Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA883005
`03/13/2018
`
`ESTTA Tracking number:
`
`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
`
`Monster Energy Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`03/14/2018
`
`1 Monster Way
`Corona, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`Diane M. Reed
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`Email: efiling@knobbe.com, MEC.TTAB@knobbe.com
`Phone: 949-760-0404
`
`Applicant Information
`
`Application No
`
`87522526
`
`Publication date
`
`11/14/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`03/13/2018
`
`Opposition Peri-
`od Ends
`
`03/14/2018
`
`Shenzhen Xinchengzhanye Technology Co.,Ltd.
`6F, Bldg 5, Baimenqian Industrial Zone
`Nanwan Street Longgang District,
`Shenzhen
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 2016/07/30 First Use In Commerce: 2016/08/08
`All goods and services in the class are opposed, namely: Anti-skid chains for vehicles; Anti-theft
`devices for vehicles; Automobile windshield sunshades; Automobile windshields; Bodies for vehicles;
`Brakes for vehicles; Direction signals for vehicles; Head-rests for vehicle seats; Horns for vehicles;
`Land vehicle parts in the nature of wire harnesses, namely, wires, terminals and connectors bundled
`together to transmit electric power and signals to electric or electronic equipment mounted onthe
`body parts of automobiles; Petrol tank caps for motor cars; Rearview mirrors; Spoilers for vehicles;
`Tires; Trailerhitches for vehicles; Upholstery for vehicles; Windshield wiper blades; Fitted seat covers
`for vehicles; Motors for land vehicles; Valves for vehicle tires; Vehicle parts, namely, windshield
`wipers; Vehicle running boards
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common law rights as asserted in the Notice of
`Opposition
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4721433
`
`Registration Date
`
`04/14/2015
`
`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Application Date
`
`03/12/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/01/04 First Use In Commerce: 2003/01/04
`Promoting goods and services in the sports, motorsports, electronic sports,
`andmusic industries through the distribution of printed, audio and visual promo-
`tional materials; promoting sports and music events and competitions for others
`
`U.S. Registration
`No.
`
`4376796
`
`Registration Date
`
`07/30/2013
`
`Word Mark
`
`Design Mark
`
`MUSCLE MONSTER
`
`Application Date
`
`07/02/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`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
`
`U.S. Registration
`
`4451535
`
`Application Date
`
`07/10/2013
`
`

`

`No.
`
`Registration Date
`
`12/17/2013
`
`Word Mark
`
`Design Mark
`
`MUSCLE MONSTER
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Vitamin fortified beverages
`Class 029. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Dairy-based beverages; dairy-based energy shakes; energy shakes; coffee en-
`ergy shakes; chocolate energy shakes
`Class 030. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Ready to drink coffee based beverages; ready to drink chocolate-based bever-
`ages
`
`U.S. Registration
`No.
`
`4036681
`
`Registration Date
`
`10/11/2011
`
`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Application Date
`
`09/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`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.
`
`3057061
`
`Registration Date
`
`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.
`
`3044315
`
`Registration Date
`
`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.
`
`4036680
`
`Registration Date
`
`10/11/2011
`
`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Application Date
`
`09/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Nutritional supplements in liquid form
`
`U.S. Registration
`No.
`
`3134842
`
`Registration Date
`
`08/29/2006
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`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.
`
`3044314
`
`Registration Date
`
`01/17/2006
`
`Application Date
`
`05/23/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`M 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.
`
`3908601
`
`Registration Date
`
`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.
`
`3908600
`
`Registration Date
`
`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 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.
`
`3923683
`
`Registration Date
`
`02/22/2011
`
`Word Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`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.
`
`3914828
`
`Registration Date
`
`02/01/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`
`

`

`Mark
`
`ENERGY".
`
`Goods/Services
`
`Class 009. First use: First Use: 2006/01/00 First Use In Commerce: 2006/01/00
`Sports helmets
`
`U.S. Registration
`No.
`
`4332062
`
`Registration Date
`
`05/07/2013
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`10/05/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" to the left of the stylized words "MON-
`STER ENERGY".
`
`Class 014. First use: First Use: 2006/12/00 First Use In Commerce: 2006/12/00
`Silicone wrist bands; Silicone bracelets; Jewelry, namely, bracelets and wrist-
`bands
`
`Attachments
`
`86219332#TMSN.png( bytes )
`85077052#TMSN.png( bytes )
`86006264#TMSN.png( bytes )
`77276989#TMSN.png( bytes )
`77276979#TMSN.png( bytes )
`77705822#TMSN.png( bytes )
`77705747#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`85747244#TMSN.png( bytes )
`2018-03-13 FINAL NOTICE OF OPPOSITION-
`87522526-HANBEV.6994M.pdf(212865 bytes )
`Exhibit 01 Reg No. 4721433-HANBEV.6994M.pdf(591239 bytes )
`Exhibit 02 Reg No. 4376796-HANBEV.6994M.pdf(598870 bytes )
`Exhibit 03 Reg No. 4451535-HANBEV.6994M.pdf(594471 bytes )
`Exhibit 04 Reg No. 4036681-HANBEV.6994M.pdf(592411 bytes )
`Exhibit 05 Reg No. 3057061-HANBEV.6994M.pdf(578930 bytes )
`
`

