TTAB Trims Monster’s Claws By Dismissing Opposition Against Toronto Raptors Logo – Intellectual Property

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Who would win in a fight:  a monster or a dinosaur? 
According to the Trademark Trial and Appeal Board
(“TTAB”), neither.  In a recent clash between, on
the one hand, energy drink juggernaut Monster Energy Company
(“Monster”) and, on the other hand, Maple Leaf Sports
& Entertainment (“Maple Leaf”)—the proprietor
of the Toronto Raptors NBA team—and NBA Properties, Inc.
(“NBA”) (collectively, “Applicants”), the TTAB
dismissed both Monster’s likelihood of confusion and dilution
claims and Maple Leaf’s counterclaims to cancel Monster’s
asserted registrations based on likelihood of confusion solely
because the marks at issue were too dissimilar to support any of
the asserted claims.   

Monster has promoted and sold energy drinks, apparel, and other
products bearing the 1086130a.jpg mark (the
“M-Claw Mark”) since 2002.  In addition to use since
2002, Monster owns several registrations for the marks 1086130a.jpg, 1086130b.jpg, and 1086130c.jpg for various goods and services
(“Monster’s Asserted Marks”).  For their part,
Maple Leaf applied to register the marks 1086130d.jpg  and 1086130e.jpg for various goods and services (the
“Maple Leaf Marks”), and NBA sought to register the marks
1086130f.jpg and  1086130g.jpg also for various goods and services (the
“NBA Marks”) (collectively, “Applicants’
Marks”).  Maple Leaf began using the Maple Leaf Marks as
early as December 2014, and the NBA began using the NBA Marks as
early as February 2016.  Given its priority of use, Monster
initiated opposition proceedings against each of Applicants’
Marks, claiming they were likely to cause confusion with and dilute
Monster’s Asserted Marks.

Maple Leaf, however, clawed back, claiming that it had priority
over Monster by virtue of its registrations for the mark 1086130h.jpg for various goods and services (the
“Old Maple Leaf Mark”), which, according to Maple Leaf,
had been used in commerce since 1995, long before Monster began
using Monster’s Asserted Marks.  Maple Leaf counterclaimed
to cancel Monster’s registrations for Monster’s Asserted
Marks based on likelihood of confusion with the Old Maple Leaf
Mark.1

The TTAB addressed each of the parties claims in turn, finding
that no party met its burden to succeed on any of the asserted
claims for a single reason:  the marks were too
dissimilar.

The TTAB first considered Monster’s likelihood of confusion
claim.  In doing so, the TTAB only analyzed Monster’s
M-Claw Mark alone (as opposed to the other two M-Claw Marks that
also include the wordmark MONSTER ENERGY).  According to the
TTAB, the M-Claw Mark alone was more similar to Applicants’
Marks than any other of Monster’s Asserted Marks, and the goods
and services covered by the M-Claw Mark alone were “no less
similar to Applicants’ goods and services than are the goods
and services of Monster’s other pleaded
registrations.”  The TTAB thus concluded that it only
needed to analyze Monster’s M-Claw Mark to determine the merits
of the opposition.

While the TTAB’s likelihood of confusion analysis typically
analyzes the thirteen DuPont likelihood-of-confusion
factors, here the TTAB analyzed only the similarity of the
parties’ marks.  Relying on a string of Federal Circuit
cases dating back to the 1991 decision in Kellogg Co. v.
Pack’em Enters., Inc.
, 951 F. 2d 330, 21 USPQ 1142 (Fed.
Cir. 1991), the TTAB found that “in some cases the differences
between the involved and pleaded marks alone may be so significant
as to preclude likelihood of confusion as a matter of
law.”  That was the case here.

Before the TTAB addressed the dispositive similarity issue, it
first addressed the strength (i.e., conceptual and
commercial strength) of the M-Claw Mark to determine the scope of
protection afforded to Monster’s mark.  Because Monster
owns several registrations for its M-Claw Mark, it was presumed
inherently distinctive, which Applicants did not challenge. 
Applicants did contend that the M-Claw Mark was conceptually weak
based on seven trademark registrations for the following
“claw” marks covering various goods and services:

1086130i.jpg

But Applicants failed to present evidence that any of these
marks had been exposed to consumers such that they affected the
strength of the M-Claw Mark (i.e., that they were used in
commerce), and registrations alone “are not evidence of
third-party use in the likelihood of confusion context.” 
As a result, these third-party marks did not diminish the
conceptual strength of the M-Claw Mark.  Moreover, one of the
asserted third-party marks was cancelled and another covered
services “far removed from the goods and services at
issue,” making those marks irrelevant.  As for the
remaining marks, the TTAB also found them irrelevant because they
differed in commercial impression from the M-Claw Mark in important
respects, namely, that the third-party marks either had lines that
were diagonal (instead of straight down), curved (instead of
straight), not parallel to each other, and/or contained additional
matter.  Finally, even considering these third-party marks,
seven third-party uses did not constitute the “extensive”
evidence of third-party use necessary to diminish strength.

