Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA622058
`ESTTA Tracking number:
`08/18/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Monster Energy Company
`08/17/2014
`
`1 Monster Way
`Corona, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`Jonathan Menkes
`Knobbe, Martens, Olson & Bear LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`efiling@knobbe.com, francie.leonguerrero@knobbe.com Phone:949-760-0404
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85873202
`08/18/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`02/18/2014
`08/17/2014
`
`Monster, Inc.
`455 Valley Drive
`Brisbane, CA 94005
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Consulting services in the field of thedesign
`of audio sound systems
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3908601
`
`01/18/2011
`
`Word Mark
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`ERGY".
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat
`shirts,jackets, pants, bandanas, sweat bands and gloves; headgear, namely,
`hats and beanies
`
`U.S. Registration
`No.
`Registration Date
`
`3908600
`
`01/18/2011
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`ERGY".
`Class 016. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Stickers; sticker kits comprising stickers and decals; decals
`
`U.S. Registration
`No.
`Registration Date
`
`3914828
`
`02/01/2011
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`Class 009. First use: First Use: 2006/01/00 First Use In Commerce: 2006/01/00
`Sports helmets
`
`U.S. Registration
`No.
`Registration Date
`
`3923683
`
`02/22/2011
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`Class 018. First use: First Use: 2004/05/00 First Use In Commerce: 2004/05/00
`All purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags
`
`U.S. Registration
`No.
`Registration Date
`
`4036681
`
`10/11/2011
`
`Application Date
`
`09/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Non-alcoholic beverages, namely, energydrinks, excluding perishable beverage
`
`

`
`products that contain fruit juice or soy
`
`U.S. Registration
`No.
`Registration Date
`
`3057061
`
`02/07/2006
`
`Application Date
`
`04/18/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Fruit juice drinks having a juice content of 50% or less by volume that are shelf
`stable, carbonated soft drinks, carbonated drinks enhanced with vitamins, miner-
`als, nutrients, amino acids and/or herbs, [ aerated water, soda water and seltzer
`water, ] but excluding perishable beverage products that contain fruit juiceor soy,
`whether such products are pasteurized or not
`
`U.S. Registration
`No.
`Registration Date
`
`3134841
`
`08/29/2006
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Beverages, namely, carbonated soft drinks, carbonated soft drinks enhanced
`withvitamins, minerals, nutrients, amino acids and/or herbs, carbonated [ and
`non-carbonated ] energy and sports drinks, fruit juice drinks having a juice con-
`tent of 50% or less by volume that are shelf stable, [ and aerated water, soda
`water and seltzer water, ] but excluding perishable beverage products that con-
`tain fruit juice or soy, whether such products are pasteurized or not
`
`U.S. Registration
`No.
`Registration Date
`
`3134842
`
`08/29/2006
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`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 excluding perish-
`able beverage products that contain fruit juice or soy, whether such products are
`pasteurized or not
`
`U.S. Registration
`No.
`Registration Date
`
`3044314
`
`01/17/2006
`
`Application Date
`
`05/23/2003
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`M MONSTER ENERGY
`
`Date
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`nutritional supplements in liquid [and non-liquid ] form, but excluding perishable
`beverage products that contain fruitjuice or soy, whether such products arepas-
`teurized or not
`
`U.S. Registration
`No.
`Registration Date
`
`3044315
`
`01/17/2006
`
`Application Date
`
`05/23/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MONSTER ENERGY
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`nutritional supplements in liquid [and non-liquid ] form, but excluding perishable
`beverage products that contain fruitjuice or soy, whether such products arepas-
`teurized or not
`
`U.S. Registration
`No.
`Registration Date
`
`4129288
`
`04/17/2012
`
`Application Date
`
`07/06/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MONSTER REHAB
`
`NONE
`
`Class 005. First use: First Use: 2011/03/02 First Use In Commerce: 2011/03/02
`Nutritional supplements in liquid form
`Class 032. First use: First Use: 2011/03/02 First Use In Commerce: 2011/03/02
`Beverages, namely, non-alcoholic non-carbonated drinks enhanced with vitam-
`ins, minerals, nutrients, proteins, amino acids and/or herbs; non-carbonated en-
`ergy or sports drinks, fruit juice drinks having a juice content of 50% or less by
`volume that are shelf-stable; all the foregoing goods exclude perishable bever-
`age products that contain fruit juice or soy,whether such products are pasteur-
`ized or not
`
`U.S. Registration
`No.
`Registration Date
`
`4111964
`
`03/13/2012
`
`Application Date
`
`08/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MONSTER REHAB
`
`NONE
`
`Class 030. First use: First Use: 2011/02/00 First Use In Commerce: 2011/02/00
`
`

