14 October 2009

Fighting the Monster

Vermonster Monster

Matt Nadeau of Rock Art Brewery in Vermont was accused by the Hansen Beverage Company of infringing on its “Monster” trademark, and of diluting the Monster mark. Hansen demanded that Rock Art stop selling, advertising, and promoting its tenth anniversary Vermonster barley wine. Matt is fighting back.


To prove infringement of a trademark, Hansen must prove that the Vermonster beer creates a likelihood of confusion with its own Monster energy drink. Basically, by claiming infringement, Hansen is saying that consumers cannot tell the difference between an energy drink and a bottle of beer, that, in at least a few states, may only be purchased at a liquor store due to its 10% ABV.

The use of a mark in the sale of goods is infringement if it is likely to cause consumer confusion as to the source of those goods, or as to the sponsorship or approval of such goods. Courts look to several factors to determine the likelihood of confusion: the similarity of the goods and the marks, evidence of actual confusion, the similarity of the distribution channels, and, the degree of caution exercised by the typical purchaser.

Hansen’s claim is that the “Vermonster” mark looks and sounds so similar to the “Monster” mark that the average consumer would either confuse the two, or think that the Vermonster is owned, sponsored, or affiliated with Hansen.

Consumers are not likely to confuse a can of energy drink with a 22oz bottle of beer in the specialty beer section. The marketing for the two products must necessarily be different due to the Federal Alcohol Administration Act. The two products have completely distinct distribution channels. Rock Art’s label clearly identifies that a Vermont brewery is behind the Vermonster, and not Hansen. In fact, the only thing the two products have in common is that they are liquid consumables.

Brooklyn Brewery produced a product called Monster Ale long before Hansen introduced the Monster energy drink product. Even if Hansen did want to enter the beer market, it would have to think twice about using the Monster name. Brooklyn Brewery would have a much stronger infringement claim.

Another large problem with Hansen’s argument is that “monster” is not a unique term. It is not a brand name like Coca-Cola or Pepsi. We see the term “monster” in books, movies, on cookie labels at coffee shops, cables and home theater accessories, and even on well known job search engines.


Hansen’s second claim against Rock Art is that the Vermonster dilutes the “Monster” mark. A dilution claim is a means for a company to keep its product’s mark from loosing its uniqueness. Xerox and Kleenex have spent large amounts of effort and money on dilution suits and marketing to keeping their brand names unique. Which is why, today, we are supposed to say “copy” and “tissue” rather than use the brand name for other similar products. The mark owners do not want the Xerox and Kleenex brands to be diluted.

Unlike an infringement claim, Hansen does not have to prove a likelihood of confusion with a dilution claim. So, theoretically, Monster could sue a bicycle maker for selling a “monster” bike.

To win a dilution claim, Hansen must prove that its mark is famous and that Rock Art’s use of that mark dilutes the distinctive quality of that mark. Hansen must prove that the power of the “Monster” mark is weakened through its identification with dissimilar goods.

Unfortunately for Hansen, “monster” is a generic term used by story tellers, coffee shops, home theater accessory companies, and even job search engines. It is not a unique name as Xerox and Coca-Cola are. In fact, monster.com does not lead consumers to an energy drink, but to a list of potentially better jobs. Clearly, this is a use of the “Monster” mark in commerce, identified with a very dissimilar good.

The law is on Rock Art’s side, and so, it seems, is the media. Matt’s message has had a viral following thanks to twitter. While we believe companies have the right to protect their property, whether physical or intangible, they do not have the right to frivolously assert claims and shut out other companies.
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