Monster, Inc.v.Monster Memory and More, Inc.

Trademark Trial and Appeal Board

Sep 23, 2013

No. 92054446 (T.T.A.B. Sep. 23, 2013)

Mailed: September 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Monster, Inc.
v.
Monster Memory and More, Inc.
_____

Cancellation No. 92054446
For Registration No. 3532010
_____

David M. Kelly, Linda K. McLeod, Anna Balishina Naydonov of
Kelly IP LLP, for Monster, Inc.

Geoffrey C. Brethen, Reid E. Dammann of Musick Peeler &
Garrett LLP, for Monster Memory and More, Inc.
_____

Before Ritchie, Shaw, and Adlin, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On August 15, 2007, Monster Memory and More, Inc.
(“respondent”) applied for registration of the mark M
Monster Memory and more, with “memory” disclaimed, in the
design format shown below, for “memory cards” in
International Class 9,1 which registration issued on
November 11, 2008 (the “Registration”):

1 Registration No. 3532010, originally filed based on applicant’s
intent to use, and later amended to allege use under Section 1(a)
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92054446

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On July 23, 2011, Monster, Inc. (petitioner), filed a
petition to cancel the Registration on the ground that
respondent’s mark is likely to cause confusion with a number
of petitioner’s MONSTER marks. Specifically, petitioner
alleged ownership of almost four dozen registrations which
begin with the term MONSTER, or variations thereof, for
various goods including, among other things, “cables” and
“connectors.”
Respondent denied the salient allegations of the
petition and asserted affirmative defenses including laches.
The parties agreed to proceed via a form of Accelerated Case
Resolution (“ACR”), by which they would submit testimony and
evidence via signed declarations with attached exhibits, and
the Board approved their ACR stipulation in its order of
February 22, 2013. Both parties filed briefs and petitioner
filed a reply brief.
The Record
The record consists of the pleadings; the file of the
involved registration; and the following:

of the Trademark Act, alleging dates of first use and first use
in commerce on August 5, 2008.

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1. The declaration of Greg Pedersen, petitioner’s Head of
Brand Marketing and Strategic Alliances, dated April
4, 2013, together with Exhibits 1 through 109 thereto.
2. The declaration of Anna Naydonov, counsel for
petitioner, dated April 4, 2013, together with
exhibits 1 through 575 thereto.
3. The declaration of Ketch Rogers, Director of Marketing
for Monster Digital, licenesee of Petitioner, dated
April 4, 2013, together with Ex. A thereto.
4. The declaration of Robert York, Director, Global
Business Development and Strategy for Monster Digital,
licensee of Petitioner, dated April 4, 2013.
5. The declaration of Steve Johnson, President and owner
of respondent, dated May 7, 2013, together with
exhibits 1 through 6 thereto.
6. The declaration of Geoffrey C. Brethen, counsel for
respondent, dated May 8, 2013, together with exhibits
1 through 28 thereto.
7. The declaration of Reid Dammann, counsel for
respondent, dated May 8, 2013, together with exhibits
1 through 108 thereto.
Laches
Prior to our consideration of petitioner’s pleaded
claim of priority and likelihood of confusion, we first
address respondent’s affirmative defense of laches to
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determine whether petitioner’s claim is barred thereby. It
is settled that laches may be asserted and under appropriate
circumstances applied against a Section 2(d) claim of
likelihood of confusion in a cancellation proceeding.2 See
National Cable Television Association Inc. v. American
Cinema Editors Inc., 973 F.2d 1572, 19 USPQ2d 1424 (Fed.
Cir. 1991) (defense of laches was considered in connection
with a cancellation proceeding brought under Section 2(d));
and Christian Broadcasting Network Inc. v. ABS-CBN
International, 84 USPQ2d 1560 (TTAB 2007) (because defense
of laches found to apply, petition to cancel brought under
Section 2(d) dismissed).
In order to prevail on the affirmative defense of
laches, respondent must establish that there was undue or
unreasonable delay by petitioner in asserting its rights,
and that prejudice to respondent resulted from that delay.
See Bridgestone/Firestone Research Inc. v. Automobile Club
de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462
(Fed. Cir. 2001) (“Mere delay in asserting a trademark-
related right does not necessarily result in changed
conditions sufficient to support the defense of laches.
There must also have been some detriment due to the

2 The only exception is when confusion is inevitable, because
any injury to respondent caused by petitioner’s delay is
outweighed by the public’s interest in preventing confusion. See
Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB 1999).

