The Trademark Trial and Appeal Board (“Board”) has granted Monster Energy Company’s (“Monster Energy”) opposition to the mark, click here to view image for clothing, owned by Li-Wei Chi (“Chi”), based on likelihood of confusion.  The Board denied Monster Energy’s opposition to Chi’s word mark MONSTERFISHKEEPERS for clothing, finding confusion and dilution unlikely. 

Monster Energy is a 28 billion dollar conglomerate, partly owned by Coca-Cola Company.  Monster Energy sells energy drinks or sports drinks.  Chi is a Maryland owner of a niche online forum called MONSTERFISHKEEPERS.  Chi has ran the forum since 2005, and sought to register his trademarks to help cover the cost of the website, by selling t-shirts and other clothing.

Chi sought to register the design mark, click here to view image and the word mark MONSTERFISHKEEPERS for clothing in Class 25.  Monster Energy opposed the applications based on likelihood of confusion and dilution of its trademarks click here to view image and click here to view image.  Both marks are for clothing in Class 25.   Monster Energy also pleaded likelihood of confusion and dilution of Monster Energy’s alleged family of federally registered MONSTER marks:  MONSTER ENERGY, M MONSTER ENERGY, MONSTER MIXXD and MONSTER REHAB, all for beverages, and of common law rights in the MONSTER mark alone, for clothing.   

The Board rejected Monster Energy’s claim to own a “family” of MONSTER marks prior to Chi’s priority date of 2010.  Beyond asserting that it is the owner of various marks with the term MONSTER in them, it failed to show that it used the marks together in a manner in which the consuming public would come to associate the family with the name MONSTER with Monster Energy.  The Board found that Monster Energy did establish common law rights in the mark MONSTER by itself for clothing, in various fonts, since 2002.  This predates Chi’s 2010 priority date. 

On the similarity of the goods, channels of trade, and purchaser care elements of the likelihood of confusion test, the Board found the goods identical, supporting a likelihood of confusion.  Chi argued the channels of trade were different because it sells its clothing to the “fish hobbyist community.”  The Board found that the trade channels for clothing overlapped for Monster Energy’s registered marks and Chi’s applications, because the registrations and applications were not limited.  The same presumption did not apply to Monster Energy’s common law MONSTER marks for clothing.  Because Chi’s clothing was sold to the fish hobbyist community, whereas Monster Energy’s clothing was sold on the company’s website, at specialty motorcycle stores, and from trailers at supercross or motorcross events, the Board found that the trade channels of Monster Energy’s common law MONSTER marks did not overlap.  The fact that the goods are relatively inexpensive items, t-shirts, favored a likelihood of confusion.

On the fame of the mark prong, the Board found that Monster Energy’s click here to view image or click here to view image or MONSTER marks had received significant recognition for energy drinks, but not for apparel.  Monster Energy sold many articles of branded apparel, but was unable to show how much of its advertising revenues were allocated to apparel, and not to its energy drinks. 

Chi alleged that the term MONSTER and the letter M for clothing were diluted by third-party marks for clothing and thus weak.  Chi submitted third-party registrations for the word MONSTER, and for the letter M.  This, combined with Internet evidence showing actual third-party use of the term MONSTER, but not for the letter M, led the Board to find the term MONSTER somewhat weak, but not the letter M.  Accordingly the Board found that this factor weighed slightly against finding a likelihood of confusion for the marks with the shared term MONSTER for clothing.  With respect to the letter M, this factor was neutral.  

On the similarities of the marks factor, the Board found Chi’s click here to view image mark and Monster Energy’s click here to view image and click here to view image overall quite similar, weighing in favor of a likelihood of confusion.  Both of them are stylized versions of the letter M, a factor that contributes largely to their overall similar commercial impressions.  With respect to Monster Energy’s MONSTER and Chi’s MONSTERFISHKEEPERS mark, the differences in the marks’ sound, appearance, and meaning, and in particular the difference in their meanings, weighed against a likelihood of confusion.  With the addition of the words FISH and KEEPERS to Chi’s mark, when used for clothing, the overall mark will connote to consumers that it references a very large fish that is being kept.   In contrast, Monster Energy’s MONSTER mark used for clothing refers to a “monster.”

To Monster Energy’s allegation that it had evidence of actual confusion and that Chi adopted the mark in bad faith, the Board found the evidence unpersuasive.  Internet printouts from a Facebook page and a forum website, both associated with Chi, including a comment that Chi actually “stole” the click here to view image design from Monster Energy, and that “looking at the logo I have to agree it’s infringing,” did not constitute evidence of consumer confusion.  They are merely opinions regarding the origin of the mark and whether it was infringing.  The Board did not view this as evidence that consumers did not know the difference between the marks.  To the contrary, the evidence establishes that consumers know the difference between the marks.  In support of its bad faith claim, Monster Energy submitted evidence that Chi admitted he had searched in Class 38, not Class 25, before adopting the mark.  It also pointed to the fact that Chi used slogans similar to Monster Energy’s, such as “Unleash your inner monster,” and “monster unleased,” which are similar to Monster Energy’s slogan, “Unleash the beast,” in addition to the word MONSTER and the M designs, which could not be coincidental.  The Board noted that these similarities did give it pause, but fell far short in establishing that Chi adopted the mark in bad faith.  The Board found these factors neutral.

Because the Board found likelihood of confusion between the M design marks for clothing, it limited its examination of Monster Energy’s dilution by blurring claim to Monster Energy’s common law MONSTER marks and Chi’s MONSTERFISHKEEPERS mark.  The Board rejected the dilution by blurring claim. 

Monster Energy did not prove that it owed a famous mark that became distinctive before Chi’s adoption of the mark.  Monster Energy did not prove that it had become a “household name” prior to 2010.  The evidence showed that Monster Energy is the leader in sales of units for its energy drink, but that the vast majority of sales of its products are sold to 18 – 34 year old males, not the actual general public. 

In addition, the Board held that even if Monster Energy’s marks MONSTER and MONSTER ENERGY had become famous prior to 2010, Chi’s MONSTERFISHKEEPERS mark is unlikely to dilute it because there is little similarity between the marks MONSTER ENERGY and MONSTERFISHKEEPERS.  Monster Energy was not engaged in “substantially exclusive” use of the term.  The record included many examples of other entities using the term MONSTER in various manner for apparel.  The record showed no direct evidence, such as a survey, showing a level of appreciation of Monster Energy’s MONSTER or MONSTER ENERGY marks.    The Board found that there was little evidence to suggest that Chi had intentionally attempted to associate his marks with Monster Energy.   Chi’s use of the similar slogan “Unleash Your Inner Monster” compared to Monster Energy’s “Unleash the Beast,” is not enough to prove intent.  Similarly, Monster Energy’s assertion that there have been instances of actual confusion were not supported by the record.