Monster Energy Companyv.Pimmonster LLC

Trademark Trial and Appeal Board

Jan 6, 2022

91253709 (T.T.A.B. Jan. 6, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: January 6, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Monster Energy Company v. Pimmonster LLC ________ Opposition No. 91253709 _______ Steven J. Nataupsky, Lynda Zadra-Symes, Matthew S. Bellinger, Nicole R. Townes, David C. O’Hair, Bita Kianian and Jonathan A. Menkes of Knobbe, Martens, Olson & Bear, LLP, for Monster Energy Company. Victoria Phillips of American University Washington College of Law for Pimmonster LLC. Before Zervas, Greenbaum and Lynch, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Pimmonster LLC (“Applicant”) is the owner of application Serial No. 88453689, filed on May 30, 2019, seeking registration on the Principal Register pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), for the standard character mark PIMMONSTER for: Handbags; tote bags; canvas shopping bags; backpacks in International Class 18; Opposition No. 91253709 - 2 - Mugs in International Class 21; and Shirts; tank-tops; hooded sweatshirts; socks; baby clothes, namely, jumpsuits, shirts and pants in International Class 25.1 In its Notice of Opposition,2 Monster Energy Company (“Opposer”) asserts it is [E]ngaged in the development, licensing, marketing, and/or sale of beverages, beverageware, backpacks, bags, clothing, and other goods and services, under the marks MONSTER™ and MONSTER ENERGY®, and related marks, all containing “MONSTER.” Opposer’s family of MONSTER marks includes, for example, the following: MONSTER™, MONSTER ENERGY®, MONSTER REHAB®, MUSCLE MONSTER®, MONSTER ASSAULT®, UBERMONSTER®, M MONSTER ENERGY®, LO-CARB MONSTER ENERGY®, MONSTER ARMY®, JAVA MONSTER®, ®, and ® (hereinafter collectively the “MONSTER Marks”).3 It also “relies on its common law rights in its family of MONSTER Marks, which rights predate the filing date of the Application and the alleged date of first use of Applicant’s Mark,”4 and ownership of the following registrations for standard character marks: 1 The application claims first use anywhere and first use in commerce for the goods in each International Class in April 2019. 2 1 TTABVUE 1-12. References to the pleadings, the evidence of record, and the parties’ briefs are to the Board’s TTABVUE docket system. The docket entry number appears before the designation TTABVUE and the page number appears after this designation. 3 Notice of Opposition ¶ 2, 1 TTABVUE 15. 4 Id., ¶ 6, 1 TTABVUE 18. Opposition No. 91253709 - 3 - Mark Reg. No. Goods Key Dates MONSTER ENERGY 5820689 • Sport helmets; video recordings featuring sports, extreme sports and motor sports; downloadable software for mobile devices for playing games; downloadable electronic game software for use on mobile devices; downloadable game software; downloadable interactive game programs; downloadable video game software and programs in International Class 9; • Beverageware; insulated beverage containers for domestic use; bottles, sold empty; drinking bottles for sports; water bottles sold empty; bottle openers in International Class 21; • Lanyards; lanyards for holding whistles, keys, badges, identification cards, event passes, media passes, photographs, recording equipment, or similar conveniences; tents in International Class 22; • Towels; blankets for outdoor use in International Class 24; • Clothing, namely, Tops, shirts, t- shirts, sweat shirts, jackets, bottoms, pants, bandanas, sweat bands, gloves; headwear; hats; beanies in International Class 25; and • Toy cars; remote control toys, namely, cars; cornhole game sets; cornhole game boards; cornhole bags; surf boards; skate boards; snowboards; golf bags in International Class 28. Filed: Jan. 15, 2019 Registered: Jul. 30, 2019 JAVA MONSTER 5826919 (JAVA disclaimed for Int. Class 21 goods) • Cameras; headphones; sunglasses; eyewear; cases for sunglasses and eyewear in International Class 9; • Sports bags; gym bags; athletic bags; traveling bags; all-purpose carrying bags; backpacks in International Class 18; Filed: Jan. 16, 2019 Registered: Aug. 6, 2019 Opposition No. 91253709 - 4 - Mark Reg. No. Goods Key Dates • Beverageware; insulated beverage containers for domestic use; heat- insulated containers for beverages in International Class 21; and • Tops being clothing; shirts; t-shirts; sweat shirts; jackets in International Class 25. 55707825 • Sport helmets; video recordings featuring sports, extreme sports and motor sports in International Class 9; • watches in International Class 14; • Stickers, sticker kits comprising stickers and decals; decals; posters; calendars in International Class 16; • All-purpose sport bags; all-purpose carrying bags; backpacks; duffel bags in International Class 18; • Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts; sweat shirts, jackets, pants, bandanas, sweat bands, gloves and motorcycle gloves; headgear, namely, hats and beanies in International Class 25. Filed: May 17, 2018 Registered: Sept. 25, 2018 56645866 • Beverageware; insulated beverage containers for domestic use; drinking bottles for sports; water bottles sold empty in International Class 21 Filed: Dec. 4, 2017 Registered: Jan. 29, 2019 5 The description of the mark statement in the registration provides that the mark consists of a stylized letter “M” in the form of a claw displayed in green above the stylized word “MONSTER” which appears in the color white with a silver outline, which is above the word “ENERGY” which appears in the color green, all on a black background. The colors green, black, silver, and white are claimed as a feature of the mark. 6 The description of the mark statement in the registration provides that mark consists of a stylized letter “M” in the form of a claw above the words “MONSTER ENERGY.” Opposition No. 91253709 - 5 - Mark Reg. No. Goods Key Dates 39086017 (ENERGY disclaimed) • Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, sweat bands and gloves; headgear, namely, hats and beanies in International Class 25. Filed: Apr. 2, 2009 Registered: Jan. 18, 2011 MONSTER ARMY 5551192 • Clothing, namely, tops, shirts, T- shirts, hooded shirts, sweat shirts, and jackets in International Class 25; and Providing a web site featuring entertainment information and news on athletes; organizing and conducting educational programs and activities in the nature of classes, workshops, and sports competitions for athletes in the field of athlete development; athlete development program, namely, athlete training and mentoring in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate in International Class 41. Filed: Nov. 16, 2015 Registered: Aug. 28, 2018 39236838 (ENERGY disclaimed) • All purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags in International Class 18. Filed: Apr. 2, 2009 Registered: Feb. 22, 2011 In addition, Opposer asserts eight other registrations for marks for various beverages and nutritional supplements which contain the term MONSTER. Opposer 7 The same description of the mark appears in this registration as that in Registration No. 5664586. 