A monster of a case shines light on trademark litigation

A small business takes on Monster Beverage after the company accuses the business owner of trademark infringement.

It’s a classic David versus Goliath tale. An online forum called MonsterFishKeepers, run by predatory fish enthusiast Li Chih, attempted to file a trademark. Chih applied for the trademark so he could sell T-shirts and other merchandise to help fund the costs associated with running the forum. Unfortunately, shortly after filing for the trademark, energy drink mega-giant Monster Beverage threatened the small business, accusing it of infringing on Monster’s trademark. According to a recent report by The Washington Post, this move was not a surprise to those familiar with trademark litigation. Apparently the energy drink company has a reputation for taking a "scorched-earth approach" to any situation that has the potential for trademark infringement.

More on trademarks

Trademarks are defined by the United States Patent and Trademark Office (USPTO) as:

[A] word, phrase, symbol, or design, or a combination thereof, that indentifies and distinguishes the source of the goods of one party from those of others.

Trademarks are valuable legal tools that can protect the brand name or logo that is used to identify a business. The USPTO notes that a successful trademark application can result in protection, providing legal support to dispute any potential infringement.

A successful application generally must include a trademark that can be registered and easily protected. One of the primary considerations reviewed by the USPTO when considering an application is whether the proposed trademark poses any potential for confusion with other, existing marks. If so, the next consideration is whether or not the two businesses are providing similar goods or services. As a result, a mark that is found to have similarities to an existing mark may still be successful if it provides a different set of goods or services.

Application to this case

In this instance, the fish enthusiast had two arguments. First, the similarity was weak since his logo incorporated the title MonsterFishKeepers. Since the word "monster" was immediately followed by fish keepers, it was argued that the mark was distinguishable from Monster Beverage.

Next, the business was able to argue that their mark provided a service completely separate from that provided by Monster Beverage. Instead of making energy drinks, or any food product for that matter, MonsterFishKeepers was providing a forum for fellow fish enthusiasts to share tips and stories.

Ultimately, the Trademark Trial and Appeal Board ruled in favor of the fish enthusiast, preventing Monster Beverage from challenging the MonsterFishKeepers name.

Lessons for fellow entrepreneurs considering trademarks

This case provides an example of the intricate nature of trademark law. As a result, entrepreneurs either considering applying for a trademark or facing a potential infringement are wise to seek the legal counsel of an experienced trademark infringement attorney. This legal professional will review the details of your case and work to better ensure your business interests are protected.