Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1160154
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`Filing date:
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`09/16/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91253709
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`Party
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`Correspondence
`Address
`
`Defendant
`Pimmonster LLC
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`EVE J BROWN
`HOGAN DUFF LLP
`83 MORSE STREET BLDG 6
`NORWOOD, MA 02062
`UNITED STATES
`Primary Email: ejh@hoganduff.com
`Secondary Email(s): ajd@hoganduff.com, vfphillips@wcl.american.edu, ipclinic-
`filings@wcl.american.edu
`(617) 209-9753
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Brief on Merits for Defendant
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`Eve J. Brown
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`ejh@hoganduff.com
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`/Eve J. Brown/
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`09/16/2021
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`Attachments
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`2021-09-16 Pimmonster Trial Brief.pdf(497423 bytes )
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`MONSTER ENERGY COMPANY
`Opposer,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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` Opposition No.: 91253709
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` Serial No.: 88/453689
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` Mark: PIMMONSTER
`PIMMONSTER, LLC,
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`Applicant.
`________________________________________ )
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`v.
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`APPLICANT’S TRIAL BRIEF
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION
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`II. STATEMENT OF FACTS
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`A. Applicant Pimmonster, LLC
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`B. Opposer Monster Energy Company
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`III. STATEMENT OF THE ISSUES
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`IV. OPPOSER’S CLAIM OF PRIORITY DOES NOT EXTEND TO ANY ALLEGED
`COMMON LAW RIGHTS
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`V. THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN APPLICANT AND
`OPPOSER’S MARKS
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`5
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`6
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`6
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`8
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`10
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`8
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`A. Applicant’s Mark is Substantially Dissimilar to Opposer’s Marks in Appearance, Sound,
`Connotation, and Commercial Impression
`9
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`B. Applicant’s Goods are Dissimilar to Opposer’s Goods and the Trade Channels for the
`Respective Goods Do Not Overlap
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`19
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`C.
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`The Conditions Under Which and Buyers to Whom Sales of the Respective Goods Are
`Made Weigh Against Confusion
`18
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`D. Opposer Has Failed to Establish Fame of its Marks for Likelihood of Confusion
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`22
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`E. A Large Number of Marks Registered with the Word “Monster” Narrows the Scope of
`Protection Afforded to that Term
`26
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`F.
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`The Record Shows No Actual or Potential Confusion of the Marks
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`G. Opposer’s Remaining Arguments are Unpersuasive
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`a.
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`Opposer’s “Bad Faith” Accusations are Contradicted by the Record
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`27
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`28
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`28
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`b. Opposer’s Claim that Applicant’s Mark will Confuse Consumers into Believing there
`is Co-Branding between Monster and PIMM’s is Without Merit
`28
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`VI. CONCLUSION
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`31
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`2
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`TABLE OF AUTHORITIES
`
`Cases
`Aero Mayflower Transit Co. v. Snark Products, Inc.,
` 190 U.S.P.Q. 100 (TTAB 1976) ............................................................................................... 27
`Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
` 718 F.2d 1201 U.S.P.Q. 786 (1st Cir. 1983) ............................................................................. 23
`Bells Brewery, Inc. v. Bell Hill Vineyards, LLC,
` 2009 WL 5118319 (T.T.A.B. 2009), aff'd, 404 Fed. Appx. 502 (Fed. Cir. 2010) ................... 19
`Bond v. Taylor,
