images and photos via a global
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computer network,” in International Class 38 and
“Entertainment services, namely, providing a
website featuring multimedia material in the nature
of video recordings, video stream recordings and
podcasts in the field of cycling; providing news and
information in the nature of statistics and trivia in
the field of cycling,” in International Class 41.
A. Entitlement to a Statutory Cause of Action and Priority52
Opposer’s entitlement to a statutory cause of action is a requirement that must be
proven by the plaintiff in every inter partes case. See Australian Therapeutic Supplies
Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020)
(citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109
USPQ2d 2061, 2067 n.4 (2014)). A party in the position of plaintiff may oppose
registration of a mark where such opposition is within the zone of interests protected
by the statute, 15 U.S.C. § 1063, and the party has a reasonable belief in damage that
is proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC,
2020 USPQ2d 11277, *6-7.
As listed above, the record includes status and title copies of Opposer’s pleaded
registrations. In view thereof, Opposer’s entitlement to a statutory cause of action to
oppose registration of Applicant’s mark is established.

52 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain applicable as the tests “share a similar purpose and application.” Corcamore
LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *7 (Fed. Cir. 2020), see also
Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB
2020).
Opposition No. 91232164

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In addition, because the pleaded registrations are not the subject of a
counterclaim, priority is not in issue with respect to the marks and goods and services
in the registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, Opposer has established
prior common law use of the TREK and TREK shield design marks in connection with
stickers (Gore Dep., 62 TTABVUE 78-79, 99-100, 205; Gore Dep. Exhs. 35, 45, 64
TTABVUE (confidential) (includes pictures of TREK stickers for sale).53
B. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973) (DuPont). See also In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019) (Board considers each DuPont relevant factor for which there
is evidence and argument). Two key considerations are the similarities between the
marks and the similarities between the goods and services. In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v.

53 There is insufficient evidence to establish trade name or trademark rights with crayons,
activity books or lunchboxes. Although there is a brief mention of lunchboxes in Mr. Gore’s
testimony (“we’ve done lunchboxes” and they were made “in the mid 2000’s, 2004 or 2005 is
my guess” Gore Dep., 62 TTABVUE 207, 210) it is too vague to establish trade name or
trademark rights.
Opposition No. 91232164

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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); 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., 308 F.3d
1340, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). The other factors for which there is
argument and evidence are the strength of the mark TREK, channels of trade,
conditions of marketing, no actual confusion, and other established facts comprising
intent and admissions against interest.
1. Relatedness of the Goods and Services, Channels of Trade, Classes of
Purchasers, and Conditions of Sale
We turn first to a consideration of the goods and services, channels of trade,
classes of purchasers and conditions of sale. We must make our determinations under
these factors based on the goods and services as they are recited in the registrations
and applications. See 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 sales of the goods are directed.”); In re Elbaum, 211
USPQ 639 (TTAB 1981).
a. Goods and services in International Classes 16, 18, 25 and 41

Opposition No. 91232164

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The subject applications and Opposer’s registrations contain identical and legally
identical goods in International Classes 18 and 25. Specifically, Applicant’s goods in
International Class 18 include “backpacks” and “sports bags,” and Opposer’s
Registration No. 3053077 for the mark TREK includes “backpacks” and “all purpose
sports bags.” Applicant’s goods in International Class 25 are “hats, jackets, shirts,”
and Opposer’s Registration No. 4690248 for the mark TREKMATES includes “hats”
and “jackets.” In addition, because Applicant’s identification of clothing goods is not
restricted it is broad enough to include Opposer’s bicycling jersey and wind resistant
jackets in Registration No. 2745442 for the mark TREK, the shirts and jackets for
outdoor sporting activities in Registration No. 2876977 for the mark TREKLITE, and
the cycling apparel jerseys, hats and tshirts in Registration No. 3979036 for the
TREK and shield design mark, as such, these are legally identical goods.
With respect to International Class 16, Opposer has established trademark rights
in the TREK and TREK shield design marks for stickers, which are identical to the
stickers in Applicant’s International Class 16 identification. It is sufficient for a
finding of likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods or services within a particular class in the
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014). Thus, for the International Class 16 goods, it is sufficient to establish prior
rights in only the stickers.
Opposition No. 91232164

