Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1002723
`09/17/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Monster Energy Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`09/18/2019
`
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`Alexander D. Zeng
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`(949) 760-0404
`
`Applicant Information
`
`Application No
`
`88210846
`
`Publication date
`
`05/21/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`09/17/2019
`
`Opposition Peri-
`od Ends
`
`09/18/2019
`
`Interpet Limited
`VINCENT LANE DORKING
`Surry, RH43YX
`UNITED KINGDOM
`
`Goods/Services Affected by Opposition
`
`Class 007. First Use: 2012/02/02 First Use In Commerce: 2012/02/02
`All goods and services in the class are opposed, namely: Vacuum cleaners for ponds and aquatic en-
`vironments; cleaning machines for ponds; suction nozzles for vacuum cleaners adapted for ponds
`and aquatic environments; brushes being parts of cleaning machines for ponds and for vacuum
`cleaners adapted for ponds and aquatic environments
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common law rights as asserted in the Notice of
`Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`3908601
`
`Application Date
`
`04/02/2009
`
`

`

`No.
`
`Registration Date
`
`01/18/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`ERGY".
`
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat
`shirts,jackets, pants, bandanas, sweat bands and gloves; headgear, namely,
`hats and beanies
`
`U.S. Registration
`No.
`
`3923683
`
`Registration Date
`
`02/22/2011
`
`Word Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`
`Class 018. First use: First Use: 2004/05/00 First Use In Commerce: 2004/05/00
`All purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags
`
`U.S. Registration
`No.
`
`3908600
`
`Registration Date
`
`01/18/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`
`

`

`Mark
`
`ERGY".
`
`Goods/Services
`
`Class 016. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Stickers; sticker kits comprising stickers and decals; decals
`
`U.S. Registration
`No.
`
`3914828
`
`Registration Date
`
`02/01/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`
`Class 009. First use: First Use: 2006/01/00 First Use In Commerce: 2006/01/00
`Sports helmets
`
`U.S. Registration
`No.
`
`3044315
`
`Registration Date
`
`01/17/2006
`
`Application Date
`
`05/23/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MONSTER ENERGY
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`nutritional supplements in liquid [and non-liquid ] form, but excluding perishable
`beverage products that contain fruitjuice or soy, whether such products arepas-
`teurized or not
`
`U.S. Registration
`No.
`
`4036680
`
`Registration Date
`
`10/11/2011
`
`Application Date
`
`09/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Nutritional supplements in liquid form
`
`U.S. Registration
`No.
`
`4036681
`
`Registration Date
`
`10/11/2011
`
`Word Mark
`
`Design Mark
`
`MONSTER ENERGY
`
`Application Date
`
`09/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Non-alcoholic beverages, namely, energydrinks, excluding perishable beverage
`products that contain fruit juice or soy
`
`U.S. Registration
`No.
`
`3057061
`
`Registration Date
`
`02/07/2006
`
`Application Date
`
`04/18/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Fruit juice drinks having a juice content of 50% or less by volume that are shelf
`stable, carbonated soft drinks, carbonated drinks enhanced with vitamins, miner-
`als, nutrients, amino acids and/or herbs, [ aerated water, soda water and seltzer
`water, ] but excluding perishable beverage products that contain fruit juiceor soy,
`whether such products are pasteurized or not
`
`

