Monster Energy Co. is known for aggressively defending its trademarks. Indeed, Monster has opposed hundreds of marks at the Trademark Trial and Appeal Board (“TTAB”).

In one recent case, after nearly four years of opposition litigation, the TTAB ruled against Monster, holding that there was no likelihood of confusion between Tom & Martha LLC's application to register the LOCH MOOSE MONSTAH mark for various sundry goods and services in four classes; with respect to MONSTER ENERGY and other MONSTER marks for energy drinks, beverageware, clothing, and bags, and related retails store services. Monster Energy Company v. Tom & Martha LLC, Opposition No. 91250710 (TTAB July 14, 2023).

Monster argued that the proposed mark is “highly similar” to the MONSTER marks “in view of the respective terms MONSTER and MONSTAH which are phonetically similar.”

No MONSTER Family of Marks

Monster also argued that it had a “family of MONSTER-inclusive marks” that share the term MONSTER as a common characteristic, and appear together in the same advertisements and at the point-of-sale.

“Although the USPTO may register several individual marks comprising a family element together with one or more other elements, it does not register ‘families' of prefixes, suffixes, or other components of a mark.” New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d 10596, *6-7 (TTAB 2020). “Thus, an opposer relying on a family of marks is relying on common law rights in the alleged family.” Id. at *7.

But simply using a series of similar marks does not of itself establish the existence of a family. J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991).

Instead, there must be a pattern of usage of the common element that “is sufficient to be indicative of the origin of the family.” J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991); see also McDonald's Corp. v. McSweet LLC, 112 USPQ2d 1268, 2014 WL 5282256, at *10 & *19 (TTAB 2014) (finding the marks were used in a way to create recognition of a family consisting of a “MC” prefix combined with a generic or descriptive term, and evidence of that recognition).

Proof of a family of marks requires evidence showing that the advertising or sales of goods or services with marks were used in such a way as to create common exposure to and recognition by purchasers of the common characteristic as source-indicating. TPI Holdings Inc. v. Trailertrader.com, LLC, 126 USPQ2d 1409, 1420 (TTAB 2018); see also Wise F & I, LLC. v. Allstate Insurance Co., 120 USPQ2d 1103, 1109 (TTAB 2016).

Furthermore, the “family” feature must be distinctive—that is, “not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party's mark.” J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).

Here, the TTAB found that there was no “family” of MONSTER marks. Monster's conclusory argument that “the MONSTER Marks appear together in the same advertisements and at the point-of-sale (e.g., store displays, refrigerator racks, etc.)” was not sufficient to support finding a family of marks. Nor was there evidence or testimony to establish that the use was done in a way “so as to create common exposure and recognition by purchasers of the common characteristic as indicating origin.” TPI Holdings, 126 USPQ2d at 1420.

No Likelihood of Confusion with the LOCH MOOSE MONSTAH

The goods and services of the parties overlapped, and there were no limitations as to the channels of trade or the classes of purchasers in either the application or the opposer's registration—so, the TTAB presumed that the overlapping goods and services will be sold in the same channels of trade to the same classes of purchasers.

But the TTAB found “the stark dissimilarities between the marks” to be “obvious.” Indeed, LOCH MOOSE, a play on “Loch Ness,” was found to be “utterly different in all respects from Opposer's mark MONSTER ENERGY (or indeed even MONSTER by itself).”

The TTAB concluded that the dissimilarity of the marks MONSTER ENERGY and LOCH MOOSE MONSTAH in appearance, sound, connotation, and overall commercial impression outweighed the other DuPont factors under Section 2(d).

MONSTER, however, did partially prevail on its claim that Tom & Martha lacked a bona fide intent to use the LOCH MOOSE MONSTAH mark in connection with certain goods and services.

While Tom & Martha had begun use of its mark on t-shirts, sweatshirts, hooded sweatshirts, hats, coffee cups, canvas bags and an online retail store—but not on other goods or services listed in its application. The testimony of Tom & Martha's principals admitted that “a lot of that stuff we weren't even going to do anyway. . . . Most of them things I can't picture ever selling, like wallets and stuff like that.”

In light of that testimony and evidence, the Board ordered deletion of the following goods from the LOCH MOOSE MONSTAH application: “all-purpose sport bags; backpacks; wallets; handbags; travel cases; brief cases; key cases; business card cases containers for household use; sweat bands; sweat suits; sweat jackets; socks; shorts; tank tops; tube tops; halter tops; footwear; jackets; coats; gloves; belts; online retail store services featuring wallets; online wholesale store services featuring wallets.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.