Sell something, anything, under a name that includes the word “Monster” and sooner or later you will likely receive a cease and desist letter from Monster Cable Inc., a company that has earned a reputation for coming after anyone who uses the word “monster” in anything but its literal sense (and sometimes even then, as Walt Disney found out while merchandising creatures from the movie Monsters Inc.).
Do a Google search for “’Monster Cable’ trademark bully” and you’ll find a member of the Hall of Shame, Corporations Division. They’ve issued scores of cease and desist letters and sued dozens of companies large and small, from The Boston Red Sox to monstervintage.com, an online used clothier. For this they take a lot of grief.
Their defense? “We have an obligation to protect our trademark; otherwise we’d lose it,” explains Monster Cable founder Noel Lee.
Really? Maybe for other sellers of home entertainment accessories, Monster Cable’s product area, but, say, a mini-golf course? A trademark does not typically extend further than the goods used under the name. And Monster Cable does not sell used clothes or operate golf courses.
Monster has a defense for this. They consider their mark “famous,” a term of art in Trademark law that gives extra protection to marks that are so intertwined with the company that no other company can use them. Take Coke or Pepsi, for instance. Nobody but the Coca-Cola Company or PepsiCo can use those names no matter the product being sold.
But is the Monster Cable mark famous? According to J. Thomas McCarthy, author of “McCarthy on Trademarks and Unfair Competition,” the very treatise Monster Cable cites for its claim, such a designation cannot be claimed by a company, it must be granted by a court and no court has so granted.
Nevertheless, Monster Cable clearly wants the famous designation and vigilance in protection is key to maintenance of Trademark rights. Can they be faulted for concluding that protecting the mark as though it were famous will make such a judicial grant more likely?
As an added wrinkle to Monster Cable’s spate of seemingly frivolous suits, they often win (or at least gain in settlement). Monster.com added a link to Monster Cable on its website (check the bottom, it’s small but it’s there). The Boston Red Sox changed their marketing for the seats above The Green Monster (so called since 1947).
Their most notable and celebrated losses were not to big players like the Discovery Channel’s Monster Garage, but to little ones like Monster Mini Golf, of all places.
So how did the little guy win? “We blogged nonstop, around the clock, for weeks, and enlisted much of our staff to do the same,” says Christina Vitagliano who along with her husband Patrick founded Monster Mini Golf. Monster Cable received at least 200 angry consumer complaints. After speaking with the Vitaglianos, Mr. Lee decided to drop the lawsuit and agreed to pay up to $200,000 of their legal expenses. “We have made the decision,” says Mr. Lee, “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.”
Monster Cable probably deserves the complaints it gets, but this can’t be mere mean spiritedness. It’s too expensive, the victories too meaningless, the damage to their reputation real and growing.
They want the prestige of having a famous mark and both the courts and the law tell them this will help them get it. They’re not crazy and they’re not wrong, even though they should be.