Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA944815
`01/02/2019
`
`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
`
`01/02/2019
`
`1 Monster Way
`Corona, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`ALEXANDER D. ZENG
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`949-760-0404
`
`Applicant Information
`
`Application No
`
`87820055
`
`Publication date
`
`09/04/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`01/02/2019
`
`Opposition Peri-
`od Ends
`
`01/02/2019
`
`SUTONG TIRE RESOURCES INC.
`33402 HIGHWAY 290 SUITE A
`HOCKLEY, TX 77447
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 2017/06/15 First Use In Commerce: 2017/06/15
`All goods and services in the class are opposed, namely: Tires, including tires for passenger, light
`and large trucks, and for all terrain vehicles; lawn and garden tires
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`All common law rights as asserted in the Notice
`of Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4051650
`
`Application Date
`
`07/28/2010
`
`Registration Date
`
`11/08/2011
`
`Foreign Priority
`
`NONE
`
`
`ESTTA944815
`01/02/2019
`
`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
`
`01/02/2019
`
`1 Monster Way
`Corona, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`ALEXANDER D. ZENG
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`949-760-0404
`
`Applicant Information
`
`Application No
`
`87820055
`
`Publication date
`
`09/04/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`01/02/2019
`
`Opposition Peri-
`od Ends
`
`01/02/2019
`
`SUTONG TIRE RESOURCES INC.
`33402 HIGHWAY 290 SUITE A
`HOCKLEY, TX 77447
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 2017/06/15 First Use In Commerce: 2017/06/15
`All goods and services in the class are opposed, namely: Tires, including tires for passenger, light
`and large trucks, and for all terrain vehicles; lawn and garden tires
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`All common law rights as asserted in the Notice
`of Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4051650
`
`Application Date
`
`07/28/2010
`
`Registration Date
`
`11/08/2011
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`M
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter M in the form of a claw.
`
`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.
`
`3908601
`
`Registration Date
`
`01/18/2011
`
`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 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.
`
`4721432
`
`Registration Date
`
`04/14/2015
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`03/12/2014
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letter "M" in the form of a claw.
`
`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.
`
`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
`
`U.S. Registration
`No.
`
`4822675
`
`Registration Date
`
`09/29/2015
`
`Word Mark
`
`M
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 022. First use: First Use: 2006/12/20 First Use In Commerce: 2006/12/20
`Lanyards; Lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
`telephones, badges, identification cards,event passes, media passes, photo-
`graphs, recording equipment, or similar conveniences
`
`U.S. Registration
`No.
`
`4660598
`
`Registration Date
`
`12/23/2014
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw to the left ofthe
`stylized words "MONSTER ENERGY". The word "MONSTER" appears above
`the word "ENERGY" and features a slash mark through the letter "O".
`
`Class 022. First use: First Use: 2006/12/20 First Use In Commerce: 2006/12/20
`Lanyards; Lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
`telephones, badges, identification cards,event passes, media passes, photo-
`
`
`
`graphs, recording equipment, or similar conveniences
`
`U.S. Registration
`No.
`
`3963669
`
`Registration Date
`
`05/17/2011
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 018. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`All purpose sport bags; all-purpose carrying bags; backpacks; duffel bags
`
`U.S. Registration
`No.
`
`3963668
`
`Registration Date
`
`05/17/2011
`
`Word Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 016. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Stickers; sticker kits comprising stickers and decals; decals; posters
`
`U.S. Registration
`No.
`
`3923683
`
`Registration Date
`
`02/22/2011
`
`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 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
`Mark
`
`Goods/Services
`
`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.
`
`2903214
`
`Registration Date
`
`11/16/2004
`
`Word Mark
`
`M
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Drinks, namely, carbonated soft drinks,carbonated drinks enhanced with vitam-
`ins, 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, [ andwater; ]*but excluding perish-
`able beverage products that contain fruit juice orsoy, whether such products are
`pasteurized or not.*
`
`U.S. Registration
`No.
`
`3434821
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`M
`
`Application Date
`
`09/07/2007
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letter "m" in the form of a claw.
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Nutritional supplements
`
`U.S. Registration
`No.
`
`3434822
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`09/07/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of the letter "m" in the form of a claw.
`
`Goods/Services
`
`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.
`
`3134841
`
`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 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.
`
`5551230
`
`Registration Date
`
`08/28/2018
`
`Word Mark
`
`M MONSTER ARMY
`
`Application Date
`
`02/12/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`The mark consists of a bird with outspread wings with a shield over its chest
`bearing a stylized letter "M" with the word "MONSTER ARMY" written between
`two five-pointed stars on a ribbon below the shield. The bottom of the bird and
`three five-pointed starts appear below the ribbon.
