Trademark Trial and Appeal Board Hands Cleveland Monsters the Win

Just like in Beowulf, stay with me here, the Monster lost the battle.  

           Monster Energy has been the Grendel of trademark law for the last 10 years. The Board’s decision here, at a whopping 77 pages with 165 footnotes, is a lot like reading an epic poem.   And, just like Beowulf, this decision is hugely important. Despite being listed as “not a precedent of the TTAB,” it might the most important case to come out of Board in a very long time in that it may have a chilling effect on “trademark bullies.” I recommend that trademark practitioners read the entire decision. Kudos to Tom Williams of Barack Ferrazzano Kirschbaum & Nagelberg LLP  - the new King of the Geats! (Beowulf references now over.)

           People familiar with trademark law and the Trademark Trial and Appeal Board probably know about the trademark owners known as the “Frequent Filers.” These entities file oppositions and cancellations with the government administrative system every single day. There’s a plethora of articles complaining about Monster Energy aggressive filing practices. The Board is overrun with filings by Monster and others and, in my opinion, the backlog of cases is detrimental to the efficiency if of the system.  Could this be the case be the decision that stops “trademark bullies?” We can only hope. There are many trademark attorneys arguing that “Frequent Filers” are abusing the very administrative law procedures designed to streamline trademark disputes. Maybe our complaining will finally be heard now. Maybe the next Administration will impose new rules. The Trademark Bar (mostly) are keeping our fingers crossed. 

           The gist of the subject case is that Monster Energy can claim some fame and ownership of the trademark MONSTER for beverages. Hard Stop. For years, Monster Energy has alleged that it owns the words MONSTER, UNLEASH, BEAST, the letter “M,” and any type of Claw Logo for all Classes under all circumstances. The Board (Member Bergsman) found that “monster” is arbitrary, and possibly famous, in connection with beverages but highly suggestive in connection with other goods and services. This could mean that Monster Energy will need to limit its future complaints to other beverage trademark owners. A review of the TTABvue database shows this might stifle Monster by as much as 90%. 

           The defendant hockey team showed evidence of at least 10 years use of the trademark MONSTER in connection with hockey and related sporting goods. The Board noted that this long period of coexistence with Monster Energy constituted acquiescence. The Board also appeared to lean heavily on the lack of evidence showing actional confusion. This is an unusual twist since lack of actual confusion is usually considered to merely support no likelihood of confusion arguments and nobody would ever call it the most important DuPont factor. While I am encouraged by the Board’s language in this case, actual confusion will probably only be critical when the defendant shows at least 5 years of coexistence with the plaintiff. 

           My take-away here is that many of us will cite this case despite the fact that it is not TTAB precedent. I’m hopeful that the next decision with a similar fact pattern will be precedent. Unfortunately, most defendants targeted by the “Frequent Filers” do not have the resources to take these cases to a Board decision. However, I’m optimistic that things will get better in 2021.