Energy drinks and supplements have become hugely popular in recent years. It is big business for beverage manufacturers and the market is still new enough that smaller companies can try to grab a portion. “5 Hour Energy” is one brand that has quickly risen to establish itself as a market player. Now it looks like it’s the trademark attorneys that are trading energy shots. With its newfound success, imitators have come looking to capitalize on 5 Hour Energy’s brand equity. A Wall Street Journal blog post (http://blogs.wsj.com/law/2012/09/13/daily-writing-sample-a-powerful-appeal/) from September 2012 discusses the legal battle between manufacturers that have taken place over the last few years.
The article touches on a couple of interesting trademark issues. The first is whether “5 Hour Energy” should even be granted trademark protection. A Federal District Judge initially ruled that ”5 Hour Energy” is merely descriptive. Descriptive marks are marks that simply describe a characteristic of the services or goods offered in connection with the mark. If a mark merely describes a characteristic of the goods or services, then it does not act to identify the source of the goods or services unless it has acquired secondary meaning among consumers. Good trademark attorneys can tell you those trademark registrations are not granted for merely descriptive marks.
“5 Hour Energy” seems to be a pretty classic case of being merely descriptive. What does the product do? It provides the user with 5 hours of energy. It would be similar to seeking trademark registration for “8 Hour Sun Protection” as a brand of sunscreen. The mark doesn’t really require any step of thought from what the actual product is or does to the brand name. Although the mark appears merely descriptive, on appeal the District Judge was overruled. Despite arguments by trademark attorneys for the defendant, the Appellate Court held that the mark wasn’t merely descriptive and stated that it was more suggestive than descriptive. Even if the appeals court had not stated that the mark was suggestive, it could probably be argued that 5 Hour Energy has acquired secondary meaning because it has become so well known among consumers.
Another issue addressed, in this case, is whether there is a likelihood of confusion created by the “6 Hour Power” mark. The likelihood of confusion is the standard for trademark infringement. Put another way, there is a likelihood of confusion if the infringing mark is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. “5 Hour Energy” and “6 Hour Power” are pretty similar. The difference between “5 Hour” and “6 Hour” may not be distinguishable by the number of consumers and “Energy” and “Power” could be argued to be equivalent in meaning. The real question is whether consumers may become confused. Would a consumer be confused between the two? It’s entirely possible, although 5 Hour Energy’s trademark attorneys may need to have a survey conducted to prove it.
Some of the factors courts would look at to determine whether there is a likelihood of confusion include: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; and (7) the defendant’s intent. Trademark attorneys representing a plaintiff will need to present evidence demonstrating that these factors support the plaintiff’s claims.