With the M-Claw Mark deemed conceptually strong, the TTAB turned
to commercial strength.  Monster presented evidence of over
$40 billion in sales of M-Claw-branded energy drinks since 2002, a
“significant” market share of the U.S. energy drink
market, $6.2 billion spent on advertising the M-Claw Mark, a
substantial following on social media (including 20 million
“likes” on Facebook, 3 million Twitter followers, 5
Million Instagram followers, and 2 million YouTube subscribers),
and an impressive array of prominent athlete and athletic event
sponsorships.  In addition, Monster offered a secondary
meaning survey indicating that 67.2% of respondents associated
Monster’s M-Claw Mark with energy drinks emanating from
Monster.  This evidence, said the TTAB, “clearly”
demonstrated that the M-Claw Mark was strong and even famous for
purposes of likelihood of confusion.  Even so, despite the
plethora of evidence provided by Monster, the TTAB found that the
M-Claw Mark’s strength and fame was limited only to energy
drinks and “d[id] not extend to other products or
services” because all of the evidence related only to energy
drinks.

Having found the M-Claw Mark strong and famous for energy
drinks, the TTAB shifted gears to the similarity, or in this case,
dissimilarity, of the marks.  Because all the marks at issue
were design marks, the TTAB’s analysis turned “primarily
on the basis of the visual similarity of the marks.” 
While the TTAB compared the marks as they appeared in the
marketplace (as opposed to side-by-side), a side-by-side comparison
of the asserted and accused marks is shown below:

1086130j.jpg

As between the M-Claw Mark and the Maple Leaf Marks, the TTAB
found that the vertical, jagged, parallel lines in the form of an
“M” (the M-Claw Mark) had a completely different
appearance, meaning, and commercial impression from the
left-to-right claw marks superimposed as seams on the left side of
a basketball.  In the words of the TTAB, “Monster’s
mark is purely a claw.  Maple Leaf’s marks are essentially
basketballs with much less prominent and significant claw
elements.”  The analysis was the same as between the
M-Claw Mark and the NBA Marks, except that the TTAB noted the claw
was superimposed in a star, not a basketball.  Despite the
strength of Monster’s M-Claw Mark, these differences were so
severe that they alone precluded a finding of likelihood of
confusion.

Maple Leaf’s likelihood of confusion claim fared no
better.  As a preliminary matter, the TTAB again addressed the
strength of Maple Leaf’s asserted Old Maple Leaf Mark. 
Unlike with Monster, the TTAB found that the Old Maple Leaf Mark
was not commercially strong and was not entitled to a broad scope
of protection.  Even though the Old Maple Leaf Mark was
subject to an incontestable registration, such registration alone
did not establish commercial strength, and Maple Leaf offered no
evidence showing that the fans of the Toronto Raptors recognized or
identified the Old Maple Leaf Mark with the Raptors.  And
because Maple Leaf failed to offer any evidence, testimony from NBA
employee Christopher Arena aimed at establishing strength was
disregarded as nothing more than Mr. Arena’s “personal
opinions.”

Turning next to a comparison of the marks, the TTAB again found
“evident dissimilarities” between the Old Maple Leaf Mark
and the M-Claw Mark.  A side-by-side comparison of those marks
is included below for reference:

1086130k.jpg

The TTAB found the differences between these marks legion,
including that the Old Maple Leaf Mark contains talons emanating
from a basketball pointing upwards and the M-Claw presents the
after-effect of a creature’s scratching or tearing
downward.  In addition to these facial differences, the TTAB
also cited testimony from one of the NBA’s own employees
detailing the differences between these two marks.  Like with
Monster’s likelihood of confusion claims, these differences
were sufficient to preclude a likelihood of confusion.

Finally, Monster’s dilution claim also failed.  For a
dilution claim to succeed, the party asserting it must not only
show sufficient similarity between the marks but also that the mark
is sufficiently famous for dilution purposes.  The
test for fame under dilution “requires a more stringent
showing” than fame for likelihood of confusion, and
“niche fame” (i.e., fame in a single industry)
is not enough.  Not only did the TTAB find the M-Claw Mark and
Applicants’ Marks dissimilar for dilution for the same reasons
they were dissimilar for likelihood of confusion, but the TTAB also
found that the M-Claw mark was not sufficiently famous for
dilution.  Despite the substantial evidence of sales and
advertising related to the M-Claw Mark, a survey showing 62%
recognition, and a finding that the M-Claw Mark was famous for
purposes of likelihood of confusion, almost all of Monster’s
evidence was limited to fame in the energy drink industry, not fame
as to the general public.  As for the survey, the TTAB
afforded it little probative value because it only tested for
secondary meaning, not fame for purposes of dilution.  For
these reasons, Monster’s dilution claim was also dismissed.

At bottom, this case teaches an important lesson:  no
matter how strong a case may be on the other factors of likelihood
of confusion, if the marks are not similar, the case may be lost
from the start and it may be time to put the claws away.

The case is Monster Energy Co. v. Maple Leaf Sports &
Ent. Ltd. and NBA Props., Inc.
, Opposition Nos. 91222422
(Parent), 91222445, 91226092 and 91228458 (TTAB May 3, 2021).

Footnote

1. Maple
Leaf also asserted counterclaims of false suggestion of connection
and dilution, but both claims were waived because Maple Leaf did
not pursue those claims.  Monster’s affirmative defenses
of laches, estoppel, acquiescence, and waiver were similarly waived
because Monster did not pursue them.  Maple Leaf’s
asserted Morehouse defense to Monster’s affirmative
claims was dismissed on summary judgment and was not considered at
trial.

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