Monster Energy Companyv.David Zekser

Trademark Trial and Appeal Board

Jul 30, 2015

No. 91203340 (T.T.A.B. Jul. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Monster Energy Company
v.
David Zekser
_____

Opposition No. 91203340
against Serial No. 85432408
_____

Diane M. Reed of Knobbe Martens Olson & Bear LLP,
for Monster Energy Company.
David Zekser, pro se.
_____

Before Bucher, Cataldo and Masiello,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
David Zekser, a U. S. citizen and resident of Florida (hereinafter “Applicant”) seeks
registration on the Principal Register of the following mark:
for
Opposition No. 91203340
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“dietary food supplements; vitamins” in International Class
5; and
“providing weight loss program services; providing a website
featuring information about dietary supplements and
nutrition and weight loss” in International Class 44.1
Monster Energy Company (hereinafter “Opposer”) opposes registration of this
mark on the ground of likelihood of confusion. In addition to its assertion of extensive
common law rights in its MONSTER ENERGY marks throughout the United States,
based upon billions of dollars’ worth of goods sold under its MONSTER marks, Opposer
pleaded ownership of, inter alia, the following registrations:
M MONSTER ENERGY for “nutritional supplements in liquid form, but excluding
perishable beverage products that contain fruit juice or soy,
whether such products are pasteurized or not” in
International Class 5;2
MONSTER ENERGY for “nutritional supplements in liquid form, but excluding
perishable beverage products that contain fruit juice or soy,
whether such products are pasteurized or not” in
International Class 5;3
LO-CARB MONSTER
ENERGY
for “nutritional supplements” in International Class 5;
“non-alcoholic beverages, namely, energy drinks, drinks
enhanced with vitamins, minerals, nutrients, amino acids
and/or herbs” in International Class 32;4

1 Application Serial No. 85432408 was filed on September 26, 2011, based upon Applicant’s
claim of first use anywhere for both classes since at least as early as December 2010 and use
in commerce for both classes since at least as early as February 15, 2011. The mark consists of
a backwards letter “S” with swirl design at ends and followed by a man’s arm from shoulder
extending from right side middle to lower aspect of design with outstretched hand and palm
up. The stylized text “Good Monster Inc” is over his palm. No claim is made to the exclusive
right to use the designation “Inc.” apart from the mark as shown.
2 Registration No. 3044314 issued on January 17, 2006; renewed. No claim is made to the
exclusive right to use the word “Energy” apart from the mark as shown.
3 Registration No. 3044315 issued on January 17, 2006; renewed. No claim is made to the
exclusive right to use the word “Energy” apart from the mark as shown.
4 Registration No. 3852118 issued on September 28, 2010. No claim is made to the exclusive
right to use the terms “Lo-Carb” or “Energy” apart from the mark as shown.
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MONSTER MIXXD for “nutritional supplements” in International Class 5;
“non-alcoholic beverages, namely, carbonated soft drinks;
carbonated drinks enhanced with vitamins, minerals,
nutrients, amino acids and/or herbs; carbonated energy or
sports drinks” in International Class 32;5 and
MONSTER ENERGY for “non-alcoholic beverages, namely, energy drinks,
excluding perishable beverage products that contain fruit
juice or soy” in International Class 32.6

Applicant, in his answer, denied the salient allegations of the Notice of Opposition.
I. The Record
By operation of the Trademark Rules, the pleadings herein and the file of the
subject application are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.
Additionally, Opposer submitted a notice of reliance on: copies of documents of fifteen
of Opposer’s trademark registrations drawn from the United States Patent and
Trademark Office’s databases (Exhibits A-N); copies of Applicant’s responses to
Opposer’s First Set of Interrogatories Nos. 1-28, and copies of Applicant’s responses to
Opposer’s First Set of Requests for Admission Nos. 1-10 (Exhibits 0-P); copies of
printed publications (Exhibits Q-SS); copies of publicly-available Internet documents
(Exhibits TT-III); and copies of Opposer’s SEC filings for years 2002 to 2012 (Exhibits
JJJ-TTT);7 and the testimony depositions of Opposer’s witnesses, Mark Hall,
President of Monster Energy Division, taken on June 25, 2013,8 and of Rodney Sacks,

