ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1334252
`01/16/2024
`
`Proceeding no.
`Party
`
`Correspondence
`address
`
`Submission
`Filer's name
`Filer's email
`
`Signature
`Date
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91288625
`Defendant
`Lococho, LLC
`PETER NUSSBAUM
`CHIESA SHAHINIAN & GIANTOMASI PC
`105 EISENHOWER PARKWAY
`ROSELAND, NJ 07068
`UNITED STATES
`Primary email: pnussbaum@csglaw.com
`Secondary email(s): trademarks@csglaw.com, tmdocketing@csglaw.com
`973-530-2025
`Answer and Counterclaim
`Abigail J. Remore
`ajremore@csglaw.com, pnussbaum@csglaw.com, trademarks@csglaw.com,
`tmdocketing@csglaw.com
`/Abigail J. Remore/
`01/16/2024
`Answer and Counterclaims.pdf(551081 bytes )
`Lococho LLC - Exhibit A.pdf(5241349 bytes )
`Lococho LLC - Exhibit B.pdf(117018 bytes )
`Lococho LLC - Exhibit C.pdf(361186 bytes )
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`6451182
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`08/17/2021
`
`Goods/services subject to the submission
`
`Class 032. First Use: Mar 27, 2002 First Use In Commerce: Apr 18, 2002
`All goods and services in the class are requested, namely: Non-alcoholic beverages, namely, soft
`drinks, energy drinks, sports drinks, and fruit juice drinks
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`6760278
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`
`Registration date
`
`06/14/2022
`
`

`

`UNITED STATES
`Email: TMOffice@knobbe.com
`
`Goods/services subject to the submission
`
`Class 032. First Use: Mar 27, 2002 First Use In Commerce: Apr 18, 2002
`All goods and services in the class are requested, namely: Energy drinks; Fruit drinks; Soft drinks;
`Sports drinks
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5820689
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`07/30/2019
`
`Goods/services subject to the submission
`
`Class 009. First Use: Jun 30, 2002 First Use In Commerce: Jun 30, 2002
`All goods and services in the class are requested, namely: Sport helmets; video recordings featuring
`sports, extreme sports and motor sports; downloadable software for mobile devices for playing
`games; downloadable electronic game software for use on mobile devices; downloadable game soft-
`ware; downloadable interactive game programs; downloadable video game software and programs
`Class 021. First Use: Jan 2005 First Use In Commerce: Jan 2005
`All goods and services in the class are requested, namely: Beverageware; insulated beverage con-
`tainers for domestic use; bottles, sold empty; drinking bottles for sports; water bottles sold empty;
`bottle openers
`Class 022. First Use: Dec 20, 2006 First Use In Commerce: Dec 20, 2006
`All goods and services in the class are requested, namely: Lanyards; lanyards for holding whistles,
`keys, badges, identification cards, event passes, media passes, photographs, recording equipment,
`or similar conveniences; tents
`Class 024. First Use: Jul 2003 First Use In Commerce: Jul 2003
`All goods and services in the class are requested, namely: Towels; blankets for outdoor use
`Class 025. First Use: May 24, 2002 First Use In Commerce: May 24, 2002
`All goods and services in the class are requested, namely: Clothing, namely, Tops, shirts, t-shirts,
`sweat shirts, jackets, bottoms, pants, bandanas, sweat bands, gloves; headwear; hats; beanies
`Class 028. First Use: Dec 8, 2011 First Use In Commerce: Dec 8, 2011
`All goods and services in the class are requested, namely: Toy cars; remote control toys, namely,
`cars; cornhole game sets; cornhole game boards; cornhole bags; surf boards; skate boards; snow-
`boards; golf bags
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`Mark never used in commerce
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(6)
`
`Registration subject to the submission
`
`Registration no.
`
`5661940
`
`Registration date
`
`01/22/2019
`
`

