Trek Bicycle Corporation v. Christina Isaacs

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TREK BICYCLE CORPORATION,
Appellant
v.
CHRISTINA ISAACS,
Appellee
______________________
2022-1434
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in
No. 91232164.
______________________
Decided: November 15, 2023
______________________
MARY CATHERINE MERZ, Merz & Associates, PC, Oak
Park, IL, for appellant.
D AVID ALLEN L OWE, Lowe Graham Jones PLLC, Seat-
tle, WA, for appellee.
______________________
Before STOLL , SCHALL , and CUNNINGHAM , Circuit Judges.
CUNNINGHAM , Circuit Judge.
Case: 22-1434 Document: 35 Page: 1 Filed: 11/15/2023

-- 1 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 2
Trek Bicycle Corporation (“Trek”) appeals from a deci-
sion of the Trademark Trial and Appeal Board (“Board”)
dismissing Trek’s opposition to Ms. Christina Isaacs’s reg-
istration of the RANGER TREK standard character mark
and the RANGER TREK design mark. Trek Bicycle Corp.
v. Isaacs, Opp’n No. 91232164, 2021 WL 3468080 (T.T.A.B.
Aug. 4, 2021) (“Decision”). The Board found that Trek
failed to show, by a preponderance of the evidence, the ex-
istence of a likelihood of confusion. See Decision at *17.
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.
I. BACKGROUND
In August 2016, Ms. Isaacs filed three trademark ap-
plications. See J.A. 2257–61 (U.S. Trademark App. Serial
No. 87/123,067), 2271–75, 2268 (U.S. Trademark App. Se-
rial No. 87/123,082), 2285–89, 2282 (U.S. Trademark App.
Serial No. 87/123,091); Decision at *1 & nn.1–3. Two of the
applications are at issue in this appeal: U.S. Trademark
Application Serial No. 87/123,067 for the RANGER TREK
standard character mark and U.S. Trademark Application
Serial No. 87/123,091 for the RANGER TREK design mark
(collectively, the “RANGER TREK marks”).1 See
1 Trek does not appeal the Board’s decision as to U.S.
Trademark Application Serial No. 87/123,082 for the
RANGER TREK EXPEDITION JOURNALS design mark.
See Appellant’s Br. 3; Appellee’s Br. 9–10; J.A. 2271.
Case: 22-1434 Document: 35 Page: 2 Filed: 11/15/2023

-- 2 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 3
Appellant’s Br. 3; J.A. 2257, 2285. The RANGER TREK
design mark is depicted below:
J.A. 2279, 2282. Ms. Isaacs sought registration of the
RANGER TREK marks for use with various international
classes of goods and services, only some of which are now
on appeal: namely, backpacks, hiking bags, sports bags,
and travel bags in International Class 18 and hats, jackets,
and shirts in International Class 25 (the “identified
goods”).2 See Appellant’s Br. 8, 24; J.A. 2257, 2259–60; J.A.
2285, 2287; Decision at *1.
Trek filed a Notice of Opposition, asserting that the
RANGER TREK marks as used in connection with the
identified goods would cause a likelihood of confusion with
Trek’s previously used and registered TREK and TREK-
formative marks and TREK trade name. See Decision at
*2; J.A. 100–16. Some examples of Trek’s registered marks
are Trademark Registration No. 2745442 for the TREK
mark for various bicycling apparel in International Class
No. 25, see J.A. 103–04, Trademark Registration
No. 3053077 for the TREK mark for backpacks and other
various bags in International Class No. 18, see J.A. 105,
and Trademark Registration No. 3979036 for the TREK
2 Trek does not appeal the Board’s decision as to the
goods and services in other international classes. See Ap-
pellant’s Br. 8, 24.
Case: 22-1434 Document: 35 Page: 3 Filed: 11/15/2023

-- 3 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 4
design mark for various cycling apparel in International
Class No. 25 that is depicted below:
J.A. 110; see Decision at *5.
In August 2021, the Board dismissed Trek’s opposition.
See Decision at *17. The Board concluded that “[t]he sub-
ject applications and [Trek]’s registrations contain identi-
cal and legally identical goods in International Classes 18
and 25”—i.e., the identified goods. See id. at *7. 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 evi-
dence.3 See Decision at *6; see also id. at *7–17. The Board
3 “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 ac-
tual confusion; (8) length of time and conditions of concur-
rent use without evidence of actual confusion; (9) variety of
goods on which mark is used; (10) market interface be-
tween 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).
Case: 22-1434 Document: 35 Page: 4 Filed: 11/15/2023

