Friday, April 11, 2014

Affirming Refusal, TTAB Says "HOURS OF ENERGY NOW" Not Being Used as a Trademark

The Board affirmed a refusal to register the applied-for mark HOURS OF ENERGY NOW for dietary supplements and "energy shots," because the phrase as it appears on applicant's specimens of use, fails to function as a trademark. In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential].

Of course, a phrase or slogan is not per se unregistrable, but it must serve as a source indicator to qualify as a trademark or service mark. The critical question is how the public perceives the purported mark.

Examining Attorney Won Teak Oh contended that consumers will not see the phrase as a trademark because it appears only in conjunction with other phrases touting the characteristics of the product.

The Board scrutinized applicant's specimens of use, observing that in two of them the phrase "Hours of energy now" appears as one of a series of "bullet points" providing informational text, in less prominent position than the mark 5-HOUR ENERGY. Third-party advertising evidence confirmed that consumers understand the phrase as providing information that the product is fast acting and long lasting. Contrary to applicant's argument, the PTO need not show that the phrase is in common, everyday use.

Applicant argued that, because the Examining Attorney had withdrawn a Section 2(e)(1) mere descriptiveness refusal, the phrase must be a merely suggestive mark. But that was a nonsequitur because the phrase was not functioning as a mark at all.

In sum, the Board found that the proposed mark, as used by applicant, "merely informs prospective purchasers that applicant’s products will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours." It is therefore "incapable of functioning as a trademark." [Incapable? Maybe not, if used in a proper manner - ed.].

Read comments and post your comment here.

TTABlog comment: The phrase on the specimen above has an asterisk at the end. What if that were a "TM"?

Text Copyright John L. Welch 2014.


At 8:03 AM, Anonymous Freiburger said...

Definitely a WYHA.

At 8:49 AM, Anonymous Gene Bolmarcich, Esq. said...

These cases should not even exist because as John implied, a simple "TM" would absolutely eliminate the need for the "does not function" refusal. Period. The only test should be whether it's descriptive.Decit and

At 9:08 AM, Anonymous Gene Bolmarcich said...

I ended my comment with the word "descriptive" in case anyone is left hanging...(I guess I couldn't wait to start typing that Captcha text)

At 10:06 AM, Blogger Patent/Trademark Attorney said...

App was filed 1a w/specimen. I wonder if issue would've even arisen if app was filed 1b, published, allowed, then SOU w/spec filed.

At 10:22 AM, Anonymous Freiburger said...

Gene, slapping a "TM" on a phrase does not, at least before the Board, automatically remove the issue of whether the claimed "mark" functions as a trademark. “Use of the letters ‘TM’ on a product does not make unregistrable matter into a trademark.” In re Remington Prods. Inc., 3 U.S.P.Q.2d 1714, 1715 (T.T.A.B. 1987) (affirming failure to function refusal). As I recall there are also some cases that appear to factor in whether a "TM" is used, but I for one happen to agree it should not be dispositive.

At 4:37 PM, Anonymous Gene Bolmarcich, Esq. said...

Certainly a "TM" does not make unregistrable matter a trademark BUT it does make it function as a definition. "Functioning as" and "being" a trademark are two different things in trademark law.

At 4:42 PM, Anonymous Gene Bolmarcich, Esq. said...

Before getting flack, I'll concede that this is all about semantics. I just happen to disagree that many so-called "fails to function" refusals are proper and instead should be based on the nature of the mark itself (distinctiveness) as opposed to how it is used (failure to function). Most would say that a simple smiley face does not function as a mark. I disagree and say that it can function as a mark BUT it will never be distinctive.

At 4:16 PM, Anonymous Anonymous said...

Not sure semantics has anything to do with it. Placing a TM after a non-mark does not make it a mark, it simply does not.

At 8:13 AM, Anonymous Gene Bolmarcich said...

Didn't say that. Respectfully, you missed my subtle point.


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