`

`Register
`Registrant
`
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Goods/services subject to the submission
`
`Class 016. First Use: Jan 2004 First Use In Commerce: Jan 2004
`All goods and services in the class are requested, namely: Stickers; sticker kits comprising stickers
`and decals; decals; posters; calendars; money clips; blackboards; temporary tattoo transfers; pens;
`writing utensils; advertising signs of cardboard and paper
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`Mark never used in commerce
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5114854
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`Email: TMOffice@knobbe.com
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(6)
`
`Registration date
`
`01/03/2017
`
`Goods/services subject to the submission
`
`Class 043. First Use: Oct 17, 2016 First Use In Commerce: Oct 17, 2016
`All goods and services in the class are requested, namely: Restaurant services; bar services
`
`Grounds for cancellation
`
`Mark never used in commerce
`
`Trademark Act Section 14(6)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5826919
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`08/06/2019
`
`Goods/services subject to the submission
`
`Class 009. First Use: Jul 15, 2013 First Use In Commerce: Jul 15, 2013
`All goods and services in the class are requested, namely: Cameras; headphones; sunglasses; eye-
`wear; cases for sunglasses and eyewear
`Class 018. First Use: Oct 17, 2018 First Use In Commerce: Oct 17, 2018
`All goods and services in the class are requested, namely: Sports bags; gym bags; athletic bags;
`traveling bags; all-purpose carrying bags; backpacks
`Class 021. First Use: Mar 20, 2018 First Use In Commerce: Mar 20, 2018
`
`

`

`All goods and services in the class are requested, namely: Beverageware; insulated beverage con-
`tainers for domestic use; heat-insulated containers for beverages
`Class 025. First Use: Mar 29, 2012 First Use In Commerce: Mar 29, 2012
`All goods and services in the class are requested, namely: Tops being clothing; shirts; t-shirts; sweat
`shirts; jackets
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`Mark never used in commerce
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5689189
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(6)
`
`Registration date
`
`03/05/2019
`
`Goods/services subject to the submission
`
`Class 043. First Use: Mar 2013 First Use In Commerce: Mar 2013
`All goods and services in the class are requested, namely: Bar services; Café services; Coffee
`bars; Mobile restaurant services; Restaurant services; Mobile café services for providing food and
`drink
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`Mark never used in commerce
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`6724528
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`Email: TMOffice@knobbe.com
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(6)
`
`Registration date
`
`05/24/2022
`
`Goods/services subject to the submission
`
`Class 030. First Use: Feb 2021 First Use In Commerce: Feb 2021
`All goods and services in the class are requested, namely: Tea; iced tea; tea based beverages; ready
`to drink tea; ready to drink flavored tea
`Class 032. First Use: Feb 2021 First Use In Commerce: Feb 2021
`All goods and services in the class are requested, namely: Non-alcoholic beverages, namely, soft
`drinks, energy drinks, sports drinks, and fruit juice drinks
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`

`

`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5676514
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`02/12/2019
`
`Goods/services subject to the submission
`
`Class 024. First Use: Jul 2003 First Use In Commerce: Jul 2003
`All goods and services in the class are requested, namely: Towels
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5664586
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`01/29/2019
`
`Goods/services subject to the submission
`
`Class 021. First Use: Jan 2010 First Use In Commerce: Jan 2010
`All goods and services in the class are requested, namely: Beverageware; insulated beverage con-
`tainers for domestic use; drinking bottles for sports; water bottles sold empty
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5114853
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`Email: TMOffice@knobbe.com
`
`Registration date
`
`01/03/2017
`
`Goods/services subject to the submission
`
`Class 043. First Use: Oct 17, 2016 First Use In Commerce: Oct 17, 2016
`All goods and services in the class are requested, namely: Restaurant services; bar services
`
`Grounds for cancellation
`
`Mark never used in commerce
`
`Trademark Act Section 14(6)
`
`

