A belated thanks to Candice Kim and Professor Leah Chan Grinvald for sharing their insights and perspectives in our recent webinar on trademark bullying.

One topic we discussed is Backcountry.com’s recent back-down to backlash over its trademark enforcement activities concerning the Backcountry mark.

The example is a harsh reminder to trademark counsel of the worst case scenario when a trademark enforcement campaign comes under fierce public attack.

In response to the boycott and backlash, Backcountry.com not only issued a public apology, it admitted to fumbling how it pursued trademark claims, it admitted to making a mistake and to misjudging the impact of its actions.

Backcountry.com even made a public promise to make amends with those adversely impacted by its actions, and it has taken steps to rebuild public trust.

Last but not least, especially for all the trademark types in the crowd, news reports in November were that Backcountry.com had fired its trademark counsel.

Last week Backcountry.com revoked the power of attorney for its prior trademark counsel and appointed new USPTO counsel, doing the same at the TTAB too.

Not knowing the facts of how or where things may have gone wrong with prior counsel, it will be interesting to see what enforcement will occur going forward.

Back to the webinar, we also focused attention on strategies and tactics brand owners can employ to develop intelligent trademark enforcement campaigns.

One slide that webinar attendees really liked from our backpack is this one:

It visually illustrates how a brand owner might consider analyzing watch reports.

Obviously a precursor to its development would be a trademark strength analysis.

Keep in mind, this particular graphic is only an illustration; the perfectly spaced concentric circles should not be interpreted as trademark lines, as we know trademark lines are more subjective than measurable real estate property lines.

The final graphic for a brand would reflect not only an intelligent and defensible trademark enforcement strategy, but attempts to balance any PR concerns too.

Last week I had the fortune of spending the week at the Shot Show in Las Vegas, capturing this brand collage of exhibitors for an event at a restaurant in my hotel:

Interestingly, Kryptek has a Battlefield to Backcountry registration due for USPTO maintenance in days, and surprisingly, it was never opposed by Backcountry.com.

With all binoculars on Backcountry.com’s promise that “[w]e only want what’s best for the whole community and we want every person and business in it to thrive” time will tell what tools may remain in new trademark counsel’s backpack.

Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.

Chrysler and Moab Industries LLC (“Moab”) have been battling over the Moab mark for years. Moab holds the federally registered trademark Moab Industries®. Its business involves customization or uplifting vehicles—primarily JEEP® Wrangler® vehicles manufactured by Chrysler.

In 2012, Chrysler sought to register a “Moab” trademark, but the application was denied based on a likelihood of confusion with Moab’s mark and another mark. On December 12, 2012, Moab filed a suit asserting claims for unfair competition and trademark infringement related to the Moab Industries® mark. This case is scheduled for trial in April of this year.

In another suit filed last month, Moab sued FCA US LLC (this is the name Chrysler changed to in 2014) alleging that Chrysler had tortiously interfered with its business expectancy and defamed it. In the Complaint, Moab alleges that Chrysler sought to punish Moab for not being able to register, or at least, to concurrently use the Moab mark. Specifically, Moab alleges that Chrysler asked Moab’s main supplier Chapman Automotive Group of Scottsdale, Arizona (“Chapman”) to quit selling vehicles to Moab. In making this request, Chrysler allegedly accused Moab of flipping vehicles, which had an adverse effect on Chrysler’s fair allocation of vehicles to its dealers. Further, Moab claims that Chrysler sent a “blacklist” of companies and individuals that were purportedly exporting vehicles to its dealerships. The dealerships were told not to sell Chrysler vehicles to those on the list. If they did so, there would be a chargeback for each vehicle sold, or worse consequences. Moab contends this was done to coerce Moab to drop its pending trademark infringement suit against Chrysler, or to put Moab out of business so that it can appropriate the Moab trademark. Chrysler has not yet answered, so we do not know its side of the story yet.

Some have characterized the lawsuit as an attempt to address Chrysler’s “trademark bullying” activities. The purported actions by Chrysler are a bit different than the allegations of overreaching by a trademark owner that are usually at issue when “trademark bullying” is discussed.

bullseye“Trademark bullying” has been a hot topic in recent years and has been discussed in many DuetsBlog posts. You may recall my colleague Steve Baird wrote about this topic and explained the importance of trademark owners taking action to maintain the scope of their initial rights to protect their valuable intellectual property. Steve used a great analogy to a bullseye to explain these rights.

