Monster Energy Companyv.NBA Properties, Inc.

Trademark Trial and Appeal Board

May 3, 2021

91226092 (T.T.A.B. May. 3, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing: February 23, 2021

Mailed: May 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Monster Energy Company

v.

Maple Leaf Sports & Entertainment Ltd.
and NBA Properties, Inc.
_____

Opposition Nos. 91222422 (Parent)
91222445, 91226092 and 91228458
_____

Hans L. Mayer, Steven J. Nataupsky, Lynda Zadra-Symes
and Matthew S. Bellinger of Knobbe, Martens, Olson & Bear, LLP
for Monster Energy Company.

Eleanor M. Lackman and Marissa B. Lewis
of Mitchell Silberberg & Knupp LLP
for Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc.
_____

Before Wellington, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Applicant, Maple Leaf Sports & Entertainment Ltd. (“Maple Leaf”), seeks
registration on the Principal Register of the mark for goods and services in
International Classes 9, 16, 18, 25, 28 and 41, and the mark for goods and
services in International Classes 9, 14, 16, 18, 20, 21, 24, 25, 28, 35, 38 and 41.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 2 -

Applicant, NBA Properties, Inc. (“NBA”), seeks registration on the Principal Register
of the mark for goods and services in Classes International Classes 25 and 41,
and the mark for services in International Class 41. All of these applications
were filed based upon the respective Applicants’ allegations of a bona fide intention
to use each mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
Maple Leaf’s applications were filed on December 15, 2014; NBA’s applications were
filed on May 26, 2015.1 Where appropriate throughout this decision, we refer to Maple
Leaf and the NBA collectively as “Applicants.”
In its Notices of Opposition, Opposer, Monster Energy Company (“Monster”),
opposes registration of Applicants’ marks under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), on the ground that each of Applicants’ marks, as applied to the goods
or services identified in the applications, so resembles Opposer’s registered and
common law marks: , and , registered and used in connection with
goods and services in International Classes 5, 9, 14, 16, 18, 25, 32 and 35,2 as to be likely
to cause confusion, mistake, or to deceive. Monster also opposes registration of
Applicants’ marks under Trademark Act Section 43(c), 15 U.S.C. § 1125(c), on the
ground that each of Applicants’ marks is likely to dilute Opposer’s marks. Applicants
denied the salient allegations of the Notices of Opposition in each of their Answers.

1 Complete recitations of Applicants’ marks, application serial numbers, filing dates, filing
bases and identifications of goods/services may be found in Appendix 1.
2 Complete recitations of Opposer’s marks, registration numbers, issue dates and
identifications of goods/services may be found in Appendix 2.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 3 -

Applicants’ Answers also asserted the so-called “prior registration” or “Morehouse”
defense3 to Opposer’s claims, which was dismissed on summary judgment.4
In Opposition Nos. 91222422 and 91222445, Maple Leaf counterclaims to cancel
Monster’s pleaded registrations on grounds of false suggestion of a connection
pursuant to Trademark Act Section 2(a), 15 U.S.C. § 1052(a); priority and likelihood
of confusion pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d); and
likelihood of dilution pursuant to Trademark Act Section 43(c), 15 U.S.C. § 1125(c) –
all based on Maple Leaf’s claim of prior rights in the putatively famous mark
registered in connection with goods and services in International Classes 16, 25, 28 and
41.5 Maple Leaf did not pursue its false suggestion or dilution counterclaims pursuant
to Trademark Act Sections 2(a) and 43(c). They are therefore waived. Knight Textile
Corp. v. Jones Inv. Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005).

3 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 725, 717 (CCPA
1969).
4 Board Order of June 18, 2019 in Opposition No. 91222422 at 54 TTABVUE 2. References to
the pleadings, the evidence of record and the parties’ briefs refer to the Board’s TTABVUE
docket system. Coming before the designation TTABVUE is the docket entry number; and
coming after this designation are the page and paragraph references, if applicable. Unless
otherwise stated, all references to the Board’s TTABVUE docket system denote the docket
entries from Opposition No. 91222422.
5 Complete recitations of Maple Leaf’s marks, registration numbers, issue dates and
identifications of goods/services pleaded in its counterclaims, as well as Monster’s marks,
registration numbers, issue dates and identifications of goods/services subject to the
counterclaims for cancellation may be found in Appendix 3.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 4 -

Monster denied the salient allegations of Maple Leaf’s counterclaims in each of its
Answers in Opposition Nos. 91222422 and 91222445. Monster’s Answers also
asserted the defenses of failure to state a claim, laches, estoppel, acquiescence,
waiver, lack of priority and the absence of a likelihood of confusion. “Failure to state
a claim is not a true affirmative defense because it relates to an assertion of the
insufficiency of the pleading of [Maple Leaf’s counterclaims] … rather than a
statement of a defense to … properly pleaded [counter]claim[s].” John W. Carson
Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). Since Monster did
not pursue this “defense” by way of a motion to dismiss pursuant to Fed. R. Civ. P.
12(b)(6), we do not consider it further.
Monster also did not pursue its asserted defenses of laches, estoppel, acquiescence
and waiver. Accordingly, we deem them all waived. See Harry Winston, Inc. v. Bruce
Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014); Alcatraz Media v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d
mem., 565 F. App’x 900 (Fed. Cir. 2014). Monster’s defense that Maple Leaf does not
have trademark priority and there is no likelihood of confusion merely amplifies
Monster’s denials to Maple Leaf’s counterclaims. ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1236 n.11 (TTAB 2015).
Monster’s oppositions and Maple Leaf’s counterclaims have been consolidated
pursuant various prior Board Orders.6 “Despite being consolidated, each proceeding

6 Board Order of October 1, 2015 in Opposition No. 91222445 (6 TTABVUE); Board Order of
June 29, 2016 in Opposition 91226092 (7 TTABVUE); and Board Order of September 22, 2016
in Opposition No. 91228458 (8 TTABVUE).
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 5 -

retains its separate character. The decision on the consolidated cases shall take into
account any differences in the issues raised by the respective pleadings; a copy of
th[is] decision shall be placed in each proceeding file.” Dating DNA, LLC v. Imagini
Holdings, Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010).
Monster, as plaintiff in these oppositions, bears the burden of proving, by a
preponderance of the evidence, its asserted and pursued grounds of: (i) priority and
likelihood of confusion; and (ii) dilution; Maple Leaf, as plaintiff on its counterclaims
for cancellation, likewise bears the burden of proving, by a preponderance of the
evidence, its asserted and pursued ground of priority and likelihood of confusion.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1267 (TTAB 2003). Having considered the
evidentiary record, the parties’ arguments and applicable authorities, as we explain
below, we find that none of the parties has carried this burden. We therefore dismiss
Monster’s Oppositions and deny Maple Leaf’s Counterclaims.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 6 -

I. The Evidentiary Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of Maple Leaf’s and NBA’s involved applications, as well
as the files of Monster’s registrations subject to the counterclaims. In addition, the
parties introduced the following evidence:
A. Monster’s Evidence
 Opposer’s First Notice of Reliance (“Opp 1st NOR”), with exhibits comprising
status and title online records of Monster’s asserted trademark registrations,
Maple Leaf’s and NBA’s interrogatory answers, admissions’ responses,
responses to production requests and initial disclosures, and Monster’s annual
Securities and Exchange Commission filings (55-58, 63 and 66 TTABVUE).
 Opposer’s 2nd Notice of Reliance (“Opp 2nd NOR”), with exhibits comprising
printed and online publications reporting on various facets of Monster’s
business (62 TTABVUE).
 Opposer’s 3rd Notice of Reliance (“Opp 3rd NOR”), with exhibits comprising
online publications and Monster’s websites featuring some of Monster’s
products (61 and 65 TTABVUE).
 Opposer’s 4th Notice of Reliance (“Opp 4th NOR”), with exhibits comprising
portions of the discovery depositions of NBA employees Christopher Arena
(“Arena Discov Depo Tr”) and Anil George (“George Discov Depo Tr”), and the
corresponding exhibits referenced in partial transcripts from those depositions
(60 and 64 TTABVUE).
 Opposer’s Testimony Declaration of Monster’s Survey Expert, Itamar
Simonson, Ph.D. (“Simonson Decl”), with exhibits comprising Dr. Simonson’s
expert report as well as documents and materials used in connection with a
survey Dr. Simonson conducted in connection with these proceedings (59
TTABVUE).
 Opposer’s Testimony Declaration of Monster’s Chairman and CEO, Rodney
Sacks (“Sacks Decl”), with exhibits discussing Monster’s use and registration
of its asserted marks (67-79 TTABVUE).

Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 7 -

B. Maple Leaf’s and NBA’s Evidence
 Applicants’ First Notice of Reliance (“App 1st NOR”), with exhibits comprising
plain copies, as well as status and title online records of, Maple Leaf’s asserted
trademark registrations plus Maple Leaf’s and NBA’s additional registrations
not asserted in Maple Leaf’s counterclaims (85 TTABVUE).
 Applicants’ 2nd Notice of Reliance (“App 2nd NOR”), with exhibits comprising
Monster’s interrogatory answers (86 TTABVUE).
 Applicants’ 3rd Notice of Reliance (“App 3rd NOR”), with exhibits comprising
additional portions of the discovery depositions of Messrs. Arena and George,
filed pursuant to Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4),
third-party trademark registrations, a portion of Monster’s website, and an
announcement posted at the Sprint Center website announcing the
cancellation of a game (87-88 TTABVUE).
 Applicants’ Testimony Declaration of NBA’s Vice President and Assistant
General Counsel of Intellectual Property, Anil V. George (“George Decl”), with
exhibits discussing NBA’s search and clearance process for Maple Leaf’s
marks, as well as copies of decisions from jurisdictions outside the U.S.
involving the parties’ marks at issue in this proceeding (89 TTABVUE).
 Applicants’ Testimony Declaration of Christopher Arena, NBA’s Senior Vice
President of On-Court and Brand Partnerships in the Global Merchandising
Group (“Arena Decl”), with exhibits discussing the history, development, use
and applications for registration of Applicant’s opposed marks, as well as the
mark Maple Leaf relies on in its counterclaims (90 TTABVUE).
 Applicants’ Notice of Confidential Material (“App Conf Ntc”), with confidential
exhibits discussed in Applicants’ 2nd and 3rd Notices of Reliance as well as the
Testimony Declaration of Mr. Arena (91 TTABVUE).
 Applicants’ transcript from the oral cross-examination of Rodney Sacks
(“Sacks CX Depo Tr”), with exhibits (94-95 TTABVUE).
C. Monster’s Rebuttal Evidence
 Opposer’s Rebuttal Testimony Declaration of Rodney Sacks (“Sacks Rebuttal
Decl”) (97 TTABVUE).
 Opposer’s transcript from the oral cross-examination of Anil George (“George
CX Depo Tr”), with exhibits (98-99 TTABVUE).
 Opposer’s transcript from the oral cross-examination of Christopher Arena
(“Arena CX Depo Tr”), with exhibits (100-101 TTABVUE).

Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 8 -

II. Evidentiary Motions and Objections
Before proceeding to the merits of the oppositions and counterclaims, we address
the parties’ evidentiary motions and objections.
A. Monster’s Motion to Strike
Simultaneous with the filing of its trial brief, Monster moved to strike portions of
Mr. George’s Testimony Declaration and Exhibit 2 thereto. Monster’s motion also
sought to strike Exhibit 5 introduced by Applicants’ counsel during the
cross-examination of Mr. George. The Board deferred consideration of Monster’s
motion to strike until final decision.7
1. Decisions from Foreign Jurisdictions
Exhibit 2 to Mr. George’s Testimony Declaration comprises a collection of
decisions from jurisdictions outside the U.S. involving the parties’ marks at issue in
this proceeding.8 The Board has long held that decisions of foreign tribunals are
inadmissible on the ground that they can have no bearing on the question of the right
to registration under this country’s trademark law. Continental Motors Corp. v.
Cummins Engine Co., Inc., 132 USPQ 557, 559 (TTAB 1962). Monster’s motion to
strike Exhibit 2 to Mr. George’s Testimony Declaration, including his declaration
testimony pertaining thereto, is granted.

7 Monster’s motion to strike, 102 TTABVUE; Maple Leaf’s and NBA’s opposition to Monster’s
motion, 105 TTABVUE; Board Order deferring consideration of motion, 108 TTABVUE.
8 George Decl, 89 TTABVUE 4, 19-153, ¶ 7, Exh 2.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 9 -

2. Settlement Discussions
Exhibit 5 introduced by Applicants’ counsel during the cross-examination of Mr.
George is a document titled “Monster Energy X MLSE: Enterprise Partnership
Proposal.”9 Applicants offer this document to buttress Mr. George’s declaration
testimony that “Opposer has acted in a way that demonstrates that even Opposer
does not believe that there is likely confusion between the parties’ respective source
identifiers[,]” specifically, negotiations between the parties for “Opposer to become …
[the] official energy product sponsor” of Applicants’ basketball team the Toronto
Raptors (emphasis original).10
Viewed in context based on other evidence made of record, Exhibit 5 to Mr.
George’s cross-examination appears to have been generated as part of discussions
among the parties to possibly settle ongoing trademark proceedings and litigation.11
Evidence of this type is not something the Board may consider:
(a) Prohibited Uses. Evidence of the following is not admissible — on
behalf of any party — either to prove or disprove the validity or amount
of a disputed claim or to impeach by a prior inconsistent statement or a
contradiction:
…
(2) conduct or a statement made during compromise negotiations
about the claim ….
Fed. R. Evid. 408(a)(2). See also, Lebanon Seaboard Corp. v. R & R Turf Supply, Inc.,
101 USPQ2d 1826, 1830 (TTAB 2012) (“[S]ettlement discussion[s] … are not