8 The same description of the mark appears in this registration as that in Registration No. 5664586. Opposition No. 91253709 - 6 - alleges that Applicant’s mark so resembles Opposer’s marks as to be likely, when used on or in connection with Applicant’s goods, as to cause confusion, or to cause mistake or to deceive within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Applicant denied Opposer’s salient allegations in its Answer to the Notice of Opposition. The opposition is fully briefed. For the reasons set forth below, we sustain the opposition. I. Evidentiary Record In addition to the pleadings, pursuant to Trademark Rule 2.122(b), 37 CFR § 2.122(b), Applicant’s opposed application is automatically of record. The parties submitted the following: Evidence Submitted by Opposer (1) Registration certificates and printouts from the USPTO’s Trademark Electronic Search System (TESS) database showing current active status and title in Opposer’s name for such registrations, submitted with the Notice of Opposition under Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), for pleaded Registration Nos. 5820689 (MONSTER ENERGY); 5826919 (JAVA MONSTER); 5664586 ( ); 5570782 ( ); 3908601 ( ); 5551192 (MONSTER ARMY); 3923683 ( ); 3044315 (MONSTER ENERGY); 4036680 (MONSTER ENERGY); 4129288 (MONSTER REHAB); 4111964 (MONSTER REHAB); 4036681 (MONSTER ENERGY); 3057061 (MONSTER ENERGY); 4634053 (MONSTER Opposition No. 91253709 - 7 - ASSAULT); 3959457 (JAVA MONSTER); 3044314 (M MONSTER ENERGY); 3852118 (LO-CARB MONSTER ENERGY); 3134842 (M MONSTER ENERGY); 4376796 (MUSCLE MONSTER); 4451535 (MUSCLEMONSTER); 4604556 (PUNCH MONSTER); and 4234456 (UBERMONSTER) (1 TTABVUE); (2) Testimony Declaration (dated January 25, 2021) of Rodney Sacks, Opposer’s CEO and Exhibits 1-62 (26-31 TTABVUE); (3) Rebuttal Testimony Declaration (dated June 17, 2021) of Mr. Sacks and Exhibits 63-67 (42 TTABVUE); (4) Opposer’s First Notice of Reliance with Exhibits 1-43 (14, 15 and 23 TTABVUE); Second Notice of Reliance with Exhibits 44-56 (16 and 17 TTABVUE); Third Notice of Reliance with Exhibits 57-158 (18- 22 TTABVUE); and Fourth Notice of Reliance with Exhibits 159-163 (24 and 25 TTABVUE); (5) Opposer’s Rebuttal Notice of Reliance with Exhibits 164-168 (41 TTABVUE); and (6) Cross-Examination Deposition of Applicant’s Witness Pimlada Kongkham (dated April 20, 2021) and Exhibits 1-6 (43 and 44 TTABVUE). Applicant’s Evidence (1) Testimony Declaration (dated March 25, 2021) of Pimlada Kongkham, Applicant’s principal (36 TTABVUE); and (2) Applicant’s Notice of Reliance with Exhibits 1-66 (32-35 TTABVUE). II. Entitlement to Bring a Cause of Action In every inter partes case, the plaintiff must establish its statutory entitlement to bring an opposition or cancellation proceeding. To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute, and (ii) a proximate causation. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020), cert. denied, __ U.S. __ (2021). Demonstrating a real interest in opposing registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in Opposition No. 91253709 - 8 - damage by the registration of a mark demonstrates damage proximately caused by registration of the mark. Id. at 7-8. Opposer introduced copies of its pleaded registrations from the TSDR database showing their active status and Opposer’s ownership thereof.9 The pleaded registrations establish Opposer’s direct commercial interest in the proceeding. See Herbko Int’l v. Kappa Books, 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002) (“In most settings, a direct commercial interest satisfies the ‘real interest’ test”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (pleaded registrations “suffice to establish ... direct commercial interest”; a belief in likely damage can be shown by establishing a direct commercial interest). In part, they form the basis of Opposer’s Section 2(d) claim. Therefore, Opposer has demonstrated an interest falling within the zone of interests protected by the statute and shown a reasonable basis for its belief of damage proximately caused by registration of the mark, and its statutory entitlement to a cause of action. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), petition for cert. filed; see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 9 Notice of Opposition, 1 TTABVUE 32-140; Opposer’s First Notice of Reliance, 10 TTABVUE 2-61. Opposition No. 91253709 - 9 - (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). III. Priority 1. Opposer’s Registrations Because Opposer’s pleaded registrations are of record, and Applicant did not file a counterclaim to cancel any of the pleaded registrations, priority in the opposition proceeding is not at issue with respect to the marks and goods identified in such registrations. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). 2. Common Law Rights to “MONSTER” Opposer has also pleaded priority based on common law rights in the term MONSTER alone for “beverages, beverageware, backpacks, bags, clothing, and other goods and services, under the marks MONSTER™.”10 Opposer relies on the following testimony from Mr. Sacks: 3. … Monster began using its MONSTERTM … mark[ ] in 2002 when it launched its MONSTER line of drinks, and has continued to use MONSTER-inclusive marks in connection with beverages, apparel, accessories, and numerous other products and services since that time. *** 10 Notice of Opposition ¶ 2, 1 TTABVUE 15 (“Since at least 2002, long before the filing date of the Application and alleged date of first use of Applicant’s Mark, Opposer has been, and still is, engaged in the development, licensing, marketing, and/or sale of beverages, beverageware, backpacks, bags, clothing, and other goods and services, under the marks MONSTER™ and MONSTER ENERGY®, and related marks, all containing ‘MONSTER.’”). Opposition No. 91253709 - 10 - 10. Monster does not use the word “energy” immediately following MONSTER on all of its products. For example, the JAVA MONSTER®, CAFFE MONSTER®, ESPRESSO MONSTER®, MONSTER MAXX®, and MONSTER REHAB® products bear the MONSTER mark without the term “energy” immediately following “MONSTER.” 11. The general consuming public associates Monster’s famous MONSTER mark with our brand, and often refers to Monster by that mark alone. In fact, articles, press releases, and other media will frequently refer to our brand as simply MONSTER. For example, an article from Fortune Magazine lists Hansen’s Natural [Opposer’s former name] as the number 2 ranking company on its list of the 100 fastest growing companies, and the article attributes the success to the “Monster brand energy drink.” Similarly, a Fortune Magazine article profiling the brand and company in 2005 refers to Monster as “MONSTER” throughout the article. An article published by Beverage Industry, titled “Creating a Monster” refers to the brand and company as just “MONSTER” throughout the article. *** 13. To date, Monster continues to use its MONSTER trademark without the word “energy” in connection with its goods and services. For example, Monster recently launched a product called MONSTER HYDRO®. On the back of the can, Monster prominently features its MONSTER mark without the word “energy.”11 “While oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding,” where oral testimony is characterized “by inconsistencies, contradictions and uncertainties,” it is not sufficient, standing alone, to establish priority. Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); Nat’l Blank Book Co., Inc. v. Leather Crafted Prods., Inc., 218 USPQ 827, 828 (TTAB 1983). Additionally, we 11 1 TTABVUE 15, 20-22. Opposition No. 91253709 - 11 - weigh Mr. Sacks’s testimony and Opposer’s other evidence, as a whole, rather than considering each piece of evidence in isolation. W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). (“However, whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.”). From our review of the evidence, we are not persuaded that Opposer has common law rights in the term MONSTER alone dating back to 2002, the date Mr. Sacks mentions in his declaration and which Opposer pleaded in the Notice of Opposition. There are no exhibits that depict use of MONSTER in a non-ornamental manner as a trademark alone in 2002, or any later date.12 Mr. Sacks relies on articles and press releases to support his observation that the general consuming public associates the MONSTER mark with Opposer’s brand. He implies in Paragraph 13 of his declaration that use of MONSTER without the term ENERGY gives Opposer trademark rights in the term MONSTER alone, when the record reflects uses of MONSTER with other terms, and he has not provided an image of the MONSTER HYDRO can he mentions in that paragraph. In sum, the evidence in the record considered as a whole raises uncertainties as to Opposer’s use of the term MONSTER alone. 