-- 4 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 5
found that “the differences between the marks [were] suf-
ficient to avoid likely confusion despite the identical goods
and trade channels and the fame of [Trek’s] marks for bi-
cycles, in particular given the differences in overall com-
mercial impression.” Id. at *16. Accordingly, the Board
concluded that Trek failed to show the existence of a likeli-
hood of confusion by a preponderance of the evidence. See
id. at *17.
Trek subsequently filed a Request for Reconsideration
and challenged the Board’s dismissal with respect to the
RANGER TREK marks for the identified goods. See J.A.
6000–07. The Board denied the request. J.A. 46–52 at 52
(“Reconsideration Decision”).
Trek appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
II. D ISCUSSION
Section 2(d) of the Lanham Act prohibits the registra-
tion of a mark if it is “likely, when used on or in connection
with the goods of the applicant, to cause confusion” with
another registered mark. 15 U.S.C. § 1052(d); see QuikTrip
West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1034 (Fed.
Cir. 2021). “Likelihood of confusion is a question of law
based on underlying factual findings regarding the DuPont
factors.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362
(Fed. Cir. 2023) (citing In re I.AM.Symbolic, LLC, 866 F.3d
1315, 1322 (Fed. Cir. 2017)). “We review the Board’s fac-
tual findings on each relevant DuPont factor for substan-
tial evidence, but we review the Board’s weighing of the
DuPont factors de novo.” QuikTrip, 984 F.3d at 1034 (cita-
tion omitted). “Substantial evidence is such relevant evi-
dence as a reasonable mind would accept as adequate to
support a conclusion.” Zheng Cai, 901 F.3d at 1371 (inter-
nal quotation marks and citation omitted). “Not all of the
DuPont factors are necessarily relevant or of equal weight
in a given case, and any one of the factors may control a
particular case.” Tiger Lily Ventures Ltd. v. Barclays
Case: 22-1434 Document: 35 Page: 5 Filed: 11/15/2023

-- 5 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 6
Capital Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022) (internal
quotation marks and citation omitted). We only need to
consider the DuPont factors of significance to the particular
mark in the likelihood of confusion analysis. Id. (citation
omitted).
On appeal, Trek challenges the Board’s factual findings
that: (1) the differences between the parties’ marks sup-
port a finding of no confusion (DuPont factor one);
(2) Trek’s TREK mark is not famous as to the identified
goods (DuPont factor five); (3) Trek’s TREK mark is not
commercially strong as to the identified goods and is some-
what conceptually weak as to the identified goods (DuPont
factor six);4 and (4) the prosecution of Trek’s application,
U.S. Trademark Application Serial No. 87/565,645, which
matured into Trademark Registration No. 6036046 (“the
87/565,645 prosecution”), J.A. 99, supports a finding of no
confusion (DuPont factor thirteen).5 See Appellant’s Br. 9,
12, 22–25, 42; see also Decision at *9–16; Reconsideration
Decision at J.A. 49–52. Trek also challenges the Board’s
4 Although Trek raises commercial and conceptual
strength arguments, it does not present such arguments
under DuPont factor six as it should. See Appellants’ Br.
22–25, 42; Spireon, 71 F.4th at 1362–63 (explaining that
commercial and conceptual strength are analyzed under
DuPont factor six). We address Trek’s commercial and con-
ceptual strength arguments under DuPont factor six.
5 Trek contends that the Board erred by failing to
consider the argument and evidence concerning DuPont
factor eight raised during the 87/565,645 prosecution. See
Appellant’s Br. 25–30. The Board analyzed and made its
factual findings as to the 87/565,645 prosecution under
“other established facts,” i.e., DuPont factor thirteen. See
Decision at *15–16; Reconsideration Decision at J.A. 50–52.
We similarly address the arguments concerning the
87/565,645 prosecution under DuPont factor thirteen.
Case: 22-1434 Document: 35 Page: 6 Filed: 11/15/2023