`

`Exhibit 06 Reg No. 3044315-HANBEV.6994M.pdf(584346 bytes )
`Exhibit 07 Reg No. 4036680-HANBEV.6994M.pdf(590400 bytes )
`Exhibit 08 Reg No. 3134842-HANBEV.6994M.pdf(579976 bytes )
`Exhibit 09 Reg No. 3044314-HANBEV.6994M.pdf(574733 bytes )
`Exhibit 10 Reg No. 3908601-HANBEV.6994M.pdf(1065932 bytes )
`Exhibit 11 Reg No. 3908600-HANBEV.6994M.pdf(1037926 bytes )
`Exhibit 12 Reg No. 3923683-HANBEV.6994M.pdf(1040553 bytes )
`Exhibit 13 Reg No. 3914828-HANBEV.6994M.pdf(1024275 bytes )
`Exhibit 14 Reg No. 4332062-HANBEV.6994M.pdf(1130887 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Diane M. Reed/
`
`Diane M. Reed
`
`03/13/2018
`
`

`

`HANBEV.6994M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Opposition No.: ___________
`
`
`Serial No.: 87/522526
`
`Mark: GEARMONSTER
`
`) ) ) ) ) ) ) ) ) ) ) ) )
`
`
`MONSTER ENERGY COMPANY,
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`SHENZHEN XINCHENGZHANYE
`TECHNOLOGY CO., LTD.,
`
`
`
`Applicant.
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Dear Sir:
`
`
`
`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. 87/522526 (the “Application”) for the
`
`mark GEARMONSTER
`
`filed by Shenzhen Xinchengzhanye Technology Co., Ltd.,
`
`(“Applicant”) and therefore opposes the same.
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on July 10, 2017, Applicant seeks to obtain registration on
`
`the Principal Register of the trademark GEARMONSTER for “Anti-skid chains for vehicles;
`
`Anti-theft devices for vehicles; Automobile windshield sunshades; Automobile windshields;
`
`- 1 -
`
`

`

`Bodies for vehicles; Brakes for vehicles; Direction signals for vehicles; Head-rests for vehicle
`
`seats; Horns for vehicles; Land vehicle parts in the nature of wire harnesses, namely, wires,
`
`terminals and connectors bundled together to transmit electric power and signals to electric or
`
`electronic equipment mounted on the body parts of automobiles; Petrol tank caps for motor cars;
`
`Rearview mirrors; Spoilers for vehicles; Tires; Trailer hitches for vehicles; Upholstery for
`
`vehicles; Windshield wiper blades; Fitted seat covers for vehicles; Motors for land vehicles;
`
`Valves for vehicle tires; Vehicle parts, namely, windshield wipers; Vehicle running boards” in
`
`International Class 12 based on Applicant’s alleged use of the mark in commerce since August 8,
`
`2016.
`
`2.
`
`Since at least 2002, long before the filing date and alleged first use date of the
`
`Application, Opposer has been, and still is, engaged in the development, marketing, and/or sale
`
`of energy drinks, nutritional supplements, clothing, stickers, bags, helmets, and other products
`
`under the marks MONSTERTM, MONSTER ENERGY®, and related marks, all containing
`
`“MONSTER.” Opposer’s family of MONSTERTM Marks includes, for example, at least the
`
`following: MONSTER, MUSCLE MONSTER, MONSTER ENERGY, M MONSTER
`
`ENERGY,
`
`, and
`
` (hereinafter collectively the “MONSTERTM Marks”).
`
`3.
`
`Since at least 2003, Opposer has and continues to extensively promote its
`
`MONSTERTM Marks in connection with motorsports events, including, but not limited to, stunt
`
`driving, Formula 1 Racing, NASCAR, Motocross, MotoGP, Supercross, and desert racing, as
`
`shown below:
`
`- 2 -
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 3 -
`
`