12 See, e.g., Sacks Decl. Exh. 6, 26 TTABVUE 197, Exh. 11, 26 TTABVUE 217, Exh. 15, 27 TTABVUE 476. Opposition No. 91253709 - 12 - 3. Family of Marks As mentioned, Opposer pleaded that it owns a family of marks, with rights that predate the filing date of the application and the alleged date of first use of Applicant’s mark. Proof of a family of marks may establish priority. New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d 10596, *6-9 (TTAB 2020). “[A]n opposer relying on a family of marks is relying on common law rights in the alleged family.” Id. at *7. “The burden of proving a family of marks falls with Opposer, the party asserting the existence of the family.” Id. (citing TPI Holdings Inc. v. Trailertrader.com LLC, 126 USPQ2d 1409, 1419 (TTAB 2018)). The Federal Circuit has defined a “family of marks” as: [A] group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). See also TPI Holdings, 126 USPQ2d at 1420 (proof of a family of marks requires proof of prior use of marks that share the common characteristic or family “surname,” that the family surname is distinctive, and that the “marks were used in advertising or sales so as to create common exposure to and recognition by purchasers of the common characteristic as indicating origin.”) (citing Wise F&I, LLC v. Allstate Ins. Co., 120 UPQ2d 1103, 1109 (TTAB 2016)). Opposer “must prove the Opposition No. 91253709 - 13 - existence of [a MONSTER] family of marks prior to any date Applicant can rely upon for purposes of priority.” New Era, 2020 USPQ2d 10596, at *7. Opposer falls short of establishing the required elements for establishing a family of marks. Opposer does not argue in its brief - and the evidence does not demonstrate - that Opposer has used and promoted its marks together in a manner whereby the consuming public would come to associate the pleaded common characteristic, MONSTER, with Opposer. See J & J Snack Foods, 18 USPQ2d at 1891-92 (“It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.”). Furthermore, the record does not show that a family of MONSTER marks existed prior to 2019 when Applicant filed its application. As the Federal Circuit pointed out in J & J Snack Foods, the mere existence of similar marks, containing the same term, does not necessarily establish the existence of a family. IV. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all probative facts in evidence relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, Opposition No. 91253709 - 14 - 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (quoting DuPont, 177 USPQ at 567)). “Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also 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.”). “Each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 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, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko, 64 USPQ2d at 1380). Opposition No. 91253709 - 15 - Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, that there is a likelihood of confusion. Cunningham, 55 USPQ2d at 1848; Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). We confine our analysis to whether there is a likelihood of confusion between Applicant’s mark for its International Class 18, 21 and 25 goods, and: (i) the standard character mark MONSTER ENERGY of Registration No. 5820689 (“the ’689 registration”), which recites goods in International Classes 21 and 25; and (ii) the mark (“M MONSTER ENERGY”) of Registration No. 3923683 (“the ’683 registration”), which recites goods in International Class 18. We select these registrations containing or comprising MONSTER ENERGY because MONSTER ENERGY is Opposer’s primary mark and allegedly famous, and arguably has more points of similarity to Applicant’s mark than the marks of Opposer’s other asserted registrations, and the goods in these registrations are identical or legally identical to the goods of the opposed application than the marks and goods of Opposer’s other asserted registrations. See Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *6 (TTAB 2020) (confining 2(d) analysis to most similar pleaded mark). We refer to these two marks together as Opposer’s “Monster Energy Marks.” If we do not find a likelihood of confusion as to the Monster Energy Marks, Opposition No. 91253709 - 16 - we would not find it as to the other marks asserted by Opposer. Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015). 1. Similarity of the Goods, Trade Channels and Classes of Purchasers We begin with what are commonly called the second and third DuPont factors which respectively consider “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,” and “the similarity or dissimilarity of established, likely-to-continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051-52 (Fed. Cir 2018) (quoting DuPont, 177 USPQ at 567). With regard to the goods, channels of trade, and classes of consumers, we must make our determinations based on the goods as they are identified in the application and cited registration. See Stone Lion Cap. Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “It is sufficient for a finding on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in the application.” DeVivo v. Ortiz, 2020 USPQ2d 10153, at *11 (TTAB 2020) (citing Tuxedo Monopoly, Inc. v. Gen Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). We find as follows: International Class 18: Applicant’s tote bags, canvas shopping bags and backpacks are identical to or are encompassed within Opposer’s “All Opposition No. 91253709 - 17 - purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags” of the ’683 registration. International Class 21: Applicant’s mugs are encompassed within Opposer’s “beverageware” of the ’689 registration. International Class 25: Applicant’s shirts, tank-tops; hooded sweatshirts and babyclothes, namely, shirts and pants encompass, or are encompassed within, Opposer’s “clothing, namely, tops, t- shirts, sweatshirts and bottoms” of the ’689 registration. Applicant’s goods are therefore identical or legally identical to Opposer’s goods. Turning to the trade channels and classes of purchasers, because the goods described in each class of the application and Opposer’s two registrations are identical or legally identical, we presume that the channels of trade and classes of purchasers overlap for each class of goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 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); In re Inn at St. John's, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff'd mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Opposition No. 91253709 - 18 - From the identifications of goods, we find that the purchasers of such goods are members of the general consuming public. The DuPont factors regarding trade channels and classes of purchasers weigh in favor of finding a likelihood of confusion. 