Here we go again. Monster Energy is one of the most prolific trademark bullies in the history of trademark bullying. And the really frustrating part of all this is that at times it can feel like Monster makes trademark bullying a chief international export every bit as much as energy drinks. No trademark concern is too small and no industry too disparate to warrant intervention by whatever crack legal team Monster Energy is employing at the time.
Which brings us to New Zealand. That’s where one of Monster’s brands, an energy drink labled simply “Mother Energy Drink”, is sold. Also in New Zealand is a gin company called “Mothers Ruined”, which applied for a trademark on the business name in 2022 but found themselves facing an objection to the mark by Monster. Fortunately, the folks behind Mothers Ruined appear to have the appetite to fight the bully.
Mothers Ruined co-owners Jo Davy and Helen Gower lodged the application for the name in January 2022, but were shocked when months later the Intellectual Property Office notified them of the objection.
But, with the help of a lawyer taking the case pro bono, the pair decided to fight it.
“It feels fundamental to us that the word mother should not be contestable in a legal sense,” Davy said.
“We know the company has contested other companies as well with a similar name, so we want to stand up and say ‘no, it’s not fair’,” Gower said.
With the help of an attorney, the pair are taking this up at a hearing with the Intellectual Property Office. The pair’s attorney sounds confident and is saying all the right things.
Intellectual property lawyer Kate Duckworth, who is representing Davy and Gower, said she was confident the case would go their way.
“One of the elements for a trademark case to be successful is there has to be deception and confusion,” Duckworth said. “I don’t believe Mothers Ruined is a threat to the energy drink business, as they are not competing products.”
Damned right, they aren’t. We’re talking about energy drinks and freaking gin, and those aren’t remotely in the same categories. I’ve also reviewed the branding for both products and there is zero chance of confusion, even for a hurried idiot already full of gin.
No, this is Monster doing it’s routine, bullying every chance it gets with reckless abandon. Hopefully the IPO recognizes that.
Over the last few years, we’ve written a number of stories about a (somewhat silly) trademark dispute between Jack Daniels, makers of whiskey, and VIP Products, makers of doggy chew toys, including one for “Bad Spaniels” that is a pretty clear parody of Jack Daniels.
When we had last mentioned the case it was in 2021, after the Supreme Court refused to grant cert, specifically regarding the question of whether or not the doggy toy was an expressive work, which would subject it to a different level of protection. The case continued, and after another round of back and forth in the courts, the Supreme Court was asked to weigh in again, specifically on the question of whether or not a “humorous use of another’s trademark” is subject to the standard “likelihood of confusion” test, or whether the higher standards of the 1st Amendment apply instead (and, separately, whether or not the humorous use, even for sale, made it noncommercial, which would bar reviewing it for “tarnishment” — an already questionable interpretation of trademark law).
Back in November, the Supreme Court agreed to hear the case, and amicus briefs have been pouring into the docket, mostly from big brand companies and trademark lawyers. So, you have folks like Campbell’s Soup (yes, the same Campbell’s Soup that Andy Warhol parodied) whining about the threats of allowing people to make parodies of brands.
These are all good and useful filings. But… there’s another one as well.
The artist collective/commercial drop pranksters known as MSCHF, who have had their own trademark battles along the way, decided to weigh in as well with… well… something different. You may recall that last fall, The Onion filed a hilarious amicus brief regarding the importance of free speech protections for parody, which, unfortunately, did not convince the Supreme Court to hear that case.
But the MSCHF filing takes this all to a different level. Actually, MSCHF filed its brief the same day as all the other briefs in support of VIP products, but it was initially rejected by the court (for unclear reasons). A corrected version was filed this past Thursday (unfortunately, I no longer have the original version which I had read when it came out. I think the revised version puts more of the legal stuff up front and the, um, nonsense, later).
The corrected full filing starts off with a well argued amicus brief regarding the importance of freedom of expression, and how trademark can interfere with speech. It, like many of the other briefs, highlights how just using the “likelihood of confusion” test can “contradict” the 1st Amendment. But, still, much of the filing is not what you’d expect, starting with the “interest of the amicus” part:
“Crackpots” might be how the Tinker Court would describe us. Far worse, one of the other amicus called us shoe manufacturers. Meanwhile, members of the art world named us “the future.” We call ourselves MSCHF (pronounced “mischief”). We are a collective who critiques and comments on American culture. The renowned Perrotin Art Gallery described our work as “elaborate interventions [that] expose and leverage the absurdity of our cultural, political, and monetary systems.” We start conversations about culture by participating in culture; so we agree with this Court that the freedom of expression is not limited to areas that a benevolent government provides as a safe haven for people like us.
