ESTTA Tracking number:
`
`ESTTA1341698
`
`Filing date:
`
`02/21/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91288625
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Monster Energy Company
`
`ARI FEINSTEIN
`KNOBBE MARTENS OLSON & BEAR LLP
`1717 PENNSYLVANIA AVE NW STE 900
`WASHINGTON, DC 20006
`UNITED STATES
`Primary email: efiling@knobbe.com
`Secondary email(s): MEC.TTAB@knobbe.com
`202-640-6400
`
`Answer to Counterclaim
`
`Jason A. Champion
`
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`
`/Jason A. Champion/
`
`02/21/2024
`
`2024-02-21 Opposer_s Answer and Counter-Counterclaims in Response to Ap-
`plicant_s Counterclaims - HANB.17045M.pdf(1187848 bytes )
`
`

`

` 
`
`HANB.17045M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Consolidated Opposition No.: 91288625
`
`Serial Nos.: 98/010271, 98/010280, 98/010286,
`98/010288, 98/010300, 98/010301
`
`Mark: SHOCK MONSTER
`
`Serial Nos.: 97/551273, 97/551271, 97/550802,
`97/551282, 97/688001, 97/551285, 97/551287
`
`Mark: FAMOUS MONSTERS
`
`Serial Nos.: 97/559333, 97/559343, 97/559345,
`97/559348, 97/688006
`
`Mark: FAMOUS MONSTERS OF FILMLAND
`
`Serial Nos.: 97/561377, 97/561388, 97/561390,
`97/561391, 97/688016
`
`Mark:
`
`
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`
`
`Opposer,
`
`
`
`v.
`
`
`MONSTER ENERGY COMPANY,
`
`
`
`
`
`LOCOCHO, LLC,
`
`
`
`
`
`Applicant.
`
`OPPOSER’S ANSWER AND COUNTER-COUNTERCLAIMS IN RESPONSE TO
`APPLICANT’S COUNTERCLAIMS
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Opposer Monster Energy Company (“Monster”) hereby answers the counterclaims filed
`
`by Applicant Lococho, LLC (“Applicant” or “Lococho”) against U.S. Trademark Registration
`
`Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,114,854, 5,826,919, 5,689,189, 6,724,528,
`
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`5,676,514, 5,664,586, 5,114,853, and 5,570,782 (collectively, the “Counterclaim Registrations”).
`
`The numbered paragraphs of this Answer correspond to the numbered paragraphs of Applicant’s
`
`Counterclaims.
`
`COUNTERCLAIMS
`
`1.
`
`Answering Paragraph 1 of Applicant’s Counterclaims, Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the allegations set
`
`forth in Paragraph 1 and therefore denies the same.
`
`2.
`
`Answering Paragraph 2 of Applicant’s Counterclaims, Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the allegations set
`
`forth in Paragraph 2 and therefore denies the same.
`
`3.
`
`Answering Paragraph 3 of Applicant’s Counterclaims, Monster admits that the
`
`United States Patent & Trademark Office (“USPTO”) website lists Applicant as the owner of U.S.
`
`Registration No. 2,519,146 for the mark
`
`, U.S. Registration No. 4,899,752 for the
`
`mark FAMOUS MONSTERS, and U.S. Registration No. 4,943,918 for the mark FAMOUS
`
`MONSTERS, and that Exhibit B purports to be printouts of the status of these registrations from
`
`the USPTO’s Trademark Status and Document Retrieval (“TSDR”) database. Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the remaining
`
`allegations set forth in Paragraph 3, and therefore denies the same.
`
`4.
`
`5.
`
`6.
`
`Denied.
`
`Denied.
`
`Answering Paragraph 6 of Applicant’s Counterclaims, Monster admits the
`
`allegations stated therein.
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`7.
`
`Answering Paragraph 7 of Applicant’s Counterclaims, Monster admits that it is the
`
`owner of the MONSTER ENERGY® trademark which has been used in commerce since at least
`
`as early as 2002. Monster further admits that it has used the MONSTER ENERGY® trademark in
`
`connection with beverages since at least as early as 2002. Except as expressly admitted, Monster
`
`denies each and every remaining allegation in Paragraph 7 of Applicant’s Counterclaim, including
`
`any implication that use of the MONSTER ENERGY® trademark is limited to beverages.
`
`8.
`
`Answering Paragraph 8 of Applicant’s Counterclaims, Monster admits that it is the
`
`owner of the Counterclaim Registrations and that Exhibit C purports to be printouts of the status
`
`of the Counterclaim Registrations from the USPTO’s TSDR database. Except as expressly
`
`admitted, Monster denies each and every remaining allegation in Paragraph 8 of Applicant’s
`
`Counterclaims.