`

`U.S. Registration
`No.
`
`3959457
`
`Registration Date
`
`05/10/2011
`
`Word Mark
`
`Design Mark
`
`JAVA MONSTER
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2007/04/27 First Use In Commerce: 2007/04/27
`Beverages, namely, soft drinks; non-carbonated energy drinks; non-carbonated
`sports drinks; soft drinks and non-carbonated energy drinks, all enhanced with
`vitamins, minerals, nutrients, amino acids,and/or herbs, but excluding perishable
`beverage products that contain fruit juice or soy, whether such products are pas-
`teurized or not
`
`U.S. Registration
`No.
`
`3044314
`
`Registration Date
`
`01/17/2006
`
`Application Date
`
`05/23/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`M MONSTER ENERGY
`
`NONE
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`nutritional supplements in liquid [and non-liquid ] form, but excluding perishable
`beverage products that contain fruitjuice or soy, whether such products arepas-
`teurized or not
`
`U.S. Registration
`No.
`
`3852118
`
`Registration Date
`
`09/28/2010
`
`Application Date
`
`02/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`LO-CARB MONSTER ENERGY
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Nutritional supplements
`Class 032. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Non-alcoholic beverages, namely, energydrinks, drinks enhanced with vitamins,
`minerals, nutrients, amino acids and/or herbs
`
`U.S. Registration
`No.
`
`3134842
`
`Registration Date
`
`08/29/2006
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`M MONSTER ENERGY
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Beverages, namely, carbonated soft drinks, carbonated drinks enhanced with
`vitamins, minerals, nutrients, amino acids and/or herbs, carbonated [ and non-
`carbonated ] energy or sports drinks, fruit juice drinks having a juice content of
`50%or less by volume that are shelf stable, [ and water, ] but excluding perish-
`able beverage products that contain fruit juice or soy, whether such products are
`pasteurized or not
`
`77705822#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`77705747#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`77276979#TMSN.png( bytes )
`77276989#TMSN.png( bytes )
`78769836#TMSN.png( bytes )
`77670729#TMSN.png( bytes )
`2019-09-17 FINAL NOTICE OF OPPOSITION-
`88210846-HANB.10083M.pdf(147755 bytes )
`EX 1 REG NO 3908601 - HANB.10083M.PDF(1316388 bytes )
`EX 2 REG NO 3923683 - HANB.10083M.PDF(1291611 bytes )
`EX 3 REG NO 3908600 - HANB.10083M.PDF(1286694 bytes )
`EX 4 REG NO 3914828 - HANB.10083M.PDF(1271900 bytes )
`EX 5 REG NO 3044315 - HANB.10083M.PDF(823059 bytes )
`EX 6 REG NO 4036680 - HANB.10083M.PDF(834917 bytes )
`EX 7 REG NO 4036681 - HANB.10083M.PDF(835743 bytes )
`EX 8 REG NO 3057061 - HANB.10083M.PDF(827640 bytes )
`
`

`

`EX 9 REG NO 3959457 - HANB.10083M.PDF(1361474 bytes )
`EX 10 REG NO 3044314 - HANB.10083M.PDF(823119 bytes )
`EX 11 REG NO 3852118 - HANB.10083M.PDF(1321804 bytes )
`EX 12 REG NO 3134842 - HANB.10083M.PDF(828838 bytes )
`
`Signature
`
`/Alexander D. Zeng/
`
`Name
`
`Date
`
`Alexander D. Zeng
`
`09/17/2019
`
`

`

`HANB.10083M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No.: ___________
`
`
`
`Serial No.: 88/210846
`
`Mark: POND MONSTA
`
`)))))))))))
`
`
`
`Opposer,
`
`
`
`v.
`
`
`MONSTER ENERGY COMPANY
`
`
`
`
`
`INTERPET LIMITED,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`Monster Energy Company, a Delaware corporation, located and doing business at
`
`1 Monster Way, Corona, California 92879, (“Opposer”) believes that it will be damaged by
`
`registration of U.S. Trademark Application Serial No. 88/210846 (“Application”) for the mark
`
`POND MONSTA (“Applicant’s Mark”) filed by Interpet Limited (“Applicant”) and therefore
`
`opposes the same.
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on November 29, 2018, Applicant seeks to obtain
`
`registration on the Principal Register for the trademark POND MONSTA for “Vacuum cleaners for
`
`ponds and aquatic environments; cleaning machines for ponds; suction nozzles for vacuum cleaners
`
`adapted for ponds and aquatic environments; brushes being parts of cleaning machines for ponds
`
`
`
`

