estta tracking number: estta1078230 08/27/2020compagnie gervais danone v. precision formulations,...
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1078230
Filing date: 08/27/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91256651
Party PlaintiffMonster Energy Company
CorrespondenceAddress
ALEXANDER D. ZENGKNOBBE MARTENS OLSON & BEAR LLP2040 MAIN STREET, 14TH FLOORIRVINE, CA 92614UNITED STATESPrimary Email: [email protected] Email(s): [email protected](949) 760-0404
Submission Opposition/Response to Motion
Filer's Name Nicole R. Townes
Filer's email [email protected], [email protected]
Signature /Nicole R. Townes/
Date 08/27/2020
Attachments 2020-08-27 Opposer_s Opposition to Applicant_s Motion to Dismiss - HANB.11486M.pdf(1285508 bytes )
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HANB.11486M TRADEMARK
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
MONSTER ENERGY COMPANY,
Opposer,
v.
CHARLOTTE M. PURIN,
Applicant.
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Opposition No.: 91256651
Serial No.: 88/501145
Mark:
OPPOSER’S OPPOSITION TO APPLICANT’S MOTION TO DISMISS MONSTER
ENERGY COMPANY’S OPPOSITION FOR FAILURE TO STATE A CLAIM UPON
WHICH RELIEF CAN BE GRANTED
Opposer, Monster Energy Company (“Opposer”) hereby responds to Applicant Charlotte
M. Purin’s (“Applicant”) Motion to Dismiss for Failure to State a Claim upon Which Relief Can
be Granted, and respectfully requests that the Board deny the Motion.
I. INTRODUCTION
Applicant’s Motion to Dismiss is improperly based on matters outside of the scope of
Opposer’s Notice of Opposition. Specifically, Applicant argues that Opposer’s opposition
should be dismissed on the grounds of laches. In support of her assertion, Applicant claims that
she has been using her mark for many years and even began using her mark prior to Opposer’s
first use of its asserted marks. However, there are no facts in the Notice of Opposition showing
that Applicant has been using her mark for many years or prior to Opposer’s first use of its
marks. Moreover, laches is not a proper defense in an opposition proceeding.
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Applicant also argues as a basis for her Motion that two of Opposer’s asserted
registrations should be cancelled. However, Applicant has not even filed an answer or
counterclaims in this action. Further, Applicant’s arguments in support of cancellation rely on
matters outside of the scope of the Notice of Opposition such as third-party website printouts.
Moreover, even if Applicant’s allegations were true, which they are not, they do not establish a
claim for cancellation of Opposer’s registrations.
Applicant’s Motion fails to include any citations to the pleadings in this opposition or
request judicial notice of any facts. Instead, Applicant’s Motion is a premature and improper
motion for summary judgment as Applicant has not yet served her initial disclosures in this
opposition.
Further, contrary to Applicant’s assertions, Opposer’s Notice of Opposition alleges
sufficient facts to state claims for relief based on a likelihood of confusion and dilution by
blurring. The facts pled in Opposer’s Notice of Opposition must be accepted as true, and the
facts establish a likelihood of confusion and dilution by blurring. Accordingly, the Board should
deny Applicant’s Motion.
II. FACTUAL BACKGROUND
Opposer opposes Applicant’s U.S. Trademark Application Serial No. 88/501,145
(“Applicant’s Application”) for the mark (“Applicant’s
Mark”) for use in connection with the goods set forth below (collectively, “Applicant’s Goods”):
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International
Class
Goods Alleged Date of First
Use in Interstate
Commerce
9 DVDs containing live action, animation and
music featuring characters who focus on
children's nutrition, promote eating green
grub, meaning fresh fruits and vegetables,
use math to teach about sugars, calories,
food content, and promote gardening,
sustainability, sports and exercise;
Downloadable multimedia files containing
animation and music featuring characters
who focus on children's nutrition, promote
eating green grub, meaning fresh fruits and
vegetables, use math to teach about sugars,
calories, food content, and promote
gardening, sustainability, sports and
exercise; Downloadable E-books featuring
characters who focus on children's nutrition,
promote eating green grub, meaning fresh
fruits and vegetables, use math to teach
about sugars, calories, food content, and
promote gardening, sustainability, sports and
exercise
June 13, 2013
16 Children's books featuring characters who
focus on children's nutrition, promote eating
green grub, meaning fresh fruits and
vegetables, use math to teach about sugars,
calories, food content, and promote
gardening, sustainability, sports and exercise
January 14, 2018
25 Tee shirts May 2, 2015
Dkt. No. 1 at ¶ 1. Applicant’s Application was filed on July 4, 2019 and published for
opposition on May 5, 2020.