The “crackpot” line, and the closing phrase, are references to the famed Tinker v. Des Moines Supreme Court ruling regarding the 1st Amendment in schools, which included the memorable line “freedom of expression does not exist if it ‘could be exercised only in an area that a benevolent government has provided as a safe haven for crackpots…’.”
The brief highlights just a few of MSCHF’s many commentary projects, and then suggests that the Justices (and their clerks) should begin by “turning to the Appendix.” (Again, I believe that the part that is now the Appendix was initially at the front of their original filing.) The filing also highlights many, many cases of big packaged goods companies appropriating iconography for expressive purposes within their ads, from Starbucks’ use of a medieval mermaid to Coca Cola’s use of Santa Claus.
There’s a lot more, and, again, it’s a really good amicus brief in highlighting tons of real world examples to prove its point. And they really try to prove their point, including showing the results of a (small sample size) survey they ran regarding, um, the taste of Jack Daniel’s Whiskey:
Followed by this bit of commentary:
Our colleagues who expressed an opinion that Jack Daniel’s tastes like anything but the nectar of the gods are, of course, wrong, but this is America and they may express their opinion. Under the likelihood of confusion test, however, it is unclear how far they can go to share that opinion. Could they print their opinion on a pamphlet? What if the opinion is printed on clothing? Could they use Jack Daniel’s filigree to surround their opinion stated on a t-shirt? What if they print that expression on a t-shirt using Jack Daniel’s stylized font? Could they print the expression on a black t-shirt using Jack Daniel’s stylized font and a replica of a Jack Daniel’s bottle? Does it depend on where you live?
There’s so much in the filing, including a fun usage of my favorite XKCD, which I’ll leave you to find.
But then we get to the Appendix, which is what drew so much attention to this filing in the first place. It is a contest, in which they ask each Justice and each of the Justice’s clerks to complete a simple connect-the-dots drawing and send it back to MSCHF to be used in an exhibition.
The show will be composed of 45 works on paper, each taking the form of a Connect-the-Dots drawing, a classic childhood puzzle-drawing format.
Enclosed in this brief are 45 pages, each specifically addressed to one of the people reading this brief. Each page has on its front fact a connect-the-dots drawing waiting for an artist’s hand to make them into completed artworks. On the reverse is a pre-addressed, pre-paid mailing label allowing the completed drawing to be returned to MSCHF for exhibition at no cost to the artist.
In describing the nature of the end result, the filing notes that the Justices and clerks will be part of what “determines what these artworks are” and highlights that each person reading the brief is “the executor of an artwork that makes use of cultural iconography.” But also, to make the point:
Each of these drawings will be displayed as part of a gallery show. Will they be rendered illegal prior to that exhibition?
As you’ve probably guessed by now, the connect-the-dots drawings make use of… some well known trademarks. Here’s the first one, for Chief Justice John Roberts, parodying the Arm & Hammer logo by adding a sickle to it as well:
Robert Flatow, a clerk for Justice Alito, is given a mashup between Mickey Mouse and Shrek:
I do wonder how Clarence Thomas’ clerk, Daniel Shapiro feels about the connect-the-dots he was given:
Spencer Smith, clerk to Justice Sotomayor, was given one that makes reference to Section 230, and appears to be creating a tombstone guillotine with the monopoly man’s decapitated head in front of it (I’m not going to comment on that any more…)
Justice Amy Coney Barrett gets a mix of McDonalds and the cross, creating “McMass.”
There are 45 in total, and many of them are fairly amusing, but all basically make the point about the intersection of trademark and artistic expression. I am assuming that none of the recipients, and almost certainly none of the Justices, will actually participate, though MSCHF also filed a separate motion asking for leave to send a pack of colored pencils (importantly, a pack of Crayola® Colored pencils) for the Justices and clerks to use.
The Justices are not exactly well known for their senses of humor, especially around something that may feel like it is mocking the court, but I think the brief does a good job making its point. And I look forward to the MSCHF exhibit.
