Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA961085
`03/19/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91244205
`
`Filing Party
`
`Other Party
`
`Plaintiff
`Integrated Supply Network, LLC
`
`Defendant
`Monster Energy Company
`
`Pending Motion
`
`Yes, there is a motion currently pending or another motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`1460.9007101 Proceeding No. 91244205 - Consented Motion to Suspend for
`Civil Action.pdf(128759 bytes )
`Exhibit A.pdf(4916907 bytes )
`Exhibit B.pdf(152746 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Integ-
`rated Supply Network, LLC hereby requests suspension of this proceeding pending a final determination of
`the civil action. Trademark Rule 2.117.
`Integrated Supply Network, LLC has secured the express consent of all other parties to this proceeding for
`the suspension requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/michael hess/
`Michael Hess
`michael.hess@stwiplaw.com, docketing@stwiplaw.com, tracy.natysin@stwiplaw.com
`03/19/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`TRADEMARK
`
`
`In the Matter of Application Serial Number: 87/719840
`
`Mark:
`
`
`
`
`
`INTEGRATED SUPPLY NETWORK, LLC,
`
`Opposer,
`
`
`
`MONSTER ENERGY COMPANY,
`
`Applicant.
`
`
`v.
`
`Opposition No.: 91244205
`
`
`
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 510.02, Opposer Integrated Supply
`
`Network, LLC (“Opposer”) hereby requests that the Trademark Trial and Appeal Board (the
`
`“Board”) suspend the above-captioned Opposition (the “Opposition”) pending the determination
`
`of a pending federal lawsuit between Opposer and Monster Energy Company (“Applicant”)
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`claiming trademark infringement, trade dress infringement, false designation of origin, and unfair
`
`competition (“the Lawsuit”). Applicant’s counsel provided written consent to this motion on
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`March 18, 2019.
`
`FACTUAL BACKGROUND
`
`
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`On July 1, 2015, Applicant filed Opposition No. 91222672 (the “‘672 Opposition”).
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`Applicant’s Notice of Opposition in the ‘672 Opposition alleges, among other things, that
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`Applicant will be damaged by registration of Opposer’s
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`mark in that the mark so
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`resembles Applicant’s trade dress (the “MONSTER Trade Dress”) and MONSTER-inclusive
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`trademarks registered and applied for in the United States Patent and Trademark Office, and in
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`which Applicant owns common law trademark rights (“MONSTERTM Marks”), as to be likely,
`
`when used on or in connection with Applicant’s goods, to cause confusion, to cause mistake or to
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`deceive within the meaning of Section 2(d) of the Trademark Act. Opposer has denied the
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`allegations made by Applicant in the ‘672 Opposition.
`
`
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`On March 6, 2017, Applicant filed Cancellation No. 92065591 (the “‘591 Cancellation”).
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`Applicant’s Petition for Cancellation in the ‘591 Cancellation alleges, among other things, that
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`Opposer has been and will continue to be damaged by the continued registration of U.S. Trademark
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`Registration No. 4,951,671 for the mark
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`in that the mark so resembles Applicant’s
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`MONSTERTM Marks as to be likely, when used on or in connection with Opposer’s services, to
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`cause confusion, to cause mistake or to deceive within the meaning of Section 2(d) of the
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`Trademark Act. Opposer has denied the allegations made by Applicant in the ‘591 Cancellation.
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`
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`On March 22, 2017, Applicant filed a lawsuit against Opposer in the U.S. District Court
`
`for the Central District of California – Monster Energy Company v. Integrated Supply Network,
`
`LLC, Civil Action No. 5:17-CV-00548-CBM-RAO (“the Lawsuit”). Attached hereto as Exhibit
`
`A is a true and correct copy of the Complaint filed by Applicant. The Lawsuit alleges that
`
`Opposer’s use of Opposer’s
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`mark and Opposer’s
`
` mark,
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`among other marks used by Opposer, infringes many of the MONSTERTM Marks identified in
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`Applicant’s July 1, 2015 Notice of Opposition, Applicant’s March 6, 2017 Petition for
`
`Cancellation, and Applicant’s July 6, 2017 Notice of Opposition (discussed below). Opposer
`
`denied the allegations made by Applicant in the Lawsuit and asserted counterclaims against
`
`Applicant. The lawsuit is pending. The trial concluded on November 16, 2018 and Rule 50
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`motions are pending. One motion pending in the Lawsuit is a Motion for A Permanent Injunction
`
`that was filed by Applicant. Attached hereto as Exhibit B is a true and correct copy of the Notice
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`of Motion for Permanent Injunction and proposed Permanent Injunction filed by Applicant.
