USA Nutraceuticals Group, Inc. and Ultra-Lab Nutrition, Inc.v.Monster Energy CompanyDownload PDFTrademark Trial and Appeal BoardMar 9, 2017No. 91199986 (T.T.A.B. Mar. 9, 2017) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: March 9, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ USA Nutraceuticals Group, Inc. and Ultra-Lab Nutrition, Inc. v. Monster Energy Company _____ Opposition No. 91199986 Opposition No. 91202947 Opposition No. 91205388 Opposition No. 91209540 _____ Ryan M. Kaiser of Amin Talati & Upadhye, LLC, for USA Nutraceuticals Group Inc. and Ultra-Lab Nutrition, Inc. Matthew S. Bellinger of Knobbe, Martens, Olson & Bear, LLP, for Monster Energy Company. _____ Before Zervas, Bergsman and Goodman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Monster Energy Company (“Applicant”) seeks registration on the Principal Register of the marks listed below: Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 2 - 1. UNLEASH THE NITRO BEAST! (standard characters) for “nutritional supplements,” in Class 5.1 2. REHAB THE BEAST! (standard characters) for “nutritional supplements in liquid form,” in Class 5.2 3. REHAB THE BEAST! WWW.MONSTERENERGY.COM (standard characters) for “nutritional supplements in liquid form,” in Class 5.3 4. UNLEASH THE ULTRA BEAST! (standard characters) for “nutritional supplements in liquid form,” in Class 5.4 In the applications for UNLEASH THE NITRO BEAST! and REHAB THE BEAST!, Applicant claimed ownership of Registration No. 2769364 for the mark UNLEASH THE BEAST! (typed drawing) for “fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs,” in Class 32.5 1 Application Serial No. 85197756 was filed on December 14, 2010, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. This application is the subject of Opposition No. 91199986. 2 Application Serial No. 85168304 was filed on February 3, 2010, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. This application is the subject of Opposition No. 91202947. 3 Application Serial No. 85543622 was filed on February 15, 2012, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in commerce since at least as early as March 2, 2011. This application is the subject of Opposition No. 91205388. 4 Application Serial No. 85783034 was filed on November 19, 2012, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. This application is the subject of Opposition No. 91209540. 5 Registered on September 30, 2003; renewed. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 3 - In the application for the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM, Applicant claimed ownership of Registration No. 3353473 for the mark REHAB (standard characters) for “energy drinks, fruit beverages,” in Class 32.6 USA Nutraceuticals Group Inc. and Ultra-Lab Nutrition, Inc. (“Opposers”) have opposed the registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks so resemble Opposers’ BEAST marks used in connection with dietary and nutritional supplements as to be likely to cause confusion. In their brief, Opposers explain that “[w]hile Opposers have used and registered numerous BEAST marks over the last twenty years, Opposers’ arguments in [these] proceedings focus on three marks, namely: THE BEAST;7 BEAST8 and UNLEASH THE BEAST9.”10 Accordingly, we will focus our likelihood of confusion analysis on those three marks. Cf. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010) (where multiple marks were cited as a bar to registration, the Board considered the cited mark most likely to cause confusion). 6 Registered December 11, 2007; Section 8 declaration accepted. 7 Registration No. 2012763 for the mark THE BEAST (typed drawing) for “vitamins and nutritional food supplements,” in Class 5, registered on October 29, 1996; second renewal. 8 Registration No. 4334953 for the mark BEAST (standard characters) for “dietary and nutritional supplements,” in Class 5, registered on May 14, 2013. 9 Opposer has not asserted a registration for UNLEASH THE BEAST, but is asserting common law rights in this mark; “Opposers Ultra-Lab Nutrition, Inc. has used the mark UNLEASH THE BEAST in connection with the promotion and sale of dietary and nutritional supplements since at least as early as 2001.” Opposers’ Amended Notice of Opposition ¶10 (15 TTABVUE 9). 10 Opposers’ Brief, p. 22 n.2 (127 TTABVUE 23). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 4 - Applicant, in its Amended Answer, denied the salient allegations in the Notices of Opposition and pleaded, inter alia, the affirmative defense of laches and that it is the owner of a registration for substantially similar marks for substantially similar goods (i.e., Registration No. 2769364 for the mark UNLEASH THE NITRO BEAST! for “fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs”).11 Proceedings were consolidated in the Board’s July 26, 2012 and June 25, 2013 orders.12 I. Evidentiary Issues A. The improper designation of confidential testimony. The parties improperly designated testimony as confidential. For example, in the discovery deposition transcript of Anthony Altieri, the President of both Opposers, introduced by Opposers during Opposers’ rebuttal testimony, Opposers improperly designated as confidential testimony regarding products that consumers have asked Opposers to produce, whether Opposers have applied to register marks for energy drinks, references to allegations in the notices of opposition, and products sold by Opposers.13 We will treat the testimony improperly designated as confidential as available to the public. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 11 Because Applicant did not argue either the affirmative defense of laches or the prior registration affirmative defense in its brief, those affirmative defenses are deemed waived. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013). See also footnote 50 for a discussion regarding the prior registration defense. 12 21 TTABVUE and 28 TTABVUE. 13 Altieri Discovery Dep., pp. 45-47 (113 TTABVUE 7). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 5 - 110 USPQ2d 1458, 1461 (TTAB 2014) (the Board will not be bound by improper confidentiality designations); Trademark Rule 2.116(g) (amended effective January 14, 2017 to codify the Board’s practice of treating as public material that cannot reasonably be considered confidential). B. Objections Applicant has lodged numerous objections. None of the evidence sought to be excluded is outcome determinative. Moreover, the Board is capable of weighing the relevance and strength or weakness of the objected—to testimony and evidence, including any inherent limitations. We find no basis on which to strike any testimony or other evidence. As necessary and appropriate, we will point out any limitations in the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. We have considered all of the testimony and evidence introduced into the record. In doing so, we have kept in mind the various objections raised by Applicant and we have accorded whatever probative value the subject testimony and evidence merit. II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. A. Opposers’ testimony and evidence. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 6 - 1. Notice of reliance on Opposers’ pleaded registrations printed from the USPTO TESS database showing the current status and title of the registrations;14 2. Notice of reliance on five pending BEAST formative applications filed by Opposers;15 3. Notice of reliance on the dictionary definition of the word “Beast”;16 4. Notice of reliance on Applicant’s responses to Opposers’ interrogatory Nos. 6, 7, and 8;17 5. Notice of reliance on advertisements published in magazines in general circulation displaying Opposers’ UNLEASH THE BEAST mark;18 6. Notice of reliance on advertisements published in magazines in general circulation displaying Opposers’ BEAST and THE BEAST marks;19 7. Notice of reliance on the discovery deposition transcript of Mark Hall, the President of the Monster Energy Division of Applicant, with attached exhibits;20 14 Registration No. 2012763 for the mark THE BEAST is posted at 67 TTABVUE 7 and Registration No. 4334953 for the mark BEAST is posted at 67 TTABVUE 18. 