For regular readers of Techdirt, Monster Energy is one of those companies that need only appear in the headline of a post before the reader knows that said post will be about some ridiculous trademark bullying Monster is doing. The company has a reputation for being about as belligerent on trademark matters as it could possibly be, lobbing lawsuits and trademark oppositions as though the company lawyers had literally nothing else to do with their time. And, while many, many, many of these bullying attempts fail when the merits are considered, the fact is that the bullying still often succeeds in its goal to use the massive Monster Energy coffers to bully victims into either submission or corporate death.
The really frustrating part in all of this is how often Monster Energy attempts to trademark bully companies that aren’t remotely competing in their market. One recent example of this is Monster going after MPT Autobody in South Carolina. For disclosure, one of the founders of MPT reached out to me personally to inform me of exactly what was going on. Based on our conversation and what I can see in public records, the order of events appears to go something like this:
MPT Autobody submits an application to trademark its name and branding (pictures will be below)
Monster Energy opposes the application, citing that MPT’s branding in part includes a stylized “M” and the color “green” and will therefore confuse the public into thinking it’s associated with Monster Energy
After consulting with a lawyer, MPT Autobody drops the application, intending to simply do business without the trademark
Despite that, Monster Energy then sends a C&D notice, arguing that the continued use of “M”s and “green” constitutes copyright infringement, along with a demand that MPT pay Monster Energy’s attorney’s fees
I have embedded the entire C&D notice below so you can go see the details for yourself. That said, let’s start with a couple of facts at the top of all of this. Monster Energy does not have the right to block other companies from using the letter “M” in their branding. Monster Energy also does not have the right to block other companies from using the colors green or black in their branding. Monster Energy also generally does not have the right to block other companies from using green or black “M”s in their branding.
And, yet, simply because Monster Energy sponsors some auto race activities, its letter claims exactly that and, as a result, it includes in its letter the following pictures as to what will confuse the public.
Now, if any of that branding out in the wild brings to mind Monster Energy, you need help. And keep in mind that for all of Monster Energy’s reference to its sponsorship of trucks and cars, it is not in the autobody industry. Given that, there is a hell of a high bar to climb to prove that any of this is infringement.
All of which may end up being besides the point. MPT is going to have hefty bills on its hands if it wants to fight this out, even as it seems to be trying to play nicely with Monster Energy as much as it can. For instance, the company’s site now has a disclaimer on it, noting that they are not affiliated with Monster Energy. The company is also looking into the potential of using a different shade of green on branding, though it’s anyone’s guess if that would satisfy Monster Energy. The trademark app has been withdrawn.
But trademark bullies are never satisfied with that sort of thing. Instead, they want to grind their victims into the ground. Here’s hoping that doesn’t end up being the case with MPT Autobody.
It’s not a great look when our institutions of higher learning either can’t get their own collective shit together on matters of law or else attempt to bully former students with specious claims. And, yet, this appears to happen far too frequently. The most glaring example of this was Iowa State University’s attempt to violate the free speech rights of its students that resulted in a $400k bill of blowback. Now it seems that the University of Illinois is seeking to trademark bully an alumnus after failing to take action during that alumnus’ trademark registration for a t-shirt in orange and black that reads “Make Illinois Great Again.”
It claims that an alumnus selling orange-and-black T-shirts with the phrase “Make Illinois Great Again” and a drawing of Chief Illiniwek (below) – the politically incorrect mascot itdumped 11 years ago – is trampling on the taxpayer-funded institution’s intellectual property.
The News-Gazette reports that the university claims the shirt’s colors are its “trade dress,” UI is often referred to as just “Illinois,” and that the shirt’s drawing of the chief infringes a 2007 photo of the chief. Therefore, defendant Ted O’Malley is “creating confusion in the marketplace” about who is behind the shirts.
You should recognize that this whole thing is absurd. The t-shirt makes no reference to the college beyond the image of The Chief, a dumb “mascot” that the school abandoned over a decade ago. U of I does use orange as a school color, but not black. Orange is also used as the color for many things. Oranges, for instance, turn out to often be orange in color. So do other universities, such as Syracuse. Regardless, while there is a nod to the Illinois school in the design of the t-shirt, it’s not one that makes confusing use of trade dress for the school, nor is it one that would cause confusion in the marketplace. In fact, the whole point of the shirt is to protest U of I’s shitty athletic program.
It’s quite hard to argue that anyone viewing that shirt, or the ad for it, is going to think it is coming from the school the shirt is criticizing. O’Malley’s lawyer obviously agrees.