Specifically, Steve explained that “if the original scope of the rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.” This is obviously not a good result for the trademark owner. Accordingly, actions that some may term as “bullying” are sometimes merely actions to protect a trademark owner’s valuable rights.

In the recently filed case by Moab, there is a bit of a twist in that Moab is claiming that Chrysler is using “bullying” tactics to drive it out of business to obtain its valuable trademark rights. It will be interesting to read Chrysler’s side of the story and see whether a judge or jury finds that this is a case of “bullying” or not. The outcome of the trial in April related to Moab’s claims of trademark infringement and unfair competition will likely impact the recently filed case too.

Jason Voiovich, VP, Marketing, Analytics & Research Services, Logic PD

distinctive |disˈtiNGktiv|
characteristic of one person or thing, and so serving to distinguish it from others: juniper berries give gin its distinctive flavor.
– New Oxford American Dictionary

I hadn’t heard of kombucha, much less Certified Organic craft kombucha. (Somewhere, a hipster is crying for me.) I had to look it up. To the rest of you who are as new to this as I am, here’s what Wikipedia has to say:

“Kombucha refers to any of a variety of fermented, lightly effervescent sweetened black or green tea drinks that are commonly used as functional beverages for their unsubstantiated health benefits.”

If the last part of that statement seems a little like a backhanded compliment, you should see the Revision History on this Wikipedia article!

But I digress. I’m certainly not here to discuss the merits of drinking kombucha. However, as a matter of market positioning, the Barefoot brand of Certified Organic craft kombucha follows a familiar organic marketing playbook.

  • Play the healthful angle. Anecdotal evidence is just fine for this market. That said, Barefoot Bucha is much more careful than most others I see regarding the “unsubstantiated claims” issue.
  • Play up the “organic cred” of the founder or founders. In this case, Barefoot is the brainchild of husband-and-wife team Ethan and Kate Zuckerman.
  • Play the “mission” card. Barefoot claims to have saved over 350,000 bottles by insisting their customer refill versus bottle and ship. It’s an interesting business model and the logical foundation of their “Barefoot” brand name. The name implies a smaller “footprint” on the global ecosystem.

It’s that last part that gets them in trouble. Specifically, wine giant Ernest and Julio Gallo markets a Barefoot Wine. I’ll bet you’ve heard of those guys.

From a trademark perspective, is it a problem that a brand of organic fermented tea and a brand of fermented grape drink share a name? Gallo seems to think so, and has started the nastygram process.

To get a better sense of the legal issues involved, I recommend reading Lisa Provence’s C-VILLE Weekly column on the subject. Our own blogger extraordinaire Steve Baird gets extensive quote time in it. It’s a good read, a little over my head in a number of places, but it seems to come down to this: One person’s infringement is another person’s fair use. I’m certainly not qualified to offer an opinion on the legal merits. But the branding; that’s another story.

The trademark bullying issue is a red herring. Barefoot, as a brand name concept, sucks.

The “barefoot” concept relates to how the product is distributed and not what it is. That’s not necessarily a poor strategy if it wasn’t so easy to duplicate. There’s very little unique about their approach. In fact, asking your customers to refill containers is pretty common in the organic foods industry.

But more than an approach easily duplicated, the brand name itself contains a fatal flaw. Common words such as “barefoot” (by definition) are not distinctive. Before you trot out “Apple”, “Target” or “Delta” as counter examples to prove me wrong, consider that these brands are only seen as distinctive after they’ve spent literally billions of dollars in advertising over the course of multiple decades.

For a broader perspective, take a look at Interbrand’s ranking of the world’s top 100 brands. How many “common words” do you see? I’ll save you the trouble: No matter how you slice it, it’s always less than 10%.

As a smaller company, you simply can’t afford want to play those odds.

Using a common word simply isn’t memorable, and you need all the help you can get. Your objective with a brand name must be to choose one that your target audience will associate with nothing else.

I’m sorry, while it is certainly vitally important from a societal perspective, “making a smaller impact on the environment” is not exactly a unique value proposition at your average Whole Foods. It’s table stakes. It’s expected. It’s forgettable.

