Monster Energy Co. (“Monster Energy”), a frequent trademark plaintiff, recently found itself in the midst of a trademark infringement lawsuit brought by California-based Outdoor Pro Shop, Inc. (“Pro Shop”).Pro Shop’s complaint alleges that its consumer products, such as hats, mugs and apparel, and online retail services related to its MONSTER FISHING, MONSTER FISHING TACKLE and MONSTERFISHING.COM (MONSTER FISHING) trademarks infringe trademark rights, and seeks legal action over MONSTER FISHING and Monster Energy’s claims. As far as a registered trademark is concerned, the issue of its own non-infringement.1
According to the complaint, Pro Shop is in the outdoor sports business and offers a variety of services and goods through its online retail store, including clothing, fishing products, books, knives and binoculars related to its MONSTER FISHING logo.2 On the other side “v”, Monster Energy markets, develops and distributes energy drinks, beverage appliances and apparel.3 However, prior to filing this complaint on August 22, 2020, Pro Shop sought to obtain a trademark for “MONSTER FISHING” in the United States from the Patent and Trademark Office (“USPTO”) opposed by Monster Energy.4 The Trademark Trial and Appeal Board (“TTAB”) stopped Monster Energy’s appeal pending resolution of the lawsuit.Pro Shop said Monster Energy opposed three other applications for its trademark: (1) a stylized form of the MONSTER trademark for retail store services with products related to fishing and fishing-related products; (2) a trademark related to outdoor consumer products Stylized form of the MONSTER FISHING TACKLE logo for advertising and commercial services; (3) the MONSTERFISHINGTACKLE.COM logo for retail store services featuring outdoor activity consumer products.5
In June, the court granted Monster Energy’s motion to dismiss, which centered on the lack of evidence or support for Pro Shop’s first use of the unregistered trademark in commerce.6 The Pro Shop was allowed to submit an amendment complaint, which was filed on July 6, 2021, with a form outlining the Pro Shop’s first use of the MONSTER FISHING logo for goods and services.7 In the amended complaint, Pro Shop clarifies that its infringement claims for hats, mugs, and apparel are based on prior use of its trademarks on these items and are less likely due to the different nature of the parties’ respective purchasers and trade channels. There may be confusion about the respective services of the parties.8
While the case is still in court, looking at other lawsuits and objections involving Monster Energy can provide some key information.
In 2019, Monster Energy sued a student entrepreneur, Mason McGuire, who had just teamed up with a manufacturer to make caffeinated energy tablets without a sugar crash.9 This product is sold under the MONARCH ENERGY brand with the following logos:
Monster Energy filed a notice of opposition with the USPTO in late 2019; McGuire did not respond to the notice, breached him, and the registration was denied.A recent review of the Monarch Energy website revealed the product has a new logo.
In another case, TTAB sided with Monster Energy Co. and refused to allow a small company to register the MONSTER TOWEL logo for its beach towels.10 The committee considered evidence that Monster Energy had previously used its name and logo on promotional towels, particularly sports towels, and concluded that consumers could reasonably find MONSTER TOWEL on beach towels an extension of this existing product line .The judge made it clear that “the commercial strength of the Monster Energy Marks for energy drinks outweighs any conceptual weakness and confers protection on these goods abroad.” Given the strength of the MONSTER ENERGY mark, even “affiliates” outside of energy drinks goods”, such as beach towels, may also be very similar and constitute infringement.The judge explained that the similarity of the marks is measured by the proximity of the goods in nature and whether, in all cases, consumers would perceive a towel as being from the same source.
In the Central District of California, Monster Energy defeated an automotive company, Integrated Supply Network LLC (“ISN”), which initially used the MONSTER and MONSTER MOBILE trademarks and black and green trade dress for infringing applications including motorcycles, motorcycle helmets, Car products including imitation cars and car wheels.11 After the Ninth Circuit reversed the damages award and sent it back for consideration, the district court ruled that a $10 million recovery profit was appropriate to ensure that ISN did not unfairly benefit from its past infringements.12 The court subsequently prohibited ISN from using: (1) any trademark or name using or containing the word “Monster,” or any variation, such as Monsterrous, Monstrosity, or Monster, and (2) any commercial with a combination of black and green Appearance, which contains confusing words under (1).13 Monster Energy was able to successfully argue that pr potential buyers would associate the infringing goods with their registered trademarks, or that the infringing products might be endorsed or sponsored by a party asserting their trademark.14 The lawyer for Monster Energy stated: “The main point of this case is that Monster Energy is able to assert its trademark rights and trade dress rights against goods that may appear to be unrelated at first glance.”