`
`Class 025. First use: First Use: 2010/05/00 First Use In Commerce: 2010/05/00
`Clothing, namely, tops, shirts, T-shirts, hooded shirts, sweat shirts, and jackets
`Class 041. First use: First Use: 2005/05/00 First Use In Commerce: 2005/05/00
`Providing a web site featuring entertainment information and news on athletes;
`organizing and conducting educational programs and activities in the nature of
`classes, workshops, and sports competitions for athletes in the field of athlete
`development; athlete development program, namely, athlete training and ment-
`oringin the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX,
`and skate
`
`85094362#TMSN.png( bytes )
`77705822#TMSN.png( bytes )
`86219319#TMSN.png( bytes )
`85747244#TMSN.png( bytes )
`86048362#TMSN.png( bytes )
`86048359#TMSN.png( bytes )
`85094364#TMSN.png( bytes )
`85094343#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`78246564#TMSN.png( bytes )
`77274643#TMSN.png( bytes )
`77274662#TMSN.png( bytes )
`78246567#TMSN.png( bytes )
`86906378#TMSN.png( bytes )
`2019-01-02 Notice of Opposition re Serial No 87820055 - HAN-
`BEV.8752M.pdf(1530454 bytes )
`Ex 1 Reg No 4051650 - HANBEV.8752M.pdf(1434045 bytes )
`Ex 2 Reg No 3908601 - HANBEV.8752M.pdf(1352275 bytes )
`
`
`
`Ex 3 Reg No 4721432 - HANBEV.8752M.pdf(1482967 bytes )
`Ex 4 Reg No 4332062 - HANBEV.8752M.pdf(1407651 bytes )
`Ex 5 Reg No 4822675 - HANBEV.8752M.pdf(1479111 bytes )
`Ex 6 Reg No 4660598 - HANBEV.8752M.pdf(1548808 bytes )
`Ex 7 Reg No 3963669 - HANBEV.8752M.pdf(1271975 bytes )
`Ex 8 Reg No 3963668 - HANBEV.8752M.pdf(1271763 bytes )
`Ex 9 Reg No 3923683 - HANBEV.8752M.pdf(1326106 bytes )
`Ex 10 Reg No 3914828 - HANBEV.8752M.pdf(1308277 bytes )
`Ex 11 Reg No 2903214 - HANBEV.8752M.pdf(1227772 bytes )
`Ex 12 Reg No 3434821 - HANBEV.8752M.pdf(868855 bytes )
`Ex 13 Reg No 3434822 - HANBEV.8752M.pdf(860389 bytes )
`Ex 14 Reg No 3134841 - HANBEV.8752M.pdf(864778 bytes )
`Ex 15 Reg No 5551230 - HANBEV.8752M.pdf(926259 bytes )
`
`Signature
`
`/ALEXANDER D. ZENG/
`
`Name
`
`Date
`
`ALEXANDER D. ZENG
`
`01/02/2019
`
`
`
`HANBEV.8752M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No.: ___________
`
`
`Serial No.: 87/820055
`
`Mark:
`
`
`
`)))))))))))))
`
`
`
`
`MONSTER ENERGY COMPANY,
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`SUTONG TIRE RESOURCES INC.,
`
`
`
`
`
`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. 87/820055 (the “Application”) for the
`
`mark
`
` (“Applicant’s Mark”) filed by Sutong Tire Resources Inc.
`
`(“Applicant”) and therefore opposes the same.
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on March 5, 2018, Applicant seeks to obtain registration on
`
`the Principal Register of Applicant’s Mark for “Tires, including tires for passenger, light and large
`
`trucks, and for all terrain vehicles; lawn and garden tires” in International Class 12 based on
`
`
`
`- 1 -
`
`
`
`Applicant’s alleged first use of the mark in interstate commerce on June 15, 2017.
`
`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/or sale of beverages and
`
`other products bearing Opposer’s
`
`® mark and related marks, including, for example, the
`
`following:
`
`®,
`
`®, and
`
`® (hereinafter collectively the “Claw Icon
`
`Marks”).
`
`3.
`
`Since long before the filing date of the Application, Opposer has also used and
`
`continues to use its famous Claw Icon Marks in connection with automotive wheels, trailer hitch
`
`covers, helmets, toy replica cars, gloves, clothing, clothing accessories, stickers and decals, bags,
`
`sporting equipment, headgear, wristbands, as well as many other goods and services, since well
`
`before the filing date of the Application and alleged first use date listed in the Application.
