throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1070613
`07/24/2020
`
`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
`
`07/25/2020
`
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`JACOB R. ROSENBAUM
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`Primary Email: efiling@knobbe.com
`Secondary Email(s): MEC.TTAB@knobbe.com
`(949) 760-0404
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`86371688
`
`Publication date
`
`05/26/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`07/24/2020
`
`Opposition Peri-
`od Ends
`
`07/25/2020
`
`Integrated Supply Network, LLC
`2727 INTERSTATE DRIVE
`LAKELAND, FL 33805
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 008. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: screw drivers, hammers, socket sets, sock-
`et wrenches, wrenches, pliers, hand-operated lifting jacks, stands for liftingjacks, manually-operated
`grease guns, hand-operated cutting tools, hex keys, hex bits, ratchets and torque wrenches
`
`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.
`
`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.
`
`3914828
`
`Registration Date
`
`02/01/2011
`
`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 009. First use: First Use: 2006/01/00 First Use In Commerce: 2006/01/00
`Sports helmets
`
`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.
`
`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.
`
`3134842
`
`Registration Date
`
`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.
`
`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.
`
`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.
`
`4634053
`
`Registration Date
`
`11/04/2014
`
`Word Mark
`
`Design Mark
`
`MONSTER ASSAULT
`
`Application Date
`
`11/15/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2008/05/00 First Use In Commerce: 2008/05/00
`Nutritional supplements in liquid form;vitamin fortified beverages
`Class 032. First use: First Use: 2008/05/00 First Use In Commerce: 2008/05/00
`
`

`

`Non-alcoholic beverages, namely, energydrinks, [ energy drinks flavored with
`juice, ] sports drinks, all enhanced withvitamins, minerals, nutrients, proteins,
`amino acids, and/or herbs, but excluding perishable beverage products that con-
`tain fruit juice or soy, whether such products are pasteurized or not
`
`U.S. Registration
`No.
`
`4129288
`
`Registration Date
`
`04/17/2012
`
`Word Mark
`
`Design Mark
`
`MONSTER REHAB
`
`Application Date
`
`07/06/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`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.
`
`4111964
`
`Registration Date
`
`03/13/2012
`
`Word Mark
`
`Design Mark
`
`MONSTER REHAB
`
`Application Date
`
`08/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`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.
`
`4451535
`
`Registration Date
`
`12/17/2013
`
`Word Mark
`
`Design Mark
`
`MUSCLE MONSTER
`
`Application Date
`
`07/10/2013
`
`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
`beverages
`
`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
`No.
`
`3959457
`
`Registration Date
`
`05/10/2011
`
`Word Mark
`
`Design Mark
`
`JAVA MONSTER
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2007/04/27 First Use In Commerce: 2007/04/27
`Beverages, namely, soft drinks; non-carbonated energy drinks; non-carbonated
`sports drinks; soft drinks and non-carbonated energy drinks, all 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 pas-
`teurized or not
`
`U.S. Registration
`No.
`
`5551192
`
`Registration Date
`
`08/28/2018
`
`Word Mark
`
`Design Mark
`
`MONSTER ARMY
`
`Application Date
`
`11/16/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`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
`
`U.S. Registration
`No.
`
`4332062
`
`Application Date
`
`10/05/2012
`
`

`

`Registration Date
`
`05/07/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`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.
`
`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
`
`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".
`
`

`

`Goods/Services
`
`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.
`
`4604556
`
`Registration Date
`
`09/16/2014
`
`Word Mark
`
`Design Mark
`
`PUNCH MONSTER
`
`Application Date
`
`11/22/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2014/01/09 First Use In Commerce: 2014/01/09
`Nutritional supplements in liquid form;vitamin fortified beverages
`Class 032. First use: First Use: 2014/01/09 First Use In Commerce: 2014/01/09
`Non-alcoholic beverages, namely, energydrinks, energy drinks flavored with
`juice, fruit-flavored drinks, soft drinks, sports drinks, all enhanced with vitamins,
`minerals, nutrients, amino acids and/or herbs; all the foregoing goods exclude
`perishable beverage products that contain fruit juice or soy, whether such
`products are pasteurized or not
`
`U.S. Registration
`No.
`
`4716750
`
`Registration Date
`
`04/07/2015
`
`Word Mark
`
`Design Mark
`
`JUICE MONSTER
`
`Application Date
`
`02/24/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2014/06/23 First Use In Commerce: 2014/06/23
`Nutritional supplements in liquid form
`Class 032. First use: First Use: 2014/06/23 First Use In Commerce: 2014/06/23
`
`

