Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA927869
`
`Filing date:
`
`10/11/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242803
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Kathy Salem
`
`STEVEN S FANNIN
`COLE CO LPA
`863 NORTH CLEVELAND MASSILLON ROAD
`AKRON, OH 44333
`UNITED STATES
`kathy@nightisalive.com
`330-666-5500
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Patrick J. Thomas
`
`pthomas@rcp-attorneys.com
`
`/pjt/
`
`10/11/2018
`
`Attachments
`
`ANS - Opposition 2018-10-11.pdf(183927 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`MONSTER ENERGY COMPANY,
`
`
`
`Opposer
`
`
`
`v.
`
`
`KATHY SALEM,
`
`
`
`Applicant
`
`
`
`
`Opposition No. 91242803
`
`Serial No. 87548635
`
`)
`)
`)
`)
`)
`) Mark: GIG MONSTER
`)
`)
`)
`)
`
`ANSWER AND AFFIRMATIVE DEFENSES
`
`OF KATHY SALEM
`
`
`
`Applicant Kathy Salem (“Salem”) hereby answers the Notice of Opposition (“Opposition”)
`
`filed by Monster Energy Company (“MEC”) as follows. To the extent not specifically admitted,
`
`all allegations in the Opposition are denied.
`
`1.
`
`The materials and/or filing dates referenced in Paragraph 1 speak for themselves,
`
`and to the extent the allegations in Paragraph 1 vary therewith, Salem denies them.
`
`2.
`
`Salem denies any legal conclusions set forth in Paragraph 2. The materials and/or
`
`filing dates referenced in Paragraph 2 speak for themselves, and to the extent the allegations in
`
`Paragraph 2 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 2.
`
`3.
`
`Salem denies any legal conclusions set forth in Paragraph 3. The materials and/or
`
`filing dates referenced in Paragraph 3 speak for themselves, and to the extent the allegations in
`
`Paragraph 3 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
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`

`

`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 3.
`
`4.
`
`Salem denies any legal conclusions set forth in Paragraph 4. The materials and/or
`
`filing dates referenced in Paragraph 4 speak for themselves, and to the extent the allegations in
`
`Paragraph 4 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 4.
`
`5.
`
`Salem denies any legal conclusions set forth in Paragraph 5. The materials and/or
`
`filing dates referenced in Paragraph 5 speak for themselves, and to the extent the allegations in
`
`Paragraph 5 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 5.
`
`6.
`
`Salem denies any legal conclusions set forth in Paragraph 6. The materials and/or
`
`filing dates referenced in Paragraph 6 speak for themselves, and to the extent the allegations in
`
`Paragraph 6 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 6.
`
`7.
`
`Salem denies any legal conclusions set forth in Paragraph 7. The materials and/or
`
`filing dates referenced in Paragraph 7 speak for themselves, and to the extent the allegations in
`
`Paragraph 7 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 7.
`
`
`
`2
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`

`

`8.
`
`Salem denies any legal conclusions set forth in Paragraph 8. The materials and/or
`
`filing dates referenced in Paragraph 8 speak for themselves, and to the extent the allegations in
`
`Paragraph 8 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 8.
`
`9.
`
`Salem denies any legal conclusions set forth in Paragraph 9. The materials and/or
`
`filing dates referenced in Paragraph 9 speak for themselves, and to the extent the allegations in
`
`Paragraph 9 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 9.
`
`10.
`
`Salem denies any legal conclusions set forth in Paragraph 10. The materials and/or
`
`filing dates referenced in Paragraph 10 speak for themselves, and to the extent the allegations in
`
`Paragraph 10 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 10.
`
`11.
`
`Salem denies any legal conclusions set forth in Paragraph 11. The materials and/or
`
`filing dates referenced in Paragraph 11 speak for themselves, and to the extent the allegations in
`
`Paragraph 11 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 11.
`
`12.
`
`Salem denies any legal conclusions set forth in Paragraph 12. The materials and/or
`
`filing dates referenced in Paragraph 12 speak for themselves, and to the extent the allegations in
`
`Paragraph 12 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`
`
`3
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`

