Thursday, May 06, 2021

In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims.

In a 71-page decision, including a 15-page appendix listing the involved registrations and applications, the Board dismissed Monster Energy's oppositions and the applicants' counterclaim alleging likelihood of confusion between various claw-containing design and logo marks for a variety of goods and services. Opposer Monster Energy alleged a likelihood of confusion between the applicants' four "claw" marks shown first below in view of its "M-Claw" mark shown second below. Applicants counter-claimed on the ground of likelihood of confusion between the M-Claw mark and a fifth claw mark (the "Prior Claw Mark") shown third below. Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc., Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458 (May 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Monster Energy's Section 2(d) Claims: The Board found Monster's M-Claw mark to be inherently strong. Applicants' third-party registration evidence, without any showing of the manner or extent of use, was insufficient to weaken that inherent strength. As to commercial strength, the applicants conceded that the M-Claw mark is famous, in the likelihood of confusion context, for energy drinks, but the Board agreed with the applicants that this fame did not extend to other markets. 

Comparing the M-Claw mark with the first four of applicants'marks, the Board found them to be distinguishable:

While we find Monster’s M-Claw Mark distinctive and famous for likelihood of confusion purposes, the significant differences in appearance, sound (if any), meaning and commercial impression between Monster’s mark and Maple Leaf’s and NBA’s involved marks precludes a finding of likelihood of confusion. Kellogg v. Pack’em, 21 USPQ2d at 1145. We therefore dismiss Monster’s likelihood of confusion claims. 

Dilution:  Monster Energy also claimed dilution by blurring, but its proofs fell short of meeting the high standard for dilution fame. The Board noted that "the extent of actual recognition of Monster’s M-Claw Mark appears limited to sports drinks." Moreover, because applicants' marks are distinguishable from the M-Claw mark, "none of the former conjure up the latter."

Applicant's Counterclaim: Applicants' counterclaim "appears not as a direct assertion that confusion between its Prior Claw Mark and Monster’s M-Claw Mark is likely, but rather as an odd contingent claim." They asserted that, if the other marks are confusable, they should win on the basis of their prior use. 

The Board noted that applicants had already won, but it considered the counterclaim anyway. It found the Prior Claw mark to be inherently distinctive, but there was no proof regarding commercial success.

As to the marks, the Board found that the applicants' "Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning and overall commercial impression so as to preclude a finding of likelihood of confusion."

And so the Board dismissed the counterclaim.

Read comments and post your comment here.

TTABlogger comment: This proceeding began in June 2015.  I took nearly six years to reach the conclusions that were quite apparent at the outset: the marks are not confusingly similar!

Text Copyright John L. Welch 2021.


At 6:59 PM, Anonymous Anonymous said...

The only people who won were the attorneys $$$$$$$

At 10:48 AM, Blogger Thomas Walsh said...

Not sure I agree with the Board's comment on the contingent claim. Based on the facts here, pursuing the contingent claim appears to be a good strategic approach rather than an "odd" claim.


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