"Monster" Trademark Battle: Clinic Students Beat the Odds

In 2012, Li Chih, the Silver Spring owner and overseer of a niche online forum called MonsterFishKeepers, filed for a trademark to sell logo T-shirts to other aquarium-owning hobbyists. A few months later, Monster Beverage, the $28 billion energy-drink conglomerate partially owned by Coca-Cola, warned that Chih was infringing on their trademark and threatened a law suit that could cost up to $100,000 to defend.

Monster Beverage's threat is common and typically, smaller businesses will not fight back. Additionally, Monster is known for being very aggressive and has filed more cases with the Trademark Trial and Appeal Board (TTAB) than any other company in the United States. In 2015, Monster fought an Ohio craft brewhouse, saying its "Beast from the East" beer hewed too close to its "Unleash the Beast" slogan; took a Mexican restaurant in San Antonio named Chacho's to court over its "Monster Kong Nachos"; and launched a battle against the Dassault Wine Estates on the argument that buyers might confuse the French vineyard's wines with the drink-making colossus' soda-energy Monster Assault.

But Chih did not back down. Instead, he sought assistance from students at the pro bono legal clinic run by the Suffolk University Law School in downtown Boston and after a long battle--the students won and Monster lost its battle. "It's pretty fun when you're the pain in the ass," said Meaghen Kenney, a 25-year-old law student who worked on the case as part of Suffolk's Intellectual Property & Entrepreneurship Clinic, and who graduates in May. But wasn't it ever, you know, intimidating, staring down one of the most litigious trademark warriors in the business? "That was the most exciting part," Kenney said. "They've got all this money to burn, and I'm doing it for free."

The Players Monster is known for hyper-caffeinated beverages including NOS and Full Throttle and its extreme-sports sponsorships.

Chih is 39 years old and has loved predatory jumbo fish since he was a teenager, when he remembers hefting a 25-gallon fish tank for a mile between his home and D.C.'s Chinatown. At home, he owns 14 aquariums, including a 600-gallon mega-tank, where he watches over a 3-foot catfish and a "very exotic" Asian sea bass called a barramundi. Chih started the forum in 2005 to make friends in the predatory-fish-keeping community, and in the years since the site has grown into what he calls "one of the biggest fish forums in the world." Some of its 100,000 forum members have attended gatherings in California, Australia and Singapore. Chih runs a wholesale distribution company in D.C., for his day job, and at night he tends to MonsterFishKeepers, where site and server costs cost about $3,000 a month. To help cover those expenses, plus sponsorships with groups such as the Capital Cichlid Association ("A Growing Force in the Cichlid Hobby"), Chih sought the trademark and paid for thousands of shirts and decals he could sell at conventions and fish meet-ups.

The Battle

Monster claims that Chih’s ‘MonsterFishKeepers' name and 'M' logo was too similar to the word "monster," a term Chaucer used more than 600 years before the invention of the energy drink. In 2012, Monster sent him a cease-and-desist letter. Chih met with an attorney who advised him that he would need to spend roughly $150,000.00 to protect the name and there was no guarantee that he would come out on top. In the summer of 2012, a member of MonsterFishKeepers who knew of Monster's threat told Chih to reach out to Suffolk's fledgling intellectual-property law clinic, which worked like a small law firm, taking cases that its student attorneys could then research and debate. One experienced attorney would lead, supervise and vouch for the cases, assisted by eight third-year Suffolk law students working 15 hours a week. The case seemed to have strong legal merit, said Anne Hulecki, the clinic's current practitioner-in-residence, whose predecessor, attorney Eve Brown, led Chih's case: The energy-drink company and fish-hobbyist blog operated in completely different markets. The case seemed like it was another example of an underdog being taken advantage of because large companies have the resources to bully small companies.

So the battle ensued. For four years, students researched, crafted arguments and wrote briefs. Monster argued Chih's name would cause consumer confusion and submitted print-outs from Facebook and an online forum of two commenters discussing whether the logo "stole" Monster's design as evidence. The students argued that "monster fish" was a widely used term in the fish-keeping community to describe jumbo sea creatures - a fact that viewers of TV's "River Monsters" and "Monster Fish" likely know already. The Winner

On February 1, 2016, the TTAB issued its decision. The TTAB would not register Chih's logo - its 'M' with devil horns looked similar to Monster's 'M' with claw marks - but prevented Monster from opposing the MonsterFishKeepers name itself. Thus, the mark "engenders such a different commercial impression from opposer's mark that confusion is not likely," the board wrote. "In contrast and as the evidence bears out, because MONSTER precedes FISH and KEEPERS in Applicant's mark, the entire mark will be understood as referencing an extremely large fish that is being kept." When the students learned of the win, Hulecki said, "everyone was ecstatic"; for some students, it was their first big case and first real victory. Chih was happy as he believed the win would encourage other small businesses facing down "trademark bullies and trolls." In a triumphant post, Chih told forum members, "I have beaten the monster!" The clinic has moved onto other cases, including representing photographers in cases where their photos may have been stolen by large companies, and many of the students who worked on the Monster case have moved along, too.

#trademark #infringement #Trademarkinfringement #Monster #LiChih #MonsterBeverage #Trolls

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