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.