`

`Non-alcoholic beverages, namely, energydrinks and drinks enhanced with vit-
`amins, minerals, nutrients, amino acids and/or herbs, but excluding perishable
`beverage products that contain fruit juice orsoy
`
`U.S. Registration
`No.
`
`3852118
`
`Registration Date
`
`09/28/2010
`
`Application Date
`
`02/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`LO-CARB MONSTER ENERGY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Nutritional supplements
`Class 032. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Non-alcoholic beverages, namely, energydrinks, drinks enhanced with vitamins,
`minerals, nutrients, amino acids and/or herbs
`
`U.S. Registration
`No.
`
`5661940
`
`Registration Date
`
`01/22/2019
`
`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Application Date
`
`10/19/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`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; calendars;
`money clips; blackboards; temporary tattoo transfers; pens; writing utensils; ad-
`vertising signs of cardboard and paper
`
`Related Proceed- Opposition No. 91222672 Opposition No. 91235196 Cancellation No. 92065591
`
`

`

`ings
`
`Opposition No. 91235441 Opposition No. 91244205 Opposition No. 91243188
`Opposition No. 91245314
`
`Attachments
`
`86219332#TMSN.png( bytes )
`77705822#TMSN.png( bytes )
`77705747#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`77276989#TMSN.png( bytes )
`86120138#TMSN.png( bytes )
`85078405#TMSN.png( bytes )
`85406210#TMSN.png( bytes )
`86006264#TMSN.png( bytes )
`85077052#TMSN.png( bytes )
`78769836#TMSN.png( bytes )
`86822049#TMSN.png( bytes )
`85747244#TMSN.png( bytes )
`86048359#TMSN.png( bytes )
`86127407#TMSN.png( bytes )
`85552165#TMSN.png( bytes )
`77670729#TMSN.png( bytes )
`87208532#TMSN.png( bytes )
`2020-07-24 NOTICE OF OPPOSITION - SER NO 86371688 -
`HANB.11581M.pdf(922072 bytes )
`EX 1 - REG NO 4721433.pdf(782434 bytes )
`EX 2 - REG NO 3908601.pdf(1261396 bytes )
`EX 3 - REG NO 3908600.pdf(1230490 bytes )
`EX 4 - REG NO 3914828.pdf(1215922 bytes )
`EX 5 - REG NO 3923683.pdf(1235897 bytes )
`EX 6 - REG NO 4036681.pdf(783817 bytes )
`EX 7 - REG NO 3057061.pdf(769993 bytes )
`EX 8 - REG NO 3134842.pdf(771101 bytes )
`EX 9 - REG NO 3044314.pdf(765701 bytes )
`EX 10 - REG NO 3044315.pdf(765688 bytes )
`EX 11 - REG NO 4634053.pdf(787583 bytes )
`EX 12 - REG NO 4129288.pdf(792035 bytes )
`EX 13 - REG NO 4111964.pdf(779971 bytes )
`EX 14 - REG NO 4451535.pdf(786045 bytes )
`EX 15 - REG NO 4376796.pdf(790273 bytes )
`EX 16 - REG NO 3959457.pdf(1305456 bytes )
`EX 17 - REG NO 5551192.pdf(812532 bytes )
`EX 18 - REG NO 4332062.pdf(1191105 bytes )
`EX 19 - REG NO 4660598.pdf(1289545 bytes )
`EX 20 - REG NO 4604556.pdf(794125 bytes )
`EX 21 - REG NO 4716750.pdf(790075 bytes )
`EX 22 - REG NO 3852118.pdf(1267267 bytes )
`EX 23 - REG NO 5661940.pdf(795254 bytes )
`
`Signature
`
`/Jacob R. Rosenbaum/
`
`Name
`
`Date
`
`Jacob R. Rosenbaum
`
`07/24/2020
`
`