` 119 U.S.P.Q.2d 1049 (TTAB 2016) ......................................................................................... 21
`Bose Corp. v. QSC Audio Prod., Inc.,
` 293 F.3d 1367 (Fed. Cir. 2002)........................................................................................... 24, 25
`Bridgestone Ams. Tire Operations, LLC v. Fed. Corp.,
` 102 U.S.P.Q.2d 1061 (Fed. Cir. 2012)...................................................................................... 12
`Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
` 811 F.2d 1490, 1 U.S.P.Q.2d 1813 (Fed. Cir. 1987) ................................................................ 21
`China Healthways Institute, Inc. v. Wang,
` 491 F.3d 1337, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007) .............................................................. 17
`Citigroup Inc. v. Cap. City Bank Grp., Inc.,
` 637 F.3d 1344 (Fed. Cir. 2011)................................................................................................. 26
`Coach Services, Inc. v. Triumph Learning LLC,
` 668 F.3d 1356 (Fed Cir. 2012)............................................................................................ 19, 24
`Electronic Design & Sales, Inc. v. Electronic Data Systems Corp.,
` 954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) ................................................................ 23
`Estate of P.D. Beckwith Inc. v. Comm’r. of Patents,
` 252 U.S. 538 (1920) .................................................................................................................. 18
`Estrada v. Telefonos De Mex., S.A.B. de C.V.,
` 447 F. App'x 197 (Fed. Cir. 2011) ............................................................................................ 29
`Federated Foods, Inc. v. Fort Howard Paper Co.,
` 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA 1976) ........................................................................ 20
`Franklin Mint Corp. v. Master Mfg. Co.,
` 212 U.S.P.Q. 233 (CCPA 1981) ............................................................................................... 17
`Herbko Int’l, Inc. v. Kappa Books, Inc.,
` 308 F.3d 1156, 64 U.S.P.Q.2d 1375 (Fed. Cir. 2002). ............................................................. 28
`In re Bed & Breakfast Registry, 7
` 91 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986) ...................................................................... 17
`In re E.I. DuPont DeNemours & Co.,
` 177 U.S.P.Q. 563 (CCPA 1973) ......................................................................................... 12, 28
`In re Fat Boys Water Sports LLC,
` 118 U.S.P.Q.2d 1511 (TTAB 2016) ......................................................................................... 13
`In re Hard Rock Cafe Licensing Corp. v. Elsea,
` 48 U.S.P.Q.2d 1400 (TTAB 1998) ........................................................................................... 24
`In re Max Capital Grp., Ltd.,
` 93 U.S.P.Q.2d 1243 (TTAB 2010) ........................................................................................... 13
`In re N.A.D. Inc.,
` 224 U.S.P.Q. 969 (Fed. Cir. 1985)……………………………………………………………23
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`3
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`In re Ship,
` 4 U.S.P.Q.2d 1174 (TTAB 1987) ............................................................................................. 23
`In re Nat’l Data Corp.,
` 224 U.S.P.Q. 749 (Fed. Cir. 1985)...................................................................................... 17, 33
`In re Sears, Roebuck and Co.,
` 2 U.S.P.Q.2d 1312 (TTAB 1987) ............................................................................................. 19
`In re Strategic Partners, Inc.,
` 102 U.S.P.Q.2d 1397 (TTAB 2012) ......................................................................................... 20
`Inter IKEA Systems B.V. v. AKEA, LLC,
` 110 U.S.P.Q.2d 1734 (TTAB 2014) ......................................................................................... 25
`Jerrold Electronics Corp. v. Magnavox Co.,
` 199 U.S.P.Q. 751 (TTAB 1978) ............................................................................................... 28
`Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
` 857 F.3d 1323 (Fed. Cir. 2017)................................................................................................. 24
`Kimberly-Clark Corp. V. H. Douglas Enter., Ltd.,
` 774 F.2d 1144, 227 U.S.P.Q. 541 (Fed. Cir. 1985) .................................................................. 23
`Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC,
` 82 U.S.P.Q.2d 1901 (TTAB 2007) ........................................................................................... 24
`Monster Energy Co. v. Li-Wei Chih,
` Opp. No. 91/205,893, 2016 BL 50874 (TTAB Feb. 1, 2016) .................................................. 26
`Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
` 396 F.3d 1369 (Fed. Cir. 2005)................................................................................................. 24
`QuikTrip West, Inc. v. Weigel Stores, Inc.,
` 984 F.3d 1031(Fed. Cir. 2021).................................................................................................. 29
`Recot, Inc. v. Becton,
` 214 F.3d 1322 (Fed. Cir. 2000)............................................................................................ 21,23
`Shen Mfg. Co. Inc. v. Ritz Hotel Ltd.,
` 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) ........................................................ 11, 17
