Thane International, Inc. v. Trek Bicycle Corp.

Trek Bicycle Corporation (Trek) (defendant) had manufactured bicycles under the mark “Trek” since 1977 and had used “Trek” on numerous related products, including video and computer games, toys, clothing, and helmets. Surveys published in 1995, 1997, and 1999 editions of Bicycling Magazine heralded Trek as the most popular and respected bicycle brand in the United States. Trek spent between $3 million and $5 million annually on advertising in publications that included Rolling Stone, Men’s Journal, Outside Magazine, and Playboy. Trek also sponsored athletes to use its equipment, most notably Lance Armstrong, who rode Trek bicycles to win several Tour de France titles. Pictures of Armstrong with a Trek bicycle appeared in the New York Times and on Wheaties cereal boxes. In 1993, Trek entered the stationary-exercise-bike market, but Trek authorized dealers to use “Trek” only until September 1997. In 1998, Trek began plans to re-enter the stationary-exercise-machine market but had not yet done so by 1999. Thane International, Inc. (Thane) (plaintiff) sold and developed the OrbiTrek, an elliptical stationary-exercise machine. In 1999, Thane sued for a declaratory judgment that it did not violate trademark laws concerning “Trek,” and Trek counterclaimed. The parties cross-moved for summary judgment. The district court granted Thane’s motion as to all of its claims, including lack of trademark dilution. Trek appealed.