15 68 TTABVUE. Pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). 16 69 TTABVUE 6. 17 70 TTABVUE. 18 71-83 TTABVUE. 19 84-92 TTABVUE. 20 93 TTABVUE. The portions of the deposition transcript designated as confidential are posted at 94 TTABVUE. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 7 - a. In rebuttal, Opposers introduced a second notice of reliance on the discovery deposition of Mark Hall;21 8. Notice of reliance on excerpts from websites displaying Opposers’ marks;22 9. Notice of reliance on excerpts from the Lone Star Distribution website (lonestardistribution.com) purportedly to show that the company distributes the products of both parties and excerpts from the BodyBuilding.com website purportedly to show unsolicited publicity for Opposers’ BEAST brand;23 10. Notice of reliance on the discovery deposition transcript of Rodney Sacks, Applicant’s Chairman and Chief Executive Officer, with attached exhibits;24 a. In rebuttal, Opposers introduced a second notice of reliance on the discovery deposition of Mr. Sacks with attached exhibits;25 11. Notice of reliance on official records purportedly related to Opposers trademark enforcement activities;26 12. The testimony deposition transcript of Anthony Altieri, President of both Opposers, with attached exhibits;27 and 21 111 TTABVUE. The portions of the deposition transcript designed as confidential are posted at 110 TTABVUE. 22 95 TTABVUE. 23 96 TTABVUE. 24 99 TTABVUE. The portions of the deposition transcript designated as confidential are posted at 97 TTABVUE. 25 109 TTABVUE. The portions of the deposition transcript designated as confidential are posted at 108 TTABVUE. 26 98 TTABVUE. 27 115 TTABVUE. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 8 - 13. Notice of reliance on third-party websites purportedly to rebut Applicant’s evidence regarding third-party use of the word “Beast”;28 B. Applicant’s testimony and evidence. 1. Applicant’s notice of reliance on Applicant’s registrations consisting in part of the word “Beast” printed from the USPTO’s electronic database showing the current status of and title to the following registrations: a. Registration No. 4371544 for the mark UNLEASH THE ULTRA BEAST! (standard characters) for, inter alia, “carbonated drinks enhanced with vitamins, minerals, nutrients, protein, amino acids and/or herbs,” in Class 32;29 b. Registration No. 4482659 for the mark PUMP UP THE BEAST! (standard characters) for “nutritional supplements in liquid form; vitamin fortified beverages,” in Class 5;30 c. Registration No. 4482660 for the mark PUMP UP THE BEAST! (standard characters) for “dairy-based beverages; dairy-based energy shakes,” in Class 29;31 d. Registration No. 4542107 for the mark PUMP UP THE BEAST! (standard characters) for “ready to drink coffee-based beverages; coffee- 28 112 TTABVUE. 29 105 TTABVUE 36. 30 105 TTABVUE 42. 31 105 TTABVUE 48. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 9 - based shakes for boosting energy; chocolate-based shakes for boosting energy, read to drink chocolate-based beverages,” in Class 30;32 e. Registration No. 4546402 for the mark PUMP UP THE BEAST! (standard characters) for “non-alcoholic beverages, namely, non- alcoholic and non-carbonated drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs; non-carbonated energy or sports drinks,” in Class 32;33 f. Registration No. 4292502 for the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM for, inter alia, “non-alcoholic beverages, namely, energy drinks, sports drinks and fruit juice drinks, all of the foregoing enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32;34 g. Registration No. 4394044 for the mark UNLEASH THE NITRO BEAST! (standard characters) for, inter alia, “carbonated soft drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32;35 h. Registration No. 4336329 for the mark REHAB THE BEAST! (standard characters) for, inter alia, “non-alcoholic beverages, namely, energy drinks, sports drinks and fruit juices, all of the foregoing enhanced with 32 105 TTABVUE 54. 33 105 TTABVUE 60. 34 105 TTABVUE 66. 35 105 TTABVUE 71. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 10 - vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32;36 and i. Registration No. 2769364 for the mark UNLEASH THE BEAST! (typed drawing) for “fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs,” in Class 32;37 2. Notice of reliance on articles published in magazines in general circulation referring to Applicant and its UNLEASH THE BEAST mark;38 3. Notice of reliance on articles published in newspapers referring to the word “Beast” purportedly to show the meaning of that word in connection with sports and physical activities;39 4. Notice of reliance on excerpts from Applicant’s website displaying Applicant’s products;40 5. Notice of reliance on excerpts from Applicant’s website MonsterArmy.com and Applicant’s Twitter page (twitter.com/monsterenergy.com) purportedly to show the absence of confusion between Opposers’ mark and Applicant’s marks and purportedly to show the renown of Applicant’s marks;41 36 105 TTABVUE 76. 37 105 TTABVUE 81. 38 105 TTABVUE 152-194. 39 105 TTABVUE 196-375. 40 105 TTABVUE 377-489. 41 105 TTABVUE 491-779. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 11 - 6. Notice of reliance on excerpts from social media websites displaying or referring to Applicant’s marks or products;42 7. Notice of reliance on excerpts from Opposers’ websites published on Wayback website (http://web.archive.org) purportedly to show the lack of use of Opposers’ marks.43 8. Notice of reliance on Opposers’ responses to Applicant’s interrogatory Nos. 2 and 16 (Opposition No. 91202947), interrogatory No. 1 (Opposition No. 91205388) and interrogatory Nos. 2-7, 14-18 (Opposition No. 91199986);44 9. Notice of reliance on excerpts from the discovery deposition transcript of Anthony Altieri, the President of both Opposers, with attached exhibits;45 a. In rebuttal, Opposers introduced excerpts from the discovery deposition transcript of Anthony Altieri which Opposers contend should in fairness be considered so as to make not misleading what was introduced by Applicant. Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4);46 10. Testimony deposition of Robert Klein, Applicant’s consumer survey expert, with attached exhibits;47 42 105 TTABVUE 781-790. 43 105 TTABVUE 792-856. 44 106 TTABVUE. The portions of Opposers’ responses to Applicant’s interrogatories designated as confidential are posted at 107 TTABVUE. 45 106 TTABVUE 39. The portions of the Altieri deposition transcript designated as confidential are posted at 107 TTABVUE. 46 114 TTABVUE. The portions of the Altieri deposition transcript designated as confidential are posted at 113 TTABVUE. 47 123 TTABVUE. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 12 - 11. Testimony deposition of Norman Broadhurst, Applicant’s marketing expert, with attached exhibits;48 and 12. Testimony deposition of Rodney Sacks, Applicant’s Chairman and Chief Executive Officer, with attached exhibits.49 III. Standing Because Opposers have properly made their existing pleaded registrations of record, Opposers established their standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).50 IV. Priority A. Pleaded Registrations Because Opposers have properly made of record their pleaded registrations, and because Applicant has not filed a counterclaim to cancel any of Opposers’ pleaded 48 121 TTABVUE. 49 128 TTABVUE. The portions of the Sacks deposition transcript designated as confidential are posted at 125 TTABVUE. 