“No one in their right mind would possibly believe that was something furnished by the University of Illinois,” said his attorney, Doug Johnson. “It’s much like someone making something that said ‘Make America Great Again’ being sued by America.
“They are a state actor, and they don’t like the message. They’re trying to stifle First Amendment rights.” …
“How many pictures of the Chief have been taken over the last 30, 40 years?” he said. “That’s like saying I took a picture of Wrigley Field, and you can’t draw a picture of Wrigley Field because I took a picture of it one time.”
The most face-palming aspect of all of this is that the school had every opportunity to raise these issues when O’Malley registered for a trademark on his slogan and shirt design. Upon his doing so, the school apparently challenged the registration… before falling asleep and forgetting that it had to do more than that.
The university sought to stop approval of the trademark in November but couldn’t be bothered to respond to a motion to dismiss by O’Malley’s lawyer Johnson.
In that motion with the U.S. Patent and Trademark Office, Johnson said the sought trademark was a “political statement” against the state government for its “unpaid bills of over 15 billion dollars” and record of tax hikes, as well as an athletic statement against the poor performance of the university’s football and basketball teams.
Johnson pointed to the nearly 900 registered trademarks with the word “ILLINOIS” in them and said his client’s design didn’t use italics, as does the university’s official design.
And that was it. The school never responded. In other words, the trademark concerns it claims to hold so much so as to cause it to sue a former student were apparently not so important to warrant a simple legal response to a proceeding the school itself had initiated.
It might be time to make the University of Illinois’ legal team great again. Or, if not great, perhaps responsive?
The NY Times has a somewhat surprising article about how the Hells Angels have basically become rather aggressive trademark bullies, going after pretty much anyone who comes anywhere near their trademarks, complete with an angry looking lawyer named Fritz Clapp who has a red mohawk (but, apparently, is not actually a Hells Angel member, which I guess allows him to avoid a conflict of interest).
Just in the past seven years, the Hells Angels have brought more than a dozen cases in federal court, alleging infringement on apparel, jewelry, posters and yo-yos. The group has also challenged Internet domain names and a Hollywood movie — all for borrowing the motorcycle club’s name and insignias. The defendants have been large, well-known corporations like Toys “R” Us, Alexander McQueen, Amazon, Saks, Zappos, Walt Disney and Marvel Comics. And they have included a rapper’s clothing company, Dillard’s and a teenage girl who was selling embroidered patches on eBay with a design resembling the group’s “Death Head” logo.
While it appears that some of this is about money, it’s much more clear that they’re just fiercely protective of who’s “in” the club. A deposition in one case of Sonny Barger, the head of the Hells Angels, has him discussing how if he sees anyone wearing unofficial Hells Angel clothing, he’ll demand it on the spot — sometimes offering to exchange it for a legitimate one, but also saying that if the person refuses “I’d beat him up and take it.”
Of course, the article also details how law enforcement has often considered the Hells Angels an organized crime group, and I could see how that might lead to some problems down the road. A few years ago, we wrote about how, in a case against a different biker group, the Mongols, the US government asked the court to hand over the gang’s trademarks, so that they could stop anyone and take away their clothes if they saw them wearing Mongols jackets or shirts. Basically, the government equivalent of what Barger said in his deposition. Imagine what kind of hell would break loose if the government tried to seize the Hells Angels trademarks as well…
Understandably, Lazy Man is baffled by Nutribullet’s quasi-C&D letter. Here’s the letter in its entirety. (Screenshot of original email here.)
Dear Domain Administrator,
Nubribullet, LLC is the owner of the well-known trademark and trade name Nutribullet. As you are no doubt aware, Nutribullet is a trademark used to identify products, services, activities and events related to Nutribullet, LLC.
The trademarks, emblems, words and phrases of Nubribullet, LLC are exclusively used by Nutribullet, LLC and any other use by a third party constitutes trademark infringement.
In connection to Nutribullet, LLC proprietary rights over its famous trademark we are notifying you of the following:
It has come to our attention that our trademark Nutribullet appears as a metatag, keyword, visible or hidden text on the web site(s) located at:
without having obtained prior written authorization from our Client. This practice infringes upon the exclusive intellectual property rights of Nutribullet, LLC.
Also, by using such trademark, you have intentionally attempted to attract Internet users to your web site(s) or other online location(s), by creating a likelihood of confusion with the Nutribullet, LLC trademark as to the source, sponsorship, affiliation, or endorsement of your web site(s), online location(s), products or services.