`
`9.
`
`Answering Paragraph 9 of Applicant’s Counterclaims, Monster admits that some of
`
`the Counterclaim Registrations claim a date of first use in commerce in 2002. Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the remaining
`
`allegations set forth in Paragraph 9 and therefore denies each and every remaining allegation in
`
`Paragraph 9 of Applicant’s Counterclaims.
`
`10.
`
`Answering Paragraph 10 of Applicant’s Counterclaims, Monster admits the
`
`USPTO started to issue registrations for the Counterclaim Registrations beginning in 2017.
`
`Monster is without knowledge or information sufficient to form a belief as to the truth or falsity of
`
`the remaining allegations set forth in Paragraph 10 and therefore denies each and every remaining
`
`allegation in Paragraph 10 of Applicant’s Counterclaims.
`
`11.
`
`Denied.
`
`12.
`
`Answering Paragraph 12 of Applicant’s Counterclaims, Monster admits the
`
`allegations stated therein.
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`13.
`
`Answering Paragraph 13 of Applicant’s Counterclaims, Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the allegations set
`
`forth in Paragraph 13 and therefore denies the same.
`
`COUNT I
`
`PRIORITY & LIKELIHOOD OF CONFUSION AS TO OPPOSER’S ‘182
`REGISTRATION, OPPOSER’S ‘278 REGISTRATION, OPPOSER’S ‘689
`REGISTRATION, OPPOSER’S ‘940 REGISTRATION, OPPOSER’S ‘919
`REGISTRATION, OPPOSER’S ‘189 REGISTRATION, OPPOSER’S ‘586
`REGISTRATION, OPPOSER’S ‘528 REGISTRATION, AND OPPOSER’S ‘514
`REGISTRATION
`To the extent a response to Paragraph 14 of Applicant’s Counterclaims is required,
`
`14.
`
`Monster incorporates by reference its responses to Paragraphs 1-13 of Applicant’s Counterclaims
`
`as if set forth fully herein.
`
`15.
`
`Answering Paragraph 15 of Applicant’s Counterclaims, Monster admits that it is
`
`the owner of U.S. Trademark Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940,
`
`5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514 and that Monster asserted those
`
`registrations, among others, in its Consolidated Notice of Opposition filed in this proceeding.
`
`Except as expressly admitted, Monster denies each and every remaining allegation contained in
`
`Paragraph 15 of Applicant’s Counterclaims.
`
`16.
`
`Denied.
`
`17.
`
`Answering Paragraph 17 of Applicant’s Counterclaims, Monster admits that it
`
`asserted U.S. Trademark Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940,
`
`5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514 in its Consolidated Notice of
`
`Opposition filed this proceeding. Except as expressly admitted, Monster denies each and every
`
`remaining allegation contained in Paragraph 17 of Applicant’s Counterclaims.
`
`18.
`
` Answering Paragraph 18 of Applicant’s Counterclaims, Monster admits that its
`
`Consolidated Notice of Opposition filed in this proceeding alleges that “Applicant’s Goods” (as
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`defined in the Notice) and the goods and services offered in connection with Monster’s marks
`
`asserted in that Notice, “travel through the same channels of trade or are capable of traveling
`
`through the same channels of trade” and that “Applicant’s Applications” (as defined in the Notice)
`
`“…cover goods that are identical and/or highly related to the goods and services offered for sale
`
`and registered in connection with…the MONSTER Marks” (as defined in the Notice). Except as
`
`expressly admitted, Monster denies each and every remaining allegation contained in Paragraph
`
`18 of Applicant’s Counterclaims.
`
`19.
`
`Answering Paragraph 19 of Applicant’s Counterclaims, Monster is without
`
`knowledge or information sufficient to form a belief as to the truth or falsity of the allegations set
`
`forth in Paragraph 19 and therefore denies the same.
`
`20.
`
`Answering Paragraph 20 of Applicant’s Counterclaims, Monster admits that its
`
`Consolidated Notice of Opposition filed in this proceeding alleges that Monster will be damaged
`
`by the registration of “Applicant’s Applications” (as defined in the Notice) in that “Applicant’s
`
`Marks” (as defined in the Notice) so resemble Monster’s “MONSTER Marks” (as defined in the
`