2. The “fame of the prior mark” and the “number and nature of similar marks in use on similar goods We next turn to the DuPont factors known as the fifth DuPont factor, i.e., the “fame of the prior mark (sales, advertising, length of use),” DuPont, 177 USPQ at 567, and the sixth DuPont factor, i.e., the “number and nature of similar marks in use on similar goods.” Id. See Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017). We do so because both factors bear on the strength of Opposer’s Monster Energy Marks and the scope of protection to which they are entitled. Opposer argues that its marks are famous and “entitled to a broad scope of protection,” (45 TTABVUE 43), and Applicant argues that “Opposer has not met the burden of proof to show its marks are famous with respect to products outside the narrow category of energy drinks” and that “marks incorporating the word ‘monster’ in Classes 018, 021, and 025 are highly saturated, and the word ‘monster’ itself is widely used and not in any way distinctive.” (47 TTABVUE 27.) a. The Fifth DuPont Factor “Fame of an opposer’s mark, if it exists, plays a ‘dominant role in the process of balancing the DuPont factors.’” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). Opposition No. 91253709 - 19 - “A mark ‘with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark,” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1689 (Fed. Cir. 2018) (quoting Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)), and a “very strong mark receives a wider latitude of legal protection in the likelihood of confusion analysis.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694). “[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps., 73 USPQ2d at 1694). In placing Opposer’s Monster Energy Marks on that spectrum, our “applicable viewpoint is that of the relevant market.” Id. (citing Palm Bay Imps., 73 USPQ2d at 1694 (“Fame for confusion purposes arises as long as a significant portion of the relevant consuming public … recognizes the mark as a source indicator,” and “a mark’s renown within a specific product market is the proper standard.”)). “Because of the wide latitude of legal protection accorded a famous mark and the dominant role fame plays in the likelihood of confusion analysis, the party asserting fame must clearly prove it.” Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1353 (TTAB 2014). “In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and, if there is evidence in the record of marketplace recognition of the mark, its commercial strength.” New Era, Opposition No. 91253709 - 20 - 2020 USPQ2d 10586, at *10; see also 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 …”); Top Tobacco, L.P. v. N. Atl. Operating Co., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength). i. Inherent or Conceptual Strength “The inherent or conceptual strength of Opposer’s [Monster Energy Marks] is not seriously at issue.” New Era, 2020 USPQ2d 10586 at *10. Opposer’s Monster Energy Marks for their listed goods are inherently distinctive as evidenced by their registration on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. See Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1889 (TTAB 2006)). “Monster,” however, is a defined term, which imparts meaning to the term MONSTER in Opposer’s Monster Energy Marks: noun 1a : an animal of strange or terrifying shape … b : one unusually large for its kind [-] That truck is a monster. That’s why I was born in my grandmother’s house-a grand, brick Federal monster of a house … 2a : an animal or plant of abnormal form or structure b : one who deviates from normal or acceptable behavior or character [-] an immoral monster 3 : a threatening force [-] the same monster - Destiny … that rolls every civilization to doom … Opposition No. 91253709 - 21 - 4 : something monstrous especially : a person of unnatural or extreme ugliness, deformity, wickedness, or cruelty [-] a cruel monster of a father 5 : one that is highly successful [-] That movie was a monster at the box office. adjective enormous or impressive especially in size, extent, or numbers.13 In addition, Applicant submitted 46 third-party registrations principally for clothing, but two for bags and two for beverageware.14 Third-party registrations for similar goods are relevant in the manner of dictionary definitions “to prove that some segment of the [marks] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal quotation marks omitted); see also In re i.am.symbolic, 123 USPQ2d at 1751 (active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services). Most of the third-party registered marks apply the first definition - “an animal of strange or terrifying shape.” See AMONSTER, APOPMONSTER, BLUE MONSTER, BOSS MONSTER, CLEVELAND MONSTERS, CUTEMONSTER, GREEN MONSTER, MAX THE MONSTER, MONSTERS VS. ALIENS, and I AM A 13 Merriam Webster Dictionary, Applicant’s Notice of Reliance, Exh. 50, 33 TTABVUE 164- 166. 14 Applicant’s Notice of Reliance, Exhs. 2-48, 32 TTABVUE 37-23, 33 TTABVUE 1-85. Opposition No. 91253709 - 22 - MONSTER. Others apply the definition “enormous or impressive especially in size, extent, or numbers.” See MONSTER ATTITUDE, MONSTER SHARK, MONSTER MILE. The registrations for GILA MONSTER have an entirely different connotation, evoking “a large, stout, venomous lizard … found especially in arid regions of the southwestern U.S. and northwestern Mexico.”15 As in the ’689 and ’683 registrations, the word MONSTER is not disclaimed in these third-party registrations. They demonstrate at most that MONSTER in Opposer’s Monster Energy Marks is suggestive of the “monstrous” qualities or attributes of the identified goods. The term ENERGY has been disclaimed in the ’683 registration (but not in the ’689 registration). The record before us, however, is silent on the mere descriptiveness of the term for the identified bags and backpacks (of the ’693 registration), Opposer’s other registrations do not have a disclaimer of the term ENERGY, even for the same goods, and Applicant has made no argument regarding the descriptiveness of the term ENERGY for such goods. Under these circumstances, we find little significance to the disclaimer of “ENERGY” for “all-purpose sport bags; all-purpose carrying bags; backpacks; duffle bags” in the ’683 registration. 15 We take judicial notice of this definition, accessed at https://www.merriam- webster.com/dictionary/Gila%20monster on December 2, 2021. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Opposition No. 91253709 - 23 - ii. Commercial Strength “Commercial strength or fame is the extent to which the relevant public recognizes a mark as denoting a single source.” New Era, 2020 USPQ2d 10596, at *10. It “may be measured indirectly by the volume of sales and advertising expenditures in connection with the goods or services sold under the mark,” and may be “supported by other indicia such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the goods or services identified by the marks; and the general reputation of the goods or services.” Id. at *10-11. Mr. Sacks testified that the MONSTER line of drinks is the best-selling energy drink brand in the United States. (Sacks Decl. ¶ 28.)16 Since 2002, Opposer has sold over 37 billion cans displaying the MONSTER Marks. Id. As of July 2019, the MONSTER brand held a sizable share17 of the U.S. energy drink market by dollar value. Id. As of trial, Opposer sells more than five billion cans of energy drinks per year worldwide, more than half of which are sold in the United States. Sales of Opposer’s MONSTER line of drinks have increased every year since 2002. Opposer’s gross sales for the year 2020 increased to $5.39 billion from $4.87 billion in 2019, with the vast majority of sales in the U.S. Id. With regard to goods other than energy drinks, Mr. Sacks testified that since 2002, Opposer has sold and/or distributed “millions” of articles of clothing and accessories 16 The Sacks Declaration is found at 26 TTABVUE (public version) and 31 TTABVUE (confidential version). 