throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1108529
`
`Filing date:
`
`01/19/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065591
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Monster Energy Company
`
`JASON A CHAMPION
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`Primary Email: efiling@knobbe.com
`Secondary Email(s): doreen.buluran@knobbe.com, MEC.TTAB@knobbe.com
`949-760-0404
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Response to Board Order/Inquiry
`
`Jacob R. Rosenbaum
`
`efiling@knobbe.com, MEC.TTAB@knobbe.com
`
`/Jacob R Rosenbaum/
`
`01/19/2021
`
`2021-01-19 Petitioner_s Response to Board Order - HAN-
`BEV.5881N.pdf(820224 bytes )
`
`

`

`HANBEV.5881N
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`Cancellation No.: 92065591
`
`Registration No.: 4,951,671
`
`Mark:
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`
`)
`
`Petitioner,
`
`
`
`v.
`
`
`MONSTER ENERGY COMPANY,
`
`
`
`
`
`INTEGRATED SUPPLY NETWORK, LLC,
`
`
`
`
`
`
`Respondent.
`
`PETITIONER MONSTER ENERGY COMPANY’S RESPONSE TO BOARD ORDER
`
`Pursuant to 37 C.F.R. § 2.117(a) and Trademark Trial and Appeal Board Manual of
`
`Procedure (“T.B.M.P.”) § 510.02, and the Board’s December 19, 2020 Order (Docket No. 20),
`
`Petitioner Monster Energy Company (“Petitioner”) responds as follows:
`
`On July 22, 2020, the Court of Appeals for the Ninth Circuit issued its decision in the
`
`case of Monster Energy Company v. Integrated Supply Network, Appeal No. 19-55760. A copy
`
`of the Ninth Circuit’s decision is attached. The Ninth Circuit decision affirmed the Jury’s finding
`
`of infringement, and remanded the case to the District Court only for a determination of
`
`appropriate remedies for the infringement. The remedies to be considered include disgorgement
`
`of Defendant’s profits under the Lanham Act, an award of attorneys’ fees under the Lanham Act,
`
`injunctive relief under California state law, and punitive damages under California state law.
`
`The issue of liability under the Lanham Act, including the jury’s finding that
`
`Respondent’s use of the
`
`mark, as identified in U.S. Registration No. 4,951,671,
`
`- 1 -
`
`

`

`infringes Petitioner’s U.S. registrations identified in the Petition for Cancellation (“Petitioner’s
`
`Marks”), has been finally determined by the Court of Appeals for the Ninth Circuit. No petition
`
`for rehearing or request for Supreme Court review has been filed by Respondent. Therefore, the
`
`Court of Appeals has made a final determination on all issues relevant to this Cancellation,
`
`namely, that Petitioner’s Marks have priority over Respondent, and that Respondent’s use of the
`
` mark infringes Petitioner’s Marks by causing a likelihood of confusion among
`
`consumers. No issue on remand to the District Court will alter this determination. In particular,
`
`the issue of remedies to which Petitioner is entitled for the infringement cannot impact this
`
`Cancellation proceeding, and that is the only issue to be decided by the District Court on remand.
`
`Accordingly, in view of the attached final determination of infringement by the Ninth
`
`Circuit, Petitioner requests the Board take further appropriate action in the proceedings and issue
`
`a show cause order as to why judgment should not be entered in favor of Petitioner. See TBMP
`
`§ 510.02(b).
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: January 19, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Jacob R. Rosenbaum/
`
`Steven J. Nataupsky
`
`Lynda J. Zadra-Symes
`
`Jason A. Champion
`
`Jacob R. Rosenbaum
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`efiling@knobbe.com
`Attorneys for Petitioner,
`MONSTER ENERGY COMPANY
`
`- 2 -
`
`

`

`
`
`
`I hereby certify that a true and complete copy of the foregoing PETITIONER
`
`CERTIFICATE OF SERVICE
`
`MONSTER ENERGY COMPANY’S RESPONSE TO BOARD ORDER has been served on
`
`Respondent’s counsel on January 19, 2021 via electronic mail to:
`
`
`
`Signature:
`
`Name: Doreen P. Buluran
`
`Date: January 19, 2021
`
`
`
`
`
`34175648
`
`Michael T. Hess
`SEAGER TUFTE & WICKHEM LLP
`Michael.Hess@stwiplaw.com
`docketing@stwiplaw.com
`
`
`
`
`
`
`
`
`
`- 3 -
`
`