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As to Applicant’s information services in the field of recreation and leisure
activities in International Class 41, there is some inherent relationship to the services
in Opposer’s Registration No. 5004800 for the TREK mark, namely, entertainment
services in the nature of a website featuring video recordings in the field of cycling
and providing news and information in the field of cycling, inasmuch as cycling is
encompassed by Applicant’s broadly worded identification “recreation and leisure
activities.” The first half of Applicant’s Class 41 services is separated by a semi colon
and therefore is not restricted by the wording “namely, national parks.” In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (finding that, because
a semicolon separated the two relevant clauses in registrant’s identification, its
“restaurant and bar services” is a discrete category of services that stands alone and
independently as a basis for likelihood-of-confusion analysis, and is not connected to
nor dependent on the services set out on the other side of the semicolon). In addition,
Registration No. 3031210 for the mark TREK TRAVEL includes services that would
be the subject matter of providing information about recreational and leisure services
(e.g., arranging travel tours, conducting cultural tours).
Because some of the goods in Classes 16, 18 and 25 are identical and legally
identical and there are no limitations as to channels of trade or classes of purchasers
in the applications or Opposer’s registrations, we must presume that Applicant’s and
Opposer’s goods will be sold in the same channels of trade and will be bought by the
same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (TTAB 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
Opposition No. 91232164

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USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). With regard to the Class 41 services,
both may be offered over the Internet.
Although there is some information in the record for Applicant’s actual channels
of trade (Applicant’s website, National Parks, Amazon) and classes of consumers
(adults and children interested in the National Park’s Junior Ranger programs),54 we
may not limit the trade channels by this extrinsic evidence. In re Elbaum, 211 USPQ
at 640. Opposer’s and Applicant’s arguments pertaining to trade channels based on
extrinsic evidence are immaterial.
The same is true as to the conditions of sale and whether the goods and services
are subject to more careful purchasing decisions. As explained above, the nature and
scope of a party’s goods and services must be determined on the basis of the goods or
services recited in the application or registration. See, e.g., Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (Board must “give full sweep” to an identification of goods regardless of
registrant’s actual business). We must consider the goods and services as identified
and base our determination on the least sophisticated consumer of the identified
goods and services. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126
USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based
on the least sophisticated potential purchasers.”)). Because the parties’ respective
identifications of goods are unrestricted, we must assume that these goods and

54 See, e.g., Christina Isaacs Decl. Test., 54 TTABVUE 11-12.
Opposition No. 91232164

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services are sold to ordinary purchasers who exercise no more than ordinary care in
their purchasing decisions. Here, the consumers for Applicant’s and Opposer’s goods
and services comprise the general public. The relevant goods and services would not
involve a particular or raised level of care in the purchasing decision, at least not one
that would actively weigh against a likelihood of confusion.
In view of the above, the similarity of the goods and services, the channels of trade,
classes of purchasers and conditions of sale favor a finding of likelihood of confusion
for the goods and services identified in International Classes 16, 18, 25 and 41.
b. Goods in International Classes 21, 26, and 28
There is no evidence to establish trade name or trademark rights in or a
relationship to Applicant’s remaining goods in International Classes 21, 26 and 28.
Accordingly, the nature of the goods, trade channels, classes of purchasers and
conditions of sale do not favor a finding of likelihood of confusion for the goods in
International Classes 21, 26, and 28.
2. Strength of Opposer’s TREK marks
Opposer argues that its TREK mark is famous and thus the scope of protection is
broad, expanding the types of marks that may be considered confusingly similar and
the types of goods and services that may be considered related.
The strength of a mark is not “an all-or-nothing measure” in the context of
likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir. 2017). Rather, it
“varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal
Opposition No. 91232164

17

citations omitted). “A very strong mark receives a wider latitude of legal protection
in the likelihood of confusion analysis,” Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d 1043, 1056 (TTAB 2017), while a very weak mark receives a narrower
scope of protection. A mark in the middle of the spectrum receives an intermediate
scope of protection. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340,
1347 (TTAB 2017) (finding opposer’s marks entitled to “the normal scope of protection
to which inherently distinctive marks are entitled”). A famous mark is one that has
extensive public recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a
dominant role in the likelihood of confusion analysis. Kenner Parker Toys Inc. v. Rose
Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In view of the
extreme deference that is accorded to 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
prove it clearly.
In determining strength of a mark, we consider both conceptual strength, based
on the nature of the mark itself, and commercial strength, based on marketplace
recognition. 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.”). J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. March 2021 update) (“The
first enquiry focuses on the inherent potential of the term at the time of its first use.
Opposition No. 91232164

18

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.”).
The record amply demonstrates the commercial strength of the TREK mark for
bicycles.55 TREK enjoys high volume of sales and has been listed by several online
publications as having a high ranking or market share in the cycling industry,
indicating a healthy share of the market.56 The TREK mark, in connection with
bicycles, receives broad media attention shown by the broad advertising campaigns
and consumer impressions,57 its social media presence and followers,58 its
sponsorship of cycling teams and other events involving cycling attracting well-
known participants.59
We find that Opposer’s TREK mark is famous for bicycles and bicycle accessories.
The evidence does not support a finding that TREK is famous for the types of goods