`

`and for vacuum cleaners adapted for ponds and aquatic environments” in International Class 7
`
`based on an alleged use of the mark in interstate commerce since February 2, 2012.
`
`2.
`
`Since at least 2002, long before the filing date of the Application, Opposer has
`
`been, and still is, engaged in the development, marketing, and/or sale of energy drinks,
`
`nutritional supplements, clothing, hats, bags, helmets, gloves, sports equipment, stickers,
`
`lanyards, accessories, and other products under the marks MONSTER™ and MONSTER
`
`ENERGY® and related marks, all containing “MONSTER.” Opposer’s family of MONSTER
`
`Marks includes, for example, the following: MONSTER™, MONSTER ENERGY®,
`
`®, M
`
`MONSTER ENERGY®, JAVA MONSTER®, LO-CARB MONSTER ENERGY®, (collectively,
`
`the “MONSTER Marks”).
`
`3.
`
`Since at least before the filing date of the Application, Opposer has continuously
`
`used and promoted its MONSTER Marks. Opposer’s family of MONSTER Marks is the subject
`
`of substantial and continuous marketing and promotion by Opposer in connection with its
`
`MONSTER line of drinks and clothing, gloves, headgear, helmets, decals, bags and numerous
`
`other products.
`
`4.
`
`Opposer has and continues to widely market and promote its family of
`
`MONSTER Marks to consumers by, for example, displaying one or more of the MONSTER
`
`Marks extensively on apparel, merchandise, and product samplings; on billions of cans; on
`
`promotional and point of sale materials; in magazines and other publications; on the
`
`monsterenergy.com website, monsterarmy.com website and other Internet websites and social
`
`media sites; and at trade shows, concert tours and live events. In addition, Opposer promotes the
`
`MONSTER Marks through, for example, the sponsorship of music festivals, athletes and athletic
`
`teams, and sports events that are televised nationwide and internationally.
`
`
`
`- 2 -
`
`

`

`5.
`
`Many of Opposer’s sponsorships involve athletes and teams that are co-sponsored
`
`by tool companies such as Dewalt, Stanley, MAC Tools, Mechanix Wear, Makita, and
`
`GearWrench.
`
`6.
`
`Opposer has engaged in promotional activities with the tool industry since at least
`
`2006. Opposer has authorized the use of its MONSTER Marks in connection with tool company
`
`promotions and licensed the MONSTER Marks for use on tool boxes.
`
`7.
`
`For example, between September 2006 and January 2007, Opposer engaged in a
`
`marketing campaign with Makita. Under this program, known as the Monster Makita Ultimate
`
`Truck Sweepstakes, the grand-prize winner received a GMC truck filled with MONSTER
`
`ENERGY® drinks and Makita tools. Seventy-five (75) first prizewinners also received a Makita
`
`LXT600 six-piece combo tool kit valued at $699.
`
`8.
`
`In addition, Opposer has authorized the use of its MONSTER Marks in
`
`connection with licensed toolboxes. For example, in 2012, Monster authorized the use of the
`
`MONSTER Marks on a limited edition series of Snap-on toolboxes in connection with
`
`Opposer’s sponsorship of Ken Block.
`
`9.
`
`Opposer also markets and promotes its beverage products in stores that are not
`
`traditional beverage channels, such as Lowe’s, Auto Zone, and Home Depot. For example,
`
`Opposer conducts sampling events and other activities featuring the MONSTER Marks in
`
`hardware and department stores such as Lowe’s, Home Depot, Sears, and Walmart.
`
`10.
`
`There is a huge demand for goods bearing Opposer’s MONSTER marks. For
`
`example, in the United States, Opposer’s licensees have sold licensed products bearing Opposer’s
`
`MONSTER marks to consumers in all 50 states through their own websites and through
`
`nationwide retailers. Those nationwide retailers have also sold the licensed products bearing
`
`
`
`- 3 -
`
`

