On November 15, 2023, the Second Circuit decided Trek Bicycle Corporation vs. Christina Isaacs in favor of Ms. Isaacs and dismissed the appeal of Trek Bicycle Corporation.  The Court held that while the Trek mark may be famous for bicycles, it was not famous with respect to backpacks and other products under the Ranger Trek mark and thereby dismissed the appeal of Trek Bicycle Corporation.

In August 2016, Ms. Isaacs filed three trademark applications for the Ranger Trek marks.  In August 2021, the Trademark Trial and Appeal Board dismissed Trek’s opposition to these marks.  In the decision, the Board evaluated the likelihood of confusion between the parties’ marks under the factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“the DuPont factors”) for which there were argument and evidence. The Board found that the “the differences between the marks [were] sufficient to avoid likely confusion despite the identical goods and trade channels and the fame of [Trek’s] marks for bicycles, in particular given the differences in overall commercial impression.”  Id. at *16.  The Court also affirmed the Board’s decision that the Trek mark was only famous with respect to bicycles and not the products sought under the Ranger Trek mark including backpacks. 

Du Pont Factors

The Du Pont Factors include thirteen separate factors in determining the likelihood of confusion.  “The thirteen factors are as follows:  (1) similarity of the marks; (2) similarity and nature of goods described in the marks’ [applications or] registrations; (3) similarity of established trade channels; (4) conditions of purchasing; (5) fame of the prior mark; (6) number and nature of similar marks in use on similar goods; (7) nature and extent of actual confusion; (8) length of time and conditions of concurrent use without evidence of actual confusion; (9) variety of goods on which mark is used; (10) market interface between applicant and owner of a prior mark; (11) extent to which [the] applicant has a right to exclude others from use of its mark; (12) extent of potential confusion; and (13) any other established probative fact on effect of use.”  Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 n.2 (Fed. Cir. 2018) (citing DuPont, 476 F.2d at 1361).

The Second Circuit in Trek applied the above factors and found in particular that under the first factor the Board reasonably concluded that the parties’ marks differed in their overall commercial impression because “TREK by itself simply references a journey or hike” whereas “RANGER TREK evokes . . . a specific type of person with a mission on a RANGER TREK.”  The Court also reviewed the Boards decision under factors five and six.  The Court agreed with the Board’s decision that while the Trek mark is famous for bicycles and bicycle accessories this fame did not extend to the goods and services listed by the RANGER TREK mark such as backpacks.

With respect to the sixth factor, the Court also agreed with the Board that Trek’s arguments relating to conceptual strength were unpersuasive. These factors along with the remaining other factors were analyzed by the Court, and ultimately the Court found the arguments presented by Trek to be unpersuasive, thus leading the Court to affirm the Board’s decision.