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In the recent case of In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential] the Trademark Trial and Appeal Board (TTAB) held that the slogan “HOURS OF ENERGY NOW” for dietary supplements and energy shots did not function as a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.

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Under the Lanham Act, specifically 15 U.S.C. §1051(b) a trademark applicant may apply for registration, even if they have not commenced use of the trademark in commerce. This provides the trademark applicant with a critical advantage. The applicant may use its filing date as a “constructive use” date for purposes of nationwide priority. See our post entitled What Constitutes Use In Commerce For A Service Mark? where we discuss how a trademark applicant can rely on their trademark filing date to establish priority.  The trademark applicant must carefully document their bona fide intent. Most trademark applicants are not aware of this requirement and as a result, could have their application refused registration if challenged.

The party challenging the trademark applicant (the “opposer”) has the burden of demonstrating by a preponderance of the evidence that the applicant lacks the requisite intent to use the trademark in connection with the services or goods in commerce. See SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300 (TTAB 2010). If the trademark applicant cannot rebut the prima facie case, then summary judgment will be granted. The determination as to whether there is a bona fide intent to use the mark in commerce, is an objective one based on all the circumstances.

The Trademark Trial and Appeal Board (TTAB) recently determined that the trademark applicant did not satisfy its burden to come forward with documentary evidence of a bona fide intent to use the mark in commerce and granted the opposer’s motion for summary judgment. See PRL USA Holdings, Inc. v. Rich C. Young, Opposition No.91206846 (October 16, 2016) [not precedential]. In this case, the opposer was the owner of RALPH LAUREN POLO & Design and the trademark POLO. The trademark applicant filed for IRISH POLO CLUB USA & Design for shirts. Because the opposer was successful in showing that the applicant lacked a bona fide intent to use the mark, the TTAB did not have to determine the issues of likelihood of confusion and dilution. Generally, whether a trademark applicant possesses a bona fide intent to use the mark in commerce is not suitable for summary judgment disposition. However, if there is no genuine dispute of material fact as to the trademark applicant’s lack of intent to use the trademark as of the filing date, then the motion for summary judgment will be granted. In PRL USA Holdings, Inc., the opposer through its discovery requests demonstrated that the applicant could not produce any documents to support its mere allegations of intent.

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