Wednesday, February 28, 2024

First DuPont Factor Brings TTAB Dismissal of Monster Energy's Opposition to LAIKABEAST & Design for Mugs and Plates

Frequent TTAB litigant Monster Energy Company got mugged in this opposition to registration of the mark shown immediately below, for mugs and plates. Monster claimed a likelihood of confusion with various BEAST-formative marks for beverages, as well as a lack of bona fide intent. The Board concluded that the involved marks are "too dissimilar overall to warrant a finding of likelihood of confusion," and it found that Applicant Rodriguez had the capacity to market his products and had taken steps to create a small Internet business, thus defeating the lack-of-bona-fide-intent claim. This post will attempt to hit the highlights of the 53-page opinion. Monster Energy Company v. Victor Rodriguez, Opposition No. 91271109 (February 26, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Goods: Monster argued that the goods are "highly related," since mugs are "beverageware," and so consumers will believe that applicant's plates and mugs are distributed by or co-branded with Monster. However, Monster provided no evidence to support its argument.

Trade Channels and Classes of Consumers: There was no evidence that the trade channels for the involved goods overlap. "Even if we assume that mugs and plates are carried by mass merchandisers, that does not constitute a common channel of trade." As to consumers, "[t]he fact that some portion of Applicant’s target audience – gamers and anime fans of all ages – may from time to time also consume energy drinks of the type listed in Opposer’s Beast mark registration, is not a sufficient basis to conclude that the classes of customers are the same."

The Marks: Monster asserted its rights in the marks UNLEASH THE BEAST!, UNLEASH THE NITRO BEAST!, UNLEASH THE ULTRA BEAST!, UNLEASH THE SALTY BEAST!, REHAB THE BEAST, HYDRATE THE BEAST! and PUMP UP THE BEAST! Monster claimed that applicant's mark is "highly similar" because the word "beast" is dominant in all the marks. The Board disagreed.

Like Applicant’s composite mark, whose wording LAIKABEAST is unitary and thus has no dominant portion, each of Opposer’s Beast marks are also unitary, and each has a structure that is similar to one another, yet quite different from Applicant’s mark.

The Board concluded that the marks are much more dissimilar than similar, and that the first DuPont factor "weighs strongly against a finding of likelihood of confusion."

Strength of the Pleaded Marks: The Board agreed that Monster's Beast marks "are somewhat suggestive of Opposer’s energy drink beverages" (the marks "suggest an intended result or effect to a consumer of Opposer’s caffeine and energy drinks (i.e., consumers will be pumped up, hydrated, unleashed, or rehabbed.")

As for commercial strength, the Board found that UNLEASH THE BEAST, which appears on Monster's beverage containers, has "moderate commercial strength," but as to the other marks, there was "little evidence" regarding their strength.

Section 2(d) Conclusion: "Simply put, the parties’ marks are too dissimilar overall to warrant a finding of likelihood of confusion and the first DuPont factor, accordingly, is dispositive in this case."

Bona Fide Intent: The Board observed that starting a small business to make and sell plates and mugs printed with designs "is not rocket science." Applicant Rodriguez purchased equipment to produce the goods, including a professional heat press machine that is capable of printing images on mugs and plates, took other steps geared toward creating a small business on the Internet. The Board noted that "[e]vidence that a party has the capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim."

The Board found that "Applicant’s evidence and testimony as a whole, including his deposition testimony, has been credible and straightforward," and that Monster failed to demonstrate that Rodriguez lacked the requisite bona fide intent to use his LAIKABEAST and Design mark in commerce in connection with mugs and plates.

Read comments and post your comment here.

TTABlogger comment: The bigger they are, the harder they fall.

Text Copyright John L. Welch 2024.


At 10:53 AM, Anonymous Anonymous said...

I guess the Office wasn't on its current FTF kick when Monster applied for these registrations.

At 10:55 AM, Blogger Scott Brown said...

I want to see Monster's trademark budget. I would also like to be a fly on the wall in the meetings on these!


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