56 Kokko Test. Depo., 66 TTABVUE (confidential); 62 TTABVUE 39-41, 43, 141-143, 343, 353-
356, 362; 31 TTABVUE 94-116. Applicant objects to the testimony concerning market share
as lacking foundation and constituting hearsay. We accord this evidence some probative
value inasmuch as Mr. Kokko as Opposer’s Global Finance Director and Mr. Gore as
Opposer’s Vice President of Marketing have personal knowledge about Opposer’s finances
and marketing which would include monitoring market share. The fact that they do not know
the specifics of how the data was gathered and analyzed by third parties does tend to limit
the probative value.

57 26 TTABVUE 1-103; 31 TTABVUE 77-82; 62 TTABVUE 31-33, 311-312, 314-315; 62
TTABVUE 284-286, 290, 292-293. Applicant’s objections to the exhibits in 26 TTABVUE and
31 TTABVUE are overruled to the extent that they are proper subject matter for introduction
under notice of reliance and we only consider them for what they show on their face and not
for the truth of the matter asserted.

58 62 TTABVUE 57-58.

59 62 TTABVUE 20-21, 45, 121, 245-253, 281-182, 284-286, 290, 292-293, 312-320.
Opposition No. 91232164

19

identified in the subject applications. Although it is correct that fame increases the
scope of protection, extending to goods other than those for which fame is found, and
the fame of Opposer’s TREK mark must be accorded great weight in a likelihood of
confusion analysis, “fame alone cannot overwhelm the other DuPont factors as a
matter of law.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed.
Cir. 2000); 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).”).
Applicant seeks to restrict the scope of protection to be accorded to Opposer’s
TREK marks by arguing that TREK is conceptually weak. In determining the
conceptual strength of Opposer’s TREK mark, “we evaluate its intrinsic nature, that
is, where it lies along the generic-descriptive-suggestive-arbitrary (or fanciful)
continuum....” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014).
Applicant points to the dictionary definitions of TREK as “a trip or movement
especially when involving difficulties or complex organization : an arduous journey”60
and “a slow or difficult journey, hike or trip.”61 In addition, Applicant submitted 65
third-party registrations that incorporate the word TREK, some of which are for
clothing, bags, or recreation-related information services. To be clear, this evidence
does not have probative value as to commercial strength as there is no evidence of

60 App. Not. of Reliance, 82 TTABVUE 7 (Merriam-Webster Dictionary).

61 Dictionary.com based on the Random House Unabridged Dictionary (2021). We grant
Applicant’s request for judicial notice of this dictionary definition. In re Cordua Rests. L.P.,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016).
Opposition No. 91232164

20

use in the market. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745
(TTAB 2016) (“Applicant’s citation of third-party registrations as evidence of market
weakness is unavailing because third-party registrations standing alone, are not
evidence that the registered marks are in use on a commercial scale, let alone that
consumers have become so accustomed to seeing them in the marketplace that they
have learned to distinguish among them by minor differences.”). However, while
“[t]he existence of these registrations is not evidence of what happens in the market
place or that customers are familiar with them....,” AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), “evidence of third-party
registrations is relevant to show the sense in which a mark is used in ordinary
parlance, ... that is, some segment that is common to both parties’ marks may have a
normally understood and well-recognized descriptive or suggestive meaning, leading
to the conclusion that that segment is relatively weak....” Jack Wolfskin Austrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, 115 USPQ2d at 1675)
(internal punctuation omitted).
Opposer is correct that most of these third-party registrations are not for the same
or similar goods and services at issue in this case. However, a few are directly relevant
and overall they do tend to show the common adoption of the word TREK by third
parties to carry the suggestion the goods or services may be appropriate for “trekking”
or simply to evoke the idea of hiking in connection with the goods or services. While
these third-party registrations do not diminish the commercial strength of Opposer’s
Opposition No. 91232164

21

TREK mark, they do underscore the somewhat suggestive nature of the word TREK
in connection with clothing, bags and recreation-related information services. In that
sense they serve to corroborate the relevance of the dictionary definition of the word
TREK in connection with bags, clothing and recreation-related information services.
A few examples are listed below.62
Exh. Reg. No. Mark Goods/Services Owner
1 2194881 TREK TIPS Printed publications,
namely, brochures
providing information for
travelers on vacation to
North and Central America
regarding security,
insurance, health issues,
climate, drinking, places to
stay and other issues of
interest to travelers on
vacation
Trek
America
Travel
Limited
2 2553403 TREK FLEX Footwear C. & J. Clark
International
Limited
3,
17
2606424