-- 6 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 7
weighing of the DuPont factors. See Appellant’s Br. 9; see
also Decision at *16. We address each argument in turn.
A. DuPont Factor One
Under DuPont factor one, we consider “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 par-
ties.” I.AM.Symbolic, 866 F.3d at 1323 (citation omitted).
“Commercial impression” refers to “the ultimate conclusion
of similarity or dissimilarity of marks resulting from a com-
parison of their appearance, sound, and meaning.” Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (citations
omitted).
The Board found that DuPont factor one weighed
against a likelihood of confusion because the RANGER
TREK marks are dissimilar from Trek’s marks “in appear-
ance, sound, connotation and commercial impression.” De-
cision at *14. Trek unpersuasively argues this finding is
not supported by substantial evidence for multiple reasons.
First, Trek contends that the Board erred by conflating, ra-
ther than independently evaluating, the RANGER TREK
marks. See Appellants Br. 9. We disagree. The Board con-
sidered both of the RANGER TREK marks and their re-
spective attributes in reaching its conclusion that DuPont
factor one weighs against finding likely confusion. See De-
cision at *11–14.
Second, Trek argues that the Board incorrectly found
that the addition of “RANGER” to “TREK” in the RANGER
TREK marks resulted in the parties’ marks having “a dif-
ferent overall commercial impression, sufficient to avoid
likely confusion.” Decision at *14; see Appellant’s Br. 9, 15,
19. Trek contends that the word “TREK” is “the dominant
portion” of the RANGER TREK marks, and the Board thus
erred in failing to assign greater weight to the word
“TREK” present in both parties’ marks. See Appellant’s Br.
Case: 22-1434 Document: 35 Page: 7 Filed: 11/15/2023

-- 7 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 8
21. We disagree. When marks are structurally similar, a
mark’s lead word may be the “dominant portion” of the
mark and is “likely to make the greatest impression on con-
sumers” because consumers typically notice the first word
of a mark first. In re Detroit Athletic Co., 903 F.3d 1297,
1303 (Fed. Cir. 2018) (citing Palm Bay, 396 F.3d at 1372).
Because “RANGER” is the lead word in the RANGER
TREK marks, the Board reasonably found that “RANGER”
was “more dominant” over “TREK,” which weighed against
a likelihood of confusion. See Decision at *14; see Palm
Bay, 396 F.3d at 1371–72 (finding that the word “VEUVE”
in the VEUVE CLICQUOT mark was “a ‘prominent fea-
ture’” as the first word in the mark and “the dominant fea-
ture” in the commercial impression of the mark).
As part of its DuPont factor one determination, the
Board also 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 per-
son with a mission on a RANGER TREK.” Decision at *14.
Trek appears to challenge this finding, arguing that “Trek’s
presence of its TREK name and marks in parks in the
United States is enormous [and] diminish[es] any mean-
ingful distinction” between the parties’ marks. See Appel-
lants Br. 16. In support, Trek points to evidence
concerning Trek’s bicycles designed for park and public
trail use, dealers and bicycle shops located near parks that
sell and rent Trek’s bicycles, and Trek’s various efforts sup-
porting bicycling in parks. Id. at 16–19. However, this ev-
idence generally concerns bicycles and bicycling services,
not the identified goods on appeal. Trek’s argument is
therefore unpersuasive.
Lastly, with respect to the RANGER TREK design
mark, Trek argues that the Board erred by assigning too
much weight to the design rather than the words. See Ap-
pellant’s Br. 9, 14–15. We disagree. While words are “nor-
mally accorded greater weight” in a composite mark
Case: 22-1434 Document: 35 Page: 8 Filed: 11/15/2023