Cancellation No. 92054446

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delay.”) With regard to delay, the focus is on
reasonableness and the Board must consider any excuse
offered for the delay. See A. C. Aukerman Co. v. R. L.
Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321,
1329 (Fed. Cir. 1992).
Here, respondent filed its trademark application on
August 15, 2007, and the mark was published for opposition
on April 29, 2008. However, the application was initially
filed as a Section 1(b) application, and the registration
did not issue until November 11, 2008. The registration
constitutes constructive notice to petitioner of
respondent’s registration. See Teledyne Technologies, Inc.
v. Western Skyways, Inc., 78 USPQ2d 1203 (TTAB 2006), aff'd,
208 Fed. Appx. 886, unpublished Nos. 2006-1336, 2006-1367
(Fed. Cir. December 6, 2006). The record also indicates
that petitioner had actual notice of respondent’s use of the
mark on October 11, 2007 by way of a “third party watch
service.” (petitioner’s Response to Interrogatory No. 48 in
Second Set of Interrogatories dated June 21, 2012).
However, petitioner could not initiate a cancellation
proceeding until after the registration issued, and
petitioner initiated this proceeding on July 23, 2011 less
than three years later. Respondent relies on Teledyne for
the proposition that laches may be found where respondent
has invested significantly and experienced economic
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prejudice. See Teledyne Technologies, Inc. v. Western
Skyways, Inc., 78 USPQ2d at 1211-1212 (TTAB 2006), see also
J. Thomas McCarthy, 3 McCarthy on Trademarks s 20:76 (4th
ed. updated Sept. 2013) (noting that prejudice can be found
from either “faded memory of witnesses” or from “economic
prejudice based on loss of time or money invested in
promoting the mark or foregone opportunity”). To this end,
we have reviewed the information put forth by respondent on
the confidential record, including by declaration of its
president, Steve Johnson, regarding investment and
advertising by respondent during the relevant time period.
We do not find the situation to be akin to the prejudice
established in Teledyne, however, and on this record, we
find neither undue delay by petitioner, nor that respondent
was unfairly prejudiced thereby. Respondent’s defense of
laches therefore, fails.
Standing and Priority
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading]."). To establish standing in a cancellation,
petitioner must show both “a real interest in the
Cancellation No. 92054446

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proceedings as well as a ‘reasonable’ basis for his belief
of damage.” See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As a result of petitioner’s submission of registrations
which begin with the term MONSTER or variations thereof for
various goods including, among other things, “cables” and
“connectors,” petitioner has established its standing in
this action. See Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Cerveceria
Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d
1298 (TTAB 2000); and Hartwell Co. v. Shane, 17 USPQ2d 1569
(TTAB 1990).
Regarding priority, there is no dispute that respondent
filed the application which issued as the involved
Registration on August 15, 2007, and respondent’s date of
first use is subsequent thereto. Respondent argues that
petitioner began selling memory-related items after this
date, and therefore does not have priority. However,
petitioner has pleaded registrations issued before this
date. We have determined the three most relevant marks
pleaded by petitioner for purposes of the relevant priority
and likelihood of confusion factors are the following, which
we will consider for our analysis:
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1. MONSTER, in typed drawing form, for “electrical and
musical signal transmitting cable and connectors,”
in International Class 9;3
2. MONSTER CABLE, in typed drawing form, for “musical
and voice signal transmitting cable and connectors
therefor,” in International Class 9;4 and
3. MONSTER CABLE, in typed drawing form, for
“electrical signal transmitting cable and connectors
therefor,” in International Class 9.5
In a cancellation proceeding where both parties have
registrations, each can rely on the filing date of the
application resulting in its registration. Brewski Beer Co.
v Brewski Brothers Inc. 47 USPQ2d 1281, 1283-84 (TTAB 1998).
Further, the parties may submit evidence of use earlier than
the filing dates of their respective applications. Id.
Respondent does not claim use of its mark before filing,
(Johnson decl. at para. 16, Ex. 2), and petitioner’s filing
dates were years earlier. Accordingly, petitioner has
established its standing and priority.