So here’s the situation: Barefoot Bucha’s small (but motivated!) group of fans and followers have taken social media to attempt to shame Gallo into backing down. Barefoot Bucha has righteousness on their side. Gallo has millions of dollars (and time) on theirs. The bad news for Barefoot Bucha? While one can certainly point to a few cases where public shaming has worked against a trademark bully, the vast majority of cases don’t turn out that way.

If it were me, I’d take advantage of the attention Barefoot Bucha is getting right now to kick start a rebranding effort.

P.S. Back in 2012, Sara Rufener and her brand “Live the Beauty of Being Strong” got the virtually the same smackdown from then-seemingly-good-guy Lance Armstrong and his Livestrong legal team. At that time, we wrote about how to use corporate judo to defeat the effort. But alas, he seems to have defeated himself. If you’re interested, have a read here.

Travelers Cos., a large property-casualty insurer, sent a cease and desist letter to a small consulting firm in Anchorage, AK demanding that it stop using the image of an umbrella in connection with its business. Travelers has sent similar letters to other companies and taken action before the Trademark Trial and Appeal Board against similarly situated companies. Is Travelers a trademark bully or responsible trademark owner?

Context is important to answer this question. In a registration context, it is important for trademark owners to protect the scope of their rights and the conceptual strength of its mark. Depending on the state of the Principal Register at the time the trademark owner files its trademark application, that may mean attempting to keep the Principal Register clean of any mark that includes, for example, an umbrella design. Or it may mean allowing some umbrella design marks to be registered and not others because some trademark applications fall within the scope of rights that the trademark owner is trying to protect.

In the real world marketplace, the use of an arguably confusingly similar mark must be put in context in terms of its impact on the scope of Travelers rights, for example. The consulting company is Anchorage, AK is probably a single location business that does not market its services outside of Anchorage, AK. Accordingly, the impact that this use would have on Travelers’ scope of rights or commercial strength is probably negligible. Too often, companies forget to put into context the use of the arguably infringing mark before sending cease and desist letters. But as the Travelers story demonstrates, these letters are becoming more public and so consideration needs to be given to each case before making the decision to send a cease and desist letter.

This Bo might not have won the Heisman Trophy, he might not have played in the NFL or MLB, he might not have enjoyed a lucrative Nike endorsement deal, and he might not have been named ESPN’s greatest athlete of all time, but this Bo — the defiant Vermonter, a/k/a Bo Muller-Moore, knows how to defend his “Eat More Kale” trademark and turn a trademark bully into fried chicken:

As you know, we have been following very closely — and very critically — for more than three years now, Chick-fil-A’s efforts to prevent registration of Bo’s EAT MORE KALE trademark, based on Chick-fil-A’s federally-registered rights in the EAT MOR CHIKIN fast-food slogan:

This dispute really became for me the poster-child example of trademark bullying, and keep in mind, I frequently report on media allegations of trademark bullying, but I have rarely agreed with the pejorative label, for a variety of reasons.

So, Bo, hearty congratulations to you!

What do you suppose was the deciding factor in Chick-fil-A chickening out and deciding not to pursue the filing of a formal Notice of Opposition with the USPTO? Was it, Governor Peter Shumlin’s support? Your able pro-bono legal team? Your successful Kickstarter campaign? Your deft use of the social media shame-wagon? The USPTO finally seeing clearly? Or perhaps the persistently persuasive DuetsBlog coverage?

Or, will we need to await completion of the promised documentary film, to know from Bo?

Either way, Chick-fil-A finally appears to have found a sense of humor, sending this email in response to a Huffington Post inquiry: “Cows love kale too!”

Let’s hope the cows have learned a lesson about straying past the trademark fence on the farm!

Last week more allegations of “trademark bullying” appeared in the headlines. This time, Victory Energize, an energy drink company based in Missoula, Montana, is calling out Monster Energy for sending a cease and desist letter to Victory. Monster’s demand letter is said to charge Victory with infringement of Monster’s distinctive trade dress. So, what say you?