9 George CX Depo Tr, 98 TTABVUE 47-50; 99 TTABVUE 64-66, Exh 5.
10 George Decl, 89 TTABVUE 6, ¶ 12.
11 George Decl, 89 TTABVUE 6, ¶¶ 12-13; George CX Depo Tr, 98 TTABVUE 47-51; Sacks
Rebuttal Decl, 97 TTABVUE 3-4, ¶¶ 4-5.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 10 -

admissible under Federal Rule of Evidence 408, which prohibits the use of such
negotiations to prove or disprove a disputed claim.”). Monster’s motion to strike
Exhibit 5 to Mr. George’s cross-examination is therefore granted.
B. Maple Leaf’s and NBA’s Evidentiary Objections
Maple Leaf’s and NBA’s evidentiary objections were raised in an Appendix to
Applicants’ Trial Brief.12 Monster argues that the entirety of Maple Leaf’s and NBA’s
Appendix raising its evidentiary objections should be stricken because: (1) “none of
Applicants’ arguments relate to substantive evidentiary objections …,” (2)
“Applicants do not cite a single Federal Rule of Evidence or other applicable rule
under which the cited evidence should be excluded[,]” and (3) “Applicants’
‘evidentiary objections’ are instead nothing more than arguments concerning the
weight that should be given to Monster’s evidence.”13 Having read Maple Leaf’s and
NBA’s Appendix, we find that it timely asserts substantive evidentiary objections.
We therefore deny Monster’s request that Applicants’ Appendix be stricken.
1. Simonson Declaration, Report and Exhibits
Monster submitted during its testimony period the Declaration, Report and
Exhibits of its expert, Itamar Simonson, Ph.D., conveying the purpose, methodology
and results of a survey he designed and conducted on Monster’s behalf.14 The
purposes and conclusions of the survey are as follows:

12 Applicants’ Trial Brief, 106 TTABVUE 56-62.
13 Opposer’s Rebuttal Brief, 109 TTABVUE 30-31.
14 Simonson Decl, 59 TTABVUE.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 11 -

11. [Dr. Simonson] was asked by counsel for Monster to conduct a survey
designed to determine whether and to what extent the mark (“Claw
Icon”) on Monster’s Monster drinks has acquired secondary meaning or
distinctiveness. ….
13. The survey was designed to measure the level or degree, if any, to
which the Claw Icon mark is associated with energy drinks emanating
from the named source “Monster” or a sole, yet anonymous, source. The
survey followed the accepted standards for litigation and other surveys.
15. The survey results indicate that the Monster Claw Icon mark has
acquired secondary meaning and even fame. Specifically, after
subtracting the Control, 67.2% of the respondents associated the Claw
Icon mark with a particular company or companies and then named
Monster. Furthermore, among those respondents who named just one
company, 67.2% (after subtracting the Control) named Monster.
16. These results indicate that the degree to which the Claw Icon mark
is recognized and uniquely associated with Monster far exceeds the level
indicating secondary meaning. Indeed, the findings indicate that the
mark is famous.15
“Applicants object to and [argue] the Board should disregard the Simonson
Declaration” because: (1) “Dr. Simonson[’s] … consumer survey was not designed to
measure fame[;] ... [r]ather, it was designed to measure whether Monster’s M Claw
Icon acquired secondary meaning[,]” (2) “Dr. Simonson’s legal conclusions regarding
fame … is something that is within the province of … the Board to decide[,]” and (3)
“Dr. Simonson’s findings regarding the alleged fame of Monster’s M Claw Icon are
irrelevant because the survey at most establishes ‘niche’ fame in the context of energy
drinks.”
Before considering Maple Leaf’s and NBA’s stated objections, we note Applicants
do not provide any critique of Dr. Simonson’s credentials, survey methodology or

15 Id. at 6-8.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 12 -

survey results. There also is no indication in the record that Maple Leaf and NBA
cross-examined Dr. Simonson to support such critiques should Applicants have
chosen to assert any.
Maple Leaf’s and NBA’s first objection conflates the concept of “fame” for
likelihood of confusion and dilution purposes. “Fame for likelihood of confusion
purposes and fame for dilution purposes, however, are distinct concepts. While
dilution fame is an either/or proposition—fame either does or does not exist—
likelihood of confusion fame varies along a spectrum from very strong to very weak.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (cleaned up). Thus, “[a] mark may
have acquired sufficient public recognition and renown to demonstrate that it is a
strong mark for likelihood of confusion purposes without meeting the stringent
requirements to establish that it is a famous mark for dilution purposes.” The Toro
Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). “[For] the broadest
protection … [of a] mark against totally unrelated goods …, [the trademark owner]
must provide evidence that when the public encounters opposer’s mark in almost any
context, it associates the term, at least initially, with the mark’s owner.” Toro v.
Torohead, 61 USPQ2d at 1181.
The questions that Dr. Simonson used in his survey were as follows:
After being exposed to Monster’s mark on an index card, respondents
were asked:
Now, thinking about energy drinks, do you associate the symbol on this
card with energy drinks from any particular company or companies?
Respondents who answered “Yes,” were next asked:
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 13 -

“What company or companies?”
Those respondents who initially indicated that they associated the
symbol with energy drinks from one particular company or companies,
but then answered “Don’t know” when asked to identify the company or
companies, were asked:
“Again, thinking about energy drinks… Do you associate the symbol on
this card with energy drinks from one company or more than one
company?”16
These are the types of secondary meaning survey questions the Board considered with
approval in Nextel Comms., Inc. v. Motorola, Inc.., 91 USPQ2d 1393, 1402 (TTAB
2009).
By contrast, the Board accepted as proper the following format used to test the
fame of the opposer’s mark in the dilution context (with the specific research goal
being to assess the strength of the opposer’s slogan mark in comparison with other
well-known slogans in the opposer’s industry):
Interviewers were given 25 top well-known consumer advertising
slogans, including Opposer’s slogan mark, which they read to
respondents. For each of the slogans, the respondent was asked:
“Do you recognize this slogan?”
If the respondent answered “yes,” a follow up question was asked:
“To what brand, product or industry do you attributed this slogan?”
Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1489-90 (TTAB
2010). We therefore find that Dr. Simonson’s survey was designed to determine
whether Monster’s mark has acquired secondary meaning or distinctiveness, and
arguably fame, in the context of Monster’s likelihood of confusion claim, but not fame
in the context of Monster’s dilution claim.

16 Id. at 11.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 14 -

Because Dr. Simonson’s survey was only designed and conducted to measure the
level or degree of acquired secondary meaning or distinctiveness as to Monster’s mark
in the likelihood of confusion context, Applicants’ objection that the survey at most
establishes “niche” dilution fame in the context of energy drinks is well taken. While
we overrule Maple Leaf’s and NBA’s objections to Dr. Simonson’s Declaration and
survey exhibits, we note that Dr. Simonson’s survey findings have much more
probative value in the context of Monster’s likelihood of confusion claim than its
dilution claim.
2. Point-of-Sale Catalogs
Monster submitted with the Declaration of Rodney Sacks “Exhibits 43-59 [that]
are … copies of various Monster POS [point-of-sale] catalogs showing apparel and
accessories bearing the Claw Icon mark being offered for sale or distribution to
distributors and retailers.”17 Of this set of exhibits, Maple Leaf and NBA object to
Monster’s reliance on Exhibits 45-48 and 57 on the grounds that: (1) “[t]here is no
evidence that the catalogs were distributed or that any of the products therein were
sold, let alone that they were sold prior to Applicant’s first use[,]” and (2) this
“evidence … is inadequate as a matter of law to endow … [Monster] with common law
rights in the M Claw Icon [, because of] ... [t]he Board[’s] … general prohibition
against accepting catalogs and catalog pages as specimens of use.”18 Monster
responds that it “(1) is not using the point-of-sale catalogs in this proceeding as

17 Sacks Decl, 67 TTABVUE 41-42, ¶ 107; catalogs submitted as confidential at 74-78
TTABVUE.
18 Applicants’ Trial Brief, 107 TTABVUE 59-60.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 15 -

specimens of use for a trademark application[,]” but rather (2) “relies on these
catalogs, along with quantitative sales and distribution records, as additional
evidence supporting Mr. Sacks’ testimony regarding Monster’s extensive common law
rights.”19
Maple Leaf’s and NBA’s objections to Monster’s POS catalogs go to the weight
rather than the admissibility of this evidence. See Double Coin Holdings Ltd. v. Tru
Dev., 2019 USPQ2d 377409, at *4 (TTAB 2019) (Board is capable of assessing the
proper evidentiary weight to be accorded the testimony and evidence, including its
imperfections and admissibility, and according it whatever probative value it may
have). We therefore overrule Applicants’ objections to Monster’s POS catalogs, but
shall keep these objections in mind when considering this evidence.
3. Sales Reports
Monster also submitted with Mr. Sacks’ Declaration “as Exhibit 60 … copies of
Monster’s reports from 2002-2011 maintained by Monster that show examples of
Monster’s sales of (sic) distribution of clothing and accessories.”20 Maple Leaf and
NBA object to this exhibit because “it does not show use of any trademark on
products, tags, labels, packaging, or the like. Indeed, there is no way to tell from
Exhibit 60 which, if any, of Monster’s relevant trademarks is used in conjunction with
each product.”21 In response, Monster asserts:

19 Opposer’s Rebuttal Brief, 109 TTABVUE 34-35.
20 Sacks Decl, 67 TTABVUE 41-42, ¶ 107; catalogs submitted as confidential at 74-78
TTABVUE.
21 Applicants’ Trial Brief, 107 TTABVUE 62.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 16 -

Applicants’ suggestion that a company’s sales or distribution reports
would contain pictures of every item tracked therein is untenable. …
Applicants’ argument wrongly requires divorcing an exhibit from the
evidence as a whole. … Monster’s sales and distribution report shown in
Exhibit 60 must be considered in conjunction with Monster’s other
evidence, including Monster’s point-of-sale catalogs and Mr. Sacks’
testimony [as to the sale and/or distribution of clothing and accessories,
as well as images showing how Monster’s mark is used on these
products].22
Once again, Applicants’ objections to Monster’s POS catalogs go to the weight
rather than the admissibility of this evidence. RxD Media, LLC v. IP Application Dev.
LLC, 125 USPQ2d 1801, 1804 (TTAB 2018) (“the Board is capable of weighing the
relevance and strength or weakness of the objected to testimony and evidence,
including any inherent limitations”). We therefore overrule Applicants’ objections to
Monster’s sales reports, but shall make note of these objections when evaluating this
evidence.
III. The Parties
Monster has promoted and sold energy drinks, as well as apparel and other
products bearing the MONSTER ENERGY and marks since 2002.23 Monster’s
beverage and other products are sold in gas stations, convenience stores, gyms, health
food stores, grocery stores, brick-and-mortar and online mass merchandisers, and at
on-premise retailers such as bars, restaurants, and coffees shops.24
Maple Leaf is the proprietor of the Toronto Raptors (“Raptors”), a Canadian
professional basketball team that competes in the National Basketball Association

22 Opposer’s Rebuttal Brief, 109 TTABVUE 35-36.
23 Sacks Decl, 67 TTABVUE 3-4, ¶¶ 3, 6.
24 Id. at 4-5, ¶ 7.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 17 -

(“NBA”). The Raptors play home games at Scotiabank Arena in Toronto, Ontario,
Canada, and at basketball venues and arenas throughout the United States. The
Raptors basketball team began operations and joined the NBA in 1995. The team’s
iconography—including the teams’ name, nickname, logos, and official mascot—draw
on the popularity of dinosaurs. The team’s official mascot, the “Raptor,” is a red
velociraptor dinosaur donning basketball shoes and a jersey numbered 95 for the year
of the team’s establishment.25 The Raptors are one of the NBA’s 30 teams. In the U.S.,
the Maple Leaf is the owner of record of its intellectual property (“IP”). The NBA is
the exclusive trademark licensee of the Raptors, with the right to license out the
team’s IP to third parties.26
IV. Entitlement to a Statutory Cause of Action
To establish entitlement to a statutory cause of action under Trademark Act
Section 13, 15 U.S.C., § 1063, a plaintiff must demonstrate “an interest falling within
the zone of interests protected by the statute and … proximate causation.” Corcamore,
LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020) (citing
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d
2061, 2067-70 (2014)).27 Stated another way, a plaintiff is entitled to a statutory cause

25 Arena Decl, 90 TTABVUE 3, ¶¶ 3-5.
26 George Discov Dep Tr, 64 TTABVUE 101-02. Maple Leaf and NBA have designated a more
detailed explanation of their relationship as confidential.
27 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to bring and maintain a statutory cause of action. Despite the change
in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections
13 and 14 remain equally applicable.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 18 -

of action by demonstrating a real interest in the proceeding and a reasonable belief
of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014).
According to the Court of Appeals for the Federal Circuit, there is “no meaningful,
substantive difference between the analytical frameworks expressed in Lexmark and
Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4. Thus, “a party that
demonstrates a real interest in [opposing registration of] … a trademark
under [Trademark Act Sections 13 or 14, 15 U.S.C.] §[§] [1063 or] 1064 has
demonstrated an interest falling within the zone of interests protected by [the
Trademark Act]. … Similarly, a party that demonstrates a reasonable belief of
damage by the registration of a trademark demonstrates proximate causation within
the context of § 106[3]. Corcamore, 2020 USPQ2d 11277 at *7.
Monster claims ownership of the , and marks and registrations
therefor, and submitted into evidence the U.S. Patent and Trademark Office
(“USPTO”) TESS database records showing Monster’s ownership and the current
active status of the registrations.28 Monster’s Mr. Sacks also testified to his company’s
ownership of these trademark registrations.29 These registrations on which Monster
relies thus give Opposer entitlement to bring its statutory cause of action under
Trademark Act Section 2(d). See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55

28 Opp 1st NOR, 55 TTABVUE 19-79, Exhs 1-14.
29 Sacks Decl, 67 TTABVUE 48-54, ¶¶ 130-142, 144, 147; 72 TTABVUE 76-102, 105-107,
Exhs 67-78, 80; 73 TTABVUE 7-9, Exh 83.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 19 -

USPQ2d 1842, 1844 (Fed. Cir. 2000) (“[Plaintiff’s] registrations and the products sold
under the mark they register suffice to establish [Plaintiff]’s direct commercial
interest and its [entitlement to a statutory cause of action under Trademark Act
Section 2(d)].”). Because Monster has established its entitlement to assert a Section
2(d) claim, it may assert any other ground that would bar registration, including its
Section 43(c) dilution claim. See, e.g., Sock It To Me, Inc. v. Aiping Fan, 2020
U.S.P.Q.2d 10611, *1 (T.T.A.B. 2020); Corporacion Habanos SA v. Rodriguez, 99
USPQ2d 1873, 1877 (TTAB 2011). Monster has thus established its entitlement to a
statutory cause of action.
On its counterclaims in Opposition Nos. 91222422 and 91222445, Maple Leaf
claims ownership of the mark and registrations therefor, and submitted into
evidence the U.S. Patent and Trademark Office (“USPTO”) TSDR database records
showing Maple Leaf’s ownership and the current active status of the
registrations.30 NBA’s Mr. Arena also testified to Maple Leaf’s ownership of one of
these trademark registrations.31 These registrations on which Maple Leaf relies thus
imbue it with an entitlement to bring its statutory cause of action for its Trademark
Act Section 2(d) counterclaim. See Cunningham, 55 USPQ2d at 1844 (Fed. Cir. 2000).
More generally, Maple Leaf as “a counterclaimant, [and] as a defendant in … [these]
opposition[s], has inherent … [entitlement] to assert its counterclaims.” Delaware
Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013).

