Legal News

A Monster of a Trademark Strategy

By Ashby Jones

Is it possible that a company can be too aggressive in protecting its trademarks?

That was an implicit question raised in Saturday’s WSJ front pager by Steve Stecklow involving the company Monster Cable Products. The California-based maker of high-end cables has taken an exceptionally aggressive stance throughout the years in protecting the word monster, on which it holds more than 70 trademarks.

Writes Stecklow:

Over the years, it has gone after purveyors of monster-branded auto transmissions, slot machines, glue, carpet-cleaning machines and an energy drink, as well as a woman who sells “Junk Food Monster” kids’ T-shirts that promote good eating habits. It sued Monster.com over the job-hunting Web site’s name and Walt Disney Co. over products tied to the film “Monsters Inc.” It opposed the Boston Red Sox trademark applications for seats and hot dogs named for the Green Monster, the legendary left-field wall in Fenway Park. All in all, Monster Cable says it has fought about 190 monster battles at the U.S. Patent and Trademark Office and filed around 30 monster lawsuits in federal courts.

“Monster Cable’s practice of suing anyone using the word ‘Monster’ in their name is nothing short of playground bullying,” says Robert Holloway, a computer contractor in Iowa.

Monster Cable says its trademark challenges are a matter of necessity. “If you don’t defend your mark, and people use [it], it runs the risk of becoming generic and then you lose the mark,” says Noel Lee, founder of the Brisbane, Calif., company, whose corporate title is “Head Monster.”

In any event, there are those who think Lee takes the strategy too far. We loved the story’s lead anecdote, involving a chain of miniature-golf courses called “Monster Mini Golf.” The company sued the owners of the franchise, a Rhode Island couple, in 2006, two years after the couple opened its first mini-golf course. Ultimately, after racking up more than $100,000 in legal bills, the couple took to the Internet and mounted a grass-roots sort of protest against what they viewed as bullying.

After speaking with the couple, Lee decided to drop the lawsuit, withdraw his company’s opposition to Monster Mini Golf’s trademark applications and pay up to $200,000 of their legal expenses.

The story also explored an interesting legal point: Sometimes, trademarks can obtain a higher order of protection, known as “famous marks.” This category is supposed to be reserved for words that have become so entwined with a product and a company — like the word visa and Visa Inc.’s credit card — that the trademark owner can argue that no other product may use the word in its name.

David Tognotti, Monster Cable’s general manager and an attorney, says the company considers “Monster” a famous mark — on a par with Barbie dolls or Camel cigarettes. “We’re protecting our mark as if it’s a famous mark,” he said in an interview in Monster Cable’s headquarters, where the walls are lined with framed copies of the company’s trademarks and patents.

Tognotti cited a chapter on famous marks in the law book “McCarthy on Trademarks and Unfair Competition” by J. Thomas McCarthy, a noted expert in the field.

But in an interview, McCarthy expressed doubt that Monster Cable possesses a famous mark. He said such determinations are made by courts. Mr. Tognotti acknowledges Monster Cable hasn’t obtained such a court ruling.

Full post as published by Law Blog - WSJ.com on April 06, 2009 (boomark / email).