5–Hour ENERGY V Stacker 2® 6–Hour POWER

Who is Taking the Shots?

Plaintiff makes and distributes a 2–ounce energy shot called “5–Hour ENERGY,” and asserts that Defendant's competing energy shot—called “Stacker 2® 6–Hour POWER”—infringes its common law trademark rights. In a counterclaim, Defendant asserts that Plaintiff violated the Lanham Act by issuing false advertising against Plaintiff.

Innovation Ventures, LLC v. NVE, Inc.

What Are the Issues?

Back in 2012, the Sixth Circuit found "5-Hour Energy" to be suggestive rather than descriptive, and therefore protectable as a trademark. Along with the finding, it reversed an earlier decision from the Eastern District of Michigan. Previously, the district court agreed with NVE and found that "a likelihood of confusion did not exist between “6 Hour POWER” and “5–hour ENERGY.”"  But, the district court's opinion did not contain any analysis about whether "5-hour ENERGY" was protectable.

Whether the mark was protectable had been at issue for awhile. Years earlier, Innovation Ventures (5-Hour Energy) applied for federal registration of its mark. But, the USPTO refused registration based on the examiner's determination the mark was merely descriptive  Currently, the case is scheduled for a hearing back in the Eastern District of Michigan to determine if NVE's use of "6-Hour Power" is likely to confuse consumers and constitute trademark infringement. NVE will not, however, be allowed to present evidence of the earlier USPTO descriptiveness refusal. The district court ruled the evidence would be prejudicial and confusing to the jury. Therefore, the jury will be told that the 6th Circuit decided the mark was suggestive and protectable. Also at issue is a false advertising claim brought by NVE, but we will leave that issue for another blog post.

Innovation Ventures, LLC v. NVE, Inc., No. 08-11867, 2015 WL 871137,(E.D. Mich. Feb. 27, 2015), Innovation Ventures, LLC v. N.V.E., Inc., C.A.6 (Mich.)September 13, 2012694 F.3d 723.

What is the Take Away?

If you rely on common law trademark rights, you need to understand the limitations of those rights. In a common law trademark action, the plaintiff has the burden of proof to establish first use of its trademark in every specific geographic area in which it claims superior rights. If you believe that you are the senior user of a trademark for particular goods or services; you will have the burden of proving that the reputation of your trademark extends to a particular area. 

In addition to proving which geographic areas the reputation of your trademark has reached, you must also demonstrate that your common law trademark is protectable. This becomes murkier in the case of a descriptive mark or when determining whether a mark is descriptive or suggestive. The parties in this case are bogged down, in part, by a miry area of trademark law: they carry heavy evidentiary burdens as they traverse through it.

*For those interested in some of the evidentiary issues and motion in limine rulings:

Innovation Ventures, LLC v. NVE, Inc., No. 08-11867, 2015 WL 871137,(E.D. Mich. Feb. 27, 2015).