`
`
`
`On June 22, 2017, Opposer filed Opposition No. 91235196 (the “‘196 Opposition”).
`
`Opposer’s Notice of Opposition in the ‘196 Opposition alleges, among other things, that Opposer
`
`will be damaged by registration of Applicant’s
`
`,
`
`, marks if the outcome of the Lawsuit
`
`is
`
`that Opposer’s
`
`,
`
`,
`
`,
`
` , and other MONSTER and MONSTER MOBILE marks (“Opposer’s
`
`Marks”) are likely to cause confusion with Applicant’s marks and that Opposer was using Opposer’s
`
`Marks on relevant goods and services before Applicant. Opposer alleges that the outcome of the
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`Lawsuit will determine whether Opposer’s marks will be likely to be confused with Applicant’s
`
` and
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` marks. Applicant has not yet filed an Answer in the ‘196 Opposition but if
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`

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`and when its Answer becomes due it will Deny the Allegations made by Opposer.
`
`
`
`On July 6, 2017, Applicant filed Opposition No. 91235441 (the “‘441 Opposition”).
`
`Applicant’s Notice of Opposition in the ‘441 Opposition alleges, among other things, that
`
`Applicant will be damaged by registration of Opposer’s
`
`mark in that the
`
`mark so resembles Applicant’s Monster Trade Dress, and MONSTERTM Marks, as to be likely,
`
`when used on or in connection with Applicant’s goods, to cause confusion, to cause mistake or to
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`deceive within the meaning of Section 2(d) of the Trademark Act. Applicant has not yet filed an
`
`Answer in this Opposition but it has indicated that if and when its Answer becomes due it will
`
`Deny the Allegations made by Opposer.
`
`
`
`On August 22, 2018, Opposer filed Opposition No. 91243188 (the “‘188 Opposition”).
`
`Opposer’s Notice of Opposition in the ‘188 Opposition alleges, among other things, that Opposer
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`will be damaged by registration of Applicant’s MONSTER ENERGY mark in view of Opposer’s
`
`use of Opposer’s Marks. Opposer alleges that the outcome of the Lawsuit will determine whether
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`Opposer’s marks will be likely to be confused with Applicant’s MONSTER ENERGY mark and
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`whether Opposer will be permanently enjoined from using all of Opposer’s Marks. Applicant has
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`denied the allegations made by Opposer in the ‘188 Opposition. Applicant has also filed a
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`consented motion for leave to amend its Answer to assert counterclaims against Opposer.
`
`
`
`Opposer filed the subject Opposition on October 10, 2018 (Opposition No. 91244205, the
`
`“‘205 Opposition”). Opposer’s Notice of Opposition alleges, among other things, that Opposer
`
`will be damaged by registration of Applicant’s
`
` mark in view of Opposer’s
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`use of Opposer’s Marks. Opposer alleges that the outcome of the Lawsuit will determine whether
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`

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`Opposer’s marks will be likely to be confused with Applicant’s
`
` mark and
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`whether Opposer will be permanently enjoined from using all of Opposer’s Marks. Applicant has
`
`denied the allegations made by Opposer in this ‘205 Opposition. Applicant has also filed a
`
`consented motion for leave to amend its Answer to assert counterclaims against Opposer.
`
`
`
`On November 28, 2018, Opposer filed Opposition No. 91245314 (the “‘314 Opposition”).
`
`Opposer’s Notice of Opposition in the ‘314 Opposition alleges, among other things, that Opposer
`
`will be damaged by registration of Applicant’s
`
` mark in view of Opposer’s use of
`
`Opposer’s Marks. Opposer alleges that the outcome of the Lawsuit will determine whether
`
`Opposer’s marks will be likely to be confused with Applicant’s
`
` mark and whether
`
`Opposer will be permanently enjoined from using all of Opposer’s Marks. Applicant has denied
`
`the allegations made by Opposer in the ‘314 Opposition and asserted counterclaims against
`
`Opposer.
