"ICE MONSTER" for Electronic Cigarette Liquid Not Confusable With MONSTER ENERGY, Says TTAB

The Board dismissed another opposition brought by frequent TTAB litigant Monster Energy Company, finding Applicant SS Vape's mark ICE MONSTER and Design for "electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges," not confusingly similar to various "MONSTER" marks owned by Opposer for, inter alia, nutritional supplements in liquid form, energy drinks, and collateral merchandise. The findings that the goods are not related and are offered in different channels of trade, coupled with the lack of proof of actual confusion, carried "great weight" in the Board's Section 2(d) analysis. Monster Energy Company v. SS Vape Brands, Inc., Opposition No. 91255786 (August 28, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

Opposer claimed to own a family of MONSTER-formative marks, but it failed to prove the existence of a family of MONSTER marks prior to SS Vape’s July 2016 date of first use. The Board therefore gave the family of marks arguments no further consideration and instead analyzed opposer’s likelihood of confusion claim based on its individual MONSTER and MONSTER ENERGY marks.

The Board found that opposer’s marks "are inherently or conceptually strong, as well as commercially very strong, if not famous, in connection with beverages, and, therefore, entitled to a broad scope of protection in connection with these goods." The Board noted, however, that "the strength of Opposer’s marks alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle the owner to a right in gross, and that is against the principles of trademark law." On the other hand, "[f]amous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark."

Comparing the marks at issue, the Board found the word “Monster” to be the dominant part of both opposer’s marks and applicant’s mark, since ENERGY is disclaimed and ICE is a descriptive adjective modifying “Monster” and suggesting a menthol-cool or icy flavor. The design element in applicant's mark "is not so distinctive as to form a commercial impression separate and apart from the term 'Ice Monster.'" "Given the shared word “Monster” in the parties’ marks, consumers familiar with Opposer’s JUICE MONSTER, PUNCH MONSTER, JAVA MONSTER, and MUSCLE MONSTER marks, may perceive Applicant’s ICE MONSTER mark as a variant mark denoting a product line extension." [Is this an end-run around the family-of-marks issue? - ed.].

As to the goods, opposer's attempt to show relatedness was unsuccessful. There was no evidence of third-party use or registration by any company using the same mark to identify energy drinks or other beverages and e-liquids, and no evidence of any third party manufacturing both energy drinks and e-liquids with different marks. Nor did opposer prove an overlap in trade channels. "That both parties market and sell their products through the Internet is unpersuasive. The Board has long recognized that the 'Internet is such a pervasive medium that virtually everything is advertised and sold through the Internet.'"

Moreover, evidence that opposer's energy drinks are sold in vape shops was unpersuasive. "The vape/smoke shops offer Opposer’s MONSTER and MONSTER ENERGY beverages in coolers displaying third-party brand names (e.g., Pepsi, Coca-Cola, and RockStar Energy Drink) indicating that the beverages sold in the vape/smoke shops are merely one of many varied products these companies sell."

Applicant Vape SS has been using its mark since 2016 and selling nationwide since 2019, and is "No. 1, if not top three, in the entire US in e-liquid sales." Opposer launched its MONSTER ENERGY drinks in 2002 and has enjoyed enormous sales (approximately 2.5 billion cans of MONSTER ENERGY and MONSTER beverages per year). It has also sold a wide range of ancillary products bearing the marks. The Board concluded that there has been a "reasonable opportunity" for actual confusion to have occurred. The Board therefore found that "the lack of any reported instances of actual confusion weighs against finding there is a likelihood of confusion."

The fact that the products involved are relatively inexpensive and are sold in vape/smoke shops akin to convenience stores, weighed slightly in favor of finding a likelihood of confusion. However, the fact that applicant was aware of opposer's marks when it choose its mark did not amount to bad faith.

Balancing the relevant DuPont factors, the Board found that SS Vape's mark is not likely to cause confusion, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Earlier this year, Monster Energy successfully opposed the mark ICE MONSTER & Design for restaurant services. TTABlogged here.

Text Copyright John L. Welch 2023.