Summer sports and
recreation camp services for
youths, offering activities in
the areas of backcountry
camping, backpacking, rock
climbing, mountaineering,
canoeing, sea-kayaking, and
whitewater rafting
Adventure
Treks
4 2673351 TREK SAFELY Printed materials, namely,
brochures, guides, training
outlines and pocket
certificates in the field of
safety procedures for
outdoor activities, namely,
hiking, backpacking,
canoeing, horseback riding,
Boy Scouts of
America

62 76 TTABVUE.
Opposition No. 91232164

22

Exh. Reg. No. Mark Goods/Services Owner
caving, skiing, mountain
climbing
5 2726270

Printed materials, namely,
brochures, guides, training
outlines and pocket
certificates in the field of
safety procedures for
outdoor activities, namely,
hiking, backpacking,
canoeing, horseback riding,
caving, skiing, mountain
climbing
Boy Scouts of
America
6 2529499 TEAM TREK Educational services,
namely, leadership training
and team-building seminars
Team Trek,
Inc.
7 2999456 DESERT TREK Footwear C. & J. Clark
International
Limited
8 2677413 TIME TREK Producing and providing
news stories and year-in-
review news content for the
school yearbooks of others
Inter-State
Studio &
Publishing
Co.
9 2748478 TREK SAFELY Cloth patches for clothing Boy Scouts of
America
11 2845837 GREENTREKS Educational and
entertainment services,
namely providing on-line
information and news in the
field of environmental
education; educational and
entertainment services,
namely, interactive exhibits
in the field of environmental
issues, and providing
television and radio
programs in the field of
environmental issues;
production of radio and
television programs;
publication of magazines
and newspapers in the field
of environmental issues;
Greentreks
Network,
Inc.
Opposition No. 91232164

23

Exh. Reg. No. Mark Goods/Services Owner
production and distribution
of motion pictures
14 3820076

Educational services,
namely, providing classes in
the field of nature and the
outdoors; recreational
services in the nature of
hiking, arts and crafts, story
telling; and recreational
camps; all of the
aforementioned services
excluding bicycle or
bicycling related services
Worth,
Pamela Sue
16 3625940 DOLPHIN TREK educational and
entertainment services in
the nature of aquatic
programs by which guests
can view aquatic life and
habitats and
interact with mammals
Sub Sea
Systems
23 4163070

Footwear, namely, shoes,
rubbers, pumps, boots,
canvas shoes, heels, hiking
boots, sandals, slippers,
sneakers, sporting shoes,
shoe-pads in the nature of
insoles, running pads that
strap onto shoes, shoe-
insoles and shoe soles, all
sold as components of shoes;
none of the foregoing goods
being intended for use while
bicycling
Tiong Liong
Industrial
Co., Ltd.
24 4134348 VERSATREX Shorts Eddie Bauer
Licensing
Services LLC
28 4300740

Hiking poles Cutler,
Thomas
31 4790987 TREKPAK Divider system consisting
primarily of padded dividers
and coated pins for
Pelican
Products,
Inc.
Opposition No. 91232164

24

Exh. Reg. No. Mark Goods/Services Owner
connecting the padded
dividers for use in bags,
hard and soft sided cases,
rucksacks, backpacks,
carrying bags, hand bags,
tote bags, shoulder bags,
cases and luggage with
rolling wheels, cases and
luggage without rolling
wheels
33 4700585 STAR TREK SKELE-
TREKS
Clothing, namely, t-shirts,
shirts, sweatshirts
CBS Studios,
Inc.
39 4976636

Providing a website on the
Internet featuring
information in the field of
travel
The Wild
Trek
Experience,
LLC
43 5143664 THE TREK Interactive online web
journals featuring
backpacking and hiking;
On-line journals, namely,
blogs featuring backpacking
and hiking; Providing on-
line non-downloadable
articles in the field of
backpacking and hiking
Appalachian
Trials LLC
45 5204400 PET-TREK Folding trolley carts
specially adapted for animal
carriers and luggage
DBA A Pet
With Paws
46 5703814 GLADIATOR TREK Organizing, arranging and
conducting mountain
adventure excursions in the
nature of guided hiking,
mountain climbing,
mountaineering,
backpacking and camping
activities
Bonaldi,
Jeffrey
47,
55
5483779

