The problem with using a descriptive product name is that there’s always room for a competitor to achieve a superlative.  Good Peanut Butter get’s trumped Better Peanut Butter, or even the Best Peanut Butter.  Perhaps the “Bestest Ever” of something might start to move your brand positioning into something original, but if you’re banking on grammatical folly for sales, you’re probably better off just paying for some higher shelving.  Because people will take pictures of the stuff you make and blog about how you think your consumers cannot read.

That certainly wasn’t the case in a dispute that finally ended last year over trade dress and copyright infringement between energy-shot makers.  A dispute that proved the benefit copyright protection for your labeling can offer when trademark might not.  When I last wrote about this issue to convince you to analyze the potential for this additional form of protection I didn’t have a very good example of a win for copyright protection in a product case and wanted to rectify that.

So here it is.  The makers of 5-hour Energy brought a lawsuit against the makers of 6-hour Energy for trademark infringement and thankfully included aspects of copyright and trade dress infringement as well.  Because simply based on a descriptive name, they likely wouldn’t have won.  In fact, the Court said as much in its opinion:

In finding that Plaintiff’s mark has secondary meaning, the Court notes the following language from William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924):

A name which is merely descriptive of the ingredients, qualities or characteristics of an article of trade cannot be appropriated as a trade-mark and the exclusive use of it afforded legal protection. The use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product.

Id. at 529 (emphasis added). Accordingly, the Court does not find that Plaintiff has exclusive ownership of the three descriptive indicators “5-Hour Energy.” But Plaintiff does have a right to be protected against a competitor who unfairly imitates Plaintiff’s product “to avail itself of the favorable repute which had been established” in the market by Plaintiff’s product. Id. at 530. Therefore, viewing the marks at issue in conjunction with their trade dress, the evidence of intentional copying is so clear in this particular case that Plaintiff’s mark should be afforded secondary meaning. Abercrombie & Fitch Stores, Inc., 280 F.3d at 639. However, in doing so the Court is careful not to grant Plaintiff a monopoly over all its competitors with similar names. See William R. Warner & Co., 265 U.S. at 532.

But, when you combined it with the overall look of the packages (see above and below):

5-hour-energy-6-hour-energy-boxes

Along with this distinctly similar language on the label warnings:

5-hour-enegery-copyright-caution
5-Hour Energy Caution Language
6-hour-energy-caution-copyright
6-Hour Energy Caution Language

What happened was not only trademark infringement based on the totality of the labeling, but also copyright infringement based on the plagiarized cautionary language. The court not only found in favor of the plaintiffs for the infringement, but let the defendants know that even the failure register the copyright federally wasn’t enough to relieve them of damages or the harmful effects brought about by copyright infringement.

Because the medical caution statements appearing on the energy shots have appreciable differences, and stylistic flourishes may be inserted in the statement, the medical caution label has the minimum level of originality necessary to warrant copyright protection as a matter of law… Defendants also claim that this issue is now moot because [they have] changed [their] packaging and cautionary statements, and that Plaintiff is not entitled to damages because it did not register its copyright until after suit was filed in this case. While Defendants have now changed their cautionary statement, they are not absolved of the initial copyright infringement. Moreover, while Defendants are correct that Plaintiff is not entitled to statutory damages or attorneys fees for infringement that occurred before registration of Plaintiff’s copyright, other damages are still available to Plaintiff. See generally, Johnson v. Jones, 149 F.3d 494, 504-06 (6th Cir. 1998).

You can read the Court’s order here and the amended complaint here.  The case is a lesson not only for those looking to halt competitors but also for competitors looking to establish the bounds of fair-play in brand competition.

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