17 The percentage of the market held by Opposer has been designated confidential and hence we do not repeat it. Opposition No. 91253709 - 24 - in connection with its MONSTER Marks through giveaways, its MONSTER ARMY program, its Monster Gear program, and its distribution of products to retailers and distributors. (Id. ¶ 17.) Opposer licenses or has licensed its MONSTER Marks for use on clothing and accessories to more than 20 companies including NASCAR, Mammoth Mountain Ski Area LLC, and Zumiez, Inc. (Id. ¶ 18.) Opposer has collected royalties for licensed apparel and accessories, which it has deemed confidential and we do not repeat in this opinion. (Id.) We find such amounts are not impressive and as presented, are not specific to the type of goods and time period(s). Since 2002, Opposer spent approximately $8.5 billion in promoting its MONSTER brand throughout the world, with the vast majority spent in the United States. (Id. ¶ 29.) In 2019, Opposer spent over $1 billion in advertising and promoting its MONSTER brand. (Id.) Such advertising figures exceed figures in cases where fame has been found to have been established. See Omaha Steaks, 128 USPQ2d at 1690 (fame of OMAHA STEAKS mark supported by advertising expenditures of $45 million in 2011 and over $50 million in 2012 and 2013); Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1306 (Fed. Cir. 2002) (fame of ACOUSTIC WAVE mark supported by annual advertising expenditures of more than $5 million over the 17 years of use of the mark prior to 2002); Recot, 54 USPQ2d at 1896 (fame of the opposer's FRITO-LAY mark shown by expenditures in 1996 of about $80 million and other evidence, including the facts that “[i]n any given year, over 90 percent of American households purchase at least one FRITO-LAY brand product” and that “FRITO-LAY products enjoyed a greater than 50 percent market share in Opposition No. 91253709 - 25 - the estimated $12.1 billion domestic snack chip industry.”); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985) (fame of HUGGIES mark supported by $15 million in advertising in the year 1982 alone). Opposer spends millions per year18 on athlete sponsorships (such as Tiger Woods, Rob Gronkowski, and Conor McGregor (Sacks Decl. at ¶¶ 37, 38, 45, 49)) and on teams such as NASCAR racing teams. (Id. at ¶¶ 31, 55, 63.) Opposer also advertises and promotes the MONSTER Marks through its sponsorships of events, including supercross, Ultimate Fighting Championship, motocross, rally car events, NASCAR, Formula One and Summer and Winter X Games. (Id. at ¶¶ 31, 37, 40, 55, 56-61, 63, 68, 73.) Such events are nationally televised on channels such as ESPN, CBS and ABC. (Id. at ¶¶ 32, 37, 74, 87.) Over 500 athletes have been sponsored by Opposer in connection with the MONSTER brand. (Id. at ¶ 36.) Opposer’s advertising and promotion is directed principally to consumers of energy drinks and others who participate in or follow extreme sports, combat sports, water sports, and motor sports. A December 2007 article in Beverage Industry made of record by Opposer reported that Opposer did “no mass media marketing, including television ads or billboards,” but instead focused “on sponsoring athletes, artists, personalities, tours and events to target its young male demographic.”19 Mr. Sacks’s declaration is silent as to whether any of Opposer’s expenditures have ever been directed to print advertising and television commercials, and there is no print 18 The amount Opposer spends has been designated confidential and we do not repeat this amount in this opinion. 19 Sacks Decl. Exh. 25, 27 TTABVUE 231. Opposition No. 91253709 - 26 - advertising and examples of television commercials in the record. The record thus does not show that Opposer’s advertising and promotional activities are directed to the general public. There is no advertising in the record targeted to goods of the type identified in the ’863 and ’869 registrations. Opposer and the MONSTER Marks have been discussed in national publications. (Id. at ¶ 109, Exh. 40.) Forbes, Fortune (2005), Newsweek, Business Wire, Adweek, Beverage Forum, Beverage World and Business Week (2006) published stories about Opposer’s brand. (Id.; Opposer’s Second Notice of Reliance, Exhs. 44-52.) Other magazines - which Opposer states have publication dates from 2003-2011 - such as People, Men’s Fitness, Modified Mag, and Transworld Surf - have featured Opposer’s sponsored athletes promoting the MONSTER Marks through their clothing, accessories, and equipment. (Sacks Decl. ¶ 86; Opposer’s Second Notice of Reliance, Exhs. 53-56.) The probative value of the magazine articles as evidence of the strength of the mark at the time of trial is reduced because they are about 10-20 years old. Opposer has received awards such as Company of the Year in 2009 by Beverage Forum, and Liquid Refreshment Company of the Year in 2012 by Beverage World. (Sacks Decl. ¶ 4.) Fortune recognized Opposer as one of the 100 fastest growing companies in 2005, 2006, 2007, and 2008. (Id.) Mr. Sacks does not describe the extent, if any, of consumers’ knowledge of the awards, and without such context, his testimony regarding the awards primarily establishes that Opposer’s “products are perceived to be of high quality or are recognized only by industry groups.” Spier Wines (Pty) Ltd. v. Shepher, 105 USPQ2d 1239, 1245 (TTAB 2012). In addition, the awards Opposition No. 91253709 - 27 - are not of a recent vintage and do not pertain to goods of the type identified in the ’863 and ’869 registrations. Opposer maintains websites at www.monsterenergy.com and www.monsterarmy.com, which display the MONSTER Marks. (Sacks Decl. ¶ 98, Exh. 27; Opposer’s Third Notice of Reliance, Exhs. 57-67.) The www.monsterenergy.com website, launched in 2003, receives thousands of unique visitors each month and hosted over 1.7 million unique visitors in 2008. (Sacks Decl. ¶ 98.) In 2019, the website had over 3.7 million views in the United States, and in 2020, the website hosted almost 9 million page views in the United States. (Id.) In addition, the MONSTER Marks appear on the Internet through third-party displays of Opposer’s products, sponsored athletes, and vehicles bearing the MONSTER Marks. (Id. at ¶ 105.) These websites collectively receive hundreds of thousands of visitors per month. (Id.) Such visits, however, are modest in comparison to figures in other cases in which marks have been found to be famous. See, e.g., Weider Publ’ns, 109 USPQ2d at 1354 (three million monthly unique visitors and other evidence supported finding that opposer’s SHAPE mark was famous). Turning to Opposer’s social media activities, Mr. Sacks testified that Opposer’s social media accounts feature Opposer’s sponsored athletes, sports, and events, and display the MONSTER Marks. (Sacks Decl. at ¶¶ 99-102, 104, Exhs. 31-36; see also, Opposer’s Third Notice of Reliance, Exhs. 95, 156-158.) Opposer’s Facebook page had over 26 million “likes” as of February 2019. (Sacks Decl. ¶ 99, Exh. 30; Opposer’s Third Notice of Reliance, Exh. 68, 156.) The page features clothing, bags, Opposition No. 91253709 - 28 - beverageware, and accessories displaying the MONSTER Marks. (Sacks Decl. ¶ 99). Socialbakers, which tracks brand popularity on Facebook, ranked the MONSTER brand as the 10th most popular global brand in 2018. (Sacks Decl. ¶ 100, Exh. 32; Opposer’s Third Notice of Reliance, Exh. 87.) As of August 2019, Opposer had become the 8th most popular brand on Facebook according to Socialbakers. (Sacks Decl. ¶ 100.) As of January 2021, Opposer’s Twitter account had over 3 million followers. (Sacks Decl. ¶ 101, Exh. 33; Opposer’s Third Notice of Reliance, Exh. 158.) As of February 2019, Opposer’s Instagram account had over 5.2 million followers, and by January 2021, the followers of Opposer’s Instagram account grew to over 7.2 million followers. (Sacks Decl. ¶ 102, Exhs. 34, 35; Opposer’s Third Notice of Reliance, Exhs. 90, 157.) Opposer’s Instagram page shows posts relating to Opposer’s MONSTER marks on clothing, bags, beverageware, and “accessories.” (Sacks Decl. ¶ 102, Exh. 35.) Opposer also has various YouTube channels. (Sacks Decl. ¶ 104, Exh. 36; Opposer’s Third Notice of Reliance, Exh. 95.) Since its launch, the Monster Energy YouTube channel has received over 458 million views worldwide and had over 2.75 million subscribers as of January 2021. (Sacks Decl. ¶ 104.) Total views for Monster Energy-related YouTube channels exceed 36.5 million worldwide. (Id.) As noted, Applicant states, “Opposer has not met the burden of proof to show its marks are famous with respect to products outside the narrow category of energy drinks.”20 In so stating, Applicant implicitly acknowledges that Opposer’s Monster Energy Marks are famous for energy drinks. 