`
`
`
`On May 2, 2017, the Board granted Applicant’s motion to suspend the ‘672 Opposition
`
`pending the determination of the Lawsuit. (Opposition No. 91222672, Dkt. No. 24.) On June 19,
`
`2017 the Board granted the consented motion to suspend the ‘591 Cancellation pending the
`
`outcome of the Lawsuit. (Cancellation No. 92065591, Dkt. No. 9.) On October 17, 2017 the
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`

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`Board granted the consented motion to suspend the ‘196 Opposition pending the outcome of the
`
`Lawsuit. (Opposition No. 91235196, Dkt. No. 11.) On September 7, 2017 the Board granted the
`
`consented motion to suspend the ‘441 Opposition pending the outcome of the Lawsuit.
`
`(Opposition No. 91235441, Dkt. No. 9.) In view of status updates concerning the Lawsuit that
`
`were provided to the Board (the latest of which was filed on November 29, 2018 in the ‘196
`
`Opposition), these proceedings remain suspended.
`
`
`
`Accordingly, Opposer respectfully requests suspension of this ‘205 Opposition until
`
`resolution of the Lawsuit, which Applicant does not oppose.
`
`
`
`CONCLUSION
`
`For the reasons set forth above, Opposer respectfully requests that the Board suspend this
`
`proceeding pending the outcome of the Lawsuit.
`
`
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`
`
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`
`
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`
`
`
`Dated: March 19, 2019
`
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`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`/michael t. hess/
`Michael T. Hess, Reg. No. 57,723
`SEAGER, TUFTE & WICKHEM LLP
`100 South Fifth Street, Suite 600
`Minneapolis, Minnesota 55402
`Phone: 612.767.4570
`Email: Michael.hess@stwiplaw.com
`
`docketing@stwiplaw.com
`
`Attorney for Opposer
`Integrated Supply Network, LLC
`
`
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`

`

`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and complete copy of the foregoing CONSENTED MOTION
`
`TO SUSPEND FOR CIVIL ACTION has been served on Applicant’s counsel, Jason E.
`Champion and Paul A. Stewart on, March 19, 2019 by email to the following email address:
`
`
`- efiling@knobbe.com
`
`
`
`
`
`Dated: March 19, 2019
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`/michael t. hess/
`Attorney for Opposer
`
`CERTIFICATE OF TRANSMITTAL
`
`
`I hereby certify that the foregoing CONSENTED MOTION TO SUSPEND FOR CIVIL
`
`ACTION is being filed electronically with the TTAB via ESTTA on, March 19, 2019.
`
`
`Dated: March 19, 2019
`
`
`
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`
`
`/michael t. hess/
`Attorney for Opposer
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`

`

`Exhibit A
`Exhibit A
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 1 of 54 Page ID #:1
`
`
`
`Steven J. Nataupsky (CA SBN 155913)
`steven.nataupsky@knobbe.com
`Lynda J. Zadra-Symes (CA SBN 156511)
`lynda.zadrasymes@knobbe.com
`Jason A. Champion (CA SBN 259207)
`jason.champion@knobbe.com
`Julianna M. Simon (CA SBN 307664)
`julianna.simon@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Phone: (949) 760-0404
`Facsimile: (949) 760-9502
`
`Attorneys for Plaintiff
`MONSTER ENERGY COMPANY
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`Case No. 5:17-CV-00548
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, TRADE DRESS
`INFRINGMENT, FALSE
`DESIGNATION OF ORIGIN, AND
`UNFAIR COMPETITION
`
`DEMAND FOR JURY TRIAL
`
`
`
`)))))))))))))
`
`
`
`MONSTER ENERGY COMPANY,
`a Delaware corporation,
`
`Plaintiff,
`
`v.
`
`INTEGRATED SUPPLY
`NETWORK, LLC, a Florida limited
`liability company,
`
`Defendant.
`
`
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`1 2 3 4 5 6 7 8 9
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`10
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`11
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`12
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`13
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`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 2 of 54 Page ID #:2
`
`
`
`Plaintiff Monster Energy Company (“Plaintiff” or “Monster”) hereby
`
`complains of Defendant Integrated Supply Network, LLC (“Defendant”), and
`
`alleges as follows:
`
`I. JURISDICTION AND VENUE
`
`1.