`Notice), “as to be likely, when used on or in connection with ‘Applicant’s Goods’ (as defined in
`
`the Notice) to cause confusion, or to cause mistake or to deceive within the meaning of Section
`
`2(d) of the Trademark Act.” Except as expressly admitted, Monster denies each and every
`
`remaining allegation contained in Paragraph 20 of Applicant’s Counterclaims.
`
`21.
`
`Paragraph 21 of Applicant’s Counterclaims contains legal conclusions to which no
`
`answer is required. To the extent an answer is required, Monster admits that its Consolidated Notice
`
`of Opposition filed in this proceeding includes a claim for likelihood of confusion under Section
`
`2(d) of the Trademark Act and that it has asserted U.S. Trademark Registration Nos. 6,451,182,
`
`6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514,
`
`among others in support of that claim. Monster denies that Applicant has priority of use in
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`connection with the goods and services identified in the Opposed Applications. Except as expressly
`
`admitted, Monster denies each and every remaining allegation contained in Paragraph 21 of
`
`Applicant’s Counterclaims.
`
`22.
`
` Paragraph 22 of Applicant’s Counterclaims contains legal conclusions to which no
`
`answer is required. To the extent an answer is required, Monster admits that its Consolidated Notice
`
`of Opposition filed in this proceeding includes a claim for likelihood of confusion under Section
`
`2(d) of the Trademark Act and that it has asserted U.S. Trademark Registration Nos. 6,451,182,
`
`6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514,
`
`among others in support of that claim. Monster further admits that if this proceeding is decided in
`
`Monster’s favor, Applicant may be prevented from registering one or more of the applications that
`
`are the subject of Monster’s Consolidated Notice of Opposition. Except as expressly admitted,
`
`Monster denies each and every remaining allegation contained in Paragraph 22 of Applicant’s
`
`Counterclaims.
`
`23.
`
`Paragraph 23 of Applicant’s Counterclaims contains legal conclusions to which no
`
`answer is required. To the extent an answer is required, Monster admits that its Consolidated Notice
`
`of Opposition filed in this proceeding includes a claim for likelihood of confusion under Section
`
`2(d) of the Trademark Act and that it has asserted U.S. Trademark Registration Nos. 6,451,182,
`
`6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514,
`
`among others in support of that claim. Monster denies that Applicant has prior rights in connection
`
`with the goods and services identified in the Opposed Applications. Except as expressly admitted,
`
`Monster denies each and every remaining allegation contained in Paragraph 23 of Applicant’s
`
`Counterclaims.
`
`24.
`
`Paragraph 24 of Applicant’s Counterclaims contains legal conclusions to which no
`
`answer is required. To the extent an answer is required, Monster admits that its Consolidated Notice
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`of Opposition filed in this proceeding includes a claim for likelihood of confusion under Section
`
`2(d) of the Trademark Act and that it has asserted U.S. Trademark Registration Nos. 6,451,182,
`
`6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514,
`
`among others in support of that claim. Except as expressly admitted, Monster denies each and
`
`every remaining allegation contained in Paragraph 24 of Applicant’s Counterclaims.
`
`COUNT II
`
`LACK OF BONA FIDE USE IN COMMERCE IN CONNECTION WITH OPPOSER’S
`‘689 REGISTRATION, OPPOSER’S ‘940 REGISTRATION, OPPOSER’S ‘854
`REGISTRATION, OPPOSER’S ‘919 REGISTRATION, OPPOSER’S ‘189
`REGISTRATION, OPPOSER’S ‘853 REGISTRATION, AND OPPOSER’S ‘782
`REGISTRATION
`
`To the extent a response to Paragraph 25 of Applicant’s Counterclaims is required,
`
`25.
`
`Monster incorporates by reference its responses to Paragraphs 1-24 of Applicant’s Counterclaims
`
`as if set forth fully herein.
`
`26.
`
`Answering Paragraph 26 of Applicant’s Counterclaims, Monster admits that it is
`
`the owner of U.S. Trademark Registration Nos. 5,820,689, 5,661,940, 5,114,854, 5,826,919,
`
`5,689,189, 5,114,853, 5,570,782. Except as expressly admitted, Monster denies each and every