`Sweats Fashions, Inc. v. Pannill Knitting Co.,
` 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987).......................................................................................... 30
`Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc.,
` 648 F.2d 1335 (C.C.P.A. 1981) ................................................................................................ 24
`Yamaha Int'l Corp. v. Hoshino Gakki Co.,
` 840 F.2d 1572, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) ................................................................ 11
`
`
`Other Authorities
`15 U.S.C. § 1052(d) ...................................................................................................................... 11
`McCarthy on Trademarks and Unfair Competition, § 20:3 (5th ed.) ................... 11, 16, 17, 26, 28
`Trademark Rule 2.222(b)(1) ......................................................................................................... 10
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`I. INTRODUCTION
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`Applicant Pimmonster, LLC is entitled to federal trademark registration. Pimmonster
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`LLC is a minority and woman-owned business created by Pimlada ("Pim") Kongkham. Pim has
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`been creating original artwork consisting of whimsical creatures she calls "Pimmonsters," after
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`her name "Pim." Her company sells various goods depicting these Pimmonsters, a fanciful term
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`she coined to describe her original creations. Pimmonsters are family-friendly designs marketed
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`to both children and adults, and placed primarily on clothing, accessories, and home décor.
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`Pimmonsters are not associated with, nor do they appear on, any food or beverage items.
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`Opposer Monster Energy Company is a beverage company, primarily known for selling
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`highly caffeinated energy drinks under various “MONSTER ENERGY” marks. Among other
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`important distinctions, Opposer’s use of “monster” is used as an adjective, to describe the level
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`of energy its beverages contain, unlike Pimmonster’s use of the generic term “monster,” which
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`Pimmonster uses as a noun to describe her illustrations of monsters.
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`Opposer challenges Applicant’s PIMMONSTER application on likelihood of confusion
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`grounds under Section 2(d) of the Lanham Act, 15 U.S.C.A. § 1052(d), despite there being no
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`evidence or likelihood of confusion, injury, or harm caused by Pimmonster’s mark. Each and
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`every DuPont factor in this case favors Pimmonster, as will be described in detail in this brief.
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`Because Opposer has not met its burden of showing that Pimmonster is not entitled to
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`registration, and because there has been no credible evidence of either actual or likely confusion
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`between the marks in question, Pimmonster respectfully requests that the Board dismiss
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`Opposer’s opposition, and allow the application at issue to proceed towards registration on the
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`United States Patent and Trademark Office’s Principal Register.
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`II. STATEMENT OF FACTS
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`A. Applicant Pimmonster, LLC
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` Pim draws combinations of different features in animals and fruits, as shown and
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`described below (on the record as Applicant’s Notice of Reliance Exhibit 49):
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`Since 2011, when she first started these drawings as part of her nightly routine, Ms.
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`Kongkham has affectionately called her drawings “Pimmonsters” to reflect the “friendly,”
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`“cheerful,” and “quirky” monsters that she draws. See Deposition Transcript of Pimlada
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`Kongkham dated October 15, 2020 (pp. 88, lines 9-22; pp. 89, line 1). The name “Pimmonster”
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`is a combination of her name, “Pim,” and the appropriately-termed “monster.” As she states on
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`her website, “Pimmonsters are mixed up creatures, comprised of different fruits or species of
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`animal. You must look closely to be able to spot what they really are!” See Applicant’s Notice of
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`Reliance Exhibit 49.
