Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defense

In a merciless three-pronged, precedential interlocutory ruling, the Board (1) denied a law school clinic's dubious motion for leave to file an amicus brief, (2) denied Applicant Herman Jones's hopeless motion for partial summary judgment on his nonuse counterclaims, and (3) jettisoned Opposer Monster Energy's improper and ill-pled affirmative defenses. So who's the bully here? Monster Energy Company v. Herman Jones, Opposition No. 91284247 (September 23, 2024) [precedential].

Frequent TTAB litigant Monster Energy Company opposed Jones's application to register the mark MONSTER SQUAD DEL MAR (in standard characters) for "Training services in the field of Health and Wellness/fitness," claiming likelihood of confusion with, inter alia, the following two registered marks: MONSTER ARMY in standard characters, and M MONSTER ARMY & design, shown below, both for "Providing a web site featuring entertainment information and news on athletes; organizing and conducting educational programs and activities in the nature of classes, workshops, and sports competitions for athletes in the field of athlete development; athlete development program, namely, athlete training and mentoring in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate."

Jones filed counterclaims seeking partial cancellation of those two registrations (the "Counterclaimed Registrations") on the ground of nonuse prior to the expiration of the time for filing the statements of use, for all of the services except for the mentoring portion of the athletic development program. ("Contested Services").

No Amicus Brief: The George Washington University Law School Intellectual Property & Technology Law Clinic ("GWULC") filed a motion for leave to file an amicus brief, (See TBMP Section 538), contending that its proposed brief presented “arguments of law relating to trademark bullying, abusive enforcement of service mark registrations, likelihood of confusion, and public policy issues that will aid the Board in resolving this case,” and also argument based on “[uncontested] factual matters in support of Applicant.” Although the Board usually seems to bend over backwards in favor of law school clinics, this time it found the proposed brief to be "replete with partisan argument," and otherwise did not aid the Board "in resolving any 'doubtful' issues of law concerning Applicant’s motion for partial summary judgment."

The nonuse issues before us are straightforward and of the type the Board considers on a regular basis. GWULC’s proposed brief and its exhibits do not address issues of law which are not already adequately briefed by the parties. Rather, Applicant tries to paint Opposer as a bad actor – a trademark bully – that is not entitled to relief here because of the alleged bullying.

GWULC’s proposed brief also urged the Board to sua sponte issue an order to show cause for imposition of sanctions against Monster under Fed. R. Civ. P. 1119 "in the nature of 'sanction[ing Opposer] and cancel[ing] its marks.'" [Reminder: Registrations are cancelled, not marks - ed.]. The Board pointed out, however, that GWULC, as a non-party, may not move for (1) sanctions, (2) an order to show cause for the imposition of sanctions, or (3) dismissal of Opposer's opposition.

And so, the Board denied GWULC's motion.

No Partial Summary Judgment: The Board gave short shrift to Applicant Jones's motion for partial summary judgment. Jones argued that summary judgment was appropriate on his nonuse counterclaims because Monster’s "Contested Services" are “nothing more than ordinary and routine activity for the promotion of Opposer’s own products: energy drinks.” With respect to the “athlete development program, namely, athlete training . . . in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate” portion of the Contested Services, Jones argued that Monster "produced no evidence in discovery that it has ever trained athletes under the [marks of the Counterclaimed Registrations],” and the Contested Services "have never been advertised or sold."

The Board, however, found that genuine disputes of material fact exist as to whether Monster advertised and rendered the Contested Services prior to the filing of its statements of use, and also whether those services were "performed to the order of, or for the benefit of someone other than Opposer and have been qualitatively different from anything necessarily done in connection with the sale of Opposer’s goods."

No Affirmative Defenses: Monster offered six purported affirmative defenses to Jones's counterclaims, accompanied with a "reservation of right" to identify additional affirmative defenses at a later date. None of that survived.

Monster's first affirmative defense - failure to state a claim - was tossed out because failure to state a claim is not an affirmative defense. Likewise, Monster's attempted "reservation of right" is never allowed, since it fails to give the adversary fair notice of anything.

Monster's second and third defenses - laches and acquiescence - were based on Jones's failure to challenge the registrations while Monster has used the mark in 2005. However, a cancellation claim concerns registration of a mark, not use, and so Monster's allegations based on use were insufficient to support these defenses. Moreover, Monster failed to allege any damage resulting from the purported delay or any underlying facts regarding Jones's actions or omissions.

The fourth defense - unclean hands based on Jones's "fraudulently" alleging priority - failed to meet the heightened pleading requirement of FRCP 9(b). As to the fifth defense - equitable estoppel - Monster failed to allege any misleading conduct on the part that reasonably led Monster to infer that Jones would not assert a counterclaim, nor did Monster allege that it relied on any such conduct, causing material prejudice. Finally, with respect to Monster’s sixth affirmative defense - waiver - Monster failed to plead that Jones intentionally relinquished or abandoned his known rights.

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TTABlogger comment: Maybe this is a good case for teaching law students some of the things not to do in a TTAB proceeding. TTABlog Tip: a good way to get rid of bogus affirmative defenses right off the bat is to ask for Board participation in the discovery/settlement conference, whereby the Board participant will review the pleadings and, in my experience, knock out unbaked affirmative defenses.

Text Copyright John L. Welch 2024.