Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1117649
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`Filing date:
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`03/02/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91267208
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`Party
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`Correspondence
`Address
`
`Defendant
`Original Productions, Inc.
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`STEVEN M WEINBERG
`HOMES WEINBERG PC
`30765 PACIFIC COAST HIGHWAY, SUITE 411
`MALIBU, CA 90265
`UNITED STATES
`Primary Email: msalvatore@holmesweinberg.com
`Secondary Email(s): hwtrademarks@gmail.com
`No phone number provided.
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Answer
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`MICHAEL J SALVATORE
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`hwtrademarks@gmail.com, msalvatore@holmesweinberg.com
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`/MJSalvatore/
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`03/02/2021
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`Attachments
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`2021.03.02_Answer re Opp 91267208.pdf(106415 bytes )
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`
`Opposition No. 91267208
`
`
`ANSWER
`
`In re App. Serial Nos. 88/853,210,
`88/853,211, 88/853,246, 88/853,249,
`88/853,250 and 88/853,179
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`Monster Energy Company,
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`
`Opposer,
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`v.
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`Original Productions, Inc.,
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`Applicant.
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`
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`
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`TO:
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`
`
`ASSISTANT COMMISSIONER FOR TRADEMARKS
`BOX TTAB –FEE
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
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`Applicant Original Productions, Inc. (“Applicant”), by its attorneys Holmes Weinberg,
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`P.C., hereby answers the Notice of Opposition (the “Opposition”) filed by Monster Energy
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`Company (“Opposer”) in this matter as follows:
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`1. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in the preamble Paragraph of the Opposition, and therefore denies the
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`same.
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`2. Applicant admits the allegations set forth in Paragraph 1 of the Opposition only as to
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`App. Serial No. 88/853,179, and denies the remaining allegations set forth in Paragraph 1
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`of the Opposition. Applicant submitted post-publication amendments to the USPTO on
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`December 21, 2020, in connection with its App. Serial Nos. 88/853,210, 88/853,211,
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`1
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`88/853,246, 88/853,249, and 88/853,250, and now seeks registration for MONSTER
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`GARAGE for the following goods, all based on an intent to use:
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`Serial No.
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`88/853,210
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`88/853,211
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`88/853,246
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`88/853,249
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`88/853,250
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`Goods and Services
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`Class 9: video game discs and cartridges; downloadable game
`software; motion picture films about the reconstruction of
`automobiles into unique motor vehicles devices; pre-recorded
`downloadable audio-visual recordings featuring the reconstruction
`of automobiles into unique motor vehicles devices; pre-recorded
`compact discs; DVDs and CD-ROMs featuring the reconstruction
`of automobiles into unique motor vehicles devices; downloadable
`interactive video game programs; magnets; all of the foregoing
`relating to a television series regarding the reconstruction of
`automobiles into unique motor vehicle devices
`Class 12: Vehicle accessories, namely, mud flaps for vehicles,
`fitted vehicle seat covers spare tire covers; wheel covers; organizers
`for vehicle sun visors; vehicle parts, namely, sun visors; license
`plate holders; license plate frames; all of the foregoing relating to a
`television series regarding the reconstruction of automobiles into
`unique motor vehicle devices
`Class 16: Posters; stickers; pens; pencils; notebooks; calendars;
`books, namely, nonfiction books on topics related to automobiles
`and automotive issues; decals; bumper stickers; stationery; writing
`paper, note cards; postcards; diaries; paper stationery-type
`portfolios; binders; collectible trading cards; all of the foregoing
`relating to a television series regarding the reconstruction of
`automobiles into unique motor vehicle devices
`Class 18: Backpacks; Messenger bags; Athletic bags; Carry-on
`bags; Duffel bags; Fanny packs; Handbags; Key cases; Overnight
`bags; Purses; Toiletry cases sold empty; Wallets; all of the
`foregoing relating to a television series regarding the reconstruction
`of automobiles into unique motor vehicle devices
`Class 21: mugs, paper plates, plastic bottles sold empty, thermal
`insulated containers for beverages, lunch boxes, ceramic figurines,
`china, glass crystal and porcelain ornaments, exclusive of
`Christmas tree ornaments, cookie jars; all of the foregoing relating
`to a television series regarding the reconstruction of automobiles
`into unique motor vehicle devices
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`3. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 2 of the Opposition, and therefore denies the same.
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`2
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`4. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 3 of the Opposition, and therefore denies the same.
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`5. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 4 of the Opposition, and therefore denies the same.
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`6. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 5 of the Opposition, and therefore denies the same.
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`7. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 6 of the Opposition, and therefore denies the same.