`
`This is an action for 1) trademark infringement, trade dress
`
`infringement, and false designation of origin under 15 U.S.C. § 1125(a), 2)
`
`trademark infringement under 15 U.S.C. § 1114, 3) California common-law
`
`unfair competition, and 4) unfair competition arising under California Business
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`& Professions Code §§ 17200 et seq.
`
`2.
`
`The Court has original subject matter jurisdiction over the claims
`
`that relate to trademark infringement, trade dress infringement, and false
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`designation of origin pursuant to 15 U.S.C. §§ 1116 and 1121(a) and also
`
`pursuant to 28 U.S.C. §§ 1331 and 1338, as these claims arise under the laws of
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`the United States. The Court has supplemental jurisdiction over the claims in
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`this Complaint which arise under state statutory and common law pursuant to 28
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`U.S.C. §§ 1338(b) and 1367(a), because the state law claims are so related to
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`the federal claims that they form part of the same case or controversy and derive
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`from a common nucleus of operative facts.
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`3.
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`This Court has personal jurisdiction over Defendant because
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`Defendant has a continuous, systematic, and substantial presence within this
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`Judicial District and within California. Defendant has distribution centers in
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`Fresno and West Sacramento, California. Defendant advertises the location of
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`its
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`distribution
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`centers
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`on
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`one
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`of
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`Defendant’s
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`websites,
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`http://www.isnweb.com/isnweb/contact. In addition, by committing acts of
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`trademark infringement, trade dress infringement, false designation of origin,
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`and unfair competition in this Judicial District, including, but not limited to,
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`using infringing marks in connection with the sale of products to customers in
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`-1-
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`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 3 of 54 Page ID #:3
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`
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`this Judicial District, Defendant’s acts form a substantial part of the events or
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`omissions giving rise to Monster’s claims.
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`4.
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`Venue is proper in this Judicial District pursuant to 28 U.S.C.
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`§ 1391(b) and (c) at least because Defendant resides in this Judicial District by
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`virtue of doing business within the Judicial District and a substantial portion of
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`the events complained of herein took place in this Judicial District.
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`II. THE PARTIES
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`5. Monster is a corporation organized and existing under the laws of
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`the State of Delaware, having a principal place of business at 1 Monster Way,
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`Corona, California 92879.
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`6.
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`Upon information and belief, Defendant is a limited liability
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`company organized and existing under the laws of the State of Florida, having a
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`principal place of business at 2727 Interstate Drive Lakeland, Florida 33805.
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`Defendant is subject to the personal jurisdiction of this Court by virtue of its
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`substantial contacts with California, including its participation in the acts and
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`events occurring in this Judicial District described herein.
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`III. COMMON ALLEGATIONS FOR ALL CLAIMS OF RELIEF
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`A. Monster’s Trademarks and Trade Dress
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`7. Monster is a nationwide leader in the business of developing,
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`marketing, selling, and distributing beverages. Monster has achieved extensive
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`exposure and widespread recognition of its MONSTER™ brand through its
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`sponsorship of motorsports athletes,
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`teams and events, among other
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`sponsorships.
`
`8.
`In 2002, long before Defendant’s acts described herein, Monster
`launched its MONSTER ENERGY® drink brand, bearing its now-famous
`MONSTER mark and MONSTER ENERGY® mark.
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`9. Monster’s successful line of MONSTER drinks has grown to
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`include numerous other well-known products, the containers and packaging of
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`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 4 of 54 Page ID #:4
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`
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`which are prominently marked with the MONSTER mark. The MONSTER line
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`of drinks includes or has included, but is not limited to, original Monster
`Energy® and Lo-Carb Monster Energy®; Monster Assault®; Juice Monster®
`Khaos®, Juice Monster® Ripper®, and Juice Monster® Pipeline Punch®;
`Ubermonster®; Monster Energy® Gronk; Monster Energy® Import; Punch
`Monster® Baller’s Blend and Punch Monster® Mad Dog; Monster Energy
`Absolutely Zero®; Monster Energy Zero Ultra®, Monster Energy Ultra Blue®,
`Monster Energy Ultra Red®, Monster Energy Ultra Sunrise®, Monster Energy
`Ultra Citron®, and Monster Energy Ultra Black®; Monster Rehab®, which is a
`
`line of tea-based non-carbonated energy drinks, which includes Monster’s
`Monster Rehab® Tea + Orangeade + Energy, Monster Rehab® Tea + Pink
`Lemonade + Energy, Monster Rehab® Tea + Lemonade + Energy, Monster
`Rehab® Raspberry Tea + Energy, and Monster Rehab® Peach Tea + Energy;
`Java Monster®, which is a line of dairy based coffee plus energy drinks; Muscle
`Monster®, which is a line of energy shakes; Monster Energy Extra Strength
`Nitrous Technology®, which is a line of energy drinks with a blend of nitrous
`oxide and carbon dioxide to create a smoother energy drink; and ® Monster
`Energy® which is a five ounce concentrated energy drink, among others
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`(referred to collectively as “MONSTER line of drinks”).
