Monster Energy Co. v. Beastup LLC, 2:17-cv-01605-KJM-EFB

• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
• Citation: 395 F.Supp.3d 1334
• Docket Number: No. 2:17-cv-01605-KJM-EFB,2:17-cv-01605-KJM-EFB
• Parties: MONSTER ENERGY COMPANY, a Delaware corporation, Plaintiff, v. BEASTUP LLC, a California limited liability company, Defendant.
• Decision Date: 13 August 2019

395 F.Supp.3d 1334

MONSTER ENERGY COMPANY, a Delaware corporation, Plaintiff,
v.
BEASTUP LLC, a California limited liability company, Defendant.

No. 2:17-cv-01605-KJM-EFB

United States District Court, E.D. California.

Signed August 13, 2019

395 F.Supp.3d 1346

Lynda J. Zadra-Symes, Steven J. Nataupsky, Marko R. Zoretic, Matthew S. Bellinger, Knobbe, Martens, Olson and Bear, LLP, Irvine, CA, for Plaintiff

Eve Joy Brown, Barton Gilman LLP, Providence, RI, for Defendant

ORDER

This trademark action arises from two energy drink companies' use of stylized claw marks and a formulation of the word "beast" on their cans and in their advertisements. Plaintiff Monster Energy Company ("Monster") has brought this lawsuit against defendant BeastUp LLC ("BeastUp") to stop BeastUp from using claw marks, its "BEASTUP" mark, and any variation of the word "beast" on its energy drinks. Plaintiff moves for summary judgment. ECF No. 38. Defendant filed an untimely opposition, ECF No. 47, and, consequently, plaintiff filed an untimely reply¹ , ECF No. 48. The court submitted the matter without a hearing. For the reasons explained below, the court GRANTS in part and DENIES in part plaintiff's motion.

I. BACKGROUND

A. Procedural History

Monster filed this lawsuit against BeastUp on August 2, 2017, asserting the following claims relating to BeastUp's alleged infringement of plaintiff's trademarks: (1) trademark infringement and false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a) ; (2) trademark infringement under 15 U.S.C. § 1114 ; (3) trademark dilution under 15 U.S.C. § 1125(c) ; (4) a claim for cancellation of BeastUp's U.S. Trademark Registration No. 4,584,629 under 15 U.S.C. § 1119 ; (5)

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unfair competition in violation of California Business & Professions Code section 17200 et seq. ; and (6) unfair competition under California common law. Compl., ECF No. 1, ¶ 1. BeastUp filed an Amended Answer raising three affirmative defenses: laches, waiver or acquiescence; unclean hands; and priority. ECF No. 28 ¶¶ 101–03.

On October 4, 2018, Monster filed the instant motion for summary judgment. Mot., ECF No. 38; Mem., ECF No. 39. Monster also seeks summary judgment on BeastUp's three affirmative defenses. Mem. at 1.

B. Factual Background

Plaintiff filed a statement of undisputed facts. See ECF No. 40. Defendant neither filed an alternative statement of facts nor responded to plaintiff's statement of facts. The court refers to each listed fact as undisputed.

1. Undisputed Facts

Monster develops, markets, sells and distributes ready-to-drink beverages, including energy drinks. Sacks Decl. ECF No. 41, ¶ 3. Monster launched its line of Monster Energy drinks in 2002 and has, since that time, used its Claw Icon mark and "UNLEASH THE BEAST!" mark in connection with its energy drinks and other products. Sacks Decl. ¶ 3 & Ex. 6, ECF No. 41-1. Monster applied for and received U.S. Trademark Registration No. 2,903,214 for its Claw Icon on November 16, 2004, and No. 2,769,364 for "UNLEASH THE BEAST!" on September 30, 2003, both in International Class 32 for beverages. Sacks Decl. Exs. 1, 5. Monster also uses and owns U.S. Trademark Registrations for several other marks incorporating the term "beast" in connection with its Monster line of beverages, including UNLEASH THE BEAST!, UNLEASH THE NITRO BEAST!, REHAB THE BEAST!, UNLEASH THE ULTRA BEAST!, and PUMP UP THE BEAST! marks, among others. Sacks Decl. ¶ 9 & Exs. 7–15. The container of each product in the Monster line of beverages displays the Claw Icon, and the vast majority also display a mark incorporating the word BEAST. Sacks Decl. ¶ 10. Images of one of the Monster Energy drink cans bearing these marks are shown below.