30 App 1st NOR, 85 TTABVUE 6-30.
31 Arena CX Depo Tr, 98 TTABVUE 23-24, 30-31, 145, Exh 3.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 20 -

V. Priority
As a result of Maple Leaf’s counterclaims, priority is in issue with respect to the
parties’ registered marks as well as their assertions of common law rights in marks.
Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1139
(TTAB 2013) (plaintiff must prove priority in cancellations and in oppositions where
there is a counterclaim to cancel its pleaded registration); Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981) (“[Proof of]
proprietary rights in the term … [plaintiff] relies upon to demonstrate likelihood of
confusion as to source, … may be shown by ownership of a registration, prior use of a
technical ‘trademark,’ prior use in advertising, prior use as a trade name, or whatever
other type of use may have developed a trade identity.”).
“To establish priority, the mark must be distinctive, inherently or otherwise, and
Opposer must show proprietary rights in a mark as to which Applicant’s mark gives
rise to a likelihood of confusion.” DeVivo v. Ortiz, 2020 USPQ2d 10153, *3 (TTAB
2020) (citing Otto Roth, 209 USPQ at 43-45). Monster’s , and marks
are presumed to be inherently distinctive as evidenced by their registrations on the
Principal Register without a claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. § 1052(f). Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d
1881, 1889 (TTAB 2006).
Monster has been using its marks incorporating the design since at least as
early as 2002.32 As noted in Appendix 2 below, Maple Leaf filed intent-to-use based

32 Sacks Decl, 67 TTABVUE 3, 9, ¶ 3, 19.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 21 -

applications to register its and design marks in 2014. Mr. Arena testified
that Maple Leaf began use of these marks at least as early as December 2014.33
Appendix 2 also shows that NBA filed intent-to-use applications to register its
and marks in 2015. Mr. Arena testified that NBA began use of these marks
at least as early as February 2016.34 As to its opposition claims, Monster therefore
has trademark priority.
On its cancellation counterclaims, Maple Leaf, “the alleged prior user, bears the
burden of proving its claim of priority by a preponderance of the evidence[,]” West
Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed.
Cir. 1994); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021,
13 USPQ2d 1307, 1309 (Fed. Cir. 1989), which Maple Leaf has done. In fact, Maple
Leaf’s mark is presumed to be inherently distinctive as evidenced by its
registration on the Principal Register without a claim of acquired distinctiveness
under Trademark Act Section 2(f) (see Appendix 3 below). Tea Bd. of India, 80
USPQ2d at 1889. Mr. Arena testified, with supporting exhibits, that Maple Leaf
began use of this mark at least as early as 1995 in connection with basketball game
and exhibition services and a wide variety of collateral consumer products.35 As
stated above, Monster has been using its marks incorporating the design since at

33 Arena Decl, 90 TTABVUE 9, ¶ 22, 31
34 Id. at 21, ¶¶ 54-66.
35 Id. at 5, 41-76, ¶¶ 6-7, Exhs 5-9
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 22 -

least as early as 2002. As to its cancellation counterclaims, Maple Leaf therefore has
trademark priority.
VI. Focus upon Monster’s Mark
We focus on Monster’s mark, standing alone, registered for the goods and
services in International Classes 5, 9, 16, 18, 25, 32, 35 shown below in Appendix 1.
This mark is more similar to Applicants’ marks than are the or marks of
Monster’s other pleaded registrations, and the recitations of goods and services are
no less similar to Applicants’ goods and services than are the goods and services of
Monster’s other pleaded registrations. If we find confusion is likely between Monster’s
mark and Applicants’ marks, we need not consider likelihood of confusion with
Monster’s other pleaded marks; and if we find no likelihood of confusion between
Monster’s mark Applicants’ marks, we would not find a likelihood of confusion
with Opposer’s other pleaded marks. See N. Face Apparel Corp. v. Sanyang Indus.
Co., 116 USPQ2d 1217, 1225 (TTAB 2015); In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
VII. Trademark Descriptions
Although the parties’ marks contain some literal elements (i.e. words and/or
numbers), their primary commercial impressions are that of designs. For proper
understanding by the reader, we adopt the parties’ descriptions and more detailed
explanations of their own marks.
– Nearly all of Monster’s registrations for this design mark contain the following
description: “The mark consists of the letter ‘m’ in the form of a claw; Color is not
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 23 -

claimed as a feature of the mark.”36 Mr. Sacks describes the mark as an “M-Claw” or
the “Claw Icon,” whose origins are the letter “M” standing for “Monster.” The
jagged-edge stylization of the “M” is intended to evoke a monster and the liquid inside
bursting out of a can with the result being torn metal.37 We shall refer to this mark
as Monster’s “M-Claw” Mark.
– All of Maple Leaf’s applications to register this design mark contain the
following description: “The mark consists of a stylized design of a basketball and claw;
Color is not claimed as a feature of the mark.”38 Mr. Arena describes the mark as a
basketball with claw-inspired seams resembling a raptor dinosaur claw, and Maple
Leaf has named this design the “Raptors’ Secondary Ball Mark.”39 Mr. Arena further
explains that the claw’s positioning along the seams of the basketball evokes the
aggression of a raptor dinosaur ripping through a basketball.40 Ripping through the
basketball indeed forms the seams; looked at more abstractly, the ripped seams could
be thought of a forming a letter “E” or a backwards “three.”41 We shall refer to this
mark as Maple Leaf’s “Secondary Ball Mark.”

36 See Appendix 1 below, and registrations made of record at Opp. 1st NOR, 55 TTABVUE
19-23, 28-40, 53-65, 75-79, Exhs 1, 3-5, 9-11, 14.
37 Sacks CX Depo Tr, 94 TTABVUE 40-42.
38 See Appendix 2 below. Although automatically of record pursuant to Trademark Rule
2.122(b), abstract printouts from the USPTO’s TESS database of these applications are
attached to Maple Leaf’s Answer in Opposition No. 91222422, 4 TTABVUE 32-44, Exh 2.
39 Arena Decl, 90 TTABVUE 8, ¶ 17.
40 Arena CX Depo Tr, 100 TTABVUE 24-27.
41 Id. at 75-77.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 24 -

– All of Maple Leaf’s applications to register this design mark contain the
following description: “The mark consists of the wording ‘TORONTO RAPTORS’ and
the stylized design of a basketball and claw all appearing within a circle; Color is not
claimed as a feature of the mark; ‘TORONTO’ disclaimed.”42 Mr. Arena describes this
mark as a basketball with seams resembling the raptor dinosaur claw inside of a
circle with the team’s name, “Toronto Raptors,” in block-lettering, and Maple Leaf
has named this design the “Raptors’ Primary Ball Mark.”43 We shall refer to this
mark as Maple Leaf’s “Primary Ball Mark.”
– NBA’s applications to register this design mark contain the following
description: “The mark consists of a star with claw marks; Color is not claimed as a
feature of the mark.”44 Mr. Arena testified that this mark includes the clawed star
element as a tribute to the Raptors, and that these claw markings closely resemble
those in the Raptors’ Ball Marks.45 In fact, according to Mr. Arena, a consumer seeing
just the claw portion within the star mark will know that the mark is associated with
the Raptors, because the claw is the dominant portion of the mark.46 NBA has named
this design its “Star Mark.”47 We shall refer to this mark as NBA’s “Star Mark.”

42 See Appendix 2 below. Although automatically of record pursuant to Trademark Rule
2.122(b), abstract printouts from the USPTO’s TESS database of these applications are
attached to Maple Leaf’s Answer in Opposition No. 91222445, 4 TTABVUE 14-22, Exh 1.
43 Arena Decl, 90 TTABVUE 8, ¶ 17.
44 See Appendix 2 below. Although automatically of record pursuant to Trademark Rule
2.122(b), abstract printouts from the USPTO’s TESS database of these applications are
attached to Maple Leaf’s Answer in Opposition No. 91222445, 4 TTABVUE 14-22, Exh 1.
45 Arena Decl, 90 TTABVUE 20, ¶ 63; Arena CX Depo Tr, 100 TTABVUE 59-61.
46 Arena CX Depo Tr, 100 TTABVUE 59-61.
47 Arena Decl, 90 TTABVUE 20, ¶ 21
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 25 -

– NBA’s application to register this design mark contains the following
description: “The mark consists of a banner with a star and the word ‘TO’ and number
‘16’; Within the star are three jagged marks representing talon tracks; Color is not
claimed as a feature of the mark.”48 Mr. Arena testified that this mark also includes
the clawed star element as a tribute to the Raptors, and that these claw markings
closely resemble those in the Raptors’ Ball Marks.49 The word “TO” and the number
“16” in the mark refers to the fact that the 2016 NBA All-Star Game was hosted by
the Raptors team in Toronto, Canada that year.50 NBA has named this design its
“Banner Mark.”51 We shall refer to this mark as NBA’s “Banner Mark.”
– None of Maple Leaf’s registrations for this design mark contain any description
of the mark.52 Mr. Arena describes the mark as a static, three-pronged dinosaur
claw.53 More specifically, the intended meaning of this mark is that of a Raptor’s paw
print.54 The paw print is formed by three talons on the top, and a basketball on the

48 See Appendix 2 below. Although automatically of record pursuant to Trademark Rule
2.122(b), an abstract printout from the USPTO’s TESS database of this applications is
attached to NBA’s Answer in Opposition No. 91228458, 4 TTABVUE 14-15, Exh 1.
49 Arena Decl, 90 TTABVUE 20, ¶ 63; Arena CX Depo Tr, 100 TTABVUE 59-61.
50 Arena Discov Depo Tr, 60 TTABVUE 52-55.
51 Arena Decl, 90 TTABVUE 20, ¶ 63.
52 See Appendix 3 below, and registrations made of record at App 1st NOR, 85 TTABVUE
6-30, Exhs 1-4.
53 Arena Decl, 90 TTABVUE 8, ¶ 19.
54 Arena Discov Depo Tr, 60 TTABVUE 56.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 26 -

bottom.55 Maple Leaf has named this design the Raptors’ “Prior Claw Mark.”56 We
shall refer to this mark as Maple Leaf’s “Prior Claw Mark.”
VIII. Likelihood of Confusion
Trademark Act Section 2(d) prohibits the registration of a mark that
[c]onsists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
Our analysis of likelihood of confusion is based on the factors to be considered as set
out in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973) (hereinafter referred to as the “DuPont factors”).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect registrants from damage caused by registration of confusingly similar
marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331
(1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163
(1995); DuPont, 177 USPQ at 566. In making our determination, normally we
consider each DuPont factor for which there is evidence and argument, see In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019), and varying
weights may be assigned to each DuPont factor depending on the evidence presented.
See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253,

55 Arena CX Depo Tr, 100 TTABVUE 23-24.
56 Arena Decl, 90 TTABVUE 3-4, ¶ 5.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 27 -

1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in
any particular determination”). Two key considerations are the similarities between
the marks and the similarities between the goods. See 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.”).
However, in some cases the differences between the involved and pleaded marks
alone may be so significant as to preclude likelihood of confusion as a matter of law.
Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir.
1991) (affirming the Board’s dismissal of Kellogg’s opposition based on the differences
between the parties’ FROOT LOOPS and FROOTEE ICE & ELEPHANT Design
marks as a matter of law). In Kellogg, the U.S. Court of Appeals for the Federal
Circuit (“Federal Circuit”) stated:
The Board held that “[c]onsidering the marks in their entireties, ... they
differ so substantially in appearance, sound, connotation and
commercial impression that there is no likelihood that their
contemporaneous use by different parties will result in confusion.” The
Board stated that it would so conclude even if opposer offered evidence
at trial establishing … [the other DuPont factors in its favor].
* * *
We know of no reason why, in a particular case, a single DuPont factor
may not be dispositive. DuPont recognized that in determining
likelihood of confusion “each case must be decided on its own
facts.” DuPont, 476 F.2d at 1361, 177 USPQ at 567. It also recognized
that “each [of the thirteen elements] may from case to case play a
dominant role.” Id. The court noted examples of cases in which a
particular element made confusion likely or unlikely. Id. at 1362, 177
USPQ at 567.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 28 -

In the present case, the Board ruled that the dissimilarity of “the marks
in their entireties” itself made it unlikely that confusion would result
from the simultaneous use of the marks. We cannot say that the Board
committed any legal error in so holding.
Kellogg, 21 USPQ2d at 1144-45. See also Oakville Hills Cellar, Inc. v. Georgallis
Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (affirming
dismissal of Oakville’s opposition based on the differences as a matter of law between
the parties’ MAYA and MAYARI marks); Odom’s Tenn. Pride Sausage, Inc. v. FF
Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010);
Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d
1459, 1461 (Fed. Cir. 1998). There is therefore a 25-year line of Federal Circuit
decisions affirming Board dismissals of likelihood of confusion oppositions based
chiefly, if not solely, on the differences between the parties’ marks. We find it
appropriate to resolve the present oppositions and counterclaims on this basis.
A. The Similarity or Dissimilarity of the Marks
In our evaluation of the similarity or dissimilarity of the parties’ marks, the first
DuPont factor, we consider the strength of Opposer’s M-Claw (“ ”) Mark and then
compare the respective marks in their entireties.
1. Strength of Monster’s Mark
Before we turn to the similarity of the marks, we consider the strength of
Opposer’s M-Claw Mark, as that will affect the scope of protection to which it is
entitled. In determining the strength of a mark, we consider its conceptual strength,
based on the nature of the mark itself, and its commercial strength, based on
marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 29 -

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).”). The commercial strength of the mark also is affected by the number and
nature of third-party uses of similar marks for similar goods. DuPont, 177 USPQ at
567.
As noted, Monster’s M-Claw Mark is presumed to be inherently distinctive as
evidenced by its registrations on the Principal Register without a claim of acquired
distinctiveness under Trademark Act Section 2(f), and Applicants have not
challenged this presumption. Trademark Act Section 7(b), 15 U.S.C. § 1057(b); Tea
Bd. of India, 80 USPQ2d at 1889. Maple Leaf and NBA, however, contend that under
the sixth DuPont factor, 177 USPQ at 567, Monster’s M-Claw Mark is “relatively
weak” and “entitled only to a narrow scope of protection” due to the existence of
certain third-party registrations on the Trademark Register.57 The third-party
registered marks on which Applicants rely are as follows:58
Mark Owner Goods/Services Reg. No. Reg. Date

