Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to Dissimilarity of Design Marks
Deeming the first DuPont factor to be dispositive, the Board granted Applicant Critical Role, LLC's motion for summary judgment, dismissing Opposer's Monster Energy's Section 2(d) claim. Monster alleged a likelihood of confusion between its registered "Claw" design mark for various goods and services, and applicant's "Circled MV" design mark for goods and services in eight classes. Monster's unchallenged dilution claim remains pending, since dilution may exist "regardless of the presence or absence of actual or likely confusion.” 15 U.S.C. Section 1043(c)(1). Monster Energy Company v. Critical Role, LLC, 2023 USPQ2d 1382 (TTAB 2023) [precedential].
The Board characterized Monster's mark as "three downward jagged and crooked lines of approximately equal size that resemble claw scratches and are connected at right angles." Critical Role's mark (which it described as the "stylized letters ‘V’ and ‘M’ oriented vertically within a circle") "consists of smooth lines, with two lines curving down to follow the shape of a background circle, two shorter lines which are diagonal and meet in the middle of the design, and two additional, diagonal lines which appear above the other lines and extend from the background circle to meet in the middle of the design."
Unlike Applicant’s mark, there is nothing circular in Opposer’s Claw Mark, and Applicant’s mark does not resemble claw scratches. When the marks are perceived in their entireties, these clear visual distinctions between the marks create very different commercial impressions. * * * The letter M as presented in the marks is stylized with such different shapes and types of lines that the marks as a whole do not resemble one another. With marks this different, confusion is unlikely.
And so, the Board granted the motion for summary judgment as to Monster's Section 2(d) claim.
Critical Role did not move for summary judgment as to Monster's Section 43(c) dilution-by-blurring claim but it maintained that the ruling on the Section 2(d) claim rendered the dilution claim moot. Not so, said the Board, pointing to Section 43(c)(1), which states that a claim for dilution is available "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."
The Board therefore resumed the proceeding with respect to the dilution claim.
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TTABlogger comment: Since the marks are not similar for Section 2(d) purposes, how can they be similar for Section 43(c) purposes? The standard is the same. See Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). It seems that summary judgment on the dilution claim is in the offing.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 11/28/2023
6 comments
6 Comments:
Absence of likelihood of confusion doesn't *necessarily* eliminate the possibility of dilution, but if the likelihood of confusion determination is based exclusively on the mark's lack of similarity, how can that not be dispositive on dilution?
While disposition of one of these proceedings on summary judgment is a welcome event, why is this a precedential decision?
Based on the Nike case, there are three elements for dilution by blurring: (1) fame, (2) priority, and (3) likelihood of blurring. The similarity of marks is only one of six factors for deciding whether there is a likelihood of blurring, the third element. Thus, on balance, the marks may be dissimilar to some degree, and yet, there could be a likelihood of blurring based on the other five factors that point in the direction of blurring. Then, presuming fame and priority, the first and second elements, respectively, the Court or Board could reasonably find dilution. I'm not saying that is the case here, but maybe it is theoretically possible, and I would be interested to see a case where the Court/Board held as such.
Likelihood of confusion under Section 2(d) is also a multi-factor test. Yet there is no doubt that the first factor can, by itself be dispositive. So why can't the same be true for dilution? The standard for similarity of marks is the same.
The T.T.A.B. myopically focused on the statutory phrase that dilution could occur regardless of confusion or competition or actual economic injury. Instead, it should have looked to whether likelihood of dilution is possible at all when the marks are so different that confusion is not likely. Dilution by blurring is one mark seen by customers as identifying two sources. Two different marks identifying two different sources is not blurring and will not be likely to cause dilution. Dilution by blurring can occur only if the marks are so similar as to be essentially the same, but the respective goods or services of the parties are so different and far-removed that the ordinary buyer is not likely to be confused as to source or sponsorship. For dilution to occur, the marks must be so closely similar that they will be seen as essentially the same mark. If the T.T.A.B. has found that the conflicting marks are not similar enough to meet the likelihood of confusion test, then, by definition, they are not similar enough for dilution to be likely to occur.
The Board has said that the level of similarity necessary for dilution is not a heightened standard compared to the Section 2(d) standard. See Nike v. Maher. In any even, Monster failed to meet the standard.
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