3 Registration No. 2184002, Registered August 25, 1998, based on
a filing date of July 7, 1997. Sections 8 and 15 accepted and
acknowledged. Renewed.
4 Registration No. 1340229, Registered June 11, 1985, based on a
filing dated of February 13, 1984, disclaiming the exclusive
right to use the term “CABLE” apart from the mark as shown.
Sections 8 and 15 accepted and acknowledged. Renewed.
5 Registration No. 1342164, Registered June 18, 1985, based on a
filing date of February 14, 1984, disclaiming the exclusive right
Cancellation No. 92054446

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Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
For purposes of our likelihood of confusion analysis,
we will consider the applicable du Pont factors as to the
three pleaded marks noted above, which we have determined to
be the most relevant. If we find a likelihood of confusion
between respondent’s mark and one or more of these
registrations, then our analysis with regard to the other
pleaded marks would be moot. Similarly if we do not, then
we would not find it as to the others either.
Fame
We turn first to the factor of fame because where it
exists it plays a dominant role. Kenner Parker Toys Inc. v.
Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Famous marks are accorded more protection

to use the term “CABLE” apart from the mark as shown. Sections 8
Cancellation No. 92054446

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precisely because they are more likely to be remembered and
associated in the public mind than a weaker mark. Id. A
famous mark is one “with extensive public recognition and
renown.” Id. See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005; Bose Corp. v QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002).
Petitioner asserts that its MONSTER mark is famous
generally and particularly in the consumer-electronics
field. (pet’s brief at 24). As described by petitioner:
Monster is a classic American success story. The
high-end audio/video cable industry did not exist
before Monster was founded in 1978 because stereo
systems were typically wired with the same
electrical wire used in lamps and came with a
cheap cable. Everything changed, however, when
Noel Lee experimented with audio cables in his
garage and discovered that wires of different
construction varied in their audio performance.
This is how Noel Lee invented the “Monster” brand
of cables, founded Monster, and created a brand
new industry – high-quality audio/video cables.
According to the SAN FRANCISO BUSINESS TIMES 1997,
Monster “was an immediate hit. Since that time
[1978] Lee maintained the number one brand name
position in his field.” (Pedersen decl. Para. 1,
6-8).

Id. at 3.

Although the specific figures are designated as
“confidential” and will only be discussed generally here,
petitioner has enjoyed very substantial sales and made

and 15 accepted and acknowledged. Renewed.
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significant advertising expenditures over the decades. This
includes a significant amount of celebrity and other
promotions, including the creation of headphones with Dr.
Dre and Lady Gaga. (Pedersen decl. at 29-30, 49 and
exhibits). In the years 2004 through 2008, petitioner
sponsored a 4-year renaming of San Francisco’s Candlestick
Park (home of the NFL’s 49’ers) as “Monster Park.” Id., at
para. 40. Petitioner has also undertaken prominent
advertising in Times Square in 2012. Id at para 60.
Meanwhile, petitioner has enjoyed regular unsolicited media
coverage from publications around the nation regarding its
cables and related electronic products offered under the
MONSTER mark. Examples over the years include the
following:
Gee-Whiz Gifts To Gratify the Gadget Lovers on
Your List; by Jonathan Takiff, Knight-Ridder
Newspapers; “Monster Cable and Apature make some
of the best component and speaker wires I’ve
heard.” Chicago Tribune. December 13, 1985.

If You Crave Total Control “So you wish your
remote control worked better? . . . There’s help
if you attach a new power booster called Zapit to
the end of the remote control. . . Zapit carries a
$24.95 list price and is marketed by Monster
Cable, 101 Townsend St., San Francisco.” The
Miami Herald. January 30, 1987.