Boise Professional
Baseball, LLC
Athletic clothing
products, Cl. 25
4746450
(cancelled)
June 2, 2015

Attack Dogs Total
Fitness, LLC
Athletic clothing
products, Cl. 25
5803074 July 16, 2019

Tagco USA Inc. Athletic clothing
products, Cl. 25
5896321 Oct. 29. 2019

Oakland
University
Shirts and sweat
shirts, Cl. 25;
university education
and entertainment
services, 41
2470107 July 27, 2001

57 Applicants’ Brief, 106 TTABVUE 39.
58 App 3rd NOR, 88 TTABVUE 7-45, Exhs. 12-18.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 30 -

Mark Owner Goods/Services Reg. No. Reg. Date

Alligator Diesel
Performance, LLC
On-line retail store
services featuring
performance truck
parts and accessories,
Cl. 35
4076006 Dec. 27, 2011

Puma SE Soaps and lotions, Cl.
3; protective pouches,
cases and sleeves for
tablet computes and
other electronic
devices, Cl. 9;
trophies and jewelry,
Cl. 14, backpacks,
travel bags, luggage,
handbags, and
suitcases, Cl. 18,
clothing, Cl. 25;
haberdashery and
trimming articles for
garments, Cl. 26;
sporting equipment
and games, Cl. 28,
Wholesale and retail
store services, also on
the Internet for the
sale of a variety of
items, Cl. 35
5651872 Jan. 15, 2019

Blue Infusion
Technologies, LLC
Gloves for outdoor
wear, Cl. 25
4714696 April 7, 2015
However, third-party registrations are not evidence of third-party use in the
likelihood of confusion context and, by themselves, do not show that consumers have
been exposed to these marks. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462,
463 (CCPA 1973).
We immediately discount from consideration Boise Professional Baseball’s mark
because its registration has been cancelled. A cancelled registration is not evidence
of any existing rights in the mark. See Action Temp. Servs. v. Labor Force, 870 F.2d
1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). An expired or cancelled registration
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 31 -

is evidence of nothing but the fact that it once issued. Sunnen Prods. Co. v. Sunex
Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
We also find Alligator Diesel’s mark is registered for services far removed from
the goods and services at issue and, therefore, is not probative. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)
(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration).
We find the remainder of the registered marks made of record by Maple Leaf and
NBA to be of limited probative value for a number of reasons. To begin, the “relevant
DuPont inquiry is ‘[t]he number and nature of similar marks in use on similar
goods.”’ Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128
USPQ2d 1686, 1693-94 (Fed. Cir. 2018) (quoting Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) and Weiss
Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir.
1990)) (emphasis added). Thus even though five of the active (non-cancelled)
third-party marks are registered for several of the same or similar goods as is
Monster’s M-Claw mark, each of the third-party marks is distinguishable from the
M-Claw Mark by overall commercial impression. While Monster’s M-Claw Mark
depicts a vertical, jagged claw-design with parallel lines going straight down, all of
the third-party marks show lines that are diagonal by varying degrees, some slightly
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 32 -

curved, some not perfectly parallel to one another, and others with additional literal
features (e.g., Puma’s mark and Blue Infusion’s mark).
Finally, while the Federal Circuit has held that “extensive evidence of third-
party use and registrations is ‘powerful on its face,’ even where the specific extent
and impact of the usage has not been established,” see Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015) (emphasis added) (citing Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)), the
record of third-party registrations in this case is far less than the amount of evidence
found convincing in Jack Wolfskin and Juice Generation wherein “a considerable
number of third parties’ use [of] similar marks was shown.” Id. We therefore find
Maple Leaf’s and NBA’s third-party registration evidence, unaccompanied by any
relevant third-party use evidence, insufficient to weaken the inherent strength of
Monster’s M-Claw Mark.
Turning next to commercial strength, this notion rests upon the extent to which
“a significant portion of the relevant consuming public ... recognizes the mark as a
source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., 73
USPQ2d at 1694). This involves assessing the mark “‘along a spectrum from very
strong to very weak.’” Id. (internal citations omitted). At one end of the spectrum, a
commercially stronger mark receives a wider latitude of legal protection in the
likelihood of confusion analysis. See Palm Bay Imps., 73 USPQ2d at 1694. By
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 33 -

contrast, “the weaker an opposer’s mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
Commercial strength may be measured indirectly by the volume of sales and
advertising expenditures in connection with the goods sold under the mark, and other
factors such as length of time of use of the mark; widespread critical assessments;
notice by independent sources of the goods identified by the marks; and the general
reputation of the goods. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d
1347, 1354 (TTAB 2014); see also Bose Corp. v. QVC Audio Prods. Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate
proof of strength).
Monster points to a plethora of evidence of the commercial strength of its M-Claw
mark, based upon its asserted use of the M-Claw Mark since 2002:59
 Since 2002, sales of over 18 billion units of a wide variety of beverage products
(currently 2.5 billion cans per year) in cans bearing the M-Claw Mark,
resulting in over $40 billion in total retail sales in the United States.
 Since 2003, sales of Monster’s beverage products bearing the M-Claw Mark in
over 300,000 retail stores throughout the U.S. and online.
 As of 2019, holding a significant “dollar value market share” of the U.S. energy
drink market (exact market share figure confidential).
 Since 2002, expenditures of approximately $6.2 billion in promoting the
MONSTER brand. Almost without exception, since that time, Monster’s
advertisements and promotions for its MONSTER energy drinks have featured
the Claw Icon.

59 Sacks Decl, 67 TTABVUE 4-6, 9, 12-35, 37-42, 45-48, ¶¶ 6, 7, 9, 11, 12, 18-20, 27-29, 31-43,
45-86, 92-93, 97-101, 104-110, 117-129. Mr. Sacks’ descriptions of these activities,
expenditures and income are supported by a wealth of documentary and other visual
material. See 67-79 TTABVUE and exhibits submitted therein.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 34 -

 Allocation of a large proportion of its promotional budget on athlete and team
endorsements, sponsoring athletic competitions, brand promotions at
stadiums and venues, and subsidizing other events, many of which are webcast
on the Internet.
o Events include NASCAR; Road Racing World Championship Grand Prix
(“MotoGP”), Formula One (“F1”) racing, X Games, Ultimate Fighting
Championship (“UFC”), Supercross motorcycle racing, Pipeline Pro and
Billabong surfing and E-sports competitive video gaming.
o Sports venues include Los Angeles Angels’ stadium, Arizona Cardinals’
stadium, San Diego Chargers’ stadium, the Wells Fargo Center
(Philadelphia), the Palace (Detroit), Sprint Center (Kansas City, MO, for
Street League event).
o Sponsored athletes include Tiger Woods (golf), Rob Gronkowski
(football), Valentino Rossi (motorcycle racing), Jorge Lorenzo
(motorcycle racing), Robby Gordon (NASCAR), Michael Schumacher
(F1), Ben Spies (MotoGP), Rob Dyrdek (skateboarding), Ken Block (rally
car driving), Jeremy McGrath (SuperCross, X Games).
o Music Events include the Vans Warped Tour and Ozzfest concert tours.
 Use of Monster Ambassador Team members (“MAT”) to give out free samples
of branded beverage products and branded merchandise bearing the Claw Icon
at sporting events including NBA game locations.60
 Social media presence, including:
o A website prominently displaying the M-Claw Mark with hundreds of
thousands of unique visitors each month, and millions of unique visitors
per year.
o A Facebook page prominently displaying the M-Claw Mark having in
excess of 20 million “likes.”
o A Twitter account prominently displaying the M-Claw Mark having
more than 3 million followers.
o An Instagram account prominently displaying the M-Claw Mark having
more than 5 million followers.
o A YouTube channel prominently displaying the M-Claw Mark having
more than 2 million subscribers.
 Licensee payments to Monster of millions of dollars in royalties on multiple
millions of dollars’ worth of licensed apparel and accessories (exact figures
confidential) displaying the M-Claw Mark (bearing in mind Applicants’

60 NBA’s Vice President and General Counsel, Mr. George, derisively refers to this practice
as “ambush marketing.” George Decl, 89 TTABVUE 5, ¶ 11.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 35 -

criticisms of Monster’s business records lacking a degree of specificity as to
which of Monster’s marks appear on the listed goods).
 Since 2002, sales or distribution by Monster itself of millions of units of
clothing items and accessories, most of which prominently display the M-Claw
Mark, with an estimated retail value in the tens of millions of dollars (exact
figure confidential).
 Partnering with video game publishers to have Monster branding (particularly
the M-Claw Mark) appear in the video games themselves.
We also return briefly to Dr. Simonson’s Declaration, Report and Exhibits that we
discussed more extensively in the evidentiary sections of this decision, indicating that
67.2% of respondents associated Monster’s M-Claw Mark with energy drinks
emanating from the named source “Monster” or a sole, yet anonymous, source. As we
noted, from these survey results Dr. Simonson opines that the M-Claw has acquired
secondary meaning and even fame for likelihood of confusion purposes. Maple Leaf
and NBA do not challenge Dr. Simonson’s qualifications, his survey methodology, the
survey’s results or Dr. Simonson’s conclusions therefrom.
The Federal Circuit cautions that “[i]t is the duty of a party asserting that its
mark is famous to clearly prove it.” Coach Servs., Inc. v. Triumph Learning LLC, 101
U.S.P.Q.2d 1713, 1720 (Fed. Cir. 2012). Here, Monster clearly has shown that its
M-Claw Mark is commercially strong and famous for energy drinks in the likelihood
of confusion context under the considerations discussed in Bose, 63 USPQ2d at 1305-
09 and Omaha Steaks 128 USPQ2d at 1689-92.
Maple Leaf and NBA indeed concede Monster’s M-Claw design is famous (in the
likelihood of confusion context) for energy drinks, but argue that this fame does not
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 36 -

extend to other markets.61 The cross-examination testimony of Monster’s Chairman
and CEO, Mr. Sacks, supports Applicants’ argument. To keep the M-Claw brand
“authentic, unique, credible and cool,” Monster does not want it diluted by spreading
licenses for clothing, gear, and merchandise too broadly. This means not only limiting
the volume of non-beverage products on which the M-Claw is depicted, but also the
types of outlets through which these items are sold.62 Monster also distinguishes itself
from so-called “corporate” brands by being more cutting edge and avoiding traditional
advertising63 such as in magazine ads, or on TV, radio or billboards.64 Monster prefers
instead to focus its promotional efforts and expenditures on athlete endorsements,
sponsoring athletic competitions and associated product placements such as on
athletes’ helmets, sports gear and uniforms.65
Notably, as shown from the bullet-pointed discussion above, Monster’s income
from sales of non-beverage merchandise bearing the M-Claw Mark (such as branded
clothing and accessories) is but a fraction of its income from sales of beverage
products. Moreover, Monster’s involvement in sporting events in connection with the
M-Claw Mark is limited to endorsements and sponsorships (to reinforce customer
affinity with Monster’s beverage products) rather than the per se operation of sports
teams or sports leagues such as the Raptors or the NBA. We therefore find that

61 Applicant’s Brief, 106 TTABVUE 43-44.
62 Sacks CX Depo Tr, 94 TTABVUE 112-121.
63 Id. at 109-112.
64 Id. at 133-34.
65 Sacks Decl, 67 TTABVUE 7-8, ¶¶ 15-16.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 37 -

Monster’s M-Claw Mark is famous in the likelihood of confusion context for energy
drinks, but this fame does not extend to other products or services. See, e.g., Harley-
Davidson Motor Co., Inc. v. Pierce Foods Corp., 231 USPQ 857, 859-62 and (TTAB
1986) (while the marks HARLEY and HOG were deemed well-known in connection
with motorcycles, motorcycle parts and accessories, this did not extend to the
opposer’s acquisition of trademark rights for these marks in connection with food
products).
2. Comparison of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
73 USPQ2d at 1691; 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.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516
(Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
“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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs., 101 USPQ2d at 1721 (internal quotation
marks omitted)). The focus is on the recollection of average consumers – here,
members of the general public who purchase beverages and affinity merchandise, and
sports fans – who normally retain a general rather than a specific impression of
trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007).
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 38 -

“[W]here the question of likelihood of confusion … involves design marks which
are not capable of being spoken, the question of the similarity of the marks must be
determined primarily on the basis of their visual similarity.” In re Vienna Sausage
Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). “[W]hen letter marks are presented
in a highly stylized form, so that they are essentially design marks incapable of being
pronounced or conveying any inherent meaning, then differences in the lettering style
and design may be sufficient to prevent a likelihood of confusion. In these cases
similarity of appearance is usually controlling and the decision will turn primarily on
the basis of the visual similarity of the marks.” Textron Inc. v. Maquinas Agricolas
“Jacto” S.A., 215 USPQ 162, 163 (TTAB 1982). Even though Monster indicates in its
registrations that its mark “consists of a stylized letter M in the form of a claw,” and
Monster’s company name begins with an “M,” we do not know that consumers would
verbalize the mark as an “M” because there is nothing in the record to show this.
“[T]he purchaser and prospective purchaser’s state of mind or reaction must be
considered along with the fallibility of the human memory and its propensity to retain
but an overall impression of designs and similar type marks.” Envirotech Corp. v.
Solaron Corp., 211 USPQ 724, 733 (TTAB 1981). In such situations, “the question of
… [the marks’] similarity … must, of necessity, be a subjective one especially in the
absence of any consumer oriented reaction survey.” Franklin Mint Corp. v. Master
Mfg. Co., 209 USPQ 350, 354 (TTAB 1980), aff’d, 667 F.2d 1005, 212 USPQ 233
(CCPA 1981).
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 39 -

“[I]n a composite mark comprising a design and words, the verbal portion of
the mark is the one most likely to indicate the origin of the goods to which it is affixed
[or services with which it is associated].” CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983). On the other hand, while in “a mark compris[ing]
both a word and a design … the word [portion] is normally accorded greater weight
because it would be used by purchasers to request the goods …, [the Federal Circuit
has] cautioned that there is no general rule that the … [literal] portion … will form
the dominant portion of … [a] mark.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (internal citations and quotation marks omitted).”
In accordance with these principles, we first compare Monster’s M-Claw Mark to
Maple Leaf’s Primary and Secondary Ball Marks:
Monster’s
M-Claw Mark
Maple Leaf’s
Primary Ball Mark
Maple Leaf’s
Secondary Ball Mark

