IP Law Daily, TRADEMARK—TTAB: Board denies Monster Energy Company’s petition to cancel PREDATOR mark, (Jun 26, 2024)

By Ursula Furi-Perry, J.D., MBA

The respondent successfully showed that it had a bona fide intent to use its mark as of its application filing date and did not abandon its mark for the registered goods.

The TTAB granted summary judgment in favor of a Dutch company that had registered the mark PREDATOR in connection with energy drinks, dismissing Monster Energy Company’s petition for cancellation. The respondent successfully showed that it had a bona fide intent to use its mark as of its application filing date and did not abandon its mark for the registered goods. The respondent’s unrefuted declarations, testimony, and exhibits were of the type that would be undertaken by a reasonable business under Respondent’s particular circumstances with a bona fide intent to use the mark in U.S. commerce, the Board held (Monster Energy Co. v. Golden Global Innovations Besloten Vennootschap, No. 92078934 (T.T.A.B. June 20, 2024)).

Golden Global Innovations Besloten Vennootschap and Golden Global Group BV (together, “respondent”) owned a registered standard character mark PREDATOR for use in connection with “mineral and aerated waters and other non-alcoholic beverages, namely, soft drinks and energy drinks made with natural ingredients” in International Class 32, which had issued in 2017. Monster sought to cancel that registration, alleging that the respondents had abandoned its mark, and lacked a bona fide intent to use its mark at the time it filed the underlying application, and that its application to register the mark PREDATOR has been refused based on a likelihood of confusion with the mark in the respondent’s registration. The respondent filed a motion for summary judgment.

Use in U.S. commerce. The TTAB reviewed whether the respondent could show that there was no genuine dispute of fact that it had a bona fide intent to use its mark in U.S. commerce as of the application filing date and that there was no genuine dispute of fact that its use of the involved mark has not been discontinued.

In its summary judgment motion, the respondent argued that it had a bona fide intent to use its mark as of its application filing date and did not abandon its mark for the registered goods. The TTAB considered both of those arguments together, calling them intertwined, as both required consideration of if and when the respondent’s intent to use transformed into actual use, and noting that the standards for analysis were the same on both issues. There are two elements to a non-use abandonment claim, the Board explained; the non-use of a mark and intent not to resume use.

The respondent argued that it continuously had a bona fide intent to use the mark since adopting it in 2014, including through the September 27, 2015 filing date of its underlying application and the statutory abandonment period, noting that it began using the mark in U.S. commerce as early as 2016, but no later than 2021. It purchased an internet domain, launched a Facebook page, and selected a production facility that was already registered with the U.S. Food and Drug Administration and approved to manufacture and ship products to the U.S.

The respondent also reported that it engaged in various business practices designed to help the respondent commence use of the mark in the U.S., such as negotiating with U.S. distributors, sponsoring events, launching an online retail store, engaging a company to review its label compliance, and handing out samples, among others. The TTAB noted that Monster offered no contradictory evidence, rejecting Monster’s argument that the activities were “token” uses as opposed to “open” uses of the mark. It also rejected Monster’s argument that the activities did not demonstrate an intent to resume or commence use because they were “sporadic” and “half-hearted.”

Those arguments were not sufficient to raise a genuine dispute of material fact. “In view of Respondent’s unrefuted declarations, testimony, and exhibits, we find that Respondent’s activities are the type that would be undertaken by a reasonable business under Respondent’s particular circumstances with a bona fide intent to use the mark in U.S. commerce in association with beverage goods both as of the application filing date and during the Abandonment Period,” the TTAB held.

Board action. The Board granted the respondent’s motion for summary judgment and denied Monster’s petition for cancellation.

The Case is Cancellation No. 92078934.

Judge: By the Board

Attorneys: Aryeh Feinstein (Knobbe Martens Olson & Bear LLP) for Monster Energy Co. Michael C. Cerrati (Belzer PC) for Golden Global Innovations Besloten Vennootschap and Golden Global Group BV.

Companies: Monster Energy Co.; Golden Global Innovations Besloten Vennootschap; Golden Global Group BV

Cases: Trademark USPTO