MONSTER ENERGY V. INTEGRATED SUPPLY NETWORK Monster Energy’s Marks and Trade Dress - Since 2002
Ex.1251 at MEC005396 Ex. 1328 at MEC003102
2 Jury Instruction No. 15:
“The trademark laws balance three often-conflicting goals: (1) protecting the public from being misled about the nature and source of goods and services, so that the consumer is not confused or misled in the market; (2) protecting the rights of a business to identify itself to the public and its reputation in offering goods and services to the public; and (3) protecting the public interest in fair competition in the market.
The balance of these policy objectives vary from case to case, because they may often conflict. Accordingly, each case must be decided by examining its specific facts and circumstances, which you are to judge.”
3 Monster Energy Follows the Rules
4 Monster Energy Follows the Rules
5 Monster Energy Follows the Rules
6 ISN
7 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion
5. ISN’s intent in selecting the mark
6. Marketing/advertising channels overlap
7. Consumer’s degree of care
8. Product line expansion
8 1. Strength of Monster Energy’s Marks and Trade Dress
$17 billion in U.S. sales from 2002-2017 (Sacks Testimony, Nov. 1, 2018 Trial at 344:15-20; 384:13-18) $8 billion in U.S. sales of green and black cans (2002-2017) (Sacks Testimony, Nov. 1, 2018 Trial at 344:21-345:3) 8 billion green and black cans sold in the U.S. (Sacks Testimony, Nov. 1, 2018 Trial at 345:13-17) $139 million in revenue from Monster premium items (Sacks Testimony, Nov. 1, 2018 Trial at 353:9-14)
9 1. Strength of Monster Energy’s Marks and Trade Dress
Ex. 1256 (2018 SocialBakers Report) 10 1. Strength of Monster Energy’s Marks and Trade Dress
Helmets Gloves Tool Boxes Motorcycles Ex. 1850 Ex. 1845 / 1815-04 Ex. 1677 Ex. 1322
Wheels RC Cars Decals Ex. 1503 at MEC040016 Ex. 1198 at MEC01622 Ex. 1331 at MEC004494
11 1. Strength of Monster Energy’s Marks and Trade Dress
Clothing Beverageware Hats Backpacks Ex. 1365 at MEC016861 Ex. 1453 at MEC024849 / 1835 Ex. 1453 at MEC024844 Ex. 1773
Bottle Openers Bracelets Refrigerators Lanyards Ex. 1359 at MEC016600 Ex. 1331 Ex. 1331 at MEC004472 Ex. 1331
12 1. Strength of Monster Energy’s Marks and Trade Dress
THE WALL STREET JOURNAL FORTUNE MAGAZINE FORBES MAGAZINE A Real Advertising Vehicle, June 2003 Top 100 Fastest Growing Company, Sept. 2005 #1 Small Company, Oct. 2005
See Ex. 1249-1 See Ex. 1328 at MEC003043 See Ex. 1328 at MEC003042
FORBES MAGAZINE BUSINESS WEEK FORTUNE MAGAZINE #2 Best Small Company, Oct. 2006 #2 Company to Watch, June 2006 #2 Fastest Growing Company, Sept. 2006
See Ex. 1328 at MEC003045 See Ex. 1328 at MEC003044 See Ex. 1328 at MEC003046
13 1. Strength of Monster Energy’s Marks and Trade Dress
See Exs. 1321; 1322; 1334 at MEC005472, MEC005479, and MEC005496; and1343 at MEC012487 14 1. Strength of Monster Energy’s Marks and Trade Dress
Q. When did you first become aware of Monster Energy? A. I’ve always known that Monster Energy existed, I guess. I don’t know. I don’t know exactly when. Q. In fact, in your deposition you said you think everybody knows of Monster Energy? Darlene Lott, Owner of SE Sales A. That’s right. Probably. Yeah. Nov. 6, 2018 Trial at 1278:18-24
15 1. Strength of Monster Energy’s Marks and Trade Dress
Q. How did you become aware of Monster Energy? A. Motorsporting really. I'm not really an energy drinker, but in the business, you see them sponsoring all the stuff all the time. My son is in NASCAR, so there is the NASCAR car. * * * Andrew Markowski, “But like I said, its mostly when we go to an event we see you guys posting Mechanic for Victory Automotive and sponsoring. And the TV, you know, you guys sponsor a lot of, you
Nov. 5, 2018 Trial know, automotive related things, Motocross […] I've seen you guys at 981:14-982:3 everywhere to be honest.”