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`After years of creating these drawings, Ms. Kongkham launched an online business in
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`April 2019 under her business, Pimmonster, LLC, to sell products featuring her drawings while
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`bearing the mark PIMMONSTER. See Pimmonster’s Testimony Declaration of Pimlada
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`Kongkham. Pimmonster’s products are exclusively sold on pimmonster.com and
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`pimmonsters.com. Id. The products sold on Applicant’s website, include t-shirts, tote bags,
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`phone cases, and socks, which appeal to children, adults, and seniors of all genders who support
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`Ms. Kongkham’s small business and creative pursuits. See Response to Interrogatory No. 20 in
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`Opposer’s Notice of Reliance Exhibit 23.
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`In May 2019, Ms. Kongkham applied for trademark registration for the word mark
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`PIMMONSTER on the Principal Register. See Applicant’s Notice of Reliance Exhibit 1. The
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`application (Serial No. 88/453689), based on Section 1(a) of the Lanham Act, claims first use of
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`the mark and first use in commerce as early as April 2019 in connection with Class 018
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`(handbags, tote bags, canvas shopping bags, backpacks); Class 021 (mugs); and Class 025
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`(shirts, tank tops; hooded sweatshirts; socks; baby clothes, namely, jumpsuits, shirts and pants).
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`Id.
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`(Applicant’s Testimony
`Declaration Exhibit 3)
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`(Applicant’s Testimony
`Declaration Exhibit 5)
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`(Applicant’s Testimony
`Declaration Exhibit 4)
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`Applicant’s mark received no Office Actions from the USPTO, including no rejections
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`based on Section 2(d) of the Lanham Act regarding likelihood of confusion. Id. On October 1,
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`2019, Applicant’s mark was published in the Trademark Official Gazette. Id.
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`Monster Energy Company (“Opposer” or “Monster Energy”), a multinational energy
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`drink corporation, filed a Notice of Opposition on January 28, 2020, opposing the registration of
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`Applicant’s PIMMONSTER mark on the grounds of likelihood of confusion, leading to this
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`current proceeding. Id.
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`B. Opposer Monster Energy Company
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`Monster Energy Company is a subsidiary of Monster Beverage Corporation (“the
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`Company”) based in Corona, California. The Company’s subsidiaries, including Monster Energy
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`Co., primarily develop and market caffeinated energy drinks. See Opposer’s Notice of Reliance
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`Exhibit 43 Form 10-K). The Company develops, markets, sells, and distributes highly
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`caffeinated energy drinks and concentrates for energy drink beverages under brand names,
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`including those listed in this Opposition, such as Monster Energy® and Java Monster®. See id.
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`The Company’s Monster Energy® Drinks segment primarily generates net operating revenues by
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`selling ready-to-drink packaged energy drinks primarily to bottlers and full-service beverage
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`distributors. See id. In some cases, the Company also sells directly to retail grocery and specialty
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`chains, wholesalers, club stores, mass merchandisers, convenience chains, drug stores,
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`foodservice customers, value stores, e-commerce retailers, and the military. See id. Monster
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`Beverage Company also considers itself to be within the “alternative” beverage industry, which
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`includes non-carbonated, ready-to-drink iced teas, lemonades, juice cocktails, single-serve juices
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`and fruit beverages, ready-to-drink dairy and coffee drinks, energy drinks, sports drinks, and
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`single-serve still waters with “new age” beverages. See id. at p. 5.
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`Clearly, as evident in Opposer’s submitted 10-K report, Opposer is primarily associated
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`with its caffeinated energy drinks. Monster Energy Company does, on occasion, enter into
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`license or sponsorship agreements to use Opposer’s Marks in connection with co-branded items
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`within the sports and entertainment industry. These promotional goods sold in connection with
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`Opposer’s Marks are at the heart of this Opposition. Opposer enters into license agreements with
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`NASCAR, Billabong USA, Kyle Busch Motorsports, and other extreme sports-related
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`companies or entities to sell various promotional goods with Opposer’s Marks. See Applicant’s
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`Fourth Notice of Reliance (Interrogatory No. 42). Further, Monster has entered into sponsorship
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`agreements with sports teams or athletes, such as Tiger Woods and Connor McGregor, among
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`others. See Applicant’s Fourth Notice of Reliance (Interrogatory No. 43). Although Opposer
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`sells promotional goods that overlap minimally with Applicant’s listed goods, these goods are
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`not sold on Monster’s website but only sold on the licensee's websites, such as
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`motorsportmerchandise.com, nascar.com, and supercrosssuperstore.com. See Applicant’s Notice
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`of Reliance Exhibits 57-59.