`

`Opposer’s MONSTER marks through their own websites. These licensees also sell the licensed
`
`products bearing the MONSTER marks throughout the world including on websites, in retail
`
`stores, and at sporting events.
`
`11.
`
`By virtue of Opposer’s continuous and substantial use, the MONSTER Marks have
`
`become famous identifiers of Opposer such that consumers have come to recognize a family of
`
`MONSTER Marks with which Opposer markets and sells its goods and services. As a result,
`
`Opposer has built up, at great expense and effort, valuable goodwill in its family of MONSTER
`
`Marks and has developed strong common law rights in Opposer’s MONSTER Marks, which
`
`have appeared on helmets, gloves, clothing, other merchandise, on billions of cans of beverages
`
`and nutritional supplements, and in extensive nationwide promotions. Opposer’s common law
`
`rights in its family of MONSTER Marks predate the filing date of the Application, and Opposer
`
`relies on its common law trademark rights.1
`
`12.
`
`In addition to Opposer’s common law rights, Opposer owns and relies on
`
`incontestable U.S. Trademark Registration 3,908,601 (the “’601 Registration”) for the mark
`
`
`
`for “clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants,
`
`bandanas, sweat bands and gloves; headgear, namely, hats and beanies” in International
`
`Class 25, which registration issued January 18, 2011 and is based on an application filed in the
`
`United States Patent and Trademark Office (“PTO”) on April 2, 2009. The first use in commerce
`
`date shown in the ’601 Registration is June 30, 2002. The filing date and first use in commerce
`
`date shown in Opposer’s ’601 Registration is prior to the filing date and the alleged first use in
`
`
`1 Opposer has also obtained California Trademark Registration No. 108,124 for the mark MONSTER for “fruit juice
`drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids
`and/or herbs, aerated water, soda water and seltzer water” in International Class 32, which registration issued April
`24, 2002.
`
`
`
`- 4 -
`
`

`

`commerce date shown in the Application, respectively. True and correct copies of the specifics
`
`of the ’601 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 1 and made of record.
`
`13.
`
`Opposer owns and relies on U.S. Trademark Registration 3,923,683 (the “’683
`
`Registration”) for the mark
`
` for “all purpose sport bags; all-purpose carrying bags;
`
`backpacks; duffle bags” in International Class 18, which registration issued February 22, 2011
`
`and is based on an application filed in the PTO on April 2, 2009. The first use in commerce date
`
`shown in the ’683 Registration is May 2004. The filing date and first use in commerce date
`
`shown Opposer’s ’683 Registration is prior to the filing date and alleged first use in commerce
`
`date shown in the Application, respectively. True and correct copies of the specifics of the ’683
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 2 and made of record.
`
`14.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,908,600
`
`(the “’600 Registration”) for the mark
`
` for “stickers; sticker kits comprising stickers and
`
`decals; decals” in International Class 16, which registration issued January 18, 2011 and is based
`
`on an application filed in the PTO on April 2, 2009. The first use in commerce date shown in the
`
`’600 Registration is January 2004. The filing date and first use in commerce date shown in
`
`Opposer’s ’600 Registration is prior to the filing date and alleged first use in commerce date shown
`
`in the Application, respectively. True and correct copies of the specifics of the ’600 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 3 and
`
`made of record.
`
`
`
`- 5 -
`
`

`

`15.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,914,828
`
`(the “’828 Registration”) for the mark
`
` for “sports helmets” in International Class 9, which
`
`registration issued February 1, 2011 and is based on an application filed in in the PTO on April 2,
`
`2009. The first use in commerce date shown in the ’828 Registration is January 2006. The filing
`
`date and first use in commerce date shown in Opposer’s ’828 Registration is prior to the filing date
`
`and alleged first use in commerce date shown in the Application, respectively. True and correct
`
`copies of the specifics of the ’828 Registration obtained from the PTO’s TESS and Assignment
`
`databases are attached hereto as Exhibit 4 and made of record.
`
`16.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,315 (the “’315 Registration”) for the mark MONSTER ENERGY for “nutritional
`
`supplements in liquid form, but excluding perishable beverage products that contain fruit juice or
`
`soy, whether such products are pasteurized or not” in International Class 5, which registration
`
`issued January 17, 2006 and is based on an application filed in the PTO on May 23, 2003. The
`
`first use in commerce date shown in the ’315 Registration is April 18, 2002. The filing date and
`
`first use in commerce date shown in Opposer’s ’315 Registration is prior to the filing date and
`
`alleged first use in commerce date shown in the Application, respectively. True and correct copies
`
`of the specifics of the ’315 Registration obtained from the PTO’s TESS and Assignment
`
`databases are attached hereto as Exhibit 5 and made of record.
`
`17.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 4,036,680
`
`(the “’680 Registration”) for the mark MONSTER ENERGY for “nutritional supplements in
`
`liquid form” in International Class 5, which registration issued October 11, 2011 and is based on
`
`an application filed in the PTO on September 11, 2007. The first use in commerce date shown in
`
`
`
`- 6 -
`
`