`
`remaining allegation contained in Paragraph 26 of Applicant’s Counterclaims. 
`
`27.
`
`Denied.
`
`28.
`
`Denied.
`
`29.
`
`Paragraph 29 of Applicant’s Counterclaims contains legal conclusions to which no
`
`answer is required. To the extent an answer is required, Monster denies each and every allegation
`
`contained in Paragraph 29 of Applicant’s Counterclaims.
`
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`AFFRIMATIVE DEFENSES
`
`Without admitting any of Applicant’s counterclaim allegations or conceding the burden of
`
`proof found to be an element of any of Applicant’s Counterclaims rather than an element of an
`
`affirmative defense as a matter of law, Opposer asserts the following affirmative defenses:
`
`FIRST AFFIRMATIVE DEFENSE
`
`(Failure to State a Claim Upon Which Relief May Be Granted)
`
`Applicant’s Counterclaims are barred, in whole or in part, because they fail to state a claim
`
`upon which relief may be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`
`(Laches)
`
`
`
`Applicant’s Counterclaims are barred, in whole or in part, by the equitable doctrine of
`
`laches.
`
`THIRD AFFIRMATIVE DEFENSE
`
`(Equitable Estoppel)
`
`
`
`Applicant’s Counterclaims are barred, in whole or in part, by the equitable doctrine of
`
`estoppel.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`(Waiver)
`
`
`
`Applicant has waived any rights it may have had to bring and/or maintain its counterclaims,
`
`in whole or in part.
`
`
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`FIFTH AFFIRMATIVE DEFENSE
`
`(Abandonment)
`
`Applicant has abandoned its
`
` mark, U.S. Registration No. 2,519,146, by
`
`ceasing use of the mark in conjunction with class 9 and class 16 goods and services for a period of
`
`at least three years without the intent to resume. In view of Applicant’s abandonment of the
`
` mark, Applicant cannot use the mark to establish priority over U.S. Trademark
`
`Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528,
`
`5,676,514, or 5,664,586.
`
`Applicant has abandoned its FAMOUS MONSTERS mark, U.S. Registration No.
`
`4,899,752, by ceasing use of the mark in conjunction with class 25 goods and services for a period
`
`of at least three years without the intent to resume. Applicant did not resume use of the FAMOUS
`
`MONSTERS mark in conjunction with class 25 goods until at least August 2023. In view of
`
`Applicant’s abandonment of the FAMOUS MONSTERS mark in conjunction with class 25 goods,
`
`Applicant cannot use the FAMOUS MONSTERS mark to establish priority over U.S. Trademark
`
`Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528,
`
`5,676,514, or 5,664,586 as alleged in Applicant’s first counterclaim.
`
`Applicant has abandoned its FAMOUS MONSTERS mark, U.S. Registration No.
`
`4,943,918, by ceasing use of the mark in conjunction with class 16 goods and services for a period
`
`of at least three years without the intent to resume. Applicant did not resume use of the FAMOUS
`
`MONSTERS mark in conjunction with class 16 goods until at least December 2023. In view of
`
`Applicant’s abandonment of the FAMOUS MONSTERS mark in conjunction with class 16 goods,
`
`Applicant cannot use the FAMOUS MONSTERS mark to establish priority over Monster’s U.S.
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`Trademark Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189,
`
`6,724,528, 5,676,514, or 5,664,586.
`
`Accordingly, Applicant’s abandonment of
`
`the
`
` and FAMOUS
`
`MONSTERS marks in connection with the goods identified in U.S. Registration Nos. 2,519,146,
`
`4,899,752, and 4,943,918 prevents Applicant from establishing priority over Monster’s
`
`registrations that are the subject of Applicant’s counterclaim of priority and likelihood of
`
`confusion, and therefore, Applicant’s counterclaim on those grounds cannot succeed.
`
`Opposer reserves its right to assert additional defenses, whether available now or in the
`
`future, as discovery proceeds.
`
`MONSTER’S COUNTER-COUNTERCLAIMS
`
`
`
`Opposer Monster Energy Company (“Monster”), through their undersigned counsel, bring
`
`the following Counter-Counterclaims against Lococho, LLC (“Lococho”), seeking cancellation of
`
`U.S. Registration Nos. 2,519,146, 4,899,752, and 4,943,918.
