Ranger Trek defeats 4th Biggest Trademark Bully, Trek Bicycle
Trek Bicycle’s nearly seven-year reign of terror against Christina Isaacs, the owner of the Ranger Trek marks, ended on Wednesday, November 15th, 2023 when the United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to dismiss Trek Bicycle’s opposition of the Ranger Trek mark and design.
Trek Bicycle Corp.’s (TBC) trademark bullying practices started long before their Ranger Trek opposition earning them the title of 4th Biggest Trademark Bully of All Time, according to U.S. Patent and Trademark Office’s (USPTO) trademark opposition data compiled by Trademarkia.com.
Trademark Bullying
Trademark bullying is defined in a variety of ways including, “the enforcement of an unreasonable interpretation by a large corporation of its trademark rights against a small business or individual through the use of intimidation tactics.”
The coined term “legalized terrorism” refers to those who use the courts to legally but immorally advance their commercial interests, despite weak or in many cases frivolous claims, simply because they have the financial wherewithal to do so.
For literally decades leading up to the Federal Appeals Court ruling in favor of Ms. Isaacs, Trek Bicycle Corporation has engaged in trademark bullying and legalized terrorism. TBC has engaged in the delusion that its adoption of the generic word “trek” and use of that mark for bicycles and bicycle accessories gave it rights to the generic word “trek” for any goods or services, and regardless of how the word was incorporated or used by others.
Under this delusion, TBC has engaged in overreach and bad faith threats or prosecution of more than 100 opposition proceedings against more than 450 marks. TBC has been asserting over the last 20+ years, that it has universal and exclusive rights in the general term “trek” for virtually every good or service under the sun. But it does not, and so for these reasons, Trek Bicycle Corporation has earned itself the title of 4th Biggest Trademark Bully of All Time by Trademarkia.com.
The term “trek” is highly descriptive or generic and is commonly understood and defined in any dictionary as a “journey or trip,” and often a journey by foot.
All Types of Treks: From Star Trek to Ranger Trek
The Federal Circuit Appeals Court affirmed the Trademark Trial and Appeal Board’s decision: “ii. Conceptual Strength: The other prong of the DuPont factor six analysis is conceptual strength, which “is a measure of a mark’s distinctiveness.”” “Distinctiveness is often classified in categories of generally increasing distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” “Suggestive marks suggest, but do not directly and immediately describe, some aspect of the goods.” “Marks that are “highly suggestive are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.”” and, “the Board reasonably relied on and found that certain dictionary definitions and third-party registrations showed that Trek’s TREK mark is somewhat conceptually weak and somewhat suggestive as to the identified goods.”
The term “trek” has been used and registered alone or with other terms by literally dozens of third parties. Indeed, STAR TREK is one of the most popular TV and movie franchises, is truly famous universally, and preexisted TBC by years, and has been registered for clothing including hats, jackets and shirts for more than 40 years. Nevertheless, TBC chose to adopt this highly descriptive or generic term for use with bicycles.
While opposing Ranger Trek in seven trademark classes (they didn’t even have trademarks in themselves), TBC filed to expand its rights in “trek” to clothing in August 2017. TBC’s application was repeatedly rejected over multiple prior registrations for various clothing goods in the same class, including TREK, DESERT TREK and TREK FLEX. TBC strenuously argued to the Trademark Office that all such marks could peacefully coexist. Finally, in 2018, TBC successfully convinced the Examiner of that position, and its mark was registered.
Then, consistent with this admission, TBC did not object when CBS Studios Inc. sought to register STAR TREK in Class 18 for various bags, including “backpacks” and “athletic bags.” Just as it should have acknowledged that RANGER TREK is nothing like TREK, TBC had no problem concluding that STAR TREK is nothing like TREK—despite similar goods—and that the parties could peacefully coexist. This STAR TREK application was allowed on December 15, 2020.
How is it that TBC is able to peacefully coexist for the same mark for the same goods when it benefits TBC’s trademark efforts? But it cannot peacefully coexist with RANGER TREK and others that seek to use “trek” as part of completely different marks–for completely different goods or services?
The TTAB agreed with TBC in their August 4, 2021 decision, “Applicant (Isaacs) submitted the file contents of one of Opposer’s(TBC) more recent applications for the mark TREK wherein Opposer successfully argued against likely confusion with the marks in the cited registrations. Such statements constitute admissions and may be considered as evidence. 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.”
David vs Goliath
Unfortunately, most targeted by TBC, simply cannot afford the legal costs to defend their rights against such frivolous cases, and many simply fold. TBC has demonstrated the unfortunate truth of the old adage that “might makes right.” But not this time!
- In August 2016, Ms. Isaacs first applied to register Ranger Trek with the USPTO. Her first victory came in November 2016 when she was advised by the USPTO of the publication of her RANGER TREK mark—which confirmed that the Trademark Examining Attorney had searched the USPTO’s database of registered and pending marks. No conflicting marks were found that would bar registration. But then in January 2017, TBC filed an opposition and kept Ms. Isaacs in legal limbo for years.