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`Placed side-by-side, there is a drastic contrast between Opposer and Applicant, their
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`respective target consumers, and the particular trade channels that sell the overlapping goods. It
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`follows from the disparity between the two brands that their trademarks, and the consumer
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`impression of those marks differ substantially and cause no likelihood of confusion.
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`III. STATEMENT OF THE ISSUES
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`The issue before the Board is whether Opposer has established that Applicant’s word
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`mark PIMMONSTER is likely to cause confusion under Section 2(d) of the Lanham Act such
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`that registration of Applicant’s mark on the Principal Register should be rejected.
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`IV. OPPOSER’S CLAIM OF PRIORITY DOES NOT EXTEND TO ANY ALLEGED
`COMMON LAW RIGHTS
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`Applicant does not challenge that Opposer’s registered marks were used before
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`Pimmonster’s. However, Opposer has not adequately established senior common law rights in
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`the word “MONSTER” in connection with Class 018, 021, and 025. Indeed, Opposer has failed
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`to submit any reliable evidence to prove a senior date of first use for any MONSTER-formative
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`mark in connection with Applicant’s applied-for classes of goods. Nor has Opposer proffered
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`any evidence of senior common law use of the mark MONSTER alone without additional
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`distinguishing content that is not present in Applicant’s mark. See Trademark Rule 2.222(b)(1)
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`(“[A] date of use of a mark must be established by competent evidence.”). Due to Opposer’s own
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`failure to adequately plead common law priority for the word MONSTER in connection with
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`Applicant’s applied-for classes of goods, Opposer’s claims of priority to any such rights should
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`be disregarded.
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`V. THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN APPLICANT AND
`OPPOSER’S MARKS
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`The Trademark Act prohibits registration of a mark that is likely to cause confusion,
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`mistake, or deception with respect to a previously registered trademark or one previously used in
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`commerce. See 15 U.S.C. § 1052(d). Opposer has the substantial burden of establishing a prima
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`facie case of likelihood of confusion, while also carrying the heavy burden of persuasion that
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`Applicant does not have the right to register its mark. See 3 McCarthy on Trademarks and Unfair
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`Competition, § 20:3 (5th ed.) (citing Clinton Detergent Co. v. Procter & Gamble Co., 302 F.2d
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`745, 133 U.S.P.Q. 520 (CCPA 1962)); Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572,
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`6 U.S.P.Q.2d 1001, 1007 (Fed. Cir.1988). The determination of whether likelihood of confusion
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`exists must be based on an analysis of all relevant and probative facts in evidence. The inquiry is
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`guided by the factors set forth in In re E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563, 567
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`(CCPA 1973).[1]
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`The Board analyzes likelihood of confusion under the factors set forth in DuPont, 177
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`U.S.P.Q. at 567. However, some factors may be more important than others in a particular case.
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`See Shen Mfg. Co. Inc. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350, 1353 (Fed. Cir.
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`2004). In this case, the relevant factors overwhelmingly weigh in favor of Applicant. It is the
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`Opposer’s obligation to present facts sufficient to show a likelihood of confusion, mistake, or
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`deception. See, e.g., Yamaha Int'l Corp. v. Hoshino Gakki Co., 6 U.S.P.Q.2d 1001, 1007 (Fed.
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`Cir. 1988); Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 102 U.S.P.Q.2d 1061, 1062
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`(Fed. Cir. 2012). Here, Opposer’s evidence and arguments are insufficient to carry its burden.
