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Firm Wins Trademark Case Against MONSTER ENERGY®


The Firm successfully defended a monster of a trademark case filed by Monster Energy Corp. against Firm client, SS Vape Brands, Inc.  Monster Energy is one of the world’s largest beverage companies.  SS Vape sells electronic cigarette products.

The administrative litigation before the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office involved an opposition against SS Vape’s U.S. trademark application for the mark ICE MONSTER on e-cigarette liquid.  TTAB cases proceed much like litigation in the U.S. District Courts in accordance with the Federal Rules of Civil Procedure, though final decisions are rendered by a panel of administrative law judges. Monster Energy alleged that it would be damaged by the grant of a registration to SS Vape for the ICE MONSTER mark on the basis of a likelihood of confusion with the MONSTER ENERGY marks, including several MOSTER variations, spanning dozens of prior registrations extending from energy drinks to nutritional supplements in liquid form and collateral merchandise.

Represented by Firm Partner, Meredith Frank Mendez, SS Vape denied that its ICE MONSTER mark is likely to cause confusion.  One of its main arguments was that the parties’ goods are not related, so consumers will not perceive that the goods emanate from the same source or that they are associated or affiliated with a single source.  After years of protracted litigation, the parties submitted trial briefs and extensive evidence, which the TTAB considered in a 76-page opinion dismissing Monster Energy’s case.  Among other things, the decision held:

“The fact that the goods are not related and that there have been no reported instances of confusion carry great weight in our analysis. See Citigroup, 98 USPQ2d at 1261 (varying weights may be assigned to each DuPont factor depending on the evidence presented); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.”). We find, therefore, that Applicant’s mark ICE MONSTER and design for “electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges” is not likely to cause confusion with Opposer’s MONSTER and MONSTER ENERGY marks for the goods and services in connection which Opposer has registered and uses those marks.

The full decision of the TTAB can be accessed here.  Ms. Mendez acted as lead counsel with assistance from Associates John Eagan and Cleo Suero.

D.C. Court of Appeals Rules Against Copyright Office’s Mandatory Deposit Requirement

The U.S. Court of Appeals for the District of Columbia has delivered a significant ruling in the case of Valancourt Books v. Garland. The court determined that the Copyright Office’s mandatory deposit requirement (17 U.S.C. §407) is an unconstitutional taking.

For years, the mandatory deposit requirement has been a cornerstone of the Copyright Office’s operations. It mandates that two copies of every copyrighted work be deposited with the Copyright Office, ensuring a comprehensive record of all copyrighted materials. However, Valancourt Books challenged this requirement, arguing that it amounted to an unconstitutional taking without just compensation.

The Court of Appeals sided with Valancourt Books, stating that the mandatory deposit requirement did indeed impinge upon the rights of copyright holders. This decision underscores the importance of balancing the needs of public records with the rights of individual copyright holders.

In essence, the removal of the mandatory deposit requirement could lead to a reduction in costs for those filing for or using the Copyright Office for services. Without the need to produce and send physical copies of copyrighted works, copyright holders save on production and shipping costs. Moreover, this ruling may prompt reevaluating other practices within the Copyright Office and the broader realm of copyright law.

In conclusion, the Valancourt Books v. Garland case ruling is more than just a legal decision. It’s a reflection of the evolving nature of copyright practices and the need to strike a balance between public interest and individual rights.

The decision can be read here: Valancourt Books v. Garland, No. 21-5203, U.S. Court of Appeals for the District of Columbia Circuit (2023).

11th Circuit Finding: Non-Exclusive Licensee Can Bring Lanham Claim Even Though Licensing Agreement was Silent on Enforcement

The 11th Circuit recently addressed the issue of whether a trademark licensee [D.H. Pace Company, Inc. (“Pace”)] could file suit against a third party [Overhead Garage Door (“OGD”)] for unfair competition under the Lanham Act, when the underlying licensing agreement did not expressly authorize the plaintiff to do so.  Although the licensing agreement did identify the terms and conditions for Pace’s use of the licensor’s trademarks and trade names, the agreement was silent on trademark enforcement matters or the rights to sue for infringement.

The district court concluded that the licensing agreement was a “contractual bar” to Pace filing suit, as no affirmative rights to sue were granted to the licensee (Pace).  Furthermore, the district court held that any rights that Pace did have were derived from the licensing agreement, and because maintaining affirmative claims was not one of them, OGD’s summary judgment motion was granted as a matter of law.

On appeal, the Eleventh Circuit reversed, and found that because the licensing agreement did not pose a contractual bar (and was otherwise silent) on Pace’s ability to sue, Pace was free to bring a Lanham Act claim.  Additionally, the Eleventh Circuit noted that Pace’s status as a non-exclusive licensee was of no moment, and cited with approval to numerous cases standing for the principle that nonexclusive licensees are free to bring suit under § 43(a).

The case is D.H. Pace Co. v. OGD Equip. Co., LLC, No. 22-10985, 2023 U.S. App. LEXIS 22102 (11th Cir. Aug. 22, 2023).

Firm Attorneys Recognized as Best Lawyers in America, 2024 Edition

The Firm is proud to announce that the following Firm Attorneys were selected by their peers to be recognized in the 2024 Edition of The Best Lawyers in America, for various areas of Intellectual Property Law:  Jennie S. Malloy, John Cyril Malloy III, Oliver A. Ruiz, Peter A. Matos, and Robert M. Downey. Best Lawyers is one of the preeminent peer-reviewed listings of the best legal talent in the world.