That, too, was fairly typical: Big companies file trademark actions all the time, and most small businesses quickly turn and run for fear of going bankrupt in court. Monster was infamously aggressive, filing more cases than any company in America last year with the Trademark Trial and Appeal Board, the nation’s top trademark court.
But this time, something different happened: Chih sought help from a group of college students at a pro bono legal clinic run by the Suffolk University Law School in downtown Boston. And earlier this month, after years of legal wrangling, the truly unusual happened: Chih and the students won.
“It’s pretty fun when you’re the pain in the ass,” said Meaghen Kenney, a 25-year-old law student who worked on the case as part of Suffolk’s Intellectual Property & Entrepreneurship Clinic, and who graduates in May.
But wasn’t it ever, you know, intimidating, staring down one of the most litigious trademark warriors in the business? “That was the most exciting part,” Kenney said. “They’ve got all this money to burn, and I’m doing it for free.”
The case, which was previously reported by legal news service Law360, has shone a light on the kooky corporate world of trademark wars. Big and small businesses often collide over the rights to some of corporate America’s most valuable assets: Company logos, slogans and brands.
Businesses that don’t police and defend their trademarks risk losing control of their influence or ceding their power to rival brands. But that fighting philosophy has led some firms into seemingly irrational turf wars: Sportswear giant Under Armour, for instance, has fought a Christian clothing company over the word “armor.”
Monster, known for hyper-caffeinated beverages including NOS and Full Throttle and its extreme-sports sponsorships, argued MonsterFishKeepers’ name and ‘M’ logo stepped too closely to its protected use of the word “monster,” a term Chaucer used more than 600 years before the invention of the energy drink.
Monster did not return requests for comment, but its scorched-earth trademark strategy fills court records: In 2015 alone, Monster fought an Ohio craft brewhouse, saying its “Beast from the East” beer hewed too close to its “Unleash the Beast” slogan; took a Mexican restaurant in San Antonio named Chacho’s to court over its “Monster Kong Nachos”; and launched a battle against the Dassault Wine Estates on the argument that buyers might confuse the French vineyard’s wines with the drink-making colossus’ soda-energy Monster Assault.
Chih, 39, has loved predatory jumbo fish since he was a teenager, when he remembers hefting a 25-gallon fish tank for a mile between his home and D.C.’s Chinatown. At home, he owns 14 aquariums, including a 600-gallon mega-tank, where he watches over a 3-foot catfish and a “very exotic” Asian sea bass called a barramundi.
Chih started the forum in 2005 to make friends in the predatory-fish-keeping community, and in the years since the site has grown into what he calls “one of the biggest fish forums in the world”: Some of its 100,000 forum members have attended gatherings in California, Australia and Singapore.
Chih runs a wholesale distribution company in D.C., for his day job, and at night he tends to MonsterFishKeepers, where site and server costs cost about $3,000 a month. To help cover those expenses, plus sponsorships with groups such as the Capital Cichlid Association (“A Growing Force in the Cichlid Hobby”), Chih sought the trademark and paid for thousands of shirts and decals he could sell at conventions and fish meet-ups.
But Chih was bowled over in 2012, when Monster sent him its first fiercely worded cease-and-desist, and again when he met with an attorney who said he’d need to spend about $150,000 to protect the name — with no guarantee he was going to win.
“It was like a dent on me, a dent on my motivation,” he said. “It was kind of like, why do they want to go after us? We’re just a bunch of fish-keepers.”
In the summer of 2012, a member of MonsterFishKeepers who knew of Monster’s legal blitzkrieg told Chih to reach out to Suffolk’s fledgling intellectual-property law clinic, which worked like a small law firm, taking cases that its student attorneys could then research and debate. One experienced attorney would lead, supervise and vouch for the cases, assisted by eight third-year Suffolk law students working 15 hours a week.
The case seemed to have strong legal merit, said Anne Hulecki, the clinic’s current practitioner-in-residence, whose predecessor, attorney Eve Brown, led Chih’s case: The energy-drink company and fish-hobbyist blog operated in completely different markets.
“It seemed like another case of an underdog being taken advantage of,” Hulecki said. “We see large companies with lots of resources being so vigilant that sometimes it doesn’t make sense, and this was a case of that.”
But to prove it, the students had to rebut the well-worn arguments of Monster’s legal force. Over the last four years, the students would head into the clinic’s small cubicle-laden office at night, after their classwork and paying jobs were done, to craft arguments, write briefs and research case law.
“It was exciting, and the more we researched, the more we saw the opportunity to fight back where a lot of businesses can’t,” said Alex Chiulli, a 33-year-old recent graduate who now works as an associate at New England law firm Barton Gilman. But it also began to consume their brains: “You go into a CVS and you see a Monster energy drink and your mind starts to go back to the case.”
The energy-drink company had argued Chih’s name would lead to consumer confusion; for evidence, lawyers submitted print-outs from Facebook and an online forum of two commenters discussing whether the logo “stole” Monster’s design.
But the clinic “mini-lawyers” argued that “monster fish” was a widely used term in the fish-keeping community to describe jumbo sea creatures — a fact that viewers of TV’s “River Monsters” and “Monster Fish” likely know already.
On Feb. 1, the Trademark Trial and Appeal Board finally unveiled its decision: The board would not register Chih’s logo — its ‘M’ with devil horns looked similar to Monster’s ‘M’ with claw marks — but handed him a decisive victory, in preventing Monster from opposing the MonsterFishKeepers name itself.
The mark “engenders such a different commercial impression from opposer’s mark that confusion is not likely,” the board wrote. “In contrast and as the evidence bears out, because MONSTER precedes FISH and KEEPERS in Applicant’s mark, the entire mark will be understood as referencing an extremely large fish that is being kept.”
When the students learned of the win, Hulecki said, “everyone was ecstatic”; for some students, it was their first big case and first real victory. Chih was happy, too, believing the win would encourage other small businesses facing down “trademark bullies and trolls.” In a triumphant post, Chih told forum members, “I have beaten the monster!”
The clinic has moved onto other cases, including representing photographers in cases where their photos may have been stolen by large companies, and many of the students who worked on the Monster case have moved along, too.
When Kenney graduates in May, she plans to join Brown, the clinic’s former supervising practitioner, at Bricolage Law, a young firm defending small businesses against threats from corporate giants.
“It’s hard to describe why I felt so passionate about it. It just seemed to me so — unfair,” she said. She remembered back to when she first heard about the case, before the victory: “I immediately was like, ‘This is what I want to do for the rest of my life.'”