Big-Screen TVS Can be As Good As They Sound, “For
those who are under even tighter budget
constraints, Monster Cable makes a set of speakers
that come with surround-sound circuitry,
eliminating the need for a separate decoder. The
speakers cost about $230 a pair.” Los Angeles
Times. March 9, 1991.

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A Plugged-In Noel, “An upgrade is well worth the
investment and the time to find a nearby audio
specialty store. Look for names such as
Audioquest, Straightwire or the more readily
available Monster Cable.” The Hartford Courant
Company. December 8, 1994.

Living-Room Theaters Can be Better Than the Local
Cinema, “It isn’t just equipment that can make the
difference at home. Leland points to the Monster
Cable wires he uses to connect his audio-visual
system. The thick, top-of-the-line cable is
designed to separate the high and low
frequencies.” Pittsburgh Post-Gazette. August
31, 1996.

Been There, Done That, “While my 5-year-old Sharp
projector makes its best possible pictures from an
S-Video cable feed, I also ran three heavy-duty
Monster video cables alongside it. Now I’m
prepared if I upgrade to a higher resolution
projector demanding a three-line ‘component’ or
‘RGB’ video connection.” Philadelphia Daily News.
September 24, 1999.

To Your Stations, “Those with stereo TVs and other
modern sets will be able to plug right in without
an adapter, and videophiles with higher-end TVs
featuring S-Video or the new state-of-the-art
Component Video connections [you know who you are]
can purchase separate connector cables including
an elite line made by Monster Cable.” The
Oregonian. October 26, 2000.

Fine-Tuning the Sound in Your Own Cinema, “Monster
Cable’s SuperFlat paintable speaker wires are
designed to blend better with home décor.” The
New York Times. August 28, 2003.

Poly Honors Business Icon, “Noel Lee, founder of
Monster Cable Products and a previous award
winner, is the keynote speaker. . . . Monster
Cable is now a leading manufacturer of high-
performance connections for audio, video, home
theater systems, computers, car stereo and
professional musical instruments, offering more
than 3,000 products sold in more than 80
countries.” The San Luis Obispo Tribune. May 6,
2004.

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A Monster of a deal for the 49ers, “So at last the
San Francisco 49ers’ home has a name to match.
The team announced Tuesday a four-year agreement
with Monster Cable Products Inc. that will change
the stadium’s name to Monster Park. Many of the
signs around the stadium will be updated in time
for Sunday night’s game against St. Louis.
Monster Cable is based in the Bay Area and is best
known for its high-performance stereo speaker
cables.” Chicago Tribune. September 29, 2004.

“Monstrous Naming: Monster Cable Products Inc.,
which supplies high-performance speaker cables to
rock groups such as the Rolling Stones and
Aerosmith, bought the naming rights to the San
Francisco stadium used by the NFL’s 49ers.”
Newsday. September 29, 2004.

The good fight, “Monster, maker of audio-visual
cables, and Marc Ecko, designer of
urban/streetwear, have joined forces to create the
‘Case for a Cause’ blue leather iPod jacket.”
Chicago Tribune. October 2, 2005.

Gadgets for use in sea and sky: Listen to IPod
while swimming, or find constellations with ease,
“Monster sound. Monster Cable, makers of high-end
audio and video cables, are looking to bridge the
gap between lo-fi portable digital music files and
audiophile-level music.” USA Today. January 9,
2006.

New Tower of Power CD Revisits Classic Soul,
“Tower of Power turned 40 in 2008, but the group
is commemorating the anniversary with two special
releases – an album and DVD – in the new year. . .
Monster Cable with be sponsoring and distributing
the DVD, promoting it at retail kiosks it
maintains around the country.” Billboard.
January 12, 2009.

How Monster Cable Got Wired for Growth, “Noel Lee
trained as an engineer and aspired to be a rock
star but became neither. . . . But ultimately Lee
paired his passion for music with his exacting
standards as an engineer to create a high-
performance alternative to simple lamp wire – and
built Monster Cable, a resounding business
success. . . .The privately held firm does not
reveal its revenues but it is estimated to bring
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in more than $100 million annually.” CNNMONEY.com.
April 30, 2009.