`

`HANB.11581M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Opposition No.: ___________
`
`Serial Nos.: 86/371688
`
`
`Mark:
`
`
`
`
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`
`)
`
`Opposer,
`
`
`
`v.
`
`
`MONSTER ENERGY COMPANY,
`
`
`
`
`
`INTEGRATED SUPPLY NETWORK, LLC,
`
`
`
`
`
`
`Applicant.
`
`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” or “Monster”) believes that it will be
`
`damaged by
`
`the registration of U.S. Trademark Application Serial No. 86/371688
`
`(“Application”) for the mark
`
` (hereinafter “Applicant’s Mark”) owned by
`
`Integrated Supply Network, LLC, (“Applicant”) and therefore opposes the same. The
`
`Application was filed on August 20, 2014 and is based on Applicant’s intent-to-use Applicant’s
`
`Mark in interstate commerce pursuant to Section 1(b) of the Trademark Act.
`
`A description of Applicant’s Mark is as follows:
`
`-1-
`
`

`

`Mark
`
`
`
`Description of
`Mark
`
`The mark consists of the design of a skull, a portion of an oval
`extending from the skull, wings surrounding part of the oval and
`the words "MONSTER" and "MOBILE" overlying part of the
`wings.
`
`Color(s) Claimed Color is not claimed as a feature of the mark.
`
`Filing Date
`
`August 20, 2014
`
`Serial No.
`
`86/371688
`
`
`
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on August 20, 2014, Applicant seeks to obtain registration
`
`on the Principal Register of Applicant’s Mark for the goods as set forth below (collectively,
`
`“Applicant’s Goods”):
`
`Serial No.
`
`Goods
`
`86371688
`
`Class 8: screw drivers, hammers, socket sets, socket wrenches,
`wrenches, pliers, hand-operated lifting jacks, stands for lifting
`jacks, manually-operated grease guns, hand-operated cutting tools,
`hex keys, hex bits, ratchets and torque wrenches
`
`
`
`2.
`
`U.S. Trademark Application Serial No. 86371,688 is based on Applicant’s alleged
`
`intent to use the mark in interstate commerce.
`
`3.
`
`Applicant is using Applicant’s Mark in the colors green and black as shown
`
`below:
`
`-2-
`
`

`

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

`

`
`
`
`
`4.
`
`Since at least 2002, long before the filing date of the Application, Opposer has
`
`been, and still is, engaged in the development, marketing, and/or sale of nutritional supplements,
`
`energy drinks, clothing, and other accessories and products under the marks MONSTER™ and
`
`MONSTER ENERGY® and related marks, all containing “MONSTER.” Opposer’s family of
`
`MONSTER Marks includes, for example, the following: MONSTER™, MONSTER ENERGY®,
`
`(“M MONSTER ENERGY and Design”), M MONSTER ENERGY®, MONSTER ASSAULT®,
`
`MONSTER REHAB®, MUSCLE MONSTER®, JAVA MONSTER®, PUNCH MONSTER®,
`
`-4-
`
`

`

`LO-CARB MONSTER ENERGY®, JUICE MONSTER®, and MONSTER ARMY® marks
`
`(collectively, the “MONSTER Marks”).
`
`5.
`
`Also since 2002, well before the filing date of the Application, Opposer has used a
`
`distinctive trade dress (“Opposer’s MONSTER Trade Dress”) for its products, packaging, and
`
`promotional activities, including the common elements of a black or black and gray background,
`
`a bright green accent color, and the word Monster. Images of Opposer’s Energy Drinks bearing
`
`some of its MONSTER Marks and the MONSTER Trade Dress are shown below:
`
`
`
`
`
`6.
`
`Since 2002, Opposer has expanded its use of the MONSTER Marks and uses,
`
`licenses or has used or licensed these marks in connection with graphic kits for motorized
`
`vehicles, stickers, decals, automotive wheels, motorcycles, ATVs, tool boxes, replica cars,
`
`remote control cars, trailer hitch covers, gloves, sports helmets, bags and other related
`
`accessories. Examples of authorized products bearing Opposer’s MONSTER Marks are shown
`
`below:
`
`-5-
`
`