Although, in the marketplace, the parties’ marks likely would not be seen
side-by-side, In re i.am.symbolic, 123 USPQ2d at 1748, we present them here in such
a fashion simply for purposes of analysis.
Monster’s M-Claw mark comprises a set of three vertical, jagged, parallel lines
curved to the left at the top so as to form a letter “M” – the first letter of Opposer’s
company name MONSTER. Abstractly, the vertical lines depict the results of a
downward ripping motion. In contrast, Maple Leaf’s Secondary Ball Mark is the
image of a basketball depicting the results of a ripping motion from left-to-right
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 40 -

through three seams on the left-hand side of the basketball. The center image of
Maple Leaf’s Primary Ball Mark is a negative reproduction of Maple Leaf’s Secondary
Ball Mark. The center image is surrounded by a thick circle in which the team name
TORONTO RAPTORS is shown, further distinguishing it from Monster’s mark.
Monster’s mark is purely a claw. Maple Leaf’s marks are essentially basketballs with
much less prominent and significant claw elements. We therefore find that Monster’s
M-Claw Mark is so different from both of Maple Leaf’s Primary and Secondary Ball
Marks in appearance, sound (if any), meaning and overall commercial impression so
as to preclude a finding of likelihood of confusion.
We now compare Monster’s M-Claw Mark to NBA’s Star and Banner Marks:
Monster’s
M-Claw Mark
NBA’s
Star Mark
NBA’s
Banner Mark

As we did above with Maple Leaf’s marks, even though the parties’ marks likely
would not be seen side-by-side, In re i.am.symbolic, 123 USPQ2d at 1748, we present
them here in such a fashion simply for purposes of analysis.
We incorporate here by reference our description and evaluation of Monster’s
M-Claw Mark set out above. NBA’s Star Mark is the image of a Star showing the
results of a ripping motion from left-to-right on the left-hand side of the Star. The
center image of NBA’s Banner Mark is the entirety of NBA’s Star Mark. The center
Star image is seen as an overlay to a horizontal banderol (a/k/a a narrow forked flag,
streamer or ribbon) showing the letters “T-O” on the left and the number “16” on the
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 41 -

right, further distinguishing it from Monster’s mark. As we said above, Monster’s
mark is purely a claw. NBA’s marks are essentially a star or star-and-banderol with
much less prominent and significant claw elements. We find that Monster’s M-Claw
Mark is so different from both of NBA’s Star and Banner Marks in appearance, sound
(if any), meaning and overall commercial impression so as to preclude a finding of
likelihood of confusion.
Had Monster relied solely on its trademark registrations, our comparison of the
parties’ marks normally would be confined to the drawing pages of Monster’s
registrations versus Maple Leaf’s and NBA’s trademark applications. In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[W]e do not consider how
Applicant and Registrant actually use their marks in the marketplace, but rather
how they appear in the registration and the application. We must compare the marks
as they appear in the drawings ….”). However, Monster’s claims include reliance on
its common law rights in the M-Claw Mark. We therefore reproduce below a sampling
of Monster’s M-Claw Mark as used in the marketplace:
Beverage Cans66

66 Opp 3rd NOR 65 TTABVUE 41-43.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 42 -

Clothing & Accessories67

Athletic Gear68

Social Media69

67 App 2nd NOR, 86 TTABVUE 60, Suppl Int Ans No 1; Opp 3rd NOR 65 TTABVUE 46; Sacks
Decl, 69 TTABVUE 136; Sacks Decl, 70 TTABVUE 36; Sacks Decl, 71 TTABVUE 173, 177,
179, 180, 185; Sacks Decl, 72 TTABVUE 54.
68 Opp 3rd NOR, 61 TTABVUE 61; Opp 3rd NOR, 65 TTABVUE 60; Sacks Decl, 70 TTABVUE
45, 49, 75.
69 Sacks Decl, 71 TTABVUE 3, 49, 128, 163.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 43 -

Racing70

Pro Gaming71

As this sampling shows, the vast majority of Monster’s common law uses of the
M-Claw Mark are in the same configuration and alignment as shown in Monster’s
trademark registrations – that is, a set of three vertical, jagged, parallel lines curved
to the left at the top so as to form a letter “M,” with the vertical lines depicting a
downward ripping motion.72 Therefore, for the same reasons discussed above in
comparing Applicants’ marks to Monster’s registered M-Claw Mark, we find Maple
Leaf’s Primary and Secondary Ball Marks and NBA’s Star and Banner Marks readily
distinguishable from Monster’s rights in its M-Claw Mark at common law.73

70 Opp 3rd NOR 61 TTABVUE 34, 39, 45, 106, 110, 142, 150; Sacks Decl, 69 TTABVUE 96,
124, 144.
71 Opp 3rd NOR 65 TTABVUE 74, 82, 86.
72 The one notable exception is Monster’s golf bag, where the M-Claw is shown vertically and
on its side. The record does not show how many of these golf bags have been purchased by
consumers.
73 The parties acknowledge that there have been no instances of actual confusion between
Monster’s M-Claw Mark and Maple Leaf’s Primary or Secondary Ball Marks, nor between
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 44 -

B. Summary: Likelihood of Confusion
While we find Monster’s M-Claw Mark distinctive and famous for likelihood of
confusion purposes, the significant differences in appearance, sound (if any), meaning
and commercial impression between Monster’s mark and Maple Leaf’s and NBA’s
involved marks precludes a finding of likelihood of confusion. Kellogg v. Pack’em, 21
USPQ2d at 1145. We therefore dismiss Monster’s likelihood of confusion claims.

Monster’s M-Claw Mark and NBA’s Star or Banner Marks. Opp 1st NOR, 55 TTABVUE 132,
Maple Leaf Int Ans No 31; App 2nd NOR 86 TTABVUE 36-37, Monster Int Ans No 13; Sacks
CX Depo Tr, 94 TTABVUE 196-198. “[A]ctual confusion is not necessary to show a likelihood
of confusion.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002). “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 marks.”
Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637
F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). The record indicates appreciable and
continuous use by Monster and Maple Leaf of their respective marks for a significant period
of time (five years) in what Monster claims to have been overlapping markets. Sacks Decl, 67
TTABVUE 3-48, ¶¶ 3-127 and supporting exhibits; Arena Decl, 90 TTABVUE 9-13, 15, 20-21,
¶¶ 22-23, 26-33, 36, 37, 41, 62-65, Exhs 5-7, 9, 10, 12, 13-15, 16, 22. There has been a
more-than-reasonable opportunity for confusion to have occurred. We find the absence of
reported instances of actual confusion between Monster’s M-Claw Mark and Maple Leaf’s
marks further supports our finding of no likelihood of confusion based on the differences
between the parties’ marks.
The same cannot be said with respect to NBA’s Star and Banner Marks. The NBA developed
and used these marks in connection with the 2016 NBA All-Star Game in Toronto, Canada,
where they were displayed prominently at this annual event. The NBA sold clothing and
apparel items bearing the marks for a limited period of time in 2016, primarily in and around
the arena in Toronto where the game was played. NBA’s Star and Banner Marks have not
been used since then. Arena Decl, 90 TTABVUE 20-21, ¶¶ 62-67, Exhs 22-23; Arena CX Depo
Tr, 100 TTABVUE 59-61, 73-75, 82, Exh 13. With respect to NBA’s Star and Banner Marks,
the absence of actual confusion is neutral.

Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 45 -

IX. Dilution
To prevail on its dilution claim pursuant to the Trademark Dilution Revision Act
(“TDRA”) of 2006, Trademark Act Section 43(c), 15 U.S.C. § 1125(c), Monster must
show that:
(1) it owns a famous mark that is distinctive; (2) [Maple Leaf or NBA] …
is using a mark in commerce that allegedly dilutes [Monster’s] … famous
mark; (3) [Maple Leaf’s or NBA’s] … use of its mark[s] began after the
plaintiffs mark became famous; and (4) [Maple Leaf’s or NBA’s] … use
of its mark[s] is likely to cause dilution by blurring or by tarnishment.
The TDRA defines dilution by blurring as an “association arising from
the similarity between a mark or trade name and a famous mark that
impairs the distinctiveness of the famous mark.” 15 U.S.C.
§ 1125(c)(2)(B). Dilution by tarnishment is defined as “an association
arising from the similarity between a mark or trade name and a famous
mark that harms the reputation of the famous mark.” 15 U.S.C.
§ 1125(c)(2)(C).
Coach Servs., 101 USPQ2d at 1723-24. In passing we note that, by the most generous
reading of Monster’s Notices of Opposition, Monster asserts no claim(s) for dilution
by tarnishment.
A. Fame
To begin, we consider whether Monster’s M-Claw Mark is sufficiently famous for
dilution purposes. Under the TDRA, a mark is famous if it “is widely recognized by
the general consuming public of the United States as a designation of source of the
goods or services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). By using the
“general consuming public” as the benchmark, the TDRA eliminated the possibility
of “niche fame,” which some courts had recognized under the previous version of the
statute. Coach Servs., 101 USPQ2d at 1724; see also Top Tobacco, LP v. N. Ail.
Operating Co., 509 F.3d 380, 85 USPQ2d 1251, 1254 (7th Cir. 2007) (noting that the
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 46 -

reference to the general public “eliminated any possibility of ‘niche fame,’ which some
courts had recognized before the amendment”).
Coach Servs. concisely states much of what we said above regarding Dr.
Simonson’s Declaration, Report and Survey:
Fame for likelihood of confusion and fame for dilution are distinct
concepts, and dilution fame requires a more stringent
showing. … While fame for dilution is an either/or proposition — it
either exists or does not — fame for likelihood of confusion is a matter
of degree along a continuum. … Accordingly, a mark can acquire
sufficient public recognition and renown to be famous for purposes of
likelihood of confusion without meeting the more stringent requirement
for dilution fame.
[D]ilution fame is difficult to prove. The judicial consensus is that
fam[e] is a rigorous standard. … [F]ame for dilution is a difficult
and demanding requirement[.] … [A]lthough all trademarks are
distinctive — very few are famous. … Importantly, the owner of the
allegedly famous mark must show that its mark became famous prior to
the filing date of the trademark application or registration against
which it intends to file an opposition or cancellation proceeding.
[F]ame for dilution requires widespread recognition by the
general public. … To establish the requisite level of fame …, [a]n
opposer must show that, when the general public encounters the mark
in almost any context, it associates the term, at least initially, with the
mark's owner. In other words, a famous mark is one that has
become a household name.
Coach Servs. , 101 USPQ2d at 1724-25 (emphasis added, cleaned up).
Based on our review of the record that we discussed above regarding Monster’s
likelihood of confusion claims, we find that: (i) Monster’s M-Claw Mark has been
advertised nationwide since 2002, although mostly limited to the energy drink
market and sponsorship of extreme sports; (ii) the amount, volume, and geographic
extent of sales of goods Monster has offered under the M-Claw Mark has been notably
large, although again limited to energy drinks and to a much more limited extent
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 47 -

collateral clothing and accessories supporting the brand; (iii) the extent of actual
recognition of Monster’s M-Claw Mark appears limited to sports drinks; and (iv)
Appendix 1 to our opinion sets forth Monster’s M-Claw registrations on the Principal
Register. See Trademark Act Section 43(c)(2)(A), 15 U.S.C. § 1125(c)(2)(A).
Additionally, because it was not designed to test dilution-type fame, we give low
probative value to the results of Dr. Simonson’s secondary meaning survey in
considering whether Monster’s M-Claw mark is famous for dilution purposes.
True, Monster’s advertising and sales of products under the M-Claw Mark have
been impressive. However, we do not find that the M-Claw Mark meets the rigorous
standards for establishing that it is a famous mark under the TDRA.
B. Similarity or Dissimilarity of the Marks
Even were we to find (which we do not) that Monster’s M-Claw Mark is famous
for dilution purposes, Monster still must demonstrate on its dilution by blurring claim
“[t]he degree of similarity between … [Maple Leaf’s or NBA’s marks] and the ….
[M-Claw] mark.” Trademark Act Section 43(c)(2)(B)(i), 15 U.S.C. § 1125(c)(2)(B)(i). In
determining the similarity or dissimilarity of the marks for dilution purposes,
[the Board] use[s] the same test as for determining the similarity or
dissimilarity of the marks in the likelihood of confusion analysis, that
is, the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. (citation
omitted). While we are not concerned in this context with whether a
likelihood of confusion exists, we still consider the marks, not on the
basis of a side-by-side comparison, but rather in terms of whether the
marks are sufficiently similar in their overall commercial impressions
that the required association exists. [That is, the marks must be] …
sufficiently similar to … trigger consumers to conjure up Opposer's
famous mark and associate Applicant[s'] marks with Opposer’s mark.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 48 -

TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115-16 (TTAB 2018). Where
“[A]pplicant[s’] mark[s] … engender[] … different appearance[s], meaning[s] and
commercial impression[s] from [O]pposer's mark[,] [t]he similarities/dissimilarities of
the marks factor favors [A]pplicant[s].” Rolex Watch U.S.A., Inc. v. AFP Imaging
Corp., 101 U.S.P.Q.2d 1188, 1195 (TTAB 2011).
Based on our review of the parties’ marks as we discussed above regarding
Monster’s likelihood of confusion claims, we find that Maple Leaf’s and NBA’s marks
are readily distinguishable from Monster’s M-Claw in appearance, sound (if any),
meaning and commercial impression such that none of the former conjure up the
latter. The similarities/dissimilarities of the marks factor therefore also favors
Applicants.
C. Summary: Dilution
We find Monster’s M-Claw is not sufficiently famous for dilution purposes.
Additionally, as with Monster’s likelihood of confusion claim, the significant
differences in appearance, sound (if any), meaning and commercial impression
between Monster’s mark and all of Maple Leaf’s and NBA’s involved marks precludes
a finding of likely dilution. We therefore dismiss Monster’s dilution claims.
X. Maple Leaf’s Likelihood of Confusion Counterclaim
As argued, Maple Leaf’s counterclaim appears not as a direct assertion that
confusion between its Prior Claw Mark and Monster’s M-Claw Mark is likely, but
rather as an odd contingent claim:
Monster’s … [M-Claw Mark] is so distinctly different from each of
Applicants’ Marks that the Board should dismiss Monster’s opposition
in its entirety based on the first [DuPont] factor alone. However, if the
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 49 -