`

`APPENDIX
`APPENDIX
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 1 of 8 Page ID #:26749
`
`NOT FOR PUBLICATION
`
`FILED
`
`JUL 22 2020
`
`UNITED STATES COURT OF APPEALS
`
`MOLLY C. DWYER, CLERK
`U.S. COURT OF APPEALS
`
` FOR THE NINTH CIRCUIT
`
`MONSTER ENERGY COMPANY, a
`Delaware corporation,
`
`No. 19-55760
`
`Plaintiff-Appellant,
`
`D.C. No.
`5:17-cv-00548-CBM-RAO
`
` v.
`
`INTEGRATED SUPPLY NETWORK,
`LLC, a Florida limited liability company,
`
`Defendant-Appellee.
`
`MEMORANDUM*
`
`MONSTER ENERGY COMPANY, a
`Delaware corporation,
`
`No. 19-55800
`
`Plaintiff-Appellee,
`
`D.C. No.
`5:17-cv-00548-CBM-RAO
`
` v.
`
`INTEGRATED SUPPLY NETWORK,
`LLC, a Florida limited liability company,
`
`Defendant-Appellant.
`
`Appeal from the United States District Court
`for the Central District of California
`
` *
`
`This disposition is not appropriate for publication and is not precedent
`except as provided by Ninth Circuit Rule 36-3.
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 2 of 8 Page ID #:26750
`
`Consuelo B. Marshall, District Judge, Presiding
`
`Argued and Submitted July 8, 2020
`Seattle, Washington
`
`Before: FERNANDEZ and NGUYEN, Circuit Judges, and BOLTON,** District
`Judge.
`
`Plaintiff Monster Energy Company (MEC) brought this infringement action
`
`against Defendant Integrated Supply Network, LLC (ISN) under the federal
`
`Lanham Act1 and California law.2 The jury determined that ISN had infringed
`
`some of MEC’s marks and its trade dress, that the infringement was not willful,
`
`and that MEC had proven $0 in actual damages but was entitled to $5,000,000 in
`
`punitive damages. The district court denied MEC’s motion for a permanent
`
`injunction under the Lanham Act,3 dismissed its California Unfair Competition
`
`Law4 (UCL) claim, awarded MEC $1 in nominal damages, and otherwise denied
`
`the parties’ post-trial motions. MEC appeals, and ISN cross-appeals, a number of
`
` * *
`
`The Honorable Susan R. Bolton, United States District Judge for the
`District of Arizona, sitting by designation.
`
`1
`
`See 15 U.S.C. §§ 1114(1), 1125(a).
`
`2
`
`See Cal. Bus. & Prof. Code § 17200; Los Defensores, Inc. v. Gomez,
`166 Cal. Rptr. 3d 899, 912 (Ct. App. 2014).
`
`3
`
`4
`
`See 15 U.S.C. § 1116(a).
`
`See Cal. Bus. & Prof. Code §§ 17200, 17203.
`
`2
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 3 of 8 Page ID #:26751
`
`the district court’s decisions in Nos. 19-55760 and 19-55800, respectively. We
`
`affirm in part, vacate in part, and remand.
`
`No. 19-55760
`
`(1) MEC argues that the district court abused its discretion5 in denying its
`
`motion for a permanent injunction pursuant to the Lanham Act on the ground that
`
`MEC had not demonstrated actual irreparable harm6 from ISN’s infringement. We
`
`disagree. Even if MEC adduced evidence of a strong business reputation and
`
`goodwill attributable to its marks and trade dress, the district court acted within its
`
`discretion in finding that MEC did not show that ISN’s infringement was inflicting
`
`actual, irreparable harm on those assets. See adidas Am., Inc. v. Skechers USA,
`
`Inc., 890 F.3d 747, 752, 759–61 (9th Cir. 2018); see also Anderson v. City of
`
`Bessemer City, 470 U.S. 564, 573–74, 105 S. Ct. 1504, 1511, 84 L. Ed. 2d 518
`
`(1985); cf. adidas, 890 F.3d at 752, 756–57.
`
`(2) MEC argues that the district court erred in dismissing its California UCL
`
`claim for lack of standing. See Cal. Bus. & Prof. Code § 17204; Kwikset Corp. v.
`
`Superior Court, 246 P.3d 877, 885–86 (Cal. 2011). We agree. While MEC had to
`
`5
`
`eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391, 126 S. Ct. 1837,
