TTAB Dismisses Monster Energy's Lack of Bona Fide Intent Claim, Grants Applicant's Motion to Amend Answer to Add Collateral Estoppel Defense

Frequent TTAB litigant Monster Energy survived Applicant Cheng Shin Rubber's summary judgment motion in this opposition to registration of the mark shown below left for “tires” and for “promoting sports competitions and events of others; promoting sports competitions for others; promotion of goods and services through sponsorship of sports events,” based on Monster's "Claw Icon" mark. The Board granted Cheng Shin's motion for dismissal of Monster's lack-of-bona-fide-intent claim vis-a-vis applicant's services. The Board also granted applicant's motion to amend its answer to add an affirmative defense of collateral estoppel based on the Board's finding of lack of similarity between the two marks in an earlier opposition. However, the Board found that material issues of fact precluded the grant of summary judgment as to Monster's likelihood of confusion and dilution claims. Monster Energy Company v. Cheng Shin Rubber Ind. Co., Ltd., Opposition No. 91268626 (October 19, 2023) [Not precedential].

Collateral Estoppel Defense: In Opposition No. 91244820, Cheng Shin sought to register the same mark for various clothing items. Monster claimed likelihood of confusion with its Claw Icon mark for clothing. The Board dismissed the opposition, finding that "each mark is so stylized differently that they bear no resemblance to one another” and that “the [parties’] two marks are quite dissimilar."

Here, Cheng Shen sough leave to add the affirmative defense of collateral estoppel to prevent Monster "from relitigating the issue of similarity or dissimilarity of" the parties’ respective marks, in light of the final decision in the prior proceeding. The Board found no evidence of undue delay, prejudice to Opposer, or any bad faith or dilatory motive, on the part of applicant in bringing this motion. It further found that the defense is not futile. Noting that it "is not prohibited from applying the collateral estoppel doctrine to individual likelihood of confusion factors," the Board grated the motion to amend.

Lack of Bona Fide Intent:  Applicant's mark was displayed on a promotional cup at an event called the “Crankworx mountain biking festival,” run by a third party. The Board observed that "[w]hile it is true that, “[t]o be a service, an activity must be primarily for the benefit of someone other than the applicant” (i.e., for others) . . . an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service.” 

Here, producing and giving away promotional cups at the Crankworkx mountain biking festival and promoting the same on social media went above and beyond what would normally be expected of a tire manufacturer by promoting the racing event for the racing event’s benefit.

In addition, applicant's wholly owned subsidiary, Maxxis, featured the mark MAXXIS and applicant's mark in the same advertisements promoting athletes and sports events in magazines and on social media.

The Board concluded that applicant had a bona fide intent to use its mark for its recited services.

Likelihood of Confusion/Dilution: Applicant’s motion for summary judgment as to Monster’s likelihood of confusion and dilution claims was based entirely on its collateral estoppel defense. The Board, however, determined that "there is a genuine dispute of material fact whether the connotation and commercial impression of the mark for use in connection with clothing is the same as the mark for use in connection with tires and the promotion of sporting events and the like." And so, the Board denied the summary judgment motion as to these two claims.

Read comments and post your comment here.

TTABlogger comment: The addition of the collateral estoppel defense to Cheng Shin's answer didn't do much good, did it?

Text Copyright John L. Welch 2023.