On June 26, 2020, after requesting an extension of time to oppose, Opposer timely filed
this opposition against Applicant’s Application. Dkt. No. 1. As set forth in the Notice of
Opposition, Opposer owns federal trademark registrations for numerous MONSTER Marks
including, for example, MONSTER ENERGY® MONSTER ASSAULT®, JAVA
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MONSTER®, M MONSTER ENERGY®, LO-CARB MONSTER ENERGY®, ®, and
® (collectively, the “MONSTER Marks”). Id. at ¶¶ 2, 10. In addition, Opposer
owns common law rights in its family of MONSTER Marks. Id. at ¶ 9. Opposer also owns
federal trademark registrations for numerous ® Marks including, for example, the following:
®, ®, ®, ®, ®, ®, and ® (collectively, the “ ®
Marks”). Id. at ¶¶ 3, 10. In addition, Opposer owns common law rights in its family of ®
Marks. Id. at ¶ 9. Opposer has also used and owns rights in a distinctive trade dress, which
includes, but is not limited to, the color green on a dark background (the “MONSTER Trade
Dress”). Id. at ¶ 4.
Since at least before the filing date of the Application and the alleged dates of first use in
interstate commerce of Applicant’s Mark, Opposer has been, and still is, engaged in the
development, marketing, and/or sale of drinks, nutritional supplements, and clothing, including t-
shirts, hooded shirts, hooded sweatshirts, sweatshirts, jackets, pants, bandanas, sweat bands, and
gloves, headgear, helmets, stickers, decals, bags, and other products under Opposer’s
MONSTER Marks, ® Marks, and MONSTER Trade Dress . Id. at ¶¶ 5, 9. Opposer has also
used or licensed Opposer’s MONSTER Marks, ® Marks, and MONSTER Trade Dress for
products used or associated with fitness and video games such as downloadable mobile apps. Id.
at ¶¶ 6, 7. Some examples of Opposer’s use of Opposer’s MONSTER Marks, ® Marks, and
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MONSTER Trade Dress in connection with the aforementioned goods and services are shown
below.
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Id. at ¶¶ 5-7. Opposer’s MONSTER Marks, ® Marks, and MONSTER Trade Dress were
famous prior to the filing date of the Application and the alleged dates of first use in commerce
of Applicant’s Mark. Id. at ¶ 38.
Applicant’s Application was filed on July 4, 2019, and Applicant alleged dates of first
use in commerce for the goods in classes 9, 15, and 25 of June 13, 2013, January 14, 2018, and
May 2, 2015, respectively. Dkt. No. 1 at ¶ 1. As pled in Opposer’s Notice of Opposition, the
filing dates for Opposer’s federal trademark registrations for its MONSTER Marks and ®
Marks are prior to the filing date of Applicant’s Application. Id. at ¶¶ 10-35. Further, Opposer
has been using Opposer’s MONSTER Marks, ® Marks, and MONSTER Trade Dress since
long before Applicant’s filing date for Applicant’s Application and alleged dates of first use in
interstate commerce. Id. at ¶¶ 2-5, 10.
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Opposer’s Notice alleges that Opposer will be damaged by the registration of Applicant’s
Mark because Applicant’s Mark so resembles Opposer’s MONSTER Marks, ® Marks, and
MONSTER Trade Dress as to be likely, when used on or in connection with the goods identified
in Applicant’s 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). Id. at ¶¶ 42-43. Opposer’s
Notice also alleges that Opposer will dilute the distinctive qualities of Opposer’s ® Marks
within the meaning of Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), and will lessen the
ability of Opposer’s marks to distinguish Opposer’s goods and services. Id. at ¶¶ 44-45.
III. LEGAL STANDARD
“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 129
S.Ct. 1937, 1949 (U.S. 2009). “A motion to dismiss for failure to state a claim upon which relief
can be granted is a test solely of the legal sufficiency of a complaint.” T.B.M.P. § 503.02.
