Wednesday, January 7, 2009

Monster Cable and Monster Mini Golf Reach Amicable Resolution to Trademark Battle

Like many other blogs, I previously wrote (link here) about the trademark infringement battle between Monster Mini Golf and Monster Cable Products, Inc.

Yesterday, the “Stop the Bully” webpage created by Monster Mini Golf after being embroiled in a trademark dispute with Monster Cable reported that the parties reached an amicable resolution to their dispute – with Monster Cable dropping the lawsuit and the opposition against Monster Mini Golf thereby allowing Monster Mini Golf to proceed with registering its mark MONSTER MINI GOLF. WebProNews had an article about the settlement. If you want to get Monster Cable’s own perspective of the ongoing events surrounding the case, you can read their own webpage “Monster Truth on Monster Mini Golf.”

Noel Lee, president of Monster Cable Products (or as he likes to call himself, “The Head Monster”), apparently spoke with Christina and Patrick Vitagliano, the owners of Monster Mini Golf, about the situation and followed-up with a letter to them (which you can read in its entirety here).

Noel Lee
(not such a Monster after all)

While I’m always happy to see a small business owner faced with the costly prospect of having to litigate a specious trademark infringement lawsuit brough by a goliath corporation reach an amicable resolution – and even more impressed by the fact that Mr. Lee has apparently agreed to reimburse the Vitaglianos for their attorneys fees – I get the impression that Mr. Lee settled only because of the public backlash and not because he recognized the overreaching nature of his claims of infringement and dilution. His letter reads:
I will say that this is a landmark kind of situation, as public opinion wins over what is the right thing to do for trademark protection of a famous mark. We have made the decision that public opinion, and that of our valued customers is more important than the letter of the law that requires us to prevent the dilution of our mark risk losing it.
The “right thing” to do for trademark protection of a famous mark? Lee is acknowledging that in his opinion the “right thing” to do would be for a company like Monster Mini Golf to be prevented from using the word MONSTER in connection with a mini-golf course. Lee honestly believes that allowing a company like Monster Mini Golf to operate under that name diminishes Monster Cable’s claims to protection of its MONSTER mark under federal trademark dilution law (which protects “famous” marks from even non-confusing use by others where such use dilutes the value of such famous mark). So why hasn’t Lee and Monster Cable gone after drink maker Monster Energy or job hunting website These would seem to diminish Monster Cable’s claim to fame as much as (if not more than) Monster Mini Golf. What is it about these two companies’ use of the word MONSTER in connection with their goods and services that did not “require” Monster Cable to take action “to prevent the dilution of our mark risk losing it”?

Finally, its disingenuous for Lee to assert that the law requires Monster to prevent dilution of Monster’s mark “or risk losing it.” At most, Monster Cable, by not going after every single company in the world using the word MONSTER in connection with there business (regardless of the goods or services sold), weakens its ability to rely upon federal dilution law to attack companies using the word MONSTER in a non-confusing way on non-competing goods. But Monster Cable is not going to “risk losing” its trademark rights to the MONSTER mark in connection with cables and other similar goods sold by Monster Cable merely by allowing some mini-golf course to go by the name Monster Mini Golf.

Of course, I don’t want to come off too critical of Mr. Lee because, by settling this matter in the way he did and reimbursing the couple for their attorney’s fees, he did indeed do something very good and worthy of praise – even if he may have done it for the wrong reasons.


Kyle said...

I have some knowledge of Monster Cable's trademark practices. Check out Monster Cable's opposition to MONSTER DEER BLOCK and MONSTER DADDY.

But, for your information, Monster Cable did go after BOTH Monster Energy Drink and (if you go to the bottom of the webpage, you will see a disclaimer and a link to Monser Cable). They also went after Disney for MONSTERS, INC. the Boston Red Sox for THE GREEN MONSTER, and hundreds of other small companies. I think a whole law review article could be written about their trademark protection strategy.

Monster Mini Golf said...

Hi guys,
For what it's worth, I just thought I'd put my two cents in here....
In addition to the settlement information in the story above, there are a few relavent points that are worth mentioning.

First, what makes this settlement is different from the ones that came before us are that there is no hokey press release stating some ridiculous untruth like "We are all best friends now", and there is no "Gag-Order", suppressing information. We are free to discuss the details of this case, and answer questions from the public, honestly.
The turning point came when we were on a conference call with Noel and Kevin Lee, and lawyers from both sides, and we were getting absolutely nowhere with lawyers governing every move. About an hour into it, it got so annoying, that someone suggested kicking all the lawyers out, and we all agreed to give that a try. From there, the conversation flowed pretty smoothly, and we were able to speak freely and frankly with Noel and Kevin, and both sides got an understanding of each other's positions. While we ultimately agreed to disagree on each other's core positions, it helped GREATLY to speak human-to-human, without lawyers, paving the way to settlement.

Next, and probably the most noteworthy thing that came out of this, is that Monster Cable has decided to rethink it's position on trademark defense in the future. This is absolutely the most significant piece of information in this entire ordeal, because it means that if they keep their word, then their won't be anymore oppositions or lawsuits for anyone who uses the word Monster in commerce, oppositions in the future will be reserved ONLY for marks that are confusingly similar to "Monster Cable", or other marks that they own.
Ultimately, this is what the world wanted. We will see over time whether actually do what they say they are going to do, but they have promised to do it, and that's the first step.

Don't forget, we are not warlords, and we never wanted to destroy them. Change is what we wanted, and change is what we were promised. I'm not suggesting that anyone embraces them with open arms, but change has to start somewhere.
Remember, I personally (along with my wife and our company) just got my ass kicked both financially and emotionally for the last year+ of my life, and I am a big enough man to come on this board with no gag-order, and no legal obligation to them whatsoever, and say that if they've really changed their MO, then the world is a better place.

Rather than speculate, we will wait, and watch their actions over the next few weeks, months, years. The proof will be in the actions, and they know the world is watching.
So for now, let's accept their words, and evaluate their actions. Time will tell.
-Patrick Vitagliano