`

`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 12.
`
`13.
`
`Salem denies any legal conclusions set forth in Paragraph 13. The materials and/or
`
`filing dates referenced in Paragraph 13 speak for themselves, and to the extent the allegations in
`
`Paragraph 13 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 13.
`
`14.
`
`Salem denies any legal conclusions set forth in Paragraph 14. The materials and/or
`
`filing dates referenced in Paragraph 14 speak for themselves, and to the extent the allegations in
`
`Paragraph 14 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 14.
`
`15.
`
`Salem denies any legal conclusions set forth in Paragraph 15. The materials and/or
`
`filing dates referenced in Paragraph 15 speak for themselves, and to the extent the allegations in
`
`Paragraph 15 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 15.
`
`16.
`
`Salem denies any legal conclusions set forth in Paragraph 16. The materials and/or
`
`filing dates referenced in Paragraph 16 speak for themselves, and to the extent the allegations in
`
`Paragraph 16 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 16.
`
`
`
`4
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`

`

`17.
`
`Salem denies any legal conclusions set forth in Paragraph 17. The materials and/or
`
`filing dates referenced in Paragraph 17 speak for themselves, and to the extent the allegations in
`
`Paragraph 17 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 17.
`
`18.
`
`Salem denies any legal conclusions set forth in Paragraph 18. The materials and/or
`
`filing dates referenced in Paragraph 18 speak for themselves, and to the extent the allegations in
`
`Paragraph 18 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 18.
`
`19.
`
`Salem denies any legal conclusions set forth in Paragraph 19. The materials and/or
`
`filing dates referenced in Paragraph 19 speak for themselves, and to the extent the allegations in
`
`Paragraph 19 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 19.
`
`20.
`
`Salem denies any legal conclusions set forth in Paragraph 20. The materials and/or
`
`filing dates referenced in Paragraph 20 speak for themselves, and to the extent the allegations in
`
`Paragraph 20 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 20.
`
`21.
`
`Salem denies any legal conclusions set forth in Paragraph 21. The materials and/or
`
`filing dates referenced in Paragraph 21 speak for themselves, and to the extent the allegations in
`
`Paragraph 21 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`
`
`5
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`

`

`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 21.
`
`22.
`
`Salem denies any legal conclusions set forth in Paragraph 22. The materials and/or
`
`filing dates referenced in Paragraph 22 speak for themselves, and to the extent the allegations in
`
`Paragraph 22 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 22.
`
`23.
`
`Salem denies any legal conclusions set forth in Paragraph 23. The materials and/or
`
`filing dates referenced in Paragraph 23 speak for themselves, and to the extent the allegations in
`
`Paragraph 23 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 23.
`
`24.
`
`Salem denies any legal conclusions set forth in Paragraph 24. The materials and/or
`
`filing dates referenced in Paragraph 24 speak for themselves, and to the extent the allegations in
`
`Paragraph 24 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 24.
`
`25.
`
`Salem denies any legal conclusions set forth in Paragraph 25. The materials and/or
`
`filing dates referenced in Paragraph 25 speak for themselves, and to the extent the allegations in
`
`Paragraph 25 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 25.
`
`
`
`6
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`

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`26.
`
`Salem denies any legal conclusions set forth in Paragraph 26. The materials and/or
`
`filing dates referenced in Paragraph 26 speak for themselves, and to the extent the allegations in
`
`Paragraph 26 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 26.
`
`27.
`
`Salem denies any legal conclusions set forth in Paragraph 27. The materials and/or
`
`filing dates referenced in Paragraph 27 speak for themselves, and to the extent the allegations in
`
`Paragraph 27 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 27.
`
`28.
`
`Salem denies any legal conclusions set forth in Paragraph 28. The materials and/or
`
`filing dates referenced in Paragraph 28 speak for themselves, and to the extent the allegations in
`
`Paragraph 28 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 28.
`
`29.
`
`Salem denies any legal conclusions set forth in Paragraph 29. The materials and/or
`
`filing dates referenced in Paragraph 29 speak for themselves, and to the extent the allegations in
`
`Paragraph 29 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 29.
`
`30.
`
`Salem denies any legal conclusions set forth in Paragraph 30. The materials and/or
`
`filing dates referenced in Paragraph 30 speak for themselves, and to the extent the allegations in
`
`Paragraph 30 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`
`
`7
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`

