Wednesday, December 3, 2008

Monster Mini-Golf uses eBay to raise money for defense against Monster Cable trademark infringement lawsuit


Techdirt has an interesting article (link here) about a small mini-golf course in Rhode Island that goes by the name Monster Mini Golf that has been embroiled in a trademark infringement lawsuit with Monster Cable Products, Inc. – the company behind “Monster” cables and which is well-known for filing trademark infringement lawsuits against other small companies in the U.S. that use the name “Monster” in connection with any goods or services (although the company apparently has no beefs with the likes of energy drink maker Monster Energy or job hunting website Monster.com). Justia.com has a link to the court filings in a similar case filed by Monster back in May against a different, California-based mini-golf course also named Monster Mini Golf. See Monster Cable Products v. Monster Mini Golf, et al., Case No. 08-cv-01037 (E.D. Cal.).

The Rhode Island Monster Mini Golf decided to ask the public to contribute to its defense fund via eBay – the link was subsequently taken down as a violation of eBay’s terms of service agreement (for bidding on “no item”), so now the company has put up a new auction for a “coupon” at Monster Mini Golf that serves the same purpose.

The title of the item is “Buy a Monster Mini Golf Coupon, fight Corporate bully!” Here are the “item specifics”:

  • Weirdness : Totally Bizarre
  • Subject Area: Stop bullys now!
  • Year : 2008
  • Type: Sad, Very Sad

There is a lot more in the detailed description of the item, but you can check out the listing for yourself (click here). I think the company at least deserves some credit for its creative thinking.

Of course, how long do you think it will be before Monster files a VeRO Notice of Infringement with eBay against the listing for infringing its MONSTER mark?

[Note: Make sure to read the one comment to this post. Quite lengthy, but very insightful for those interested in the "Monster" cases]

2 comments:

Anonymous said...

Thanks for your viewpoint. Given the limited information that you have, I don’t blame you for being upset, but what you’ve read or been told is not the whole story. There have been many false accusations and much misinformation spread by the Monster Mini Golf. One also needs to consider all of information in order to get a balanced viewpoint.
1) Monster Mini Golf Misconceptions:
Monster Mini Golf is by no means a small Mom-and-Pop business. In fact it is a national organization selling franchises with the Monster trademark. The company currently has 24 franchise locations across 10 states stretching from California to New Jersey. Under the name Monster Mini Golf, the company has filed for several “Monster” marks, including “MONSTER” by itself, MONSTER MINI GOLF, MONSTER FAMILY ENTERTAINMENT CENTERS and MONSTER MINI GOLF. These are all areas of business where we have established trademarks awarded by the United States Patent and Trademark office. The company charges franchise and set up fees upwards of $200,000, part of which is the licensing of the name “Monster:”, which they do not own, to all of those franchises. The trademark office has not issued them the Monster mark.

Check their website: http://www.monsterminigolf.com/cost_breakdown.html

Monster Mini Golf’s is not the small business they make themselves out to be. The owners want to continue to expand their business and use of the “Monster” trademark. “I would like to be known as the best franchise to own,” Vitagliano says. “… I want to be the Universal Studios or Disney World of mini-golf. I always want to stand in a class of our own. I want our brand to become a household name so that people across the country know Monster Mini Golf.” (see: http://www.pr.com/press-release/70857 ) With such wide distribution intentions, they will dilute our Monster trademark to an extent to where we cannot enforce it.

I believe that they are using your sympathy to their own gains to obtain the rights to use a mark that they don’t own.

2) Patent and Trademark office has Awarded Monster (us) with trademarks that go far beyond cables.
Many may think that we are only Monster Cable. Over the past 30 years we have conducted business with many Monster marks. We have been awarded 100 registered Monster trademarks in 12 different classes by the Patent and Trademark office, All of these trademarks predate Monster Mini Golf’s application for trademark, which has not yet been granted.