Traveling bags Boioglu
Adrian
Opposition No. 91232164

25

Exh. Reg. No. Mark Goods/Services Owner
48,
49
5854156

Retail store and mail order
services featuring
recreational and outdoor
clothing, equipment and
supplies; Arranging and
conducting the transport of
persons for outdoor and
recreational tours and trips,
and wilderness adventure
trips, excursions, and
expeditions; outdoor travel
guide services and
naturalist services in the
nature of travel information
services; outfitter and
rental services, namely,
canoe, kayak, and vehicle
roof rack rental;
Educational and
recreational services,
namely, providing and
conducting courses in the
nature of seminars and
workshops, classes, field
trips and social outings for
learning about, enjoying,
appreciating and
interpreting the outdoors,
nature, wildlife, wilderness,
geography, native cultures,
outdoor activities, fishing,
camping, hiking, skiing,
snowshoeing, canoeing, and
kayaking; instruction in
outdoor survival skills;
arranging and conducting
guided outdoor and
recreational tours and trips,
and guided wilderness
adventure trips, excursions,
and expeditions for
recreational purposes;
KR Kayaking
LLC
Opposition No. 91232164

26

Exh. Reg. No. Mark Goods/Services Owner
outfitter and rental
services, namely, the rental
of sports equipment in the
nature of snowshoes;
Outfitter and rental
services, namely, rental of
protective clothing and
accessories in the nature of
protective equipment for
safety purposes

50 5350308 HIGH TREK Hiking poles Mountain
Snow LLC
57 5631474 QUADTREK Traction attachments for
footwear, all of the
aforementioned goods not
intended for use while
cycling
Audy Global
Enterprises,
Inc.
60 5744070 PURTREK Hiking poles with
integrated water filtration
system
6112 Breeze
Circle
62 5787827 ELDERTREKS Travel services, namely,
arranging and conducting
walking, hiking, helicopter,
horseback, boat, and
motorized vehicle guided
tours of geographic
locations
Passages
Exotic
Expeditions
Ltd.
63 5823490 TREK SCRATCHER Globes; Map pins; Map
tacks; Maps; Notebook
covers; Notebook paper;
Notebooks; Paper; Paper
notebooks; Scratch pads;
Blank journal books; Blank
journals; Blank note cards;
Blank paper notebooks;
Blank writing journals;
Celestial globes;
Customizable journal books;
Geographical maps;
Geophysical maps; Holiday
Newverest
LLC
Opposition No. 91232164

27

Exh. Reg. No. Mark Goods/Services Owner
cards; Letterhead paper;
Motivational cards; Note
cards; Personalized writing
journals; Picture cards; Post
cards; Postcard paper;
Reporters' notebooks; Road
maps; Score-cards; Scratch
cards; Spiral-bound
notebooks; Stenographers'
notebooks; Terrestrial
globes; Visiting cards; Wall
maps; Writing journal
sheets
65 959469

Casual footwear of leather,
suede or synthetic materials
C. & J. Clark
International
Limited
66 4801750

Brochures in the field of
travel and tourism; printed
matter, namely, books,
booklets, guidebooks, maps
and charts in the field of
travel and tourism; printed
guides in the field of travel
and tourism; maps;
Clothing, namely, t-shirts,
shirts, shorts, trousers,
uniforms and bathrobes,
footwear; headgear, namely,
hats, caps, sun visors,
headwear; Arranging and
conducting seminars,
conferences, symposiums
and workshops in the field
of travel and tourism;
holiday camp services;
educational services,
namely, providing classes in
the field of team building;
entertainment services, in
the nature of concert
booking, booking of seats for
Trek
America
Travel
Limited
Opposition No. 91232164

28

Exh. Reg. No. Mark Goods/Services Owner
shows and booking of
theatre tickets, arranging
for ticket reservations for
shows, cultural and artist
events, motion pictures,
music concerts and other
live entertainment events,
organizing exhibitions of
cultural, sporting and
entertainment purposes;
publication of books, event
programmes and text other
than publicity text

Thus, conceptually the mark TREK appears to be somewhat suggestive in
connection with backpacks, clothing, and recreation-related information services and
the commercial strength for bicycles and bicycle accessories has not been shown to
apply to these goods and services. We accord Opposer’s TREK marks the scope of
protection to which somewhat suggestive marks are entitled, keeping in mind the
mark’s wider scope of protection in the bicycle industry.
3. Similarity of the Marks
We now consider the similarity or dissimilarity of the parties’ marks and compare
them in their entireties in terms of appearance, sound, connotation and commercial
impression. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed.
Cir. 2018); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). “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) (citing In re White Swan Ltd., 8 USPQ2d
Opposition No. 91232164