2021 has been a busy year for Monster Energy.In February 2021, Monster Energy filed a lawsuit against rival energy drink company Powernation LLC for its use of the “Clutch Energy” logo, which features a black and green color scheme and three parallel lines on the can.15 Monster Energy’s complaint specifically cited Powernation’s social media accounts, which contained images of drinks sold by the two companies in coolers in the same store, as evidence of knowledge of Monster Energy’s trademarks and willful infringement of those trademarks, causing confusion among customers.On August 16, 2021, the parties submitted provisions for the settlement and permanent injunction.16
In May 2021, Monster Energy filed a lawsuit against fitness equipment company Bear KompleX for selling items such as handles, weight lifting belts and compression sleeves bearing the BEAR CLAW logo.17 The logo appears in various colors – including green and black. The case is still pending.
Despite these examples, Monster Energy doesn’t always win over alleged trademark infringers.After a six-year trademark dispute, the Toronto Raptors defeated Monster Energy’s objection to its application for a “claw rips basketball” logo.TTAB found facial differences between marks, such as the direction of scratches or tears, to rule out the possibility of confusion, although Monster Energy’s marks are conceptually strong.TTAB also noted that the team’s trademark was used in commerce long before Monster Energy started using what it claimed to be.Likewise, in October 2020, Monster Energy entered a two-year battle with another sports team, the Cleveland Monsters, over the registration of its trademark with the USPTO.A key reason for the minor league hockey team’s victory: In the years before the lawsuit, it had registered three MONSTER trademarks, including LAKE ERIE MONSTERS for apparel, retail services, sports activities and beer (specifically excluding energy drinks).Before 2016, when the Cleveland Monsters were known as the Lake Erie Monsters, the team registered their apparel logo.18 The hockey team was able to successfully convince the TTAB that the two sides’ respective MONSTERS logos had not previously been confused in the marketplace and, most importantly, while Monster Energy prioritized beverages, it did not prioritize sports sponsorship, hockey or facility services.TTAB found that when the Cleveland Monsters became known as the Lake Erie Monsters and registered their first trademark in 2010, Monster Energy acquiesced to the hockey team’s 12-year use of the MONSTERS trademark—a few days before the company changed its name and registered a new name year.United States Patent and Trademark Office.The TTAB dismissed the objection in October 2020.
Stephen Norberg, an undergraduate student from Harvard University, also won the challenge posed by the energy drink company.Norberg found himself after receiving a petition from the USPTO asking Monster Energy to cancel his trademark THUNDER BEAST, which he used to sell his root beer in glass bottles featuring bison on the packaging.19 The energy drink company argued that Norberg’s registered trademark was too similar to its slogan, “Unleash the Beast,” as well as Norberg’s phrase, “Fighting Monsters,” which was included on the Protest website.In a plot twist, Norberg hired an attorney whose case portfolio included at least eight other businesses facing Monster Energy.Monster Energy withdrew its petition and filed a separate lawsuit against THUNDER BEAST for alleged fraudulent and malicious conduct.The parties eventually settled and provided for a prejudice firing20 — but before the judge commented on the merits of the case: “I don’t know why we’re here, except that you’re trying to smash this root beer company out of business.”21
In the end, Monster Energy sued and enforced its trademark outside the United States.Monsta Pizza, a small pizzeria in the UK, managed to defeat Monster Energy before an intellectual property situation, when the company argued that its name was not infringing and that it did not sell energy drinks.twenty two
Monster Energy has spent more than $8.5 billion promoting and marketing its trademarks and trade dress, of which $4.6 billion was spent on its Claw Icon Mark and trade dress.23 Although the TTAB referred to Monster Energy as a “prolific litigant,” it also explicitly denied taking this fact into account when making its decision.24 Monster Energy results show how perseverance pays off—spending time and money to strengthen your brand identity can help strengthen the scope of protection these assets are entitled to.However, as the case of Monster Energy, a brand notorious for pushing the line, comes at play when assessing the reach of trademark rights.When implemented properly, a robust enforcement program can serve as another tool in your competitive arsenal, helping you differentiate your products and services from those of your competitors.
Post time: Mar-28-2022