`
`Ready to drink tea, iced tea and tea based beverages; ready to drink flavored
`tea, iced tea and tea based beverages
`
`U.S. Registration
`No.
`Registration Date
`
`4376796
`
`07/30/2013
`
`Application Date
`
`07/02/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`MUSCLE MONSTER
`
`NONE
`
`Class 005. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Nutritional supplements in liquid form
`Class 032. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Beverages, namely, soft drinks; non-alcoholic and non-carbonated drinks en-
`hanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs;
`non-carbonated energy or sports drinks; all the foregoing goods exclude perish-
`able beverage products that contain fruit juice or soy, whether such products are
`pasteurized or not
`
`77705822#TMSN.png( bytes )
`77705747#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`77276989#TMSN.png( bytes )
`78246567#TMSN.png( bytes )
`85078405#TMSN.png( bytes )
`85406210#TMSN.png( bytes )
`85077052#TMSN.png( bytes )
`2014-08-18-FINAL NTC OF OPP-85873202-HANBEV.2474M.PDF(470407
`bytes )
`2014-08-15-Exhibit 1 Reg. No. 3908601-HANBEV.2474M.PDF(782795 bytes )
`2014-08-15-Exhibit 2 Reg. No. 3908600-HANBEV.2474M.PDF(780990 bytes )
`2014-08-15-Exhibit 3 Reg. No. 3914828-HANBEV.2474M.PDF(780659 bytes )
`2014-08-15-Exhibit 4 Reg. No. 3923683-HANBEV.2474M.PDF(778971 bytes )
`2014-08-15-Exhibit 5 Reg. No. 4036681-HANBEV.2474M.PDF(875006 bytes )
`2014-08-15-Exhibit 6 Reg. No. 3057061-HANBEV.2474M.PDF(769012 bytes )
`2014-08-18-EXHIBIT 7 REG NO 3134841-HANBEV.2474M.pdf(758906 bytes )
`2014-08-18-EXHIBIT 8 REG NO 3134842-HANBEV.2474M.pdf(759016 bytes )
`2014-08-18-EXHIBIT 9 REG NO 3044314-HANBEV.2474M.pdf(747610 bytes )
`2014-08-18-EXHIBIT 10 REG NO 3044315-HANBEV.2474M.pdf(845095 bytes )
`2014-08-18-EXHIBIT 11 REG NO 4129288-HANBEV.2474M.pdf(861694 bytes )
`2014-08-18-EXHIBIT 12 REG NO 4111964-HANBEV.2474M.pdf(846133 bytes )
`2014-08-18-EXHIBIT 13 REG NO 4376796-HANBEV.2474M.pdf(870214 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`
`/Jonathan Menkes/
`Jonathan Menkes
`
`

`
`Date
`
`08/18/2014
`08/18/2°14
`
`

`
`_ HANBEV.2474M
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MONSTER ENERGY COMPANY,
`Opposer,
`
`v.
`MONSTER, INC.,
`Applicant.
`
`Opposition No.:
`5
`Serial No.: 85/873202
`5
`i Mark: POWERED BY MONSTER
`5
`;
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Monster Energy Company, a Delaware corporation,
`
`located and doing business at
`
`1‘
`
`Monster . Way, Corona, California 92879, (“Opposer”) believes that it will be damaged by
`
`registration of U.S. Trademark Application Serial No. 85/873202 (“Application”) for the mark
`
`POWERED BY MONSTER filed by Monster, Inc. (“Applicant”) and therefore opposes the
`
`same.
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on March 11, 2013, Applicant seeks to obtain registration
`
`on the Principal Register of the trademark POWERED BY MONSTER for “Consulting services in
`
`the field of the design of audio sound systems” in International Class 42.
`
`2.
`
`Since at least 2002, long before the filing date of the Application, Opposer has
`
`been, and still
`
`is, engaged in the development,
`
`licensing, marketing, and sale of energy
`
`

