Wednesday, June 26, 2024

TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Frequent TTAB litigant Monster Energy lost another one at the TTAB, this time on summary judgment. It sought cancellation of a registration for the mark PREDATOR & Design, issued in 2017, for soft drinks and energy drinks made with natural ingredients, claiming lack of bona fide intent and abandonment. The registration was blocking Monster's application to register PREDATOR for energy drinks, soft drinks, and sports drinks. The Board granted respondent's summary judgment motion, finding no genuine disputes of material fact. Monster Energy Company v. Golden Global Innovations Besloten Vennootschap and Golden Global Group BV, Cancellation No. 92078934 (June 20, 2024) [not precedential].

The application underlying the challenged registration was filed as a Madrid Protocol request for extension of protection under Section 66(a). That provision includes a requirement that an applicant declare that it has a bona fide intent to use the mark in commerce. "To prove intent to begin use, Respondent must produce evidence showing that, under its particular circumstances, its activities are those that a reasonable business with a bona fide intent to use the mark in United States [('U.S.')] commerce would have undertaken." The three-year statutory abandonment period began no earlier than May 2, 2017, the issue date of the registration (the “Abandonment Period”).

Respondent submitted declarations, testimony, and exhibits, while Monster submitted no contradictory evidence. Instead, Monster argued that none of respondent's activities demonstrated use in commerce during the Abandonment Period because they were “token” uses and/or were internal rather than “open” uses of the mark. Monster contended that these activities did not demonstrate an intent to resume or commence use because the activities were “sporadic” and “half-hearted,” and not the activities of a reasonable business.

The Board, however, found that "Respondent’s activities are the type that would be undertaken by a reasonable business under Respondent’s particular circumstances with a bona fide intent to use the mark in U.S. commerce in association with beverage goods both as of the application filing date and during the Abandonment Period."

As a relatively small operation consisting of only the two Co-Founders based in the Netherlands, prior to the application filing date Respondent created globally accessible social media pages and began producing its goods using a production facility that was registered with the U.S. FDA. Following the application filing date and continuing through and after the registration date, Respondent, inter alia, sponsored U.S.-based athletes, engaged in various negotiations with U.S. distributors, suppliers, retailers, and marketing/business strategists, pitched its goods and provided many samples at various exhibitions, conferences, and festivals, actively pursued the proper labeling, registration, and licensing to sell its goods in the U.S., created a U.S. entity, and, ultimately, entered into contracts for U.S. marketing strategies, U.S. distribution, and sale of its goods bearing the mark in U.S. retailers. Furthermore, the activities following the Abandonment period in which Respondent began selling its goods through U.S. distributors and retailers support the declarations, testimony, and evidence regarding Respondent’s intent to commence use during the Abandonment Period.

The Board therefore concluded that Respondent "[c]arried its burden of proving that there are no genuine disputes of material fact that it had a bona fide intent to use its mark in U.S. commerce as of the application filing date and an intent to commence use in U.S. commerce during the three-year statutory period of nonuse." And so, it denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board did not reach the issue of whether respondent's activities during the Abandonment Period constituted actual use in commerce; it was enough to show that there was no intent not to commence use.

Text Copyright John L. Welch 2024.


At 1:15 PM, Anonymous Anonymous said...

With what is likely a $10M+ TTAB budget why not give it a try?


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