5 Registration No. 3852123 issued on September 28, 2010.
6 Registration No. 4036681 issued on October 11, 2011. No claim is made to the exclusive right
to use the word “Energy” apart from the mark as shown.
7 See 15 and 50 TTABVue, dated July 1, 2013 and July 16, 2015.
8 34 through 37 TTABVue (Confidential 34-35; redacted/non-confidential 36-37).
Opposition No. 91203340
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Opposer’s chairman and chief executive officer, also taken on June 25, 2013,9 along
with the exhibits related to both depositions.
Although Applicant submitted a letter to the Board on April 21, 2014 (30
TTABVue), this letter was stricken from the record due to Applicant’s failure to
comply with the rules of practice governing inter partes proceedings before the
Board.10
Only Opposer submitted a final brief in the case at bar.
II. The Parties
The record demonstrates that since launching its MONSTER line of products in
2002, Opposer has become the nation’s leading supplier of nutritional supplements in
the form of energy drinks. Over the past dozen years, Opposer has spent billions of
dollars promoting its MONSTER marks. Each year, Opposer sells more than a billion
MONSTER nutritional supplement products, now having a one-third unit share of the
huge energy drink market.
On September 26, 2011, Applicant filed an application for his “GOOD MONSTER
design mark” shown above in connection with supplements and weight loss programs
based on supplements, claiming a date of first use in commerce of February 15, 2011.
III. Standing and Priority
Because Opposer has made a number of its MONSTER marks properly of record, it
has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc., v. Ralston Purina Co.,

9 39 through 47 TTABVue (confidential – 39-41; redacted/non-confidential – 42-47).
10 See Board order at 33 TTABVue, dated August 4, 2014.
Opposition No. 91203340
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670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Furthermore, because these
registrations are properly of record, priority is not in issue as to the marks and goods
identified therein. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
IV. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are relevant to the well-
established likelihood of confusion factors. See In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co. Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“ … mistaken belief that [a
good or service] is manufactured or sponsored by the same entity … is precisely the
mistake that Section 2(d) of the Lanham Act seeks to prevent”).
Fame A.
Given the dominant role that the fame of a prior mark plays in our likelihood of
confusion determination, we turn first to the fame of Opposer’s pleaded MONSTER
and MONSTER ENERGY marks. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Because of the wide latitude of legal
protection accorded a famous mark, the party asserting fame must clearly prove it.
Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Fame for likelihood of confusion purposes arises as long as a “significant portion of the
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relevant consuming public … recognizes the mark as a source indicator.” See Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1694 (Fed Cir. 2005). This type of fame may be measured indirectly
by the volume of sales and advertising expenditures of the goods and services
marketed under the mark, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the products
identified by the marks; and the general reputation of the products and services. Bose
Corp., 63 USPQ2d at 1308.
Opposer has submitted voluminous evidence of the fame of its MONSTER marks.
After spending billions of dollars promoting its MONSTER marks, Opposer has a one-
third unit share of the enormous energy drink market, making it the best-selling
nutritional supplement energy drink brand in the U. S.11 Opposer’s products are sold
in over 300,000 retail locations in the U.S.,12 generating over $1.2 billion in sales
revenue in 2011.13 Opposer has received extensive publicity for its MONSTER marks
in glossy print media publications as well as on the Internet. Pictures placed into the
record show sponsored athletes – particularly those involved in “extreme sports” –
wearing clothing and using equipment bearing the MONSTER marks appearing in

11 Sacks Dep. Test. at 45-46, 39 TTABVue at 46-47 of 373 (confidential), 42 TTABVue at 46-47
of 296 (redacted).
12 Id. at 32, 39 TTABVue at 33 of 373, 42 TTABVue at 33 of 296.
13 Id. at 43-45, 39 TTABVue at 44-46 of 373, 42 TTABVue at 44-46 of 296; and Exhibit 17, 43
TTABVue at 129-72 of 172.
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countless events that have been seen by millions of viewers, with special emphasis on
the 18-to-34 demographic:14