Board nevertheless finds such marks are confusingly similar (which it
should not do), then it should also find that the marks at issue [on Maple
Leaf’s] cancellation … [counterclaim]—Monster’s … [M-Claw Mark] and
… [Maple Leaf’s] Prior Claw Mark—are confusingly similar.74
Since we dismissed Monster’s likelihood of confusion and dilution claims, that should
end the matter as to Maple Leaf’s counterclaims. Nonetheless, we will proceed with
our analysis.
A. The Similarity or Dissimilarity of the Marks
In our evaluation of the similarity or dissimilarity of the parties’ marks, the first
DuPont factor, we consider the strength of Maple Leaf’s Prior Claw Mark (“ ”) and
then compare the respective marks in their entireties.
1. Strength of Maple Leaf’s Mark
Before we turn to the similarity of the marks, we consider the strength of Maple
Leaf’’s Prior Claw Mark, as that will affect the scope of protection to which it is
entitled. In determining the strength of a mark, we consider its conceptual or
inherent strength and its commercial or marketplace strength. In re Chippendales,
96 USPQ2d at 1686.
Maple Leaf’s Prior Claw Mark is inherently distinctive as evidenced by its
registrations on the Principal Register without a claim of acquired distinctiveness
under Trademark Act Section 2(f). Tea Bd. of India, 80 USPQ2d at 1889. Monster
does not dispute this.
Maple Leaf also contends that:
The Prior Claw Mark has, at the very least, acquired distinctiveness;
indeed, all of MLSE’s asserted registrations have attained

74 Applicants’ Brief, 106 TTABVUE 51.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 50 -

“incontestable” status. ... Moreover, the Prior Claw Mark has become
widely known to the consuming public through … [Maple Leaf]’s
continuous and extensive use for approximately twenty-five (25)
years. Specifically, [Maple Leaf] … has continuously and extensively
used the Prior Claw Mark throughout the United States in connection
with a variety of goods and services related to the Raptors basketball
team, generating substantial sales and commercial success. ... As a
result, the public has become familiar with the many branded marks of
the team, including … [Maple Leaf’s] Prior Claw Mark, and these marks
are now widely recognized among the general public.75 (Emphasis
original).
In response, Monster asserts that:
[Maple Leaf] … concludes … [that its Prior Claw Mark is strong and
entitled to broad protection] because … [Maple Leaf] has continuously
and extensively used the Prior Claw Mark throughout the United States
in connection with a variety of goods and services related to the Raptors
basketball team, generating substantial sales and commercial success.
… Applicants admit, however, that the sales figures they rely on were
global, and not specific to the United States. … Applicants further
admit that the team’s sales and marketing activities took place
primarily in Canada. … [Maple Leaf] similarly concludes, based solely
on Mr. Arena’s testimony, that “the public has become familiar with the
many branded marks of the team, including the Raptors’ Prior Claw
Mark, and these marks are now widely recognized among the general
public.” … But again, Mr. Arena concedes that he did not conduct a
survey regarding the extent to which fans may recognize the Raptors
prior claw mark, and is merely offering his personal opinion. … Because
[Maple Leaf] has failed to establish that [Maple Leaf]’s Prior Mark is
strong and widely known, this factor weighs strongly in Monster’s
favor.76 (Emphasis original).
We agree with Monster that Maple Leaf has not demonstrated that its Prior Claw
Mark enjoys commercial strength.
It is true that Maple Leaf owns four incontestable trademark registrations for its
Prior Claw Mark (two issued in 1994, two issued in 2003) for goods and services in

75 Applicants’ Brief, 106 TTABVUE 53.
76 Opposer’s Rebuttal Brief, 109 TTABVUE 26.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 51 -

International Classes 16, 25, 28 and 41.77 However, the incontestability provisions of
the Trademark Act only conclusively establish the fact of distinctiveness sufficient
for registration but not the degree of distinctiveness of a registered mark. See
Trademark Act Sections 7(b) and 15(b), 15 U.S.C. §§ 1057(b) and 1115(b).78 Maple
Leaf’s incontestable registrations alone, therefore, do not establish that its Prior Claw
Mark is commercially strong and for that reason entitled to a broad scope of
protection.
Mr. Arena testified that “since at least as early as 1995, … [Maple Leaf] has
continuously and extensively used … the Raptors’ Prior Claw Mark, throughout the
United States in connection with a variety of goods and services related to the Raptors
basketball team, including … basketball game and exhibition services and a wide
variety of collateral consumer products.”79 Mr. Arena’s testimony continues by noting
the early commercial sales success Maple Leaf had with the former marks it

77 App 1st NOR, 85 TTABVUE 6-30. See also, Appendix III below.
78 See also, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 61 USPQ2d 1705, 1710 (9th
Cir. 2002) (“Although the incontestable status of plaintiff's ENTREPRENEUR mark gives
plaintiff the exclusive right to use its trademark in printed publications pertaining to
business opportunities, plaintiff cannot have the exclusive right to use
the word ‘entrepreneur’ in any mark identifying a printed publication addressing
subjects related to entrepreneurship.”); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 231
USPQ 634, 638 (5th Cir. 1986) (“Incontestable status does not make a weak mark strong.”);
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518 n.25 (TTAB 2016) (On the question
of whether the incontestability of a registration indicates that the registered mark must be
considered strong, the “statutory presumptions do not affect the likelihood of confusion
analysis. [R]egistrations alone are incompetent to establish any facts with regard to ... any
reputation [the registered marks] enjoy or what purchasers’ reactions to them may be.”)
(citing Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1036 (TTAB 2010).
79 Arena Decl, 90 TTABVUE 5, ¶ 6.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 52 -

developed for the Toronto Raptors in 1995 (including the Prior Claw Mark),80 but not
much more than that.81 In fact, although Mr. Arena is not entirely clear on this point,
it appears Maple Leaf discontinued using the Prior Claw Mark after it adopted and
began using the Primary and Secondary Ball Marks in late 2014.82
Mr. Arena further testified that “fans have become familiar with the many
branded marks of the … [Toronto Raptors], including the Raptors’ Prior Claw Mark,
and these marks are now widely recognized and famous among the general public.”83
However, on cross-examination, Mr. Arena acknowledged that no survey had been
conducted regarding the extent to which fans may recognize the Maple Leaf’s Prior
Claw Mark, and that his statements to this effect were his personal opinion.84 Due to
insufficient evidence, we therefore find that Maple Leaf’s Prior Claw Mark is not
commercially strong nor is it entitled to broad protection. Cf. Bose Corp, 63 USPQ2d
at 1308; Weider Publ’ns, 109 USPQ2d at 1354.
2. Comparison of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression, See Palm Bay Imps.,
73 USPQ2d at 1691; DuPont, 177 USPQ at 567, applying the same principles we used

80 Id. at 5-6, ¶¶ 7-9.
81 On cross-examination, Mr. Arena was not able to quantify Maple Leaf’s merchandise sales
confined solely to the Prior Claw Mark. Arena CX Dep Tr, 100 TTABVUE 23-24, 33-36.
82 Arena Decl, 90 TTABVUE 8-10, ¶¶ 19-23.
83 Id. at 5, ¶ 8.
84 Arena CX Dep Tr, 100 TTABVUE 33-36.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 53 -

above to compare Monster’s M-Claw Mark to Maple Leaf’s Primary and Secondary
Ball Marks as well as to NBA’s Star and Banner Marks.
For convenience, we present Maple Leaf’s Prior Claw Mark next to Monster’s M-
Claw Mark even though they would not appear side-by-side in the marketplace:
Maple Leaf’s
Prior Claw Mark
Monster’s
M-Claw Mark

As we noted in the Trademark Descriptions section of this decision, Mr. Arena
describes Maple Leaf’s Prior Claw Mark as a static, three-pronged dinosaur claw.85
More specifically, the intended meaning of this mark is that of a Raptor’s paw print.86
The paw print is formed by three talons on the top, and a basketball on the bottom.87
The M-Claw Mark consists of the letter “M” in the form of a claw.88 Mr. Sacks states
that the origins of the mark are the letter “M” standing for “Monster.” The
jagged-edge stylization of the “M” is intended to evoke a monster and the liquid inside
bursting out of a can with the result being torn metal.89

85 Arena Decl, 90 TTABVUE 8, ¶ 19.
86 Arena Discov Depo Tr, 60 TTABVUE 56.
87 Arena CX Depo Tr, 100 TTABVUE 23-24.
88 See Appendix 1 below, and registrations made of record at Opp. 1st NOR, 55 TTABVUE
19-23, 28-40, 53-65, 75-79, Exhs 1, 3-5, 9-11, 14.
89 Sacks CX Depo Tr, 94 TTABVUE 40-42.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 54 -

We find evident dissimilarities between the marks in that Maple Leaf’s Prior Claw
Mark is formed by a basketball on the bottom and three talons on the top pointing
upward; whereas Monster’s M-Claw presents the after-effect of a creature’s (e.g.,
monster’s or animal’s) scratching or tearing downward. Maple Leaf and NBA
themselves acknowledge that “there are obvious differences between Monster’s M
Claw Icon and … [Maple Leaf’s] Prior Claw Mark,”90 and so does Mr. Arena:
Q. ... [C]omparing Maple Leaf's old mark and Monster's claw, do you
believe that the old mark, Maple Leaf's old mark is similar in
appearance to Monster's claw?
A. I do not.
Q. And why is that?
...
A. I don’t even know where to begin. [Maple Leaf’s old mark] has a
basketball, [Monster’s claw] does not; [Maple Leaf's old mark] is a claw,
sort of static, [Monster’s claw] is, I don't know what it is, blood dripping,
claw marks, ripping; [Maple Leaf’s old mark], I guess if you had to look
at it, it might be a W if you had to see something abstract in it;
[Monster’s claw] maybe is an M, closer to Adidas’s three stripes than
anything because they’re equidistant apart and equal; [Maple Leaf'’s old
mark] is from an animal, [Monster’s claw] is – the only animal I can see
is three sea horses going to the left. So I don’t see any similarity at all.
The only similarity is that there is three of something.91

Neither Applicants’ Brief nor Mr. Arena’s deposition testimony could have said it
better. We find that Maple Leaf’s Prior Claw Mark is so different from Monster’s
M-Claw Mark in appearance, sound (if any), meaning and overall commercial
impression so as to preclude a finding of likelihood of confusion.

90 Applicants’ Brief, 106 TTABVUE 52.
91 Arena CX Depo Tr, 100 TTABVUE 32-.33
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 55 -

B. Summary: Likelihood of Confusion
While we find Maple Leaf’s Prior Claw Mark inherently distinctive, there is
insufficient evidence to find that it is commercially strong. Moreover, the significant
differences in appearance, sound (if any), meaning and commercial impression
between Maple Leaf’s Prior Claw Mark and Monster’s M-Claw Mark preclude a
finding of likelihood of confusion. We therefore deny Maple Leaf’s likelihood of
confusion counterclaims.
Decision:
Monster’s oppositions are dismissed in their entirety on all asserted grounds.
Maple Leaf’s counterclaims for cancellation are denied in their entirety.
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 1 -

Appendix 1
Applicants’ Opposed Trademark/Service Mark Applications
Maple Leaf Sports & Entertainment Ltd.’s Opposed Applications in Opposition No. 91222422
Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services

(The mark consists of a stylized
design of a basketball and claw;
Color is not claimed as a feature
of the mark.)
Appln. No. 86480573
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Audio recordings and video recordings featuring entertainment and
information in the field of basketball; audio discs, video discs, computer laser
discs, pre-recorded audio and video cassettes, pre-recorded audio and video
tapes, pre-recorded compact discs, pre-recorded computer laser discs, all
featuring entertainment and information related to basketball; computer
accessories, namely flash drives, computer stands, mouse pads, mice, disc
cases, computer carry-on cases, computer sleeves, keyboard wrist pads, all
related to basketball; computer programs for viewing information, statistics
or trivia about basketball; computer software, namely screen savers featuring
basketball themes; computer software to access and view computer
wallpaper; computer browser software for use in viewing and displaying data
on the Internet; computer skins, namely, fitted plastic film for covering and
providing a scratch proof barrier for computer devices; computer game
software; video game software, video game cartridges; radios, electronic audio
speakers, headphones and ear buds, wireless telephones, telephones; cell
phone accessories, namely headsets, skins, face plates and cell phone covers;
electronics accessories, namely skins, covers and stands for MP3 players,
electronic tablets and portable personal digital assistant devices; decorative
switch plate covers, video monitors, computer monitors, binoculars;
sunglasses; eyeglass frames; eyewear straps and chains; eyeglass and
sunglass cases; magnets; disposable cameras; credit cards and pre-paid
telephone calling cards magnetically encoded; downloadable video
recordings, video stream recordings, and downloadable audio recordings in
the field of basketball provided over the Internet; downloadable computer
software for viewing databases of information, statistical information, trivia,
polling information, and interactive polling in the field of basketball provided
over the Internet; downloadable computer game software; downloadable
interactive video games and downloadable trivia game software provided over
the internet; downloadable computer software for use as screensavers and
wallpaper, to access and display computer browsers, for use in viewing data
on the Internet, for use in designing plastic film computer skins to protect
computer monitors, for use in creating avatars for playing games and for use
in remotely manipulating computer cursors over the Internet; downloadable
electronic publications in the nature of magazines, newsletters, coloring
books, game schedules all in the field of basketball provided over the Internet;
downloadable catalogs provided over the Internet featuring an array of
basketball-themed products; downloadable greeting cards provided over the
Internet, Cl. 9

(The mark consists of a stylized
design of a basketball and claw.)
Appln. No. 86480603
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Publications and printed matter, namely, basketball trading cards, trading
cards, stickers, decals, commemorative basketball stamps, collectible
cardboard trading discs, memo boards, clipboards, paper coasters, post cards,
place mats of paper, facial tissues, note cards, memo pads, note pads, ball
point pens, crayons, felt tip markers, rubber bands, pencils, pen and paper
holders, desktop document stands, scrap books, rubber stamps, drafting
rulers, paper banners and flags, 3-ring binders, stationery folders, wirebound
notebooks, portfolio notebooks, unmounted and mounted photographs,
posters, calendars, bumper stickers, book covers, bookmarks, wrapping
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 2 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
paper, children's activity books, children's coloring books; statistical books,
guide books, and reference books, all in the field of basketball; magazines in
the field of basketball, catalogs in the field of basketball, commemorative
game and souvenir programs related to basketball, paper pennants,
stationery, stationery-type portfolios, post cards, invitation cards, printed
certificates, greeting cards, Christmas cards, holiday cards, informational
statistical sheets for basketball topics; newsletters, brochures, pamphlets,
and game schedules in the field of basketball; bank checks, check book covers,
check book holders, comic books; non-magnetic credit cards and telephone
calling cards not magnetically encoded; money clips, Cl. 16