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`8. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 7 of the Opposition, and therefore denies the same.
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`9. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 8 of the Opposition, and therefore denies the same.
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`10. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 9 of the Opposition, and therefore denies the same.
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`11. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 10 of the Opposition, and therefore denies the same.
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`12. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 11 of the Opposition, and therefore denies the same.
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`13. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 12 of the Opposition, and therefore denies the same.
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`14. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 13 of the Opposition, and therefore denies the same.
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`3
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`15. Applicant admits that its mark contains the word MONSTER, but lacks knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations set forth
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`in Paragraph 14 of the Opposition, and therefore denies the same.
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`16. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 15 of the Opposition, and therefore denies the same.
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`17. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 16 of the Opposition, and therefore denies the same.
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`18. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 17 of the Opposition, and therefore denies the same.
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`19. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 18 of the Opposition, and therefore denies the same.
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`20. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 19 of the Opposition, and therefore denies the same.
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`21. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 20 of the Opposition, and therefore denies the same.
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`22. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 21 of the Opposition, and therefore denies the same.
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`23. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 22 of the Opposition, and therefore denies the same.
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`24. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 23 of the Opposition, and therefore denies the same.
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`25. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 24 of the Opposition, and therefore denies the same.
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`4
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`26. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 25 of the Opposition, and therefore denies the same.
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`27. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 26 of the Opposition, and therefore denies the same.
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`28. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 27 of the Opposition, and therefore denies the same.
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`29. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 28 of the Opposition, and therefore denies the same.
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`30. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 29 of the Opposition, and therefore denies the same.
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`31. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 30 of the Opposition, and therefore denies the same.
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`32. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 31 of the Opposition, and therefore denies the same.
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`33. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 32 of the Opposition, and therefore denies the same.
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`34. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 33 of the Opposition, and therefore denies the same.
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`35. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 34 of the Opposition, and therefore denies the same.
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`36. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 35 of the Opposition, and therefore denies the same.
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`5
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`37. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 36 of the Opposition, and therefore denies the same.
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`38. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 37 of the Opposition, and therefore denies the same.
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`39. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 38 of the Opposition, and therefore denies the same.
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`40. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 39 of the Opposition, and therefore denies the same.
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`41. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 40 of the Opposition, and therefore denies the same.
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`42. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 41 of the Opposition, and therefore denies the same.
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`43. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 42 of the Opposition, and therefore denies the same.
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`44. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 43 of the Opposition, and therefore denies the same.
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`45. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 44 of the Opposition, and therefore denies the same.
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`46. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 45 of the Opposition, and therefore denies the same.
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`47. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 46 of the Opposition, and therefore denies the same.
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`6
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`48. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in Paragraph 47 of the Opposition, and therefore denies the same.
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`49. Applicant admits the allegations set forth in Paragraph 48 of the Opposition.
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`50. Applicant denies the allegations set forth in Paragraph 49 of the Opposition.
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`51. Applicant denies the allegations set forth in Paragraph 50 of the Opposition.
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`52. Applicant denies the allegations set forth in the prayer for relief Paragraph of the
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`Opposition.
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`Affirmative Defenses
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`1. Opposer has failed to state any claim upon which relief may be granted.
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`2. The marks at issue are not similar in appearance, sound, meaning or connotation and
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`confusion is not likely.
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`3. The goods and services at issue are not similar.
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`4. The trade channels of the goods and services at issue are not similar.
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`5. Opposer’s pleaded marks are weak and not entitled to protection due to the common use
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`of “MONSTER” for various goods and services, including Class 9, 12, 16, 18, 21 and 25
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`goods, by third parties.
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`6. The MONSTER GARAGE mark has peacefully coexisted with the MONSTER
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`ENERGY marks in the marketplace for a number of years, all without any known or
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`alleged instances of actual confusion.
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`Dated: March 2, 2021
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`Respectfully submitted,
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`By: /s/ Michael J. Salvatore
`Michael J. Salvatore
`Steven M. Weinberg
`Holmes Weinberg, PC
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`7
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`30765 Pacific Coast Highway, Suite 411
`Malibu, CA 90265
`Phone: 310-457-6100
`msalvatore@holmesweinberg.com
`hwtrademarks@gmail.com
`
`Attorneys for Applicant Original Productions, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a true copy of the foregoing ANSWER was served
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`by email to Opposer’s counsel at the following email addresses:
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`BITA KIANIAN
`KNOBBE MARTENS OLSON & BEAR LLP
`efiling@knobbe.com, MEC.TTAB@knobbe.com
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`DATED: March 2, 2021
`
`By: /s/ Allison Rozzen
`Allison Rozzen
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`9
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