`1839, 164 L. Ed. 2d 641 (2006); see also United States v. Hinkson, 585 F.3d 1247,
`1261–62 (9th Cir. 2009) (en banc).
`
`6
`
`Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239,
`1249 (9th Cir. 2013).
`
`3
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 4 of 8 Page ID #:26752
`
`demonstrate an economic injury in order to have UCL standing, it only needed to
`
`show “the quantum of lost money or property necessary . . . to establish injury in
`
`fact” under federal law. Kwikset, 246 P.3d at 886; see also id. at 885. The jury
`
`determined that ISN infringed MEC’s trademarks and trade dress, which is itself a
`
`cognizable injury. See Already, LLC v. Nike, Inc., 568 U.S. 85, 91–92, 133 S. Ct.
`
`721, 727, 184 L. Ed. 2d 553 (2013); Halicki Films, LLC v. Sanderson Sales &
`
`Mktg., 547 F.3d 1213, 1225–26 (9th Cir. 2008); see also Lujan v. Defs. of Wildlife,
`
`504 U.S. 555, 560, 578, 112 S. Ct. 2130, 2136, 2145, 119 L. Ed. 2d 351 (1992).
`
`That injury is economic for UCL purposes because ISN’s infringement deprived
`
`MEC of the exclusive use of “property to which [it] . . . has a cognizable claim.”
`
`Kwikset, 246 P.3d at 885–86; see Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,
`
`240 U.S. 251, 259, 36 S. Ct. 269, 272, 60 L. Ed. 629 (1916); see also Coll. Sav.
`
`Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 673, 119 S.
`
`Ct. 2219, 2224, 144 L. Ed. 2d 605 (1999). Thus, we vacate the standing decision
`
`and remand for a decision on the merits of the UCL claim.7
`
`7
`
`The district court should consider the effect, if any, of Sonner v.
`Premier Nutrition Corp., 962 F.3d 1072, 1081 (9th Cir. 2020).
`
`4
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 5 of 8 Page ID #:26753
`
`(3) MEC argues that the district court abused its discretion8 in denying
`
`MEC’s motion for a new trial on actual damages on the ground that the jury’s $0
`
`damages verdict was unsupported by the evidence. We disagree. The verdict
`
`reflects the jury’s determination that MEC failed to carry its burden of proving the
`
`amount of damages, if any. Intel Corp. v. Terabyte Int’l, Inc., 6 F.3d 614, 620–21
`
`(9th Cir. 1993); Phillipine Nat’l Oil Co. v. Garrett Corp., 724 F.2d 803, 806 (9th
`
`Cir. 1984); see also Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir. 2010).
`
`Any tension between the jury’s punitive and actual damages awards does not lead
`
`to the conclusion that the actual damages verdict had no reasonable basis. See
`
`Molski, 481 F.3d at 729. The district court did not abuse its discretion in denying
`
`MEC’s motion for a new trial on actual damages.
`
`(4) At the time of trial, we required willfulness as a precondition to a
`
`disgorgement award under the Lanham Act. Stone Creek, Inc. v. Omnia Italian
`
`Design, Inc., 875 F.3d 426, 441 (9th Cir. 2017). MEC argues that Romag
`
`Fasteners, Inc. v. Fossil, Inc., __ U.S. __, __, 140 S. Ct. 1492, 1495–97, 206 L. Ed.
`
`2d 672 (2020), has fatally undermined that principle. See Miller v. Gammie, 335
`
`F.3d 889, 900 (9th Cir. 2003) (en banc). We exercise our discretion to consider
`
`8
`
`See Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007); see
`also Hinkson, 585 F.3d at 1261–62.
`
`5
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 6 of 8 Page ID #:26754
`
`this question,9 and we agree that the Supreme Court has squarely rejected the
`
`reasoning that motivated Stone Creek. See Romag Fasteners, __ U.S. at __, 140 S.
`
`Ct. at 1495–97. Thus, we remand to the district court to decide whether
`
`disgorgement of profits is appropriate in the circumstances of this case. See id. at
`
`__, 140 S. Ct. at 1497.
`
`No. 19-55800
`
