For more than a year, business owner Christina Vitagliano has been locked in a battle over her company’s name – a trademark dispute that she says is senseless, but nonetheless costly.
Vitagliano, who along with her husband, Patrick, founded Providence-based indoor miniature-golf company Monster Mini Golf, has been attempting to register that name with the U.S. Patent and Trademark Office since December 2006.
But Monster Cable Products Inc., a leading audio and video cable company in Brisbane, Calif., has objected, saying the four-year-old mini golf company – which has 22 franchises nationwide – is infringing on its own “Monster” trademarks.
The dispute escalated last month when Monster Cable filed a lawsuit to stop the Vitaglianos and the company’s franchisees from using the word “monster,” claiming that the public will be confused by the similarity of the companies’ names.
The lawsuit, filed in U.S. District Court, Eastern District of California, seeks unspecified damages and attorney fees.
Still, the Vitaglianos aren’t backing down from the David-and-Goliath battle. Several attorneys in Rhode Island and in New Jersey are handling the case on Monster Mini Golf’s behalf.
Just how much she has paid in legal fees so far, Christina Vitagliano wouldn’t say. “All I know is that it’s been painful,” she allowed recently.
The dispute is a matter of principal now, she said.
“Can Monster Cable be confused with Monster Mini Golf? No, it can’t,” Vitagliano complained. “It’s just common sense.”
Trademarks are a vital part of most businesses – a name, logo, image or phase that often defines a company. Coca Cola, Xerox, Microsoft and McDonald’s are just a few of the companies that spend millions of dollars developing marks, establishing them and keeping them fresh in people’s minds. It’s no wonder those companies also fight to protect those marks.
There are services available that alert subscribing companies of possible infringements or if another company is attempting to register a conflicting trademark.
Those types of conflicts – or perceived conflicts – happen all the time, according to Paul Campellone, an attorney who handles trademark infringement cases at Adler, Pollack & Sheehan.
Corporate clients frequently have attorneys issue warning letters to other companies, or have them respond to letters they’ve received. Most conflicts are either resolved quietly or dropped with little discussion, said Campellone, who is not involved in the Monster Mini Golf case.
“It’s somewhat a game of poker because [a company] may be willing to spend the money to have an attorney send a letter indicating cease and desist,” he said. “But when the response is ‘no,’ many of them just fall by the wayside. They don’t pursue it because it’s not worth it to them.”
To others, it is worth it.
Warwick-based Beacon Mutual Insurance Co. recently sued a rival, OneBeacon Insurance Group Ltd., saying it defied a court order to stop using its name and logo in Rhode Island.
That order was the result of Beacon Mutual’s successful trademark infringement claim against Bermuda-based OneBeacon Insurance in 2005, arguing that the name and the use of a similar lighthouse logo would confuse consumers.
Providence-based Citizens Financial Group fought for more than three years with a much smaller bank, Citizens National Bank of Evans City in Pennsylvania, over the similar names after Citizens Financial purchased 345 branches from Mellon Financial Corp. in 2001.
An out-of-court settlement in 2005 allowed Citizens Financial Group to keep the name while Citizens National Bank changed its name to NexTier Bank.
Campellone said a priority for judges in infringement cases is to determine how much confusion the marks cause among the public.
“The courts look at all sorts of factors,” he said. “Who are your customers? Are they the same customers? How sophisticated are they? Would they know the difference between the companies?”
Other factors include the distribution of the services or products and the trademark itself.
“How strong is the mark?” Campellone continued. “In this case, we’re dealing with the word ‘monster’ – that’s a word in the English language. There are different grades of protection.”
Kodak is a trademark that would have a higher protection because “it means nothing,” he said. “If someone uses that word, it looks like someone is actually trying to infringe on someone else’s rights as opposed to using a common word in the language.
Christina Vitagliano, whose company’s corporate name is Monster Entertainment LLC, followed the requirements of the federal Patent and Trademark Office.
She filed an application in late 2006, which was reviewed by an examining attorney who investigates obvious infringements and determines whether the mark is offensive.
Monster Mini Golf passed that review and was “published” in a public document that allows others to view the applications. There’s a 30-day deadline to object.
It wasn’t long before Vitagliano was notified that Monster Cable had objected and the case was headed to the U.S. Trademark Trial and Appeal Board.
In the meantime, Vitagliano learned that Monster Cable has aggressively attempted to protect its “Monster” trademarks – there are about 50 of them. In the past, targets of the cable product company have ranged from Walt Disney Co. – which distributed the animated movie “Monsters Inc.” – to the Monster Seats above the left-field wall at Fenway Park to a small online used clothing store called Monstervintage.com.
In some of the cases, businesses changed names or signed licensing agreements. In at least one case, a small business closed because of the legal costs, Vitagliano said.
Vitagliano said the company has not had any legal decisions go its way yet.
“This company has bullied people into thinking they own the word ‘monster,’ ” Vitagliano said. “That’s like owning the word ‘orange.’ ”
“There’s a reason why trademarks exist,” she added. “But then there is the abuse. You can’t own the word ‘monster.’ ”
A Monster Cable spokesman did not respond to several phone messages seeking comment.
But a written statement published on the Web site Audioholics.com in April, Noel Lee, Monster Cable CEO, denied his company was acting like a “corporate bully.”
“Being a champion of the entrepreneur and having started Monster in a garage with no money myself, I would be the last person to want to stop someone who had a legitimate right to use a trade name for their business.”
Monster Cable was successful in requesting that the Monster Mini Golf’s trademark application be put on hold while the lawsuit plays out. There is no court date yet.
Would Vitagliano consider changing her company’s name? “Never,” she said. “This is my creation. Literally, I built it with my hands, and now I’ve got 22 franchisees [which] I’m responsible for. I’m not the kind of person that’s affected by money. It’s loyalty and passion.”
She’s also confident that she’ll come out victorious.
“Eventually we’ll get to the point where we’re standing side by side in court,” she said. “And then it will be done with.” •
