Cease & Desist Letter from an 800 Pound “Monster” Results in Action by Congress
By: DEAN R. KARAU
February 2010
Hansen Beverage Company manufactures and distributes the MONSTER ENERGY® energy drinks.
According to Hansen, over the last eight years it has spent many millions of dollars promoting and establishing awareness for its MONSTER trademarks around the world and has spent millions of dollars registering and protecting its marks. (For example, see the article “Freek” Beats Back a “Monster” Claim of Confusion in Energy Drink Trademark Battle of “Aggressive” Graphics, Trademark Topics™, July 2007.)
Rock Art Brewery, LLC, a small Vermont brewing company, makes a variety of beers. In 2007, it began brewing THE VERMONSTER beer, and filed a U.S. trademark application for the mark in 2009.
When Hansen learned about Rock Art’s use and attempt to register its THE VERMONSTER mark, its attorneys fired off a letter, demanding that the brewery immediately cease use of VERMONSTER in connection with beverages, expressly abandon its U.S. trademark application, and, for good measure, “pay to Hansen its attorneys’ fees incurred in connection with this matter.” (Click on the Monster cans above to see the letter.)
In response, Rock Art offered to not use THE VERMONSTER for energy drinks if Hansen would leave the mark alone in the beer market.
However, according to Rock Art, “[Hansen’s] lawyer stated that they are not concerned with energy drinks, that Monster wants to now get into beer.”
As the dispute continued, the story line picked up traction, first in Vermont media and then nationally. Local merchants stopped selling MONSTER brand energy drinks, and some stopped selling all Hansen products. Supporters started a Facebook™ group. Rock Art’s owner released a six minute video on YouTube™ describing the history of the brewery and the dispute, and the video then went viral. (Click on the above image to see the video.)
The outrage worked. Hansen president, not enjoying the role of the 800 pound monster, said that his company never intended to drive the brewery out of the market but only wanted it to promise to stay out of the energy drink business.
Rock Art’s owner said he understood that big corporations need to protect their rights, but also said that there is a need for trademark reform, “the small guy needs to be able to fight a reasonable battle.”
Is the story finished? Not quite. Vermont’s powerful U.S. senator, Patrick Leahy, heard his constituent’s plea.
Senator Leahy introduced legislation to assist trademark owners in maintaining the protection of their brands, which passed the Senate unanimously on January 28. (For other provisions of the law, see Foreign Registrants Using Madrid: Your U.S. Use Affidavits Are Treated Differently – But The Rules May Be Changing For The Better, elsewhere in this issue of Trademark Topics.™)
Senator Leahy’s passed bill includes a requirement for the Department of Commerce (which oversees the United States Patent and Trademark Office) to study whether large corporations are misusing the trademark laws to harass small businesses by exaggerating the scope of their trademark protection.
Hansen first earned the wrath of Vermonters. Now, as the catalyst for possible legislation clamping down on trademark enforcement, it may be poised to earn the wrath of those who want to legitimately enforce their trademark rights.