305 F.3d 894 (9th Cir. 2002), 00-55293, Thane Intern., Inc. v. Trek Bicycle Corp.

Docket Nº:00-55293, 00-55599.
Citation:305 F.3d 894
Party Name:THANE INTERNATIONAL, INC., a Delaware corporation, Plaintiff-Counter-Defendant-Appellee, v. TREK BICYCLE CORPORATION, a Wisconsin corporation, Defendant-Counter-Claimant-Appellant.
Case Date:September 06, 2002
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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305 F.3d 894 (9th Cir. 2002)

THANE INTERNATIONAL, INC., a Delaware corporation, Plaintiff-Counter-Defendant-Appellee,


TREK BICYCLE CORPORATION, a Wisconsin corporation, Defendant-Counter-Claimant-Appellant.

Nos. 00-55293, 00-55599.

United States Court of Appeals, Ninth Circuit

September 6, 2002

Argued and Submitted Sept. 11, 2001.

Amended Sept. 19, 2002.

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Jeffrey S. Kravitz and Cynthia M. Frey, Lord, Bissell & Brook, Los Angeles, CA, David C. Brezina, Lee, Mann, Smith, McWilliams, Sweeney & Ohlson, Hugh C. Griffin and Hugh S. Balsam, Lord, Bissell & Brook, Chicago, IL, for the defendant-counter-claimant-appellant.

Kamran Fattahi, Kelly Bauersfeld Lowry & Kelley, LLP, Woodland Hills, CA, for the plaintiff-counter-defendant-appellee.

Appeal from the United States District Court for the Central District of California; Dickran M. Tevrizian, District Judge, Presiding. D.C. No. CV-99-01470-DT.

Before: B. FLETCHER, T.G. NELSON and BERZON, Circuit Judges.


The Opinion filed September 6, 2002, slip op. 13377, and appearing at 2002 WL 31001183 (Sep. 6, 2002), is amended as follows:

The caption is changed to reflect the addition of Case No. 00-55599, the companion case consolidated with No. 00-55293. This case number was inadvertently omitted from the opinion as filed.


BERZON, Circuit Judge.

Trek Bicycle Corporation ("Trek") has long used the trademark "TREK" on its bicycles and related products. In recent years, Thane International, Inc. ("Thane") began producing and selling a stationary exercise machine under the "OrbiTrek" mark. The question in this case is whether Thane has violated the federal trademark laws by its choice of name for its product.


I. Trek

Trek, a Wisconsin corporation, has manufactured bicycles under the TREK mark since 1977. Trek also uses the TREK label on a variety of bicycle accessories including clothing, hats, packs, wrist watches, bags, video games, toys, computer

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games, helmets, and gloves. In all, Trek identifies over 1,000 products with the TREK mark. Trek products are sold through more than 1,600 independent dealers in 2,000 locations across the country. Surveys published in Bicycling Magazine in 1995, 1997, and 1999, each indicate that, according to the magazine's subscribers, Trek is the country's most popular and most respected bicycle brand.

In 1981, Trek was granted a United States trademark for the use of TREK on bicycles and bicycle frames. Since then, Trek has been awarded several other trademarks based on variations of the word "trek" including: "TREKKING" in 1996 for bicycles; "TREK 100" in 1996 for providing support services during charitable bicycle rides; "TREK BMX" in 1998 for bicycles and bicycle frames; and "ELEC TREK" in 1999 for bicycles, bicycle frames and parts. Additionally, Trek registered TREK on May 12, 1997, for "exercise equipment, namely stationary exercise cycles."

Trek spends between $3 million and $5 million per year on advertising. Publications including Rolling Stone Magazine, Men's Journal, Outside Magazine, Spin, Playboy, Women's Sport & Fitness, Bicycling Magazine, Mountain Bike, Backpacker, and Velonews run Trek's ads. Trek estimates that its website attracts 4.5 million visitors annually. Trek's other advertising comes through a variety of promotional efforts, including sponsoring athletes to use its equipment. The most prominent athlete Trek sponsors is cancer-survivor Lance Armstrong, who has used TREK bicycles to capture several Tour de France titles. The world press has chronicled Armstrong's victories, generating considerable publicity for Trek. Pictures of Armstrong with a TREK bicycle have appeared in The New York Times and on Wheaties boxes. When Armstrong presented a TREK bicycle to President Clinton, coverage of that event also made its way into papers across the country.