`

`_,..
`I"
`
`7r}
`7;'5'
`I
`
`..u _'A"h._
`
`
`
`'
`
`
`
`-6-
`
`

`

`
`
`
`
`
`
`
`
`
`
`-7-
`
`

`

`7.
`
`In addition, Opposer has used, and continues to use its MONSTER Marks and/or
`
`MONSTER Trade Dress in connection with apparel and accessories, including, for example, t-
`
`shirts, hooded shirts, hooded sweatshirts, sweatshirts, jackets, pants, bandanas, sweat bands,
`
`headgear, stickers, beverage ware, and decals, as shown below:
`
`
`
`
`
`-8-
`
`

`

`8.
`
`Since at least before the filing date of the Application, Opposer’s family of
`
`MONSTER Marks and MONSTER Trade Dress has been the subject of substantial and
`
`continuous marketing and promotion by Opposer in connection with its beverages, sports
`
`equipment, clothing, automotive related goods and accessories, and numerous other products and
`
`
`
`services.
`
`9.
`
`There is a huge demand for shirts, t-shirts, sweatshirts, hats, jackets, stickers, decals,
`
`automotive accessories, graphics kits, motorcycles and ATVs, and other merchandise bearing
`
`Opposer’s MONSTER Marks and MONSTER Trade Dress. Opposer has licensed its MONSTER
`
`Marks and MONSTER Trade Dress to several third parties including, but not limited to, Kawasaki,
`
`a large manufacturer and distributor of motorcycles, 43 Racing LLC, a company owned by Ken
`
`Block who is a professional motocross and rallycross athlete, and Clinton Enterprises, a leading
`
`supplier of motorcycle racing merchandise.
`
`10.
`
`For many years prior to the filing date of the Application, Opposer has
`
`extensively promoted its MONSTER Marks and MONSTER Trade Dress in connection with
`
`motorsports events. Opposer promotes its MONSTER Marks and MONSTER Trade Dress in
`
`-9-
`
`

`

`connection with a wide variety of motorsports events, including, but not limited to, Motocross,
`
`MotoGP, Supercross, Formula 1 Racing, NASCAR, and desert racing. At these events,
`
`Opposer’s MONSTER Marks and/or MONSTER Trade Dress are often prominently displayed
`
`on vehicles, signs, and athlete clothing and gear, and are often incorporated into the series logo.
`
`Examples of Opposer’s MONSTER Marks and MONSTER Trade Dress at motorsports events
`
`are shown below:
`
`
`
`
`
`
`
`-10-
`
`

`

`
`
`-11-
`-11-
`
`

`

`
`
`11.
`
`By virtue of Opposer’s continuous and substantial use, the MONSTER 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 and services. Similarly,
`
`Opposer’s MONSTER Trade Dress has become a famous identifier of Opposer such that consumers
`
`have come to recognize the MONSTER Trade Dress 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 MONSTER Marks and MONSTER Trade Dress and has developed strong common law rights
`
`in Opposer’s MONSTER Marks and MONSTER Trade Dress. Opposer’s common law rights in
`
`its family of MONSTER Marks and MONSTER Trade Dress predate the filing date of the
`
`Application, and Opposer relies on these common law trademark rights in this Opposition.1
`
`
`1 Opposer obtained California Trademark Registration No. 108,124 for the mark MONSTER for “fruit juice drinks,
`soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or
`
`-12-
`
`