`

`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 30.
`
`31.
`
`Salem denies any legal conclusions set forth in Paragraph 31. The materials and/or
`
`filing dates referenced in Paragraph 31 speak for themselves, and to the extent the allegations in
`
`Paragraph 31 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 31.
`
`32.
`
`Salem denies any legal conclusions set forth in Paragraph 32. The materials and/or
`
`filing dates referenced in Paragraph 32 speak for themselves, and to the extent the allegations in
`
`Paragraph 32 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 32.
`
`33.
`
`Salem denies any legal conclusions set forth in Paragraph 33. The materials and/or
`
`filing dates referenced in Paragraph 33 speak for themselves, and to the extent the allegations in
`
`Paragraph 33 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 33.
`
`34.
`
`Salem denies any legal conclusions set forth in Paragraph 34. The materials and/or
`
`filing dates referenced in Paragraph 34 speak for themselves, and to the extent the allegations in
`
`Paragraph 34 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 34.
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`
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`8
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`

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`35.
`
`Salem denies any legal conclusions set forth in Paragraph 35. The materials and/or
`
`filing dates referenced in Paragraph 35 speak for themselves, and to the extent the allegations in
`
`Paragraph 35 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 35.
`
`36.
`
`Salem denies any legal conclusions set forth in Paragraph 36. The materials and/or
`
`filing dates referenced in Paragraph 36 speak for themselves, and to the extent the allegations in
`
`Paragraph 36 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 36.
`
`37.
`
`Salem denies any legal conclusions set forth in Paragraph 37. The materials and/or
`
`filing dates referenced in Paragraph 37 speak for themselves, and to the extent the allegations in
`
`Paragraph 37 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 37.
`
`38.
`
`Salem denies any legal conclusions set forth in Paragraph 38. The materials and/or
`
`filing dates referenced in Paragraph 38 speak for themselves, and to the extent the allegations in
`
`Paragraph 38 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 38.
`
`39.
`
`Salem denies any legal conclusions or notice requirements set forth in Paragraph
`
`39. The materials and/or filing dates referenced in Paragraph 39 speak for themselves, and to the
`
`extent the allegations in Paragraph 39 vary therewith, Salem denies them. Further answering,
`
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`
`9
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`Salem lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations, and on that basis denies any and all remaining allegations contained in Paragraph 39.
`
`40.
`
`Salem denies any legal conclusions set forth in Paragraph 40. The materials and/or
`
`filing dates referenced in Paragraph 40 speak for themselves, and to the extent the allegations in
`
`Paragraph 40 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 40.
`
`41.
`
`Salem denies any legal conclusions set forth in Paragraph 41. The materials and/or
`
`filing dates referenced in Paragraph 41 speak for themselves, and to the extent the allegations in
`
`Paragraph 41 vary therewith, Salem denies them. Further answering, Salem lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations, and on that basis
`
`denies any and all remaining allegations contained in Paragraph 41.
`
`42.
`
`Salem denies any legal conclusions set forth in Paragraph 42. The Application,
`
`materials and/or filing dates referenced in Paragraph 42 speak for themselves, and to the extent the
`
`allegations in Paragraph 42 vary therewith, Salem denies them. Further answering, Salem lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations,
`
`and on that basis denies any and all remaining allegations contained in Paragraph 42.
`
`43.
`
`Salem denies any legal conclusions set forth in Paragraph 43. The Application,
`
`materials and/or filing dates referenced in Paragraph 43 speak for themselves, and to the extent the
`
