Pryor Cashman Partner Dyan Finguerra-DuCharme, Co-Chair of the Trademark Group, and Counsel William Thomashower, a member of the Intellectual Property Group, talked to Bloomberg Law about defending a pro bono client against what they see as "bully" behavior by Monster Energy Co. in its approach to trademark defense.
In "Monster Called 'Bully' for Fighting Reclaimed Taunt, Toy Marks," Dyan discusses her client's use of the brand "Titty Monster," which drew trademark opposition from Monster:
Many brands try to keep their marks as distinct as possible by policing marks with only marginal chances of causing confusion, but few are as aggressive as Monster. For small businesses on the other side, prohibitive litigation costs often give Monster the ability to unilaterally force rebrands through an opposition proceeding at the TTAB—or even just the fear of one.
The one hope is often finding an attorney willing to take a case for free, as Brooke Comegys did for her "Titty Monster" branding. In school, bullies tormented Comegys with the nickname after she developed early, according to her attorney Dyan Finguerra-DuCharme of Pryor Cashman LLP. As an adult, she reclaimed the epitaph as a brand, and has had success selling hats and other items.
A trademark examiner found no conflicts in the US trademark registry with her proposed registration, but Monster opposed it in June.
"She was bullied as a kid, creates this mark to reclaim the bullying of her, and now she gets bullied by a corporation," said Finguerra-DuCharme. "There's just no risk for consumer confusion."
William also comments on the case, noting that the specific mark in question is unlikely to cause brand confusion:
"In trademark law, the first word is considered more memorable. Especially this first word," said William J. Thomashower of Pryor Cashman. "'Monster' is a regular everyday word. You only get to protect that word for that thing you do."
"There's no feasible way that someone could confuse the two."
The Pryor Cashman team includes Dyan, William, Kaveri Arora, Kate Garber, and Lauren Schulman.
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