16 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods 3. Similarity of the marks and trade dress 4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
17 2. ISN’s Use of the Mark and Trade Dress on Same, Related or Complementary Goods ISN Monster Energy
Ex. 1680 Ex. 177 Ex. 149-A Ex. 147 Ex. 1845 Ex. 1453
Ex. 1331
Ex. 1838 Ex. 159 Ex. 1453 18 2. ISN’s Use of the Mark and Trade Dress on Same, Related or Complementary Goods
HOT ROD RACING (“NHRA”) STOCK CAR RACING (“NASCAR”) RALLY CAR RACING Ex. 1328 at MEC003064 Ex. 1590 at MEC050749 Ex. 1233-13 at MEC009474
MOTOCROSS RACING OFF-ROAD RACING SUPERCROSS RACING Ex. 1198 at MEC001635 Ex. 1581 at MEC049940 Ex. 1680 at MEC064687 19 2. ISN’s Use of the Mark and Trade Dress on Same, Related or Complementary Goods
Ex. 1334 at MEC005440 Ex. 1174 20 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
21 3. Similarity of the Marks and Trade Dress
See Exs. 127 at ISN001601; 147 / 178; 159 / 159-A; 176 at MEC018564; 177 at MEC018492; 177 at MEC018497; 329; 293; 149-A; 1207 at MEC024108; 1251 at MEC005396; 1365 at MEC016861; 1453 at MEC024849 / 1835; 1581 at MEC049940; 1845 / 1815-04; 1581 at MEC049940; 1198 at MEC01622; and 1850 22 3. Similarity of the Marks and Trade Dress
Ex. 407 Ex. 1837 at MEC066293 Ex. 1837 at MEC066305
Ex. 1837 at MEC066275 Ex. 1837 at MEC066276 Ex. 407 23 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
24 4. Evidence of Actual Confusion
Q. And when you first saw the toolbox and the screwdriver, did you believe the company that had put them out had a business connection or affiliation with Monster Energy Company? A. I assumed there was some kind of connection. I mean, they have -- you know, the green was the big thing. The green and the word "Monster." Chris Nalven, Monster is green, you know. Mechanic for Levy’s Imperial Tire
Nov. 5, 2018 Trial at 964:19-25
25 4. Evidence of Actual Confusion
Q. When you first saw Monster tools, did you think that the Monster tools may have had any type of business connection or affiliation with Monster Energy? A. I absolutely did. Mike Beasley, Ethridge Auto Center
Nov. 5, 2018 Trial at 974:24-975:2
26 4. Evidence of Actual Confusion
YouTube comment: “Monster Tools - Tool Dealer Expo 2017 Booth Tour”
Ex. 307
Facebook comment: “Monster MST10175 Foldable LED Worklight Review”
Ex. 322 27 “You Can’t Drink a Wrench”
28 4. Evidence of Actual Confusion
Q. So when you say you were -- concern was on the hat, what was your concern specifically? A. I thought that it looked very similar to Monster Energy hats. * * * Q. And what did Joe [Knight] say about that? Matthew Rivera, A. We just laughed about it. I mean, we didn't know the mag -- again, we Former ISN Category Manager weren't privy to trademarks and how that all worked. We just -- we just Nov. 2, 2018 Trial laugh -- I mean, it was, wow. Kind of shocked. at 875:23-876:1 and 893:3-7
29 4. Evidence of Actual Confusion
ID #2424 “Monster energy drinks”
ID #2573 “looks like the energy drink maker”
“some chinese mass production company, probably produced by monster ID #2424 drink company as advertising/promo”
ID #2354 “energy drinks” PDX 6 ID #4539 “ENERGY DRINK”
ID #4550 “Monster energy drink”
ID #4695 “Energy Drinks”
ID #5037 “energy drinks”
PDX 7 ID #6449 “beverage company” Ex. 1069 30 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
31 5. ISN’s Intent in Selecting the Mark
Q. Approximately how many people from ISN do you honestly believe went to that trade show in 2010? A. 2010? I have no idea. Q. Can you give me a rough estimate of the number of people? A. 15.
Pilkenton Testimony, Ex. 1596 at MEC050980 Nov. 14, 2018
32 5. ISN’s Intent in Selecting the Mark
“So they -- they were all either given to customers, they were used as sales contest to where we would use them to -- to give to our salespeople. So primarily it -- it was sales and customers.”
Ex. 167 Rivera Testimony, Nov. 2, 2018 Trial at 860:15-18
“It was another thing that was for promotional use that I recall as being used as a giveaway.” Rivera Testimony, Nov. 2, 2018 Trial at 862:1-2
Ex. 168
33 5. ISN’s Intent in Selecting the Mark
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 305 313 321 329 337 345 353 361 369 377 385 393
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 306 314 322 330 338 346 354 362 370 378 386 394
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 307 315 323 331 339 347 355 363 371 379 387 395
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 308 316 324 332 340 348 356 364 372 380 388 396
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 309 317 325 333 341 349 357 365 373 381 389 397
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 310 318 326 334 342 350 358 366 374 382 390 398
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 311 319 327 335 343 351 359 367 375 383 391 399
Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone Pantone 312 320 328 336 344 352 360 ISN368 376 384 392 400