Victory’s preemptive strike and declaratory judgment complaint seeks to gain a hometown advantage, asking a federal court in Montana to declare that Victory Energize’s trade dress does not constitute unfair competition or violate any federal, state, or common law. It also asks for an award of costs and attorneys fees, labeling Monster a “trademark bully” for alleging likelihood of confusion claims that Victory asserts have “no legal or factual basis,” while dredging up some unflattering history pinning Monster as the poster-child for so-called prior “trademark bullying” conduct:

“Because of what is perceived as an overly aggressive stance on protecting its trademark rights beyond their actual scope of protection, [Monster], and its predecessor, Hansen Beverage Company, have been accused of being a “trademark bully” in the media and in law review articles. See, e.g., Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wis. L. Rev. 625 (using Monster Energy as the example of a trademark bully in the very first paragraph); Sara M. Andrzejewski, Leave Little Guys Alone!: Protecting Small Businesses from Overly Litigious Corporations and Trademark Infringement Suits, 19 J. Intell. Prop. L. 117, Fall 2011.”

“In part, [Monster’s] conduct (via its predecessor-in-interest, Hansen Beverage Company, which was perceived as a trademark bully led to Senator Patrick Leahy seeking Congressional funding to study trademark bullying. See, Ex. C: Rob Petershack, Trademark Bullies to be Studied, WTN News, Oct. 10, 2010; see also. Trademark Technical and Conforming Amendment Act of 2012; S. 2968, 111 Cong. (2d sess. 2010) (Pub. L. No. 111-146).”

What matters in this case, however, will be the allegations relevant to the facts of this dispute, not others’ opinions about prior Monster conduct unrelated to Victory Energize. Given the likely fame of the iconic Monster trade dress (although Monster gets an F for not seeking any federally registered trade dress protection, only one of its registrations even claims rights in the color green), the directly competitive nature of the products, and the close similarity of at least the visual impressions of the above logos, I’m having a hard time getting all jacked up about a “trademark bullying” claim here.

Amazon product reviews seem to suggest that consumers are able to differentiate the different energy drink brands, but that doesn’t refute the possibility that survey evidence could establish that consumers assume a connection with Monster and Victory — perhaps Victory is Monster’s lower cost version? Will discovery end up showing that Victory mimicked the elements of Monster’s trade dress to gain commercial traction and the media attention it has obtained through the filing of this lawsuit? Seriously, should Victory be surprised that Monster actually came knocking?

After all, the visual appearance of these competing logos is pretty similar. Are there differences? Yes, but the similarities will be weighed more heavily, and the price point of these products and their condition of purchase, probably puts them in the category of impulse purchases (which are more likely to result in confusion).

And, what about a dilution claim, where no likelihood of confusion is required for Monster to prevail? Monster must have a heavy dose of brand equity bottled up in the visual impression of its iconic green/white/black aluminum cans. Victory’s declaratory judgment complaint is silent on the question of dilution of a famous mark. Perhaps because Monster didn’t discuss in its opening cease and desist letter, but I suspect that if Monster answers it will not only counterclaim for trade dress infringement, but also take the position that its trade dress comprising a black background, with a green stylized single letter, and white stylized brand name above the word ENERGY in the color green is famous and diluted by the Victory trade dress for competing goods.

Depending on how Monster crafted its cease and desist letter, it might also decide to bring its own action in California and ask the Montana action to be dismissed as anticipatory — basically start a fight over where the fight will be decided. Query whether doing so, however, will play into Victory’s argument that Monster is Goliath, picking on David, simply because it doesn’t like cheaper competition (Victory’s energy drinks are positioned as low cost, only 99 cents per can). Time will tell, so stay tuned.

The complaint is pretty bare bones, but it appears to place too much emphasis on the fact that the USPTO issued this stylized trademark registration:

The problem for Victory, of course, is that the mark it registered claims no color as part of the mark, so the color similarities are invisible to the USPTO. So, this may be perhaps yet one more example of why registration decisions from the USPTO should not control or bind federal judges in infringement or dilution litigation.

Although it is clear that Monster knew about this filing and did nothing to oppose it, can you blame Monster, given the absence of a color claim?

What Monster might be blamed for is waiting too long to object, as Monster clearly knew about Victory’s application more than two years ago, and Victory claims to have been in the marketplace since at least as early as January 1, 2012, more than two years ago. What I’d want to know is when Monster first became aware of the Victory trade dress shown above in green/white/black aluminum cans (USPTO specimen was filed in November of 2012, so was Monster watching the progress of this application?).

Marketing types, would you expect the Victory trade dress to pass scrutiny of the legal team? Are you surprised that Monster Energy cares? Does that make it a trademark bully?