20 Applicant’s brief, 47 TTABVUE 23. Opposition No. 91253709 - 29 - We find that Opposer’s sales and promotional figures and its extensive presence on social media demonstrate that Opposer’s Monster Energy Marks for energy drinks fall “on the much higher end of the commercial strength spectrum ‘from very strong to very weak,’” New Era, 2020 USPQ 2d 10596, at *12 (quotation and citation omitted), among consumers of energy drinks and persons who participate in or follow extreme sports, combat sports, water sports, and motor sports. Opposer, however, did not submit sufficient evidence to support a finding that the Monster Energy Marks are famous for clothing, bags and beverageware. Mr. Sacks testified that since 2002, Opposer “has sold and/or distributed millions of articles of clothing and accessories”;21 and that Opposer “has entered into license agreements with several clothing manufacturers, giving them license to produce and sell clothing and other merchandise that bears the MONSTER Marks.”22 The estimated royalties for licensed apparel and accessories (¶ 18) are substantially smaller than the sales figures for its energy drinks. (¶ 28).23 No specific figures are provided for the volume of sales or distribution of clothing, bags and beverageware. Mr. Sacks frequently mentions “accessories,” without specifying whether they include bags and beverageware. Also, the target consumers of Opposer’s energy drinks, as described above, is a subset of the broader general consumers of bags, mugs, and clothing. On this record, we find that the Monster Energy Marks for clothing, bags and 21 Sacks Decl. ¶ 17, 26 TTABVUE 8. 22 Id. ¶ 18. 23 Sacks Decl. (confid. version) ¶ 18, 31 TTABVUE 8. Opposition No. 91253709 - 30 - beverageware are entitled to no more than “the normal scope of protection to which inherently distinctive marks are entitled.” Bell’s Brewery, 125 USPQ2d at 1347. b. The Sixth DuPont Factor In connection with “‘[t]he number and nature of similar marks in use on similar goods,’” Omaha Steaks, 128 USPQ2d at 1693 quoting DuPont, 177 USPQ at 567), “[t]he Federal Circuit has held that evidence of the extensive registration and use of a term by others can be powerful evidence of the term’s weakness.” Tao Licensing, 125 USPQ2d at 1075 (citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, 115 USPQ2d at 1674). “Use evidence may reflect commercial weakness, while third-party registration evidence that does not equate to proof of third-party use may bear on conceptual weakness if a term is commonly registered for similar goods or services.” Id. The “controlling inquiry is the extent of third-party marks in use on ‘similar’ goods or services.” Omaha Steaks, 128 USPQ2d at 1694 (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)). There is no evidence of third-party use of the same or similar marks, and the third- party registrations, with no evidence of the extent of the use of the marks in commerce, do not diminish the commercial strength of Registrant’s mark. “We have frequently said that little weight is to be given such [third-party] registrations in evaluating whether there is likelihood of confusion. The existence of these registrations is not evidence of what happens in the market place or that customers Opposition No. 91253709 - 31 - are familiar with them ….’” In re Embiid, 2021 USPQ2d 577, at *34 (TTAB 2021) (quoting AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)).24 Because there is no evidence of use of MONSTER-formative marks in the marketplace, we find that the sixth DuPont factor is neutral in our analysis of the likelihood of confusion. 3. Similarity of the Marks The next likelihood of confusion factor, known as the first DuPont factor, focuses on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). In comparing the marks, we are mindful that “[t]he 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.” Cai, 127 USPQ2d at 24 We have discussed the issue of any conceptual weakness of Opposer’s Monster Energy Marks earlier in this opinion. Opposition No. 91253709 - 32 - 1801 (quoting Coach Servs., 101 USPQ2d at 1721). See also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). One feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark, provided the ultimate conclusion rests on a consideration of marks in their entireties. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). With marks “consisting of words and a design, the words are normally accorded greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra, 101 USPQ2d at 1908 (internal citation omitted)). Turning first to Opposer’s combined mark, we accord the words MONSTER ENERGY greater weight than the highly-stylized “M” claw design. While the design is striking, it is basically a stylized letter “M” displayed in a large, bold typeface that reinforces the first letter of the word MONSTER. MONSTER is the largest literal portion of the mark in terms of size and position, and appears above the word ENERGY when the words of the mark are viewed from top to bottom. The wording in Opposer’s marks is identical, and is similar to Applicant’s standard character mark because of the shared term MONSTER. There are dissimilarities - Opposer’s marks include the term ENERGY as a separate word after Opposition No. 91253709 - 33 - the term MONSTER and Applicant’s mark includes the term PIM before MONSTER, without any space between the two terms, and does not include the term ENERGY. As explained below, despite these differences, the wording in the marks overall is similar. We keep in mind the following: 1. Since 2002, the public often refers to Opposer as just “Monster.” (Sacks Decl. ¶ 11.) 2. Articles, press releases, and other media frequently refer to Opposer as simply “Monster.” (Id.) 3. Opposer has used several trademarks which include the word “MONSTER” without the word “ENERGY,” such as, JAVA MONSTER, CAFFE MONSTER, ESPRESSO MONSTER, MONSTER MAXX, and MONSTER REHAB. (Id., ¶ 10.) 4. Consumers have a penchant for shortening marks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev. 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.”)). This penchant makes it reasonable to assume that at least some consumers will drop the term ENERGY when calling for Opposer’s goods. 5. The term PIM is not a defined term in the English language. Opposition No. 91253709 - 34 - 6. 