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`Therefore, Opposer’s Section 2(d) claim of likelihood of confusion fails and should be
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`dismissed.
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`A. Applicant’s Mark is Substantially Dissimilar to Opposer’s Marks in
`Appearance, Sound, Connotation, and Commercial Impression
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`Opposer cites a total of twenty-two (22) registrations for its opposition resting on the fact
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`that each of these marks include the word “MONSTER.” See Opposer’s Notice of Opposition.
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`However, many of these registrations are irrelevant because they are only connected with
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`Opposer’s primary market of energy drinks, beverages, and nutritional supplements and do not
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`overlap with Applicant’s goods at all. In fact, most of Opposer’s cited marks, fifteen (15) out of
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`twenty-two (22), are registered under Class 05, Class 030, Class 032, or Class 035, none of
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`which are applied-for goods to be used in connection with Applicant’s PIMMONSTER mark.
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`See Opposer’s Notice of Opposition.
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`Relevant to this proceeding are only those cited marks that are used in connection with
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`the goods listed in connection with Applicant’s mark. For the purposes of the likelihood of
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`confusion analysis, it is logical to focus the Section 2(d) likelihood of confusion analysis on the
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`pleaded marks listed below because they are more similar to Applicant’s applied-for goods than
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`any beverages, nutritional supplements, or other entirely unrelated goods cited by Opposer. See
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`In re Fat Boys Water Sports LLC, 118 U.S.P.Q.2d 1511, 1516 (TTAB 2016) (confining the
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`analysis to the cited mark that was most similar to the Applicant’s mark and is registered for
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`goods that are most similar to Applicant’s goods); In re Max Capital Grp., Ltd., 93 U.S.P.Q.2d
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`1243, 1245 (TTAB 2010) (holding that if the refusal is not affirmed based on similar marks
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`registered for similar goods, then it should not be affirmed on the basis of the other unrelated
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`goods).
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`Applicant’s and Opposer’s marks for overlapping goods in Class 018, Class 021, and
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`Class 025 as they are presented in the marketplace to consumers are as follows:
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`Applicant’s Challenged Mark for
`Class 018
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`Opposer’s Class 018 Marks
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`Reg No. 5826919 for “Sports bags; gym bags;
`athletic bags; traveling bags; all-purpose carrying
`bags; Backpacks”
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`Serial No. 88/453689 for “Handbags;
`Tote bags; Canvas shopping bags;
`Backpacks”
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` M
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` MONSTER ENERGY [& design] Reg. No.
`3923683 for “All-purpose sport bags; All-purpose
`carrying bags; Backpacks; Duffle bags”
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` M
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` MONSTER ENERGY [& design] Reg. No.
`5570782 for “All-purpose sport bags; all-purpose
`carrying bags; backpacks; duffel bags”
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`Applicant’s Challenged Mark
`for Class 21
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`Opposer’s Class 21 Marks
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`Serial No. 88/453689 for “Mugs”
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`Reg No. 5820689 for “Beverageware; insulated beverage
`containers for domestic use; bottles, sold empty; drinking
`bottles for sports; water bottles sold empty; bottle
`openers”
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`Reg. No. 5826919 for “Beverageware; insulated beverage
`containers for domestic use; heat-insulated containers for
`beverages”
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`M MONSTER ENERGY [& design] Reg No. 5664585
`for “Beverageware; insulated beverage containers for
`domestic use; drinking bottles for sports; water bottles
`sold empty”
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`Opposer’s Class 25 Marks
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`Reg. No. 5820689 for “clothing, namely, Tops, shirts, t-shirts,
`sweat shirts, jackets, bottoms, pants, bandanas, sweat bands,
`gloves; headwear; hats; beanies”
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`Applicant’s Challenged
`Mark for Class 25
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`Serial No. 88/453689 for
`“Shirts; Tank-tops; Hooded
`sweatshirts; Socks; Baby
`clothes, namely, jumpsuits,
`shirts and pants”
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`Reg. No. 5826919 for “Tops being clothing; shirts; t-shirts;
`sweat shirts; jackets”
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`M MONSTER ENERGY [& design] Reg. No. 5570782 for
`“Clothing, namely, t-shirts, hooded shirts and hooded
`sweatshirts; sweatshirts, jackets, pants, bandanas, sweat bands,