- Her second victory came in August 2021 when the Trademark Trial and Appeal Board concluded, “Because Opposer (Trek Bicycle Corp) 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) Opposition No. 91232164 Decision: The opposition is dismissed.”
- Her third victory came in December 2021, after TBC filed a Request for Reconsideration with the TTAB, which again ruled in Isaacs’ favor saying, “For the foregoing reasons, the applicable law and the evidentiary record amply support the Board’s Decision concerning the absence of fame for clothing and bags and the existence of other TREK marks for similar or related goods on the register. We find no error in the Decision. TBMP § 543. The request for reconsideration is denied.”
- Her fourth victory is, of course, the most recent decision on November 15, 2023 by the Federal Circuit Court of Appeals to uphold the TTAB’s dismissal of TBC’s challenge to the registration of Ranger Trek’s mark and design. The court stated, “in order to give any favorable weight to DuPont factors five and six, we must find that the fame and commercial strength of Trek’s TREK mark does extend to the identified goods, which it does not.”, “The Board found that Trek failed to show, by a preponderance of the evidence, the existence of a likelihood of confusion.” and “Because substantial evidence supports the Board’s findings as to the challenged DuPont factors and the Board did not err in weighing the DuPont factors, we affirm.”
TBC’s audacity and bad faith actions perhaps culminated with their opposition against Ms. Isaacs’ Ranger Trek trademarks. Here, TBC singled out Applicant Christina Isaacs, an avid National Park lover with a dream to create products to motivate children and families to visit and enjoy our nation’s National Parks, intending to destroy her business solely to advance its efforts at world domination of all uses of the word “trek.”
For almost seven years, TBC, the proverbial 800-pound gorilla, pursued claims so devoid of merit that it surely would have been brought to task in any other litigation setting with any well-financed business entity. Yet here, despite not having a valid claim, TBC made every effort to make it as expensive as possible in the hopes that Ms. Isaacs would simply give up her business.
Over the past seven years, Ms. Isaacs has created, adopted, and worked (when not expending resources in this litigation) to grow her business for enhancing the National Park experience for youth and families across the country using these three marks in her Ranger Trek products:
RANGER TREK
Looking Forward to the Trek Ahead
Apart from the obvious differences in the TREK and RANGER TREK marks—none of the goods or services have anything to do with bicycles! Despite almost seven years of litigation, TBC did not come forward with any evidence that it has superior rights in any of these goods or services. Ms. Isaacs even offered to exclude bicycle products and services to avoid any remote possibility of overlap—but TBC would have none of it. Despite nearly seven years of stress and expense, Ms. Isaacs maintained her commitment to demonstrating that “might does not make right,” and her perseverance has finally paid off.
Perhaps now TBC sees that its legalized terrorism has consequences, and hopefully, others will be motivated, enabled, and empowered to fight the next time TBC seeks to overreach and extort innocent third parties.
Ms. Isaacs’ Attorney, David Allen Lowe of Lowe Graham Jones PLLC, said in a statement, “We are extremely pleased that the Federal Circuit upheld the well-reasoned decision of the Trademark Trial & Appeal Board. This decision confirms Ms. Isaacs’ rights in her RANGER TREK trademarks, affirms that Trek Bicycle has only limited rights in the highly descriptive “trek” term–related solely to bicycles and accessories, and that Trek Bicycle cannot succeed in using its financial resources to bully others without a legitimate legal or moral basis.”
Ms. Isaacs is looking forward to refocusing her energies on further developing her RANGER TREK business to promote the Junior Ranger Program in America’s National Parks and other public lands. She is as determined as ever to pursue her original dream: to create products to motivate children and families to visit and enjoy our nation’s National Parks.
Footnotes:
United States Court of Appeals for the Federal Circuit, November 15, 2023
Fed. Circ. Backs Denial Of Trek Bicycle’s TM Challenge – Law360
Trademark Trial and Appeal Board, August 4, 2021
Trademark Trial and Appeal Board Request for Reconsideration, December 6, 2021
Shaming Trademark Bullies by Leah Chan Grinvald
Trek ranks high for trademark oppositions | Bicycle Retailer and Industry News
A Bully Company (trademarkia.com) Trademarkia.com is a legal services website that compiles data from the USPTO on all trademark opposition cases ever filed, by all companies, from all industries. Trademarkia.com sorted this data to make a list to rank the companies that have filed the most trademark oppositions. Trek Bicycle Corp. of Waterloo, Wisconsin, ranks 4th on the list of “All-Time Biggest Trademark Bullies”. Unlike TBC the majority of the companies on the “Bully” list are some of the largest corporations in the world who have hundreds or thousands of trademarks to protect, are industry leaders in some of the biggest industries in the world, and are household names.