Link to our Monster trademarks:
http://www.monstercable.com/monster_truth/Monster_Cable_Trademark.pdf
Monster Mints. Monster Power. Monster Game. Monster ScreenClean. Monster Performance Car. Monster Music. Monster Pro. Monster Central. or Monster Sport. The name “Monster” is a registered trademark owned by us in the categories of electronics, music, games, food product, entertainment, and cleaning products. More facts, 30 years ago, the Patent and Trademark office granted Noel Lee the name “Monster”, exclusive of the name “cable”. Although we tried to trademark Monster Cable, it was not permitted. See attached for copy of our original trademark. We have been awarded 5 marks on the word Monster alone.

3) Monster is obligated to defend its marks or risk losing them.
We do not like suing. It is expensive for both parties and is a last resort. It’s our obligation under the Patent and Trademark law to enforce our marks, or lose them. As noted in the link cited below, “companies that tolerate infringing uses of their mark risk losing all their rights in the mark if a third party challenger claims the company abandoned their mark by not enforcing it. Thus, companies cannot pick and choose against whom they are going to enforce their mark.” http://www.marklaw.com/trademark-glossary/confuse.html.

4) Monster must defend its marks just as other well respected companies have done so.
Monster needs to defend our mark just as Apple, Virgin, Ebay, Amazon or other companies who have developed their marks must do so. These companies are within their legal rights to protect their marks as provided for by the Patent and Trademark office. Over the past 30 years we have built many “Monster” brands spanning many product categories, we believe that we have established as a well-known and respected “mark” in our Monster name. So Monster Mini Golf is no different than Yahoo Mini Golf, or Microsoft Mini Golf, or Apple Mini Golf, because the “origin” may be unclear. Could the origins be confused with one of the many marks that we have? We believe so.

At the end of the day, we are asking the courts to decide our rights to our trademarks. It won’t be our decision, it will be the court’s and judges.

See Examples below.

Apple, Inc

Apple has also enforced against a number of people who have used the word “POD” as a trademark. For example: MEDPOD, LONPOD, CONTROLPOD, BACPOD, VIDEO POD, SPYPOD, MYPODDER, PODPRESENTER). You can view more obtained from the U.S. Patent and Trademark website at: http://www.monstercable.com/monster_truth/Apple_TTAB.pdf

In 2008 Apple filed an opposition in the U.S. Patent and Trademark Office against New York City's "Big Apple" logo for the GreenNYC initiative. (http://www.monstercable.com/monster_truth/NYC_Apple.pdf) Apple also filed an opposition against Green Apple Music Arts & Festival for use of an apple in their logo and the word Apple for music event.

Ebay, Inc.

Ebay has an active trademark enforcement program for the word “BAY.” Ebay has proceeded against a number of people who have used the word BAY as a trademark. For example: XS BAY, PENNY BAY, HELPU BAY, RIDEBAY, EVERYTHINGBAY, ONEBAY, FREEBAY, TELEBAY, SWAYBAY, FONEBAY). You can view more obtained from the U.S. Patent and Trademark website at: (http://www.monstercable.com/monster_truth/eBay_ttab.pdf

Virgin Enterprises, Inc.

Richard Branson’s company, Virgin, vigorously enforces the word “VIRGIN.” Virgin has proceeded against a number of people who have used the word VIRGIN as a trademark, including: WILD VIRGIN, VIRGIN PINE NATIVE SHEEP BLUE, EXTRA VIRGIN, VIRGINAL CLOTH, BARELY VIRGIN COCKTAILS, VIRGIN SOIL, VIRGIN TURBAN, VIRGIN YOGURT, VIRGIN INTELLECTUAL PROPERTY, CALIVIRGIN, VIRGIN EYES). You can view more obtained from the U.S. Patent and Trademark website at: http://www.monstercable.com/monster_truth/Virgin_ttab.pdf

Amazon.com

Amazon enforces its "AMAZON" trademark and opposes people who use it or variations. Amazon has proceeded against people who have used trademarks such as: AMAZON TAXI, AMAZON VENTURES, PRINT AMAZON, AMAZON THUNDER DRINK, AMAZN INFO, AMAZON BANK, etc. You can view more obtained from the U.S. Patent and Trademark website at:http://www.monstercable.com/monster_truth/Amazon_TTAB.pdf

5) Wrongful accusations made by Monster Mini Golf.
We have never sued the Chicago Bears. We have not filed 400 lawsuits. We do not pick on small business, as we are also a small business. We don’t like lawsuits any more than any other company, and don’t like spending money on attorneys, especially in light of the current economic situation.

