Monster CEO Proud of GC’s Sliminess

Pic: Wizards of the Coast

The Wall Street Journal has a piece about uber-litigious cable maker Monster Cable Products Inc., which has most recently set its sights on the Monster Mini Golf franchise. This is the latest in a long series of aggressive trademark claims by the cable maker.

Monster Cable would have you believe that its use of the word “monster” has transcended common parlance and reached the trademark stratosphere: the “famous mark” designation. That status means the word has become so entwined with the one product that there is no non-confusing use (WSJ uses the “visa” and “Visa, Inc” example). That’s why it felt justified in suing, among others, Disney for the film Monsters, Inc., the owners of the Red Sox for a bunch of “Green Monster” related uses (although I’d normally support anyone suing the Sox, this seems like it’s a bit out of line), and Discovery Channel for Jesse James’s Monster Garage TV show.

Here’s the best part of the WSJ article, though:

David Tognotti, Monster Cable’s general manager and an attorney, says the company considers “Monster” a famous mark — on a par with Barbie dolls or Camel cigarettes. “We’re protecting our mark as if it’s a famous mark,” he said in an interview in Monster Cable’s headquarters, where the walls are lined with framed copies of the company’s trademarks and patents.

Mr. Tognotti cited a chapter on famous marks in the law book “McCarthy on Trademarks and Unfair Competition” by J. Thomas McCarthy, a noted expert in the field.

But in an interview, Prof. McCarthy expressed doubt that Monster Cable possesses a famous mark. He said such determinations are made by courts. Mr. Tognotti acknowledges Monster Cable hasn’t obtained such a court ruling.

That’s right, the treatise author himself doesn’t agree with the proposition he’s cited for.

More on Tognotti, including his background, his nicknames, and the BigLaw firms he uses, after the jump.

According to a Daily Journal Extra article from 2004, (based on this reprint), Monster Cable CEO Noel Lee is proud (?) of his lawyer: “All lawyers are slime, and Dave’s the slimiest of them all.” Tognotti’s self-given monster nickname is “chief legal monster.” Apparently, it’s a requirement that they all have stupid titles. The CEO is actually the “head monster.”

Tognotti (USF BA, USF JD) joined the company as GC from Metrocom, a San Jose wireless company. Prior to that he spent two years as a litigator at San Jose boutique Rolhf & Waslaf (does boutique just mean “small” now or does it still have to be good?).

For better or worse, Tognotti is naming names on outside counsel:

According to Tognotti, the company’s other outside counsel include tax attorney David Colker of Gray Cary Ware & Freidenrich in East Palo Alto; international lawyers John McKenzie and Lothar Determann at Baker & McKenzie in San Francisco; and intellectual property litigator Ian Feinberg of Mayer, Brown, Rowe & Maw in San Francisco.  The company also uses intellectual property litigator Marcy Bergman of San Francisco’s Cooper, White & Cooper, who is serving as lead counsel for Monster Cable Products in its lawsuit against the Discovery Channel.

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