Opposer also promotes concerts and other public events where its MONSTER mark
is prominently displayed, uses social media and courts celebrity endorsements.
Opposer’s website at www.MonsterEnergy.com hosts more than 650,000 unique
visitors every month, and as of June 2013 its Facebook page had more than 23 million
fans – placing it in the top-10 most liked brands on Facebook worldwide:

14 Sacks Dep. Test. at 49-59, 39 TTABVue at 50-60 of 373 (confidential), 42 TTABVue at 50-60
of 296 (redacted); Exhibit 14, 43 TTABVue at 57-104 of 172; Hall Dep. Test. at 8-14, 34
TTABVue at 9-15 of 31 (confidential).
Opposition No. 91203340
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In addition to the commercial strength demonstrated by this extraordinary
exposure in traditional media, through non-traditional sporting events, and across a
variety of Internet sites, Opposer’s MONSTER marks are also inherently distinctive,
and hence conceptually strong.
In the final analysis, we find that the evidence of record strongly establishes the
fame of Opposer’s MONSTER marks. See, e.g., Bose Corp., 63 USPQ2d at 1306 (listing
cases finding fame with litigants having significantly smaller annual revenue
numbers). Accordingly, this du Pont factor clearly weighs in favor of a likelihood of
confusion.
Relationship of the goods and services B.
We turn next to the du Pont factor that focuses on the relationship of the goods and
services described in the affected application to the goods identified in Opposer’s
pleaded registrations. Cunningham, 55 USPQ2d at 1846; Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
It is well established that the goods and services of the parties need not be similar
or competitive, or even offered through the same channels of trade, to support a
holding of likelihood of confusion. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007) (fountain drink versus portable animal water dishes). It is sufficient that
the respective goods and services of the parties are related in some manner, or that
the conditions and activities surrounding the marketing of the goods and services are
such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. Id., In re Peebles, Inc., 23
Opposition No. 91203340
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USPQ2d 1795 (TTAB 1992); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
The issue, of course, is not whether purchasers would confuse the goods and services,
but rather whether there is a likelihood of confusion as to the source of the goods and
services. See In re Rexel, Inc., 223 USPQ 830 (TTAB 1984); see also J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965) (“The confusion
involved, of course, is not a confusion of goods but a confusion of business … .”).
Applicant’s “dietary food supplements; vitamins” in International Class 5
encompass Opposer’s “nutritional supplements in liquid form; vitamin fortified
beverages;” and Applicant plans to sell dietary supplements and vitamins in liquid
form.15 Furthermore, Applicant’s weight loss services are related to Opposer’s
nutritional supplement products. A large part of Applicant’s weight loss program
consists of supplements, including a “protein shake powder” and “multivitamins,”
distributed in connection with the program.16 Similarly, Opposer offers both
nutritional supplement products and energy shakes with protein.17 Many of Opposer’s
consumers are calorie conscious, and hence Opposer’s nutritional supplement products

15 See Opposer’s Not. of Rel., Ex. P, Applicant’s Response to RFA No. 3; 50 TTABVue at 108 of
1414::
3. Admit that Applicant plans to sell dietary food supplements or vitamins in liquid form.
RESPONSE: Admitted.
16 See Opposer’s Not. of Rel., Ex. 0, Applicant’s Response to Interrog. No. 7; 50 TTABVue at
101 of 1414::
7. State the nature of the business conducted by the Applicant as it relates or will
relate to the goods and services identified in Applicant’s Application.
ANSWER: Applicant objects to this Instant Interrogatory on the grounds that it is
overly broad and burdensome. Subject to said objection, Applicant states:
Applicant uses Applicant’s Mark in connection with a Health Program for people
who wish to lose weight, protein shake powder, multivitamins, and pudding.
The products are distributed in connection with the weight loss program.
17 Sacks Dep. Test. at 11, 42 TTABVue at 12 of 296.
Opposition No. 91203340
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are intended to supplement a person’s diet.18 Thus, we find that Applicant’s services
are related to Opposer’s nutritional supplement products. As a result, this factor
weighs in favor of a likelihood of confusion.
Channels of trade C.
Neither Applicant nor Opposer has placed any restrictions on the trade channels.
“[B]ecause there are no limitations as to the channels of trade or classes of purchasers
in the description of goods of either opposer’s registrations or applicant’s application, it
is presumed that the goods move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for those goods.” Joel Gott Wines,
LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1432 (TTAB 2013). Thus, it should
be presumed that the channels of trade for Opposer’s and Applicant’s overlapping
goods are the same and that they are offered to the same class of consumers.
Furthermore, Applicant’s goods and services are so highly related to Opposer’s
goods that they will also travel through the same normal channels of trade for weight
loss programs and products such as drugstores, health food stores and nutritional
supplement stores. Opposer sells its nutritional supplement and vitamin drinks in
national retail outlets like CVS, Rite Aid, Walgreens, Costco, Wal-Mart and Target, in
health food club stores, gyms and health clubs, as well as supplement stores such as
GNC and Pro Nutrition Warehouse Direct.19 Applicant plans to sell his nutritional