`

`
`
`4.
`
`MEC also sponsors athletes or athletic teams who compete in a wide-variety of
`
`sports, including, but not limited to motocross, MotoGP, AMA Superbike, Supercross, World
`
`Superbike, Formula 1, NASCAR, surfing, skateboarding, wakeboarding, skiing, snowboarding,
`
`BMX, mountain biking, snowmobile racing, off-road racing, and off-road truck racing. Many of
`
`the events that the MEC-sponsored athletes and athletic teams compete in are broadcast
`
`nationally on television, and all of them prominently display one or more of the MONSTERTM
`
`Marks.
`
`5.
`
`Further, since at least before the filing date and alleged first use date of the
`
`Application, Opposer has continuously used and promoted its MONSTERTM Marks. Opposer’s
`
`family of MONSTERTM Marks is the subject of substantial and continuous marketing and
`
`promotion by Opposer in connection with its energy drinks, nutritional supplements, clothing,
`
`stickers, bags, helmets, and numerous other items. Opposer has and continues to widely market
`
`and promote its family of MONSTERTM Marks in the industry and to consumers by, for
`
`example, displaying the MONSTERTM Marks extensively on billions of cans of beverages and
`
`nutritional supplements; on apparel, merchandise, and on product samplings; on promotional and
`
`point of sale materials; in magazines and other industry publications; on the monsterenergy.com
`
`- 4 -
`
`

`

`website, monsterarmy.com website and other Internet websites and social media sites; and at
`
`trade shows, concert tours and live events. In addition, Opposer promotes the MONSTERTM
`
`Marks through, for example, the sponsorship of music festivals, athletes, and sports events that
`
`are televised nationwide and internationally.
`
`6.
`
`By virtue of Opposer’s continuous and substantial use, the MONSTERTM Marks
`
`have become famous identifiers of Opposer such that consumers have come to recognize a family
`
`of MONSTERTM Marks with which Opposer markets and sells its goods. As a result, Opposer
`
`has built up, at great expense and effort, valuable goodwill in its family of MONSTERTM Marks
`
`and has developed strong common law rights in Opposer’s MONSTERTM Marks, which have
`
`appeared on billions of cans and in extensive nationwide promotions. Opposer’s common law
`
`rights in its family of MONSTERTM Marks predate the filing date and alleged first use date of the
`
`Application, and Opposer relies on its common law trademark rights.
`
`7.
`
`In addition to Opposer’s common law rights, Opposer owns and relies on U.S.
`
`Trademark Registration 4,721,433 (the “‘433 Registration”) for the mark MONSTER ENERGY
`
`for “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” in International Class 35, which registration
`
`issued April 14, 2015 and is based on an application filed in the United States Patent and
`
`Trademark Office (“PTO”) on March 12, 2014. The filing date of Opposer’s ‘433 Registration is
`
`prior to the filing date and alleged first use date of the Application. True and correct copies of the
`
`specifics of the ’433 Registration obtained from the PTO’s TSDR, TESS and Assignment
`
`databases are attached hereto as Exhibit 1 and made of record.
`
`
`
`- 5 -
`
`

`

`8.
`
` Opposer owns and relies on U.S. Trademark Registration No. 4,376,796 (the
`
`“‘796 Registration”) for the mark MUSCLE MONSTER for “nutritional supplements in liquid
`
`form” in International Class 5 and for “beverages, namely, soft drinks; non-alcoholic and
`
`noncarbonated 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 and alleged first use 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 2 and made of record.
`
`9.
`
`Opposer owns and relies on U.S. Trademark Registration No. 4,451,535 (the
`
`“‘535 Registration”) for the mark MUSCLE MONSTER for “vitamin fortified beverages” in
`
`International Class 5, for “dairy-based beverages; dairy-based energy shakes; energy shakes; coffee
`
`energy shakes; chocolate energy shakes” in International Class 29 and for “ready to drink coffee
`
`based beverages; ready to drink chocolate-based beverages” in International Class 30, which
`
`registration issued December 17, 2013 and is based on an application filed in the PTO on July 10,
`
`2013. The filing date of Opposer’s ’535 Registration is prior to the filing date and alleged first use
`
`date of the Application. True and correct copies of the specifics of the ’535 Registration obtained
`
`from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 3 and made of
`
`record.
`
`10.
`
` Opposer owns and relies on incontestable U.S. Trademark Registration 4,036,681
`
`(the “‘681 Registration”) for the mark MONSTER ENERGY for “non-alcoholic beverages,
`
`- 6 -
`
`

