Precedential No. 5: TTAB Finds ICE MONSTER & Design Confusable With MONSTER ENERGY for Restaurant Services

Frequent TTAB litigant Monster Energy prevailed in this opposition to registration of the mark ICE MONSTER & Design for "restaurants, coffee shops, ices parlors, snack bars with take-out for flavored and fruit ice products, and specifically excluding frozen yogurt" [ICE disclaimed]. The Board found the mark likely to cause confusion with the registered mark MONSTER ENERGY for restaurant services. Although the MONSTER ENERGY mark is famous for energy drinks, not so  for restaurant services. Nonetheless, the Board found the marks to be "very similar," the services legally identical in part, and the trade channels and classes of consumers presumably the same. Monster Energy Company v. Chun Hua Lo, 2023 USPQ2d 87 (TTAB 2023) [precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that Monster's broad recitation of "restaurant services" encompasses the applicant's restaurants with take-out for flavored and fruit ice products. Applicant argued that Monster "uses its cafeteria mostly to feed its employees," but the Board pointed out once again that the issue of likelihood of confusion must be decided on the basis of the recitation of services in the cited registration, regardless of actual marketplace usage. Because the services are legally identical in part, the Board must presume that they travel in the same trade channels to the same classes of consumers.

Turning to the strength of the mark MONSTER ENERGY, the Board found that MONSTER is the more dominant term because of its "hyberbolic quality." "MONSTER ENERGY as applied to restaurant services suggests either a monster of energy or an energetic monster ...." In addition, the first word in a mark "generally creates the strongest commercial impression.". [I think neither term is dominant - ed.]. In either case, the mark is arbitrary and conceptually strong.

With regard to commercial strength, the Board found the mark MONSTER ENERGY to be famous for energy drinks for purposes of likelihood of confusion. But Monster's evidence of fame related to energy drinks, not restaurant services. Its use for restaurant services "has not resulted in any notable commercial strength ...." Monster operates one restaurant, Monster Bistro Café, in its headquarters building, for employees and visitors to the building. The Board found no evidentiary basis for finding MONSTER ENERGY to be commercially strong for restaurant services. [Is the mark MONSTER ENERGY used for the restaurant? - ed.].

The Board also considered whether the strength of the MONSTER ENERGY mark for energy drinks "would impart strength to its mark when used for restaurant services." Monster argued that consumers would perceive energy drinks as closely related to the flavored and fruit ice products offered at applicant's restaurants. The Board acknowledged Monster's "limited" evidence that some takeout restaurants that offer ice products may also offer MONSTER ENERGY drinks, but it concluded that the fame of MONSTER ENERGY drinks does not extend to applicant's recited services.

Comparing the marks at issue, the Board found the "hyperbolic term" MONSTER to be dominant in both marks. Moreover, the term ICE is not only disclaimed, but as presented in the opposed mark may indicate the specialty of the restaurant, "while the term MONSTER alone indicates the mark." [Really? ed.]. The Board also accorded the literal element ICE MONSTER greater weight than the design element because "[t]he blue rectangle suggests an ice cube and so reinforces the term ICE." Monster's mark, on the other hand, is registered in standard character form, and could be employed in the same color and stylization as the applicant's mark.

Considering the marks as a whole, we find the common term MONSTER, especially when applied to legally identical restaurant services, creates the same commercial impression, and this impression does not alter with the addition of the terms ENERGY, ICE, and the background design or stylization of Applicant’s mark.

Applicant pointed to the eleevnth DuPont factor, which considers "the extent to which applicant has a right to exclude others from use of its mark on its goods," arguing that use of his mark in Taiwan since 1996 and its recent arrival in Hawaii, and his aggressive action in policing the mark in this country, demonstrates his right to exclude others. The Board, however, was unmoved.

DuPont factor eleven does not consider the strength or fame of the applicant’s mark in the same way the scope of protection is determined for the prior user under DuPont factor five. The factor may be useful to determine how marketplace realities and consumer perception defined by applicant’s common law use and consequent right to exclude other users affects the likelihood of confusion. While the factor may consider any successful trademark enforcement activity in which the applicant has engaged, the purpose is not to assess the scope of protection of the applicant’s mark (as in the fame analysis for the prior user’s mark), but to discern the marketplace reality and consumer perception of Applicant’s use. In this way, when relevant evidence of an applicant’s right to exclude is offered under DuPont factor eleven, it may impact the weight given to other DuPont factors in our ultimate weighing of the factors.

Here, the involved services are identical, and so prior decisions involving merely related goods are not applicable. Moreover, the testimony regarding applicant's use of his mark was withdrawn, leaving no probative evidence on the issue.

Finally, under the 13th DuPont factor, Monster maintained that the applicant adopted his mark in bad faith, but its only evidence was an admission that "he was familiar with Monster before he selected and began using Applicant's mark in the U.S." However, the CAFC and the Board have repeatedly held that "mere knowledge of a prior similar mark is insufficient to demonstrate bad faith adoption."

Balancing the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: I think the two marks are unitary and not confusingly similar.

Text Copyright John L. Welch 2023.