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Since 2002, Monster has spent over $5.5 billion marketing and promoting its Monster line of energy drinks, including the Claw Icon and its various marks containing the word BEAST. Id. ¶ 23. Monster features these marks in its marketing and promotion efforts, appearing on point-of-sale materials, clothing and promotional items, as well as Monster's website and social media accounts, and in connection with Monster's sponsorship of athletes, teams and events, including extensive promotion efforts in connection with motorsports. Id. ¶¶ 25–26, 29–52. From 2002 to the time this lawsuit was filed, Monster sold more than twelve billion beverages displaying both its Claw Icon and marks containing the word BEAST together on the product containers. Id. ¶ 22.

BeastUp produces, distributes, markets and sells energy drinks and other products under the BeastUp brand name. Bellinger Decl. Ex. 7, ECF No. 42-1, at 2. In May 2014, BeastUp began selling its BeastUp energy drink. Bellinger Decl. Ex. 8, at 2. The BeastUp energy drink can displays the BEASTUP name together with a stylized logo beneath the BEASTUP name and what appear to be two sets of silver claw marks running diagonally near the top and bottom of each can (collectively defendant's "claw logo and claw marks"). Bellinger Decl. Ex. 3. BeastUp began using these claw marks in May 2014. Bellinger Decl. Ex. 1 at 9 (50:16–51:10),² 10–11 (51:23–52:12), 14–15 (59:12–60:8). BeastUp applied for and received U.S. Trademark Registration No. 4,584,629 for its BEASTUP mark on August 12, 2014, in International Class 32 for beverages. Bellinger Decl. Ex. 11. An image of the BeastUp energy drink can bearing these marks is shown below.

Monster brought this action against BeastUp based on claimed similarities in appearance between the parties' marks as used in the marketplace on identical goods.

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Compl. ¶¶ 40–42, 47. Specifically, Monster asserts BeastUp's use of claw marks in connection with the BEASTUP mark creates a likelihood of confusion, mistake or deception among consumers regarding the source, origin, relationship or association of BeastUp's products with Monster's products and marks. Id. ¶¶ 48, 50. Monster further contends BeastUp's use of the infringing marks threatens to undermine Monster's business reputation and goodwill. Id. ¶ 53.

II. LEGAL STANDARD

A court will grant summary judgment "if ... there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The "threshold inquiry" is whether "there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

The moving party bears the initial burden of showing the district court "there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett , 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The burden then shifts to the nonmoving party to show "there is a genuine issue of material fact." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 585, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing Fed. R. Civ. P. 56(e) ; First Nat'l Bank of Ariz. v. Cities Serv. Co. , 391 U.S. 253, 288–89, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968) ). In carrying their burdens, both parties must "cit[e] to particular parts of materials in the record...; or show[ ] that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1) ; see also Matsushita , 475 U.S. at 586, 106 S.Ct. 1348 ("[The nonmoving party] must do more than simply show that there is some metaphysical doubt as to the material facts."). Also, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson , 477 U.S. at 248, 106 S.Ct. 2505.

In deciding a motion for summary judgment, the court draws all inferences and views all evidence in the light most favorable to the nonmoving party. Matsushita , 475 U.S. at 587–88, 106 S.Ct. 1348 (quoting United States v. Diebold, Inc. , 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962) (per curiam)). "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial.’ " Id. at 587, 106 S.Ct. 1348 (quoting First Nat'l Bank , 391 U.S. at 289, 88 S.Ct. 1575 ).

III. DISCUSSION

Plaintiff seeks summary judgment on its claims for trademark infringement and false designation of origin, unfair competition and trademark cancellation as well as defendant's affirmative defenses of laches, waiver, acquiescence, unclean hands and priority. Mem., ECF No. 39, at 1. Defendant argues plaintiff has not met its burden of showing as an initial matter that no genuine issue exists as to any material fact, and the court should therefore deny plaintiff's summary judgment motion. Opp'n, ECF No. 47, at 7–15.

A. Trademark Infringement and False Designation of Origin

In its complaint, as noted, plaintiff has alleged causes of action for trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. §§ 1114 and 1125. Compl. ¶¶ 54–71. A

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