`
`10. Monster is also the owner of numerous trademark registrations for
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`marks that incorporate its famous MONSTER Mark and/or MONSTER
`ENERGY® Mark,
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`in connection with beverages, nutritional
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`for use
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`supplements, clothing, sporting goods, promoting goods and services in the
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`motorsports industry, and other products and services, including the following
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`U.S. Trademark Registrations:
`
`
`
`
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`-3-
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`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 5 of 54 Page ID #:5
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`REG.
`DATE
`DATE
`FILED
`03/12/2014 04/14/2015
`
`05/23/2003 01/17/2006
`
`04/18/2002 02/27/2006
`
`04/02/2009 01/18/2011
`
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`MONSTER
`ENERGY
`
`MONSTER
`ENERGY
`
`
`
`MONSTER
`ENERGY
`
`
`
`3,044,315
`
`4,721,433 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
`Nutritional supplements in
`liquid form, but excluding
`perishable beverage
`products that contain fruit
`juice or soy, whether such
`products are pasteurized or
`not
`3,057,061 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, 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
`3,908,601 Clothing, namely, t-shirts,
`hooded shirts and hooded
`sweatshirts, sweat shirts,
`jackets, pants, bandanas,
`sweat bands and gloves;
`headgear, namely, hats and
`beanies
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`-4-
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`11
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`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 6 of 54 Page ID #:6
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`
`
`MARK
`
`REG. NO. GOODS/SERVICES
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`3,914,828 Sports helmets
`
`REG.
`DATE
`DATE
`FILED
`04/02/2009 02/01/2011
`
`
`
`
`
`
`
`
`
`
`
`
`
`M
`MONSTER
`ENERGY
`
`04/02/2009 02/22/2011
`
`04/02/2009 01/18/2011
`
`10/05/2012 05/07/2013
`
`08/26/2013
`
`12/23/2014
`
`
`
`08/07/2009 01/19/2010
`
`05/23/2003 01/17/2006
`
`3,923,683 All purpose sport bags;
`All-purpose carrying bags;
`Backpacks; Duffle bags
`
`3,908,600 Stickers; sticker kits
`comprising stickers and
`decals; decals
`
`4,332,062 Silicone wrist bands;
`silicone bracelets; jewelry,
`namely, bracelets and
`wristbands
`
`4,660,598 Lanyards; Lanyards for
`holding whistles, keys,
`eyeglasses, sunglasses,
`mobile telephones, badges,
`identification cards, event
`passes, media passes,
`photographs, recording
`equipment, or similar
`conveniences
`3,740,050 Nutritional supplements;
`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
`3,044,314 Nutritional supplements in
`liquid form, but excluding
`perishable beverage
`products that contain fruit
`
`-5-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 7 of 54 Page ID #:7
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`M
`MONSTER
`ENERGY
`
`MONSTER
`ENERGY
`MONSTER
`ENERGY
`
`MONSTER
`REHAB
`
`MONSTER
`REHAB
`
`3,134,842
`
`
`juice or soy, whether such
`products are pasteurized or
`not
`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
`4,036,680 Nutritional supplements in
`liquid form
`4,036,681 Non-alcoholic beverages,
`namely, energy drinks,
`excluding perishable
`beverage products that
`contain fruit juice or soy
`4,111,964 Ready to drink tea, iced tea
`and tea based beverages;
`ready to drink flavored tea,
`iced tea and tea based
`beverages
`4,129,288 Nutritional supplements in
`liquid form
`
`Beverages, namely, non-
`alcoholic non-carbonated
`drinks enhanced with
`
`-6-
`
`05/07/2003 08/29/2006
`
`09/11/2007 10/11/2011
`
`09/11/2007 10/11/2011
`
`08/24/2011 03/13/2012
`
`07/06/2010 04/17/2012
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 8 of 54 Page ID #:8
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`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
`4,376,796 Nutritional supplements in
`liquid form
`
`Beverages, namely, soft
`drinks; non-alcoholic and
`non-carbonated drinks
`enhanced with vitamins,
`minerals, nutrients,
`proteins, amino acids
`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
`4,451,535 Vitamin fortified
`beverages
`
`Dairy-based beverages;
`dairy-based energy shakes;
`energy shakes; coffee
`energy shakes; chocolate
`
`-7-
`
`MUSCLE
`MONSTER
`
`MUSCLE
`MONSTER
`
`07/02/2010 07/30/2013
`
`07/10/2013 12/17/2013
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 9 of 54 Page ID #:9
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`energy shakes
`
`Ready to drink coffee
`based beverages; ready to
`drink chocolate-based
`beverages
`4,716,750 Nutritional supplements in
`liquid form;
`
`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 soy.
