US mark owner bows to public opinion in MONSTER dispute 12 Jan 09
A US brand owner known for filing aggressive trademark infringement suits has agreed on a landmark settlement that ignites a debate on the fine line between policing a valuable mark at the expense of a good reputation.
Monster Cable, owner of a trademark for MONSTER CABLE in Class 21 sued Monster Mini Golf, a glow-in-the-dark mini golf centre, in May 2008. The cable manufacturer is known for fighting various uses of the word ‘monster’ in an attempt to establish a famous mark. But, as Karin Segall, partner in the trademark, copyright and advertising practice at Foley & Lardner in New York, says: “Bad public relations have long been a concern of any significant trademark enforcement programme.” This effect was proved most recently by the dramatic wave of support for Monster Mini Golf, together with the backlash against Monster Cable.
Christina Vitagliano, proprietor of Monster Mini Golf, wrote to WTR to announce that Noel Lee, founder and chief executive officer of Monster Cable, has agreed to drop the case and to pay any costs incurred on the plaintiff’s side. “Lee has pledged personally to re-evaluate Monster Cable’s position in the future in regards to trademark enforcement,” wrote Vitagliano. But Segall is not convinced. “I question whether Monster Cable will significantly change its policing programme going forward,” she commented.
In a letter to Vitagliano, Lee writes: “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 or risk losing it.”
Public opinion has always weighed heavily on the minds of in-house counsel and their advisers – and now even more so in the age of the Internet. “The advent of the Internet as a huge public forum for bringing attention to so-called trademark bullying has only increased this concern,” notes Segall. “It is part of the balancing that all good lawyers should consider in advising their clients and that all savvy business people should take into account.”
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