50 As noted above, Applicant introduced copies of Registration No. 4394044 for the mark UNLEASH THE NITRO BEAST!, Registration No. 4336329 for the mark REHAB THE BEAST!, Registration No. 4292502 for the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM, and Registration No. 4371544 for the mark UNLEASH THE ULTRA BEAST! for drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids or herbs, in Class 32, as well as testimony regarding the identity of those goods and nutritional supplements. Because Applicant did not plead that those registrations form the basis of the prior registration (or Morehouse) defense and because the prior registration defense was not tried by implied consent (e.g., Applicant did not refer to the prior registration defense in its brief), we do not consider that affirmative defense. See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1926 (TTAB 2011). We consider Applicant’s above-noted registrations for whatever probative value they have vis-à-vis our likelihood of confusion analysis. See footnote 11. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 13 - registrations, Section 2(d) priority is not an issue in the oppositions as to the marks and the goods covered by the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). B. Common Law Use of UNLEASH THE BEAST! Anthony Altieri, the President of both Opposers, testified that Opposers have used the mark UNLEASH THE BEAST! since March 2001 to advertise their THE BEAST products, and that they also have used that mark on t-shirts and temporary tattoos.51 Opposers introduced excerpts from the May 2001 issues of Flex Magazine and Iron Man Magazine to corroborate the testimony of Mr. Altieri regarding their first use of UNLEASH THE BEAST!52 The advertisement in both magazines is the same and is shown below. Opposers submitted additional magazine advertisements which have a format or layout similar to the advertisement in the May 2001 issues of Flex Magazine and Iron Man Magazine.53 51 Altieri Testimony Dep., pp. 65 (115 TTABVUE 68). 52 72 TTABVUE 2-13. 53 72-83 TTABVUE. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 14 - Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 15 - The use of UNLEASH THE BEAST in the advertisements does not constitute technical trademark use because it is used as an advertising slogan. See In re Morganroth, 208 USPQ 284, 287 (TTAB 1980) (even though a slogan is used in the sale or advertising of goods, “it is not registrable unless it is used as a mark, namely, in a manner clearly calculated to project to purchasers or prospective purchasers encountering the notation in question in the applicable marketplace environment a single source or origin of the goods or services in question.”). This necessitates a determination as to whether it is used and provided in such a manner so as both to make it known to purchasers and to have such individuals associate it with the goods as an identification symbol. Id. at 288; see also In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (the issue in determining whether the subject matter at issue functions as a trademark is the commercial impression it makes on the relevant public); In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008). Even assuming that Opposers intended to use UNLEASH THE BEAST as a trademark, Opposers’ intent is not conclusive evidence that Opposers were actually using UNLEASH THE BEAST as a mark. See Nextel Commc’n Inc. v. Motorola Inc., 91 USPQ2d 1393, 1406 (TTAB 2009); In re Morganroth, 208 USPQ at 287 (the mere intent that a word or slogan function as a mark is not enough in and of itself).54 54 We assume that the federal registration symbol appearing after “The Beast” refers to Opposers’ Registration No. 2012763 for the mark THE BEAST (typed drawing) for “vitamins and nutritional food supplements,” in Class 5, registered on October 29, 1996. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 16 - UNLEASH THE BEAST as used in the advertisement is an exhortation to use Opposers’ THE BEAST brand nutritional supplements. The distributors and toll free telephone number at the bottom of the advertisement directs interested consumers to where they may purchase THE BEAST supplements displayed in the bottles in the center of the advertisement. In other words, Opposers are advertising THE BEAST nutritional supplements, not UNLEASH THE BEAST brand nutritional supplements.55 Although Opposers contend that they have used UNLEASH THE BEAST! in a manner analogous to trademark use,56 they did not use UNLEASH THE BEAST! as a technical trademark (e.g., on a product label) prior to 2013.57 Under the theory of analogous use, a party may rely upon pre-sale activities in order to “tack on” non- trademark usage for purposes of establishing priority under Section 2(d). See 3 McCarthy on Trademarks and Unfair Competition § 20:16 (4th ed. 2017). Although use analogous to trademark use is sufficient to create a proprietary right in the user for purposes of a likelihood of confusion claim, analogous use must be more than mere advertising. The Court of Appeals for the Federal Circuit summarized the test for the sufficiency of analogous use efforts: [W]hether it was sufficiently clear, widespread and repetitive to create the required association in the minds of 55 See also Altieri Testimony Dep. Exhibits 24 -25 (116 TTABVUE 36-38) which are excerpts from Opposers’ website on March 31, 2001 (Exhibits 24 and 25) and July 20, 2002 (Exhibit 25). Although the websites display UNLEASH THE BEAST as a tagline under THE BEAST trademark, UNLEASH THE BEAST is used an exhortation to purchase Opposers’ products, not as a trademark. 56 Opposers’ Brief, p. 22 (127 TTABVUE 23). 57 Altieri Testimony Dep., p. 232 (115 TTABVUE 208). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 17 - the potential purchasers between the mark as an indicator of a particular source and the [product or] service to become available later. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, (Fed. Cir. 1996). The analogous trademark use also must be shown to have a substantial impact on the purchasing public, and the user must establish an intent to appropriate the mark. Id. In addition, the “tacking” theory under which use analogous to trademark use operates requires that actual technical trademark use must follow within a commercially reasonable period of time. See Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1218 (TTAB 2007) (11 years of pre-sales activities before the first sale of a product under the designation as a trademark is not a commercially reasonable period of time); Dyneer Corp. v. Automotive Prod. plc, 37 USPQ2d 1251, 1256 (TTAB 1995) (use analogous to trademark use can create priority but “actual, technical trademark use must follow the use analogous to trademark use within a commercially reasonable period of time”); Evans Chemetics, Inc. v. Chemetics Int’l Ltd., 207 USPQ 695, 700 (TTAB 1980) (plaintiff must have made actual use of the trademark in commerce “soon enough after the initial advertising campaign to preclude a finding that the advertising was merely an attempt to preempt a mark for use at an indefinite future date.”). The 12 years between Opposers’ analogous trademark use of UNLEASH THE BEAST (March 2001) and their technical trademark use (2013) is not a reasonably commercial period of time to permit Opposers to tack their analogous trademark use back to a 2001 priority date. Accordingly, for purposes of priority, Opposers’ first use of UNLEASH THE BEAST is no earlier than 2013. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 18 - Applicant filed its applications on February 3, 2010, December 14, 2010, February 15, 2012 and November 19, 2012. The filing date of the applications constitute constructive use of the marks, contingent upon registration, conferring a right of priority, nationwide in effect, on or in connection with the goods specified in the applications. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c). Thus, Applicant may rely on the filing dates of its applications to establish its priority dates. Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“there can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights.”). Opposers failed to prove that they made prior use of UNLEASH THE BEAST and, therefore, we dismiss the oppositions with respect to Opposers’ likelihood of confusion claims associated with UNLEASH THE BEAST. We proceed to analyze Opposers’ likelihood of confusion claims based on its ownership and use of the registered marks THE BEAST for “vitamins and nutritional food supplements” and BEAST for “dietary and nutritional supplements.” V. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 19 - Ind., Inc., 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); see also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). A. The similarity or dissimilarity and nature of the goods and established, likely- to-continue channels of trade. Applicant is seeking to register its marks for “nutritional supplements” and “nutritional supplements in liquid form.” Opposers have registered THE BEAST for “vitamins and nutritional food supplements” and BEAST for “dietary and nutritional supplements.” The descriptions of goods are essentially identical. Because the goods described in the applications and Opposers’ registrations are identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 20 - 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).58 B. The strength of Opposers’ marks, including the number and nature of similar marks in use in connection with similar goods In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark's strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”) Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (same); Tea Board of India v. Republic of Tea 58 The evidence introduced by Applicant regarding the differences in parties’ channels of trade discussed below in the analysis of whether there has been a reasonable opportunity for confusion to have occurred does not rebut the presumption that the parties identical goods move in the same channels of trade and are sold to the same classes of consumers because Applicant’s description of goods is not restricted to any specific channels of trade or classes of consumers and Applicant could change or expand its channels of trade at any time. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983) (“The description of the goods in an application for registration is critical because any registration that issues will carry that description. Moreover, although a registrant's current business practices may be quite narrow, they may change at any time from, for example, industrial sales to individual consumer sales.). In this regard, Applicant “tr[ies] and sell the product wherever it can be sold.” Sacks Testimony Dep., p. 120 (128 TTABVUE 125). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 21 - Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another's use.”). Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at 1899. In other words, it is similar to acquired distinctiveness. In addition, the sixth du Pont factor requires us to consider evidence pertaining to the number and nature of similar marks in use on similar goods. “The purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers ‘have been educated to distinguish between different such marks on the bases of minute distinctions.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005), quoting Veuve Clicquot Ponsardin v. Palm Bay Imports, Inc., Opp'n No. 115,438, 2000 WL 21953664 (TTAB Aug. 4, 2003). With respect to the commercial strength of Opposers’ marks THE BEAST and BEAST, Opposers’ “print advertisements appear in publications with nationwide circulation and which are targeted to fitness and weightlifting consumers” (e.g., MuscleMag, Muscle & Fitness, Muscular Development, etc.).59 Opposers also market 59 Opposers’ Brief, p. 34 (127 TTABVUE 35 and 71-92 TTABVUE); see also Opposers’ response to Applicant’s interrogatory No. 16 (106 TTABVUE 14). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 22 - their products through social media, such as Facebook, Twitter, and YouTube and at sports nutrition and fitness industry trade shows (e.g., the Arnold Fitness Expo, Europa and the L.A. Fit Expo).60 At the time of his deposition, Mr. Altieri testified that Opposers’ Facebook page has 463,329 likes.61 Mr. Altieri also testified under seal as to his companies’ revenues.62 While Opposers appear to have a successful business, because Opposers did not include any testimony regarding its market share or how Opposers’ sales compare with those of their competitors, we have no basis for assessing how Opposers’ sales and advertising reflect the commercial strength of its marks. While the products identified by Opposers’ THE BEAST and BEAST marks are commercially successful, the evidence does not support a finding that those marks are well-known. Opposers contend that “Applicant’s survey expert opined that Opposers’ BEAST marks are ‘widely recognized’ in the nutritional supplements category.”63 However, Applicant’s survey expert, Robert Klein, testified that based on “the Notice of Opposition and the responses to interrogatories that Beast Sports was a well-known mark within the nutritional supplements area or market.”64 In Opposition No. 60 Altieri Testimony Dep., pp. 119-120 and 128-132 (115 TTABVUE 122-123 and 130-134). 61 Altieri Testimony Dep., p. 129 (115 TTABVUE 131). In contrast, Applicant’s Facebook page for Monster Energy had 23 million likes in 2013. Sacks Testimony Dep., p. 102 (128 TTABVUE 107). 62 Altieri Testimony Dep., p. 152 (120 TTABVUE 28). In contrast, Applicant’s sales of products bearing “Beast” marks are almost 100 times greater than Opposers’ sales. Sacks Testimony Dep., p. 50 (128 TTABVUE 55). 63 Opposers’ Brief, p. 34 (127 TTABVUE 35). 64 Klein Testimony Dep., p. 16 (123 TTABVUE 20); see also Klein Testimony Dep., pp. 82-83 (123 TTABVUE 86-87). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 23 - 91205388 (REHAB THE BEAST! WWW.MONSTERENERGY.COM), Opposers alleged that “[c]onsumers have come to recognize products advertised and sold under Opposers’ BEAST marks by the common ‘BEAST’ portion of their name, as being related and coming from a common source, Opposers.”65 In Opposers’ response to Applicant’s interrogatory No. 1, Opposers’ stated that “Opposers’ BEAST marks are well-known in the nutritional supplements industry.”66 Mr. Klein did not conduct any independent research to ascertain the renown of Opposers’ marks.67 Mr. Klein relied on Opposers’ assertions to justify his reliance on an Eveready survey format which Mr. Klein testified requires Opposers’ marks to be well-known.68 We are not persuaded by Mr. Klein’s reliance on Opposers’ self-serving statements that their marks are well-known. The Board is responsible for making its own findings of facts, and we will not substitute an opinion of a witness, even an expert witness, for our evaluation of the facts. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Fisons Ltd. v. UAD Laboratories, Inc., 219 USPQ 661, 663 (TTAB 1983). With respect to the conceptual strength of Opposers’ marks, we note that a “Beast” is defined as “any nonhuman animal, especially a large, four-footed mammal.”69 65 Klein Testimony Dep. Exhibit 1, Notice of Opposition ¶12 (123 TTABVUE 145 at 150). Applicant denied the allegations in paragraph No. 12 in the Notice of Opposition. (Opposition No. 91205388 at 5 TTABVUE 4). 66 Klein Testimony Dep. Exhibit 6 (123 TTABVUE 180 at 182). 67 Klein Testimony Dep., p. 83 (123 TTABVUE 87). 68 Klein Testimony Dep., p. 17 (123 TTABVUE 21). 69 Dictionary.com based on the Random House Dictionary (2017). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 24 - Applicant introduced 56 articles from newspapers and magazines referring to the word “Beast” or “Beast Mode” to describe aggressive, high-intensity athletic performance.70 These articles were published between 2002 and 2013. The excerpts from the articles listed below are representative. • Tri-Valley Herald (Pleasantville, California) (June 24, 2002)71 El Cerrito’s Gooden ready to hear name called on draft day. * * * “They [now] seem to realize I’m not soft. I have that dog in me. I let the beast out in my workouts. They saw the whole package.” • Orlando Sentinel (Florida) (April 14, 2012)72 Shipman eager to again put aggressive foot forward UCF linebacker Ray Shipman was a beast on the football field his freshman year in high school, dishing out punishing hits. * * * After making the dramatic decision to leave the Florida Gators basketball team and transfer to UCF to play football two years ago, Shipman has worked hard to get back into beast mode. The 6-foot-5, 242-pound athlete has a much stronger understanding of the Knights’ defense and is ready to throw his weight around. 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). See also Merriam-Webster.com (69 TTABVUE 6). 70 105 TTABVUE 196-375. Norman Broadhurst, Applicant’s expert marketing witness, characterized the articles as showing the word “Beast” used to describe aggressive activities of either amateur or professional sports figures. Broadhurst Testimony Dep., p. 16 (121 TTABVUE 20). 71 105 TTABVUE 300. 72 105 TTABVUE 303. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 25 - • Saint Paul Pioneer Press (Minnesota) (April 27, 2003)73 For New Dolphin Seau, Failure Is Not An Option * * * “Since this whole thing began, [Junior] has been working out like a beast,” Montamble says. “You guys are gonna see it. There’s a thing in football called ‘hell week.’ Junior has had his own ‘hell month.’” We agree with Norman Broadhurst that the articles demonstrate that “Beast” is used “by a large number of different people in sports - - reporters, coaches and athletes - - to describe the intense behavior or over-the-top activity of the sports figures.”74 Opposers adopted this meaning with their advertising tagline UNLEASH THE BEAST discussed above. So did the third-party users of Beast marks for nutritional supplements.75 For example, • Flex Fitness Products advertises and sells BEAST anabolic stack.76 The label has the tagline “Unleash what’s inside” under the trademark BEAST; 73 105 TTABVUE 292. 74 Broadhurst Testimony Dep., p. 17 (121 TTABVUE 21). 75 Opposers contend that Applicant’s evidence regarding third-party use is not credible because, in part, it is based on inadmissible hearsay via an expert report. Opposers’ Brief, p. 38 (127 TTABVUE 39). Applicant introduced the testimony deposition of Norman Broadhurst, a marketing expert, and his expert report, including evidence of third-party use. Opposers cross-examined Mr. Broadhurst. Mr. Broadhurst’s testimony is not hearsay and the third-party use evidence is credible. Nevertheless, the probative weight of the third-party use is limited given that the record is devoid of any corroborating facts bearing on the extent of these uses. That is to say, there are no specifics regarding the extent of sales or promotional efforts surrounding the third-party uses and, thus, what impact, if any, these uses have made in the minds of the purchasing public is unclear. 76 Broadhurst Testimony Dep. Exhibit 8C.1(a) (121 TTABVUE 471-472). Mr. Broadhurst purchased this product in November 2013. Broadhurst Testimony Dep., p. 75 (121 TTABVUE 78). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 26 - • Rok Hard Body advertises and sells Beast Mode pre-workout supplement;77 • Muscle Pharm advertises and sells Assault pre-performance amplifier using the advertising tagline “Train Like an Unchained Beast”;78 • Shoxx Fitness Products advertises and sells BEAST anabolic stack;79 • Iron Horse Supplements advertises B.E.A.S.T. Supa-Halo halodrol stack and B.E.A.S.T. EPI-18 Epistane;80 and • Supplement Source.CA advertises Blue Beast Labs pre-workout supplement.81 Likewise, Applicant’s various “Beast” marks engender the commercial impression of impressive behavior, performance, or over-the-top activity.82 Rodney Sacks, Applicant’s Chairman and Chief Executive Officer, specifically testified that Applicant uses “Unleash the Beast” “and then a whole family of ‘Unleash the Beast’ 77 Broadhurst Testimony Dep. Exhibit 8C.1(d) (121 TTABVUE 477-479). Mr. Broadhurst purchased this product in November 2013. Broadhurst Testimony Dep., p. 79 (121 TTABVUE 83). 78 Broadhurst Testimony Dep. Exhibit 8C.1(k) (121 TTABVUE 487-488). Mr. Broadhurst purchased this product in November 2013. Broadhurst Testimony Dep., p. 86-87 (121 TTABVUE 90-91). 79 Broadhurst Testimony Dep. Exhibit 8C.1(l) (121 TTABVUE 489-490). Mr. Broadhurst purchased this product in November 2013. Broadhurst Testimony Dep., p. 88 (121 TTABVUE 92). 80 Broadhurst Testimony Dep. Exhibits 8C.1(b) and (c) (121 TTABVUE 473-476). When Mr. Broadhurst purchased the products in November 2013, the products were labeled as E.A.S.T. rather than B.E.A.S.T. Broadhurst Testimony Dep., pp. 76 and 78 (121 TTABVUE 80 and 82). 81 Broadhurst Testimony Dep., Exhibit 8C.1(n) (121 TTABVUE 492). We recognize that Supplement Source.CA is a Canadian company and that the witness did not purchase the product. 82 Rodney Sacks testified that “[t]he theme is that you unleash you[r] inner self. It’s sort of a general feeling that goes with the saying.” Sacks Discovery Dep., p. 28 (99 TTABVUE 19); see also Sacks Discovery Dep., p. 44 (99 TTABVUE 31) (“It’s a state of mind. Unleash your inner self. … It’s a saying that is aggressive … It is a composite saying of just let yourself go, let yourself get out.”). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 27 - marks, which are listed here, the ‘Nitro Beast,’ the ‘Rehab the Beast,’ “Unleash the Ultra Beast’” on the product cans.83 We use the “Unleash the Nitro Beast” in connection with our Extra Strength Nitrous Technology line. We use “Rehab the Beast” and “Rehab the Beast www.monsterenergy.com” in connection with our full Rehab line, all of our sublines under the Monster brand and part of the Monster brand. We use “Unleash the Ultra Beast” as part of our Ultra line, again, of drinks. And then the most recent one is our Unleaded product, which is a caffeine-free product where we use the “Unleash the Caffeine-Free Beast” in connection with that line.84 As noted above, Applicant is the owner of the following registrations that include the word “Beast”: • Registration No. 4371544 for the mark UNLEASH THE ULTRA BEAST! for, inter alia, “carbonated drinks enhanced with vitamins, minerals, nutrients, protein, amino acids and/or herbs,” in Class 32; • Registration No. 4482659 for the mark PUMP UP THE BEAST! for “nutritional supplements in liquid form; vitamin fortified beverages,” in Class 5; • Registration No. 4546402 for the mark PUMP UP THE BEAST! for “non- alcoholic beverages, namely, non-alcoholic and non-carbonated drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs; non-carbonated energy or sports drinks,” in Class 32; • Registration No. 4292502 for the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM for, inter alia, “non-alcoholic beverages, namely, 83 Sacks Testimony Dep., pp. 12-13 (128 TTABVUE 17-18). 84 Sacks Testimony Dep., p. 13 (128 TTABVUE 18). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 28 - energy drinks, sports drinks and fruit juice drinks, all of the foregoing enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32. • Registration No. 4394044 for the mark UNLEASH THE NITRO BEAST! for, inter alia, “carbonated soft drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32; • Registration No. 4336329 for the mark REHAB THE BEAST! for, inter alia, “non-alcoholic beverages, namely, energy drinks, sports drinks and fruit juices, all of the foregoing enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs,” in Class 32; and • Registration No. 2769364 for the mark UNLEASH THE BEAST! for “fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs,” in Class 32.85 Applicant’s drinks “enhanced with vitamins, minerals, nutrients, amino acids and/or herbs” are very similar, if not identical, to nutritional supplements.86 Nutritional supplement, in foods, any vitamin or mineral added during processing to improve nutritive value and sometimes to provide specific nutrients in which populations are deficient. Flour and bread products are often enriched with iron and the B vitamins thiamin, riboflavin, and niacin; and citrus-fruit beverages, naturally containing vitamin C, may be fortified with additional vitamin C units. Addition of iodine to salt has eliminated 85 105 TTABVUE 81. 