`

`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`5570782
`Principal
`Monster Energy Company
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`Registration date
`
`09/25/2018
`
`Goods/services subject to the submission
`
`Class 009. First Use: Jun 30, 2002 First Use In Commerce: Jun 30, 2002
`All goods and services in the class are requested, namely: Sport helmets; video recordings featuring
`sports, extreme sports and motor sports
`Class 014. First Use: Jun 30, 2010 First Use In Commerce: Jun 30, 2010
`All goods and services in the class are requested, namely: Watches
`Class 016. First Use: Jan 2004 First Use In Commerce: Jan 2004
`All goods and services in the class are requested, namely: Stickers, sticker kits comprising stickers
`and decals; decals; posters; calendars
`Class 018. First Use: May 24, 2002 First Use In Commerce: May 24, 2002
`All goods and services in the class are requested, namely: All-purpose sport bags; all-purpose carry-
`ing bags; backpacks; duffel bags
`Class 025. First Use: May 24, 2002 First Use In Commerce: May 24, 2002
`All goods and services in the class are requested, namely: Clothing, namely, t-shirts, hooded shirts
`and hooded sweatshirts; sweat shirts, jackets, pants, bandanas, sweat bands, gloves and motorcycle
`gloves; headgear, namely, hats and beanies
`
`Grounds for cancellation
`
`Mark never used in commerce
`
`Trademark Act Section 14(6)
`
`Marks cited by petitioner as basis for cancellation
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`2519146
`
`Application date
`
`10/30/1999
`
`Principal
`12/18/2001
`
`Foreign priority
`date
`FAMOUS MONSTERS OF FILMLAND
`
`NONE
`
`NONE
`
`Class 009. First use: First Use: Nov 1, 1990 First Use In Commerce: Nov 1991
`Prerecorded video tape programs featuring the motion picture works of the hor-
`ror, science fiction and fantasy genre
`Class 016. First use: First Use: Nov 1, 1990 First Use In Commerce: Nov 1993
`Magazines, trading cards, calendars, posters, posterbooks featuring motion pic-
`ture works of the horror, science fiction and fantasy genre
`Class 025. First use: First Use: Nov 1, 1990 First Use In Commerce: Nov 1,
`1993
`[ Clothing and apparel, namely, shirts ]
`
`

`

`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`4899752
`
`Application date
`
`07/15/2014
`
`Supplemental
`02/09/2016
`
`FAMOUS MONSTERS
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Class 025. First use: First Use: Apr 24, 2009 First Use In Commerce: Aug 2011
`Hooded sweatshirts; Shirts; Sweatshirts; T-shirts; Tank tops; Tops
`
`U.S. registration
`no.
`Register
`Registration date
`
`4943918
`
`Principal
`04/26/2016
`
`Application date
`
`07/15/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`FAMOUS MONSTERS
`
`NONE
`
`Class 016. First use: First Use: Apr 24, 2009 First Use In Commerce: Aug 10,
`2011
`Magazines featuring stories, pictures, information and articles of interest for fans
`of the horror and science fiction genre; Newsletters in the field of horror and sci-
`fi entertainment related events and merchandise; Posters; Printed materials,
`namely, written articles in the field of horror and science fiction related matters;
`Publications, namely, magazines, books, collector memorabilia in the fields of
`films, characters, television series, celebrities, and authors of the horror and sci-
`fi genre
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`MONSTER ENERGY COMPANY,
`
` Opposer,
`
`vs.
`
`LOCOCHO, LLC,
`
` Applicant.
`
`
`Consolidated Opposition No: 91288625
`
`Mark: SHOCK MONSTER
`Serial Nos.: 98/010,271, 98/010280,
`98/010,286, 98/010,288, 98/010,300,
`98/010,301
`
`Mark: FAMOUS MONSTERS
`Serial Nos.: 97/551,273, 97/551,271,
`97/550,802, 97/551,282, 97/688,001,
`97/551,285, 97/551,287
`
`Mark: FAMOUS MONSTERS OF FILMLAND
`Serial Nos.: 97/559,333, 97/559,343,
`97/559,345, 97/559,348, 97/688,006
`
`
`
`Mark:
`Serial Nos.: 97/561,377, 97/561,388,
`97/561,390, 97/561,391, 97/688,016
`
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`ANSWER, AFFIRMATIVE DEFENSES & COUNTERCLAIMS
`
`Applicant, Lococho, LLC (“Applicant”), by and through its attorneys, Chiesa
`
`
`
`
`Shahinian & Giantomasi PC, hereby responds to the allegations set forth in Opposer
`
`Monster Energy Company’s (“Opposer”) Consolidated Notice of Opposition (the
`
`“Opposition”) as follows:
`
`1.
`
`Applicant admits that it seeks registrations on the Principal Register for the
`
`marks set forth in Paragraph 1 of the Opposition (hereinafter the “Opposed
`
`Applications”). To the extent the allegations in Paragraph 1 of the Opposition refer to
`
`