(The mark consists of a stylized
design of a basketball and claw;
Color is not claimed as a feature
of the mark.)
Appln. No. 86480655
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks,
baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote
bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach
umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes,
business card cases, book bags, all purpose sports bags, golf umbrellas, gym
bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold
empty, garment bags for travel, handbags, key cases, leather key chains,
suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, foot
lockers, pet clothing, pet leashes, and pet collars, Cl. 18

(The mark consists of a stylized
design of a basketball and claw;
Color is not claimed as a feature
of the mark.)
Appln. No. 86480693
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Clothing, namely, hosiery, footwear, basketball shoes, basketball sneakers,
slippers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank
tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties,
nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up
tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs
not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts,
slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey
dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing
suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board
shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps,
sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps,
novelty headwear with attached wigs, Cl. 25

(The mark consists of a stylized
design of a basketball and claw.)
Appln. No. 86480716
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Toys, games and sporting goods, namely, basketballs, golf balls, playground
balls, sports balls, rubber action balls and foam action balls, plush balls for
games, plastic balls for games, basketball nets, basketball backboards,
miniature basketball backboards, pumps for inflating basketballs and
needles therefore; golf clubs, golf bags, golf putters, golf accessories, namely,
divot repair tools, tees, ball markers, golf bag covers, club head covers, golf
gloves, golf ball sleeves, golf putting greens; billiard cue racks, billiard balls,
billiard ball racks, dart board cabinets, electronic basketball table top games,
basketball table top games, basketball board games, action skill games,
adult's and children's party games, trivia information games and electronic
video arcade game machines, basketball kit comprised of a net and whistle,
dolls, decorative dolls, collectible dolls, toy action figures, bobblehead action
figures, stuffed toys, plush toys, jigsaw puzzles, toy building blocks,
Christmas tree ornaments and Christmas stockings; toy vehicles in the
nature of cars, trucks, trains and vans, all containing basketball themes,
novelty foam toys in the shapes of fingers and trophies, toy trophies, playing
cards, card games, toy noisemakers, pet toys; beach toys, namely, beach balls,
inflatable balls, toy pails, toy shovels, sand toys, sand box toys, water-
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 3 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
squirting toys; pool accessories, namely, swim floats, pool floats, toy water
rafts, foam floats, swim rings, pool rings, foam rings, body boards, surf
boards, swim fins, surf fins, arm floats and water wing swim aids, all for
recreational use; volleyball game kits comprised of ball, net, sidelines and
whistle, and water polo game kits comprised of ball, net and whistle;
decorative cloth wind socks; miniature stadium reproductions, namely, small
toy plastic models of a stadium; snow globes; video game machines for use
with television and video game hand held controllers for use with console
video gaming systems, Cl. 28

(The mark consists of a stylized
design of a basketball and claw;
Color is not claimed as a feature
of the mark.)
Appln. No. 86480739
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Entertainment and educational services in the nature of ongoing television
and radio programs in the field of basketball and rendering live basketball
games and basketball exhibitions; the production and distribution of radio
and television shows featuring basketball games, basketball events and
programs in the field of basketball; conducting and arranging basketball
clinics and camps, coaches clinics and camps, dance team clinics and camps
and basketball games; entertainment services in the nature of personal
appearances by a costumed mascot or dance team at basketball games and
exhibitions, clinics, camps, promotions, and other basketball-related events,
special events and parties; fan club services; entertainment services, namely
providing a website featuring multimedia material in the nature of television
highlights, interactive television highlights, video recordings, video stream
recordings, interactive video highlight selections, radio programs, radio
highlights, and audio recordings in the field of basketball; providing news and
information in the nature of statistics and trivia in the field of basketball; on-
line non-downloadable games, namely, computer games, video games,
interactive video games, action skill games, arcade games, adults' and
children's party games, board games, puzzles, and trivia games; electronic
publishing services, namely, publication of magazines, guides, newsletters,
coloring books, and game schedules of others on-line through the Internet, all
in the field of basketball; providing an online computer database in the field
of basketball, Cl. 41
Maple Leaf Sports & Entertainment Ltd.’s Opposed Applications in Opposition No. 91222445
Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480248
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Audio recordings and video recordings featuring entertainment and
information in the field of basketball; audio discs, video discs, computer laser
discs, pre-recorded audio and video cassettes, pre-recorded audio and video
tapes, pre-recorded compact discs, pre-recorded computer laser discs, all
featuring entertainment and information related to basketball; computer
accessories, namely, flash drives, computer stands, mouse pads, mice, disc
cases, computer carry-on cases, computer sleeves, keyboard wrist pads, all
related to basketball; computer programs for viewing information, statistics
or trivia about basketball; computer software, namely, screen savers
featuring basketball themes; computer software to access and view computer
wallpaper; computer browser software for use in viewing and displaying data
on the Internet; computer skins, namely, fitted plastic film for covering and
providing a scratch proof barrier for computer devices; computer game
software; video game software, video game cartridges; radios, electronic audio
speakers, headphones and ear buds, wireless telephones, telephones; cell
phone accessories, namely, headsets, skins, face plates and cell phone covers;
electronics accessories, namely, skins, covers and stands for MP3 players,
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 4 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
electronic tablets and portable personal digital assistant devices; decorative
switch plate covers, video monitors, computer monitors, binoculars;
sunglasses; eyeglass frames; eyewear straps and chains; eyeglass and
sunglass cases; magnets; disposable cameras; credit cards and pre-paid
telephone calling cards magnetically encoded; downloadable video
recordings, video stream recordings, and downloadable audio recordings in
the field of basketball provided over the Internet; downloadable computer
software for viewing databases of information, statistical information, trivia,
polling information, and interactive polling in the field of basketball provided
over the Internet; downloadable computer game software; downloadable
interactive video games and downloadable trivia game software provided over
the internet; downloadable computer software for use as screensavers and
wallpaper, to access and display computer browsers, for use in viewing data
on the Internet, for use in designing plastic film computer skins to protect
computer monitors, for use in creating avatars for playing games and for use
in remotely manipulating computer cursors over the Internet; downloadable
electronic publications in the nature of magazines, newsletters, coloring
books, game schedules all in the field of basketball provided over the Internet;
downloadable catalogs provided over the Internet featuring an array of
basketball-themed products; downloadable greeting cards provided over the
Internet, Cl. 9

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480297
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Jewelry; costume jewelry; beaded jewelry; rubber or silicon wristbands in the
nature of a bracelet, beaded necklaces; beads for use in the manufacture of
jewelry; earrings, necklaces, rings, bracelets, cuff links, pendants, charms for
collar jewelry and bracelets; clocks; watches; watch bands and watch straps,
watch cases, watch fobs; banks, jewelry boxes, tie clips; medallions; non-
monetary coins of precious metal; precious metals; key chains of precious
metal; key chains as jewelry; figures and figurines of precious metal; trophies
of precious metals, Cl. 14

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480313
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Publications and printed matter, namely, basketball trading cards, trading
cards, stickers, decals, commemorative basketball stamps, collectible
cardboard trading discs, memo boards, clipboards, paper coasters, post cards,
place mats of paper, facial tissues, note cards, memo pads, note pads, ball
point pens, crayons, felt tip markers, rubber bands, pencils, pen and paper
holders, desktop document stands, scrap books, rubber stamps, drafting
rulers, paper banners and flags, 3-ring binders, stationery folders, wirebound
notebooks, portfolio notebooks, unmounted and mounted photographs,
posters, calendars, bumper stickers, book covers, bookmarks, wrapping
paper, children's activity books, children's coloring books; statistical books,
guide books, and reference books, all in the field of basketball; magazines in
the field of basketball, catalogs in the field of basketball, commemorative
game and souvenir programs related to basketball, paper pennants,
stationery, stationery-type portfolios, post cards, invitation cards, printed
certificates, greeting cards, Christmas cards, holiday cards, informational
statistical sheets for basketball topics; newsletters, brochures, pamphlets,
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 5 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
and game schedules in the field of basketball; bank checks, check book covers,
check book holders, comic books; non-magnetic credit cards and telephone
calling cards not magnetically encoded; money clips, Cl. 16

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480332
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks,
baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote
bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach
umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes,
business card cases, book bags, all purpose sports bags, golf umbrellas, gym
bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold
empty, garment bags for travel, handbags, key cases, leather key chains,
suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, foot
lockers, pet clothing, pet leashes, and pet collars, Cl. 18

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480362
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Toy boxes and chests, pillows and seat cushions; portable and folding stadium
seats and cushions; non-metal and non-leather key rings; non-metal and non-
leather key chains, tags and fobs; picture frames; hand-held mirrors; roller
shades for windows with suction cups; magazine caddies; wall plaques made
of wood, wall plaques made of plastic; soft sculpture wall decorations; non-
metal reusable bottle caps; non-metal clips for tablecloths; wooden
signboards, decorative mobiles; steel furniture; recliners, chairs and stools;
tables; portable and folding sports seats and stools; furniture; juvenile
furniture; bedroom furniture; clothes hangers and coat hangers; non-metal
trophy cups; bean bag chairs; non-metal coat racks; non-metal stands for
holding and displaying various types of balls; dividers for drawers; plastic
figurines; plastic pet identification tags; sleeping bags; wood boxes; furniture
chests; gift package decorations made of plastic; plastic flags; plastic novelty
license plates; plastic name badges; non-metal name plates, Cl. 20

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480532
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Entertainment and educational services in the nature of ongoing television
and radio programs in the field of basketball and rendering live basketball
games and basketball exhibitions; the production and distribution of radio
and television shows featuring basketball games, basketball events and
programs in the field of basketball; conducting and arranging basketball
clinics and camps, coaches clinics and camps, dance team clinics and camps
and basketball games; entertainment services in the nature of personal
appearances by a costumed mascot or dance team at basketball games and
exhibitions, clinics, camps, promotions, and other basketball-related events,
special events and parties; fan club services; entertainment services, namely
providing a website featuring multimedia material in the nature of television
highlights, interactive television highlights, video recordings, video stream
recordings, interactive video highlight selections, radio programs, radio
highlights, and audio recordings in the field of basketball; providing news and
information in the nature of statistics and trivia in the field of basketball; on-
line non-downloadable games, namely, computer games, video games,
interactive video games, action skill games, arcade games, adults' and
children's party games, board games, puzzles, and trivia games; electronic
publishing services, namely, publication of magazines, guides, newsletters,
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 6 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
coloring books, and game schedules of others on-line through the Internet, all
in the field of basketball; providing an online computer database in the field
of basketball, Cl. 41

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480507
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Audio broadcasting; cable television broadcasting; radio broadcasting;
subscription television broadcasting; television broadcasting; video
broadcasting; web-casting services in the nature of providing on-line chat
rooms and on-line interactive chat rooms with guests for transmission of
messages among computer users concerning the field of basketball;
broadcasting programs over the internet; providing on-line electronic bulletin
boards for transmission of messages among computer users concerning the
field of basketball; providing multiple-user access to a global computer
information network for the purpose of participating in interactive polling in
the field of basketball; wireless communications services, namely,
transmission of graphics to mobile telephones; wireless electronic
transmission of voice signals, data, facsimiles, images and information;
wireless broadband communications services, Cl. 38

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480488
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Retail store services, computerized on-line retail store services, online
ordering services, electronic retail store services via computer, and electronic
mail order catalog services, all featuring an array of basketball-themed
merchandise; promoting the goods and services of others by arranging for
sponsors to affiliate these goods and services with a basketball program;
promoting the sale of goods and services of others through the distribution of
promotional contests provided over the internet; conducting public opinion
poll surveys and public opinion poll surveys in the field of basketball for non-
business, non-marketing purposes over the internet, Cl. 35

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480463
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Toys, games and sporting goods, namely, basketballs, golf balls, playground
balls, sports balls, rubber action balls and foam action balls, plush balls for
games, plastic balls for games, basketball nets, basketball backboards,
miniature basketball backboards, pumps for inflating basketballs and
needles therefore; golf clubs, golf bags, golf putters, golf accessories, namely,
divot repair tools, tees, ball markers, golf bag covers, club head covers, golf
gloves, golf ball sleeves, golf putting greens; billiard cue racks, billiard balls,
billiard ball racks, dart board cabinets, electronic basketball table top games,
basketball table top games, basketball board games, action skill games,
adult's and children's party games, trivia information games and electronic
video arcade game machines, basketball kit comprised of a net and whistle,
dolls, decorative dolls, collectible dolls, toy action figures, bobblehead action
figures, stuffed toys, plush toys, jigsaw puzzles, toy building blocks,
Christmas tree ornaments and Christmas stockings; toy vehicles in the
nature of cars, trucks, trains and vans, all containing basketball themes,
novelty foam toys in the shapes of fingers and trophies, toy trophies, playing
cards, card games, toy noisemakers, pet toys; beach toys, namely, beach balls,
inflatable balls, toy pails, toy shovels, sand toys, sand box toys, water-
squirting toys; pool accessories, namely, swim floats, pool floats, toy water
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 7 -

Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services
rafts, foam floats, swim rings, pool rings, foam rings, body boards, surf
boards, swim fins, surf fins, arm floats and water wing swim aids, all for
recreational use; volleyball game kits comprised of ball, net, sidelines and
whistle, and water polo game kits comprised of ball, net and whistle;
decorative cloth wind socks; miniature stadium reproductions, namely, small
toy plastic models of a stadium; snow globes; video game machines for use
with television and video game hand held controllers for use with console
video gaming systems, Cl. 28

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480434
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Clothing, namely, hosiery, footwear, basketball shoes, basketball sneakers,
slippers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank
tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties,
nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up
tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs
not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts,
slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey
dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing
suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board
shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps,
sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps,
novelty headwear with attached wigs, Cl. 25

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480405
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Cloth banners, cloth wall hangings, cloth and fabric pennants; bed, bath and
household linens, sheets, blankets, comforters, curtains, draperies, quilts,
bedspreads, towels, pillow cases and shams, dish towels, golf towels, oven
mitts, textile tablecloths and place mats, stadium blankets, throw blankets,
cloth handkerchiefs, cloth flags, unfitted fabric furniture covers, shower
curtains, Cl. 24