Lady Gaga Launches New Headphones, “International
music star Lady Gaga brought some glamor to the
IFA electronics fair in Berlin on Monday when she
launched a new series of headphone developed with
Monster Cable.” PCWorld. September 9, 2009.

Dr. Dre, Jimmy Iovine Talk Steve Jobs, “Dr. Dre,
Interscope Records’ Jimmy Iovine, and Monster
Cable CEO Noel Lee (aka ‘Head Monster’) unveiled
five new products coming to their Beats by Dr. Dre
line at a star-studded event held Wednesday at New
York’s Best Buy Theater.” The Huffington Post.
September 30, 2010.

HTC buys some swagger with Beats deal, “Since the
original $350 premium Studio headphones hit the
market in 2008, produced with Monster Cable,
subsequently released models have been created
with musicians Lady Gaga, Sean ‘Diddy’ Combs and
Justin Bieber, as well as NBA star LeBron James.”
USA Today. August 12, 2011.

A Pair of Sound Choices, “When Dr. Dre worked with
Monster Cable Products to design and market
headphones, I’m not sure anyone had an idea how
popular the brand would become.” DallasNews.com,
The Dallas Morning News. May 25, 2012.

We conclude that opposer has shown significant market
exposure and overall fame amongst the relevant public. The
evidence clearly establishes that MONSTER and MONSTER CABLE
are famous marks in connection with, at least, audio/video
cables. This du Pont factor thus strongly favors opposer.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
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1689, 1692 (Fed. Cir. 2005). We must also keep in mind that
petitioner’s famous marks enjoys a “wide berth” of
protection. See Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., supra, 22 USPQ2d 1453, 1456.
Petitioner’s mark in pleaded Registration No. 2184002
consists simply of the term “MONSTER” in typed form. This
term is incorporated in full as the first word of
respondent’s mark M MONSTER MEMORY AND MORE and design:

The term “MEMORY” in respondent’s mark is at best merely
descriptive, if not generic, of its identified “memory
cards,” and accordingly disclaimed. Similarly in
petitioner’s Registrations No. 134164 and 1340229 for
MONSTER CABLE, “CABLE” is at best merely descriptive of the
goods and disclaimed. Descriptive or disclaimed matter is
generally considered a less dominant portion of a mark See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750
(Fed. Cir. 1985). Furthermore, although respondent’s mark
includes a design element, it highly emphasizes its literal
elements. When a mark consists of a literal as well as a
design element, consumers are more likely to recall the
literal element, since consumers are likely to call for, or
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refer to, the goods by their name. CBS Inc. v. Morrow, 708
F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s
Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). In this case, the designed “M” at the beginning
clearly indicates the first letter of the alliterative
“MONSTER” “MEMORY,” and “MORE,” the literal portion of the
mark. Therefore, we find that the dominant portion of
respondent’s mark is the term “MONSTER MEMORY,” which
appears in the largest font, and in particular, “MONSTER,”
the first word, which is inherently distinctive for
respondent’s goods. Furthermore, since petitioner’s marks
are registered in typed form, they could be displayed in any
number of ways, including ways similar to that presented by
respondent’s registration. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905 (Fed. Cir. 2012), citing Citigroup
Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259
(Fed. Cir. 2011) (“If the registrant ... obtains a standard
character mark without claim to ‘any particular font style,
size or color,’ the registrant is entitled to depictions of
the standard character mark regardless of font, style, size,
or color.”).
In comparing petitioner’s “MONSTER” mark with
respondent’s mark, we find that the commercial impressions
of the marks are quite similar, as both include the
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distinctive and dominant term “MONSTER” and convey the
impression of a high-power, strong product. As such, we
find the commercial impression of the relevant marks to be
quite similar.
As for sight and sound, although respondent’s mark
contains more words, it incorporates in full petitioner’s
famous “MONSTER” mark, likely leading consumers to believe
that MONSTER MEMORY is one of petitioner’s “MONSTER” brands,
such as MONSTER CABLE. In sum, we find that when compared
in their entireties, the similarities between the parties’
marks outweigh the differences. This du Pont factor, too,
favors finding a likelihood of confusion.
Third Party Use
Respondent argues that there is significant third-party
use of the term “MONSTER” which “refutes any possibility of
confusion and demonstrates the weakness of [p]etitioner’s
marks.” (resp’s brief at 16). Specifically, respondent
introduced 267 records of third-party registrations
containing the term “MONSTER” in International Class 9.
Respondent also submitted into the record a number of
websites showing actual use of the term “MONSTER” to
advertise electronics-related products. These include the
following:
Monster Fusion www.gamezebo.com.
Monster Fantasy www.bbgsite.com.
Monster World www.wooga.com.
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MONSTER MATINEE http://gen-game.com.
Monster Mash www.bigfishgames.com.
Monster Smash http://kids.yahoo.com/games.
MONSTER LAB www.amazon.com.
MONSTER SHOOTER https://play.google.com.
Monster Story http://play.google.com/store/apps/details.
Monster Petshop http://play.google.com/store/apps/details.
MONSTER DASH http://monsterdashgame.com.
MONSTER HUNTER 3 ULTIMATE http:Capcom.com.
Monster Mania www.casinolistings.com.
Monster Madness Chaos www.amientertainment.com.