`
`1.
`
`Monster is a Delaware corporation located and doing business at 1 Monster Way,
`
`Corona, California 92879.
`
`2.
`
`Upon information and belief, Lococho is a Delaware limited liability company
`
`located and doing business at 15281 Ventura Boulevard, Suite 370, Encino, California 91436.
`
`3.
`
`On December 6, 2023, Monster filed its Consolidated Notice of Opposition,
`
`opposing the registration of Lococho’s U.S. Trademark Application Serial Nos. 98/010271,
`
`98/010280, 98/010286, 98/010288, 98/010300, and 98/010301 for the mark SHOCK MONSTER, 
`
`U.S. Trademark Application Serial Nos. 97/551273, 97/551271, 97/550802, 97/551282,
`
`97/688001, 97/551285, and 97/551287 for the mark FAMOUS MONSTERS, U.S. Trademark
`
`Application Serial Nos. 97/559333, 97/559343, 97/559345, 97/559348, and 97/688006 for the
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`mark FAMOUS MONSTERS OF FILMLAND, and U.S. Trademark Application Serial Nos.
`
`97/561377, 97/561388, 97/561390, 97/561391, and 97/688016 for the mark
`
`
`
`(“Lococho’s Applications”).
`
`4.
`
`On January 16, 2024, Lococho filed its Answer and Counterclaims to Monster’s
`
`Consolidated Notice of Opposition. In its first Counterclaim, Lococho seeks to cancel Monster’s
`
`U.S. Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189,
`
`6,724,528, 5,676,514, and 5,664,586, based on priority and likelihood of confusion with Lococho’s
`
`U.S. Registration Nos. 2,519,146, 4,899,752, and 4,943,918 (“Lococho’s Registrations”). In its
`
`second Counterclaim, Lococho seeks to cancel Monster’s U.S. Registration Nos. 5,820,689,
`
`5,661,940, 5,114,854, 5,826,919, 5,689,189, 5,114,853, and 5,570,782 based on a lack of bona
`
`fide use in commerce.
`
`5.
`
`For its counterclaim of priority and likelihood of confusion, Lococho alleges that
`
`Lococho’s Registrations predate Monster’s use of the marks that are the subject of U.S.
`
`Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528,
`
`5,676,514, and 5,664,586 and that Lococho has common law rights in the marks FAMOUS
`
`MONSTERS, FAMOUS MONSTERS OF FILMLAND, and 
`
`, “by virtue of
`
`consistent use in commerce dating back many years prior to [Monster]’s first use of any of its
`
`Asserted Marks.” See Lococho’s Counterclaims at ¶¶ 4, 9.
`
`6.
`
`Lococho asserts that, if a likelihood of confusion exists between Monster’s marks
`
`that are the subject of U.S. Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940,
`
`5,826,919, 5,689,189, 6,724,528, 5,676,514, and 5,664,586, and the marks that are the subject of
`
`Lococho’s Registrations, then each of Monster’s U.S. Registration Nos. 6,451,182, 6,760,278,
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`5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,676,514, and 5,664,586 must be
`
`cancelled because Lococho has priority of use. See Lococho’s Counterclaims at ¶ 21.
`
`LOCOCHO’S REGISTRATIONS
`
`7.
`
`Upon information and belief, Lococho is the owner of U.S. Registration No.
`
`2,519,146 (the “‘146 Registration”) for the mark
`
` which issued on December 18,
`
`2001, in connection with: (1) “Prerecorded video tape programs featuring the motion picture works
`
`of the horror, science fiction and fantasy genre” in class 9 based on an claimed first use in
`
`commerce date of November 1991; and (2) “Magazines, trading cards, calendars, posters,
`
`posterbooks featuring motion picture works of the horror, science fiction and fantasy genre” in
`
`class 16 and claims a first use in commerce date of November 1993.
`
`8.
`
`Upon information and belief, Lococho is the owner of U.S. Registration No.
`
`4,899,752 (the “‘752 Registration”) for the mark FAMOUS MONSTERS which issued on
`
`February 9, 2016, in connection with “Hooded sweatshirts; shirts; sweatshirts; t-shirts; tank tops;
`
`tops” in class 25 and claims a first use in commerce date of August 2011.
`
`9.
`
`Upon information and belief, Lococho is the owner of U.S. Registration No.
`
`4,943,918 (the “‘918 Registration”) for the mark FAMOUS MONSTERS which issued on April
`
`26, 2016, in connection with “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 class 16 and claims a first use in commerce date of August
`
`10, 2011.
`
`- 12 -
`
`