86 The classification of goods by the USPTO is a purely administrative determination and has no bearing on the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1773 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990); see also 37 C.F.R. § 2.85(f) (“Classification schedules shall not limit or extend the applicant's rights.”). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 29 - goiter in some areas in which it was formerly common; and vitamin D may be added to baby foods to combat rickets.87 Anthony Altieri, the President of both Opposers, testified that the term nutritional supplement is a vague term that could encompass many products.88 Cf. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Rodney Sacks, Applicant’s Chairman and Chief Executive Officer, testified that its MONSTER energy drinks are both enhanced beverages and nutritional supplements. The product meets the definition of a dietary supplement and meets the definition of DSHEA [Dietary Supplement Health and Education Act of 1994]. The product also falls within the definition of a beverage, and it can be marketed as a beverage because it contains ingredients that are GRAS [generally recognized as safe].89 * * * We marketed our product as a beverage. It’s in a can, you drink it. It’s labeled as a supplement because we believe it was properly labeled as a supplement because it contains 87 Encyclopaedia Britannica (1998). The Board may take judicial notice of information from encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works). 88 Altieri Testimony Dep., pp. 213-214 (115 TTABVUE 189-190). Mr. Altieri further testified that “[m]y definition of a nutritional supplement is something that a person would take into their body for a specific purpose.” Id. at 212-213 (115 TTABVUE 188-189). 89 Sacks Discovery Dep., p. 19 (99 TTABVUE 14). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 30 - supplements that are intended to supplement the diet. It is also a beverage and can be drunk as a beverage.90 The evidence introduced by Applicant does not rise to the level of demonstrating that third-party use of the term “Beast” is so widespread as to “condition” the consuming public, such that customers are so used to seeing marks containing the term “Beast” for nutritional supplements that such use undermines the strength of Opposers’ marks THE BEAST and BEAST. However, the suggestive nature of “Beast” (i.e., referring to impressive performance) means that Opposers’ marks are not entitled to such a broad scope of protection that they will bar the registration of every mark comprising, in whole or in part, the word “Beast.” It will bar the registration of marks “as to which the resemblance to [Opposers’ marks] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.” Anthony's Pizza & Pasta Int’l Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)). C. The nature and extent of any actual confusion. Applicant is not aware of any reported instances of confusion,91 and Opposers have failed to introduce any credible evidence of actual confusion.92 The absence of any 90 Sacks Discovery Dep., p. 159 (99 TTABVUE 68). See also Applicant’s response to Opposers’ interrogatory Nos. 10, 12 and 13 (99 TTABVUE 131-134). 91 Sacks Discovery Dep., p. 136 (109 TTABVUE 31); Sacks Testimony Dep., pp. 26, 38, 40, 41, 44 (128 TTABVUE 21, 42, 44, 45, 48). 92 Opposers’ response to Applicant’s interrogatory No. 2 (106 TTABVUE 26-27) (“consumers and other individuals who have seen Applicant’s advertisements containing the term BEAST have asked Opposers whether there is an affiliation between the companies.”) and Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 31 - reported instances of confusion is meaningful only if the record supports appreciable and continuous use by Applicant of its marks for a significant period of time in the same markets as those served by Opposers under their marks. In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Barbara's Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring”). The table below identifies circumstances relevant to whether the opportunity for confusion to have occurred. interrogatory No. 3 (106 TTABVUE 27) (Opposers failed to identify any persons who reported an instance of confusion and any person who received the reported instance of confusion). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 32 - Circumstances for confusion to occur Opposers Applicant Simultaneous use THE BEAST (1996)93 UNLEASH THE BEAST! (2001) (advertising)94 UNLEASH THE BEAST! (2002);95 REHAB THE BEAST! and REHAB THE BEAST! WWW.MONSTERENERGY.COM (2011);96 UNLEASH THE ULTRA BEAST! (2012);97 UNLEASH THE NITRO BEAST! (2009).98 Use of mark Primary product mark Tagline appearing on the back of cans99 Used on cans and point of sale displays in close proximity to the MONSTER house mark100 93 Altieri Testimony Dep., pp. 14, 18, 20, 38 (115 TTABVUE 17, 21, 23, 41). 94 Altieri Testimony Dep., pp. 37, 65, 233 (115 TTABVUE 40, 68, 209). 95 Sacks Testimony Dep., pp. 12, 14-15 (128 TTABVUE 17, 19-20); Sacks Discovery Dep., p. 27 (109 TTABVUE 18). 96 Sacks Testimony Dep., p. 29 (128 TTABVUE 34). 97 Sacks Testimony Dep. pp. 30-31 (128 TTABVUE 35-36). 98 Sacks Testimony Dep., pp. 32-33 (128 TTABVUE 37-38). 99 Sacks Discovery Dep., pp. 30, 39, 46 (99 TTABVUE 21, 28, 33); Hall Discovery Dep., p. 39 (115 TTABVUE 23); Sacks Testimony Dep., p. 13 (128 TTABVUE 18). 100 Hall Discovery Dep., p. 73 (93 TTABVUE 42). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 33 - Circumstances for confusion to occur Opposers Applicant Renown Successful product but no evidence the marks are well- known Extensive sales by any standard; but the renown of the “Beast” tagline is unclear.101 Demographic Male and females ages 18-34102 Originally males between the ages of 18-34; has expanded to females, as well as persons outside that age group103 Channels of trade GNC, Vitamin World, Vitamin Shoppe, Nutrition Depot, Hi- Health, Europa, and gyms/fitness centers104 Applicant’s energy drinks are sold in over 300,000 retail stores, including convenience stores, gas stations, drugstores, club stores, mass merchandising stores, and independent stores105 Inconsequential sales volume to health clubs and vitamin stores 106 101 Hall Confidential Discovery Dep., p. 107 (94 TTABVUE 67) (there is no way to attribute sales to the tagline). This part of Mr. Hall’s testimony was improperly designated confidential and we do not treat it as such. 102 Altieri Testimony Dep., p. 134 (115 TTABVUE 136). 103 Applicant’s response to Opposers’ interrogatory No. 6 (70 TTABVUE 16); Hall Discovery Dep., p. 114 (93 TTABVUE 72) (skews male); Sacks Discovery Dep. pp. 114, 194-95 (97 TTABVUE 50, 70); Sacks Testimony Dep., p. 46 (128 TTABVUE 50). 104 Altieri Testimony Dep., p. 113 (115 TTABVUE 116); Altieri Discovery Dep., pp. 26-27 (107 TTABVUE 16-17); Opposers’ response to Applicant’s interrogatory No. 6 (106 TTABVUE 15). 105 Applicant’s response to Opposers’ interrogatory No. 6 (70 TTABVUE 16); Hall Confidential Discovery Dep., pp. 119-120 (94 TTABVUE 75-76) (a substantial percentage of Applicant’s sales are in convenience stores and gas stations and the other primary trade channel is grocery stores, mass merchandisers, club stores and drug stores); Sacks Confidential Discovery Dep., pp. 114, 199, 204 (97 TTABVUE 50, 75, 83) (a substantial percentage of Applicant’s sales are in convenience stores and gas stations and the second largest percentage of sales are to mass merchandisers); Sacks Discovery Dep., Applicant’s Response to Opposers’ interrogatory No. 6 (99 TTABVUE 127); Sacks Testimony Dep., p. 45 (128 TTABVUE 50). 