We trust that you will remove all metatags, keywords, visible or hidden texts including trademark presently appearing on the above-cited web site(s) and any other web site(s), or draw this issue to the attention of the appropriate person(s).
As part of our Nutribullet, LLC Trademark Enforcement Program, be assured that we will continue to monitor your web site(s) to verify your compliance with this letter. Failure to do so will force us to defer this issue to our Trademark Lawyer for further actions.
Should you require additional information or wish to further discuss this issue, please do not hesitate to contact the undersigned.
Sincerely, Nutribullet, LLC
As Lazy Man points out, not only was the review positive but he linked to places where the product could be purchased. Normally, this sort of clumsy trademark C&D is deployed by unhappy companies seeking to bury criticism. He contrasts Nutribullet’s reaction to other companies whose products have received good reviews from his site.
When I wrote a similar article about SodaStream, including the trademark in the keywords, the employees of the company printed it out and shared it through the office. When I wrote about True Orange the company emailed me to thank me and asked if they could me send me free product. These companies get it. When you get good, free promotion, enjoy it and, if you want to be polite, thank the person for the help.
Beyond the nonsense about “metatags” and “keywords” (more on that in a bit), there’s the ridiculous assertions and stipulations made and requested by Nutribullet’s “Trademark Enforcement” team.
First, the claim that Lazy Man “intentionally” used Nutribullet’s trademark to attract users to his site (everything posted at nearly any website is designed to “attract users”) is standard IP bully myopia. To tiny minds like these, the entire internet is out to profit on its hard work and, therefore, bloggers like Lazy Man must be stopped before they bankrupt Nutribullet by using its name in a review of its product.
It takes the crazy train further off the rails by insisting Lazy Man is only doing this to create confusion in potential customers’ minds. By using the name of the company in a review of the company’s product, Lazy Man is somehow implying that he is Nutribullet or an approved spokesman. (This somehow adds up to Nutribullet losing business from a positive review, but you have to use Trademark Math to arrive at this conclusion.)
Neither of those claims stand up to any scrutiny at all. Skipping past these ridiculous claims, one stumbles across the absurd demands of Nutribullet.
We trust that you will remove all metatags, keywords, visible or hidden texts including trademark presently appearing on the above-cited web site(s) and any other web site(s)…
Worded this way, it appears Nutribullet wants Lazy Man to police the internet itself to keep it Nutribullet-free. This lends more credence to the assumption that Nutribullet’s legal “team” has no idea what the hell it’s doing. (Confirmation appears further down in the post…)
There is no chance that someone would be mislead into thinking my site is the official NutriBullet website. That covers the “source” part of their complaint. As for “sponsorship, affiliation, or endorsement” I don’t see using a meta-keyword would convey that impression to users. I have yet to come across the Internet user who looks at meta keywords to determine if there is an affiliation. If such an Internet user did exist I could see how they’d be confused, because that simply isn’t what meta keywords are for.
Not so fast, Nutribullet would likely exclaim. What about search engines?
Still not satisfied. How about getting some actual law involved?
Also there’s legal precedent: “the judge ruled that since the keyword META tags do not influence search results, having trademarked terms in them are immaterial.” So we can throw that out as a reasonable explanation for the letter… unless NutriBullet is unaware of the case law.
It seems very likely Nutribullet is unaware of this precedent, as well as generally being unaware of the proper response to complimentary reviews. Granted, this isn’t Nutribullet itself speaking, but it is its legal representation. Not keeping a close eye on those supposedly watching out for your best interests often results in exactly this sort of PR fiasco.
The legal team, by the way, is none other than MarkMonitor. [Screenshot of email shows originating address is “brandprotection@mm-capitalbrands” — the registrar of that domain being MarkMonitor.] Nutribullet’s hired gun is apparently unable to distinguish between helping and hurting its employer, much as it has been unable to distinguish between infringing URLs and HBO’s official content when sending DMCA notices.
As the news of this letter spreads around, it won’t be MarkMonitor who ends up looking bad. Nutribullet itself will be the company losing out — the one remembered as the entity that greets good reviews with legal threats. Nutribullet may think it’s receiving IP protection, but all it really seems to have acquired is a sloppy contractor who can damage Nutribullet’s reputation more effectively than it can protect its IP.