`

` 
`
`COUNTER-COUNTERCLAIM I
`
`Cancellation of the ‘146 Registration based on Abandonment
`
`10. Monster repeats and re-alleges each and every allegation set forth in paragraphs 1-
`
`9 above.
`
`11.
`
`Upon information and belief, Lococho is not currently using the
`
`
`
`mark on or in connection with any of the goods identified in the ‘146 Registration.
`
`12.
`
`Upon information and belief, Lococho has not used the
`
` mark on or
`
`in connection with any of the goods identified in the ‘146 Registration for many years.
`
`13.
`
`Upon information and belief, Lococho has no intention to resume using the
`
` mark on or in connection with any of the goods identified in the ‘146 Registration.
`
`14.
`
`Upon information and belief, Lococho did not use the
`
` mark on or
`
`in connection with any of the goods identified in the ‘146 Registration for at least three consecutive
`
`years and Lococho is therefore presumed to have abandoned the mark.
`
`15.
`
`The continued registration of the ‘146 Registration injures Monster, at least because
`
`Lococho relies on it in support of its priority and likelihood of confusion Counterclaim against
`
`Monster in this proceeding and the ‘146 Registration thus purports to conflict with and impair
`
`Monster’s lawful and exclusive right to use its marks that are the subject of U.S. Registration Nos.
`
`6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and
`
`5,676,514.
`
`- 13 -
`
`

`

` 
`
`16.
`
`The ‘146 Registration should therefore be cancelled under Section 14 of the
`
`Trademark Act, 15 U.S.C. § 1064(3), because Lococho has abandoned the
`
`mark
`
`within the meaning of 15 U.S.C. § 1127.
`
`COUNTER-COUNTERCLAIM II
`
`Cancellation in part, or Loss of Priority of the ‘752 Registration based on Abandonment
`
`17. Monster repeats and re-alleges each and every allegation set forth in paragraphs 1-
`
`16 above.
`
`18.
`
`Upon information and belief, Lococho ceased use of the FAMOUS MONSTERS
`
`mark in connection with all of the goods identified in the ‘752 Registration more than four years
`
`ago.
`
`19.
`
`Upon information and belief, this cessation of use was continuous for a period of
`
`at least three consecutive years with no intent to resume use and Lococho is therefore presumed to
`
`have abandoned the mark.
`
`20.
`
`Upon information and belief, Lococho did not resume use of the FAMOUS
`
`MONSTERS mark in connection with any of the goods identified in the ‘752 Registration until
`
`August 2023.
`
`21.
`
`Upon information and belief, Lococho did not have any intention to resume use of
`
`the FAMOUS MONSTERS mark in connection with any of the goods identified in the ‘752
`
`Registration until August 2023.
`
`22.
`
`The continued registration of the ‘752 Registration injures Monster, at least because
`
`Lococho relies on in support of its priority and likelihood of confusion Counterclaim against
`
`Monster in this proceeding and the ‘752 Registration thus purports to conflict with and impair
`
`Monster’s lawful and exclusive right to use its marks that are the subject of U.S Registration Nos.
`
`- 14 -
`
`