Specifically, in the context of an opposition “a complaint need only allege such facts as
would, if proved, establish that the plaintiff is entitled to the relief sought, that is, that (1) the
plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for denying the
registration sought (in the case of an opposition) . . . .” Id. All of the opposer’s well-pleaded
allegations must be accepted as true, and the complaint must be construed in the light most
favorable to the opposer. Corporacion Habanos, S.A. and Empresa Cubana del Tabaco, d.b.a.
Cubatabaco v. Juan E. Rodriguez, Can. No. 92052146, 2011 WL 3871952, at *3-*4 (T.T.A.B.
2011); Advanced Cardiovascular Sys. Inc. v. SciMed Life Sys. Inc., 988 F.2d 1157, 1160 (Fed.
Cir. 1993). A motion to dismiss is solely a test of the sufficiency of the pleadings and “does not
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involve a determination of the merits of the case...” Libertyville Saddle Shop Inc. v. E. Jeffries &
Sons Ltd., 22 U.S.P.Q.2d 1594, 1597 (T.T.A.B. Mar. 17, 1992). Further, matters outside of the
pleadings should not be considered by the Board when deciding a motion to dismiss. T.B.M.P.
§ 503.04.
IV. ARGUMENT
A. Applicant’s Motion Improperly Relies on Matters Outside of Opposer’s Notice of
Opposition and is Premature
Applicant’s Motion improperly relies on matters outside of the pleadings. For example,
some of the arguments in Applicant’s Motion rely on the alleged fact that Applicant has been
using Applicant’s Mark or similar marks since 1999. Mot. at 2. However, there are no facts to
support this allegation in the Notice of Opposition. Further, Applicant’s allegations that certain
of Opposer’s trademark registrations should be cancelled rely on third party webpage printouts
that were not included in the Notice of Opposition. See, e.g., Mot. at 4. Applicant also makes
irrelevant arguments relating to Opposer’s prior opposition and litigation history. Mot. at 1.
These arguments rely entirely on alleged facts outside of the scope of the Notice of Opposition.
Matters outside the scope of the pleadings should not be considered by the Board on a
motion to dismiss. T.B.M.P. § 503.04. In some circumstances, the Board can construe a motion
to dismiss that involves a determination of the merits of the case or relies on matters outside of
the pleadings as a motion for summary judgment. However, because the parties have not yet
served initial disclosures and Applicant has not filed an Answer, Applicant’s Motion cannot be
converted to a Motion for Judgment on the Pleadings or Motion for Summary Judgment.
Compagnie Gervais Danone v. Precision Formulations, LLC, 89 U.S.P.Q.2d 1251, 1255-56
(T.T.A.B. 2009) (“the Board generally will no longer exercise its discretion to convert motions
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to dismiss that refer to matters outside the pleadings into motions for summary judgment, if such
motions are filed before the moving party serves its initial disclosures”); Wellcome Found. Ltd.
v. Merck & Co., 46 U.S.P.Q.2d 1478, 1479 n. 2 (T.T.A.B. 1998); Fed. R. Civ. P. 12(d); 37
C.F.R. § 2.127(e)(1) (“A party may not file a motion for summary judgment until the party has
made its initial disclosures ....”); T.B.M.P. § 504.01 (motion for judgment on the pleadings may
only be filed after pleadings are closed). Because Applicant’s Motion relies on matters outside
of the pleadings and the parties have not yet served initial disclosures, Applicant’s Motion
should be denied as improper and premature.
B. Applicant’s Assertion of Laches as a Basis to Dismiss Opposer’s Opposition is
Improper
Applicant improperly relies on matters outside of Opposer’s Notice of Opposition to
assert that Opposer’s opposition is barred by laches. Specifically, Applicant’s argument of laches
is based on the allegation that Applicant has been using Applicant’s Mark since 1999. Mot. at 2.
However, those facts are outside the scope of Opposer’s Notice of Opposition, and as set forth
above, should not be considered by the Board on a Motion to Dismiss.
Moreover, the affirmative defense of laches is generally inapplicable in opposition
proceedings. See National Cable Television Ass’n., Inc. v. American Cinema Editors, Inc., 937
F.2d 1572, 1578, 19 U.S.P.Q.2d 1424 (Fed. Cir. 1991). “[L]aches begins to run from the time
action could be taken against the acquisition by another of a set of rights to which objection is
later made, [and] [i]n an opposition … proceeding the objection is to the rights which flow from
registration of the mark.” Intel Corp. v. Data Shapers, Inc., Opp. No. 121450, 2001 WL
1028337, at *2 (T.T.A.B. Sept. 5, 2001) (non-precedential) (citing 15 U.S.C. §1065
(incontestability of right to use mark); §1072 (registration as constructive notice of claim of
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ownership); §1115 (registration as evidence of exclusive right to use mark)). Here, Applicant’s
Application published for opposition on May 5, 2020, and Opposer timely opposed on June 26,
2020, after filing an extension of time to oppose. Opposer did not delay in taking action.
