WASHINGTON (BRAIN) — The U.S. Court of Appeals for the Federal Circuit has upheld the registration of the Ranger Trek trademark, which Trek Bicycle had opposed.
Christina Isaacs, a Washington state woman, had first applied to register Ranger Trek in 2016, for use on products that would primarily be sold in National Park stores. Trek Bicycle said consumers could confuse Ranger Trek with its trademarks, pointing out that Trek has marketed backpacks and other bags, and even lunchboxes, in the past. It argued that its bicycles are closely associated with parks.
Trek first appealed to the Trademark Trial and Appeal Board, which upheld the Ranger Trek registration. Trek asked the board to reconsider, which the TTAB declined to do. So in February 2022 Trek appealed to the Federal Circuit. Trek disputed Isaacs' registration of the mark for use on backpacks, hiking bags, sports bags, travel bags, hats, jackets, and shirts. It did not appeal its use on other products including expedition journals.
The court on Wednesday upheld the TTAB's ruling, saying Trek's opposition failed to meet the tests of the "DuPont factors," which include examination of the similarity of the trademarks, similarity of the goods and their trade channels, and other factors. The court's decision examined each of the 13 DuPont factors and Trek's other arguments and said it found them unpersuasive.
A Trek Bicycle spokesman said the company would have no comment on the decision. Isaacs could not be reached immediately for comment on Wednesday.
The Ranger Trek registration is just one example of where Trek Bicycle has opposed the registration of trademarks that it feels threaten its trademark. Trek ranks #4 on a list of "trademark bullies" maintained by Trademarkia.com, just behind Kelloggs, Apple and Monster Energy.
In a December 2022 BRAIN article, various legal experts explained that Trek was obligated to protect its trademark, which was constantly threatened due to the common use of the word, "trek," in contrast to brand names that come from a founder's name, such as Shimano or Campagnolo, or from made-up words like Ultegra or SRAM.
"It must be like Whac-A-Mole (defending the trademark)," industry attorney Steven Hansen said.
In the article, Isaacs said she sometimes regretted choosing her company's name.
“If I had to do it again I’d never use that name,” she told BRAIN last year. “It’s taken six years of my life, and there’s the financial component. … all that energy I spent on this I could have invested in growing the business,” she said.
Related:
- Trek ranks high in trademark oppositions, Dec. 2022
- Court dismisses complaint against Trek Bicycle by owner of Prize Trek app, Feb. 2022
- Trek and Make Him Smile agree to settle Farley trademark suit, June 2018
- Industry takes trademarks to the bank, Jan. 2014
- Legal Analysis: Trademark issues proliferate in the Internet Age, Dec. 2013