`4,634,053 Nutritional supplements in
`liquid form;
`
`Vitamin fortified
`beverages; Non-alcoholic
`beverages, namely, energy
`drinks, energy drinks
`flavored with juice, sports
`drinks, all enhanced with
`vitamins, minerals,
`nutrients, proteins, amino
`acids, and/or herbs, but
`excluding perishable
`beverage products that
`contain fruit juice or soy,
`whether such products are
`pasteurized or not
`4,604,556 Nutritional supplements in
`liquid form; Vitamin
`fortified beverages;
`Non-alcoholic beverages,
`
`-8-
`
`JUICE
`MONSTER
`
`MONSTER
`ASSAULT
`
`PUNCH
`MONSTER
`
`02/24/2012 04/07/2015
`
`11/15/2013 11/04/2014
`
`11/22/2013 09/16/2014
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 10 of 54 Page ID #:10
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`namely, energy drinks,
`energy drinks flavored
`with juice, sports drinks,
`all enhanced with
`vitamins, minerals,
`nutrients, proteins, amino
`acids, and/or herbs, but
`excluding perishable
`beverage products that
`contain fruit juice or soy,
`whether such products are
`pasteurized or not
`3,959,457 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
`5,018,111 Ready to drink coffee, iced
`coffee and coffee based
`beverages; ready to drink
`flavored coffee, iced
`coffee and coffee based
`beverages
`Nutritional supplements in
`liquid form;
`
`Beverages, namely,
`carbonated soft drinks;
`nonalcoholic carbonated
`
`4,234,456
`
`-9-
`
`JAVA
`MONSTER
`
`JAVA
`MONSTER
`
`UBERMON
`STER
`
`
`
`12/8/2005 05/10/2011
`
`03/15/2016 08/09/2016
`
`07/09/2010 10/30/2012
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 11 of 54 Page ID #:11
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`soft drinks and energy
`drinks enhanced with
`vitamins, minerals,
`nutrients, proteins, amino
`acids and/or herbs;
`carbonated energy drinks
`and sports drinks; all the
`foregoing goods exclude
`perishable beverage
`products that contain fruit
`juice or soy, whether such
`products are pasteurized or
`not
`5,041,267 Nutritional supplements;
`
`Non-alcoholic drinks,
`namely, carbonated soft
`drinks, carbonated energy
`drinks, sports drinks, and
`soft drinks, energy drinks
`and sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`4,989,137 Nutritional supplements in
`liquid form;
`
`Non-alcoholic beverages,
`namely, carbonated soft
`drinks, carbonated and
`non-carbonated energy
`drinks, sports drinks, and
`soft drinks, energy drinks
`and sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`5,013,706 Nutritional supplements in
`liquid form;
`
`-10-
`
`MONSTER
`UNLEADED
`
`MONSTER
`ENERGY
`UNLEADED
`
`MONSTER
`ENERGY
`
`08/03/2011 09/13/2016
`
`05/14/2014 06/28/2016
`
`01/20/2015 08/02/2016
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 12 of 54 Page ID #:12
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`ABSOLUTE
`LY ZERO
`
`MONSTER
`ENERGY
`ULTRA
`RED
`
`MONSTER
`ENERGY
`ULTRA
`BLUE
`
`
`Non-alcoholic beverages,
`namely, soft drinks,
`carbonated soft drinks,
`energy drinks and sports
`drinks; energy drinks and
`sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`4,532,292 Nutritional supplements in
`liquid form; vitamin
`fortified beverages;
`
`Non-alcoholic beverages,
`namely, energy 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
`4,534,414 Nutritional supplements in
`liquid form; vitamin
`fortified beverages;
`
`Non-alcoholic beverages,
`namely, energy 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
`
`-11-
`
`06/13/2013 05/20/2014
`
`01/02/2013 05/20/2014
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 13 of 54 Page ID #:13