An objection to registration is not the legal equivalent of an objection to use or a claim of
infringement.1 Id. (“Under the view that laches runs from knowledge of use, a trademark owner
would be obligated to bring suit to stop use upon learning of a possible conflicting mark or suffer
the possibility of being barred by the passage of time from later opposing or cancelling
registration of the mark. We see nothing in logic or the statute which requires this expansive
view of laches.”) Thus, even assuming Opposer was aware of Applicant’s alleged use of
Applicant’s Mark dating back to 1999, which it was not, laches would not bar Opposer from
opposing Applicant’s Application that was not filed until July 4, 2019 and published for
opposition on May 5, 2020.
Because Applicant’s assertion of laches relies on matters outside the scope of the
pleadings and the defense of laches is generally not available in opposition proceedings,
Applicant’s motion on these grounds should be denied.
C. Applicant’s Challenges to Opposer’s U.S. Trademark Registration Nos. 5,820,689
and 5,580,962 are Improper
Applicant’s challenge to Opposer’s U.S. Trademark Registration No. 5,820,689 is based
on matters outside of the scope of the Notice of Opposition. Mot. at 3-12. Specifically,
Applicant appears to assert that Opposer failed to properly use its MONSTER ENERGY® mark
shown in U.S. Registration No. 5,820,689 in connection with certain goods identified therein by
1 While Applicant’s Motion fails to use proper formatting for its case citations, it appears that the
cases cited by Applicant in support of her argument of laches are cases that relate to claims of
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the alleged dates of first use in interstate commerce set forth in the registration. Mot. at 3, 7.
However, Applicant has not yet filed an answer or counterclaims in this opposition. Thus, there
are no allegations of fraud on the USPTO in the pleadings. Further, in support of Applicant’s
allegations, Applicant relies on website printouts which were not included in Opposer’s Notice
of Opposition.2 Id. Accordingly, Applicant’s motion to dismiss based on her challenges to
Opposer’s U.S. Trademark Registration Nos. 5,820,689 and 5,580,962 should be denied as
improperly relying on matters outside of the scope of the pleadings.
Moreover, Applicant’s assertion of fraud based on the allegation that Opposer set forth
incorrect dates of first use in interstate commerce in its U.S. Trademark Registration No.
5,820,689 is futile. Under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), a claim of fraud in
the procurement of a registration requires allegations that (1) applicant/registrant made a false
representation to the USPTO; (2) the false representation is material to the registrability of the
mark; (3) applicant/registrant had knowledge of the falsity of the representation; and (4)
applicant/registrant made the representation with intent to deceive the USPTO. Id. at 1941.
“[T]he first use date is not material to the Office’s decision to approve a mark for publication.”
Hiraga v. Arena, 90 U.S.P.Q.2d 1102, 1107 (T.T.A.B. 2009) (“[T]he critical question in this case
is whether the mark was in use in connection with the identified goods as of the filing date of his
use-based application. That is, if the mark was in use in commerce as of the filing date, then the
infringement and not objections to registration as considered in opposition proceedings. See
Mot. at 2. 2 The source of many of these third-party webpage printouts are unclear. Further, Applicant did
not request that the Board take judicial notice of the website printouts submitted with her
Motion. Moreover, these website printouts do not set forth the types of facts that can be
judicially noticed. UMG Recordings Inc. v. Matte, Inc., 100 U.S.P.Q.2d 1868, 1874, 1879 n.12
(T.T.A.B. 2011) (Board declined to take judicial notice of web pages from websites); Standard
Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 U.S.P.Q.2d 1917, 1931 n.26 (T.T.A.B.
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claimed date of first use, even if false, does not constitute fraud because the first use date is not
material to the Office’s decision to approve a mark for publication.”); see also Basic Sports
Apparel, Inc. v. Spiral Direct Ltd., Opp. No. 91242798, 2019 WL 1306914, at *1, n. 4 (T.T.A.B.