(The mark consists of the
wording “TORONTO RAPTORS”
and the stylized design of a
basketball and claw all
appearing within a circle; Color
is not claimed as a feature of the
mark; “TORONTO” disclaimed.)
Appln. No. 86480388
Filing Date: December 15, 2014
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Beverage glassware, drinking glasses, shot glasses, mugs and cups made of
ceramic, earthenware, glass and porcelain; beer mugs; drinking glasses,
namely, tumblers; plastic cups, wastepaper baskets, plastic water bottles sold
empty, stainless steel water bottles sold empty, bowls, plates, beverage
stirrers, jugs, decorative and commemorative plates, glass jars, grill covers,
portable beverage coolers, coasters not of paper and not being of table linen,
lunch boxes, bottle openers, salt and pepper shakers, drinking flasks,
insulating sleeve holders for bottles, insulating sleeve holders for beverage
cans, cookie tins, drinking straws, piggy banks, Cl. 21
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 8 -

NBA Properties, Inc.’s Opposed Applications in Opposition No. 91226092
Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services

(The mark consists of a star with
claw marks; Color is not claimed
as a feature of the mark.)
Appln. No. 86641420
Filing Date: May 26, 2015
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Clothing, namely, hosiery, footwear, basketball shoes, basketball sneakers,
slippers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank
tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties,
nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up
tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs
not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts,
slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey
dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing
suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board
shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps,
sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps,
novelty headwear with attached wigs, Cl. 25

(The mark consists of a star with
claw marks; Color is not claimed
as a feature of the mark.)
Appln. No. 86641438
Filing Date: May 26, 2015
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
Entertainment and educational services in the nature of ongoing television
and radio programs in the field of basketball and rendering live basketball
games and basketball exhibitions; the production and distribution of radio
and television shows featuring basketball games, basketball events and
programs in the field of basketball; conducting and arranging basketball
clinics and camps, coaches clinics and camps, dance team clinics and camps
and basketball games; entertainment services in the nature of personal
appearances by a costumed mascot or dance team at basketball games and
exhibitions, clinics, camps, promotions, and other basketball-related events,
special events and parties; fan club services; entertainment services, namely,
providing a website featuring multimedia material in the nature of television
highlights, interactive television highlights, video recordings, video stream
recordings, interactive video highlight selections, radio programs, radio
highlights, and audio recordings in the field of basketball; providing news and
information in the nature of statistics and trivia in the field of basketball; on-
line non-downloadable games, namely, computer games, video games,
interactive video games, action skill games, arcade games, adults' and
children's party games, board games, puzzles, and trivia games; electronic
publishing services, namely, publication of magazines, guides, newsletters,
coloring books, and game schedules of others on-line through the Internet, all
in the field of basketball; providing an online computer database in the field
of basketball, Cl. 41

NBA Properties, Inc.’s Opposed Application in Opposition No. 91228458
Mark, Appln. No.,
Filing Date, Filing Basis

Goods/Services

(The mark consists of a banner
with a star and the word “TO”
and number “16”; Within the
star are three jagged marks
representing talon tracks; Color
is not claimed as a feature of the
mark.)
Entertainment and educational services in the nature of ongoing television
and radio programs in the field of basketball and rendering live basketball
games and basketball exhibitions; the production and distribution of radio
and television shows featuring basketball games, basketball events and
programs in the field of basketball; conducting and arranging basketball
clinics and camps, coaches clinics and camps, dance team clinics and camps
and basketball games; entertainment services in the nature of personal
appearances by a costumed mascot or dance team at basketball games and
exhibitions, clinics, camps, promotions, and other basketball-related events,
special events and parties; fan club services; entertainment services, namely,
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 9 -

Appln. No. 86641393
Filing Date: May 26, 2015
Filing Basis: Intent-to Use,
Trademark Act § 1(b)
providing a website featuring multimedia material in the nature of television
highlights, interactive television highlights, video recordings, video stream
recordings, interactive video highlight selections, radio programs, radio
highlights, and audio recordings in the field of basketball; providing news and
information in the nature of statistics and trivia in the field of basketball; on-
line non-downloadable games, namely, computer games, video games,
interactive video games, action skill games, arcade games, adults' and
children's party games, board games, puzzles, and trivia games; electronic
publishing services, namely, publication of magazines, guides, newsletters,
coloring books, and game schedules of others on-line through the Internet, all
in the field of basketball; providing an online computer database in the field
of basketball. Cl. 41

Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 1 -

Appendix 2
Monster Energy Company’s Asserted Registered Trademarks/Service Marks
Mark, Reg. No.,
Reg. Date

Goods/Services
Asserted in
Opp. No(s).

(The mark consists of a
stylized letter M in the form
of a claw; Color is not
claimed as a feature of the
mark.)
Reg. No. 4051650
Issued: November 8, 2011
Clothing, namely, t-shirts, hooded shirts and hooded
sweatshirts, sweat shirts, jackets, pants, bandanas, sweat
bands and gloves; headgear, namely hats and beanies, Cl. 25
91222422
91222445
91226092
91228458

(Color is not claimed as a
feature of the mark.)
Reg. No. 2903214
Issued: November 16, 2004
Drinks, namely, carbonated soft drinks, carbonated drinks
enhanced with vitamins, minerals, nutrients, amino acids
and/or herbs, carbonated and non-carbonated energy or sports
drinks, fruit juice drinks having a juice content of 50% or less
by volume that are shelf stable, [and water;] *but excluding
perishable beverage products that contain fruit juice or soy,
whether such products are pasteurized or not.*, Cl. 32
91222422
91222445
91226092
91228458

(The mark consists of the
letter “m” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 3434821
Issued: May 27, 2008
Nutritional supplements, Cl. 5 91222422
91222445
91226092
91228458

(The mark consists of the
letter “m” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 3434822
Issued: May 27, 2008
Non-alcoholic beverages, namely, energy drinks, excluding
perishable beverage products that contain fruit juice or soy, Cl.
32
91222422
91222445
91226092
91228458

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 3963668
Issued: May 17, 2011
Stickers; sticker kits comprising stickers and decals; decals;
posters, Cl. 16
91222422
91222445
91226092
91228458

All purpose sport bags; all-purpose carrying bags; backpacks;
duffel bags, Cl. 18
91222422
91222445
91226092
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 2 -

Mark, Reg. No.,
Reg. Date

Goods/Services
Asserted in
Opp. No(s).
(The mark consists of a
stylized letter “M” in the
form of a claw; Color is not
claimed as a feature of the
mark.)
Reg. No. 3963669
Issued: May 17, 2011
91228458

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 4721432
Issued: April 14, 2015
Promoting goods and services in the sports, motorsports,
electronic sports, and music industries through the
distribution of printed, audio and visual promotional
materials; promoting sports and music events and
competitions for others, Cl. 35
91222422
91222445
91226092
91228458

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 4011301
Issued: Aug. 16, 2011
Sports helmets; video recordings featuring sports, extreme
sports, and motor sports, Cl. 9
91222422
91222445
91226092
91228458

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy” disclaimed.)
Reg. No. 3908601
Issued: Jan. 18, 2011
Clothing, namely, t-shirts, hooded shirts and hooded
sweatshirts, sweat shirts, jackets, pants, bandanas, sweat
bands and gloves; headgear, namely, hats and beanies, Cl. 25
91222422
91222445
91226092
91228458

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy” disclaimed.)
Reg. No. 3908600
Issued: January 18, 2011
Stickers; sticker kits comprising stickers and decals; decals,
Cl. 16
91222422
91222445
91226092
91228458
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 3 -

Mark, Reg. No.,
Reg. Date

Goods/Services
Asserted in
Opp. No(s).

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; Energy” disclaimed.)
Reg. No. 3914828
Issued: February 1, 2011
Sports helmets, Cl. 9 91222422
91222445
91226092
91228458

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy” disclaimed.)
Reg. No. 3923683
Issued: February 22, 2011
All purpose sport bags; All-purpose carrying bags; Backpacks;
Duffle bags, Cl. 18
91222422
91222445
91226092
91228458

(Color is not claimed as a
feature of the mark;
“Energy” disclaimed)
Reg. No. 3134841
Issued: August 29, 2006
Beverages, namely, carbonated soft drinks, carbonated soft
drinks enhanced with vitamins, minerals, nutrients, amino
acids and/or herbs, carbonated [and non-carbonated] energy
and sports drinks, fruit juice drinks having a juice content of
50% or less by volume that are shelf stable, [and aerated
water, soda water and seltzer water,] but excluding perishable
beverage products that contain fruit juice or soy, whether such
products are pasteurized or not, Cl. 32
91222422
91222445
91226092
91228458

(The mark consists of a
stylized letter “M” to the left
of the stylized words
“MONSTER ENERGY”;
Color is not claimed as a
feature of the mark.)
Reg. No. 4332062
Issued: May 7, 2013
Silicone wrist bands; Silicone bracelets; Jewelry, namely,
bracelets and wristbands, Cl. 14
91222422
91222445
91226092
91228458
M MONSTER ENERGY
Reg. No. 3134842
Issued: August 29, 2006

(Opposer’s reliance on
this registered mark
withdrawn, per Opposer’s
Beverages, namely, carbonated soft drinks, carbonated drinks
enhanced with vitamins, minerals, nutrients, amino acids
and/or herbs, carbonated [and non-carbonated] energy or
sports drinks, fruit juice drinks having a juice content of 50%
or less by volume that are shelf stable, [and water,] but
91226092
91228458
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 4 -

Mark, Reg. No.,
Reg. Date

Goods/Services
Asserted in
Opp. No(s).
Brief at 103 TTABVUE 14,
n.1)
excluding perishable beverage products that contain fruit juice
or soy, whether such products are pasteurized or not, Cl. 32
M MONSTER ENERGY
Reg. No. 3044314
Issued: January 17, 2006

(Opposer’s reliance on
this registered mark
withdrawn, per Opposer’s
Brief at 103 TTABVUE 14,
n.1)

Nutritional supplements in liquid [and non-liquid ] form, but
excluding perishable beverage products that contain fruit juice
or soy, whether such products are pasteurized or not, Cl. 5
91226092
91228458

Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 1 -

Appendix 3
Maple Leaf Sports & Entertainment Ltd.’s Registered Trademarks Asserted on its Counterclaims
in Opposition Nos. 91222422 and 91222445
Mark, Reg. No.,
Reg. Date

Goods/Services

Reg. No. 2770504
Issued: October 7, 2003
Publications and printed matter, namely basketball trading cards, dance team
trading cards, mascot trading cards, entertainment trading cards, stickers, decals,
commemorative basketball stamps, post cards, paper place mats, note cards,
memo pads, ball point pens, pencils, 3-ring binders, folders, wirebound notebooks,
portfolio notebooks, unmounted and mounted photographs, posters, calendars,
bumper stickers, book covers, gift wrapping paper, children's activity books,
statistical books, guide books and reference books for basketball, magazines in the
field of basketball, commemorative game programs, paper pennants, stationery,
stationery-typed portfolios, and statistical sheets for basketball topics, newsletters
and pamphlets in the field of basketball for distribution to the television and radio
media, Cl. 16

Reg. No. 2751531
Issued: August 19, 2003
Clothing, namely, hosiery, footwear, T-shirts, sweat shirts, sweatpants, pants,
tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties,
nightshirts, hats, warm-up suits, jackets, parkas, coats, cloth bibs, head bands,
wrist bands, aprons, boxer shorts, slacks, caps, ear muffs, and gloves, Cl. 25

Reg. No. 2757748
Issued: April 13, 1994
Toys and sporting goods, namely, basketballs, golf balls, playground balls, sports
balls, rubber action balls and foam action balls, basketball nets, basketball
backboards, pumps for inflating basketballs and needle therefor, golf clubs, golf
bags, computerized basketball table games, video game cartridges, basketball
table top games, basketball board games, electronic video arcade game machines,
basketball kit comprising of a basketball net and whistle, dolls, stuffed toys, jigsaw
puzzles and Christmas tree ornaments, Cl. 28

Reg. No. 2754672
Issued: April 13, 1994
Entertainment services in the nature of basketball games and basketball
exhibitions rendered live and in stadia and through the media of radio and
television broadcasts; mascot and dance teams performances; conducting and
arranging basketball clinics, Cl. 41

Monster Energy Company’s Trademark/Service Mark Registrations that Maple Leaf Sports &
Entertainment Ltd. Seeks to Cancel on its Counterclaims in Opposition Nos. 91222422 and
91222445
Mark, Reg. No.,
Reg. Date

Goods/Services

(The mark consists of a
stylized letter M in the form
of a claw; Color is not
claimed as a feature of the
mark.)
Reg. No. 4051650
Issued: November 8, 2011
Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts,
jackets, pants, bandanas, sweat bands and gloves; headgear, namely hats and
beanies, Cl. 25
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 2 -

Mark, Reg. No.,
Reg. Date

Goods/Services

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 3963668
Issued: May 17, 2011
Stickers; sticker kits comprising stickers and decals; decals; posters, Cl. 16

(The mark consists of a
stylized letter “M” in the
form of a claw; Color is not
claimed as a feature of the
mark.)
Reg. No. 3963669
Issued: May 17, 2011
All purpose sport bags; all-purpose carrying bags; backpacks; duffel bags, Cl. 18

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 4721432
Issued: April 14, 2015
Promoting goods and services in the sports, motorsports, electronic sports, and
music industries through the distribution of printed, audio and visual promotional
materials; promoting sports and music events and competitions for others, Cl. 35

(The mark consists of the
letter “M” in the form of a
claw; Color is not claimed as
a feature of the mark.)
Reg. No. 4011301
Issued: Aug. 16, 2011
Sports helmets; video recordings featuring sports, extreme sports, and motor
sports, Cl. 9

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy”
disclaimed.)
Reg. No. 3908601
Issued: Jan. 18, 2011
Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts,
jackets, pants, bandanas, sweat bands and gloves; headgear, namely, hats and
beanies, Cl. 25
Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458

- 3 -

Mark, Reg. No.,
Reg. Date

Goods/Services

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy”
disclaimed.)
Reg. No. 3908600
Issued: January 18, 2011
Stickers; sticker kits comprising stickers and decals; decals, Cl. 16

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy”
disclaimed.)
Reg. No. 3914828
Issued: February 1, 2011
Sports helmets, Cl. 9

(The mark consists of a
stylized letter “M” and
stylized words “MONSTER
ENERGY”; Color is not
claimed as a feature of the
mark; “Energy”
disclaimed.)
Reg. No. 3923683
Issued: February 22, 2011
All purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags, Cl. 18

(The mark consists of a
stylized letter “M” to the left
of the stylized words
“MONSTER ENERGY”;
Color is not claimed as a
feature of the mark.)
Reg. No. 4332062
Issued: May 7, 2013
Silicone wrist bands; Silicone bracelets; Jewelry, namely, bracelets and
wristbands, Cl. 14