Slaying the Monster: How a Minor League Hockey Team Beat Monster Energy and Registered Their ‘Cleveland Monster’ Trademarks

By Eric Perrott, Esq.

Monster Energy is known to have a significant trademark enforcement program around its ‘MONSTER’ trademark and associated logos.  In one notable case, Monster Energy ignited a six-year long trademark dispute with the Toronto Raptors by opposing the team’s trademark applications for a “claw-tearing-through-basketball” logo.

The concern about Monster Energy’s trademark enforcement tactics is that they can be focused on small businesses, many of which do not have the legal resources to fight a company the size of Monster Energy.

Recently, Monster Energy lost an interesting battle.  The company failed to prevent the CLEVELAND MONSTERS baseball team from registering its trademark with the USPTO.

So how do you slay a Monster? Let’s dissect the recent ruling for some clues that trademark owners can use to protect themselves and defend their brands.

The ‘Cleveland Monsters’ had a significant advantage over the average trademark holder – Cavaliers Hockey Holdings, LLC (“the Cleveland Monsters”) already owns three registered MONSTER marks from years ago:

• Lake Erie Monsters for clothing, retail store services, and sporting activities
• Lake Erie Monsters logo for the same; and
• Lake Erie Monsters for beer, specifically excluding energy drinks.

The Cleveland Monsters registered the first Lake Erie Monsters word mark in 2010. In 2016, the Lake Erie Monsters rebranded as the Cleveland Monsters and filed to register their new name with the USPTO.

However, Monster Energy had different plans. On April 6th, 2018, Monster Energy filed an Opposition with the TTAB against all eight Cleveland Monsters applications. After a tumultuous two-year legal battle, the TTAB dismissed Monster’s Opposition in October of 2020.

Monster Energy’s Arguments

Monster’s arguments are simple: that their use of MONSTER is so ubiquitous that consumers would believe that CLEVELAND MONSTERS were related to, endorsed by, sponsored by, or otherwise connected with Monster Energy. They pointed to their professional athlete sponsorships, Formula One racing, NASCAR, and the Summer and Winter X Games to show that connection.

They also provided evidence of widespread recognition of the brand with millions of dollars in advertising and promotion.

The Cleveland Monsters’ Arguments

In defending itself, the Cleveland Monsters argued that while Monster Energy has priority on beverages, Monster’s use on sports sponsorships does not overlap with the Cleveland Monsters’ hockey or facilities services. The Cleveland Monsters pointed to their use of ‘Monsters’ marks since 2006 and argued that since 2006, there had been no confusion in the marketplace.

To that point, it appears Monster Energy was aware of this use, as the Cleveland Monsters, the Cleveland Cavaliers, Walgreens, and Monster Energy entered into an agreement wherein the Monster Energy Drink logo would appear on all point of sale materials featuring the teams. All parties, including Monster Energy, consented to the agreement and co-existence of “LAKE ERIE MONSTERS” and “MONSTER ENERGY” on promotional materials.

The Cleveland Monsters argued that Monster Energy slept on its rights and “acquiesced” to the Cleveland Monsters’ use of the name. Acquiescence is a legal concept that states if a company allows another company to infringe upon its trademarks, it cannot later attempt to protect its brand since it “acquiesced” to a co-existence. The Cleveland Monsters uses the 2008 promotional agreement as proof of acquiescence.

Monster Energy Loses before the TTAB

The TTAB found the Cleveland Monsters’ arguments persuasive and dismissed Monster Energy’s opposition on October 6th, 2020. The TTAB found that while Monster Energy had priority and fame in the energy drink market, the Monster Energy marks were only entitled to more narrow protections in other industries – such as athletics and sporting events.

The TTAB also considered that there had been twelve years of co-existence of “Monster” hockey teams, whether Lake Erie or Cleveland. Monster Energy could not prove any instance of confusion in those twelve years, and the TTAB weighed a lack of actual confusion in the Cleveland Monsters’ favor. The TTAB also found that narrow protection on non-beverage goods combined with a lack of actual confusion was sufficient to dismiss Monster Energy’s opposition.

The TTAB also found that Monster “acquiescence” to the Cleveland Monsters’ use of MONSTER based on the fact that the Lake Erie Monster mark has been on Monster Energy’s radar for 12 years and not only did not enforce its rights but entered into an agreement to display the two marks side by side in Walgreens Pharmacies.

How to Beat Monster Energy in a Trademark Case

There is no silver bullet strategy for dealing with Monster Energy in a trademark case. However, established brands will have a much better chance than new brands.

Also, the further away a brand is from the energy drink space, the more likely they are to defeat Monster Energy’s challenge. In this proceeding, the TTAB reaffirmed the strength and fame of the Monster Energy mark in that field but agreed that the rights to the word MONSTER are much more limited beyond that.

Hopefully, other brand owners can use the facts of this case in the event they find themselves on the other side of a case from Monster Energy.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.