`gloves and motorcycle gloves; headgear, namely, hats and
`beanies”
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` MONSTER ENERGY [& design] Reg. No. 3908601 for
`“Clothing, namely, t-shirts, hooded shirts and hooded
`sweatshirts, sweatshirts, jackets, pants, bandanas, sweat bands
`and gloves; headgear, namely, hats and beanies”
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`Reg No. 5551192 for “Clothing, namely, tops, shirts, T-shirts,
`hooded shirts, sweatshirts, and jackets”
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`There are significant differences between Applicant’s standard character PIMMONSTER
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`mark and Opposer’s listed design marks. First, while each of Opposer’s design marks include the
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`word “MONSTER,” their design marks are highly stylized. Some of Opposer’s marks include
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`color, specifically black and green, and are used in conjunction with Opposer’s claw mark. In
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`contrast, the Applicant’s standard character mark is a compound word that includes the
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`Applicant’s name “Pim.” Opposer’s standard character marks, the various MONSTER-formative
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`marks asserted, including MONSTER ENERGY, JAVA MONSTER, and MONSTER ARMY,
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`all include the term “MONSTER” but are not compound words nor do they include the name
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`“Pim.”
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`Additionally, it is insufficient to find a convincing similarity between the marks to cause
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`a likelihood of confusion based on the fact that the two marks contain a common word
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`“monster.” See China Healthways Institute, Inc. v. Wang, 491 F.3d 1337, 1340, 83 U.S.P.Q.2d
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`1123 (Fed. Cir. 2007) (“It is incorrect to compare marks by eliminating portions thereof and then
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`simply comparing the residue.”). Where only a portion of compared trademarks are similar,
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`courts have held that there is no likelihood of confusion between two standard character marks
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`even if the respective goods are in the same or related classes. See 4 McCarthy on Trademarks
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`and Unfair Competition § 23:57 (5th ed.)
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`Opposer also argues that “MONSTER” is the dominant portion of Applicant’s mark.
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`However, the word “monster” is not dominant in Applicant’s mark because the proper standard
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`is to view the marks in their entireties and not to dissect the marks into their various components,
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`such as “PIM” and “MONSTER.” See In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir.
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`1985) (“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is only part
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`of a mark.”); Franklin Mint Corp. v. Master Mfg. Co., 212 U.S.P.Q. 233 (CCPA 1981) (“[i]t is
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`axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be
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`considered as a whole”); In re Bed & Breakfast Registry, 791 F.2d 157, 229 U.S.P.Q. 818 (Fed.
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`Cir. 1986); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:41 (5th
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`ed.) (potentially conflicting marks are to be evaluated “by looking at them as a whole, rather than
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`breaking the marks up into their component parts for comparison”).
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`Applicant does not argue that PIM is the “dominant element” of its PIMMONSTER
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`mark; instead, Applicant argues the word PIM must be considered alongside the word
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`MONSTER, as the average consumer would see the mark in the marketplace. Shen Mfg., 73
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`U.S.P.Q.2d at 1355; see Estate of P.D. Beckwith Inc. v. Comm’r. of Patents, 252 U.S. 538 (1920)
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`(“[T]he commercial impression of a trademark is derived from it as a whole, not from its
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`elements separated and considered in detail.”); J. Thomas McCarthy, McCarthy on Trademarks
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`and Unfair Competition § 23:41 (5th ed.) (“The anti-dissection rule is based upon a common-
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`sense observation of customer behavior: the typical shopper does not retain all of the individual
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`details of a composite mark in his or her mind but retains only an overall, general impression
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`created by the composite as a whole.”). Thus, Applicant’s PIMMONSTER mark is not
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`confusingly similar when considered in its entirety. Consumers likely view the PIMMONSTER
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`mark as a single word with no dominant portion because the mark is a single compound word in
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`standard character format.