The origin of the two names – Twisted Sister and Twisted Sisters – are vastly different as you might guess. Russell says the name for her store is a reference to a family label given to the sisters by their late brother back in the 1960s. He also used to call Nancy the “blond tornado” so Twisted Sisters and the logo, which looks like a tornado sketch are rooted in family and our Kansas location. Twisted Sister the band, we assume, has a different origin.
In looking at the actual letter sent, it appears that the lawyer for the band is specifically objecting to the web URL the coffee shop has set up (it’s odd that the reporter leaves out this point). Still, in looking over the details, it seems pretty clear that the band and its lawyer are abusing trademark law here. It is true that Twisted Sister has a trademark (1098366) issued in 1978, but that trademark only covers: “ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP.” As the band’s lawyer must know, trademarks are issued in particular categories, and having a mark in a single category does not mean you have control over those words.
While the letter also points out that they have successfully convinced other businesses to change their name, that still doesn’t make the claim valid. The likelihood of confusion here is nil. No one is going to this coffee shop thinking it’s run by the band or has any association with the band. Furthermore, the lawyer’s suggestion that this would qualify as “dilution” also seems ridiculous. We’re no fans of the dilution theory of trademark law (which seems to go against the very basis of trademark law), to be sure, but even if you accept it as valid, it is difficult to see how there’s a valid dilution claim here. Yes, the band’s mark is famous, but how the hell would they show that a random coffee shop in Kansas “dilutes” their brand in any meaningful way?
Furthermore, even if the band has bullied other stores into changing their names, it does not mean they’re the only “Twisted Sister” out there. In fact, they’re not even the only Twisted Sister with trademarks. In looking through filings, I found legitimate approved trademarks for… Twisted Sister the board game (85857824), Twisted Sisters boutique clothing offering (3216315) and Twisted Sisters Our Business Is Dyeing offering colored yarns (3027439). All of those are live trademarks that appear to have nothing to do with the band.
It seems like if the owner of the coffee shop, Sandi Russell, wanted to turn around and scream back at the band “we’re not gonna take it; no, we ain’t gonna take it; we’re not gonna take it, any more…” she might be able to find a lawyer more than willing to make that argument. Unfortunately, from the sound of the article, it appears that Russell is caving in to the bullying and looking to change the shop’s name.
In the latest example of extreme trademark abuse, video game company Gaijin Entertainment is not just claiming a trademark over “gaijin” but using it to demand the domain name Gaijin.com, which was registered by Brandon Harris back in May of 1995. The legal nastygram that the company sent is quite incredible, suggesting that Harris registered the domain later and is somehow infringing on their mark:
It came to our attention that you registered and maintain a website www.gaijin.com
(“Infringing Website”) that infringes Gaijin Mark. By maintaining and offering to public your
content via the website, i.e., Infringing Website, having the same domain as Gaijin Mark, you
create consumer confusion and mistake as to the source, sponsorship and/or affiliation of the
Infringing Website and Gaijin, thereby infringing Gaijin Mark.
Luckily, Harris has Mike Godwin (yes, that Mike Godwin, so get your Nazi references in early) as a lawyer, and he quickly sent back the following excellent response.
Dear Mr. Goldstein-Gureff,
Please be advised that my client, Brandon Harris, disputes your trademark-infringement claim in every particular.
That is the most polite way to state how vigorously we dispute your attempt to assert flat ownership of the word “gaijin,” a word so well-established in English that it is an entry in the Oxford English Dictionary.
Currently, I’m advising my client to publicize your demand letter, so that the entire game-consuming public will be made aware of your client’s overreaching trademark assertions. In addition, we will of course continue to make clear that Brandon Harris’s website in no way gives rise to any kind of marketplace confusion of the sort that American trademark law is designed to address.
In the interests of allowing you and your client to gracefully retract your claim, we have chosen to refrain from publicizing your demand until you respond to this message, provided that you respond no later than close-of-business Monday. Since I am currently in DC, Eastern time applies.
–Mike Godwin
P.S. I understand that your clients are possibly Russian nationals. You may wish to explain to them the scope and limitations of the Lanham Act in the United States.
–MG
Obviously, they did not retract the claim in time, and thus, the trademark bullying is now public.
