Metropolitan News-Enterprise


Monday, September 9, 2002


Page 1


Ninth Circuit Revives Suit Over Use of Bicycle Trademark


By a MetNews Staff Writer


A lawsuit charging that a maker of exercise equipment sold on television infomercials misappropriated the trademark of a major bicycle manufacturer was reinstated Friday by the Ninth U.S. Circuit Court of Appeals.

Wisconsin-based Trek Bicycle Corporation presented enough evidence for a jury to determine that Thane International, Inc., maker of the OrbiTrek stationary exercise machine, infringed on the company’s 25-year-old TREK trademark and related marks.

U.S. District Judge granted summary judgment to Thane two years ago, saying the companies’ products were so different that consumers could not have been confused.

But Judge Marsha Berzon, writing for the Ninth Circuit, disagreed. There were sufficient similarities between the companies’ products to justify a trial on Trek’s claims of trademark confusion, she said.

Trek presented evidence of its substantial investment in the trademarks for its bicycles and other equipment, including TREKKING, TREK 100, TREK BMX, and ELEC TREK. It also sponsors an annual promotion for Trek distributors, entitled Trekfest, and has used the term Treknology in connection with some of its accessories.

The company, which spends between $3 million and $5 million a year advertising its trademarked products, also had a short-lived foray into the stationary bicycle market under the TREK name.

Thane disputes any misuse of Trek’s marks. The company says it took the name OrbiTrek for its “elliptical glider” exercise machine because one of the company’s founders, Denise DuBarry—a television and motion picture actress of the 1970s and 80s, now featured in the company’s infomercials—is married to an actor who appeared in the Star Trek pilot.

But Berzon said Trek had presented a good deal of evidence that the use of the OrbiTrek name confused consumers, including a survey by a USC business professor who reported that more than a quarter of respondents “were confused with respect to the source or association of the OrbiTrek products based on the similarity of its name and/or logo to the Trek name or logo.”

Thane raised questions about the survey methodology, the judge acknowledged. “But drawing all justifiable inferences from the survey in Trek’s favor as we must on summary judgment, we must conclude that the survey provides evidence from which a reasonable jury could conclude that more than one quarter of those who encounter both Trek and OrbiTrek ads will be confused about the origin of the OrbiTrek exercise machine,” the jurist wrote.

Turning to the dilution claim, Berzon said Trek was not required to establish that the two marks were identical in order to show that Thane’s continued advertisement of the OrbiTrek has damaged the value of its marks.

“[W]e conclude that although TREK and OrbiTrek are not identical to one another, the possibility exists that a reasonable factfinder could find that OrbiTrek is using a mark nearly identical to Trek’s mark,” she wrote.

Berzon went on, however, to conclude that the district judge was correct in throwing out Trek’s claim of trademark dilution.

To establish dilution, she explained, a plaintiff must, among other things, establish that its mark is “famous.” To do so, the judge reasoned, it must prove either that its product is well known to the general public, or to a “niche market” in which its products as well as the defendant’s are sold.

The non-bicycling public, she said, would likely associate the name Trek with Star Trek, not with a bicycle. And the company cannot establish famousness in a niche market, she concluded, because “there is no reason to expect that the typical purchaser of stationary exercise machines—particularly those who buy their exercise machines as a result of seeing television infomercials—buys bicycles or bicycle-related products, reads bicycle magazines or watches bicycle competitions on television, any more than anybody else does.”

Thane was represented by John Kelly and Kamran Fatttahi of the Woodland Hills firm of Kelly Bauersfeld Lowry & Kelley; Jeffrey S. Kravitz and Cynthia M. Frey of Lord, Bissell & Brook’s Los Angeles office represented Trek.

The case is Thane International, Inc. v. Trek Bicycle Corporation, 00-55293.


Copyright 2002, Metropolitan News Company