`
`Examples of wheels bearing Opposer’s Claw Icon Marks, as well as other products, are shown
`
`below:
`
`
`
`- 2 -
`
`
`
`
`
`
`
`
`
`1 .
`
`II ”1‘71“?“
`
`
`
`
`
`
`
`
`
`- 3 -
`
`in).
`
`
`
`
`
`4.
`
`There is a huge demand for goods bearing Opposer’s Claw Icon Marks. Monster
`
`has entered into license agreements with several manufacturers, giving them a license to produce
`
`and sell wheels, clothing and other products that bear Opposer’s Claw Icon Marks. In the United
`
`States, Monster’s licensees have sold licensed goods bearing some of Opposer’s Claw Icon
`
`Marks to consumers in all 50 states through their own websites and through nationwide retailers.
`
`Those nationwide retailers have also sold Monster’s licensed goods bearing Opposer’s Claw Icon
`
`Marks through their own websites.
`
`5.
`
`Opposer also promotes the Claw Icon Marks by the way of sponsorship of
`
`motorsport athletes and motorsports events that are televised nationwide and internationally.
`
`When competing and/or at public appearances, the sponsored athletes almost always wear
`
`clothing that prominently displays Opposer’s Claw Icon Marks. Opposer has and continues to
`
`extensively promote the Claw Icon Marks in connection with, for example, Formula 1 Racing,
`
`NASCAR, Motocross, MotoGP, Supercross, and the X-Games. Examples of some of Opposer’s
`
`sponsored events and/or athletes are shown below:
`
`
`
`
`
`
`
`- 4 -
`
`
`
`1m nmrfl mam cm
`
`
`
`
`
`
`
`-.
`
`'
`
`amun
`
`
`
`
`
`
`- 5 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6.
`
`In addition, Opposer has and continues to widely market and promote its Claw
`
`Icon Marks to consumers by, for example, displaying the marks prominently and extensively on
`
`billions of cans; on product samplings; on promotional and point of sale materials; in magazines
`
`and other industry publications; on the monsterenergy.com website, monsterarmy.com website
`
`
`
`- 6 -
`
`
`
`and other Internet websites and social media sites; and at trade shows, concert tours and live
`
`events, including the sponsorship of music festivals, athletes, and sports events that are televised
`
`nationwide and internationally.
`
`7.
`
`In addition to sponsoring professional athletes, teams, and sporting events, since
`
`at least 2004, Opposer has maintained an amateur athlete development program under the mark
`
`MONSTER ARMY®. More than 376,000 amateur athletes in various sports have applied to be
`
`accepted as part of the MONSTER ARMY® through the MONSTER ARMY® web site
`
`<www.MonsterArmy.com>. Opposer supports members of the MONSTER ARMY® in many
`
`different ways, but such support often includes assistance with clothing, gear, training, and
`
`travel. Members of the MONSTER ARMY® often wear clothing and other gear branded with
`
`the Claw Icon Marks during competition.
`
`8.
`
`By virtue of Opposer’s continuous and substantial use, the Claw Icon Marks have
`
`become famous identifiers of Opposer since long before the filing date of the Application and the
`
`alleged first use in commerce date of Applicant’s Mark.
`
`9.
`
`Opposer has built up, at great expense and effort, valuable goodwill in its Claw Icon
`
`Marks and has developed strong common law rights in the marks, which have appeared on
`
`billions of cans of beverages and nutritional supplements, on numerous other products as noted
`
`above, and in extensive nationwide promotions. Opposer’s common law rights in its Claw Icon
`
`Marks predate the filing date of the Application and the alleged first use in commerce date of
`
`Applicant’s Mark, and Opposer relies on these common law trademark rights in this Opposition.
`
`10.
`
`In addition to Opposer’s common law rights, Opposer owns and relies on U.S.
`
`Trademark Registration 4,051,650 (the “’650 Registration”) for the mark
`
`® for “clothing,
`
`namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas,
`
`
`
`- 7 -
`
`
`
`sweat bands and gloves; headgear, namely hats and beanies” in International Class 25, which
`
`registration issued November 8, 2011 and is based on an application filed in the United States
`
`Patent and Trademark Office (“PTO”) on July 28, 2010. The filing date of Opposer’s ’650
`
`Registration is prior to the filing date and alleged first use date of the Application. True and
`
`correct copies of the specifics of the ’650 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 1 and made of record.
`
`11.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,908,601
`
`(the “’601 Registration”) 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 TESS and
`
`Assignment databases are attached hereto as Exhibit 2 and made of record.
`
`12.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 4,721,432
`
`(the “’432 Registration”) for the mark
`
`® 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 PTO on March 12, 2014. The filing date of Opposer’s ’432 Registration
`
`is prior to the filing date and alleged first use date of the Application. True and correct copies of
`
`
`
`
`
`- 8 -
`
`
`
`the specifics of the ’432 Registration obtained from the PTO’s TESS and Assignment databases
`
`are attached hereto as Exhibit 3 and made of record.
`
`13.
`
`Opposer owns and relies on U.S. Trademark Registration 4,332,062 (the “’062
`
`Registration”) 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 specifics of the ’062 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 4 and made of record.
`
`14.
`
`Opposer owns and relies on U.S. Trademark Registration 4,822,675 (the “’675
`
`Registration”) for the mark
`
`® for “lanyards; lanyards for holding whistles, keys, eyeglasses,
`
`sunglasses, mobile telephones, badges, identification cards, event passes, media passes,
`
`photographs, recording equipment, or similar conveniences” in International Class 22 which
`
`registration issued September 29, 2015 and is based on an application filed in the PTO on August
`
`26, 2013. The filing date of Opposer’s ’675 Registration is prior to the filing date and alleged
`
`first use date of the Application. True and correct copies of the specifics of the ’675 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 5 and
`
`made of record.
`
`15.
`
`Opposer owns and relies on U.S. Trademark Registration 4,660,598 (the “’598
`
`Registration”) for the mark
`
`® for “lanyards; lanyards for holding whistles, keys,
`
`eyeglasses, sunglasses, mobile telephones, badges, identification cards, event passes, media
`
`
`
`- 9 -
`
`
`
`passes, photographs, recording equipment, or similar conveniences” in International Class 22
`
`which registration issued December 23, 2014 and is based on an application filed in the PTO on
`
`August 26, 2013. The filing date of Opposer’s ’598 Registration is prior to the filing date and
`
`alleged first use date of the Application. True and correct copies of the specifics of the ’598
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 6 and made of record.
`
`16.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,963,669
`
`(the “’669 Registration”) for the mark
`
`® for “all purpose sport bags; all-purpose carrying
`
`bags; backpacks; duffel bags” in International Class 18, which registration issued May 17, 2011
`
`and is based on an application filed in the PTO on July 28, 2010. The filing date of Opposer’s
`
`’669 Registration is prior to the filing date and alleged first use date of the Application. True and
`
`correct copies of the specifics of the ’669 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 7 and made of record.
`
`17.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,963,668
`
`(the “’668 Registration”) for the mark
`
`® for “stickers; sticker kits comprising stickers and
`
`decals; decals; posters” in International Class 16, which registration issued May 17, 2011 and is
`
`based on an application filed in the PTO on July 28, 2010. The filing date of Opposer’s ’668
`
`Registration is prior to the filing date and alleged first use date of the Application. True and
`
`correct copies of the specifics of the ’668 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 8 and made of record.
`
`
`
`
`
`
`
`- 10 -
`
`
`
`18.
`
`Opposer owns and relies on U.S. Trademark Registration 3,923,683 (the “’683
`
`Registration”) 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 9 and made of record.
`
`19.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,914,828
`
`(the “’828 Registration”) for the mark
`
`® for “sports helmets” in International Class 9,
`
`which registration issued February 1, 2011 and is based on an application filed in 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 TESS and Assignment databases are attached hereto as Exhibit 10 and
`
`made of record.
`
`20.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`2,903,214 (the “’214 Registration”) for the mark
`
`® for “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, but excluding perishable beverage products that
`
`contain fruit juice or soy, whether such products are pasteurized or not” in International Class 32,
`
`
`
`- 11 -
`
`
`
`which registration issued November 16, 2004 and is based on an application filed in the PTO on
`
`May 7, 2003. The filing date of Opposer’s ’214 Registration is prior to the filing date and alleged
`
`first use date of the Application. True and correct copies of the specifics of the ’214 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 11 and
`
`made of record.
`
`21.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,434,821 (the “’821 Registration”) for the mark
`
`® for “nutritional supplements” in
`
`International Class 5, which registration issued May 27, 2008 and is based on an application filed
`
`in the PTO on September 7, 2007. The filing date of Opposer’s ’821 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics of
`
`the ’821 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 12 and made of record.