`allegations in Paragraph 43 vary therewith, Salem denies them. Further answering, Salem lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations,
`
`and on that basis denies any and all remaining allegations contained in Paragraph 43.
`
`44.
`
`Salem denies the allegations contained in Paragraph 44 of the Opposition.
`
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`10
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`FIRST AFFIRMATIVE DEFENSE
`
`45.
`
`Salem affirmatively alleges that the Opposition fails to state a claim upon which
`
`relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
`
`46.
`
`Salem affirmatively alleges, in the alternative, that there is no likelihood of
`
`confusion, mistake, or deception between Opposer’s mark and Salem’s mark, because, inter alia,
`
`Applicant’s Mark and the alleged trademark(s) of Opposer are not confusingly similar.
`
`THIRD AFFIRMATIVE DEFENSE
`
`47.
`
`Salem affirmatively alleges, in the alternative, that any similarity between
`
`Applicant’s Mark and Opposer’s alleged trademark is restricted to that portion of the Mark
`
`consisting of the word “monster,” which is not distinctive. As a result, under the anti dissection
`
`rule any secondary meaning Opposer may have in its alleged trademark(s) is narrowly
`
`circumscribed to the exact trademark alleged and does not extend to any other feature of the
`
`trademark beyond the word “monster.”
`
`FOURTH AFFIRMATIVE DEFENSE
`
`48.
`
`Salem affirmatively alleges, in the alternative, that Opposer’s rights in and to the
`
`portion of its alleged trademark(s) are generic or, in the alternative, merely descriptive of the goods
`
`or services offered under the mark. Opposer’s alleged mark is therefore inherently unprotectable
`
`absent acquired distinctiveness.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`49.
`
`Salem affirmatively alleges, in the alternative, that as a result of opposer’s own acts
`
`and/or omissions, the opposition is barred by the doctrine of laches.
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`
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`11
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`SIXTH AFFIRMATIVE DEFENSE
`
`50.
`
`Salem affirmatively alleges, in the alternative, that the opposition is barred by the
`
`doctrine of estoppel.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`51.
`
`Salem affirmatively alleges, in the alternative, that as a result of its own acts and
`
`omissions, opposer has waived any right to pursue its opposition.
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`52.
`
`Salem affirmatively alleges, in the alternative, that the opposition is barred by the
`
`doctrine of acquiescence.
`
`NINTH AFFIRMATIVE DEFENSE
`
`53.
`
`Salem affirmatively alleges, in the alternative, that the opposition is barred by the
`
`doctrine of unclean hands.
`
`TENTH AFFIRMATIVE DEFENSE
`
`54.
`
`Salem affirmatively alleges, in the alternative, that any and all acts alleged to have
`
`been committed by Salem were performed with lack of knowledge and lack of willful intent.
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`WHEREFORE, Salem requests that the Notice of Opposition be dismissed with prejudice,
`
`together with whatever other relief the Board may deem appropriate, including registration of the
`
`term GIG MONSTER.
`
`
`
`
`
`
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`12
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`
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`Dated October 11, 2018
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/Patrick J. Thomas
`Patrick J. Thomas
`Ritzler, Coughlin & Paglia, Ltd.,
`1360 East Ninth Street
`500 IMG Center
`Cleveland, Ohio 44114
`216.241.8333 Phone
`216.241.5890
`pthomas@rcp-attorneys.com
`Attorney for Applicant
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and complete copy of the forgoing Notice of Appearance has
`
`been served on Opposer Monster Energy Company by forwarding said copy on October 11, 2018
`to Vicki Y. Nee, Counsel for Opposer, via e-mail
`to vicki.nee@knobbe.com and
`mec.ttab@knobbe.com.
`
`
`
`Dated October 11, 2018
`
`
`
`
`
`/s/Patrick J. Thomas
`Patrick J. Thomas
`Attorney for Applicant
`
`
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`
`
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`13
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