I don’t know if we should be so casually derisive about this after reading the article. I kind of see JD’s side of things, enough to at least make the case that they have a legitimate claim. The case raises an interesting question about what constitutes parody, because the product in question certainly seems to barely straddle the line between parody and a legitimate attempt to profit off the trademark. I’ll be quite curious to see how the judges decide.
Isn’t the trademark unenforceable in that case because Jack Daniel’s the drink and the book are in totally different markets and trademarks only apply if you’re competing in the same space.
No. Trademark does NOT only apply if you are competing in the same space. Yes, in general that is true. BUT you also can't make it look like a well known company is now competing in a different space.
Take the dog toy example. It looks like a bottle of Jack Daniels, uses the same logo except it is called "Bad Spaniels" with a dog on it. BUT will the average consumer think this toy was sold by Jack Daniels? If so, that can potentially hurt the Jack Daniels brand, and is thus a no no. Now (I am NOT a lawyer) if they called it a Jack Daniels dog toy, but used a completely different logo and didn't make it look like a bottle of Jack Daniels, they may have a case that it isn't trademark infringment.
In this case of Monster, I don't think there is any chance that anyone would think that the word "Monster" in the title refers to the energy drink (unless there was the triple slash logo used in the game)
On the other hand, Monster Energy DOES own a trademark of the word "Monster" in the video game arena. (But with 1800 other "monster" related trademarks, I think this will be tough for Monster Energy to win)
You’re making the almost certainly false assumption that Jack Daniels doesn’t have a long history of publishing printed material with this design that well predates this author, including books.
> A judge would likely decide that, sure. After you've engaged $$$ representation and wasted months of your time defending it.
For stupid things like this, where the stakes are so low[1], I'd be tempted to represent myself[2]. It'll still cost me hours to appear in court, but it will be much less money than if I paid a lawyer and it will cost me a lot less than the other party[3].
TBH, every person of average intelligence should be taught the basics of defending a claim in their jurisdiction: what steps are involved, what paperwork to file at each step, where to file it, what deadlines there are, how to request extensions for deadlines, what constitutes evidence, how to get written testimonies under oath, etc.[4]
These things are not hard, and for low-stakes things there's a greater expected value in taking the gamble on self-representation than in hiring an attorney. Much of the time, for low-value claims, you can simply show up and request that the matter be moved to small-claims court[5]. Most courts actually would prefer to move a suit for $1k to a small claims court.
[1] Where the product made a total of maybe $1k, the damages are going to be under $100, and that's maybe too high too, because losing this would mean changing the game's name (or even only the font in the title), which is going to be cheaper than even 2 hours of an attorneys time. The only real danger is cost orders against the defendant, but these are a) rare, and b) decided by the court, using the context of what both parties spent. You aren't going to represent yourself and get hit with a cost order for $100k.
[2] I'm not a lawyer and I'm not in the US, but I've represented myself multiple times for things that were much less obvious, and defended all successfully. Courts aren't stupid; all you see in the news when courts make stupid decisions are the outliers. You don't see the thousands of sensible decisions a judge made each month.
[3] So it'll be an expensive lesson for Monster if they decide to drag it out. I'll lose billable hours for myself. They'll lose money and goodwill.
[4] I found, in my district, that the court is very patient with any person defending themselves and would take the time to explain all of the above even in session, and adjourn for the defendant to perform all the steps that were explained.
[5] Small claims don't usually handle trademark infringement claims, though, so not in this particular case.
There is a limit though. Always consider "how would this look in front of a judge". There should be a cost paid for being overly litigious in this regard.
It's more like Xerox probably sort of liked that people viewed them as interchangeable with the act of photocopying, but eventually this had textbook consequences for their ability to prevent people from using their name for things they didn't like.
I personally would have suggested offering you a license to use the web address, but for whatever reason that ilk of lawyers prefer antisocial methodologies.
The Aspirin and Heroin trademark revocations were punitive and due to the war, not due to lack of proper defense.
That’s why you will see non-Bayer acetylsalicylic acid literally marketed as “Aspirin” but even though the Kleenex trademark is considerably weakened, you still don’t see competitors openly labeling their products with the name.
"Hey, can you xerox me a few copies of this document real quick? Yeah, just use the Canon all-in-one on my desk." Little clunky, but I'm certain it's been said somewhere/somewhen.
Leads to perverse outcomes at times, especially in orgs big enough to have folks full time employed looking at such matters.
[Edit: I'm not saying this is good. Yes, cooler heads should prevail. I'm explaining what can lead it to occurring when it seems nonsensical.]