`

`specific documents, Applicant respectfully refers the Trademark Trial & Appeal Board
`
`(the “Board”) to the contents of said documents.
`
`2.
`
`3.
`
`Paragraph 2 sets forth a definition for which no response is required.
`
`Applicant denies that Opposer owns a family of MONSTER marks.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of
`
`the remainder of the allegations set forth in Paragraph 3 and therefore denies the same.
`
`4.
`
`Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 4 and therefore denies the same.
`
`5.
`
`Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 5 and therefore denies the same.
`
`6.
`
`Applicant denies that Opposer owns a family of MONSTER marks.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of
`
`the remainder of the allegations set forth in Paragraph 6 and therefore denies the same.
`
`7.
`
`Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 7 and therefore denies the same.
`
`8.
`
`Applicant denies that Opposer owns a family of MONSTER marks.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of
`
`the remainder of the allegations set forth in Paragraph 8 and therefore denies the same.
`
`9.
`
`Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 9 and therefore denies the same.
`
`Applicant is further without knowledge or information sufficient to form a belief as to the
`
`accuracy of the images included in Paragraph 9 and leaves Opposer to its proofs.
`
`2
`
`
`
`

`

`10. Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 10 and therefore denies the same.
`
`Applicant is further without knowledge or information sufficient to form a belief as to the
`
`accuracy of the images included in Paragraph 10 and leaves Opposer to its proofs.
`
`11. Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 11 and therefore denies the same.
`
`Applicant is further without knowledge or information sufficient to form a belief as to the
`
`accuracy of the images included in Paragraph 11 and leaves Opposer to its proofs.
`
`12. Applicant denies any
`
`implication
`
`that Opposer owns a
`
`family of
`
`MONSTER Marks and denies that any claimed “MONSTER Marks” are famous.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of
`
`the remainder of the allegations set forth in Paragraph 12 and therefore denies the
`
`same. Applicant is further without knowledge or information sufficient to form a belief as
`
`to the accuracy of the images included in Paragraph 12 and leaves Opposer to its
`
`proofs.
`
`13. Applicant denies that Opposer owns a family of MONSTER marks.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of
`
`the remainder of the allegations set forth in Paragraph 13 and therefore denies the
`
`same.
`
`14. Applicant denies that Opposer owns a family of MONSTER marks and
`
`denies that any claimed “MONSTER Marks” are or have become famous. Applicant is
`
`without knowledge or information sufficient to form a belief as to the truth of the
`
`remainder of the allegations set forth in Paragraph 14 and therefore denies the same.
`
`3
`
`
`
`

`

`15. Applicant denies that Opposer owns a family of MONSTER marks.
`
`Further, Paragraph 15 sets forth legal conclusions for which no response is required.
`
`To the extent a response is deemed necessary, Applicant denies the same. Applicant
`
`is without knowledge or information sufficient to form a belief as to the truth of any
`
`factual allegations set forth in Paragraph 15 and therefore denies the same.
`
`16.
`
`To the extent the allegations in Paragraph 16 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents. Applicant is
`
`without knowledge or information sufficient to form a belief as to the truth of any factual
`
`allegations set forth in Paragraph 16 and therefore denies the same.
`
`17.
`
`To the extent the allegations in Paragraph 17 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`18.
`
`To the extent the allegations in Paragraph 18 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`19.
`
`To the extent the allegations in Paragraph 19 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`20.
`
`To the extent the allegations in Paragraph 20 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`21.
`
`To the extent the allegations in Paragraph 21 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`22.
`
`To the extent the allegations in Paragraph 22 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`23.
`
`To the extent the allegations in Paragraph 23 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`4
`
`
`
`

`

`24.
`
`To the extent the allegations in Paragraph 24 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`25.
`
`To the extent the allegations in Paragraph 25 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`26.
`
`To the extent the allegations in Paragraph 26 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`27.
`
`To the extent the allegations in Paragraph 27 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`28.
`
`To the extent the allegations in Paragraph 28 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`29.
`
`To the extent the allegations in Paragraph 29 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`30.
`
`To the extent the allegations in Paragraph 30 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`31.
`
`To the extent the allegations in Paragraph 31 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`32.
`
`To the extent the allegations in Paragraph 32 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`33.
`
`To the extent the allegations in Paragraph 33 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`34.
`
`To the extent the allegations in Paragraph 34 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`5
`
`
`
`