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`05/13/2014 11/24/2015
`
`05/14/2014 11/17/2015
`
`12/18/2014 01/05/2016
`
`MONSTER
`ENERGY
`ULTRA
`BLACK
`
`MONSTER
`ENERGY
`ULTRA
`CITRON
`
`MONSTER
`ENERGY
`ZERO
`ULTRA
`
`juice or soy, whether such
`products are pasteurized or
`not
`4,860,491 Nutritional supplements in
`liquid form;
`
`Non-alcoholic beverages,
`namely, carbonated soft
`drinks, carbonated energy
`drinks, sports drinks, and
`soft drinks, energy drinks
`and sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`4,856,373 Nutritional supplements in
`liquid form;
`
`Non-alcoholic beverages,
`namely, carbonated soft
`drinks, carbonated energy
`drinks, sports drinks, and
`soft drinks, energy drinks
`and sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`4,879,793 Nutritional supplements in
`liquid form;
`
`Non-alcoholic beverages,
`namely, soft drinks,
`carbonated soft drinks,
`energy drinks, sports
`drinks; energy drinks and
`sports drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`
`-12-
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 14 of 54 Page ID #:14
`
`REG.
`DATE
`DATE
`FILED
`08/29/2005 03/01/2011
`
`02/13/2009 09/28/2010
`
`05/07/2003 08/29/2006
`
`02/02/2015 12/08/2015
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`ASSAULT
`M
`MONSTER
`ENERGY
`
`LO-CARB
`MONSTER
`ENERGY
`
`
`
`
`
`3,924,797 Beverages, namely,
`carbonated drinks
`enhanced with vitamins,
`minerals, nutrients, amino
`acids, and/or herbs;
`carbonated and non-
`carbonated energy drinks
`3,852,118 Nutritional supplements;
`
`Non-alcoholic beverages,
`namely, energy drinks,
`drinks enhanced with
`vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`3,134,841 Beverages, namely,
`carbonated soft drinks,
`carbonated soft drinks
`enhanced with vitamins,
`minerals, nutrients, amino
`acids and/or herbs,
`carbonated energy and
`sports drinks, fruit juice
`drinks having a juice
`content of 50% or less by
`volume that are shelf
`stable, but excluding
`perishable beverage
`products that contain fruit
`juice or soy, whether such
`products are pasteurized or
`not
`4,865,702 Nutritional supplements in
`liquid form;
`
`Non-alcoholic beverages,
`namely, carbonated soft
`drinks; carbonated drinks
`enhanced with vitamins,
`
`-13-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 1 Filed 03/22/17 Page 15 of 54 Page ID #:15
`
`
`
`MARK
`
`REG. NO. GOODS/SERVICES
`
`DATE
`FILED
`
`REG.
`DATE
`
`minerals, nutrients,
`proteins, amino acids
`and/or herbs; carbonated
`energy drinks and sports
`drinks
`
`11. Attached hereto as Exhibits A1-A36 are true and correct copies of
`
`Monster’s trademark registrations identified in Paragraph 10 of this Complaint,
`
`which are hereby incorporated by reference. Collectively, those registrations
`
`and trademarks, including all common law rights therein, are referred to as the
`
`“MONSTER Marks.”
`
`12. Pursuant to 15 U.S.C. § 1065, U.S. Trademark Registration Nos.
`
`3,044,314, 3,044,315, 3,057,061, 3,134,841, 3,134,842, 3,852,118, 3,959,457,
`
`and 3,908,600 are incontestable.
`
`13.
`
`In addition, since 2002, Monster has consistently used a distinctive
`
`trade dress for its packaging and promotional materials, including a stylized font
`
`for the mark MONSTER on a dark background, a bright contrasting accent
`
`color, including bright green, and an overall aggressive, edgy theme, as shown
`
`below (the “MONSTER Trade Dress”):
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-14-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`2