In 1993, Trek entered the stationary exercise machine market by introducing six models of exercise bikes bearing the TREK mark. Thane maintains that this venture was a failure. Three years later, Trek sold its TREK Fitness line to Vision Fitness, a small company founded by two former Trek employees. The transaction included a license allowing Vision Fitness to use the TREK mark for exercise equipment until September 1997. Trek claims that some dealers continued to advertise and sell stationary exercise cycles bearing the TREK logo through March 31, 1999.

In January 1998, Trek began considering another foray into the stationary exercise machine market by preparing a "new product evaluation" for a new stationary trainer. This stationary trainer would not have pedals, a seat, or handlebars. Instead, the device would allow the user to convert her mobile bicycle into a stationary one for indoor use. At the time of the summary judgment motions, Trek planned to begin selling these trainers in the summer of 2000.

II. Thane

Based in La Quinta, California, Thane operates in the "direct response marketing" field. It airs lengthy "infomercials" on television broadcast and cable stations, encouraging viewers to use the telephone, direct mail, or the Internet to purchase products directly from Thane.

In 1997, Thane developed the OrbiTrek, characterized as a "dual directional elliptical glider stationary exercise machine for indoor use." The OrbiTrek has rectangular platform pedals large enough to support a person's entire foot. The pedals move in an elliptical motion "designed to simulate the body's natural stride." Movable

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handlebars extend straight up from the OrbiTrek's base and provide upper body exercise. The OrbiTrek has no seat, because it is meant to be used while standing.

Thane began airing its 28-minute infomercial for the OrbiTrek in December 1997. The infomercial stated that the OrbiTrek sells for the "unbelievable price of only $299.95," but if you "[c]all right now [ ] the exciting new OrbiTrek will be shipped to you immediately for the unheard of low price of only $199.95."

Thane explains that the Trek part of the OrbiTrek mark had an inspiration entirely independent of Trek bicycles and other equipment. Thane's executive vice-president, Denise DuBarry, was married to an actor who appeared in the original pilot for the television Star Trek show. DuBarry has long watched the Star Trek television series and attended Star Trek conventions. By using a word associated with Star Trek, Thane believes it depicts the OrbiTrek as a "space-age, high-tech, and futuristic product." Indeed, Thane claims none of its employees had heard of TREK bicycles prior to the current dispute. Thane did not perform a trademark search for TREK before adopting OrbiTrek as the name for its exercise machine.

III. Proceedings

Thane filed an application with the United States Patent and Trademark Office to register "ORBITREK" for goods described as "stationary exercise machines." Trek thereupon filed a Notice of Opposition with the Trademark Trial and Appeal Board. On February 11, 1999, Thane filed a complaint and demand for jury trial in federal district court, seeking a declaration that it had not violated trademark laws under the Lanham Act, state common law, or state statutory law. Trek responded with a counter-claim and demand for jury trial.1 Its opposition to Thane's trademark application was suspended pending the outcome of this case.

The parties then filed cross-motions for summary judgment on all claims. The district court granted Thane's motion for summary judgment and denied Trek's, holding that "any reasonable juror would conclude that there is no likelihood of confusion between Trek Bicycle Corporation's 'Trek' mark and Thane's 'OrbiTrek' mark." Thane next moved for attorney's fees, but the district court denied this motion. Trek now appeals the district court's denial of its summary judgment motion and the district court's grant of Thane's summary judgment motion. Thane appeals the district court's denial of its motion for attorney's fees.


I. Likelihood of Confusion

The federal statute prohibiting trademark infringement requires a trademark holder to prove that the alleged infringer's use of a mark "is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a) & (b).2

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This requirement directly advances the dual purposes of infringement law: ensuring that owners of trademarks can benefit from the goodwill associated with their marks and that consumers can distinguish among competing producers. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (quoting Park W Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985)); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1053 (9th Cir. 1999) (quoting Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 163, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)).3 The question whether an alleged trademark infringer's use of a mark creates a likelihood that the consuming public will "be confused as to who makes what" product is therefore the "core element" of trademark infringement law. Brookfield, 174 F.3d at 1053.

A. Applicable Legal Standards

We ordinarily rely on an eight factor test, first articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), to help determine if a likelihood of confusion exists.4 The eight factors are: (1) the strength of Trek's mark; (2) the similarity of the Trek and Thane marks; (3) the proximity or relatedness of the goods or services; (4) Thane's intent in selecting its mark; (5)...

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