Is 5-Hour Energy Inherently Distinctive?

On September 18, 2012, in Trademarks, by Brian A. Hall

Typically I start these posts by identifying the UnIP. However, this post is different. It involves a mark that was originally UnIP, but through acquired distinctiveness, became IP. That, in and of itself, is not all that uncommon. However, the additional twist is that what was once UnIP, according to the USPTO, has been deemed inherently distinctive IP by the Court.

The trademark at issue is 5-HOUR ENERGY. This is a mark that was initially refused registration for being merely descriptive when filed in 2008. Fast forward to 2011, after litigation and an examining attorney reconsidering its mere descriptiveness refusal, the 5-HOUR ENERGY mark was registered based upon acquired distinctiveness. Fast forward to today, the United States Sixth Circuit Court of Appeals, in a trademark infringement lawsuit by the owners of 5-HOUR ENERGY against the creator of “6 Hour POWER” energy shot, has held that 5-HOUR ENERGY is suggestive. Recognizing the difficult to discern and hazy line between descriptive and suggestive trademarks, the Court of Appeals found that the cognitive inferences required to determine how the energy would be transferred, used, and applied were sufficient to enable the mark to qualify for inherent distinctiveness.

The lesson to be learned is that trademark owners who have the energy (wink wink) may be able to not only overcome an initial mere descriptiveness refusal (and the dreaded UnIP tag that goes along with it) but also eventually be deemed to own an inherently distinctive trademark rather than one that has acquired distinctiveness.

Whether 6 Hour POWER creates a likelihood of consumer confusion with 5-HOUR ENERGY remains to be seen as the Court of Appeals has reversed and remanded the United States District Court for the Eastern District of Michigan.

Innovation Ventures, LLC v. N.V.E., Inc., 10-2353, 2012 WL 4039843 (6th Cir. Sept. 13, 2012).


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