News & Notes About the Firm
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Firm Associate and Registered Patent Attorney, Kelly Malloy, was recently featured by the University of Miami School of Law in an alumni spotlight article. In the article, Ms. Malloy discusses her intellectual property practice with the firm as well as the various leadership roles she held while attending UM Law, including serving as President of the student body in the Student Bar Association and as President of the Intellectual Property Law Society. She remains heavily involved with UM as an alumna, now serving on the Board of the Law Alumni Association as Vice Chair of Activities for the Young Alumni Committee. Ms. Malloy is also an active member of Iron Arrow, the highest honor attained at the University of Miami. The full article can be accessed here: https://news.miami.edu/law/stories/2024/02/an-interview-with-kelly-malloy.html
Firm Partner, John Cyril Malloy III, has been named to Baptist Health Foundation’s Philanthropic Council. Baptist is South Florida’s largest healthcare organization with 12 hospitals, more than 100 outpatient and urgent care facilities, and over 27,000 employees. Despite the size of the health system, Baptist relies heavily on philanthropy to sustain operations, improve facilities, and attract top medical talent. The Firm is proud to support Baptist Health’s delivery of cutting-edge, non-profit healthcare, including uncompensated and reduced-cost care, to all of our friends and neighbors in the South Florida community. Previously, Mr. Malloy served for several years on the Board of Directors of Baptist Health Foundation and Doctors Hospital – Miami Orthopedic and Sports Medicine Institute Council.
Firm Attorneys John Malloy, Keith Kanouse, Meredith Mendez, and Kelly Malloy attended the American Bar Association’s 46th Annual Forum on Franchising in Dallas, Texas. The legal conference covered evolving issues in franchise and intellectual property law.
Firm Partners Oliver Ruiz and John Malloy attended the 15th Annual Perez Art Museum Miami (PAMM) Corporate Luncheon honoring philanthropic partners. The Firm is honored to represent PAMM on a pro bono basis with respect to Intellectual Property matters, as it does for many other non-profits in our community.
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.
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.