`

`35.
`
`To the extent the allegations in Paragraph 35 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`36.
`
`To the extent the allegations in Paragraph 36 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`37.
`
`To the extent the allegations in Paragraph 37 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`38.
`
`To the extent the allegations in Paragraph 38 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`39.
`
`To the extent the allegations in Paragraph 39 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`40.
`
`To the extent the allegations in Paragraph 40 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`41.
`
`To the extent the allegations in Paragraph 41 refer to specific documents,
`
`Applicant respectfully refers the Board to the contents of said documents.
`
`42. Paragraph 42 sets forth a legal conclusion for which no response is
`
`required. To the extent a response is deemed necessary, Applicant denies the
`
`allegations in Paragraph 42.
`
`43. Paragraph 43 sets forth a legal conclusion for which no response is
`
`required. To the extent a response is deemed necessary, Applicant denies the
`
`allegations in Paragraph 43.
`
`44. Applicant denies that any claimed “MONSTER Marks” are or have
`
`become famous. Applicant is without knowledge or information sufficient to form a
`
`6
`
`
`
`

`

`belief as to the truth of the remainder of the allegations set forth in Paragraph 44 and
`
`therefore denies the same.
`
`45. Paragraph 45 sets forth a legal conclusion for which no response is
`
`required. To the extent a response is deemed necessary, Applicant denies the
`
`allegations in Paragraph 45.
`
`46. Denied.
`
`47. Denied.
`
`48. Denied.
`
`WHEREFORE, Applicant respectfully requests that the Board enter judgment in
`
`its favor and against Opposer, denying Opposer’s opposition of the following
`
`Applications:
`
` Mark: SHOCK MONSTER - Serial Nos.: 98/010,271, 98/010,280, 98/010,286,
`98/010,288, 98/010,300, 98/010,301;
`
` Mark: FAMOUS MONSTERS - Serial Nos.: 97/551,273, 97/551,271,
`97/550,802, 97/551,282, 97/688,001, 97/551,285, 97/551,287;
`
` Mark: FAMOUS MONSTERS OF FILMLAND - Serial Nos.: 97/559,333,
`97/559,343, 97/559,345, 97/559,348, 97/688,006; and
`
`
`, Serial Nos.: 97/561,377, 97/561,388, 97/561,390,
` Mark:
`97/561,391, 97/688,016.
`
`
`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`The Notice of Opposition fails to state a claim upon which relief can be granted.
`
`
`
`
`
`
`
`7
`
`
`
`

`

`Second Affirmative Defense
`
`
`
`The Notice of Opposition is barred in whole or in part by the doctrine of unclean
`
`hands based upon Opposer’s conduct, which includes filing the instant baseless and
`
`frivolous Notice of Opposition and engaging in bad faith trademark bullying against
`
`Applicant (both in the U.S. and internationally) and a vast array of third parties.
`
`Application of the doctrine of unclean hands in this matter would serve the public
`
`interest and deter future bad faith bullying tactics on the part of Opposer and its
`
`counsel.
`
`Third Affirmative Defense
`
`
`
`The Notice of Opposition is barred by the doctrines of laches, acquiescence,
`
`waiver and/or estoppel.
`
`Fourth Affirmative Defense
`
`
`
`Applicant’s rights in the marks FAMOUS MONSTERS, FAMOUS MONSTERS
`
`OF FILMLAND, and
`
` predate any date of first use upon which Opposer
`
`attempts to or can rely.
`
`Fifth Affirmative Defense
`
`
`
`Opposer cannot and will not be harmed by the registration of any of the Opposed
`
`Applications.
`
`Sixth Affirmative Defense
`
`Upon information and belief, Opposer has abandoned its rights in and to one or
`
`more of its asserted marks by virtue of non-use with an intent not to resume use.
`
`
`
`
`
`8
`
`
`
`

`

`Seventh Affirmative Defense
`
`Upon information and belief, Opposer has abandoned its rights in and to one or
`
`more of its asserted marks by virtue of naked licensing.
`
`Eighth Affirmative Defense
`
`Pursuant to Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160
`
`U.S.P.Q. 715 (C.C.P.A. 1969), Opposer cannot be further injured by registration of the
`
`marks FAMOUS MONSTERS, FAMOUS MONSTERS OF FILMLAND, or
`
`because there already exists supposedly injurious registrations owned
`
`by Applicant, namely, Registration Nos. 2,519,146, 4,899,752, and 4,943,918, and
`
`therefore the additional registrations Applicant seeks do not and will not add to any
`
`alleged injury.
`
`Ninth Affirmative Defense
`
`The Board has previously held that Opposer does not own a family of MONSTER
`
`Marks. See, e.g. Monster Energy Company v. Eben McGarr, 2023 WL 5933353 at *8,
`
`T.T.A.B. Opposition Nos. 91239678 and 91244601 (Sept. 8, 2023).
`
`Tenth Affirmative Defense
`
`Opposer’s asserted marks are not famous.
`
`Eleventh Affirmative Defense
`
`Opposer is, at best, entitled to only narrow rights in and to its asserted marks
`
`based upon the co-existence, federal registration, and allowed or published application
`
`of dozens of third party marks which include the word “MONSTER” in connection with
`
`goods that are just as, if not more, similar to Opposer’s goods and services as
`
`9
`
`
`
`