Mar. 20, 2019) (non-precedential). Thus, even assuming Applicant could establish that
Opposer’s claimed dates of first use in interstate commerce were incorrect, which she cannot,
Applicant would not be entitled to cancellation of Opposer’s registration because this would not
constitute a false representation that is material to registrability of the mark.
Moreover, the evidence set forth by Applicant does not show that Opposer
misrepresented its dates of first use in interstate commerce set forth in its registration. Simply
because one particular videogame offered in connection with Opposer’s MONSTER ENERGY®
mark was not launched until 2017 does not mean that Opposer was not using its MONSTER
ENERGY® mark in connection with other goods falling within the scope of the identification of
goods in Class 9 in 2002. Mot. at 3-4.
Applicant also falsely claims that any trademark rights based on use of the MONSTER
ENERGY® mark in connection with the Monster Energy® Supercross Official game are owned
by Feld, not Opposer, because the videogame was produced in conjunction with Feld. Mot. at 3-
5. Similarly, Applicant falsely asserts that any trademark rights based on use of the MONSTER
ENERGY® mark in connection with toy cars are owned by Feld. 3 Mot. at 7-8. The fact that
Opposer provided permission to Feld to use its MONSTER ENERGY® marks in connection
with certain products does not divest Opposer of its ownership rights in those marks for the
products on which they are used. “Where the mark is used by a related company, the owner is
2006) (Board declined to take judicial notice of third-party website materials stating “[t]hese
materials are clearly not proper subject matter for judicial notice.”)
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the party who controls the nature and quality of the goods sold or services rendered under the
mark.” T.M.E.P. § 1201.01.
In fact, the improper evidence set forth by Applicant shows that Opposer did not make
misrepresentations regarding its use of the MONSTER ENERGY® mark in connection with the
goods identified in the registration that were material to registration. Opposer’s U.S. Trademark
Registration No. 5,820,689 was filed on January 15, 2019 based on use in commerce. Dkt. No. 1
at ¶ 15, Ex. 5. As Applicant admits in her Motion, Opposer was using its MONSTER
ENERGY® mark in connection with video games in 2017, which is prior to the 2019 filing date.
Mot. at 3-4. Applicant also admits that Opposer was using its MONSTER ENERGY® mark in
connection with toy cars prior to the 2019 filing date. Mot. at 7-8.
Applicant appears to assert that Opposer’s U.S. Trademark Registration Nos. 5,820,689
and 5,580,962 should also be cancelled because Opposer filed the applications which matured
into these registrations several years after it began using the marks in connection with the goods
identified in these registrations. However, Applicant cites no support for this assertion, and in
fact, there is no requirement that a trademark owner file a federal trademark application at the
time it begins using its mark. Further, Applicant fails to identify any false representations made
to the USPTO by Opposer resulting from its waiting to file its applications which matured into
U.S. Trademark Registration Nos. 5,820,689 and 5,580,962.
For the foregoing reasons, Applicant’s arguments that Opposer’s opposition should be
dismissed because Opposer’s U.S. Trademark Registration Nos. 5,820,689 and 5,580,962
should be cancelled are improper.
3 It is unclear from the printouts submitted by Applicant whether the toy cars depicted therein are
even toy cars authorized by Opposer.
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D. Opposer Alleges Sufficient Facts to Demonstrate Valid Statutory Grounds Exist for
Denying the Registration Under Sections 2(d) and 43(c) of the Lanham Act
Applicant’s Motion to Dismiss should be denied because Opposer has alleged sufficient
facts to state plausible claims for likelihood of confusion and dilution by blurring. “In order to
adequately plead likelihood of confusion, Petitioner need only allege it has priority of use and
that the defendant’s mark so resembles plaintiff’s mark as to be likely to cause confusion.” Irun
& Co., LLC v. Jamie Mastroianni, Can. No. 92062734, 2016 WL 6833522, at *2 (T.T.A.B.
2016) (non-precedential) (emphasis added); This Little Piggy Wears Cotton v. Piggy Toes, Opp.
No. 91159506, 2004 WL 1701272, at *4 (T.T.A.B. Jul. 13, 2004) (non-precedential) (stating
“we find that opposer has sufficiently pleaded likelihood of confusion and dilution grounds for
opposition. . . . Although we have already highlighted opposer’s allegations, we note of
particular importance that opposer alleges ownership of registrations and/or unregistered marks;
that there is a likelihood of confusion between opposer’s marks and applicant's mark; that
opposer has priority of use”); see 15 U.S.C. § 1052(d).
