Monster Energy takes no prisoners with its brand and recently blocked a MONSTER towel trademark. As noted in a previous article, Monster Energy Company (“Energy”) is one of the most litigious parties in protecting its brand. They have numerous trademarks covering a variety of goods for their various MONSTER marks. The most well-known marks being MONSTER ENERGY and M MONSTER ENERGY for energy drinks. Energy also has variations of its MONSTER marks for promoting various goods and services in the sports, motorsports, electronic sports, and music industries.
Janet Chernitzky (“Chernitzky”) filed for the mark MONSTER TOWEL for beach towels in class 24. She states a first use date in commerce of September 15, 2014. Energy filed an opposition to oppose registration of the trademarks citing a likelihood of confusion.
Common Law Towel Use
Energy previously licensed use of its marks for athletic towels in 2009 to Kawasaki. An example of the towel is shown below:
In view of evidence of the use of the towels, the Trademark Trial and Appeal Board (TTAB) found Energy proved common law use for athletic towels prior to 2014.
Scope of Protection for Monster Marks
Energy does not have a trademark on the term “monster” as a stand-alone mark. Energy alleged that its MONSTER marks are famous. The TTAB found the Monster Energy Marks for energy drinks fall “on the much higher end of the commercial strength spectrum ‘from very strong to very weak’ among consumers of energy drinks and persons who participate in or follow extreme sports, combat sports, water sports, and motor sports”. However, they found that Energy did not submit evidence to support a finding that their Monster marks are famous for clothing, accessories or towels. Thus, with regard to these goods, Energy receives only a normal scope of protection for inherently distinctive marks.
Chernitzky offered numerous examples of use of the term “Monster” on several third-party registrations. Unfortunately, few of the registrations were for towels. The TTAB found the majority of the third-party registrations covered goods and services not related to beach towels or similar goods. Accordingly, the TTAB found that the commercial strength of the Monster marks for energy drinks “outweighs any conceptual weakness”. Thus, the marks are entitled to a broad scope of protection with regard to those goods.
Similarity of Monster Marks
Regarding the similarity of the marks, the TTAB found the term “Monster” is the dominant portion of both marks. They also noted that the terms “towel” in Chernitzky’s mark and “energy” in Energy’s mark has been disclaimed. Chernitzky argued there are differences in connotation and phonetics when viewing the marks as a whole. Notably, that Energy’s marks “suggest[s] the aggressive power that comes with being jacked up on highly caffeinated stimulants”. In contrast, for her mark, the word invokes the “enormous size” of the beach towels. Unfortunately for Chernitzky, the arguments were unpersuasive. The TTAB found there were more similarities in the marks than differences, which lends to a likelihood of confusion.
Similarity of Goods
With regard to the similarity of the goods, Chernitzky argues that Energy does not own a registration for towels or any other goods listed in class 24. Energy countered with its established common law use of its marks in connection with athletic towels that predates Chernitzky’s use for beach towels. The TTAB noted that Energy uses its marks on a wide range of products. They also noted there is not great dissimilarity between athletic towels and beach towels. In fact, Cherintzky’s website encourages use of the towels in places other than the beach such as tailgating. The TTAB noted that the question is whether consumers are likely to think that Energy is selling beach towels, not whether they are actually selling beach towels. Accordingly, the TTAB found consumers could readily think the MONSTER TOWEL beach towel is another extension of Energy’s collateral products line.
Energy does an excellent job at policing its mark. It should surprised no one that Monster Energy moved to block a trademark for a MONSTER towel. This policing ensures Energy maintains its full trademark protection for all of its marks. They are prolific in promoting its brand and filing registrations on numerous classes of goods. Energy did not have a registration for goods listed in the same class as Chernitzky’s mark. However, they were able to prevail based on their common law use of similar goods. Their extensive use of their marks on a wide range of goods also contributed to their success. It is important to have an experienced trademark attorney conduct a search when you are launching a brand. This is particularly important if your mark may be similar to a mark that is well known.
A common law trademark is acquired by using your mark in commerce to obtain brand recognition without registering the mark federally or at the state level.
There are several advantages to federally registering a trademark. For example, providing notice to the public of your claim of ownership in the mark; a presumption of validity of the mark; use of the registration symbol; and an exclusive right to use the mark in conjunction with the goods/services recited in the registration.
It is likely famous for energy drinks but it did not prove fame for clothing, accessories or towels in its 2020 TTAB proceeding against MONSTER TOWELS.
The goods and services between companies does not need to line up perfectly. The questions is whether a likelihood of confusion exists. MONSTER ENERGY did sell athletic towels which were essentially “close enough” to beach towels. MONSTERY ENERGY is also a very strong brand.