-- 8 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 9
containing both words and a design, “there is no general
rule that the letter portion of the mark will form the domi-
nant portion of the mark.” In re Viterra Inc., 671 F.3d 1358,
1362 (Fed. Cir. 2012) (citations omitted). And contrary to
Trek’s characterization of the Board’s analysis, the Board
did not disproportionately weigh the RANGER TREK de-
sign mark’s visual elements. See Decision at *14. Rather,
the Board explained that the RANGER TREK design had
a very different shape from Trek’s shield design and that
the RANGER TREK design merely “amplifie[d] the
RANGER connotation” by “depicting children heading out
on a hike in ranger outfits.” Id. (emphasis added).
Accordingly, substantial evidence supports the Board’s
finding that the dissimilarities between the RANGER
TREK marks and Trek’s marks for the identified goods
weigh against a likelihood of confusion.
B. DuPont Factors Five and Six
i. Fame and Commercial Strength
Under DuPont factor five, a famous mark has “exten-
sive public recognition and renown.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1367 (Fed. Cir.
2012) (quoting Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 1371 (Fed. Cir. 2002)). “Fame for purposes of
likelihood of confusion is a matter of degree that ‘varies
along a spectrum from very strong to very weak.’” Id.
(quoting Palm Bay, 396 F.3d at 1375). “Relevant factors
include sales, advertising, length of use of the mark, mar-
ket share, brand awareness, licensing activities, and vari-
ety of goods bearing the mark.” Id. (citations omitted); see
also Bose, 293 F.3d at 1371; Spireon, 71 F.4th at 1362.
And under DuPont factor six, “[t]here are two prongs of
analysis,” one of which is commercial strength. Spireon, 71
F.4th at 1362 (citations omitted). Commercial strength “is
the marketplace recognition value of the mark” and “is a
question of whether consumers in fact associate the mark
Case: 22-1434 Document: 35 Page: 9 Filed: 11/15/2023

-- 9 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 10
with a unique source.” Id. at 1363 (cleaned up). Similar to
fame, commercial strength can be shown by “advertising
and marketing, and sales.” Id. (citation omitted); see also
FocusVision Worldwide, Inc. v. Info. Builders, Inc., 859 F.
App’x 573, 577–78 (Fed. Cir. 2021) (analyzing same sales
and marketing expenditures evidence for fame and com-
mercial strength determinations).
The Board found that Trek’s TREK mark “is famous for
bicycles and bicycle accessories” and that Trek “demon-
strate[d] the commercial strength of the TREK mark for
bicycles,” Decision at *10, but that such fame and commer-
cial strength did not extend to the identified goods. See id.;
Reconsideration Decision at J.A. 49–50, 52. Trek argues
that the Board erred by discounting its evidence of sales
and marketing expenditures that allegedly show the fame
and commercial strength of Trek’s TREK mark for the
identified goods. See Appellant’s Br. 9, 30; see also id. at
31–43.
We disagree. The Board explained that Trek proffered
evidence of “the length of time it has sold clothing (since
1988) and bags (1993), the amount of sales in dollar figures,
and total marketing expenditures.” Reconsideration Deci-
sion at J.A. 49–50. Specifically, Trek provided its sales fig-
ures for bags and clothing products sold in the United
States in 2011 through 2018, see J.A. 6232; J.A. 3068–75,
and its marketing expenditures for North America during
the same time period. See J.A. 6234; J.A. 3075–77. The
Board properly discounted this evidence, explaining that
“raw numbers of product sales and advertising expenses”—
like Trek’s evidence—“may have sufficed in the past to
prove fame of a mark, but raw numbers alone in today’s
world may be misleading.” Reconsideration Decision at
J.A. 50 (quoting Bose, 293 F.3d at 1375).
Trek correctly recognizes that although raw numbers
of product sales and advertising expenses may be mislead-
ing, the opposer can introduce evidence to contextualize
Case: 22-1434 Document: 35 Page: 10 Filed: 11/15/2023