1. Opposer Alleges Sufficient Facts to Plead Priority
Opposer’s Notice asserts that Opposer is the owner of numerous valid and uncancelled
federal trademark registrations and identifies each of these trademark registrations in its Notice
of Opposition. Dkt. No. 1 at ¶¶ 2-4, 10-36. Opposer’s Notice pleads facts showing that the
asserted registrations establish priority over Applicant’s Mark. Specifically, Opposer’s Notice of
Opposition establishes that the filing dates of Opposer’s asserted registrations are prior to the
filing date of Applicant’s Application. Id. at ¶¶ 1-4, 8-38, 43. In addition, Opposer asserts dates
of first use in interstate commerce for its MONSTER Marks, ® Marks, and MONSTER
Trade Dress prior to the alleged dates of first use in interstate commerce of Applicant’s Mark.
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Id. at ¶¶ 2-5. Opposer also alleges to have used its distinctive MONSTER Trade Dress since
2002 which is prior to the date of filing of the Application and the alleged dates of first use in
interstate commerce of Applicant’s Mark. Id. at ¶ 4. To the extent Applicant suggests that her
activities that took place “since 1999” give her priority over Opposer’s MONSTER Marks,
® Marks, and MONSTER Trade Dress, Applicant raises a factual dispute that goes beyond
the scope of the pleadings and is improper to resolve on a motion to dismiss. Opposer has set
forth sufficient facts to plead priority.
2. Opposer Alleges Sufficient Facts to Plead Likelihood of Confusion
Opposer’s Notice alleges that Applicant’s Mark so resembles Opposer’s Marks as to be
likely to cause confusion. Dkt. No. 1 at ¶ 42. When taken together with the allegations relating
to priority identified above, these allegations are sufficient to plead a claim under Section 2(d).
See Sharethis, Inc. v. Rahid Chopra, Opp. No. 91209951, 2015 WL 9906328 at *4 (T.T.A.B.
2015) (non-precedential) (“we find that [likelihood of confusion] is sufficiently pleaded
inasmuch as Opposer alleges ownership of three registrations and that Applicants’ mark so
resembles Opposer’s marks as to be likely to cause confusion”).
Nonetheless, Opposer’s Notice alleges further facts showing that there is a likelihood of
confusion. In determining likelihood of confusion, the Board may consider the thirteen factors
set forth in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A.
1973). The DuPont factors are: (1) the similarity of the marks; (2) the similarity of the goods or
services; (3) the similarity of the trade channels; (4) the conditions under which and buyers to
whom sales are made; (5) the fame of the prior mark; (6) the number and nature of similar marks
in use on similar goods or services; (7) the extent of any actual confusion; (8) the length of
concurrent use; (9) the variety of goods on which a mark is or is not used; (10) the market
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interface between the applicant and opposer; (11) the extent to which the applicant has the right
to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and
(13) any other probative facts. Id. Opposer’s Notice contains factual allegations to support that
the DuPont factors weigh in favor of a likelihood of confusion.
Specifically, Applicant appears to challenge the sufficiency of Opposer’s allegations as to
the similarity of the parties’ trade channels. Mot. at 16. However, Opposer has set forth
sufficient facts to establish that the parties’ goods and services travel through similar channels of
trade. As Applicant admits, there are no restrictions on the channels of trade in the asserted
registrations for Opposer’s MONSTER Marks and ® Marks or in Applicant’s Application.
Dkt. No. 1 at ¶ 1, 40; Mot. at 16. Because there are no restrictions on the channels of trade in
Opposer’s registrations and Applicant’s Application, it should be presumed that “the goods [and
services] move in all channels of trade normal for those goods [and services], and that they are
available to all classes of purchasers for those goods.” Joel Gott Wines, LLC v. Rehoboth Von
Gott, Inc., 107 U.S.P.Q.2d 1424, 1432 (T.T.A.B. 2013); In re Linkvest S.A., 24 U.S.P.Q.2d 1716,
1716 (T.T.A.B. 1992). Further, where the products or services are closely related, the Board
assumes that the products or services will be sold in the same channels of trade to the same
consumers. Venture Out Prop. LLC v. Wynn Resorts Holdings, LLC, 81 U.S.P.Q.2d 1887, 1894
(T.T.A.B. 2007) (“Because the services are clearly related, they would be offered in the same
channels of trade and offered to the same classes of consumers…”). Here, both Applicant’s
Application and Opposer’s asserted registrations identify goods in Classes 9, 16, and 25. Dkt.
