Wednesday, February 21, 2007

TTAB Grapples with "MONSTER" Marks in Massive Consolidated 2(d) Proceeding

The Board valiantly sorted through three oppositions and one petition for cancellation concerning the likelihood of confusion between various MONSTER marks for video game cartridges, game software, gym bags, networking cables, power cells, clothing, and other ancillary products. Rather than try to lay out all the marks, goods, and issues involved, the TTABlog will hit some of the high points. Monster Cable Prods. and Monster Cable Int'l, Ltd. v. Tecmo, Ltd. and Tecmo Kabushiki Kaisha, Oppositions Nos. 91154125, 91154136, 91158681; Cancellation No. 92041582 (February 2, 2007) [not precedential].

Preliminary Rulings: Before reaching the merits, the Board made several noteworthy preliminary rulings. It sustained an objection to one testimony deposition taken by telephone because Applicants failed to provide copies of the exhibits as promised, and refused to postpone the deposition until the exhibits arrived. It declined to allow Opposers to amend their petition for cancellation to add an issue (whether the challenged registration was void ab initio for lack of use) that was not tried, either expressly or impliedly. Likewise, the Board refused to allow Applicant to assert the affirmative defense of laches when Applicants neither pleaded that issue nor sought leave to amend the pleadings to conform to the evidence.

Finally, the Board (as usual) rejected Opposers' claim to ownership of a family of MONSTER marks. Mere ownership of a number of registrations for purported "family" members is not sufficient. "[T]he common element must be so extensively advertised that the public recognizes the 'family surname' as a trademark." Here, Opposers' evidence fell short.

Priority: Opposers pleaded 25 registrations in the oppositions and 22 in the cancellation, but they did not submit status and title copies of their registrations with their pleadings or via notice or reliance, nor did any witness testify to the current status or validity of the registrations. Therefore, Opposers had to rely on their common law use of the marks to establish priority.

Applicants relied on their application filing dates for their marks MONSTER RANCHER and MONSTER RANCHER ADVANCE. Opposers failed to prove priority for the word mark MONSTER by itself, but did manage to prove priority for MONSTER COMPUTER, MONSTER MULTIMEDIA, MONSTER NETWORKING, MONSTER INTERNET, MONSTER POWER, MONSTER SPORT, MONSTER GEAR, MONSTER GAME, MONSTER ATTITUDE, MONSTER BATTERY, MONSTER USB, and MONSTER LINKS, for various goods (mostly cables).

Likelihood of Confusion: In a nutshell, the Board found "no basis to infer that consumers would expect any relationship as to source between opposers' highly specialized cables and connectors and other computer and gaming accessories and applicants' computer games and software."

However, the parties' clothing products and gym bags were identical, and opposers' carrying cases for game consoles were similar to Applicant's school bags and the like. As to Applicant's goods in classes 16, 24, and 28, Opposers offered no proof of relatedness.

As to the marks, the word MONSTER has a different meaning in Applicants' mark for video game cartridges and Opposers' marks. In the former, it refers to "imaginary and horrifying animals," whereas in the latter MONSTER connotes "big, gigantic." However, as to Applicant's goods that are not closely related to video game cartridges, the Board considered the visual and phonetic similarities of the marks to outweigh any differences in connotation and commercial impression.

The Board concluded that Applicants' marks MONSTER RANCHER for video game software and MONSTER RANCHER ADVANCE for game software for amusement machines are not confusingly similar to Opposers' marks. However, the MONSTER RANCHER mark for goods in classes 9, 18, 24, 25, and 28 is likely to cause confusion with Opposers' marks MONSTER GAME for carrying cases for game consoles, MONSTER ATTITUDE, MONSTER SPORT, and MONSTER GEAR for clothing, and MONSTER GEAR for gym bags.

The Board therefore dismissed the petition for cancellation, dismissed one opposition, and sustained in part and dismissed in part the other two oppositions.

TTABlog comment: I commend Judge Bergsman for patiently sorting through all of these facts and setting them out in a comprehensible fashion.

Text Copyright John L. Welch 2007.


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