29

1534, 1535 (TTAB 1988)). “The 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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
The marks must be considered in their entireties, but “‘in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.”’ Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Ms. Isaacs testifies as follows:
[T]he primary word in [my mark] is ranger. That really
gives the – the whole meaning to what my mark means is
really the word ranger. And trek is just a common word
that’s found in the dictionary, it just means to go on a
journey. So ranger really is the – the primary and the most
important word, and it’s the first word. Because you’re
going on a ranger trek, you’re going on a journey to try to
find parks that have the Junior Ranger program,
participate in them, become a junior ranger at as many
parks as you possibly can.
Christina Isaac’s Test., 106 TTABVUE 84.
With regard to the TREK shield design and Applicant’s shield design, Christina
Isaacs testifies:
Like, I mean, one’s a shield, … Trek’s is a shield, mine’s a
badge. Those are two completely different shapes that have
different meanings. Also, I have two characters on mine.
And the girl character is holding a Ranger Trek expedition
Opposition No. 91232164

30

journal, and the – the boy is holding a – a walking stick. So
I mean, it’s clear that they’re going on a trek that’s by foot,
which when – I believe that the definition of trek even says
that it’s a – it’s a trek by foot. So mine is very colorful.
There’s many, many colors in mine. I – the one – when I
looked up to see what yours even – Trek’s look like, I just
saw the black and white. So I don’t believe that it comes
like in a rainbow of colors, you know, all in the same design.
I don’t – I don’t know. I mean, there’s so many differences.
It’s like I have a little picture of the United States because
I wanted to make sure that people knew that I’m – that
Ranger Trek is – pertains to the national parks of the
United States – US national parks because other countries
now have national parks as well. But this – this has to do
with the United States.
Christina Isaacs Test., 106 TTABVUE 86-87.
Opposer argues that:
[The] marks are similar in appearance, pronunciation,
connotation and commercial impression due to the
presence in each of the identical term TREK. This term
forms the entirety of Trek’s mark and is the dominant
portion of Ms. Isaacs’ marks, because RANGER is merely a
modifier for the TREK element; that is, Trek’s mark is
TREK and Mrs. Isaacs’ marks suggests TREK which
somehow involves a RANGER. The consumer will associate
RANGER TREK with Trek’s TREK just as the consumer
associates Trek’s registered TREK Formative Marks PRO
TREK, ETREK and TACO TREK with Trek’s TREK.63
123 TTABVUE 45.
With regard to the RANGER TREK design marks and the TREK and TREK
design marks, Opposer adds that the verbal portion of a mark is “the one most likely
to indicate the origin of the goods to which it is affixed.” 123 TTABVUE 45 (quoting
In re Viterra Inc., 101 USPQ2d at 1908). In addition, Opposer argues that the design

63 We note that TACO TREK is not a pleaded mark, and may not be relied on for presumptions
under Section 7(b) of the Trademark Act, 15 U.S.C. § 7(b).
Opposition No. 91232164

31

elements in the marks are similar in that both position the wording in the uppermost
portion of a shield design. Id. at 46.
In comparing the marks, we begin with Applicant’s standard character mark
RANGER TREK. The rights associated with a standard character mark reside in its
wording, and not in any particular display and we must consider Applicant’s mark
“regardless of font style, size, or color.” Citigroup Inc. v. Cap. City Bank Grp., Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011); In re RSI Sys., LLC, 88
USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015
(TTAB 1988); Trademark Manual of Examining Procedure (TMEP) § 1207.01(c)(iii)
(Oct. 2018).
In making their arguments, the parties presented case law that sets outs various
guidelines in determining similarity in marks. For example, that the first part of a
mark is often the more prominent or likely to be remembered, In re I-Coat Co., 126
USPQ2d 1730, 1737 (TTAB 2018) (citing Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (the first part of a mark “is most likely to be
impressed upon the mind of a purchaser and remembered”)); Palm Bay Imps., 73
USPQ2d at 1692), but also, where one party’s mark incorporates the entirety of the
other’s mark, confusing similarity may be found, Hunter Indus., Inc. v. Toro Co., 110
USPQ2d 1651, 1660 (TTAB 2014) (Opposer’s mark PRECISION DISTRIBUTION
CONTROL contains the entirety of Applicant’s mark PRECISION). We add that if a
junior user takes the entire mark of another and adds a generic, descriptive or highly
suggestive term, it is generally not sufficient to avoid confusion. See Stone Lion
Opposition No. 91232164