`
`supplement drinks, clothing,
`
`stickers, bags, helmets, and accessories bearing Opposer’s
`
`MONSTER ENERGY and related “MONSTER” marks.
`
`3.
`
`Opposer owns and relies on U.S. Trademark Registration 3,908,601 for the mark
`
`111
`Mi’?-'»‘?" (“M MONSTER ENERGY and Design) for “Clothing, namely, t-shirts, hooded shirts and
`
`hooded sweatshirts, sweat shirts, jackets, pants, bandanas, sweat bands and gloves; headgear,
`
`namely, hats and beanies” in International Class 25, which registration issued January 18, 2011
`
`and is based on an application filed in the United States Patent and Trademark Office (“PTO”) on
`
`April 2, 2009. The filing date of Opposer’s ’601 Registration is prior to the filing date of the
`
`Application. True and correct copies of the specifics of the ’601 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 1 and made of record.
`
`4.
`
`I Opposer owns and relieson U.S. Trademark Registration 3,908,600 for the mark
`
`M MONSTER ENERGY and Design for “Stickers; sticker kits comprising stickers and decals;
`
`decals” in International Class 16, which registration issued January 18, 2011 and is based on an
`
`application filed in the PTO on April 2, 2009. The filing date of Opp0ser’s ’600 Registration is
`
`prior to the filing date of the Application. True and correct copies of the specifics of the ’600
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 2 and made of record.
`
`5.
`
`O Opposer owns and relies on U.S. Trademark Registration 3,914,828 for the mark
`
`M MONSTER ENERGY and Design for “Sports helmets” in lntemational Class 9, which
`
`registration issued February 1, 2011 and_ is based on an application filed in the PTO on April 2,
`
`2009. The filing date of Opposer’s ’828 Registration is prior to the filing date of the Application.
`
`True and correct copies of the specifics of the ’828 Registration obtained from the PTO’s TESS
`
`and Assignment databases are attached hereto as Exhibit 3 and made of record.
`
`

`
`6.
`
`Opposer owns and relies on U.S. Trademark Registration 3,923,683 for the mark
`
`M MONSTER ENERGY and Design for “All purpose sport bags; All-purpose carrying bags;
`
`Backpacks; Duffle bags” in International Class 18, which registration issued Eebruary 22, 2011
`
`and is based on an application filed in the PTO on April 2, 2009. The filing date of Opposer’s
`
`’683 Registration is prior to the filing date of Applicant’s Application. True and correct copies
`
`of the specifics of the ’683 Registration obtained from the PTO’s TESS and Assignment
`
`databases are attached hereto as Exhibit 4 and made of record.
`
`7.
`
`Opposer owns and relies on U.S. Trademark Registration 4,036,681 for the mark
`
`MONSTER ENERGY for “Non-alcoholic beverages, namely, energy drinks, excluding
`
`perishable beverage products that contain fruit juice or soy” in International Class 32, which
`
`registration issued October 11, 2011 and is based on an application filed in the PTO on September
`
`11, 2007. The filing date of Opposer’s ’68l Registration is prior to the filing date of the
`
`Application. True and correct copies of the specifics of the ’68l Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 5 and made of record.
`
`8.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,057,061 for the mark MONSTER ENERGY for “Fruit juice drinks having a juice content of
`
`50% or less by volume that are shelf stable, carbonated soft drinks, carbonated drinks enhanced
`
`with vitamins, minerals, nutrients, amino acids and/or herbs, but excluding perishable beverage
`
`products that contain fruit juice or soy, whether such products are pasteurized or not” in
`
`International Class 32, which registration issued February 7, 2006 and is based on an application
`
`filed in the PTO on April 18, 2002. The filing date of Opposer’s ’06l Registration is prior to the
`
`filing date of the Application. True and correct copies of the specifics of the ’061 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 6 and
`
`