`

` 
`
`6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and
`
`5,676,514.
`
`23.
`
`The ‘752 Registration should therefore be cancelled under Section 14 of the
`
`Trademark Act, 15 U.S.C. § 1064, because Lococho abandoned the FAMOUS MONSTERS mark
`
`within the meaning of 15 U.S.C. § 1127 and can no longer rely on the date of first use claimed in
`
`the ’752 Registration to establish priority in support of its Counterclaim.
`
`24.
`
`In the alternative, the ‘752 Registration should be afforded a first use in commerce
`
`date of no earlier than August 2023.
`
`25.
`
`In the alternative, upon information and belief, Lococho is not currently using the
`
`FAMOUS MONSTERS mark on or in connection with “sweatshirts” and “Hooded sweatshirts.”
`
`26.
`
`Upon information and belief, Lococho ceased use of the FAMOUS MONSTERS
`
`mark on or in connection with “sweatshirts” and “Hooded sweatshirts” more than five years ago.
`
`27.
`
`Upon information and belief, this cessation of use has been continuous for a period
`
`of at least three consecutive years with no intent to resume use and Lococho is therefore presumed
`
`to have abandoned the mark with respect to these goods.
`
`28.
`
`Upon information and belief, Lococho has no intention to resume use of the
`
`FAMOUS MONSTERS mark on or in connection with “sweatshirts” and “Hooded sweatshirts.”
`
`29.
`
`The continued registration of the ‘752 Registration for “sweatshirts” and “Hooded
`
`sweatshirts” injures Monster, at least because Lococho relies on that registration in support of its
`
`priority and likelihood of confusion Counterclaim against Monster in this proceeding and the ‘752
`
`Registration thus purports to conflict with and impair Monster’s lawful and exclusive right to use
`
`its marks that are the subject of U.S. Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940,
`
`5,826,919, 5,689,189, 6,724,528, 5,664,586, and 5,676,514.
`
`- 15 -
`
`

`

` 
`
`30.
`
`The ‘752 registration should therefore be cancelled in part under Section 14 of the
`
`Trademark Act, 15 U.S.C. § 1064, because Lococho has abandoned the FAMOUS MONSTERS
`
`mark in connection with “sweatshirts” and “Hooded sweatshirts” within the meaning of 15 U.S.C.
`
`§ 1127.
`
`COUNTER-COUNTERCLAIM III
`
`Cancellation in part, or Loss of Priority of the ‘918 Registration based on Abandonment
`
`31. Monster repeats and re-alleges each and every allegation set forth in paragraphs 1-
`
`30 above.
`
`32.
`
`Upon information and belief, Lococho ceased use of the FAMOUS MONSTERS
`
`mark in connection with all of the goods identified in the ‘918 Registration more than seven years
`
`ago.
`
`33.
`
`Upon information and belief, this cessation of use was continuous for a period of
`
`at least three consecutive years with no intent to resume use and Lococho is therefore presumed to
`
`have abandoned the mark.
`
`34.
`
`Upon information and belief, Lococho did not resume use of the FAMOUS
`
`MONSTERS mark in connection with any of the goods identified in the ‘918 Registration until
`
`December 2023.
`
`35.
`
`Upon information and belief, Lococho did not have any intention to resume use of
`
`the FAMOUS MONSTERS mark in connection with any of the goods identified in the ‘918
`
`Registration until December 2023.
`
`36.
`
`The continued registration of the ‘918 Registration injures Monster, at least because
`
`Lococho relies on in support of its priority and likelihood of confusion Counterclaim against
`
`Monster in this proceeding and the ‘918 Registration thus purports to conflict with and impair
`
`Monster’s lawful and exclusive right to use its marks that are the subject of U.S Registration Nos.
`
`- 16 -
`
`