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`Lastly, the sound of Opposer’s Marks compared to Applicant’s PIMMONSTER mark are
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`dissimilar. Because of the different word combinations in the marks, they are necessarily
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`phonetically dissimilar. Other than the word “monster,” each mark has multiple additional,
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`disparate phonetic sounds that distinguish them. Further, Applicant’s mark is a single compound
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`word with two syllables beginning with the name “Pim.” In contrast, Opposer’s marks include
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`the word “monster” plus an additional separate word located either before or after MONSTER.
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`The inclusion of the separate words, such as—“energy” (three syllables), “java” (two syllables),
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`and “army” (two syllables)—in combination with “monster” distinguish the marks from
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`Applicant’s PIMMONSTER mark. Applicant’s PIMMONSTER mark is a single compound,
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`fanciful word that is meant to emphasize to consumers the Applicant’s name “Pim” in
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`conjunction with the word “monster,” which are portrayed in the creative drawings the Applicant
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`incorporates onto the goods. Consumers are likely to view and pronounce the mark
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`PIMMONSTER with no pauses since it is a compound word. Again, the mere similarity of one
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`portion of the marks, outweighed by multiple dissimilarities, results in an overall unlikelihood of
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`confusion.
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`Also, as it relates to MONSTER ENERGY and MONSTER ARMY, the differing
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`connotations and commercial impressions prevent a likelihood of confusion. When word marks,
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`through their descriptive meaning or structure create different commercial impressions a
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`likelihood of confusion is unlikely, even when the marks are similar in terms of sound and
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`appearance. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed Cir. 2012);
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`Bells Brewery, Inc. v. Bell Hill Vineyards, LLC, 2009 WL 5118319 (T.T.A.B. 2009), aff'd, 404
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`Fed. Appx. 502 (Fed. Cir. 2010). . In this instance, the connotation that each mark establishes is
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`fundamentally different. Viewed in context, within the mark MONSTER ENERGY, “monster”
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`operates as an adjective, describing the energy that a user will obtain through its product.
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`Similarly, in MONSTER ARMY, “monster” is an adjective that describes the nature of affiliates
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`with Monster Energy, Inc. In contrast, in PIMMONSTER, “monster” signifies a noun or “thing”
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`-- specifically, the various “monsters” that Pimlada Kongkham creates through her artwork.
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`These descriptions are connotatively distinct and create vastly different commercial impressions.
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`Accordingly, the marks as used in context are unlikely to generate any likelihood of confusion.
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`See In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312, 1314 (TTAB 1987) (finding “CROSS-
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`OVER,” when applied to brassieres, is suggestive of the construction of the brassieres, while
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`“CROSSOVER” as applied to ladies’ sportwear suggests the ability of the goods to “cross over”
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`the line between informal and formal wear). Applicant’s and Opposer’s marks are so distinctly
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`different in appearance, sound, connotation, and commercial impression that the marks can only
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`be seen as dissimilar under the first, most probative DuPont factor.
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`B. Applicant’s Goods are Dissimilar to Opposer’s Goods and the Trade Channels
`for the Respective Goods Do Not Overlap
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`The second DuPont factor is the relatedness of the goods as described in the application
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`and registration. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q.
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`24 (CCPA 1976). In a likelihood of confusion analysis, neither goods nor services have to be
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`identical for a likelihood of confusion determination. Id. However, even where the marks are
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`similar and the goods are related, a finding of no likelihood of confusion may be appropriate if
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`these factors are outweighed by the other DuPont factors. See In re Strategic Partners, Inc., 102
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`U.S.P.Q.2d 1397 (TTAB 2012). Opposer has not cited