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). With the above in mind, we find that the term MONSTER has a greater commercial impression than the term ENERGY in Opposer’s Monster Energy Marks. This is especially true in Opposer’s combined mark, where the term ENERGY appears much smaller than, and underneath, the term MONSTER. Opposer’s standard character mark may be displayed in a similar manner to the wording in its combined mark. Turning to Applicant’s mark, Applicant has added the fanciful prefix or term PIM to the English word MONSTER. Because Applicant applied for registration of its mark in standard characters, Applicant may display its mark so that PIM is minimized in comparison to MONSTER and Applicant’s mark may be displayed in the exact lettering style and color used by Opposer. Aquitaine Wine, 126 USPQ2d at 1186 (a standard character mark “may be presented in any font style, size or color, including the same font, size and color as the literal portions of [the plaintiff’s] mark”). Regardless of the placement of PIM before MONSTER, the latter makes a greater commercial impression on purchasers than PIM because MONSTER is recognizable as a common English word that will be readily remembered. Opposition No. 91253709 - 35 - Applicant argues that PIM is a reference to an abbreviated form for Applicant’s founder’s first name.25 From the mark alone, we find no basis for purchasers to understand the term PIM that way.26 Further, there is no evidence that Applicant’s founder has any notoriety and there is no evidence that PIM is a recognized first name, or abbreviation for a first name, in the United States. Applicant also argues that “[c]onsumers likely view the PIMMONSTER mark as a single word … because the mark is a single compound word in standard character format.”27 As explained above, MONSTER is an English word, and PIM and PIMMONSTER are not English words. Consumers will view PIMMONSTER as a combination of an arbitrary component PIM and the English word MONSTER. Notably, the record reflects that Applicant regularly uses its mark as a single term with an upper case letter “P” and “M” and the remainder of its mark in lower case letters, thus emphasizing that the mark is a combination of two terms. We find that consumers will not perceive the term as a single compound word but as a combination of two terms. With regard to Applicant’s argument that “[c]onsumers are likely to view and pronounce the mark PIMMONSTER with no pauses since it is a compound word,”28 25 Applicant’s brief, 47 TTABVUE 17. 26 For this reason, Applicant’s argument that “Applicant’s PIMMONSTER mark is a single compound, fanciful word that is meant to emphasize to consumers the Applicant’s name ‘Pim’ in conjunction with the word ‘monster,’ which are portrayed in the creative drawings the Applicant incorporates onto the goods” cannot be persuasive. 27 Applicant’s brief, 47 TTABVUE 18. 28 Id., 47 TTABVUE 20. Opposition No. 91253709 - 36 - Applicant does not explain how PIM MONSTER sounds any different than PIMMONSTER. “[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” In re Viterra, 101 USPQ2d at 1912; see also Trak, Inc. v. Traq Inc., 212 USPQ 846, 850 (TTAB 1981) (“[I]t is not possible for a trademark owner to control with certainty how purchasers will vocalize their trademarks”). Regarding the connotation and commercial impression of the marks, Applicant argues: [T]he connotation that each mark establishes is fundamentally different. Viewed in context, within the mark MONSTER ENERGY, “monster” operates as an adjective, describing the energy that a user will obtain through its product. … In contrast, in PIMMONSTER, “monster” signifies a noun or “thing” -- specifically, the various “monsters” that Pimlada Kongkham creates through her artwork. These descriptions are connotatively distinct and create vastly different commercial impressions. We disagree with Applicant's argument that the word MONSTER connotes one thing in Opposer’s marks and something materially different in the PIMMONSTER mark. The cover story titled “Creating a Monster [-] Monster Energy grew from natural roots to become a behemoth energy brand” of the December 2007 edition of Beverage Industry associates the term MONSTER in MONSTER ENERGY with “an animal of strange or terrifying shape.” It states: The phrase monster conjures up the childhood mystery figure under the bed, or perhaps, one of the many Hollywood horror movie versions. More recently, the neon green claw logo that represents Monster energy drink has ranked close behind the boogeyman or Frankenstein. Like those Hollywood figures, the claw logo has become an Opposition No. 91253709 - 37 - identifiable symbol for the No. 2 selling brand in the fast- growing energy drink category, which has become a force all its own.29 The implication - which is plausible particularly in the combined mark with the monster “claw” design - is that the term MONSTER in Opposer’s marks connotes a noun or “thing,” as Applicant puts it. In addition, Opposer not infrequently makes use of the phrase “Unleash The Beast!,” creating an association with a “thing.” See, e.g.: 30 We find that the word MONSTER has a sufficiently similar general meaning in both marks to make their meanings as a whole more similar than dissimilar, and that the terms ENERGY and PIM are “unlikely to change the overall commercial impression engendered by the marks,” Detroit Athletic, 128 USPQ2d at 1049, in any significant way, particularly when the parties’ marks are used on identical, or legally- identical, goods and PIM has no English language meaning. In sum, while there are similarities and differences between the marks in appearance, sound, connotation and commercial impression, the similarities 29 Sacks Decl. Exh. 3, 26 TTABVUE 154. 30 Sacks Exh 34, 28 TTABVUE 92. Opposition No. 91253709 - 38 - outweigh the differences, and the DuPont factor regarding the similarity of the marks supports a finding of a likelihood of confusion. 4. Purchasing Conditions The factor known as the fourth DuPont factor concerns the “conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. We may not read pricing limitations into the identifications of goods. New Era, 2020 USPQ2d 10596, at *16. Instead, “[w]e must assume that the products are sold at all price points and to all types of buyers and overlap to include both the discriminating purchaser as well as the ordinary bargain hunter.” Id. Applicant argues: [A]s to the buyers of the respective products, Opposer’s primary goods cost under $8.00, and can be considered an “impulse buy.” … On the other hand, Applicant’s products can cost upwards of $85.00, making them not “impulse buys” but carefully considered purchases for the average consumer.31 Applicant’s reference to “Opposer’s primary goods” is an apparent reference to beverages, and not the goods which are the subject of the ‘689 and ‘683 registrations. Also, Applicant does not specify which of its products cost upwards of $85.00 The record reflects that Applicant’s canvas bags retail for as low as $13.00, its mugs retail for $13.00 and its apparel retails for $19.00.32 Mr. Sacks states that 31 Applicant’s brief, 47 TTABVUE 22-23. 32 Opposer’s First Notice of Reliance Exh. 23 (Response to Interrogatory No. 14), 23 TTABVUE 160. Opposition No. 91253709 - 39 - Opposer’s t-shirts sell for about $20-$25, its bags sell for about $25, and its cups sell for as little as $5.33 One webpage in the record offers one of Opposer’s shirts for $5.9934 and another offers a can cooler (encompassed within “beverageware”) for $4.79.35 These are all low cost items, costing less than the “primary goods” which Applicant states can be considered for an “impulse buy.” Also, many of the Class 25 goods in the ’689 application, including shirts, are of the sort that the Board has acknowledged may be subject to impulse purchases due to their potential low price. See, e.g., In re Embiid, 2021 USPQ2d 577, at *23-33. In view of the foregoing, we find that Opposer’s and Applicant’s goods, as identified in their respective identifications of goods, are subject to impulse purchases, and find that the DuPont factor regarding purchaser care favors a finding of likelihood of confusion for at least one good in each involved International Class. 5. The Presence or Absence of Actual Confusion The next DuPont factor we consider is “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” In re Guild Mortg., 2020 USPQ2d 10279, at *6 (quoting DuPont, 177 USPQ at 567). “The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period of time in the same markets as those served by Opposer under its 33 Sacks Decl. ¶ 27, 26 TTABVUE 15. 