We note that virtually all of these registrations and
websites submitted by respondent refer to computer games,
and include the word “MONSTER” as part of a game title.6
Accordingly, we find that the term “MONSTER” does indeed
have suggestive significance as referring to a
“high-power, strong” beast or being, as referenced in the
“Marks” section above. Nevertheless, the information of
record regarding the pervasiveness of the term “MONSTER” as
used by third parties refers almost entirely to computer
games, and specifically to the content thereof, not to the
audio/video cables and memory cards at issue in this
proceeding. Accordingly, while we do find petitioner’s
“MONSTER” mark to be suggestive, there is nothing on this
record to show it to be anything other than inherently
distinctive and, as discussed supra, famous at least for
cables and related products. Additionally, both parties

6 We must discount the references to the “MONSTER” beverage and
“MONSTER” employment websites and related information, as these
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have noted that petitioner diligently enforces its MONSTER
and related marks. (see Pedersen decl. at para. 82, and
respondent’s brief at 1 “Between January 2000 and August
2011, Petitioner filed 354 actions in the United States
Patent and Trademark Office.”) We find this du Pont factor
to be neutral.
The Goods and Channels of Trade
Respondent’s identified goods are “memory cards.” The
goods identified in Petitioner’s Registration No. 2184002
are “electrical and musical signal transmitting cable and
connectors,” in Registration No. 1340229 are “musical and
voice signal transmitting cable and connectors therefor,”
and in Registration No. 1342164 are “electrical signal
transmitting cable and connectors therefor.” While
respondent’s goods do not overlap with those in the pleaded
registrations, petitioner has submitted copies of use-based,
third-party registrations owned by different entities
covering goods of the type in both the involved registration
and petitioner’s pleaded registrations. Examples include
the following (only relevant portions noted):
IWebnet: Registration No. 4125055 “memory cards”
and “audio and video cables.”

Fusion Power Products: Registration No. 4071389
“memory cards” and “connection cables” and
“cables.”

are for entirely different goods and services, and are therefore
not relevant to our analysis of likelihood of confusion.
Cancellation No. 92054446

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Shuang SA (individual): Registration No. 4066116
“memory cards” and “electrical cables”
“connectors.”

E.H. Young Inc.: Registration No. 4064631 “memory
cards” and “computer cables.”

Escort Inc.: Registration No. 4029695, “memory
cards” and “cables” “adapters.”

ABM Wireless: Registration No. 4011446 “memory
cards” and “cables.”

Small Dog Electronics: Registration No. 3180906,
“memory cards” and “cable connectors.”