`

`the ’680 Registration is April 18, 2002. The filing date and first use in commerce date shown in
`
`Opposer’s ’680 Registration is prior to the filing date and alleged first use in commerce date shown
`
`in the Application, respectively. True and correct copies of the specifics of the ’680 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 6 and
`
`made of record.
`
`18.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 4,036,681
`
`(the “’681 Registration”) for the mark MONSTER ENERGY for “non-alcoholic beverages,
`
`namely, energy drinks, excluding perishable beverage products that contain fruit juice or soy” in
`
`International Class 32, which registration issued October 11, 2011 and is based on an application
`
`filed in the PTO on September 11, 2007. The first use in commerce date shown in the ’681
`
`Registration is April 18, 2002. The filing date and first use in commerce date shown in Opposer’s
`
`’681 Registration is prior to the filing date and the alleged first use in commerce date shown in the
`
`Application, respectively. True and correct copies of the specifics of the ’681 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 7 and
`
`made of record.
`
`19.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,057,061 (the “’061 Registration”) for the mark MONSTER ENERGY for “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” in International Class 32, which registration issued February 7, 2006 and is
`
`based on an application filed in the PTO on April 18, 2002. The first use in commerce date
`
`shown in the ’061 Registration is April 18, 2002. The filing date and first use in commerce date
`
`
`
`- 7 -
`
`

`

`shown in Opposer’s ’061 Registration is prior to the filing date and alleged first use in commerce
`
`date shown in the Application, respectively. True and correct copies of the specifics of the ’061
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 8 and made of record.
`
`20.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,959,457 (the “’457 Registration”) for the mark JAVA MONSTER for “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” in International Class 32, which registration issued May 10,
`
`2011 and is based on an application filed in the PTO on December 8, 2005. The filing date of
`
`Opposer’s ’457 Registration is prior to the filing date and alleged first use in commerce date shown
`
`in the Application, respectively. True and correct copies of the specifics of the ’457 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 9 and
`
`made of record.
`
`21.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,044,314 (the “’314 Registration”) for the mark M MONSTER ENERGY for “nutritional
`
`supplements in liquid form, but excluding perishable beverage products that contain fruit juice or
`
`soy, whether such products are pasteurized or not” in International Class 5, which registration
`
`issued January 17, 2006 and is based on an application filed in the PTO on May 23, 2003. The
`
`first use in commerce date shown in the ’314 Registration is April 18, 2002. The filing date and
`
`first use in commerce date shown in Opposer’s ’314 Registration is prior to the filing date and the
`
`alleged first use in commerce date shown in the Application, respectively. True and correct copies
`
`
`
`- 8 -
`
`