106 Hall Confidential Discovery Dep., p. 121 (94 TTABVUE 76); Sacks Confidential Discovery Dep., p. 200 (97 TTABVUE 76); Sacks Testimony Dep, p. 120 (128 TTABVUE 125) Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 34 - Circumstances for confusion to occur Opposers Applicant Advertising/ Marketing Muscle/fitness magazines107 Fitness, bodybuilding, and food nutrition shows108 Sponsors bodybuilders, bikini competitors, endurance athletes, and physique models109 No print or television advertising110 National Association of Convenience Stores trade show and the FMI food service show111 No sponsorships or events involving bodybuilders or weightlifters;112 Sponsorships primarily at X-games, skiing, snowboarding, Motocross, car racing events113 (Applicant’s products may be sold in health clubs and supplement stores but that is not Applicant’s “primary demographic or consumer”). 107 Altieri Testimony Dep., p. 39 (115 TTABVUE 42); 71-92 TTABVUE (e.g., Flex Magazine, Iron Man Magazine, Muscular Development Magazine, etc.); Opposers’ response to Applicant’s interrogatory No. 6 (106 TTABVUE 14). 108 Altieri Testimony Dep., p. 119 (115 TTABVUE 122); Opposers’ response to Applicant’s interrogatory No. 6 (106 TTABVUE 20) (e.g., Fit Expo, GNC Show of Strength, Vitamin Shoppe Product Education Conference, etc.) 109 Altieri Testimony Dep., p. 121 (115 TTABVUE 124); Altieri Discovery Dep., p. 155 (107 TTABVUE 61). This portion of the Altieri discovery deposition was improperly designated as confidential. 110 Hall Discovery Dep., p. 78 (93 TTABVUE 47). 111 Sacks Discovery Dep., p. 204 (97 TTABVUE 77); Hall Discovery Dep., p. 147 (111 TTABVUE 9). 112 Hall Discovery Dep., p. 81 (93 TTABVUE 50); Sacks Discovery Dep., pp. 112, 122 (97 TTABVUE 48, 58). 113 Applicant’s response to Opposers’ interrogatory No. 7 (70 TTABVUE 17); Hall Discovery Dep., p. 81 (93 TTABVUE 50); Sacks Discovery Dep., p. 122 (97 TTABVUE 58); Sacks Discovery Dep., p. 84 (109 TTABVUE 26); Sacks Testimony Dep., pp. 56-74 (128 TTABVUE 78). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 35 - Circumstances for confusion to occur Opposers Applicant Advertising/ Marketing Social media, including Facebook, Twitter, and YouTube114 Social media,115 including Facebook, Twitter, Instagram and YouTube116 On the one hand, the parties simultaneously have used their “Beast” marks without any reported instances of confusion for a number of years: the phrase “Unleash the Beast” in their advertising, and in Applicant’s case as a trademark, for 15 years; REHAB THE BEAST for 6 years; UNLEASH THE ULTRA BEAST mark for 5 years; and UNLEASH THE NITRO BEAST for 8 years. They have focused their marketing efforts at the same 18-34 year old demographic through social media. Moreover, Applicant’s products have been sold in over 300,000 retail units nationwide available to ordinary consumers and, thus, available to Opposers’ customers. When the BEAST tagline is used on point-of-sale displays and advertising, it is used in close proximity to the MONSTER mark. On the other hand, Applicant uses its BEAST marks as an advertising tagline posted on the back of cans and Applicant cannot articulate the affect the tagline has had on its sales. Under these circumstances, we find that there has been opportunities for confusion to have occurred but because of the manner in which Applicant uses its 114 Altieri Testimony Dep., pp. 126-132 (115 TTABVUE 128-134). 115 Hall Discovery Dep., p. 79 (93 TTABVUE 48). 116 Sacks Testimony Dep., pp. 97-105 (128 TTABVUE 102-110). Applicant has an “Unleash the Beast” homepage. Id. at 102. Applicant’s Twitter hashtag is “Unleash the Beast.” Id. at 104. Applicant’s Instagram account identifier is Monster Energy/Unleash the Beast. Id. at 106. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 36 - marks on the backs of cans, the lack of any reported instances of confusion is a factor that weighs only slightly against finding that there is a likelihood of confusion. Applicant contends that the lack of any reported instances of confusion is “underscored” by the survey conducted by Robert Klein. Mr. Klein conducted an Eveready-type survey.117 The “Eveready” likelihood of confusion survey format is a widely-used and accepted survey format. Anheuser-Busch, LLC v. Innovopak Sys. Pty. Ltd., 115 USPQ2d 1816, 1828-29 (TTAB 2015). Mr. Klein showed the survey respondents Applicant’s mark REHAB THE BEAST! WWW.MONSTERENERGY.COM and asked whether the survey respondents associated that phrase with a particular brand or company. Almost 70% of the survey respondent stated that they associate Applicant’s mark with a particular brand or company and 66% of those respondents stated that they associate that mark with Applicant. No survey respondents associate the mark with Opposers.118 Despite the acceptance of the “Eveready” survey format, we find that Applicant’s survey has little, if any, probative value in this case because the use of the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM skews the results in Applicant’s favor. The essence of the marks at issue is the word “Beast” and its use 117 In Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1986), cert. denied, 429 U.S. 830, 191 USPQ 416 (1976), the plaintiff conducted a survey to determine whether there was a likelihood of confusion between defendant's EVER-READY lamps and plaintiff Union Carbide's EVEREADY batteries, flashlights and bulbs. The survey asked: “Who do you think puts out the lamp shown here? [showing a picture of defendant's EVER-READY lamp and mark],” and “What makes you think so?” Id. at 640. 118 Applicant’s Brief, p. 45 (130 TTABVUE 47) (citing Klein Testimony Dep. Exhibits 3 and 8). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 37 - in Applicant’s marks such as REHAB THE BEAST! Applicant’s use of the mark REHAB THE BEAST! WWW.MONSTERENERGY.COM turns the attention of the survey respondents away from the “Beast” portion of the mark and directs it to “Monster Energy,” particularly because WWW.MONSTERENERGY.COM is a URL which commonly incorporates a trade name. In this case, as shown by the results of Applicant’s survey, Applicant’s mark MONSTER for energy drinks is well-known, if not famous, and the WWW.MONSTERENERGY.COM portion of Applicant’s mark expressly identifies Applicant, thus, leading the survey respondents to identify Applicant as the particular brand or company with whom they associate the mark. Applicant would have been better served to have used REHAB THE BEAST! so as to focus the attention of the survey respondents as to whether they identify that mark with a commercial impression highlighting the word “Beast” with a single albeit anonymous source. D. The conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing. As is often the case in inter partes proceedings, the parties are long on argument and short on evidence with respect to consumers and their degree of care. The goods at issue are nutritional supplements. They are regulated by the FDA.119 Nutritional supplements are something you ingest for a specific purpose (e.g., energy, increase performance, reduce inflammation, reduce cholesterol, etc.).120 Opposers’ supplements are “sports nutrition products … performance-enhancing products, 119 Altieri Testimony Dep., p. 108 (115 TTABVUE 111). 120 Altieri Testimony Dep., p. 212-213 (115 TTABVUE 188-189). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 38 - products used by active people who are trying to achieve their fitness goals.”121 Opposers’ supplements retail for $40 to over $100.122 Mr. Altieri testified that, in his opinion, consumers of nutritional supplements are concerned about the quality of the products they ingest.123 On the other hand, Applicant’s products retail for $2-$3 a can.124 Because Applicant’s primary channels of trade include convenience stores and gas stations (which are not places consumers will linger and contemplate a purchase), Applicant intends its products in part as an impulse purchase.125 Because Applicant’s products are sold in convenience stores and gas stations as impulse purchases, they may be encountered by consumers of Opposers’ nutritional supplements when they are in that marketing milieu. Accordingly, we find that the products at issue are ordinary consumer goods purchased by ordinary consumers. E. The similarity or dissimilarity of the marks. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. 121 Altieri Testimony Dep., p. 108 (115 TTABVUE 111). 122 Altieri Testimony Dep., pp. 132-133 (115 TTABVUE 134-135). The trial size products are substantially less (e.g., $6.99 to $9.99). Id. 123 Altieri Discovery Dep., p. 192-193 (107 TTABVUE 66-67). Opposers improperly designated this testimony confidential. 124 Sacks Testimony Dep., p. 46 (128 TTABVUE 50). 125 Sacks Testimony Dep., pp. 47, 121, 146 (128 TTABVUE 51, 125, 149) (Applicant targets the weekend warrior, not the fanatical, gym rat), p. 120 (128 (TTABVUE 124) (Applicant sells its products wherever it can); Sacks Discovery Dep., p. 16 (99 TTABVUE 11) (Applicant’s products are low-priced, impulse purchases). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 39 - In comparing the marks, we are mindful that where, as here, the goods are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether 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, 101 USPQ2d at 1721; see also 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 mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As indicated above, the average customer is an ordinary consumer. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 40 - Opposers’ registered marks are THE BEAST and BEAST. Applicant’s marks are • UNLEASH THE NITRO BEAST! • REHAB THE BEAST! • REHAB THE BEAST! WWW.MONSTERENERGY.COM • UNLEASH THE ULTRA BEAST! The marks are similar in that they share the word “Beast.” They differ in that Applicant uses “The Beast” as part of tagline of which “the Beast” is a part. As discussed above, when used in connection with nutritional supplements, the terms “Beast” and “The Beast” engender the commercial impression of aggressive, high- intensity performance. Applicant’s marks engender the same commercial impression in that UNLEASH THE NITRO BEAST!, REHAB THE BEAST! and UNLEASH THE ULTRA BEAST! focus the attention of the consumers on releasing or restoring their over-the-top performance. In terms of the marks’ overall commercial impressions, these basic similarities outweigh any specific dissimilarities that might be apparent upon a side-by-side comparison of the marks. Similarity in any one of the elements (appearance, sound, connotation or commercial impression) may be sufficient to find the marks confusingly similar, In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014), particularly, in a case like this, where Applicant’s products are impulse purchases where consumers do not take the time to study the marks and see the differences. See In re Davia, 110 USPQ2d at 1818 (casual purchasers of low-cost, every-day consumer items exercise less care in their purchasing decisions); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1516 (TTAB 2009) (same). Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 41 - Under these circumstances, the fact that Applicant’s marks incorporate Opposers’ entire mark increases the similarity between them. See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus similar to TITAN for medical ultrasound diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items similar to MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE and design for automotive service centers similar to ACCU-TUNE for automotive testing equipment). The facts in Riddle are applicable to Applicant’s mark REHAB THE BEAST! WWW.MONSTERENERGY.COM. In Riddle, the Board found that the commercial impression of applicant’s mark RICHARD PETTY’S ACCU TUNE (stylized) was the same as registrant’s mark ACCUTUNE. Applicant urges that, because of the fame of Richard Petty in conjunction with automobile racing, it is the “RICHARD PETTY’S” portion of applicant’s mark which dominates the mark and which would cause it to be easily distinguishable from the mark shown in the cited registration. The problem with applicant’s argument is that, while the name “Richard Petty” might well be a famous one in connection with automobiles and automobile racing, that fact does not diminish the likelihood of confusion in this case. In particular, those who encounter both the “ACCUTUNE” automotive testing equipment and the automotive service centers offered under applicant’s mark would likely believe that Richard Petty endorsed or was in some way associated with both the goods and the services, in that both marks contain the designation “ACCUTUNE.” Riddle, 225 USPQ at 632. Likewise, while Applicant’s mark MONSTER ENERGY is well-known, if not famous, for energy drinks, consumers who encounter both Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 42 - Opposers’ BEAST marks for nutritional supplements and REHAB THE BEAST! WWW.MONSTERENERGY.COM for “nutritional supplements in liquid form” may mistakenly believe that Applicant endorsed Opposers’ BEAST products or was in some way associated with those nutritional supplements.126 See also In re Chica Inc., 84 USPQ2d 1845, 1849 (TTAB 2007) (applicant’s mark CORAZÓN BY CHICA and design for jewelry and watches is similar to CORAZON and design for jewelry because applicant’s mark “will simply be viewed as the identification of a previously anonymous source of the goods sold under the mark CORAZON.”); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (“those familiar with only applicant’s mark [SPARKS BY SASSAFRAS and design] would, upon encountering the registered mark [SPARKS] on related goods, assume that all “SPARKS” products come from a single source, and that that source was in some instances further identified with the words ‘by sassafras.’”); In re Champion International Corporation, 196 USPQ 48, 49 (TTAB 1977) (consumers familiar with applicant’s HAMMERMILL MICR CHECK-MATE paper who encounter registrant’s CHECK MATE for envelopes would mistakenly believe that they were HAMMERHILL CHECK MATE envelopes); In re C.F. Hathaway Co., 190 USPQ 343, 345 (TTAB 1976) (purchasers confronted by GOLF CLASSIC men’s hats and “HATHAWAY GOLF CLASSIC” men’s knitted sport 126 In making this finding of fact, we considered the effect of Applicant’s entire mark, including the addition of WWW.MONSTERENERGY.COM; we did not just blindly follow the precedents that hold that the addition of a house mark to an otherwise similar mark may not be sufficient to avoid a likelihood of confusion. Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 43 - shirts are likely to assume that both products emanate from or are in some way associated with applicant). Consumers are also often known to use shortened forms of names, and it is possible that Applicant’s goods will be referred to as BEAST or THE BEAST nutritional supplements in liquid form. Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”). In view of the foregoing, we find that the similarities among the marks outweighs their differences. F. Balancing the factors. This is a very close case. However, neither the lack of any reported instances of confusion nor the suggestive nature of Opposers’ BEAST marks are sufficient to dissuade us from finding that the parties’ marks are similar. Therefore, because the marks are similar, the goods are identical, and there is a presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, and that Applicant’s goods are prone to impulse purchases, we find that Applicant’s marks UNLEASH THE NITRO BEAST!, REHAB THE BEAST!, REHAB THE BEAST! WWW.MONSTERENERGY.COM, and UNLEASH THE ULTRA BEAST! all for nutritional supplements are likely to cause confusion with the registered marks THE BEAST for “vitamins and nutritional food supplements” and BEAST for “dietary and nutritional supplements.” Opposition Nos. 91199986; 91202947; 91205388; and 91209540 - 44 - Decision: The oppositions are sustained. Copy with citationCopy as parenthetical citation