`

`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 ‘681 Registration is prior to
`
`the filing date and alleged first use date of the Application. True and correct copies of the specifics
`
`of the ’681 Registration obtained from the PTO’s TSDR, TESS and Assignment databases are
`
`attached hereto as Exhibit 4 and made of record.
`
`11.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,057,061 (the “‘061 Registration”) 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 ‘061
`
`Registration is prior to the filing date and alleged first use date of the Application. True and correct
`
`copies of the specifics of the ’061 Registration obtained from the PTO’s TSDR, TESS and
`
`Assignment databases are attached hereto as Exhibit 5 and made of record.
`
`12.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,315 (the “‘315 Registration”) 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 and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’315 Registration obtained from the
`
`- 7 -
`
`

`

`PTO’s TSDR, TESS and Assignment databases are attached hereto as Exhibit 6 and made of
`
`record.
`
`13.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 4,036,680
`
`(the “‘680 Registration”) for the mark MONSTER ENERGY for “nutritional supplements in
`
`liquid form” in International Class 5, 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 ‘680
`
`Registration is prior to the filing date and alleged first use date of the Application. True and correct
`
`copies of the specifics of the ’680 Registration obtained from the PTO’s TSDR, TESS and
`
`Assignment databases are attached hereto as Exhibit 7 and made of record.
`
`14.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,134,842 (the “‘842 Registration”) 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 and alleged first use date of the Application. True and correct copies of the specifics of
`
`the ’842 Registration obtained from the PTO’s TSDR, TESS and Assignment databases are attached
`
`hereto as Exhibit 8 and made of record.
`
`15.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,314 (the “‘314 Registration”) for the mark M MONSTER ENERGY for “nutritional
`
`supplements in liquid form, but excluding perishable beverage products that contain fruit juice or
`
`- 8 -
`
`

`

`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 and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’314 Registration obtained from the
`
`PTO’s TSDR, TESS and Assignment databases are attached hereto as Exhibit 9 and made of record.
`
`16.
`
` Opposer owns and relies on incontestable U.S. Trademark Registration 3,908,601
`
`for the mark
`
` 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 PTO on April 2, 2009. The filing date of Opposer’s ‘601 Registration is
`
`prior to the filing date and alleged first use date of the Application. True and correct copies of the
`
`specifics of the ’601 Registration obtained from the PTO’s TSDR, TESS and Assignment
`
`databases are attached hereto as Exhibit 10 and made of record.
`
`17.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,908,600
`
`for the mark
`
` 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 Opposer’s ‘600 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics of
`
`the ’600 Registration obtained from the PTO’s TSDR, TESS and Assignment databases are
`
`attached hereto as Exhibit 11 and made of record.
`
`- 9 -
`
`

`

`18.
`
`Opposer owns and relies on U.S. Trademark Registration 3,923,683 for the mark
`
` for “all purpose sport bags; all-purpose carrying bags; backpacks; duffle bags” in
`
`International Class 18, which registration issued February 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 and alleged first use date of the 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 12 and made of record.
`
`19.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,914,828
`
`for the mark
`
` for “sports helmets” in International 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 and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’828 Registration obtained from the
`
`PTO’s TSDR, TESS and Assignment databases are attached hereto as Exhibit 13 and made of
`
`record.
`
`20.
`
`Opposer owns and relies on U.S. Trademark Registration 4,332,062 for the mark
`
` for “silicone wrist bands; silicone bracelets; jewelry, namely, bracelets and
`
`wristbands” in International Class 14, which registration issued May 7, 2013 and is based on an
`
`application filed in the PTO on October 5, 2012. The filing date of Opposer’s ‘062 Registration is
`
`prior to the filing date and alleged first use date of the Application. True and correct copies of the
`
`- 10 -
`
`

