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Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1290461
`
`Filing date:
`
`06/09/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91284247
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Monster Energy Company
`
`CHARLES K. CRANE
`KNOBBE MARTENS
`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
`
`Answer to Counterclaim
`
`CHARLES K. CRANE
`
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`
`/CHARLES K. CRANE/
`
`06/09/2023
`
`2023-06-09 OPPOSERS ANSWER TO APPLICANTS COUNTERCLAIMS -
`HANB.16349M. pdf(182584 bytes )
`
`

`

`
`
` HANB.16349M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Opposition No.: 91284247
`
`Serial No.: 97/230238
`
`Mark: MONSTER SQUAD DEL MAR
`
`) ) ) ) ) ) ) )
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`
`)
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`
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`) )
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`
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`Opposer,
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`
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`v.
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`MONSTER ENERGY COMPANY,
`
`
`
`
`
`HERMAN JONES,
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`
`
`
`
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`Applicant.
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`OPPOSER’S ANSWER TO APPLICANT’S COUNTERCLAIM
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Opposer Monster Energy Company (“Monster”) hereby answers the Counterclaim filed by
`
`Applicant Herman Jones (“Applicant”) against U.S. Trademark Registration Nos. 5,551,192 and
`
`5,551,230 (the “Registrations”). The numbered paragraphs of this Answer correspond to the
`
`numbered paragraphs of Applicant’s Counterclaim (Dkt. 4).
`
`1.
`
`Answering Paragraph 1 of Applicant’s Counterclaim, Monster admits the
`
`allegations stated therein.
`
`2.
`
`Answering Paragraph 2 of Applicant’s Counterclaim, Monster admits the
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`allegations stated therein.
`
`3.
`
`Answering Paragraph 3 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 3.
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`4.
`
`Answering Paragraph 4 of Applicant’s Counterclaim, Monster denies the
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`allegations in Paragraph 4.
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`- 1 -
`
`

`

`
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`5.
`
`Answering Paragraph 5 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 5.
`
`6.
`
`Answering Paragraph 6 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 6.
`
`7.
`
`Answering Paragraph 7 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 7.
`
`8.
`
`Answering Paragraph 8 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 8.
`
`9.
`
`Answering Paragraph 9 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 9.
`
`10.
`
`Answering Paragraph 10 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 10.
`
`11.
`
`Answering Paragraph 11 of Applicant’s Counterclaim, Monster denies the
`
`allegations in Paragraph 11.
`
`
`
`AFFRIMATIVE DEFENSES
`
`Without admitting any of Applicant’s counterclaim allegations or conceding the burden of
`
`proof found to be an element of any of Applicant’s Counterclaims rather than an element of an
`
`affirmative defense as a matter of law, Opposer asserts the following affirmative defenses:
`
`FIRST AFFIRMATIVE DEFENSE
`
`(Failure to State a Claim Upon Which Relief May Be Granted)
`
`
`
`Applicant’s Counterclaims are barred, in whole or in part, because they fail to state a claim
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`upon which relief may be granted.
`
`
`
`- 2 -
`
`

`

`
`
`
`
`SECOND AFFIRMATIVE DEFENSE
`
`(Laches)
`
`Applicant’s Counterclaims are barred, in whole or in part, by the equitable doctrine of
`
`laches. Opposer, Monster Energy Company (“Monster”), has been using the MONSTER
`
`ARMY® mark, which is the subject of Registration No. 5,551,192, since at least as early as May
`
`2005. Monster has been using the
`
`® mark, which is the subject of Registration No.
`
`5,551,230, since at least as early as May 2005. Also, both of these registrations issued on August
`
`28, 2018. Since Monster began using these marks in 2005, Applicant has never asserted prior use
`
`or challenged Opposer’s marks.
`
`THIRD AFFIRMATIVE DEFENSE
`
`(Acquiescence)
`
`
`
`By its acts, failure to act, and/or omissions, Applicant has acquiesced to: Opposer’s claim
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`of exclusive rights in Opposer’s registered MONSTER ARMY® and
`
`® trademarks
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`and the US Trademark Registrations for those marks, nos. 5,551,192 and 5,551,230, respectively.
`
`Opposer, Monster Energy Company (“Monster”), has been using the MONSTER ARMY® mark,
`
`which is the subject of Registration No. 5,551,192, since at least as early as May 2005. Monster
`
`has been using the
`
`® mark, which is the subject of Registration No. 5,551,230, since at
`
`least as early as May 2005. Also, both of these registrations issued on August 28, 2018. Since
`
`- 3 -
`
`

`

`
`
`Monster began using these marks in 2005, Applicant has never asserted prior use or challenged
`
`Opposer’s marks.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`(Unclean Hands)
`
`
`
`Applicant’s Counterclaims are barred, in whole or in part, by the equitable doctrine of
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`unclean hands. Applicant is not the prior user and knowingly brought counterclaims fraudulently
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`asserting that Applicant has priority.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`(Equitable Estoppel)
`
`
`
`Applicant’s Counterclaims are barred, in whole or in part, by the equitable doctrine of
`
`estopped. Opposer, Monster Energy Company (“Monster”), has been using the MONSTER
`
`ARMY® mark, which is the subject of Registration No. 5,551,192, since at least as early as May
`
`2005. Monster has been using the
`
`® mark, which is the subject of Registration No.
`
`5,551,230, since at least as early as May 2005. Also, both of these registrations issued on August
`
`28, 2018. Since Monster began using these marks in 2005, Applicant has never asserted prior use
`
`or challenged Opposer’s marks.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`(Waiver)
`
`
`
`Applicant has waived any rights it may have had to bring and/or maintain its
`
`Counterclaims, in whole or in part. Opposer, Monster Energy Company (“Monster”), has been
`
`using the MONSTER ARMY® mark, which is the subject of Registration No. 5,551,192, since at
`
`- 4 -
`
`

`

`
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`least as early as May 2005. Monster has been using the
`
`® mark, which is the subject of
`
`Registration No. 5,551,230, since at least as early as May 2005. Also, both of these registrations
`
`issued on August 28, 2018. Since Monster began using these marks in 2005, Applicant has never
`
`asserted prior use or challenged Opposer’s marks.
`
`
`
`Opposer reserves its right to assert additional defenses, whether available now or in the
`
`future, as discovery proceeds.
`
`
`
`
`
`
`
`
`Dated: June 9, 2023
`
`
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`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: / Charles K. Crane/
`
`Steven J. Nataupsky
`
`Lauren Keller Katzenellenbogen
`
`Jason A. Champion
` Charles K. Crane
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`efiling@knobbe.com
`
` Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`- 5 -
`
`

`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and complete copy of the foregoing OPPOSER’S ANSWER
`
`TO APPLICANT’S COUNTERCLAIM has been served on Applicant’s counsel of record on
`
`June 9, 2023 via electronic mail to:
`
`
`
`
`
`Signature:
`Signature:
`
`Name: Anokhi Destiche
`
`Date: June 9, 2023
`
`
`57626983
`
`Andrew J. Dhuey
`ajdhuey@comcast.net
`
`
`
`
`
`
`
`
`
`
`
`- 6 -
`
`

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