`

`Registration No.
`
`Mark
`
`Goods/Services
`
`4,721,433
`
`MONSTER
`ENERGY®
`
`3,908,601
`
`3,908,600
`
`
`
`Cl. 35 promoting goods
`and services in the sports,
`motorsports, electronic
`sports, and music industries
`through the distribution of
`printed, audio and visual
`promotional materials;
`promoting sports and music
`events and competitions for
`others
`Cl. 25 clothing, namely, t-
`shirts, hooded shirts and
`hooded sweatshirts, sweat
`shirts, jackets, pants,
`bandanas, sweat bands and
`gloves; headgear, namely,
`hats and beanies
`Cl. 16 stickers; sticker kits
`comprising stickers and
`decals; decals
`
`3,914,828
`
`Cl. 9 sports helmets
`
`3,923,683
`
`
`
`4,036,681
`
`
`MONSTER
`ENERGY®
`
`3,057,061
`
`MONSTER
`ENERGY®
`
`Cl. 18 all purpose sport
`bags; all-purpose carrying
`bags; backpacks; duffle
`bags
`
`CL. 32 non-alcoholic
`beverages, namely, energy
`drinks, excluding
`perishable beverage
`products that contain fruit
`juice or soy
`Cl. 32 fruit juice drinks
`having a juice content of
`50% or less by volume that
`are shelf stable, carbonated
`soft drinks, carbonated
`drinks enhanced with
`
`First Use
`Date
`1/4/2003
`
`Filling Date
`
`3/12/2014
`
`Registration
`Date
`4/14/2015
`
`5/24/2002
`
`4/2/2009
`
`1/18/2011
`
`1/2004
`
`
`1/2006
`
`
`4/2/2009
`
`1/18/2011
`
`4/2/2009
`
`1/1/2011
`
`5/2004
`
`4/2/2009
`
`2/22/2011
`
`3/27/2002
`
`09/11/2007
`
`10/11/2011
`
`3/27/2002
`
`4/18/2002
`
`3,057,061
`
`
`herbs, aerated water, soda water and seltzer water” in International Class 32, which registration issued April 24,
`2002.
`
`-13-
`
`

`

`Registration No.
`
`Mark
`
`Goods/Services
`
`First Use
`Date
`
`Filling Date
`
`Registration
`Date
`
`3,134,842
`
`M MONSTER
`ENERGY®
`
`3,044,314
`
`M MONSTER
`ENERGY®
`
`3,044,315
`
`MONSTER
`ENERGY®
`
`4,634,053
`
`MONSTER
`ASSAULT®
`
`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
`Cl. 32 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
`Cl. 5 nutritional
`supplements in liquid form,
`but excluding perishable
`beverage products that
`contain fruit juice or soy,
`whether such products are
`pasteurized or not
`Cl. 5 nutritional
`supplements in liquid form,
`but excluding perishable
`beverage products that
`contain fruit juice or soy,
`whether such products are
`pasteurized or not
`Cl. 5 nutritional
`supplements in liquid form;
`vitamin fortified beverages
`Cl. 32 non-alcoholic
`beverages, namely, energy
`drinks, energy drinks
`flavored with juice, sports
`drinks, all enhanced with
`vitamins, minerals,
`nutrients, proteins, amino
`
`-14-
`
`3/27/2002
`
`5/7/2003
`
`8/29/2006
`
`3/27/2002
`
`3/27/2002
`
`5/23/2003
`
`3/27/2002
`
`5/23/2002
`
`
`1/17/2006
`
`All classes
`5/2008
`
`11/15/2013
`
`11/4/201
`
`

`

`Registration No.
`
`Mark
`
`Goods/Services
`
`First Use
`Date
`
`Filling Date
`
`Registration
`Date
`
`4,129,288
`
`MONSTER
`REHAB®
`
`4,111,964
`
`MONSTER
`REHAB®
`
`4,451,535
`
`MUSCLE
`MONSTER®
`
`4,376,796
`
`MUSCLE
`MONSTER®
`
`acids, and/or herbs, but
`excluding perishable
`beverage products that
`contain fruit juice or soy,
`whether such products are
`pasteurized or not
`Cl. 5 nutritional
`supplements in liquid form
`Cl. 32 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
`Cl. 30 ready to drink tea,
`iced tea and tea based
`beverages; ready to drink
`flavored tea, iced tea and
`tea based beverages
`Cl. 5 vitamin fortified
`beverages
`Cl. 29 dairy-based
`beverages; dairy-based
`energy shakes; energy
`shakes; chocolate energy
`shakes
`Cl. 30 ready to drink
`chocolate-based beverages
`
`Cl. 5 nutritional
`supplements in liquid form
`Cl. 32 beverages, namely,
`soft drinks; non-alcoholic
`and non-carbonated drinks
`enhanced with vitamins,
`minerals, nutrients,
`proteins, amino acids
`
`-15-
`
`7/6/2010
`
`4/17/2012
`
`All classes
`3/2/2011
`
`
`2/2011
`
`8/24/2011
`
`3/13/2012
`
`All classes
`3/18/2013
`
`7/10/2013
`
`12/17/2013
`
`7/2/2010
`
`7/30/2013
`
`All classes
`3/18/2013
`
`
`
`
`
`