32

Capital Partners, 110 USPQ2d at 1161 (Applicant’s STONE LION mark for financial
planning was confusingly similar to Opposer’s LION CAPITAL mark for competitive
services); Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182,
1189 (TTAB 2014) (“Likelihood of confusion is often found where the entirety of one
mark is incorporated within another.” The mark MINERS, both alone and with image
of a miner and the words “Southern Illinois,” found confusingly similar to opposer’s
MINERS mark, both for college sports teams).
Although there is no mechanical test to select a “dominant” element of a mark,
consumers would be more likely to perceive a fanciful or arbitrary term, rather than
a descriptive or generic term, as the source-indicating feature of the mark. See, e.g.,
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is
the dominant portion of the mark THE DELTA CAFE). If the common element of two
marks is “weak” in that it is generic, descriptive, or highly suggestive of the named
goods or services, it is unlikely that consumers will be confused unless the overall
combinations have other commonality. See, e.g., Juice Generation, 115 USPQ2d at
1674-75 (remanded for consideration of whether and to what degree the phrase
PEACE & LOVE was suggestive or descriptive in the food-service industry); In re Bed
& Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing
TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for
making lodging reservations for others in private homes, and BED & BREAKFAST
INTERNATIONAL for room booking agency services, is likely to cause confusion,
Opposition No. 91232164

33

because, inter alia, the descriptive nature of the shared wording weighed against a
finding that the marks are confusingly similar).
While Applicant’s and Opposer’s marks include the identical word TREK, in
connection with these goods and services it is somewhat suggestive. Although the
word RANGER is also somewhat suggestive in connection with these goods and
services, it is more dominant, placed at the beginning of Applicant’s mark, and
presents a different overall commercial impression, sufficient to avoid likely
confusion. TREK by itself simply references a journey or hike. RANGER TREK
evokes a person on a journey or hike and not any person but a specific type of person
with a mission on a RANGER TREK. We note that in the prior decisions submitted
under Notice of Reliance at 27 TTABVUE 7-136 where the Board found confusing
similarity the literal elements of the marks were identical, the additional material
appears after the word TREK, or, in one case, the additional first word was merely
descriptive:
Opp. No. 91094948 TREKNOLOGY and design where “the
design feature separates the TREK portion of applicant’s
mark for a NOLOGY portion of applicant’s mark…the
TREK portion of applicant’s mark clearly stands out by
itself”;
Opp. No. 91164982 TREK;
Opp. No. 91174085 TREKEASE;
Opp. Nos. 91213696 91213957 91213962 TREKGUIDE
THERMOTREK TREKCEL;
Opp. No. 91221706 TREK and design
Opposition No. 91232164