`
`made of record.
`
`9.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,134,841 for
`
`the M MONSTER ENERGY and Design mark for “Beverages, namely,
`
`carbonated soft drinks, carbonated soft drinks enhanced with vitamins, minerals, nutrients, amino
`
`acids and/or herbs, carbonated energy and sports drinks, fruit juice drinks having a juice content
`
`of 50% or less by volume that are shelf stable, but excluding perishable beverage products that
`
`contain fruit juice or soy, whether such products are pasteurized or not” in lntemational Class 32,
`
`which registration issued August 29, 2006 and is based on an application filed in the PTO on
`
`May 7, 2003. The filing date of Opposer’s ’841 Registration is prior to the filing date of the
`
`Application. True and correct copies of the specifics of the ’841 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 7 and made of record.
`
`10.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,134,842 for the mark M MONSTER ENERGY for “Beverages, namely, carbonated soft
`
`drinks, carbonated drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs,
`
`carbonated energy or sports drinks, fruit juice drinks having a juice content of 50% or less by
`
`volume that are shelf stable, but excluding perishable beverage products that contain fruit juice
`
`or soy, whether such products are pasteurized or not” in International Class 32, which
`
`registration issued August 29, 2006 and is based on an application filed in the PTO on May 7,
`
`2003. The filing date of Opposer’s ’842 Registration is prior to the filing date of the Application.
`
`True and correct copies of the specifics of the ’842 Registration obtained from the PTO’s TESS
`
`and Assignment databases are attached hereto as Exhibit 8 and made of record.
`
`11.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,314 for the mark M MONSTER ENERGY for “nutritional supplements in liquid form, but
`
`

`
`excluding perishable beverage products that contain fruit juice or soy, whether such products are
`
`pasteurized or not” in International Class 5, which registration issued January 17, 2006 and is
`
`based on an application filed in the PTO on May 23, 2003. The filing date of Opposer’s ’314
`
`Registration is prior to the filing date of the Application. True and correct copies of the specifics
`
`of the ’314 Registration obtained from the PTO’s TESS and Assignment databases are attached
`hereto_as Exhibit 9 and made of record.
`H
`
`12.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,315 for the mark MONSTER ENERGY for “nutritional supplements in liquid form, but
`
`excluding perishable beverage products that contain fruit juice or soy, whether such products are
`
`pasteurized or not” in International Class 5, which registration issued January 17, 2006 and is
`
`based on an application filed in the PTO on May 23, 2003. The filing date of Opposer’s ’315
`
`Registration is prior to the filing date of the Application. True and correct copies of the specifics
`
`of the ’315 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 10 and made of record.
`
`13.
`
`I Opposer owns and relies on US. Trademark Registration No. 4,129,288 for the
`
`mark MONSTER REHAB for “Nutritional supplements in liquid form” in International Class 5
`
`and for “Beverages, "namely, non-alcoholic non—carbonated drinks enhanced with vitamins,
`
`minerals, nutrients, proteins, amino acids and/or herbs; non—carbonated energy or sports drinks,
`
`fruit juice drinks having a juice content of 50% or less by volume that are shelf-stable; all the
`
`foregoing goods exclude perishable beverage products that contain fruit juice or soy, whether
`
`such products are pasteurized or not” in International Class 32, which registration issued April
`
`17, 2012 and is based on an application filed in the PTO on July 6, 2010. The filing date of
`
`Opposer’s ’288 Registration is prior to the filing date of the Application. True and correct copies
`
`

`
`of the specifics of the ’288 Registration obtained from the PTO’s TESS and Assignment
`
`databases are attached hereto as Exhibit 11 and made of record.
`
`14.
`
`Opposer owns and relies on U.S. Trademark Registration No. 4,111,964 for the
`
`mark MONSTER REHAB for “Ready to drink tea, iced tea and tea based beverages; ready to
`
`drink flavored tea, iced tea and tea based beverages” in International Class 30, which registration
`
`issued March 13, 2012 and is based on an application filed in the PTO on August 24, 2011. The
`
`filing ‘date of Opposer’s ’964 Registration is prior to the filing date of the Application. True and
`
`correct copies of the specifics of the ’964 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 12 and made of record.
`
`15.
`
`Opposer owns and relies on US. Trademark Registration No. 4,376,796 for the
`
`mark MUSCLE MONSTER for “Nutritional supplements in liquid form” in International Class
`
`5, and “Beverages, namely, soft drinks; non—alcohol_ic and non-carbonated drinks enhanced with
`
`vitamins, minerals, nutrients, proteins, amino acids and/or herbs; non-carbonated energy or
`
`sports drinks; all the foregoing goods exclude perishable beverage products that contain fruit
`
`juice or soy, whether such products are pasteurized or not” in International Class 32, which
`
`registration issued July 30, 2013 and is based on an application filed in the PTO on July 2, 2010.
`
`The filing date of Opposer’s ’796 Registration is prior to the filing date of the Application. True
`
`and correct copies of the specifics of the ’796 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 13 and made of record.
`
`16.
`
`Opposer’s Registration Nos.
`
`3,908,601,
`
`3,908,600,
`
`3,914,828, 3,923,683,
`
`4,036,681, 3,057,061, 3,134,841, 3,134,842, 3,044,314, 3,044,315, 4,129,288, 4,111,964, and
`
`4,376,796 are valid, subsisting, unrevoked, and uncancelledg as such they constitute prima facie
`
`evidence of the validity of the registered marks and of the registrations thereof, and of Opposer’s
`
`

