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Fighting to win? It takes more than energy

Fighting to win? It takes more than energy

5-Hour Energy's strategy to trademark phrase runs out of juice at TTAB

Innovation Ventures LLC, owner of Living Essentials Marketing LLC — which markets 5-Hour Energy — has maintained an energetic growth rate for sales and revenues on the strength of its category-buster energy booster product. But the company and its entrepreneurial owner Manoj Bhargava hit a wall at the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office.

Innovation Ventures had applied to register the phrase hours of energy now for “dietary supplements” and “non-alcoholic liquids for human consumption, namely, energy shots.” But the USPTO examiner refused registration, determining that the phrase was incapable of functioning as a trademark to identify the source of origin of the listed goods.

Innovation Ventures appealed the decision to the Trademark Trial and Appeal Board, but the Board affirmed the USPTO's refusal to register. The TTAB began its explanation upholding the denial to reverse by admitting that advertising phrases and slogans are not unregistrable per se. However, it also explained, a phrase or slogan that does not function as a trademark to indicate the source of the applicant’s goods and to identify and distinguish them from others cannot be registered.

The critical inquiry in determining whether a slogan functions as a mark, explained the Board, is how the proposed mark would be perceived by the relevant public. The examining attorney successfully argued that the company uses the phrase hours of energy now in conjunction with other phrases to tout the characteristics of its product. In deciding how the average purchaser will perceive and react to applicant’s proposed mark, both the USPTO's examiner and the TTAB do look to the applicant’s submitted specimens to see if they convey use as a mark. Matter that is merely informational is not registrable as a mark.

To support the argument to deny registration, the examiner had relied heavily on the applicant’s own specimens of record and the company's website. Innovation Ventures had submitted three specimens showing how it uses its proposed mark: on the containers (shot bottles) for the goods, on point-of-purchase cartons containing the shot bottles, and on stand-alone displays.

On the first two of these, the shot bottle and the carton, the phrase “Hours of energy now*” is used together with other informational text, in less prominent position than the mark 5-HOUR ENERGY. The phrase is presented as part of a bullet-point listing of self-laudatory phrases detailing apparent characteristics of the product: No crash later, Sugar free, and 0 net carbs. And, although the phrase Hours of energy now is followed by an asterisk, there is no indication on the specimens as to what the asterisk may be intended to reference.

The USPTO's examiner also submitted copies of web advertising from two companies that distribute the product online. The Board explained that these advertisements clearly identify 5-HOUR ENERGY as the applicant’s mark, by displaying the wording prominently. In one case, the use was accompanied by the registration symbol, ®.

However, with respect to the applicant's slogan hours of energy now, the distributors use the phrase as the applicant does: that is, together with other similar informational phrases previously noted. The TTAB used this evidence to support its holding that the relevant purchasing public has been educated to understand that the phrase is informational for a product that is fast-acting and long-lasting.

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As such, the TTAB held that the applicant’s hours of energy now phrase, as actually used by the applicant and evidenced by the specimens of record, merely informs prospective purchasers that its products will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours. Because the proposed mark would be perceived as merely touting the fast-acting and long-lasting qualities of the product, and not identifying its source of origin, the Board ruled, the slogan is incapable of functioning as a trademark.

This case prompts several questions. First, one might wonder if the company could have avoided this outcome at the TTAB had it used the trademark symbol TM as opposed to an asterisk on its product packaging. This is doubtful. While the Board clearly did not take the presence of the asterisk as referencing an intent by the applicant to claim trademark protection for the slogan, it did explain that the mere intent that a term function as a trademark is not in and of itself sufficient to make a term a trademark, any more than attachment of the trademark symbol would be.

After this case, it does not appear that placing the TM symbol on a phrase would automatically obviate the issue of whether a claimed mark functions as a trademark. As the Board explained in the 1987 Remington case (In re Remington Prods. Inc.) affirming the failure of a mark to function, use of the trademark symbol on a product does not make unregistrable matter into a trademark.

Second, it is interesting how claims by the applicant’s own distributors came back to hurt the applicant’s case. This shows how, even though a company might love its distributors and would want them to help publicize its product, the marketing organization needs to make sure that their efforts protect the company's trademarks and align with its marketing and trademark strategy.

Finally, I wonder whether conducting a survey would have helped the applicant in this situation. If the focus of the Board’s inquiry is to determine how prospective purchasers view the applied-for mark, then had Innovation Ventures conducted a consumer survey and seen favorable results—findings that support the argument that the phrasing has a strong secondary meaning for consumers—surely this would have made it more difficult for the Board to hold that potential consumers do not view the phrase as a mark.

But Innovation Ventures conducted no such survey. Maybe the company figured it wouldn't work to continue arguing with the TTAB; maybe it just didn't have the energy. Now we'll never know.

Contributing Author

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Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...

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