6) We want to end this lawsuit as much as anyone.
We did not want to file a lawsuit. Before filing the lawsuit, we made many overtures offering reasonable and inexpensive licensing arrangement to Monster Mini Golf, which would allow the company to use the name, while at the same time maintaining our trademark rights. The company has refused, so we had no option but to file a lawsuit. Monster Mini Golf can easily avoid the costs of a lawsuit, and save everyone time and money if it would license the mark at very little cost to them, and a fraction of the cost of a lawsuit. We have many attempts to work with Monster Mini Golf’s attorneys to try to settle this to everyone’s satisfaction.

7) Corporate Bully?
It’s important to note that we are not some gigantic corporate bully as portrayed. We are also a small company with a great culture, still family owned with 500 employees in Brisbane California. We are not a public company with deep pockets. It’s not inconceivable that Monster Mini Golf could exceed the reach of Monster Cable with the trademark of Monster. You can come to our web site to meet the Monsters, www.monstercable.com.

I hope this information helps. We value you as a customer, and hope you stay with us. We feel that our product quality and innovation is second to none, and would like for you to continue to enjoy your music and video in the best way possible.

If you would like to talk with me about this, please email me at truth@monstercable.com


Monsterously,
Noel Lee

The Head Monster

List of Some Monster Trademarks in the U.S.:






Mark
First Use
Class No.
Goods

MONSTER
06/15/2000
28
Sporting Goods

MONSTER ATTITUDE
07/02/2001
25
Clothing, namely, t-shirts, sweatshirts, jackets, pants, and caps.

MONSTER
05/19/1978
9
Electrical and musical signal transmitting cable and connectors.

MONSTER
06/01/1989
16
Newsletters and catalogs providing entertainment industry and cable industry news.

MONSTER
12/20/1983
25
Clothing, namely, sweatshirts, t-shirts, pants, jackets, and caps.

MONSTER (new font)
12/31/1998
9
Electrical and optical cables, wires and connectors for use with audio and video components.

MONSTER BASS
07/31/1991
9
Electrical and electronic devices

MONSTER CABLE
05/18/1978
9
Musical and voice signals transmitting cable and connectors therefore.

MONSTER CABLE (cable design)
05/19/1978
6
Speaker wire.

MONSTER CABLE (Stylized)
11/26/1984
9
Computer cables.

MONSTER CABLE SPECIAL
01/20/1982
9
Audio Cable.

MONSTER CAR AUDIO
05/30/1994
9
Car audio cables, power and audio cables.

MONSTER CENTRAL
08/25/1998
9
Electrical signals distribution panels, boards, boxes, consoles and machines; and parts of and accessories for such goods.

MONSTER CENTRAL
08/27/1998
11
Lighting, namely lighting fixtures.

MONSTER CLAMPS
01/01/1990
9
Electrical cable clamps.

MONSTER COMPUTER
12/31/1996
9
Computer Cables.

MONSTER CONNECTION
12/30/1990
16
Newsletter about consumer electronics.

MONSTER DESIGN
01/01/1988
9
Cable connectors for use with audio equipment.

MONSTER DIGITAL
12/31/1998
9
Electrical signal transmitting cable and connectors.

MONSTER FLATSCREEN (Stylized)
11/03/2006
9
Electrical and electromagnetic signal transmitting devices.

MONSTER GAME
11/13/2000
9
Electrical and electronic control devices.

MONSTER GAME (Stylized & Design)
11/13/2000
9
Electrical and electronic control devices.

MONSTER GEAR
10/07/2005
25
Clothing, namely T-shirts, jackets, hats, polo shirts and vests.