`

`Applicants, including, by way of example but not limitation, the registrations set forth in
`
`the chart below:
`
`Mark
`
`Reg. No.
`
`Class(es)
`
`Goods/services
`
`MONSTERBUCK
`MONSTER BUCK
`
`6,662,066
`6,950,213
`
`31
`5, 31
`
`MONSTER MASH
`SUNDAE
`SNOWMONSTER
`MONSTER DOG
`WAFFLE
`MONSTER
`MONSTER
`CREOLE
`SEASONING
`MONSTERELLA
`STIX
`CINNAMONSTER
`SNAPDRAGON
`MONSTER
`CRUNCH and
`Design
`MONSTER TACO
`MONSTER
`TAQUITO
`MONSTER MASH
`
`MONSUTA
`OKINAWA DRY
`PREMIUM DRAFT
`MONSTER MASH
`
`MONSTER
`CEREALS
`
`MONSTER JERKY
`MONSTER
`MUSHROOM
`POPCORN
`
`2,537,925
`
`2,899,215
`3,563,090
`4,274,186
`
`5,970,105
`
`6,231,762
`
`1,821,550
`5,114,234
`
`5,191,487
`2,928,660
`
`6,713,578
`
`7,159,686
`
`6,630,289
`
`3,558,779
`
`4,345,815
`4,034,276
`
`30
`
`30
`30
`30
`
`30
`
`29
`
`30
`31
`
`30
`30
`
`29
`
`32
`
`30
`
`30
`
`29
`30
`
`Wildlife seed mixtures
`5: Nutritional mineral supplements for wildlife;
`Nutritional food supplements for wildlife
`
`31: Animal feed for use in wildlife food plots
`Frozen desserts for consumption on or off the
`premises, namely, sundaes.
`Confection featuring soft serve custard
`Hot dog sandwiches
`Waffle and ice cream dessert for on premises
`distribution only
`Spice blends, none of the foregoing goods
`being labeled, marketed or positioned as
`providing energy or being high in protein
`Seasoned cheese sticks
`
`Gourmet cinnamon rolls.
`Fresh fruit
`
`Tacos
`Taquitos
`
`Prepared food kits composed of meat, poultry,
`fish, seafood, and/or vegetables and also
`including sauces or seasonings, ready for
`cooking and assembly as a meal.
`Beer
`
`Processed cereal-based food to be used as a
`breakfast food, snack food or ingredient for
`making other foods.
`Processed cereal-based food to be used as a
`breakfast food, snack * food * or ingredient for
`making other foods
`Jerky
`Unpopped popcorn kernels
`
`10
`
`
`
`

