TTABlog Test: Is "LOCH MOOSE MONSTER" Confusable With "MONSTER ENERGY" for Clothing, Bags, Beverageware?

Monster Energy opposed Tom & Martha LLC's application to register the mark LOCH MOOSE MONSTAH (in standard character form) for various gift shop-type goods and related services in four classes, claiming a likelihood of confusion with the mark MONSTER ENERGY and other MONSTER marks for energy drinks, beverageware, clothing, and bags, and related retails store services. Opposer argued that the proposed mark is “highly similar" to the MONSTER marks "in view of the respective terms MONSTER and MONSTAH which are phonetically similar" and further because "MONSTAH" is the dominant word in applicant's mark. How do you think this Section 2(d) opposition came out? Monster Energy Company v. Tom & Martha LLC, Opposition No. 91250710 (July 14, 2023) [not precedential] (Opinion by Judge Karen Kuhlke).

Section 2(d): The Board found the involved goods and services to be identical in part. Of course, when the goods and services of the parties overlap and there are no limitations as to channels of trade or classes of purchasers in either the application or opposer’s registration, the Board must presume that the overlapping goods and services will be sold in the same channels of trade to the same classes of purchasers. Moreover, the goods encompass inexpensive product purchased without any special degree of care. All of these factors weighed in favor of Monster Energy. But not the first DuPont factor:

It is obvious the stark dissimilarities between the marks [sic!]: Applicant’s begins with LOCH MOOSE, a play on LOCH NESS, utterly different in all respects from Opposer’s mark MONSTER ENERGY (or indeed even MONSTER by itself). Palm Bay Imps., 73 USPQ2d at 1692 (“VEUVE nevertheless remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label.”). Applicant uses the word MONSTAH as a play on the New England accent which further emphasizes the word MOOSE in its mark, parts of New England being known for moose. The word MONSTAH is in no way independently dominant in Applicant’s mark, at most, it has equal impact as it is simply part of the message about what type of monster and its regional location.

The Board concluded that the dissimilarity of the marks MONSTER ENERGY and LOCH MOOSE MONSTAH in appearance, sound, connotation, and overall commercial impression outweighed the other DuPont factors, and so it dismissed Opposer's Section 2(d) claim.

Lack of Bona Fide Intent: Monster Energy also alleged that Tom & Martha lacked a bona fide intent to use the LOCH MOOSE MONSTAH mark in connection with the identified goods and services. [Two years ago, Monster's summary judgment motion on this issue was denied in a precedential opinion (TTABlogged here)]. Tom & Martha has begun use of its mark on t-shirts, sweatshirts, hooded sweatshirts, hats, coffee cups, canvas bags and an online retail store, but not on any of the other goods or services listed in its application. (See website here). The testimony of one of applicant's principals was determinative as to the "other" goods and services:

[E]verything that I told you is what we’ve made. I was told – and I could be wrong here, but I was told that it’s easier to apply for it initially than to go back and reapply for it. So a lot of that stuff we weren’t even going to do anyway. But if it had taken off, or if it does take off, then we could do it. … So all we’re doing is T-shirts, sweatshirts, hats, coffee cups, and my wife did make some bags, canvas bags. So we applied for it. It’s easier to get a trademark for it than to get it for one thing, and try to add it on later. That’s just the way that we did it.

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Like I told you originally, the people who were trademarking it for me said its easier to do it initially than to come back and do it a second time. Most of them things I can’t picture ever selling, like wallets and stuff like that. That’s – I just don’t picture it happening. But its easier to – I was told it’s easier to put it in initially, than to go back and do it. So I tried to cover all the bases, whether we do any things or not.

In light of that testimony and evidence, the Board dismissed Monster Energy's lack-of-bona-fide-intent claim with regard to the following: "canvas tote bags, all purposes carrying bags, cups, mugs, beverageware, headwear, t-shirts, sweat shirts, hooded sweat shirts; Online retail," and so the opposed application will proceed as to those goods.

The Board sustained that claim as to the following; “all-purpose sport bags; backpacks; wallets; handbags; travel cases; brief cases; key cases; business card cases containers for household use; sweat bands; sweat suits; sweat jackets; socks; shorts; tank tops; tube tops; halter tops; footwear; jackets; coats; gloves; belts; online retail store services featuring wallets; online wholesale store services featuring wallets," and ordered that those goods be deleted from the application."

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TTABlogger comment: Is there any accent worse than a Boston accent? Answer: No. BTW, "The Loch Moose Monster" is the title of a collection of stories by Isaac Asimov, published in about 1993.

Text Copyright John L. Welch 2023.