IP Law Daily, TRADEMARK—C.D. Cal.: Would an energy drink company suffer for its lethargy? A court says no—for now, (Jun 22, 2023)

By Matthew Hersh, J.D.

Monster Energy’s infringement suit survives a motion to dismiss for laches, but the defense may come back at trial.

The mere fact that energy drink manufacturer Monster Energy had opposed a cookie company’s registration of a mark that Monster believed to be similar its own UNLEASH THE BEAST! mark did not necessarily put it on notice that the cookie company was unlawfully using that mark in trade or that the company was using other allegedly infringing marks, the federal court for Los Angeles has held. The court, in rejecting the Cookie manufacturer’s motion to dismiss on grounds of laches, found that—at least at the motion to dismiss stage—Monster Energy had raised adequate allegations to go forward with its complaint (Monster Energy Co. v. Beast Cookie Co., LLC, June 15, 2023, Fitzgerald, M.).

The case involves a battle of beasts, at least within the confines of a courthouse. On the one side is Monster Energy, the market-leading energy drink maker that has sold its product since 2002 in distinctive black and green trade dress on the product packaging and a logo containing its ubiquitous UNLEASH THE BEAST! mark. On the other side is lesser-known Beast Cookies, a company that sells sugary goods in its own black and green trade dress adorned with the words Beast Energy, Beast Cookie, and Untamed Energy.

Monster Energy sued its cookie-making competitor, alleging a wide range of trademark claims. The cookie company moved to dismiss the complaint, leading to this opinion.

Laches. The court first found that the cookie company’s defense of laches would not be dismissed—at least at the current procedural stage. The cookie company’s central argument for laches rested on its filing history at the PTO. In 2018, the cookie company applied to register the Beast Cookie logo and the UNTAMED ENERGY mark—the two marks at issue in this case. But the energy drink company did not file this lawsuit until four years later, in 2022. And the energy company should have been aware of those marks in 2018, the cookie company argued, because in 2019 the cookie company filed an application register a separate mark—BEAST ENERGY COOKIE—and the energy drink company did file an opposition to that one. So did the energy company’s awareness of the 2019 filing mean that it should have been aware of the marks at issue in the 2018 filing? The energy company argued that it did not. The court agreed.

The energy company’s argument would prevail, the court reasoned, because the dispute was eminently too factual to be resolved at this stage. The question here was what did the energy drink know and when did it know it? And this was a motion to dismiss, the court noted, and not a motion for summary judgment. There was no legal authority, the court noted, “that knowledge of one application imputes knowledge of all earlier applications.” And even if the energy company had known of the 2018 applications, the court noted, that did not mean that it would know that the cookie company was actually using its infringing mark in commerce—far less that it had a basis for a trademark infringement claim. The complaint would stand, at least for now.

Trade dress infringement. The court found that the energy drink company’s trade dress infringement claim would proceed on the merits. The cookie company argued that there was no plausible likelihood of confusion and no sufficient allegation of secondary meaning. The court rejected both contentions.

The pleadings adequately asserted likelihood of confusion, the court found, simply by asserting “through pictures and words” that the trade dresses were similar. The only way a motion to dismiss could prevail at this stage, the court noted, was if the marks were “entirely dissimilar” on a side-by-side comparison. And here, while there were indeed “some clear dissimilarities,” the energy company had pleaded sufficient facts to survive a motion to dismiss “by including photographs of the arguably similar trade dresses and an explanation of the prominent color schemes on the product packaging and marketing materials of both parties.” That was enough, the court reasoned, for the complaint to continue.

The company also sufficiently alleged secondary meaning of its trade dress, the court reasoned, This one was simple. The energy company alleged that it sold more than 48 billion cans of its MONSTER line of drink, “the vast majority of which display the Monster trade dress.” The company also provided representative pictures illustrating examples of its trade dress. That was easily enough, the court found.

The case is No. 5:23-cv-00568-MWF-MRW.

Attorneys: Jacob R. Rosenbaum (Knobbe Martens Olson and Bear LLP) for Monster Energy Co. Marina L. Lang (Socal IP Law Group LLP) for Beast Cookie Co. LLC.

Companies: Monster Energy Co.; Beast Cookie Co. LLC

Cases: Trademark CaliforniaNews