`
`22.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,434,822 (the “’822 Registration”) for the mark
`
`® for “non-alcoholic beverages, namely,
`
`energy drinks, excluding perishable beverage products that contain fruit juice or soy” in
`
`International Class 32, which registration issued May 27, 2008 and is based on an application filed
`
`in the PTO on September 7, 2007. The filing date of Opposer’s ’822 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics of
`
`the ’822 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 13 and made of record.
`
`
`
`
`
`
`
`- 12 -
`
`
`
`23.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,134,841 (the “’841 Registration”) for the 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 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 ’841 Registration is prior to the filing date and alleged
`
`first use 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 14 and
`
`made of record.
`
`24.
`
`Opposer owns and relies on U.S. Trademark Registration No. 5,551,230 (the
`
`“’230 Registration”) for the mark
`
`® for “Clothing, namely, tops, shirts, t-shirts,
`
`hooded shirts, sweat shirts, jackets, and bandanas; headgear, namely, hats and beanies” in
`
`International Class 25 and “Providing a web site featuring entertainment information and news
`
`on athletes; organizing and conducting educational programs and activities in the nature of
`
`classes, workshops, and sports competitions for athletes in the field of athlete development;
`
`athlete development program, namely, athlete training and mentoring in the field of wake, ski,
`
`surf, snowboard, motocross, martial arts, auto racing, mountain bike, BMX, and skate” in
`
`International Class 41, which registration issued August 28, 2018 and is based on an application
`
`
`
`- 13 -
`
`
`
`filed in the PTO on February 12, 2016. The filing date of Opposer’s ’230 Registration is prior to
`
`the filing date and alleged first use date of the Application. True and correct copies of the
`
`specifics of the ’230 Registration obtained from the PTO’s TESS and Assignment databases are
`
`attached hereto as Exhibit 15 and made of record.
`
`25.
`
`The 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.
`
`26.
`
`Opposer’s Registration Nos. 3,908,601, 3,963,669, 3,963,668, 2,903,214,
`
`3,434,821, 3,434,822, 3,914,828 and 3,134,841 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 exclusive right to use the registered marks in
`
`commerce as provided in Section 33 of the Lanham Act, 15 U.S.C. § 1115.
`
`27.
`
`Since at least before the filing date and alleged first use date of the Application,
`
`Opposer has continuously used and promoted Opposer’s Claw Icon Marks in interstate commerce
`
`in connection with its goods and services, including the goods and services identified in the
`
`foregoing registrations. In addition, Opposer’s Claw Icon Marks were well established and famous
`
`long before Applicant filed the Application or used Applicant’s Mark.
`
`28.
`
`Applicant seeks an unrestricted federal registration for Applicant’s Mark covering
`
`the goods in International Class 12 as set forth in the Application. As such, if registration issues
`
`for the Application, such registration will constitute prima facie evidence of the Applicant’s
`
`
`
`
`
`- 14 -
`
`
`
`exclusive right to use the registered mark in commerce on or in connection with these goods
`
`throughout the United States with no limitation thereon.
`
`29.
`
`Opposer will be damaged by registration of the Application in that the Applicant’s
`
`Mark so resembles Opposer’s Claw Icon Marks and related marks registered in the PTO, 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).
`
`30.
`
`In view of Opposer’s prior rights in its Claw Icon Marks, Applicant is not entitled to
`
`federal registration of Applicant’s Mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
`
`§ 1052(d).
`
`31.
`
`Opposer will be damaged by registration of the Application in that the Applicant’s
`
`Mark will dilute the distinctive qualities of Opposer’s Claw Icon Marks within the meaning of
`
`Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), and will lessen the ability of Opposer’s
`
`Claw Icon Marks to distinguish Opposer’s goods.
`
`32.
`
`In view of Opposer’s prior rights in its Claw Icon Marks, Applicant is not entitled to
`
`federal registration of Applicant’s 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. 87/820055 be
`
`rejected and stricken, that no registration be issued thereon to Applicant, and that this opposition
`
`be sustained in favor of Opposer.
`
`
`
`
`
`
`
`- 15 -
`
`
`
`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: January 2, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`29663678
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Alexander D. Zeng/
`
`Steven J. Nataupsky
`
`Lynda J. Zadra-Symes
`
`Jonathan A. Menkes
` Alexander Zeng
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`efiling@knobbe.com
`Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`
`
`
`
`- 16 -
`
`
`
`TTAB Opposition No.: ___________
`Monster Energy Company v. Sutong Tire Resources Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`
`
`
`Notice of Opposition
`Serial No.: 87/8200
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