-- 10 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 11
these numbers. See Appellant’s Br. 31–32 (citing Bose, 293
F.3d at 1375); see also Omaha Steaks Int’l, Inc. v. Greater
Omaha Packing Co., 908 F.3d 1315, 1320 (Fed. Cir. 2018)
(explaining that the opposer “provided considerable contex-
tual evidence of the type of advertisements and promotions
it uses to gain sales”). Trek argues that the Board’s analy-
sis was “legally flawed” because the Board disregarded
Trek’s “considerable contextual evidence for the type of ad-
vertisements and promotions it has used to gain sales.” Ap-
pellant’s Br. 31–32, 35; see also id. at 33–34, 38. However,
we have reviewed Trek’s briefing before the Board, and it
appears that Trek never raised this specific argument be-
low and thus forfeited it. See J.A. 6290–341 (Trek’s Open-
ing Trial Brief); J.A. 5947–71 (Trek’s Reply Trial Brief);
J.A. 6000–06 (Trek’s Request for Reconsideration); Califor-
nia Ridge Wind Energy LLC v. United States, 959 F.3d
1345, 1351 (Fed. Cir. 2020) (“We may deem an argument
forfeited when a party raises it for the first time on ap-
peal.”) (citations omitted). Regardless, if we consider
Trek’s argument, it does not detract from the Board’s con-
clusion that “[t]he evidence does not support a finding that
TREK is famous for the types of goods identified in the sub-
ject applications.” Decision at *10. For example, the Board
noted that Trek’s evidence of marketing expenditures was
“not broken down by product and [did] not appear to be for
only clothing and bags.” Reconsideration Decision at J.A.
50. Accordingly, Trek has failed to show that the Board’s
findings on fame and commercial strength with respect to
the identified goods are not supported by substantial evi-
dence.
ii. Conceptual Strength
The other prong of the DuPont factor six analysis is
conceptual strength, which “is a measure of a mark’s dis-
tinctiveness.” Spireon, 71 F.4th at 1362 (citations omitted).
“[D]istinctiveness is often classified in categories of gener-
ally increasing distinctiveness: (1) generic; (2) descriptive;
(3) suggestive; (4) arbitrary; or (5) fanciful.” Id. (cleaned
Case: 22-1434 Document: 35 Page: 11 Filed: 11/15/2023

-- 11 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 12
up). “[S]uggestive marks suggest, but do not directly and
immediately describe, some aspect of the goods[.]” Id.
(cleaned up). Marks that are “highly suggestive are enti-
tled to a narrower scope of protection, i.e., are less likely to
generate confusion over source identification, than their
more fanciful counterparts.” Id. (citations omitted).
The Board found that Trek’s TREK mark is somewhat
conceptually weak and somewhat suggestive as to the iden-
tified goods. See Decision at *11, *14. Trek argues that
“[t]here simply is nothing in the record to support the
Board’s reasoning” on this point. Appellant’s Br. 24; see
also id. at 22–23. We do not agree. The Board’s conclusion
is supported by dictionaries defining “trek” as “an arduous
journey” or “difficult journey, hike or trip,” as well as third-
party registrations containing the word “TREK” for the
identified goods. See Decision at *10–11. Dictionary defi-
nitions and third-party registrations can show that a mark
is suggestive. See QuikTrip, 984 F.3d at 1035 (finding that
“kitchen” is a “highly suggestive, if not descriptive” word
based on evidence of dictionary definitions and third-party
registrations, among other evidence); see also Juice Gener-
ation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed.
Cir. 2015). Moreover, third-party registrations “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 . . . sug-
gestive meaning, leading to the conclusion that that seg-
ment is relatively weak.” Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015) (cleaned up).
Accordingly, 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 for the identified goods.
See Decision at *11, *14.
Trek argues that any reliance on third-party registra-
tions is improper because two third-party registrations on
Case: 22-1434 Document: 35 Page: 12 Filed: 11/15/2023

-- 12 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 13
which the Board based its conclusion have been canceled
since the Board’s decision and asks us to take judicial no-
tice of these canceled registrations. See Appellant’s Br. 24–
25; ECF No. 12. We deny Trek’s motion for judicial notice.
Even if we took judicial notice of the canceled registrations,
such notice would not change the outcome or discount the
dictionary definitions and at least one other third-party
registration for the identified goods on which the Board re-
lied and which provide substantial evidence for the Board’s
finding. See Decision at *11; J.A. 3467 (third-party regis-
tration of the STAR TREK SKELE-TREKS mark for cloth-
ing including shirts in International Class 25). Regardless,
any alleged error by the Board in finding that Trek’s TREK
mark is somewhat conceptually weak and somewhat sug-
gestive for the identified goods would be harmless because
it appears that the Board concluded there was no likelihood
of confusion without accounting for this finding. See Deci-
sion at *14 (“[E]ven ignoring the somewhat conceptually
weak nature of the word TREK in connection with the var-
ious Class 18 and 25 goods . . . 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 [identified] goods[.]”). Accordingly, we find Trek’s ar-
guments on conceptual strength under DuPont factor six
unpersuasive.
C. DuPont Factor Thirteen
Under DuPont factor thirteen, courts consider “any
other established fact probative of the effect of use.” Quik-
Trip, 984 F.3d at 1036 (quoting DuPont, 476 F.2d at 1361).
Trek contends that the Board erred in finding that the
87/565,645 prosecution for the TREK standard character
mark supports a finding of no confusion. See Appellant’s
Br. 9, 25–30; J.A. 99 (TREK standard character mark).
Specifically, Trek argues that the Board erred by failing to
consider the argument and evidence concerning actual con-
fusion (DuPont factor eight) raised during the 87/565,645
prosecution. See Appellant’s Br. 27–30. We disagree.
Case: 22-1434 Document: 35 Page: 13 Filed: 11/15/2023