As you’re probably aware, Monster Cable is somewhat famous as a trademark bully — at times going after completely unrelated businesses that use the word “monster” (such as a mini-golf course, an automotive parts shop and the manufacturer of deer salt blocks) despite there being no chance for confusion. So it’s interesting to see what happens when it’s actually being accused of trademark infringement itself. Unlike Monster’s lawsuits, this one is from a company that’s actually in the same space. Dolby is suing Monster for trademark infringement and last week Monster failed in its attempt to win the case via summary judgment, while Dolby partially won its summary judgment arguments. (Updated to show the logos):
Incredibly, Monster, which continually attacks totally unrelated businesses where no moron in a hurry would ever consider there to be any confusion, is now forced to argue here that its own use wouldn’t cause any confusion at all. However, the court isn’t convinced, noting that the marks do, in fact, appear similar (and even Monster’s own “expert” witness said as much):
Here, both marks consist of an icon of a pair of over-the-ear headphones surrounding an abstract geometrical shape. The proportionate size of the headphone icon compared to the center geometric shape is approximately the same for both marks. Both of the center geometric shapes have a similar dark, right-angle side nearest the headphones icon, with mirror-image, inward-facing,
semi-circular arcs opposite the right-angle side. Indeed, Monster’s own witnesses concede that the marks have similar elements. The evidence indicates that Monster’s mark sometimes appears in a certain configuration with the Monster name or in certain color combinations, but sometimes does not. In short, a reasonable jury could find, on the record before the Court, that this element favors likelihood of confusion.
And, while Dolby itself doesn’t directly compete, it licenses its mark to those who do:
Headphones bearing the Dolby mark sell in the same price range and to the same market segments. Moreover, the Dolby mark may appear on a variety of different headphone styles, including styles similar to Monster’s, since Dolby licenses its mark to different headphone manufacturers. This adds to the potential for source confusion, whatever the sophistication level of the buyers.
Oh, and there’s even some evidence to suggest that, unlike those Monster accuses of trademark infringement, Monster itself may have purposely copied Dolby’s mark:
Based upon the record before the Court here, a reasonable jury could find that Monster intentionally adopted a mark similar to the Dolby Headphone Mark, thus creating a triable issue. Monster was aware of the Dolby Headphone Mark at the time that it adopted its Monster Headphone Mark. It had, in fact, licensed and used the Dolby Headphone Mark on its own products. The record contains conflicting accounts about the creation of the Monster Headphone Mark. Dolby also offers evidence that Monster previously admitted using a different Dolby mark without permission, as well as evidence that Monster acknowledged the value of including the Dolby Headphone Mark and Dolby technology in marketing headphones to consumers. This and other circumstantial evidence would allow a reasonable jury to find in favor of Dolby on the intent to confuse factor
You would think that, for a company so incredibly (and ridiculously) aggressive in enforcing its own trademark, it would be a bit more careful in designing its own damn logos. Monster may eventually win the case, but initially it doesn’t look to be going that well.
The latest in a long series of stupid trademark bullying lawsuits comes to us courtesy of The Village Voice (who should know better than to file bogus lawsuits). The Voice is suing Yelp for trademark infringement. The Village Voice somehow convinced the USPTO that it deserved a trademark on the phrase “best of [place name]” for certain locations — such as “Best of Seattle” or “Best of San Francisco.” Yelp, quite reasonably, also uses the term of “best of” to describe certain places:
Village Voice is claiming that Yelp’s infringement is “willful” because it notified the company, and Yelp apparently told them to go away. It’s also ridiculously claiming that Yelp’s usage has “irreparably harmed” the company. I realize that’s standard language used in such lawsuits, but seriously?
What is going on at the Patent and Trademark Office? For decades, folks have been complaining (with good reason) that the patent examiners need to do a better job of screening out bogus patent applications. It’s clear that the problem extends to the trademark side as well. The PTO has allowed companies and individuals to register marks in any number of obviously generic and/or descriptive terms, such as “urban homestead” (to refer to urban farms), “gaymer” (to refer to gay gamers), and “B-24” (to refer to model B-24 bombers).
Once a mark is registered, it is all too easy for the owner to become a trademark bully. And while companies like Yelp have the resources to fight back (as we expect it will), small companies and individuals may not. Just as dangerous, the trademark owner may go upstream, to intermediaries like Facebook who have little incentive to do anything other than take down an account or site that’s accused of infringement.
Separately, the EFF asks the most important question: who is actually being deceived here? There is no confusion. No one associates “best of” with the Village Voice. Everyone reads it as a perfectly normal descriptive term, rather than a trademark belonging to any single party.