18 Sacks Dep. Test. at 31, 104, 42 TTABVue at 32, 105 of 296.
19 Sacks Dep. Test. at 33-34, 42 TTABVue at 34-35 of 296.
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supplements and vitamins in retail stores, and plans to offer his weight loss program
online.20
Finally, both Applicant’s goods and services and Opposer’s goods are currently sold
through the Internet. It appears that Applicant already sells his products and services
on his website located at www.doctorzekser.com. Opposer’s products are sold on
numerous websites, including on Amazon.com, Walmart.com, Kmart.com and
Staples.com.21
Accordingly, this du Pont factor also supports a finding of likelihood of confusion.
The conditions of sale D.
Although Applicant has failed to produce any evidence relating to the price of his
nutritional supplement and vitamin products, we have no basis on which to conclude
that they are expensive, and we therefore presume that they include nutritional
supplements and vitamins at all price points normal therefor. Opposer has shown that
its goods are sold at retail for $2 - $4.22 Thus, we find that both parties’ nutritional
supplement products are low-cost, impulse purchases. Hence, when making their
purchasing decision, potential consumers are not likely to exercise a high degree of
care, and this du Pont factor favors a finding of likelihood of confusion.

20 See Opposer’s Not. of Rel., Ex. P, Applicant’s Response to RFA No. 1; 50 TTABVue at 108 of
1414:
1. Admit that Applicant plans to sell dietary food supplements or vitamins in retail
stores.
RESPONSE: Admitted.
See also footnote 16, supra.
21 Sacks Dep. Test. at 35, 40 & 42, 42 TTABVue at 36, 41 & 43 of 296.
22 Id. at 88, 42 TTABVue at 89 of 296.
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Opposer’s MONSTER marks are used on a wide variety of goods E.
The record shows that Opposer uses its MONSTER marks on a wide range of
products, including nutritional supplements, beverages, stickers, wrist bands, posters,
sports gear, jewelry, video recordings and clothing. Use of a·mark by an opposer on
such a wide variety of products makes it more likely that relevant consumers will be
confused by the similar mark of a newcomer. See, e.g., Uncle Ben’s, Inc. v. Stubenberg
Int’l Inc., 47 USPQ2d 1310, 1313 (TTAB 1998). This confusion is magnified where, as
here, the parties offer legally identical goods and closely related goods and services.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (finding that registration
for a wide range of goods “as well as the relatedness of the goods, would favor
opposer.”). Accordingly, this factor also weighs in favor of a finding of likelihood of
confusion.
The number and nature of similar marks on similar goods F.
Due to Opposer’s diligence in enforcing its rights in its MONSTER marks against
nutritional supplement products offered for sale by third parties using variations on
its MONSTER marks, we find that this factor too weighs in favor of a finding of
likelihood of confusion.
Similarity of the marks G.
Finally, we turn to the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imps., 73 USPQ2d at 1692.
“The proper test is not a side-by-side comparison of the marks, but instead ‘whether
Opposition No. 91203340
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the marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between the
parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012).
While the marks must be compared in their entireties, “there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). Although Opposer’s array of registered marks includes additional
wording or stylizations, the consistent and dominant portion of all of Opposer’s
registered marks is the word “Monster.” Citigroup Inc. v. Capital City Bank Group,
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) (“Further, CCB’s
applications disclaim ‘Bank’ and when a mark consists of two or more words, some of
which are disclaimed, the word not disclaimed is generally regarded as the dominant
or critical term.”). In practice, Opposer’s presentation on its products, point-of-sale
displays and promotional materials emphasizing its MONSTER name and mark has
remained consistent for more than a dozen years. Opposer has built its brand around