`

`of the specifics of the ’314 Registration obtained from the PTO’s TESS and Assignment
`
`databases are attached hereto as Exhibit 10 and made of record.
`
`22.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,852,118 (the “’118 Registration”) for the mark LO-CARB MONSTER ENERGY for
`
`“nutritional supplements” in International Class 5 and “non-alcoholic beverages, namely, energy
`
`drinks, drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs” in
`
`International Class 32, which registration issued September 28, 2010 and is based on an
`
`application filed in the PTO on February 13, 2009. The first use in commerce date shown in the
`
`’118 Registration is August 2003. The filing date and first use in commerce date shown in
`
`Opposer’s ’118 Registration is prior to the filing date and alleged first use in commerce date shown
`
`in the Application, respectively. True and correct copies of the specifics of the ’118 Registration
`
`obtained from the PTO’s TESS and Assignment databases are attached hereto as Exhibit 11 and
`
`made of record.
`
`23.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`3,134,842 (the “’842 Registration”) for the mark M MONSTER ENERGY for “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” in
`
`International Class 32, which registration issued August 29, 2006 and is based on an application
`
`filed in the PTO on May 7, 2003. The first use in commerce date shown in the ’842 Registration
`
`is April 18, 2002. The filing date and first use in commerce date shown in Opposer’s ’842
`
`Registration is prior to the filing date and first use in commerce date shown in the Application,
`
`
`
`- 9 -
`
`

`

`respectively. True and correct copies of the specifics of the ’842 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 12 and made of record.
`
`24.
`
`The foregoing registrations are valid, subsisting, unrevoked, and uncancelled; as
`
`such they constitute prima facie evidence of the validity of the registered marks and of the
`
`registrations thereof, and of Opposer’s ownership of the marks shown therein. Opposer’s
`
`registrations also constitute notice to Applicant of Opposer’s claim of ownership of the marks
`
`shown therein as provided in Sections 7(b), 22 and 33(a) of the Trademark Act.
`
`25.
`
`Opposer’s Registration Nos. 3,908,601, 3,908,600, 3,914,828, 3,044,315,
`
`4,036,680, 4,036,681, 3,057,061, 3,959,457, 3,044,314, 3,852,118, and 3,134,842 are
`
`incontestable. As such, they constitute conclusive evidence of the validity of the registered marks
`
`and of the registration of the marks, of Opposer’s ownership of its marks, and of Opposer’s
`
`exclusive right to use the registered marks in commerce as provided in Section 33 of the Lanham
`
`Act, 15 U.S.C. § 1115.
`
`26.
`
`Since at least before the filing date of the Application and the alleged first use date
`
`listed in the Application, Opposer has continuously used and promoted the MONSTER Marks,
`
`including the marks listed above, in interstate commerce in connection with its goods and services,
`
`including the goods identified in the foregoing registrations. In addition, Opposer’s MONSTER
`
`Marks, or at the very least, some of the MONSTER Marks, were well established and famous
`
`long before Applicant filed its Application for registration of Applicant’s Mark and before the
`
`alleged first use date of Applicant’s Mark.
`
`27.
`
`Applicant seeks an unrestricted federal registration for Applicant’s Mark covering
`
`the goods and services in International Class 2 set forth in the Application. As such, if a
`
`registration issues for the Application, such registration will constitute prima facie evidence of
`
`
`
`- 10 -
`
`

`

`the Applicant’s exclusive right to use the registered mark in commerce on or in connection with
`
`the listed goods and services throughout the United States with no limitation thereon.
`
`28.
`
`Opposer will be damaged by registration of the Application in that Applicant’s
`
`Mark so resembles Opposer’s MONSTER Marks, including as registered in the PTO, and in which
`
`Opposer owns common law trademark rights, as to be likely, when used on or in connection with
`
`the goods and services as they are identified in the Application, as to cause confusion, or to cause
`
`mistake or to deceive within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. §
`
`1052(d).
`
`29.
`
`In view of Opposer’s prior rights in its MONSTER Marks, Applicant is not entitled
`
`to federal registration of Applicant’s Mark pursuant to Section 2(d) of the Trademark Act, 15
`
`U.S.C. § 1052(d).
`
`WHEREFORE, Opposer prays that U.S. Trademark Application Serial No. 87/652119 be
`
`rejected and stricken, that no registration be issued thereon to Applicant, and that this opposition
`
`be sustained in favor of Opposer.
`
`Please charge Deposit Account No. 11-1410 to cover the opposition fee and any additional
`
`fees which may be required, or credit any overpayment to this account.
`
`
`
`
`
`Dated: September 17, 2019
`
`
`
`
`
`
`
`
`
`
`30896723
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /Alexander D. Zeng/
`
`Steven J. Nataupsky
` Baraa Kahf
`
`Jason A. Champion
` Alexander D. Zeng
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`efiling@knobbe.com
` Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`
`
`
`
`- 11 -
`
`

