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Can A Slogan Or Advertising Phrase Function As A Trademark?

In the recent case of In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential] the Trademark Trial and Appeal Board (TTAB) held that the slogan “HOURS OF ENERGY NOW” for dietary supplements and energy shots did not function as a trademark.   After the Examining Attorney made its final refusal to register Hours Of Energy Now based on its opinion that the mark was incapable of functioning as a trademark to identify the source of origin of the goods, the Applicant appealed to the TTAB.  A slogan or an advertising phrase can register at the United States Patent & Trademark Office (USPTO) on the Principal Register, if it is capable of acting as a source indicator.  See In re Morganroth, 208 USPQ 284, 287 (TTAB 1980), where the Board held that an advertising phrase may register if it did not fall within one of the restrictions under Sections 2(a), (b), (c), (d), and the subsections of Section 2(e) of the Trademark Act. When discussing slogans and advertising phrases, it’s important to keep in mind that even an inherently distinctive mark can be refused for failing to function as a trademark.

In In re Innovation Ventures, LLC  the Examining Attorney first refused the trademark application on the basis of merely descriptiveness and failure to function as a trademark. However, after further consideration the Examiner withdrew the descriptive refusal and relied on the stronger basis of refusal, failure to act as a source indicator. Slogans can be refused for either descriptiveness or for failing to function as a trademark.  A good example of a slogan that was refused due to descriptiveness is the case of In re Sanda Hosiery Mills, 154 USPQ 631 (TTAB 1967).  In that case, the Board held that the slogan THE BABY BOOTIE SOCK THAT WILL NOT KICK OFF for socks was merely descriptive of the goods and thus, refused registration on the Supplemental Register. For more on descriptive refusals, see our blog post entitled King.com Limited Abandons Its Federal Trademark Application For CANDY, where this subject is discussed in more detail. Since the Examining Attorney withdrew the descriptive refusal, the only issue on appeal was whether the mark HOURS OF ENERGY NOW could function as a trademark and distinguish its goods from others.

The critical inquiry in determining this issue is how will the public perceive the proposed trademark. Relevant factors to consider would be specimens in use and third party use of the relevant advertising phrase. Applicant’s specimens used the phrase Hours Of Energy Now in conjunction with other informational text and in a less prominent position than the trademark 5-Hour Energy. Their packaging contained a listing of the following phrases: Hours of energy now, No crash later, Sugar free and 0 net carbs. This use appears to be merely informational and not capable of registration as a mark. The slogan is not set apart from the other laudatory phrases in anyway and simply describes characteristics of the product. The TTAB found that this usage underscored the informational nature of the trademark.

In support of its argument, the Examining Attorney submitted advertising from two distributors of the Applicant. The ads identified 5-Hour Energy as the trademark and treated the subject slogan in a similar fashion to the way the Applicant used the phrase on the packaging. Essentially, the slogan was not set apart from other phrases, nor was the wording displayed prominently. The Examiner also introduced into evidence ad copy of the Applicant’s competitor that used the exact wording “Hours of energy now” in a descriptive manner. Lastly, several customers’ feedback was submitted as well. The customer reviews allowed the Board to draw the conclusion that the purchasing public understood the phrase to be informational for a product that provides energy quickly and that such energy may sustain itself for several hours. In the end, the TTAB affirmed the refusal to register HOURS OF ENERGY NOW because it did not function as a trademark.

The Applicant argued that since the Examining Attorney withdrew the descriptive refusal, one must conclude that the proposed mark was suggestive. Applicant urged the Board to register its mark because suggestive marks are capable of being source indicators on the Principal Register. Here, the Applicant made the mistake of focusing only on the descriptive issue. It overlooked the fact that even an inherently distinctive term can be refused registration, if it does not function as a trademark. At our firm, we ensure that our clients understand the concept of  “functioning” as a trademark, before we move forward with a trademark prosecution on their behalf. Our objective is to work with our clients to build strong brands that will increase the value of their businesses, gain consumer recognition, and be associated with high quality goods and services.