Differences between MONSTER and CLEVELAND MONSTERS and Lack of Actual Confusion Lead Board to Dismiss Section 2(d) Opposition

In an exhaustive 77-page decision, the Board dismissed Monster Energy's opposition to registration of the mark CLEVELAND MONSTERS & Design for a variety of goods and services in eight classes, finding that opposer had failed to prove a likelihood of confusion with its mark MONSTER used and/or licensed for beverages and various other products and services. The differences in the marks and the lack of proof of any actual confusion outweighed the other pertinent DuPont factors. The Board also found that Monster Energy acquiesced to applicant's use and registration of the CLEVELAND MONSTERS mark by its silence regarding applicant's use for many years of the LAKE ERIE MONSTERS mark. This blog post will touch on the highlights of the decision, but the reader is urged to read the entire opinion. Typical of many of Judge Bergsman's opinions, it is a primer on basic trademark principles applied by the TTAB. Monster Energy Company v. Cavaliers Hockey Holdings, LLC, Opposition No. 91240680 (October 6, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

In 2016 applicant changed the name (and logo) of its American Hockey League (AHL) team from LAKE ERIE MONSTERS, which it had used since 2006, to CLEVELAND MONSTERS. The Board found that Opposer has priority as to the goods and services in its pleaded registrations, and as to the common law stand-alone mark MONSTER for beverages since 2002.

Opposer claimed that its MONSTER and MONSTER-formative marks are famous. Applicant introduced copies of its own 15 existing registrations for CLEVELAND MONSTERS of LAKE ERIE MONSTERS and dozens of third-party registrations for marks containing the word MONSTER. From these registrations, the Board concluded that "the word 'Monster' is highly suggestive for all identified goods and services other than beverages and, therefore, it falls on the inherently or conceptually weaker side of the spectrum for those goods and services." However, there were no third-party MONSTER marks for beverages, and so the Board found that Opposer’s MONSTER mark is arbitrary and, therefore, an inherently or conceptually strong mark for beverages. As to commercial strength, the Board found MONSTER to be "commercially strong, if not famous" for beverages.

We find that Opposer’s MONSTER 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. However, because Opposer’s MONSTER marks are highly suggestive, they are entitled to a more narrow scope of protection with respect to other goods and services.

The Board found the lack of actual confusion to be a significant factor. Opposer had participated in a co-promotion for the LAKE ERIE MONSTERS in 2008 and both parties agree that they offer their goods and services in the same channels of trade to the same classes of consumers. Therefore there was "reasonable opportunity for actual confusion." This lack of any evidence of actual confusion weighed against finding that there is a likelihood of confusion.

As to the marks, the elements other than MONSTER in applicant’s mark, "particularly the inclusion of the geographic location Cleveland, distinguish the marks by engendering different commercial impressions."

[B]ecause Applicant’s mark identifies a sports team, consumers encountering both marks will distinguish Applicant’s mark from Opposer’s marks despite some fans referring to the CLEVELAND MONSTERS as “The Monsters.” This situation is analogous to sports fans distinguishing teams with the same name (e.g., Auburn Tigers, Missouri Tigers, Princeton Tigers, Clemson Tigers, Detroit Tigers, etc.).

The Board concluded that the marks are more dissimilar than similar.

Applicant's goods and services in class 9, 28, and 35 are not related to those of opposer. Those in classes 14, 16, 25, and 35 are identical or partly identical to those of opposer. The services in class 41 are related in part. The Board found that the goods and services travel in the same or overlapping channels of trade.

Finding that "t]he lack of any reported instances of confusion and the dissimilarity of the marks carry greater weight in our analysis," the Board concluded that "the mark CLEVELAND MONSTERS and design for the applied for goods and services is not likely to cause confusion with Opposer’s MONSTER, MONSTER ENERGY, and M MONSTER ENERGY and design marks for the goods and services in connection which Opposer has registered and uses those marks."

The Board (as usual) rejected applicant's prior registration (Morehouse) defense because the goods and services in applicant's prior registrations are not essentially the same as those in the applications here opposed.

Finally, the Board found that opposer had full knowledge of applicant's use of the word MONSTERS for a decade, and its silence regarding that usage constituted acquiescence. The lack of any incidents of actual confusion showed that confusion is not inevitable.

And so the Board dismissed the opposition.

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TTABlogger comment: Bully for the Cleveland Monsters!

Text Copyright John L. Welch 2020.