`(5) Several of ISN’s assignments of error are essentially alternative facets of
`
`its theory that MEC failed to demonstrate that it was injured by ISN. First, as
`
`described above at (2), the infringement verdict itself constitutes a cognizable
`
`injury in fact. Thus, we reject ISN’s argument that MEC lacked constitutional
`
`standing to pursue its claims.10 Second, ISN was not entitled to judgment as a
`
`matter of law on MEC’s infringement claims because the showing required to
`
`demonstrate a Lanham Act violation cannot be conflated with the showing required
`
`to recover damages for that violation. See 15 U.S.C. § 1117(a); Brookfield
`
`Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 (9th Cir. 1999);
`
`Intel Corp., 6 F.3d at 620–21. Third, the district court did not err in refusing to use
`
`9
`
`2004).
`
`Dream Palace v. County of Maricopa, 384 F.3d 990, 1005 (9th Cir.
`
`10
`
`We also reject ISN’s implicit assumption that standing evaporates if a
`plaintiff loses on the merits. See Steel Co. v. Citizens for a Better Env’t, 523 U.S.
`83, 89, 118 S. Ct. 1003, 1010, 140 L. Ed. 2d 210 (1998).
`
`6
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 7 of 8 Page ID #:26755
`
`injury and causation jury instructions and verdict-form questions that were
`
`predicated on ISN’s misunderstanding of the showing required for a Lanham Act
`
`violation. See Clem v. Lomeli, 566 F.3d 1177, 1180–81 (9th Cir. 2009).
`
`(6) The district court did not abuse its discretion in excluding evidence that
`
`MEC’s energy drinks cause harm to some consumers. While the evidence may
`
`have had some slight relevance, the district court properly excluded it on the basis
`
`that it plainly carried a substantial risk of unfair prejudice. See United States v.
`
`Wiggan, 700 F.3d 1204, 1213 (9th Cir. 2012); see also Fed. R. Evid. 401, 403.
`
`(7) The district court erred in refusing to vacate the punitive damages
`
`award11 based on MEC’s California common law claim. Because “actual damages
`
`are an absolute predicate for an award of exemplary or punitive damages” in
`
`California and the jury awarded $0 in actual damages, the punitive damages award
`
`should have been vacated. Kizer v. County of San Mateo, 806 P.2d 1353, 1357
`
`(Cal. 1991); see Cheung v. Daley, 42 Cal. Rptr. 2d 164, 167 (Ct. App. 1995); see
`
`also Costerisan v. Tejon Ranch Co., 62 Cal. Rptr. 800, 802–03 (Ct. App. 1967).
`
`Moreover, although an award of nominal damages may be mandatory in a 42
`
`11
`
`See Cal. Civ. Code § 3294(a).
`
`7
`
`

`

`Case 5:17-cv-00548-CBM-RAO Document 594 Filed 07/22/20 Page 8 of 8 Page ID #:26756
`
`U.S.C. § 1983 action in some circumstances,12 the district court erred in overriding
`
`the jury’s $0 damages verdict and awarding $1 in nominal damages in this case.
`
`See Wei Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 1038 (9th Cir. 2003);
`
`Costerisan, 62 Cal. Rptr. at 802–03. We vacate the nominal and punitive damages
`
`awards, and we remand so that the district court can consider whether the punitive
`
`damages should be reinstated, in whole or in part, after the UCL and Lanham Act
`
`disgorgement claims are decided.
`
`(8) We vacate the attorney’s fees and costs awards and remand for
`
`reconsideration after the district court has decided the other matters on remand.
`
`AFFIRMED IN PART, VACATED IN PART, AND REMANDED for
`
`further proceedings not inconsistent with this disposition. The parties shall bear
`
`their own costs on appeal.
`
`12
`
`See Hazle v. Crofoot, 727 F.3d 983, 991 n.6, 992 (9th Cir. 2013);
`Floyd v. Laws, 929 F.2d 1390, 1401–02 (9th Cir. 1991).
`
`8
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket