Monster Energy Company (“Energy”) is known as one of the most litigious parties in protecting its brand. They have numerous trademarks covering a variety of goods for their MONSTER family of marks. The most well-known marks being MONSTER ENERGY and M MONSTER ENERGY for energy drinks. Energy also has variations of its family of marks for promoting goods and services in the sports, motorsports, electronic sports, and music industries.
The CLEVELAND MONSTERS are a minor league hockey team located in Cleveland, Ohio. They are owned by Cavaliers Hockey Holdings, LLC (“Cavaliers”). Cavaliers filed 8 intent to use trademark applications covering various iterations of CLEVELAND MONSTERS with a stylized design shown below:
One of the main recitations in the applications included sporting activities involving live performances by a hockey team. However, the applications also listed various goods and services, such as clothing, jewelry, decals and other printed materials, toys, and video games related to hockey. Energy filed an opposition to oppose registration of the trademarks citing a likelihood of confusion.
Fame of MONSTER mark
Energy does not have a trademark on the term “monster” as a stand-alone mark. However, the Trademark Trial and Appeal Board (TTAB) found that they have used the stand-alone term in association with beverages since 2002. Additionally, Energy alleged its MONSTER family of marks are famous. Famous marks expand the scope of protection of the mark. Both inherent and commercial strength analyzed to determine fame.
With regard to inherent strength, the TTAB found that the term “monster” appears arbitrary when referring to the goods listed. However, Cavaliers offered evidence of registrations of numerous other “Monster” marks by third party users. Cavaliers also offered evidence of several of its own CLEVELAND MONSTERS and LAKE ERIE MONSTERS marks that registered and have not been opposed or cancelled by anyone. One of these marks was a standard character mark for CLEVELAND MONSTERS for live hockey team performances. In light of the evidence presented, the TTAB found that the term “monster” is highly suggestive for all goods and services other than beverages.
With regard to commercial strength, the TTAB found that the MONSTER marks are strong with respect to beverages and entitled to a broad scope of protection. However, the marks are highly suggestive with respect to other goods and services and thus only afford a narrow scope of protection as to any goods and services besides beverages.
Confusion between the marks
Energy argued that it licenses its MONSTER marks on a wide range of products other than beverages and sponsors athletes. Both parties agree that their goods travel in the same channels of trade. In addition, both parties also sell to the same class of consumer. From 2008-2014, Energy entered into a marketing and promotional sponsorship agreement where MONSTER ENERGY drinks were featured in co-branded displays with LAKE ERIE MONSTERS (previous name of CLEVELAND MONSTERS) and the CLEVELAND CAVALIERS NBA franchise. No actual confusion between the marks occurred. The LAKE ERIE MONSTERS and the CLEVELAND MONSTERS designs are identical in all aspects except the geographic designation as shown below:
The TTAB found that there has been reasonable opportunity for confusion to occur and the lack of any reported instances of confusion leans in favor of no likelihood of confusion between the marks. Similarly, the TTAB found the marks dissimilar in commercial impression. In light of the foregoing, the TTAB found no likelihood of confusion between the marks.
This case highlights the importance of the strength of the trademark with respect to the listed goods and services. In determining fame, one must consider the inherent strength based on the mark itself as well as its commercial strength based on marketplace recognition. Several factors measure commercial strength indirectly, such as sales volume; advertising expenditures; length of use of the mark; widespread critical assessments; notice by independent sources of the goods or services identified in the mark; and general reputation of the goods or services. Here, Energy established its MONSTER family of marks is famous with respect to beverages. This afforded the mark a broad scope of protection with respect to beverages. However, the mark was not considered famous with respect to other goods and services. Thus, the marks afforded only a narrow scope of protection.
Other evidence heavily leaned on the side of no likelihood of confusion. Such evidence includes both the third-party registrations for a form of the term “monster” as well as the numerous marks owned by Cavaliers containing the word “monster” that had never been challenged by Energy. Given the litigious nature of Energy, I’m sure there will be a new proceeding on the horizon.
A famous trademark is one which is widely recognized by the general consuming public as designating the source of goods or services.
Examples of famous marks include GOOGLE, McDONALDS, WALMART, NIKE, COCA-COLA and APPLE.