`

`specifics of the ’062 Registration obtained from the PTO’s TSDR, TESS and Assignment
`
`databases are attached hereto as Exhibit 14 and made of record.
`
`21.
`
`Opposer’s foregoing Registrations are valid, subsisting, unrevoked and uncancelled;
`
`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.
`
`22.
`
`Opposer’s Registration Nos. 4,036,681, 3,057,061, 3,044,315, 3,134,842,
`
`3,044,314, 4,036,680, 3,908,601, 3,908,600, and 3,914,828 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 exclusive right to use the registered
`
`marks in commerce as provided in Section 33 of the Lanham Act, 15 U.S.C. § 1115.
`
`23.
`
`Since at least before the filing date and alleged first use date of the Application,
`
`Opposer has continuously used and promoted the foregoing MONSTERTM Marks in interstate
`
`commerce in connection with its goods and services, including the goods and/or services identified
`
`in such Registrations. In addition, Opposer’s MONSTERTM Marks, or at the very least some of the
`
`MONSTERTM Marks, were well established and famous long before Applicant filed its application
`
`to register the GEARMONSTER mark.
`
`24.
`
`Applicant seeks an unrestricted federal registration for GEARMONSTER covering
`
`the goods set forth in the Application in Class 12. As such, if a registration issues for the
`
`Application, such registration will constitute prima facie evidence of the Applicant’s exclusive
`
`
`
`- 11 -
`
`

`

`right to use the registered mark in commerce on or in connection with the listed goods
`
`throughout the United States with no limitation thereon.
`
`25.
`
`Opposer will be damaged by registration of the Application in that the
`
`GEARMONSTER mark so resembles Opposer’s MONSTERTM Marks, including as 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 goods 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. § 1052(d).
`
`26.
`
`In view of Opposer’s prior rights in its MONSTERTM Marks, Applicant is not
`
`entitled to federal registration of the GEARMONSTER mark pursuant to Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052(d).
`
`WHEREFORE, Opposer prays that U.S. Trademark Application Serial No. 87/522526 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: March 13, 2018
`
`
`
`
`
`
`
`
`
`
`
`27313939
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Diane M. Reed/
`
`Steven J. Nataupsky
` Diane M. Reed
`
`Jonathan A. Menkes
` Michael R. Garcia
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`efiling@knobbe.com
`Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`- 12 -
`
`

`

`
`
`
`
`
`
`TTAB Opposition No. ____________
`Monster Energy Company v. Shenzhen Xinchengzhanye Technology Co., Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`
`Notice of Opposition
`Serial No. 87/522526
`
`

`

`TTAB Opposition No. ____________
`Monster Energy Company v. Shenzhen Xinchengzhanye Technology Co., Ltd.
`Trademark Electronic Search System (TESS)
`
`Un it e d St a t e s Pa t e n t a n d Tr a de m a r k Office
`
`H om e| Sit e I n de x| Se a r ch| FAQ| Glossa r y| Gu ide s| Con t a ct s| e Bu sin e ss| e Biz a le r t s| N e w s| H e lp
`
` Trademarks > Trademark Electronic Search System (TESS)
`
`
`
`TESS was last updated on Tue Mar 13 04:51:02 EDT 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LogoutLogout
`
` Please logout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`
`
`
`
` ( Use the "Back" button of the Internet Browser to return to TESS)
`
`Word Mark MONSTER ENERGY
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark
`Drawing
`Code
`
`Serial
`Number
`
`IC 035. US 100 101 102. G & S: 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. FIRST USE: 20030104. FIRST USE IN COMMERCE: 20030104
`
`(4) STANDARD CHARACTER MARK
`
`86219332
`
`Filing Date March 12, 2014
`
`Current
`Basis
`
`Original
`Filing Basis
`
`Published for
`Opposition
`
`Registration
`Number
`
`Registration
`Date
`
`1A
`
`1B
`
`June 3, 2014
`
`4721433
`
`April 14, 2015
`
`Owner
`
`(REGISTRANT) Monster Energy Company CORPORATION DELAWARE 1 Monster Way Corona CALIFORNIA 92879
`
`Attorney of
`Record
`
`Prior
`Registrations
`
`Diane M. Reed
`
`3044315;3057061;4036681;AND OTHERS
`
`Type of Mark SERVICE MARK
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:9zu3ig.2.1[3/13/2018 1:15:54 PM]
`Exhibit 1 Page 1 of 4
`
`Notice of Opposition
`Serial No. 87/522526
`
`

`

`TTAB Opposition No. ____________
`Monster Energy Company v. Shenzhen Xinchengzhanye Technology Co., Ltd.
`Trademark Electronic Search System (TESS)
`
`Register
`
`PRINCIPAL
`
`Live/Dead
`Indicator
`
`LIVE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:9zu3ig.2.1[3/13/2018 1:15:54 PM]
`Exhibit 1 Page 2 of 4
`
`Notice of Opposition
`Serial No. 87/522526
`
`

`

`TTAB Opposition No. ____________
`Monster Energy Company v. Shenzhen Xinchengzhanye Technology Co., Ltd.
`USPTO Ass