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An estimated 5-minute read
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The little well known Eminem Song, “Bully” rings in my head, every time I hear about a trademark Bullying case. The ugly 3 headed Hydra had previously been pillaging and looting only American companies, but now it looks like it has crossed the borders and entered India as well, with The San Francisco-based apparel retailer giant Gap, taking on little known environment e-commerce firm Green the Gap, alleging trademark infringement over the word ‘Gap’, and reportedly planning to on send out notices to at least five other small and medium businesses. This phenomenon of a Multi-National Company or a huge Corporate Entity issuing notices to small sized or lesser known firms might be in its nascent stage in India, but is quite popular and rampant in the United States of America. The USPTO ( The United States Patent and Trademark Office) has even issued its own definition of Trademark bullying, which is widely used.

 

The USPTO defines it as , “the practice of a trademark holder using litigation tactics in an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark holder.”

 

This basically means that companies, usually of a large size are enforcing litigation tactics against registered trademark holders, dissuading them from using their own trademarks. The USPTO recognized that this was a growing problem, and in April 2011 released their initial findings to Congress. The origin of the report however, is slightly mired by political benevolence as most good laws usually are. This time it was a Vermont Senator, Senator Patrick Leahy who while introducing the report said

 

“I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses. We saw a high-profile case like this in Vermont last year involving a spurious claim against Rock Art Brewery. When a corporation exaggerates the scope of its rights far beyond a reasonable interpretation in an attempt to bully a small business out of the market that is wrong.”

 

The Senator’s words pretty much sums up the view of the United States judiciary prior to the Rock Art Brewery case. Let’s take a look at why this one case, triggered the filing of a comprehensive report by the USPTO.

 

The Goliaths in this case were Hansen Beverage Co. (maker of the wildly popular Monster energy drink) who demanded that tiny Rock Art Brewery (David) in Vermont cease using the name "Vermonster," because the mega corporation thinks the masses will confuse their world famous energy drink with Rock Art's beer. Based in Morrisville, Vermont, Rock Art is owned and operated by Matt and Renee Nadeau. They employ seven people. "Vermonster," which has been in production since 2007, comes in in 22-ounce brown glass bottles and is sold in the states of Vermont, Massachusetts, Pennsylvania, New Jersey, Connecticut and Arizona. While on the other hand, Hansen Beverage, is a publicly traded company that employees hundreds. Their gross sales for the second quarter of 2009 were $345.8 million, up 6.7% from $324.1 million in the same period last year. They sold more than $1 billion worth of Monster energy drink in 2009.

 

Now that we know our characters let us see how the plot unfolded, Hansen sent a strongly worded cease and desist letter to RAB( Rock Art Brewery) . Hansen asserted a likelihood of confusion over the term Vermonster for beer and Monster for energy drinks.

 

RAB sought legal councel and was advised that confusion was unlikely, for three basic reasons:

 

The names themselves were quite unique and different, namely being Vermonster and Monster. The lawyers who advised RAB felt that the name is not akin enough to on its own cause confusion to the public

 

Secondly, Vermonster was a Beer while Monster was an Energy Drink, and was well known around the United States for the same.

 

Lastly, the shape, texture, and color combination were different where on one hand Monster Energy Drink was a Black Metal Can with a big unique “M” while Vermonster was a brown bottle with a unique logo and backdrop.

 

 

However, despite the law being on its side, RAB was advised to comply with the cease and desist letter and remove the logo from its bottle, simply because Hensen could outspend them.

 

Matt Nadeau, owner and operator of Rock Art Brewery however had other ideas. He launched a series of videos, tweets, opened up a Facebook page, all combating the bully. Further, he started marketing his small time product even more aggressively marketing it as the drink against bullies, and just to be sure, he went to his local Senator at that time, any guesses? Yes it was Senator Patrick Leahy, who helped him. Soon, public opinion grew, Matt started to receive fan mail, and an outpour of responses supporting his move to fight the bully, these included tweets, Facebook pages, multiple bloggers, local grocery shops boycotting the Monster energy drink etc. At that point Matt was thrilled with the support, but still didn’t have the money to face them. He said, “ This is just about principle, Corporate America can't be allowed to do this, in this day and age. It's just not right.”

 

Then finally, on October 23, 2009 Rock Art Brewery issued its final statement regarding the incident with Hansen Beverage and Monster Energy Drink. No official comment could be located on the Hansen Beverage or Monster Energy Drink websites. They had reached a settlement. Vermonster could keep its name.

 

The effect of Vermonster case as we had earlier seen, was rapid and widespread. The Trademark Technical and Conforming Amendment of 2010 was passed by the U.S congress and the Secretary of Commerce examined small businesses and abusive trademark enforcement. The impact of the Vermonster case is still being felt in the U.S with the Congress releasing its findings and still searching for better solutions in the face of Trademark Bullying

 

This attitude of small market companies is truly admirable when big time corporates, start knocking on their doors with cease and desist letters. I don’t think the case could be summed up better than in the words of Matt himself, who said this in response to the original cease and desist letter, 'Too bad, I'm already here.' I've been here. And I'm already brewing beer."

 

What does this case mean for India as a whole? Probably not much, but for the people over at Green the Gap, this should serve as an inspiration that the big bully doesn’t always have to be rectified in the principal’s office, when justice can be served on the playground.

Tagged in: bullying gap Trademark US
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