34 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
35 6. Marketing/Advertising Channels Overlap
Q. So would you agree that there’s an overlap in the channels of distribution for energy drinks and tools? A. Yeah.
Don Barry, ISN’s Chief Commercial Officer
Nov. 5, 2018 Trial at 947:19-21
36 6. Marketing/Advertising Channels Overlap
Q. So you've seen Joe sell ISN's Monster-branded tools on his truck? A. I have. Q. And you've also seen Joe sell Monster Energy drinks on his Matthew Rivera, truck? Former ISN Category Manager A. I have. Nov. 2, 2018 Trial at 885:23-886:2
37 6. Marketing/Advertising Channels Overlap
Q. And have you ever observed another mechanic purchasing Monster Energy drinks from a mobile tool truck? A. Yes. Q. How -- how many times have you seen another mechanic purchase a Monster Energy drink from a mobile tool truck? A. I mean, probably as much as I do. I -- I mean, a lot. Yeah. Chris Nalven, Mechanic for Q. It's a common occurrence? Levy’s Imperial Tire
Nov. 5, 2018 Trial A. Yes. There you go. I like that one better. Statement -- that's a better at 959:9-19 statement.
38 6. Marketing/Advertising Channels Overlap
Q. Is it correct that, while you were operating the Snap-on truck, you sold Monster Energy drinks to automotive technicians and mechanics? A. Yes. Ronald Hyre, Former Tool Truck Owner
Nov. 2, 2018 Trial at 831:8-11
39 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
40 7. Consumer’s Degree of Care
Q. When you were selling tools for your mobile tool truck, were your customers fairly thoughtful in the purchase of their tools, or would you consider it a -- an impulse buy? A. Both. Just depending on what -- what they were needing or what Ronald Hyre, Former Tool Truck Owner they were looking at.
Nov. 2, 2018 Trial at 839:5-9
41 Likelihood of Confusion Factors
1. Strength of Monster Energy’s marks and trade dress
2. ISN’s use of the mark and trade dress on same, related or complementary goods
3. Similarity of the marks and trade dress
4. Evidence of actual confusion 5. ISN’s intent in selecting the mark 6. Marketing/advertising channels overlap 7. Consumer’s degree of care 8. Product line expansion
42 8. Product Line Expansion
Ex. 266 Ex. 175 Ex. 268 Ex. 176 2012 Catalog 2013 Catalog 2014 Catalog 2015 Catalog 34 SKUs 62 SKUs 72 SKUs 231 SKUs
Ex. 269 Ex. 177 Ex. 270 Ex. 1837 2016 Catalog 2016 Catalog 2017 Catalog 2018 Catalog 259 SKUs 302 SKUs 367 SKUs 399 SKUs
43 8. Product line expansion
Ex. 111 Ex. 270 Ex. 270
Ex.1838
Ex. 177
PDX 7 Ex.176
44 ISN’s Missing Witnesses
No mechanics No mobile tool dealers No survey expert No damages expert No former ISN’s employees No third parties of any kind No Thomas Kautz
45 ISN’s Half Measures Acknowledge Guilt
Stopped selling snacks
Stopped using “feed the beast”
Stopped selling 5-hour energy drink
Selected alternative brand names in event they lose trial
Took down YouTube promotional video after opening statements
Pilkenton orders take down of website
46 Punitive Damages – Instruction #31
“The purposes of punitive damages are to punish a wrongdoer for the conduct that harmed [Monster Energy] and to discourage similar conduct in the future” If you find malice, oppression, OR fraud Amount sufficient to fulfill the purposes of punitive damages Consider the “degree of reprehensibility of ISN’s conduct” Sufficient to Punish and Discourage Similar Conduct
47 ISN Deceived: Consumers
Created Confusion Among Consumers:
Conceal Source of ISN Monster Products “Monster Mobile is the brand that they're selling. And it would be total confusion to have Integrated Supply Network on the back of that product. Also, it does no good. One, we don’t want people contacting us.” Nov. 14, 2018
48 ISN Deceived: Chinese Customs
“The factory loaded the pallets with your Monster brand in the middle of the container in hopes of avoiding any visual inspection”
Ex. 239
49 ISN’s Acts Deserve Punishment
ISN’s Vice President & General
Manager
ISN’s Chief Commercial Officer
ISN’s CEO Ex. 237
50 ISN’s Acts Deserve Punishment
Ex. 1063 Ex. 1837 Ex. 1837
Ex. 1837 Ex. 1837 Ex. 1063 Monster Only (after “adding Mobile”) 51 ISN’s Acts Deserve Punishment
Ex. 327/1821 Ex. 1837 at MEC066317 Ex. 270 at ISN0024436 Ex. 1837 at MEC066313 “Mobile” as small as possible 52