Atmel Corporation: Registration No. 3267940
“memory cards” and “electrical cables” and
“electrical connectors.”

Intel Corporation: Registration No. 3690667 “flash
memory cards” and “cables and adaptors.”

WidowPC: Registration No. 3170697 “memory cards”
and “electric cables and connectors” “computer
cables.”

Jair Electronics: Registration No. 3363207 “memory
cards” and “cables.”

Tropos Network: Registration No. 3172132 “memory
cards” and “cables.”

Brandess-Kalt-Aetna-Group: Registration No.
2953579 “memory cards” and “electrical cables and
cords.”

Dell Inc.: Registration No. 78717252 “memory
cards” and “computer cables.”

Diablo Cable Corporation: Registration No. 4149777
“memory cards” and “cables for electrical or
optical signal transmission”; “audio cables.”

Bright Ideas: Registration No. 4270102 “memory
cards” and “audio and video and data cables.”

Copies of use-based, third-party registrations may help
establish that the goods are of a type which may emanate
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from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993).
Petitioner has further submitted evidence from several
websites owned by different entities showing both cables and
memory cards7 offered for sale together, including under the
same mark. These include:
Dynex: memory cards and A/V cables.
www.dynexproducts.com.

Olympus: memory cards and audio/video cables; USB
cables. www.getolympus.com.

Panasonic: memory cards and video and HDMI cables.
shop.panasonic.com.

Samsung: memory cards and USB cables.
www.samsung.com.

Sony: memory cards and HDMI cables. sony.com.

Toshiba: memory card and audio/video cables.
toshibadirect.com.

Nikura: memory cards and HDMI cables.
www.nikurausa.com.

Diablo Cable: flash memory cards and USB Cables.
www.diablocable.com.

7 Respondent makes much of the distinction between “volatile”
and “nonvolatile” memory. However, we limit our analysis to
“memory cards,” the goods identified in the involved
registration, without specification regarding whether the memory
is “volatile” or “nonvolatile.” We are bound by the parties’
respective identifications of goods. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) (“[t]he authority is legion that the
question of registrability of an applicant’s mark must be decided
on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the sales
of goods are directed.” [citations omitted]).
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22
Respondent introduced evidence that in fact the third
party registrations that cover and websites that offer both
parties’ goods represent a very small percentage of the
market. (Dammann decl. Ex 9-108). However, respondent’s
research is not scientific and does not necessarily reveal
consumer expectations. Similarly, we do not find availing
the declaration from respondent’s president stating
“Regarding the goods in Petitioner’s Cited Registrations, no
such goods interface with Respondent’s memory cards. . . Of
the goods listed, no such product can directly connect with
memory cards.” (Johnson decl. at para. 38). The question,
however, is not whether the goods are complementary, i.e.,
they are used together, although that may establish a
likelihood of confusion, or would be expected to appear side
by side, but rather whether consumers would expect them to
emanate from a common source, (which the evidence indicates,
indeed, they often do). San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,

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23
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
Additionally, there is nothing in the recital of goods
in either respondent’s Registration or in the pleaded
registrations that limits either registrant’s or
petitioner’s channels of trade. In the absence of specific
limitations, we must presume that both registrant’s and
petitioner’s goods will travel in all normal and usual
channels of trade and methods of distribution. Squirtco v.
Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983); see also In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that
the registration and the application move in all channels of
trade normal for those services, and that the services are
available to all classes of purchasers for the listed
services). Respondent argues that in fact its memory cards
are not sold in the same locations as petitioner’s cables,
and respondent has submitted evidence to show them being
sold in separate locations by stores that sell both.
(Brethen decl., Ex. 17A-I). However, this does not
constitute the universe of stores or websites that offer for
sale both products, nor does it negate a finding that they
travel in the same channels of trade if they are sold in
Cancellation No. 92054446