-- 13 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 14
During the 87/565,645 prosecution, the United States
Patent and Trademark Office refused registration for the
TREK standard character mark for apparel due to likely
confusion with five registered marks containing the word
“TREK” for various footwear and clothing. See J.A. 3791–
95; Decision at *16. Trek overcame this objection, arguing
in part that if the five registered marks containing the
word “TREK” can coexist with one other, then the proposed
TREK standard character mark can also coexist with the
five registered marks. See J.A. 3774–77; Decision at *16;
J.A. 3772 (Trek arguing that “years of peaceful coexistence
(according to the 8 th DU PONT [sic] factor . . .) weigh
strongly in favor of the registration of TREK”); see also J.A.
3766, 3769. The 87/565,645 prosecution was presented to
the Board below as evidence for no likely confusion be-
tween Trek’s marks and the RANGER TREK marks, and
the Board agreed, finding that “given the various ‘trek’
marks registered for similar or related goods, it would seem
[that the RANGER TREK] marks, where the addition of
‘RANGER’ creates a sufficient distinction, may coexist as
well.” Decision at *16; see also Reconsideration Decision at
J.A. 50–52.
Contrary to Trek’s arguments raised on appeal, we find
that the Board sufficiently considered the argument and
evidence concerning actual confusion (DuPont factor eight)
raised during the 87/565,645 prosecution and that substan-
tial evidence supports the Board’s interpretation of the
87/565,645 prosecution. Moreover, even if the Board did
err in its interpretation, this error would be at most harm-
less because the Board explained that “the absence of these
‘other established facts’ [under DuPont factor thirteen]
would not change the result” of no likely confusion. Recon-
sideration Decision at J.A. 52. Trek’s arguments on
DuPont factor thirteen are unpersuasive.
Case: 22-1434 Document: 35 Page: 14 Filed: 11/15/2023

-- 14 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 15
D. Weighing of the DuPont Factors
The Board weighed the DuPont factors and determined
that “the differences between the [parties’] 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.” Decision at *16. In other words,
the Board gave DuPont factor one decisive weight. See id.
Trek challenges such weighing, arguing that the Board
erred by placing too much weight on the dissimilarities be-
tween the marks (DuPont factor one) and by failing to give
sufficient weight to the fame and commercial strength of
Trek’s mark as to the identified goods (DuPont factors five
and six). See Appellant’s Br. 3, 9, 30–31, 34–35, 43. We
are unpersuaded.
First, in order to give any favorable weight to DuPont
factors five and six, we must find that the fame and com-
mercial strength of Trek’s TREK mark does extend to the
identified goods, which it does not. Second, we do not agree
with Trek’s argument that the Board gave DuPont factor
one undue weight. “One DuPont factor may be dispositive
in a likelihood of confusion analysis, especially when that
single factor is the dissimilarity of the marks.” QuikTrip,
984 F.3d at 1037 (internal quotation marks and citation
omitted). We see no error in the Board’s determination
that “the differences between the [parties’] marks [were]
sufficient to avoid likely confusion,” Decision at *16, “espe-
cially given the Board’s findings that the marks noticeably
differed in appearance, sound, connotation, and commer-
cial impression.” QuikTrip, 984 F.3d at 1037; see Decision
at *14 (finding the marks to be “dissimilar[] in appearance,
sound, connotation and commercial impression”). There-
fore, the Board did not err in weighing the DuPont factors.
Case: 22-1434 Document: 35 Page: 15 Filed: 11/15/2023

-- 15 of 16 --

TREK BICYCLE CORPORATION v. ISAACS 16
III. CONCLUSION
We have considered Trek’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s decision.
AFFIRMED
Case: 22-1434 Document: 35 Page: 16 Filed: 11/15/2023

-- 16 of 16 --