`

`Mark
`
`Reg. No.
`
`Class(es)
`
`Goods/services
`
`MINI MONSTAR
`
`5,875,481
`
`31
`
`MONSTER
`BISCUIT
`MONSTER
`THICKBURGER
`MONSTER
`BURGER
`MONSTER MIX
`DROOLING
`MONSTERS and
`Design
`LICORICE
`MONSTER
`
`3,928,134
`
`3,672,671
`
`1,716,175
`
`3,332,129
`5,786,124
`
`6,148,039
`
`THE PITMONSTER 5,590,666
`DEEP DISH
`6,822,776
`MONSTER
`
`30
`
`30
`
`30
`
`30
`31
`
`30
`
`30
`30
`
`SAAZ MONSTER
`5,161,355
`MONSTER MUNCH 5,024,633
`MUCK MONSTER
`5,809,830
`
`32
`29
`32
`
`MELT MONSTER
`
`6,466,028
`
`30, 43
`
`MONSTER MINTS
`
`5,355,260
`
`30
`
`Algae, unprocessed, for human or animal
`consumption; Animal feed; Animal foodstuffs;
`Aromatic sand being litter for pets; Beverages
`for pets; Distillery waste for animal
`consumption; Dog biscuits; Flowers, dried, for
`decoration; Foodstuffs for animals; Fresh fruit;
`Litter for animals; Live animals; Pet food; Plants,
`dried, for decoration; Sanded paper being litter
`for pets; Seeds for planting; Truffles, fresh;
`Vegetables, fresh; Animal litter; Dried plants;
`Live plants; Live trees; Seaweed, unprocessed,
`for human or animal consumption; Unprocessed
`grain.
`Sandwiches
`
`Hamburger sandwiches
`
`Hamburger sandwich
`
`Candy
`Edible dog treats.
`
`Candies; confectionery made of sugar and
`sugar substitutes, all of the foregoing excluding
`energy candies, energy foods, and any products
`marketed or positioned as energy candies or
`energy foods.
`Barbecue sauce
`Cookies; Baked goods, bakery items, pastry
`goods, and deserts, namely, cookies, bakery
`desserts, confectionery items made of sugar,
`pastries; bakery goods; bakery pastries;
`confections, namely, confectionery items made
`of sugar; goods for retail and wholesale
`distribution and consumption on or off the
`premises, namely, cookies, bakery desserts,
`confectionery items made of sugar, pastries.
`Beer
`Potato crisps
`Beer, excluding non-alcohol beverages, energy
`drinks, nutritional supplements, and energy
`supplements.
`30: ice cream dessert
`
`43: Providing of food via a mobile truck.
`Mint candy
`
`11
`
`
`
`

`

`MONSTERPIECE
`KENNEL NORTH
`AMERICAN
`MASTIFF
`MONSTER
`MUNCHIES
`MONSTERA
`TRUCK
`C MONSTER
`GILA MONSTER
`
`2,775,704
`
`7,158,126
`
`1,970,362
`6,389,996
`
`LIL' MONSTER
`
`7,007,927
`
`AHHHH MONSTER 6,932,285
`
`MONSTER MUNCH 6,783,332
`MONSTER MUNNY 1,357,053
`Monstera Leaf
`7,003,976
`Logo
`
`MONSTER
`MILKSHAKES AND
`MALTS
`MONSTER BULLY
`STICKS
`CHAMP-THE
`MONSTER OF ALL
`MAPLE CANDY
`and Design
`619 MONSTER
`BURRITO SD and
`Design
`MONSTER DEER
`BLOCK
`SCHWAN'S
`MONSTER MANIA
`SEA MONSTERS
`MONSTER
`FRENCH ONION
`MONSTER MIX
`
`BIG HOPPY
`MONSTER
`
`3,274,232
`
`6,406,103
`
`3,613,640
`
`6,026,305
`
`3,237,027
`
`3,300,193
`
`6,531,044
`5,536,728
`
`2,902,694
`
`3,093,809
`
`Mark
`
`Reg. No.
`
`Class(es)
`
`Goods/services
`
`6,137,399
`
`31
`
`Dogs
`
`30
`
`31
`
`32
`30
`
`31
`
`31
`
`31
`30
`31
`
`29
`
`31
`
`30
`
`30
`
`31
`
`30
`
`29
`29
`
`31
`
`32
`
`Cookies, bakery goods.
`
`Live plants; Live plants, namely, Monsteras;
`Live plants, namely, Philodendron; Living plants.
`Nonalcoholic fruit juice based beverages
`Sauces for barbecued meat; Barbeque sauce;
`Cooking sauces; Dipping sauces; Grilling
`sauces; Ready-made sauces; Salsa sauces;
`Savory sauces used as condiments.
`Edible chews for animals; Edible pet treats; Pet
`food
`Edible chews for animals; Edible pet treats; Pet
`food.
`Edible chews for animals.
`Candy
`House plants, namely, live plants and tree fern;
`Plant cuttings, namely, live plants and tree fern;
`Planting materials, namely, sphagnum moss
`being peat moss, peat moss.
`Dairy-based beverages
`
`Edible pet treats
`
`Candy
`
`Burritos
`
`Animal feed, namely, nutritional feed blocks
`
`Frozen cookie dough
`
`Seaweed-based snack foods in non-liquid form.
`Soups
`
`Seeds for