Monster Tells TTAB Headphone Mark Is Not A Patent Extension

01-Dec-2015 By Jimmy Hoover

Law360, Washington (November 17, 2015, 12:46 PM ET) -- Electronics maker Monster urged a Trademark Trial and Appeals Board panel Tuesday to salvage its bid to register a design trademark for headphone cables, denying that the move is an attempt to extend the life of a separate patent for the cables.

An examining attorney for the U.S. Patent and Trademark Office had rejected Monster Inc.’s 2011 registration application covering a design for flat cables with contoured edges on the grounds that the design serves a functional purpose to a utility patent Monster owns for tangle-free headphones.

But an attorney for the company told the board during arguments Tuesday that the contoured edges of the design are purely “ornamental” and “arbitrary.”

“The specification [of the patent] doesn’t mention the curved outer contour as having any functional benefit,” Robert D. Litowitz of Kelly IP LLP said. “It’s not even a preferred embodiment.”

Litowitz said the application was instead “designed to look cool” and that “that’s part of Monster’s appeal.” According to Litowitz, Monster acquired a trademark license for the design from Dr. Dre’s Beats Electronics after the two ended a partnership to develop the latter’s original product line.

“Monster feels very strongly that they’ve created something that goes beyond the scope of the utility invention,” Litowitz added.

Defending her rejection of the application, the agency’s examining attorney Kim Moninghoff said that the contoured edges were too insignificant to the broader design in the application to “save this mark” from rejection.

“It’s just so minor,” Moninghoff told the panel, saying that it “would take a lot of focus” for consumers viewing an advertisement for the product to even notice the contoured edges.

Moninghoff went on to criticize the design as “generic” and that the design has already been adopted by Monster’s competitors.

Those competitors, responded Litowitz, are “copycats” and “me-toos.” Nevertheless, he added, the question of consumer distinction is something Monster should be able to prove at a later date.

“What we’re asking for is the opportunity down the road to prove distinctiveness,” Litowitz said.

Founded in 1979, Monster has around 500 patents and has “revolutionized” the field of headphone cables with “game-changing products,” Litowitz said.

No strangers to trademark battles, the Brisbane, California-based company went to bat against a small computer memory company's trademark that included the word “Monster”, and in 2013, won a ruling from TTAB that the other company was confusingly similar to the audio/video cable manufacturer's name.

Monster is represented by Robert D. Litowitz, Linda K. McLeod and Lindsay B. Allen of Kelly IP LLP.

The examining attorney is Kim Moninghoff.

The proceeding is number is 85318060, in the U.S. Trademark Trial and Appeal Board.

—Additional reporting by Bill Donahue. Editing by Rebecca Flanagan.

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