`
`ownership of the marks shown therein. Opposer’s registrations also constitute notice to Applicant
`
`of Opposer’s claim of ownership of the marks shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act.
`
`17.
`
`Opposer’s registrations as specified in Paragraphs 8, 9, 10, 11, and 12 above are
`
`incontestable. As such, they constitute conclusive evidence of the validity of the registered marks
`
`and of the registration of the marks, of Opposer’s ownership of its marks, and of Opposer’s
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`exclusive right to use the registered marks in commerce as provided in Section 33 of the Lanham
`
`Act, 15 U.S.C. § 1115.
`
`18.
`
`Since at least before the filing date of the Application, Opposer has ‘continuously
`
`used and promoted the M MONSTER ENERGY and Design, MONSTER ENERGY, and M
`MONSTER ENERGY Marks shown in Registration Nos. 3,908,601, 3,908,600, 3,914,828,
`
`3,923,683, 4,036,681, 3,057,061, 3,134,841, 3,134,842, 3,044,314,
`
`and 3,044,315 (the
`
`“MONSTER Marks”) in interstate commerce in connection with its goods, including the goods
`
`identified in such Registrations. By virtue of Opposer’s continuous and substantial use, these marks
`
`have become famous identifiers of Opposer and its goods, and distinguish Opposer’s goods from
`
`the goods of others. As a result, Opposer has built up, at great expense and effort, valuable goodwill
`
`in the MONSTER Marks.
`
`19.
`
`Since at least before the filing date of the Application, Opposer has continuously
`
`used and promoted the MONSTER REHAB and MUSCLE MONSTER marks shown in
`
`Registration Nos. 4,129,288, 4,111,964, and 4,376,796 in interstate commerce in connection with
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`its goods, including the goods identified in such Registrations. By virtue of Opposer’s continuous
`
`and substantial use, these marks have become famous identifiers of Opposer and its goods, and
`
`distinguish Opposer’s goods from the goods of others. As a result, Opposer has built up, at great
`
`

`
`expense and effort, valuable goodwill in the MONSTER Marks.
`
`20.
`
`In addition to the MONSTER Marks and the MONSTER REHAB and MUSCLE
`
`MONSTER marks, since at least before the filing date of the Application Opposer has extensively
`
`used other “MONSTER” formative marks in connection with beverages and supplements, including
`
`MONSTER KHAOSTM and MONSTER ASSAULTTM.
`
`21.
`By virtue of Opposer’s continuous and substantial use, the MONSTER Marks,
`MONSTER KHAOSTM, and MONSTER ASSAULTTM marks have become famous identifiers of
`
`Opposer such that consumers have come to recognize a family of “MONSTER” marks with
`
`which Opposer markets and sells its goods (collectively referred to as “Family of MONSTER
`
`Marks”). As a result, Opposer has built up, at great expense and effort, valuable goodwill in its
`
`Family of MONSTER Marks.
`
`22.
`
`In addition to the protection afforded Opposer by its
`
`federal
`
`trademark
`
`registrations, Opposer has extensive common law rights in its Family of MONSTER Marks
`
`throughout the United States, having sold billions of dollars worth of goods under Opposer’s
`
`Family of MONSTER Marks. Opposer’s common law rights in its Family of MONSTER Marks
`
`predate the filing of the Application. Opposer relies on its common law trademark rights in
`
`Opposer’s Family of MONSTER Marks.
`
`23.
`
`Opposer has used and continues to use its MONSTER _Marks extensively in
`
`connection with energy supplement drinks, clothing, accessories, stickers, decals, bags, helmets,
`
`and sports gear since well before the filing date of the Application.
`
`24.
`
`Opposer’s Family of _MONSTER Marks have become famous for Opposer’s
`
`goods since well before the filing date of the Application. Opposer’s famous MONSTER Marks
`
`are global brands that have appeared on billions of beverage cans, on clothing, accessories,
`
`