`

` 
`
`6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189, 6,724,528, 5,664,586, and
`
`5,676,514.
`
`37.
`
`The ‘918 Registration should therefore be cancelled under Section 14 Trademark
`
`Act, 15 U.S.C. § 1064, because Lococho abandoned the FAMOUS MONSTERS mark within the
`
`meaning of 15 U.S.C. § 1127 and can no longer rely on the date of first use claimed in the ’752
`
`Registration to establish priority in support of its Counterclaim.
`
`38.
`
`In the alternative, the ‘918 Registration should be afforded a first use in commerce
`
`date of no earlier than December 2023.
`
`39.
`
`In the alternative, upon information and belief, Lococho is not currently using the
`
`FAMOUS MONSTERS mark on or in connection with “Posters.”
`
`40.
`
`Upon information and belief, Lococho ceased use of the FAMOUS MONSTERS
`
`mark on or in connection with “Posters” more than seven years ago.
`
`41.
`
`Upon information and belief, this cessation of use has been continuous for a period
`
`of at least three consecutive years with no intent to resume use and Lococho is therefore presumed
`
`to have abandoned the mark with respect to these goods.
`
`42.
`
`Upon information and belief, Lococho has no intention to resume use of the
`
`FAMOUS MONSTERS mark on or in connection with “Posters.”
`
`43.
`
`The continued registration of the ‘918 Registration for “Posters” injures Monster,
`
`at least because Lococho relies on that registration in support of its priority and likelihood of
`
`confusion Counterclaim against Monster in this proceeding and the ‘918 Registration thus purports
`
`to conflict with and impair Monster’s lawful and exclusive right to use its marks that are the subject
`
`of U.S. Registration Nos. 6,451,182, 6,760,278, 5,820,689, 5,661,940, 5,826,919, 5,689,189,
`
`6,724,528, 5,664,586, and 5,676,514.
`
`- 17 -
`
`

`

` 
`
`44.
`
`The ‘918 Registration should therefore be cancelled in part under Section 14
`
`Trademark Act, 15 U.S.C. § 1064, because Lococho has abandoned the FAMOUS MONSTERS
`
`mark in connection with “Posters” within the meaning of 15 U.S.C. § 1127.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Monster prays that these counter counterclaims be sustained in Monster’s
`
`favor and that:
`
`a.
`
`b.
`
`U.S. Registration No. 2,519,146 be cancelled pursuant to 15 U.S.C. § 1064;
`
`U.S. Registration No. 4,899,752 be cancelled, in whole or part, pursuant to 15
`
`U.S.C. § 1064, or, in the alternative, afforded a priority date of no earlier than
`
`August 2023; and
`
`c.
`
`U.S. Registration No. 4,943,918 be cancelled, in whole or part, pursuant to 15
`
`U.S.C. § 1064, or, in the alternative, afforded a priority date of no earlier than
`
`December 2023.
`
`Opposer reserves the right to amend its allegations according to information and/or
`
`materials obtained through discovery.
`
`Dated: February 21, 2024
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /Jason A. Champion/
`Steven J. Nataupsky
`Jason A. Champion
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`(949) 760-0404
`
`
`
`Ari Feinstein
`1717 Pennsylvania Avenue N.W., Suite 900
`Washington, DC 20006
`(202) 640-6400
`
`
`
`- 18 -
`
`

`

` 
`
`
`
`Sara Witty
`1155 Avenue of the Americas, 24th Floor
`New York, NY 10036
`(212) 849-3000
`
`efiling@knobbe.com
`Attorneys for Opposer,
`MONSTER ENERGY COMPANY
`
`
`
`- 19 -
`
`

`

` 
`
`
`
` CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing OPPOSER’S ANSWER
`
`AND COUNTER-COUNTERCLAIMS
`
`IN RESPONSE
`
`TO APPLICANT’S
`
`COUNTERCLAIMS has been served on Applicant’s counsel of record on February 21, 2024 via
`
`electronic mail to:
`
`
`
`Signature:
`
`Peter Nussbaum
`CHIESA SHAHINIAN & GIANTOMASI PC
`pnussbaum@csglaw.com, trademarks@csglaw.com,
`tmdocketing@csglaw.com
`
`
`
`
`Name: Doreen P. Buluran
`
`Date: February 21, 2024
`
`
`
`
`
`
`
`590069662024-
`
`- 20 -
`
`