24
different aisles of the same electronics store. Simply put,
with goods that have been shown to be related and offered
under the same mark, there is nothing that prevents
respondent’s memory cards from being sold in the same
channels of trade and to the same classes of consumers as
petitioner’s cables.
Accordingly, we find that these du Pont factors also
weigh in favor of finding a likelihood of consumer
confusion.
Consumer Sophistication
Respondent urges us to consider that there must be a
degree of consumer sophistication and purchaser care likely
to be exercised for the goods at issue in this proceeding,
noting, for example, that “Installation of one of
Respondent’s memory modules typically requires disconnecting
internal cables along with other hardware and manual
installation of the module into the computer’s motherboard.”
(Johnson decl. at para 25). Mr. Johnson further stated that
“[t]here are over 100+ different combinations of memory
products that may or may not work in a particular system.”
Id., at para 26, Ex 1. Accordingly, we accept that
respondent’s memory cards may be sold to sophisticated
consumers. However, the broadly identified “memory cards”
may include any type of memory cards, including those sold
generally to consumers for cameras and other consumer
Cancellation No. 92054446

25
equipment, not requiring highly-specialized knowledge to
install or connect. The applicable standard of care is that
of the least sophisticated consumer. Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
Moreover, with respondent’s mark having a similar commercial
impression to petitioner’s famous mark, and used on related
goods, even a careful, sophisticated consumer of electronics
products may not note the difference of source. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000).
Overall, we find the fourth du Pont factor to weigh slightly
against finding likelihood of confusion.
Actual Confusion
The final du Pont factor discussed by the parties is
whether or not there have been verifiable instances of
actual confusion. Two declarants for petitioner attested to
instances of actual confusion as follows. Mr. Rogers
stated:
On around March 8, 2013, I was visiting the Fry’s
Electronics (Fry’s) store in Fremont, California
to discuss with Fry’s sales staff the
merchandising of Monster Digital’s new MONSTER-
branded solid-state drive product. Fry’s is one
of the largest retail chains of consumer-
electronic goods in the country, and is one of the
main distribution points for Monster Digital.
During this March 8th visit to the Fremont store,
a Fry’s floor sales person named Mr. Viet Tran
asked me whether Monster Digital makes DRAM memory
products and also asked “Are you Monster Memory”
I responded that Monster Memory (i.e., Respondent)
is a different company and is not affiliated with
Monster Digital or its licensor Monster.
(Rogers decl. at para. 6).
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The other instance was attested to by Mr. York in his
declaration, who stated that he attended the Consumer
Electronics Show (CES) in Las Vegas on behalf of Monster
Digital and exhibited at a “separate kiosk” in the Monster
booth. (York decl. at para. 3). While there, he said, “I
was approached by at least six different CES participants on
different occasions, all of whom inquired whether either:
(a) Monster Digital is based out of Orange County,
California, or (b) inquiring about our “DRAM product.” Id.
The declaration goes on to note that that York did not
“appreciate the significance of these inquiries at the time”
but he later discovered that respondent is based out of
Orange County, and makes a DRAM product, which petitioner
does not. Id.
Respondent argues that these attested instances are
actually de minimus, considering that the parties have
coexisted for six years. We find, regardless, that, in
keeping with our precedent, the testimony alleging third-
party confusion is “of minimal probative value” absent
testimony from the third parties themselves “as to whether
they were confused and, if so, what caused their confusion.”
Edom Laboratories, Inc. v. Glenn Lichter, 102 USPQ2d 1546
(TTAB 2012) (cites omitted) (finding likelihood of confusion
buttressed by more specific testimony of third-parties
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27
themselves on likelihood of confusion, but only vaguely so
by plaintiff’s recounting of third parties saying they were
confused). Given the limited probative value of the
evidence, we find this factor is neutral.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
petitioner has shown fame for its marks MONSTER and MONSTER
CABLE for at least audio and video cables. We also find
that the commercial impression of the typed form drawings of
MONSTER and MONSTER CABLE is similar to that of the mark in
respondent’s Registration. There is a relationship between
the goods and an overlap in their channels of trade.
Although we find that respondent’s goods may be marketed to
more sophisticated consumers, weighing all of the likelihood
of confusion factors about which there is evidence or
argument together, we find, on balance, that the parties
marks are confusingly similar.
DECISION: The petition is granted.