the “Monster” portion of Opposer’s composite marks. As seen above, it is dominant
because it is the famous part of the mark on which all of Opposer’s advertising and
marketing efforts focus.
The dominant part of Applicant’s mark is also the word “Monster.” The word
“Good” and the designation “Inc.” have less source indicating potential than the strong
identifier, “Monster.” We have previously found that marks which share a critical,
Opposition No. 91203340
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distinctive element are highly similar. See In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1271 (TTAB 2009) (holding that VANTAGE TITAN and TITAN are confusingly
similar); In re El Torito Rests. Inc., 9 USPQ2d 2002, 2003 (TTAB 1988) (holding
MACHO COMBOS and likely to cause confusion.) Thus, Applicant’s GOOD
MONSTER design mark is highly similar to Opposer’s MONSTER marks because the
dominant portions of both marks are identical and the marks create the same
commercial impression. Hence, the dominant, source-indicating portions of both
parties’ marks are identical: MONSTER.
The addition of a design feature in Applicant’s mark does not detract from the
prominence of the word “Monster” in Applicant’s mark. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905 (Fed. Cir. 2012) (“In the case of a composite mark containing
both words and a design, ‘the verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed’” (quoting CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)); L.C. Licensing, Inc. v. Cary Berman,
86 USPQ2d 1883, 1887 (TTAB 2008) (“[I]t is well settled that if a mark comprises both
a word and a design, then the word is normally accorded greater weight because it
would be used by purchasers to request the goods.”).
The fact that Applicant’s GOOD MONSTER design mark incorporates a stylized
logo does not lessen the similarity between Applicant’s mark and Opposer’s MONSTER
marks. In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010)
(“the addition of a column design to the cited mark (at right) is not sufficient

to convey that the marks identify different sources for legally identical insurance
services”). Moreover, Applicant’s stylized logo consists of a muscular arm, itself
Opposition No. 91203340
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associated with athletes and sports. Because Opposer’s MONSTER brand is clearly
associated with athletes, extreme sports, and other sporting events, this imagery
representing muscular athletics only further enhances the likelihood that consumers
will be confused. In fact, Applicant’s stylized logo has the appearance of a tattoo, and
hundreds of Opposer’s most passionate consumers have submitted to Opposer
photographs of themselves displaying tattoos of Opposer’s famous symbols.23 Hence,
the tattoo-like appearance of the design shown in Applicant’s design mark itself
increases the likelihood of confusion.
Accordingly, we find that Applicant’s applied-for mark and
Opposer’s MONSTER marks are highly similar, especially as to connotation and
overall commercial impression, and this important du Pont factor weighs strongly in
favor of finding a likelihood of confusion herein.
Moreover, the fame of Opposer’s MONSTER marks means that even a lesser level
of confusing similarity between the respective marks would cause a likelihood of
confusion. When the senior user’s mark is famous “the [Lanham] Act’s tolerance for
similarities in competing marks falls.” Kenner Parker Toys, 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992); see also Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (the fame of opposer’s mark
“increases the likelihood of confusion with applicant’s mark.”).

23 Sacks Dep. Test. at 101, 42 TTABVue at 102 of 296.
Opposition No. 91203340
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Conclusion on Likelihood of Confusion H.
Given the fame of Opposer’s MONSTER marks and their use in connection with a
wide range of products, the close relationship of the identified goods and services,
clearly moving through overlapping trade channels to the same classes of ordinary
purchasers, as well as the similarities between the connotations and overall
commercial impressions of the respective marks, we find a likelihood of confusion
herein.
Decision: The opposition is hereby sustained.