The Trademark Trial and Appeal Board (TTAB) issued a decision in a trademark opposition called Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc.
Monster Energy has one of the most successful logos in recent memory. A simple M made from three vertical scratch marks, Monster’s logo can be found in surprising places, like grocery store checkout counters and tattoos. In order to maintain this unique goodwill, Monster Energy accounts for a large number of trademark disputes in front of the TTAB. Indeed, it’s been monstrously aggressive at enforcing its rights.
The proposed marks from the NBA and Maple Leaf each featured a three-clawed scratch pattern, in a horizontal direction.
- The Toronto Raptors chose a basketball with claw marks running across from right to left.
- The NBA’s design is a five-pointed star with three claw marks going from right to left.
Monster said that the applicants’ designs are likely to cause confusion or to deceive; and that each of the applicants’ marks is likely to dilute Monster’s mark (consisting of three vertical claw marks).
The TTAB balanced the factors necessary to determine whether trademarks were confusingly similar. The panel especially noted the importance of the parties’ surveys — no doubt a significant factor in the case dragging on for so long.
It’s not clear whether Monster relied on its survey to prove too much. The TTAB held that the survey supported its claim that its mark had “acquired secondary meaning or distinctiveness, and arguably fame, in the context of Monster’s likelihood of confusion claim, but not fame in the context of Monster’s dilution claim.”
After its analysis, the board concluded that it could simply give substantial probative value to the appearance of the trademarks. In other words, they were going to eye-ball it. I’m guessing that was disquieting to Monster’s counsel, and to the client who had invested in those surveys.
After seven years of TTAB proceedings, the board said that the marks just don’t appear to be similar enough for anyone to likely be confused.
Monster also had claimed that the applicants were diluting its mark. Dilution is not available to all plaintiffs because it can only happen to so-called “famous” marks. Anti-dilution is when you have the prototypical trademark that is famous, is known to everyone — even people outside of the market for those products. An example would be TIFFANY’S. The survey was not enough to show that the mark was sufficiently famous; it only showed that MONSTER was renowned among a particular segment of consumers — those buying energy drinks. Therefore the dilution claim was rejected.
So, it came down simply to looking at those designs. My question is: Why not determine that seven years ago? The expense and the time involved emphasizes how much energy, work, and expense was wasted on a matter that should be simple to resolve. I don’t understand how it was not more summarily addressed earlier in the process. (Probably because the TTAB doesn’t like motions for summary judgment. Their emphasis is on developing the evidence.) But I find it problematic that something so straightforward took so much time and money.