34 Applicant’s Notice of Reliance Exh. 59, 34 TTABVUE 33. 35 Sacks Decl. Exh. 12, 26 TTABVUE 244. Opposition No. 91253709 - 40 - mark.” New Era, 2020 USPQ2d 10596, at *17 (citing Citigroup Inc. v. Capital City Bank Grp., 94 USPQ2d 1645, 1660 (TTAB 2010), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011)); Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)). “In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred.” Id. (citing Barbara's Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)). Applicant argues that neither party provided any evidence regarding actual confusion among their goods.36 Opposer responds that there has been no opportunity for confusion because Applicant’s sales have been insignificant.37 From April 2019 when Applicant launched its business, total sales of PIMMONSTER products has been $405.38 Applicant has spent approximately $1,500 per year on advertising since April 2019.39 In view of Applicant’s limited activity, we find that there has not been a meaningful opportunity for confusion, and find the present DuPont factor is neutral in the likelihood of confusion analysis. 36 Applicant’s brief, 47 TTABVUE 28. 37 Rebuttal brief, 48 TTABVUE 17. 38 Opposer’s First Notice of Reliance Exh. 25 (Supplemental Response to Interrog. No. 15), 23 TTABVUE 180. 39 Id., Exh. 23 (Response to Interrog. No. 13), 23 TTABVUE 160. Opposition No. 91253709 - 41 - 6. The Extent of Potential Confusion Applicant argues that the DuPont factor regarding the extent of potential confusion, i.e., whether de minimis or substantial, weighs in its favor “[b]ecause Opposer has shown no persuasive evidence of … potential confusion ….”40 To the extent that Applicant grounds its argument on the lack of any reported instances of confusion, we are not persuaded. As explained above, there is no basis to reach any conclusions due to the absence of actual confusion. We therefore find the DuPont factor pertaining to the extent of potential confusion is neutral. 7. Variety of Goods on Which the Prior Mark is Used The next DuPont factor we consider takes into account the variety of goods on which a mark is or is not used. DuPont, 177 USPQ at 567. If a party in the position of a plaintiff uses its mark on a wide variety of goods, then purchasers are more likely to view a defendant’s related goods under a similar mark as an extension of the plaintiff’s line. See, e.g., In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014) (“[C]onsumers who may be familiar with various products in the [opposer’s] product line, when confronted with applicant’s mark, would be likely to view the goods marked therewith as additional products from [the opposer].”). The record shows that Opposer uses its MONSTER ENERGY marks on a wide range of products, including nutritional supplements, beverages, stickers, wrist bands, posters, sports gear, jewelry, video recordings and clothing.41 Use of a mark 40 Applicant’s brief, 47 TTABVUE 28. 41 Sacks Decl. ¶ 16, 26 TTABVUE 7-8. Opposition No. 91253709 - 42 - by an opposer on such a wide variety of products makes it more likely that relevant consumers will be confused by the similar mark of a newcomer. See, e.g., Uncle Ben’s, Inc. v. Stubenberg Int’l Inc., 47 USPQ2d 1310, 1313 (TTAB 1998). This possible confusion is magnified where, as here, the parties offer identical and legally-identical goods. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (finding that registration for a wide range of goods “as well as the relatedness of the goods, would favor opposer.”). Accordingly, this factor also weighs in favor of a finding of likelihood of confusion. 8. Lack of Good Faith The final DuPont factor we consider - known as the thirteenth DuPont factor - concerns any other established fact probative of the effect of use, which includes the bad faith adoption of a mark. Tao Licensing, 125 USPQ2d at 1063. “[P]roof of intent to trade on another's goodwill” can provide “persuasive evidence of likelihood of confusion.” Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628, 1630 (Fed. Cir. 1988). Opposer argues that “Applicant has shown an intent to deliberately create a likelihood of confusion with Monster’s MONSTER Marks [because] Applicant has admitted that it was familiar with Monster’s MONSTER Marks before it selected and began using Applicant’s PIMMONSTER Mark,” and “although Applicant was aware of at least some of Monster’s MONSTER Marks, Applicant chose to go ahead with the use of its PIMMONSTER Mark anyways, without any further investigation.”42 42 Opposer’s brief, 45 TTABVUE 53. Opposition No. 91253709 - 43 - Opposer further asserts that “[g]iven Applicant’s knowledge of Monster’s use of the MONSTER Marks, it is hard to believe that Applicant did not adopt the PIMMONSTER mark in bad faith.”43 “To show intent, [O]pposer must establish that [A]pplicant had more than mere knowledge of [O]pposer's prior mark.” Bd. of Regents, Univ. of Tex. Sys. v. Southern Ill. Miners, LLC, 110 USPQ2d 1182, 1196 (TTAB 2014) (citing Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987)). A finding of bad faith must be supported by evidence of an intent to confuse, rather than mere knowledge of another's mark or even an intent to copy. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009) (“[T]he only relevant intent is intent to confuse. There is a considerable difference between an intent to copy and an intent to deceive.”) (quoting J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:113 (4th ed. 2012)). Familiarity with an opponent’s marks in and of itself does not establish a bad faith intent to adopt. Applicant’s principal testified as follows in her March 25, 2021 testimony declaration:44 I decided on the name “PIMMONSTER” because it is a combination of my name, Pim, and the word “monster” to reflect the creatures or monsters that I draw. I started referring to the creatures in my drawings as “Pimmonsters” when I first started drawing them in around 2011. (¶ 5). I did not in any way, or at any point, consider or reference Opposer’s MONSTER ENERGY marks, and any of 43 Id. at 46, 45 TTABVUE 54. 44 36 TTABVUE. Opposition No. 91253709 - 44 - Opposer’s products, in the conception or adoption of PIMMONSTER. Pimmonster LLC has no intention or desire to associate with Opposer. (¶ 7). Prior to notice of the … opposition proceeding, I did not have any discussions with anyone about Monster Energy Company or Monster Energy Company’s marks. (¶ 17). This testimony does not suggest an intent to confuse, and Opposer's evidence falls far short of showing that Applicant adopted its mark in bad faith. The thirteenth DuPont factor is neutral in our analysis of the likelihood of confusion. 9. Conclusion on Likelihood of Confusion We have found that the parties’ marks are similar, that the goods in each International Class are identical, or legally identical, and hence presume that the trade channels and classes of purchasers overlap for the goods in each International Class. The involved goods are all subject to purchases on impulse. Applicant has not shown any third party use of marks which are the same or similar to Opposer’s marks. Opposer uses its MONSTER ENERGY marks on a wide range of products. The remaining DuPont factors are neutral in our analysis. In view thereof, we find that Opposer has proven likelihood of confusion by a preponderance of the evidence. If we had any doubts as to whether there was likelihood of confusion, which we do not, it is well established that any such doubts must be resolved against the newcomer and in favor of the prior registrant. Decision: The opposition is sustained with regard to all three of Applicant’s International Classes.