34

We recognize that “when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines,” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992); but given the dissimilarities in appearance,
sound, connotation and commercial impression, even ignoring the somewhat
conceptually weak nature of the word TREK in connection with the various Class 18
and 25 goods and Class 41 services to the extent it suggests they are for trekking or
simply evokes the idea of trekking, we find the marks are not confusingly similar
when used on the goods or services for which Opposer has established priority.
The differences presented by the RANGER TREK and design marks provide
further distinction from Opposer’s TREK and TREK-formative marks and Opposer’s
TREK shield design mark. The design amplifies the RANGER connotation, depicting
children heading out on a hike in ranger outfits, and the badge or shield design is a
very different shape from Applicant’s shield design.
This factor weighs against finding likely confusion.
4. Absence of Actual Confusion
Ms. Isaacs argues that there has been no actual confusion despite concurrent use
for five years. “The absence of any reported instances of confusion is meaningful only
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 mark[].” 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). In other
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words, for the absence of actual confusion to be probative, there must have been a
substantial opportunity for confusion to have occurred. Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence
of actual confusion depends upon there being a significant opportunity for actual
confusion to have occurred).
Here, Applicant has been using her mark in commerce since 2016 for only a few
of the applied-for goods at National Parks gift shops, www.rangertrek.us and
www.amazon.com. The record reveals nominal sales. Overall, the record does not
reveal a meaningful opportunity for confusion to occur. We therefore find the absence
of any actual confusion does not weigh in Applicant’s favor. See Nina Ricci S.A.R.L.
v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The
absence of any showing of actual confusion is of very little, if any, probative value”
where evidence as to the use of Applicant’s merchandise during the time in question
was not presented). In any event, “it is unnecessary to show actual confusion in
establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). We therefore find the absence of
actual confusion neutral regarding a finding on likelihood of confusion.
5. No Wrongful Intent
Applicant argues that she had no knowledge of Opposer or its marks prior to
creating and adopting her RANGER TREK marks and this weighs in her favor. We
agree that the record does not show any bad faith on the part of Applicant. However,
while the existence of bad faith weighs in favor of likely confusion, the reverse is not
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necessarily true. We find the absence of bad faith is neutral or at most has minimal
weight as a factor.
6. Other Established Facts
Finally, Applicant submitted the file contents of one of Opposer’s more recent
applications for the mark TREK wherein Opposer successfully argued against likely
confusion with the marks in the cited registrations. Applicant asserts these
statements serve as admissions against interest.
Such statements constitute admissions and may be considered as evidence, albeit
not conclusive evidence, of the truth of the assertions therein. EZ Loader Boat
Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 599 (TTAB 1982), aff’d, 706 F.2d
1213, 217 USPQ 986 (Fed. Cir. 1983) (citing Bakers Franchise Corp. v. Royal Crown
Cola Co., 404 F.2d 985, 160 USPQ 192 (CCPA 1969); Maremont Corp. v. Airlift Corp.,
463 F.2d 1114, 174 USPQ 395, 396 (CCPA 1972)). See also Daniel J. Quirk Inc. v.
Village Car Co., 120 USPQ2d 1146, 1149 n.14 (TTAB 2016) (statements made in
affidavit filed in connection with respondent’s Office action response constitute
admissions against interest and fall within hearsay exception under Fed. R. Evid.
801(d)(2)).
Opposer’s prior application Serial No. 87565645 for the standard character mark
TREK for “apparel, namely, pants, shorts, t-shirts, shirts, vests, jackets, socks,
gloves, beanies, caps, hats, hoodies” was approved for publication and eventually
issued into a Registration after Opposer successfully argued against likely confusion
with the marks in the cited registrations. The cited registered marks were:
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TREK (stylized) for “casual footwear of leather, suede or
synthetic materials”; DESERT TREK for “footwear”; TREK
FLEX for “footwear,” all owned by C. & J. Clark
International Limited;
TREK AMERICA and design for “clothing, namely, t-
shirts, shirts, shorts, trousers, uniforms and bathrobes,
footwear; headgear, namely, hats, caps, sun visors,
headwear,” owned by Trek America Travel Limited;
TREKDRY FUNCTIONAL FABRIC QUICK DRYING +
MOISTURE WICKING for, among other things, “footwear,
namely, shoes, rubbers, pumps, boots, canvas shoes, heels,
hiking boots, sandals, slippers, sneakers, sporting shoes,
shoe-pads in the nature of insoles, running pads that strap
onto shoes, shoe-insoles and shoe soles, all sold as
components of shoes; none of the foregoing goods being
intended for use while bicycling” owned by Tiong Liong
Industrial Co., Ltd.
Opposer responded by submitting a consent agreement with C. & J. Clark. In
addition, Opposer argued that the class 25 goods in the application for the
TREKAMERICA mark will be associated with the travel services. With regard to the
TREKDRY mark, Opposer argued that it is for footwear and in fact is being used for
fabric used to make shoes. Finally, Opposer argued that “[i]f the cited registration for
TREK AMERICA and Design for clothing items, headwear and footwear can coexist
with C&J Clark’s three cited registrations TREK, TREK FLEX and DESERT TREK
for footwear, then the mark in the proposed TREK application should be allowed to
coexist, as well, for clothing items and headwear.”64 Opposer repeats this argument
for the TREKDRY FUNCTIONTAL FABRIC QUICK DRYING+MOISTURE
WICKING and Design mark.65

64 App. Not. of Reliance, 77 TTABVUE 19-20.
65 Id. at 21.
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Overall, we do not find these statements to be in full conflict with Opposer’s
position in this proceeding involving a different mark. However, we agree that given
the various “trek” marks registered for similar or related goods, it would seem
Applicant’s marks, where the addition of “RANGER” creates a sufficient distinction,
may coexist as well.
7. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant DuPont factors,
as well as the parties’ arguments with respect thereto. In balancing the relevant
factors, we find the differences between the marks sufficient to avoid likely confusion
despite the identical goods and trade channels and the fame of Opposer’s marks for
bicycles, in particular given the differences in overall commercial impression. “No
mechanical rule determines likelihood of confusion, and each case requires weighing
of the facts and circumstances of the particular mark.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (citing Century 21 v. Century Life,
23 USPQ2d at 1698)); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC,
826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (MAYA not confusingly
similar to MAYARI) (quoting Kellogg Co. v. Pack’em Enters., 951 F.2d 330, 21
USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know of no reason why, in a particular
case, a single duPont factor may not be dispositive”)).
IV. Conclusion
Because Opposer has not shown, by a preponderance of the evidence, the existence
of a likelihood of confusion, Opposer has not established its claim under Section 2(d).
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Decision: The opposition is dismissed.