No. 1 at ¶¶ 1, 10. Further, Opposer’s Notice of Opposition contains allegations regarding
Opposer’s use of Opposer’s MONSTER Marks, ® Marks, and MONSTER Trade Dress in
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connection with t-shirts, identical goods to those set forth in Applicant’s Application. Id. at ¶ 5.
Opposer also alleges to have used or licensed Opposer’s MONSTER Marks, ® Marks, and
MONSTER Trade Dress for video games and products associated with fitness. Id. at ¶¶ 5-6.
The goods and services offered in connection with Opposer’s MONSTER Marks, ® Marks,
and MONSTER Trade Dress are identical or closely related to the goods identified in
Applicant’s Application. Thus, Opposer has alleged sufficient facts to establish that the channels
of trade for the parties’ goods and services overlap.
Applicant also appears to challenge the sufficiency of Applicant’s allegations as to
similarity of the marks. Mot. at 18-19. However, Opposer has alleged sufficient facts to support
that Applicant’s Mark is highly similar in appearance to Opposer’s MONSTER Marks, ®
Marks, and MONSTER Trade Dress. Opposer owns and asserted in its Notice of Opposition
numerous marks that include the word “MONSTER.” Dkt. No. 1 at ¶ 10. Further, some of
Opposer’s MONSTER marks contain a word before “MONSTER”, including, for example,
Opposer’s JAVA MONSTER® and LO-CARB MONSTER ENERGY® marks. Id. Applicant’s
Mark contains the identical term “MONSTER.” Id. at ¶ 1. Similar to several of Opposer’s
asserted MONSTER Marks, Applicant’s Mark includes one word before “MONSTER.” Id.
Opposer also asserted in its Notice of Opposition its ownership of its ® Marks, including
ones which incorporate bright green on a black background. Id. at ¶ 10. Applicant’s Mark
contains a “M” design and the color bright green. Id. at ¶ 1. Thus, Opposer has alleged
sufficient facts to establish that the parties’ marks are similar.
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Applicant also alleges that Opposer’s allegations as to damage are insufficient. Mot. at
18. But Opposer need not plead specific, cognizable damage to demonstrate standing. T.B.M.P.
§ 303.03 (“There is [] no requirement that actual damage be pleaded or proved in order to
establish standing or to prevail in an opposition or cancellation proceeding”).
Accordingly, Opposer’s Notice sufficiently pleads a likelihood of confusion.
3. Opposer Alleges Sufficient Facts to Plead a Claim for Likelihood of
Confusion Based on Opposer’s Trade Dress Rights
Applicant appears to challenge Opposer’s claim of likelihood of confusion based on
Opposer’s trade dress rights on the grounds that Opposer has failed to allege ownership of
distinctive trade dress which includes, but is not limited to, the color green on a dark
background. Mot. at 17. However, in its Notice of Opposition, Opposer alleged that “since at
least 2002, long before the filing date of the Application and the alleged dates of first use in
interstate commerce of Applicant’s Mark, Opposer has used a distinctive trade dress, which
includes, but is not limited to, the color green on a dark background.” Dkt. No. 1 at ¶ 4. This
allegation is sufficient to establish that Opposer has common law rights in its MONSTER Trade
Dress that predate Applicant’s Mark.
Further, Opposer has asserted U.S. Trademark Registration No. 5,570,782 for the
mark, U.S. Trademark Registration No. 5,580,962 for the mark, and U.S.
Trademark Registration No. 4,865,702 for the . Dkt. No. 1 at ¶ 10. These asserted
trademark registrations incorporate the MONSTER Trade Dress.
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Accordingly, Opposer has pled sufficient facts to establish ownership of the MONSTER
Trade Dress and for the same reasons as set forth above, Opposer has pled sufficient facts to
establish a likelihood of confusion between Applicant’s Mark and the MONSTER Trade Dress.
4. Opposer Alleges Sufficient Facts to Plead Dilution
Opposer’s Notice alleges that Opposer will also be damaged by registration of
Applicant’s Mark in that “Applicant’s Mark will dilute the distinctive qualities of Opposer’s
® Marks within the meaning of Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c),
and will lessen the ability of Opposer’s marks to distinguish Opposer’s goods and services.”
