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April 4, 2009 - Content has not been altered.
7:35 a.m. EDT Saturday, April 4, 2009 |
The Scariest Monster of All Sues for Trademark Infringement
Fancy Audio-Cable Outfit Defends Its Brands; A Mini Golf Course Fights Back
By STEVE STECKLOW
When Christina and Patrick Vitagliano dreamed up their Monster Mini Golf franchises -- 18-hole, indoor putting greens straddled by glow-in-the-dark statues of ghouls and gargoyles -- they never imagined that a California maker of high-end audio cables would object.
But Monster Cable Products Inc., which holds more than 70 trademarks on the word monster, challenged the Vitaglianos' trademark applications. It filed a federal lawsuit against their company in California and demanded the Rhode Island couple surrender the name and pay at least $80,000 for the right to use it.
"It really seemed absurd," says Ms. Vitagliano.
The legal actions were nothing new for Monster Cable, which was granted its first "Monster" trademark in 1980. Since then, the company has fought more monsters than Godzilla did.
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.
Along the way, it has attracted its share of ire from those who say it is overreaching and trying to corner the market on a word, not a brand. "If Monster Cable prevails, the Gila monster will become just another lizard" and "the monster under your bed will have to become an ogre," wrote Michael Meadors of tabberone.com, a Web site that sells fabrics and also keeps tabs on trademark issues.
"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 who set up a Web site called monstercablebully.com to support the Vitaglianos.
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." Mr. Lee says the company sells many other monster-branded products besides cables that it has to protect, including music, clothing and candy mints.
To a legal novice, it may seem odd that a common word like monster can be trademarked at all. But in the complex and sometimes murky world of trademark law, common words can be registered, provided they are associated with specific classes of goods. Apple Inc., for example, holds trademarks for the word apple when it's related to computer products, not fruit.
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.
Mr. 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, Prof. 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.
Most of the company's lawsuits have been settled privately under confidential terms. In some instances -- such as the case of the Discovery Channel's reality auto show, Monster Garage -- companies have surrendered their trademarks to Monster Cable, which sometimes licenses them back for a fee. Discovery Channel declined to comment. The show is no longer in production.
In its federal civil lawsuit against Monster.com, Mr. Tognotti says owner Monster Worldwide Inc. agreed to pay Monster Cable's legal fees and post a clickable link to its Web site on Monster.com that says, "Looking for Monster Cable?" A spokesman for Monster Worldwide acknowledged the lawsuit was resolved but wouldn't discuss details.
A Disney spokesman says the company settled the lawsuit over Monster Inc.-related products without paying any compensation. Mr. Tognotti of Monster Cable says his company dropped the lawsuit after determining there was no trademark infringement.
He says Monster Cable has no plans to pursue the new DreamWorks Animation film, "Monsters vs Aliens." Says Mr. Tognotti: "We do not have a concern if a company is using the word 'monster' in a purely descriptive sense to describe actual monsters."
As for the Red Sox, Mr. Tognotti says the team agreed to withdraw or modify some of its trademark registrations for Green Monster-related products after Monster Cable argued there was "confusion in the marketplace." At the time, San Francisco's Candlestick Park was called Monster Park because Monster Cable had bought the naming rights. A Red Sox attorney referred questions to Major League Baseball, where a spokesman said the team had agreed with Monster Cable over a "procedural matter" but declined to elaborate.
Occasionally, Monster Cable has retreated. After it sued MonsterVintage LLC, an online used-clothing store based in Oregon, owner Victor Petrucci says he drove a rented truck to Monster Cable's headquarters and around San Francisco for two weeks. It was emblazoned with a giant sign that read in part, "Monster Cable S-." Monster Cable dropped the lawsuit.
"We have to balance what we do legally to protect our mark with that of public opinion," says Mr. Lee, adding, "We're very sensitive to our reputation."
The Vitaglianos say their monstrous fight erupted in 2006, two years after the couple opened their first mini-golf course. "It never occurred to me that a cable company might not like it," she says. Adds her husband, "We just all assumed it was going to go away."
Their attorney, Arthur L. Pressman, says he suggested they consider changing the name to Scary Mary's Monster Mini Golf to play down the word monster. But the couple refused to back down. By late last year, with their legal bills approaching $100,000, they agreed to try mediation. But after 10 hours, "we got really angry and sort of stormed away," says Ms. Vitagliano.
The couple then launched an Internet-based guerrilla campaign to generate public support. "We blogged nonstop, around the clock, for weeks, and enlisted much of our staff to do the same," she says. The couple offered to sell symbolic slices of "Justice" for $1 on eBay and raised about $4,400 for their legal defense. Two days before Christmas, she sent Mr. Lee a DVD of the film, "How the Grinch Stole Christmas."
Monster Cable's Mr. Lee says the company also received at least 200 angry consumer complaints. After speaking with the Vitaglianos, he 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.
Write to Steve Stecklow at email@example.com
Printed in The Wall Street Journal, page A1
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