`

`TTAB Opposition No.: ___________
`Monster Energy Company v. Interpet Limited
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`
`
`
`Notice of Opposition
`Serial No.: 88/210846
`
`

`

`TTAB Opposition No.: ___________
`Monster Energy Company v. Interpet Limited
`
`Trademark Electronic Search System (TESS)
`
`Un it e d St a t e s Pa t e n t a n d Tr a de m a r k Office
`
`H om e| Sit e I n de x| Se a r ch| FAQ| Glossa r y| Gu ide s| Con t a ct s| e Bu sin e ss| e Biz a le r t s| N e w s| H e lp
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Sep 17 03:31:02 EDT 2019
`
`
`
`LogoutLogout
`
` Please logout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
` ( Use the "Back" button of the Internet Browser to return to TESS)
`
`Word Mark
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Trademark Search
`Facility
`Classification
`Code
`
`M MONSTER ENERGY
`
`IC 025. US 022 039. G & S: Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets,
`pants, bandanas, sweat bands and gloves; headgear, namely, hats and beanies. FIRST USE: 20020524. FIRST
`USE IN COMMERCE: 20020630
`
`(5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
`
`LETS-1 M A single letter, multiples of a single letter or in combination with a design
`SHAPES-MISC Miscellaneous shaped designs
`
`Serial Number
`
`77705822
`
`Filing Date
`
`April 2, 2009
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Registration
`Number
`
`International
`Registration
`Number
`
`1A
`
`1B
`
`June 23, 2009
`
`3908601
`
`1048069
`
`Registration Date January 18, 2011
`
`Owner
`
`(REGISTRANT) Hansen Beverage Company CORPORATION DELAWARE 550 Monica Circle Suite 201 Corona
`CALIFORNIA 92880
`
`(LAST LISTED OWNER) MONSTER ENERGY COMPANY CORPORATION DELAWARE 1 Monster Way Corona
`CALIFORNIA 92879
`
`Assignment
`
`ASSIGNMENT RECORDED
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:jl3h9g.3.1[9/17/2019 8:42:05 AM]
`
`Exhibit 1 Page 1 of 4
`
`Notice of Opposition
`Serial No.: 88/210846
`
`

`

`TTAB Opposition No.: ___________
`Monster Energy Company v. Interpet Limited
`
`Trademark Electronic Search System (TESS)
`
`Recorded
`
`Attorney of
`Record
`
`Prior
`Registrations
`
`Diane M. Reed
`
`3044314;3134841;3134842;AND OTHERS
`
`Disclaimer
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ENERGY" APART FROM THE MARK AS SHOWN
`
`Description of
`Mark
`
`Color is not claimed as a feature of the mark. The mark consists of a stylized letter "M" and stylized words
`"MONSTER ENERGY".
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`PRINCIPAL
`
`Affidavit Text
`
`SECT 15. SECT 8 (6-YR).
`
`Live/Dead
`Indicator
`
`LIVE
`
`| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:jl3h9g.3.1[9/17/2019 8:42:05 AM]
`
`Exhibit 1 Page 2 of 4
`
`Notice of Opposition
`Serial No.: 88/210846
`
`

`

`TTAB Opposition No.: ___________
`Monster Energy Company v. Interpet Limited
`
`USPTO Assignments on the Web
`
`United States Patent and Trademark Office
`
`H om e| Sit e I n de x| Se a r ch| Gu ide s| Con t a ct s| e Bu sin e ss| e Biz a le r t s| N e w s| H e lp
`
`Assignments on the Web > Tr a de m a r k Qu e r y
`
`Tr a de m a r k Assign m e n