Dkt. No. 1 at ¶¶ 44, 45. For the purposes of surviving a motion to dismiss, “[t]o properly assert a
ground of dilution, a plaintiff must plead that its mark became famous prior to the applicant's
filing date and/or use of the mark.” Malie Inc. v. Malie Kai Chocolates LLC, Opp. No.
91169763, 2006 WL 2735139, at *1 (T.T.A.B. Sept. 5, 2006) (non-precedential); This Little
Piggy Wears Cotton, Opp. No. 91159506, 2004 WL 1701272, at *4 (“we find that opposer has
sufficiently pleaded … dilution grounds for opposition. Although we have already highlighted
opposer’s allegations, we note of particular importance that opposer alleges …that opposer’s
marks became famous prior to the filing date of the subject application; and that registration of
applicant's mark will damage opposer in violation of Section 43(c).”); see 15 U.S.C. § 1125(c).
Here, Opposer’s Notice adequately pleads that Opposer’s ® Marks were famous
prior to the filing date of Applicant’s Application and the alleged date of first use in interstate
commerce of Applicant’s Mark. Dkt. No. 1 at ¶¶ 9, 38. Opposer’s Notice even describes the
“substantial and continuous marketing and promotion” for Opposer’s ® Marks. Id. at ¶¶ 5,
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8, 9. For example, Opposer alleges that it markets and promotes its family of ® Marks “to
consumers by, for example, displaying one or more of the … ® 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.” Id. at ¶ 8. These facts set forth in Opposer’s Notice of
Opposition support the fame of Opposer’s ® Marks.
Applicant states that with regard to the dilution claim, “MEC claims will be damaged in
that my mark will dilute distinctive qualities and will lessen ability of MEC marks to distinguish
goods, pursuant to section 43 (c) 15 USC 1125(c). MEC has claimed a legal conclusion.” Mot.
at 19. But again Opposer need not plead specific, cognizable damage. See T.B.M.P. § 303.03
(“There is [] no requirement that actual damage be pleaded or proved in order to establish
standing or to prevail in an opposition or cancellation proceeding”).
Thus, Opposer’s Notice sufficiently pleads a claim for dilution by blurring
V. CONCLUSION
Opposer has sufficiently pled that Applicant’s registration of her
mark will cause a likelihood of confusion with Opposer’s MONSTER Marks, ® Marks, and
MONSTER Trade Dress. Opposer has also sufficiently pled that Applicant’s
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mark will dilute the distinctive qualities of Opposer’s ® Marks.
Accordingly, Applicant’s Motion should be denied.
Moreover, Applicant’s Motion relies on numerous matters outside of the scope of the
pleadings, and thus Applicant’s Motion should be denied as a premature motion for summary
judgment. At a minimum, the matters outside the scope of the pleadings in Applicant’s Motion
should be excluded and not considered by the Board in deciding this Motion.
Alternatively, should the Board grant Applicant’s Motion, Opposer requests that it be
provided with leave to amend its Notice of Opposition to include additional facts to support its
claims of a likelihood of confusion and dilution. Further, should the Board decide not to exclude
any matters in Applicant’s Motion that are outside the scope of the pleadings and convert
Applicant’s Motion to a motion for summary judgment, Opposer requests that the Board provide
it with the opportunity to present all material pertinent to such motion by Fed. R. Civ. P. 56.
T.B.M.P. § 504.03.
Respectfully submitted,
KNOBBE, MARTENS, OLSON & BEAR, LLP
Dated: August 27, 2020 By: /Nicole R. Townes/
Steven J. Nataupsky
Matthew S. Bellinger
Nicole R. Townes
Alexander Zeng
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
(949) 760-0404
Attorneys for Opposer,
MONSTER ENERGY COMPANY
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CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing OPPOSER’S
OPPOSITION TO APPLICANT’S MOTION TO DISMISS MONSTER ENERGY
COMPANY’S OPPOSITION FOR FAILURE TO STATE A CLAIM UPON WHICH
RELIEF CAN BE GRANTED has been served on Applicant’s counsel of record on August 27,
2020 via electronic mail to:
Charlotte M. Purin
Signature:
Name: Doreen P. Buluran
Date: August 27, 2020
33301577