The court engages in an interesting discussion of trademark law outside of the normal realm of UDRP that we have gotten used to and as we see in Federal Court decisions they use a whole different line of reasoning that UDRP.
“The Lanham Act prohibits the use of any word, term, or name which “is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods.”
“To prevail on its trademark infringement claim, Plaintiff must show that Defendant’s mark creates a likelihood of confusion regarding the origin of the goods offered by Plaintiff and Defendant.”
“In determining whether a likelihood of confusion exists, the Sixth Circuit considers the following factors relevant:
(1) the strength of the plaintiff’s mark, (2) the relatedness of the goods or services offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used by the parties, (6) the probable degree of purchaser care and sophistication, (7) the defendant’s intent in selecting its mark, and (8) the likelihood of either party expanding its product line using the marks.”
“The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.”
“In considering the above factors, the Court finds that factors two, five and six weigh in favor of Plaintiff; the products are related in that they are both two-ounce energy beverages, the products are sold using similar marketing channels, i.e., convenience stores, and consumers often purchase the products as an “impulse buy” without great care.”
“As to the first factor, the strength of Plaintiff’s mark, the Court finds that it weighs in favor of Defendant:
Trademarks are generally categorized as fanciful, arbitrary, suggestive or descriptive. A “fanciful” mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned (e.g., Exxon, Kodak). An “arbitrary” mark has a significance recognized in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached (e.g., Camel cigarettes or Apple computers). Fanciful and arbitrary marks are considered to be the “strongest” or most distinctive marks. Encroachment on a strong mark tends to produce the greatest likelihood of confusion. “Suggestive” and “descriptive” marks either evoke some quality of the product or describe it directly. Such marks are considered “weaker,” and confusion is said to be less likely where weak marks are involved.”
“Given the descriptive nature of Plaintiff’s mark, i.e., that it provides users with five hours of energy, the mark itself has little strength.”
“With respect to the third factor, the similarity of the marks, the Court finds that this weighs heavily in favor of Defendant, as the marks are decidedly dissimilar.”
“The only word shared by both marks is the word “hour,” which is the least prominent word on each mark.”
“Having considered the above eight factors together, the Court finds that no genuine issues of material fact are present regarding the likelihood of confusion. Pivotal in the Court’s decision is the dissimilarity between the marks, especially when combined with the descriptive nature of Plaintiff’s 5-hour ENERGY mark.”
“The Court is unwilling to hold that there is a likelihood of confusion merely because Defendant’s mark, like Plaintiff’s mark, describes the number of hours of energy that it will provide, especially where one focuses on “ENERGY” and the other focuses on “POWER.” To hold otherwise would, in essence, give Plaintiff a monopoly on the use of all marks in connection with energy products that describe the amount of hours or other denomination of time for which the products function.”
What a difference between real world courts and UDRP and WIPO panels.
Here we have two products in the same crowed field of energy drinks, one using the name 6 Hour Power and the other 5 Hour Energy, and the court finds no infringement.
In a WIPO case the domain would have been awarded to the plaintiff.
What they SHOULD be looking into is the fact that neither of them work. Nothing works like Ephedra worked for energy and weightloss and because of the abuse of several, the all-knowing government took it away from everyone else. I have yet to see the government do much correctly.
@Mike – I was going to say the same thing. I have had FTC come after me twice in the past about less claims then these. Go Figure!
right
No question in my mind that there are more and more trademark infringement suits occurring, and most are without merit. It’s becoming an epidemic.
The “new gtld” ICANN “innovation” plan will aggravate this problem exponentially. Mark these words. Floodgate of TM problems is imminent.
Yet all these companies spend thousands on lawyers and will not take the time to get all the extensions secured..
6hourpower.co ?
Donny
I think there are 2 problems here.
1) Most people do not know the rules around trademarks/service marks.
2) If you think about this from the perspective of a business, its probably worth your time to disrupt any other business that could be considered a competitor.
Make them spend their time and money in court defending themselves and if you are luck to get a liberal judge, they may just side with you and now you shut them down and have taken their assets.
Honestly when it comes to court cases, there should be a penalty for the looser even if the looser is the plaintiff. There should be a cut down on the crack pot suites that are so prevalent nowadays.
Just the way I see it
Cheers
What I find incredible with Wipo and Udrp is that they don’t make it mandatory to have 3 panelists judge events. Leaving it in the hands of one judge is a bit shaky and potentially bias. IMO. Federal court seems to have a real just procedure.
I agree with Menius. If you rifle through some of those cases, it’s not hard to belief that anyone could imagine a multi-purpose single keyword like ‘testosterone” could be taken away. All that is saying is that branding and business are more important than any other type of function for a simple dictionary keyword ie info sites etc.. I obviously don’t agree with this because people are erroneously judging what is more important than others.
It’s actually hilarious and the more they do it the more they will lack credibility.
Next we will see Enterprise.com file for possession of MyOnlineEnterprisesInTheMarketingArena.com or something like that…LOL. Nothing against Enterprise, but just an example that came to mind.
Another problem is when you allow dictionary keywords to be monopolized and only used for a “brand”, you end up with just that…a monopoly.
Em
Although a 3 member panel is not mandated the domain owner has an absolute right to have a 3 member panel hear the case, however at its expense.
Of course the rules should allow domain holders who win the case to get the cost of the extra panelists reimbursed to them by the complainant
MHB,
That expense for the judge is pretty shaky too. The respondant to pay for extra panelists?! I believe that would be a business transaction and not really justice. Obviously one must pay for a lawyer to attend a trial, but the judge?! One word: OVERHAUL.
Mike, thanks for the heads up but I’m a bit confused (no pun intended). I see there was a TTAB opposition involving 5 HOUR ENERGY’s (Innovation Ventures) objection to issuance of a registration of 8 HOUR POWER PACK but that matter was dismissed because the applicant abandoned the application. I see there is a case in the Eastern District of Michigan involving 5 HOUR ENERGY vs. 8-HR ENERGY, but the last thing on the federal courts docket appears to be the court’s order dismissing defendant’s counterclaims based on the Sherman Act. Could you please direct me to this order dismissing the main case so I can look it over? Thanks.