`
`sports gear, and in extensive nationwide promotions. These promotions include, among other
`
`things, sponsorship of music festivals, athletes, sports teams and sports events.
`
`25.
`
`I The Application was filed on March 11, 2013, and is based on.Applicant’s intent-to-
`
`use the mark in interstate commerce.
`
`26.
`
`Applicant seeks an unrestricted federal registration for POWERED BY MONSTER
`
`covering the services in International Classes 42 set forth in the Application. As such, if a
`
`registration issues for the Application, such registration will constitute prima facie evidence of
`
`the Applicant’s exclusive right to use the registered mark in commerce on or in connection with
`
`the listed services throughout the United States with no limitation thereon.
`
`27.
`
`Opposer will be damaged by registration of the Application in that the POWERED
`
`BY MONSTER mark so resembles Opposer’s MONSTER Marks registered in the United States
`
`Patent and Trademark Office, and in which Opposer owns common law trademark rights, as to be
`
`likely, when used on or in connection with the services as they are identified in the Application, as
`
`to cause confusion, or to cause mistake or to deceive within the meaning of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § lO52(_d).
`
`28.
`
`In view of Opposer’s prior rights in its MONSTER Marks, Applicant is not entitled
`
`to federal registration of the POWERED BY MONSTER mark pursuant to Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052(d).
`
`29.
`
`Opposer will be damaged by registration of the Application in that the POWERED
`
`BY MONSTER mark will dilute the distinctive qualities of Opposer’s MONSTER Marks within
`
`the meaning of Section 43(c) of the Trademark Act, 15 U.S.C. 1l25(c), and will lessen the ability of
`
`Opposer’s MONSTER Marks to distinguish Opposer’s goods.
`
`30.
`
`In View of Opposer’s prior rights in its MONSTER Marks, Applicant is not entitled
`
`

`
`to federal registration of the POWERED BY MONSTER mark pursuant to Section 43(c) of the
`
`Trademark Act, 15 U.S.C. § 1125(c).
`
`WHEREFORE, Opposer prays that U.S. Trademark Application Serial No. 85/873202 be
`
`rejected and stricken, that no registration be issued thereon to Applicant, and that this opposition
`
`be sustained in favor of Opposer.
`
`Please charge Deposit Account No. 11-1410 to cover the opposition fee and any additional
`
`fees which may be required, or credit any overpayment to this account.
`
`Dated:
`'
`
`K I6 "1
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By:
`
`
`
`ataupsky
`Diane M. Reed
`
`
`
`Jonathan A. Menkes
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`efiling@knobbe.com
`Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`10
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF OPPOSITION has
`
`been served on Matthew Powelson, Attorney for Applicant, by mailing said copy on August 18,
`
`2014, via Priority Mail, postage prepaid to:
`
`Matthew Powelson
`
`321 Law, Inc.
`P.O. Box 911
`
`Monterey, CA 93942-0911
`
`Signati/ '
`
`/;/————'
`
`Name: Francisca C. Leon Guerrero
`
`Date: Au ust 18 2014
`
`18088081/flg/052814
`
`11
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 1
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 1 Page 1 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 1 Page 2 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 1 Page 3 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 1 Page 4 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 2
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 2 Page 1 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 2 Page 2 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 2 Page 3 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 2 Page 4 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 3
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 3 Page 1 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 3 Page 2 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 3 Page 3 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 3 Page 4 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 4
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 4 Page 1 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 4 Page 2 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 4 Page 3 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 4 Page 4 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 5
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 5 Page 1 of 5
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 5 Page 2 of 5
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 5 Page 3 of 5
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 5 Page 4 of 5
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 5 Page 5 of 5
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`Notice of Opposition
`Serial No. 85/873202
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`
`
`EXHIBIT 6
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 6 Page 1 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Company v. Monster, Inc.
`
`
`Exhibit 6 Page 2 of 4
`
`Notice of Opposition
`Serial No. 85/873202
`
`

`
`TTAB Opposition No. ____________
`Monster Energy Com