Three Recent Inter Partes Proceedings: The Bigger They Are ....

Here for your consideration are three recent Board decisions in David v. Goliath inter partes proceedings. David hung in there and won each time. Are there any lessonse to be drawn?

Monster Energy Company v. Country Innovation & Supply LLC, Opposition No. 91270179 (January 30, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor) [The Board dismissed this Section 2(d) opposition to registration of the mark BEAST HACK (standard characters) and the two word-and-design marks shown below, for hats, clothing, baseball and softball training aids, and hand grips, in view of the mark UNLEASH THE BEAST! and several other BEAST-FORMATIVE marks for apparel and accessories. The Board found the term "BEAST" to be "both conceptually and commercially weak in the fields of apparel and sports/fitness" and the marks dissimilar in appearance, sound, connotation and commercial impression.]

Monster Energy Company v. Howard Vernick and Coulter Ventures, LLC d/b/a Rogue Fitness, Cancellation No. 92072010 (January 30, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch) [The Board denied Monster Energy's petition for cancellation of a 2013 registration for the mark shown below, for "Athletic training services; Consulting services in the fields of fitness and exercise; Personal fitness training services and consultancy; Physical fitness training of individuals and groups; Training services in the field of sport specific movement." Monster claimed that the mark had been abandoned, but the Board found that the mark "remained in bona fide use in the ordinary course of Vernick’s trade during the alleged period of nonuse." Moreover, the Board noted that "even if Vernick were deemed to have discontinued use during the alleged period of nonuse, we would find that he retained the requisite intent to resume use to avoid abandonment."]

Audemars Piguet Holding S.A. v. Tenegroup Ltd, Opposition No. 91244316 (January 31, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [The Board dismissed this six-year-old opposition to registration of the mark OAK AND LUNA for jewelry and retail clothing store services. Opposer Audemars Piquet claimed likelihood of confusion with its registered mark ROYAL OAK for watches and clocks, likelihood of dilution, and fraud. The Board construed the fraud claim as one for nonuse with respect to some of applicant's goods and services, and granted that nonuse claim. As to the likelihood of confusion claim, the dissimilarity of the marks was dispositive. As for dilution, the Board found that Audemars failed to prove its mark famous even for its Section 2(d) claim, and so it could not meet the more stringent test for fame vis-a-vis dilution.]

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TTABlogger comment: How many defendants have the wherewithal to withstand an attack by Goliath? The poorest defendants may get pro bono assistance. But what about the smaller companies that can't qualify for such assistance?

Text Copyright John L. Welch 2025.