MONSTER GEAR
10/17/2005
18
Luggage.

MONSTER HOME THEATRE
06/30/1993
9
Audio cables

MONSTER INTERNET
03/31/1997
9
Computer cables and telephone cables. (as amended)

MONSTER LOCK
08/07/1998
9
Electrical connectors.

MONSTER MARINE
07/01/2004
9
Electrical and electromagnetic signal transmitting devices.

MONSTER MICROPHONE
04/16/1998
9
Microphones, namely microphone cables.

MONSTER MINTS
01/08/2004
30
Mint candy.

MONSTER MOBILE
09/14/2001
9
Mobile telephone accessories, namely battery rechargers.

MONSTER MOUNTS
04/02/1998
9
Loudspeaker mounting units

MONSTER MULTIMEDIA
03/28/1997
9
Audio and video products, namely cables, switch boxes and junction boxes.

MONSTER MUSIC
01/01/1988
41
Production of compact discs.

MONSTER MUSIC
01/01/1988
42
Distributorship services in the field of prerecorded compact discs of various artists. (as amended)

MONSTER MUSIC
06/03/1988
9
Compact Discs.

MONSTER NETWORKING
06/10/1997
9
Connectors and cables for the transmission of data signals.

MONSTER PERFORMANCE CAR
09/09/2004
9
Electrical and electromagnetic signal transmitting devices.

MONSTER PHOTO
12/31/2003
9
Rechargeable and non-rechargeable power cells.

MONSTER POWER
02/01/1992
9
Electrical power control products.

MONSTER POWER (Stylized and Design)
05/27/1998
9
Powerstrips, electrical surge protectors, circuit chargers and UPS

MONSTER POWERCELL
12/09/2002
9
Rechargeable and non-rechargeable power cells.

MONSTER ROCK
02/25/2004
9
Electrical and electromagnetic signal transmitting devices.

MONSTER SATELLITE
01/31/1995
9
Satellite disk-to-receiver interconnects; electrical cables.

MONSTER SOUND
10/29/1990
9
Audio equipment, namely electrical cables and connectors.

MONSTER SPORT
04/01/1992
25
Clothing, namely T-shirsts, jackets, hats, polo shirts and vests.

MONSTER STANDARD
12/31/1979
9
Electrical signal transmitting cable and connectors.

MONSTER STYLE
12/01/1990
41
Classes and seminars in the field of audio systems.

MONSTER TALK
01/03/2006
9
Cellular telephones and hands free cellular telephone kits.

MONSTER TIPS
01/01/1981
9
Electrical audio connectors for stereo and video components.

MONSTER UNIVERSITY
07/31/2000
41
Online training with respect to electronic products.

MONSTER USB
08/20/2001
9
USB Cables and connector devices for computers.

MONSTER VIDEO
02/07/1986
9
Video cables.

MONSTER WIRE AMERICA
11/17/1999
9
Electrical signal transmitting cables and connectors.

MONSTER WIRED
09/30/2001
41
Providing on-line newsletters containing information about cable, power and electronic devices.

MONSTEROUS
11/10/1997
9
Electrical and electronic control devices,

MONSTERS LIVE FOREVER
04/30/1998
9
Electrical and electromagnetic signal transmitting devices.

MONSTERS LIVE FOREVER
04/30/1998
36
Extended warranty services.

EMONSTER
06/11/2001
35
Promoting the goods and services of others by providing hypertext links to the web sites of others.

IMONSTER
06/11/2001
35
Promoting the goods and services of others by providing hypertext links to the web sites of others.


I hope this information helps. We value you as a customer, and hope you stay with us. We feel that our product quality and innovation is second to none, and would like for you to continue to enjoy your music and video in the best way possible. If you would like to talk with me about this, please email me at truth@monstercable.com

Monsterously,
Noel Lee
The Head Monster

Anonymous said...

I'm never using Monster cable again. From now on, Blue Jeans cable all the way. Better quality and lower cost.

By the way, Noel, why don't you tell us why you've decided not to sue Blue Jeans cable.