IP Law Daily, TRADEMARK—TTAB.: Monster Energy Company fails to cancel‘Predator’energy drink mark, (Jun 28, 2024)

By Thomas K. Lauletta, J.D.

Monster Energy was unable to show that the challenged“Predator”mark was abandoned or that the owner lacked the intent to use the mark in U.S. commerce.

The Trademark Trial and Appeal Board granted Netherlands-based respondent trademark owner Golden Global Innovation’s motion for summary judgment thwarting petitioner Monster Energy Company’s attempt to cancel the respondent’s registered mark Predator for energy drinks. The petitioner argued that the respondent had abandoned its mark and lacked a bona fide intent to use the mark in commerce. The Board rejected the petitioner’s arguments, stating that it found that the respondent’s activities 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 as of the application filing date and during the three-year statutory abandonment period (Monster Energy Co. v. Golden Global Innovations Besloten Vennootschap, No. 92078934 (T.T.A.B. June 20, 2024)).

The respondent Golden Global Innovations, a company based in the Netherlands, co-founded by Natasha and Bianca de Jong, owns Registration No. 5193363 for the“Predator”mark 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. The respondent filed the underlying application on September 27, 2015, and the respondent’s registration was issued on May 2, 2017.

The petitioner, Monster Energy, in Cancellation No. 92078934 sought to cancel he respondent’s registration, arguing that the respondent had abandoned its mark pursuant to Trademark Act Section 14(3), 15 U.S.C.§1064(3), and the respondent lacked a bona fide intent to use its mark at the time it filed the underlying application for the respondent’s registration under Section 66(a). In support of its entitlement to a statutory cause of action, the petitioner alleged that its application to register its PREDATOR mark had been refused based on a likelihood of confusion with the respondent’s registered mark.

The respondent filed a motion for summary judgment, stating that it (1) had a bona fide intent to use its mark as of its application filing date and (2) did not abandon its mark for the registered goods.

The Board stated that the standards used to assess whether the respondent had a bona fide intent to use the mark as of the application filing date are the same for determining whether its mark has been abandoned. The Board noted that under Trademark Act Section 45, nonuse of a mark for three years is prima facie evidence of abandonment. This three-year period for statutory presumption of abandonment begins no earlier than the registration date, here May 2, 2017.

The Board held that the respondent began using its mark in U.S. commerce and engaged in various activities with the intent to commerce use of the mark in U.S. commerce between late 2015 through 2022. During this period the Board noted that the respondent had sponsored U.S.-based athletes, engaged in various negotiations with U.S. distributors, suppliers, retailers, and marketing/business strategists, and entered into contracts for U.S. marketing strategies, U.S. distribution, and sale of its goods bearing the mark in U.S. retailers. The Board concluded that all of these activities demonstrated an intent to use its mark in commerce as of the application filing date and through the statutory abandonment period.

The Board held that the petitioner had not submitted any contradictory evidence. Accordingly, the Board held that the respondent had met its burden of proving that there was no genuine issue of material fact that it had a bona fide intent to use its mark in the U.S. as of the application date and an intent to commence use in U.S. commerce during the three-year statutory abandonment period.

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

The Case is Cancellation No. 92078934.

Judge: Allard, M.

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