The energy drink businesses is big, big business. From Red Bull and Monster to that strange 35 ounce purple can that you saw in a gas station once, consumers love energy drinks. Along with Red Bull and Monster, 5-Hour Energy is one of the most successful and recognizable brands. Innovation Ventures, LLC, the owner of the 5-Hour Energy® brand of energy drinks, recently lost its attempt to register the mark “HOURS OF ENERGY NOW.” (Decision available here).
We’ve discussed the pros and cons of descriptive versus distinctive names before. The 5-Hour Energy® brand is a prominent example of how marketing, advertising, and commercial success can turn a bland, descriptive name into a strong, memorable brand. It also helps if your product is one of the first of its kind on the market. It’s hard to believe that the product has been around since 2004, making this year the tenth year anniversary (I’m crossing my fingers for a limited edition 10-Hour Energy anniversary product). Even though the 5-HOUR ENERGY mark is not inherently distinctive, Innovation Ventures was able to obtain a federal registration by claiming that it had acquired distinctiveness among the public based on its advertising, volume of sales, and commercial success.
Unfortunately for Innovation Ventures, though, it doesn’t matter how many bottles are sold, advertisements seen, or dollars made, if you are not using the name/term/phrase as a trademark, you won’t obtain a registration. In this case, the Board ruled that the applied-for mark HOURS OF ENERGY NOW would not be perceived as a trademark, but instead merely an informational phrase. It appears that this isn’t the first time Innovation Ventures has run into specimen problems, having abandoned trademark applications based on specimen refusals for their FIX THE TIRED, TIRED SUCKS, BEAT THE 2:30 BLUES marks and not even submitting statements of use for their abandonded NO 2:30 FEELING LATER. and NOT A DRINK JUST ENERGY marks.
The Lanham Act does not preclude slogans from registration, but the slogan must be used as a source identifier. The test is whether the public would perceive the term or phrase as a mark (as used on the goods). For example, JUST DO IT versus PROUDLY MADE IN THE USA. The public’s perception is determined by examining the specimens submitted with the application. Innovation Ventures submitted the three specimens below:
On the bottle and the carton, the phrase appears as part of a four bullet point list:
- Hours of energy NOW
- No crash later
- Sugar free
- 0 net carbs
The same “Hours of energy now. No crash later.” appears on the point-of-sale display as well. Based on these specimens, the Board concluded that consumers would perceive the mark as merely informational, informing consumers that the products “will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours.” (based on their other filings, I wonder if Innovation will want to apply to register this phrase too?)
The situation is another in a long line of examples of a two important lessons be careful when submitting specimens of use. There are numerous refusals that could have been easily avoided had the applicant taken more time to select an appropriate specimen of use. The only thing worse than making a mistake is making an avoidable mistake. In this case, it may have been difficult to fix.
The mark is so descriptive that it would have been tough to get around. However, Innovation Ventures dug itself a pretty big hole for their attorneys to attempt to scratch and claw their way out. The specimens do not capitalize any term other than the “Hours,” there is no use of a TM symbol, the phrase appears as part of a list of four other information phrases (I’m guessing not even Innovation Ventures attempted to register “O NET CARBS” as a mark….), and the text is displayed in the same font, size, and location as these other informational phrases. This brings us to the second lesson: get your attorney involved early. It doesn’t have to be extensive involvement. Ideally, the initial proposed packaging and advertisements would be shared with your attorney to review for red flags, but at a minimum get a quick review before finalizing packaging for production.
Working with a trademark attorney early on in the process can help you avoid costly (and unnecessary) legal fees, which in turn could help you avoid that 2:30 feeling when you receive the bill…
EPILOGUE: if anyone knows where I can buy a can of Surge, please let me know. I wouldn’t need 5-Hour Energy if I could my hands on some Surge. I’m not picky, any vintage will do, although I recall 1999 being an excellent year for Yellow-5 dye. Just make sure the can or bottle is still factory sealed.