`

`Registration No.
`
`Mark
`
`Goods/Services
`
`First Use
`Date
`
`Filling Date
`
`Registration
`Date
`
`3,959,457
`
`JAVA
`MONSTER®
`
`5,551,192
`
`MONSTER
`ARMY®
`
`4,332,062
`
`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
`
`Cl. 32 beverages, namely,
`soft drinks; non-carbonated
`energy drinks; non-
`carbonated sports drinks;
`soft drinks and non-
`carbonated energy drinks,
`all 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
`Cl. 25 Clothing, namely,
`tops, shirts, T-shirts,
`hooded shirts, sweat shirts,
`and jackets
`Cl. 41 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, mountain bike,
`BMX, and skate
`Cl. 14 silicone wrist bands;
`silicone bracelets; jewelry,
`namely, bracelets and
`wristbands
`
`-16-
`
`4/27/2007
`
`12/8/2005
`
`5/10/2011
`
`11/16/2015
`
`8/8/2018
`
`Cl. 25
`5/2010
`Cl. 41
`5/2005
`
`12/2006
`
`10/5/2012
`
`5/7/2013
`
`

`

`First Use
`Date
`12/20/2006
`
`Filling Date
`
`8/26/2013
`
`Registration
`Date
`12/23/2014
`
`All classes
`1/9/2014
`
`11/22/2013
`
`9/16/2014
`
`All classes
`6/23/2014
`
`2/24/2012
`
`4/7/2015
`
`Registration No.
`
`Mark
`
`Goods/Services
`
`4,660,598
`
`4,604,556
`
`PUNCH
`MONSTER®
`
`4,716,750
`
`JUICE
`MONSTER®
`
`Cl. 22 lanyards; lanyards
`for holding whistles, keys,
`eyeglasses, sunglasses,
`mobile telephones, badges,
`identification cards, event
`passes, media passes,
`photographs, recording
`equipment, or similar
`conveniences
`Cl. 5 nutritional
`supplements in liquid
`form; vitamin fortified
`beverages
`Cl. 32 non-alcoholic
`beverages, namely, energy
`drinks, energy drinks
`flavored with juice, fruit-
`flavored drinks, soft drinks,
`sports drinks, all enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs; all the
`foregoing goods exclude
`perishable beverage
`products that contain fruit
`juice or soy, whether such
`products are pasteurized or
`not
`Cl. 5 nutritional
`supplements in liquid form
`Cl. 32 non-alcoholic
`beverages, namely, energy
`drinks and drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs, but excluding
`perishable beverage
`products that contain fruit
`juice or soynon-alcoholic
`beverages, namely, energy
`drinks and drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs, but excluding
`perishable beverage
`products that contain fruit
`juice or soy
`
`-17-
`
`

`

`Registration No.
`
`Mark
`
`Goods/Services
`
`3,852,118
`
`LO-CARB
`MONSTER
`ENERGY ®
`
`5,661,940
`
`MONSTER
`ENERGY®
`
`Cl. 5 nutritional
`supplements
`Cl. 32 non-alcoholic
`beverages, namely, energy
`drinks, drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`Cl. 16 Stickers; sticker kits
`comprising stickers and
`decals; decals; posters;
`calendars; money clips;
`blackboards; temporary
`tattoo transfers; pens;
`writing utensils; advertising
`signs of cardboard and
`paper
`
`Filling Date
`
`2/13/2009
`
`Registration
`Date
`9/28/2010
`
`First Use
`Date
`All classes
`8/2003
`
`
`
`
`
`1/2004
`
`
`10/19/2016
`
`1/22/2019
`
`
`
`12.
`
`In addition to its common law rights, Opposer owns and relies on incontestable
`
`U.S. Trademark Registration 4,721,433 for the mark MONSTER ENERGY for “Promoting
`
`goods and

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket