TTAB Renders Split Decision in MONSTER v. MONSTERFISHKEEPERS Double-Header

The Board sustained Monster Energy's opposition to registration of the M Design mark shown below left, finding it likely to cause confusion with Monster Energy's registered design mark shown below right, for overlapping clothing items. However, the Board dismissed Monster Energy's opposition to registration of MONSTERFISHKEEPERS, in standard character form, finding it not likely to cause confusion with opposer's common law mark MONSTER, both for clothing items. Monster Energy's dilution-by-blurring claim directed at the MONSTERFISHKEEPERS mark failed utterly. Monster Energy Company v. Li-Wei Chih, Consolidated Oppositions Nos. 91205893 and 91205924 (February 1, 2016) [not precedential]

Evidence of third-party use of MONSTER-formative marks led the Board to find that the mark MONSTER is "somewhat weak for clothing." The letter M, however, was not shown to be similarly weak.

As to the marks, the Board found the two design marks to be "overall quite similar."

We do not ignore the design elements in the marks unique to each mark, particularly Applicant’s use of devil horns and tail and Opposer’s mark appearing to be a three-pronged claw mark. However, we must further keep in mind that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. *** Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections

As to the word marks MONSTER and MONSTERFISHKEEPERS, "the additional matter in Applicant’s mark plays a significant role in helping to create a commercial impression that is quite different from Opposer’s mark, MONSTER."

That is, consumers encountering Applicant’s mark will quickly discern the three recognizable words, MONSTER and FISH and KEEPERS. Applicant introduced evidence showing that the first two terms or “monster fish” may be used to describe an extremely large fish kept as a pet or a gigantic fish that might be described fantastically as a “monster."

The Board therefore found the marks to be different in appearance and sound and, "most importantly," in their meanings. "The similarity of the marks based on Applicant’s incorporation of Opposer’s mark is outweighed by the differences, especially the connotation of MONSTERFISHKEEPERS versus that of MONSTER. Accordingly, this factor weighs against finding a likelihood of confusion."

The Board therefore dismissed the Section 2(d) claim.

As to the dilution claim (involving only the word mark MONSTERFISHKEEPERS), Opposer did not prove that its MONSTER mark was famous prior to 2010, Applicant's first use date. Moreover, the marks MONSTER and MONSTERFISHKEEPERS have little similarity, and in any case Opposer is not the sole user of the mark MONSTER. There was no direct evidence of the level of recognition of the MONSTER mark, little evidence of an intent on the part of Applicant to associate his mark with the MONSTER mark, and no proof of actual confusion.

Read comments and post your comment here.

TTABlog comment: It seems to me that Applicant was trying to suggest Opposer's marks without copying them exactly. What do you think? BTW, note that Applicant was represented by Eve Brown of the Boston University Law School Clinic, and formerly of the Suffolk University Law School Clinic.

Text Copyright John L. Welch 2016.