Innovation Ventures, LLC. v. N.V.E., Inc.
694 F.3d 723
6th Cir.2012Background
- LE sued NVE for trademark infringement over use of 6 Hour POWER vs 5-hour ENERGY.
- LE recall notice claimed NVE’s 6 Hour POWER energy shot was recalled.
- District court granted summary judgment for NVE on likelihood of confusion and for LE on counterclaims; Sherman Act/false advertising claims dismissed.
- NVE asserted LE mark was descriptive and lacked secondary meaning; LE contended mark is suggestive and protectable.
- On appeal, court holds 5-hour ENERGY is a protectable, suggestive mark and that there is a triable issue on likelihood of confusion; reverses on trademark/false advertising, affirms Sherman Act partial ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is LE’s mark protectable as distinctive? | LE's mark is suggestive, not merely descriptive. | The mark is descriptive and lacks secondary meaning. | Suggestive and protectable; not merely descriptive. |
| Is there a triable issue of likelihood of confusion between LE and NVE? | The marks are dissimilar and the descriptive nature is offset by suggestiveness. | Dissimilarity and descriptiveness negate confusion. | Triable issue; not properly decided at summary judgment. |
| Was LE’s recall notice false advertising under §1125(a)? | Notice was truthful and not misleading. | Notice was literally true or misleading in important respects. | Genuine dispute as to whether notice was misleading; not unambiguously false. |
| Do Sherman Act antitrust claims survive given the recall and market effects? | Recall caused significant anticompetitive harm. | Any effect was de minimis and not programmatic antitrust injury. | Claims survive to the extent of recall effects; other issues waived. |
Key Cases Cited
- Tumblebus, Inc. v. Cranmer, 399 F.3d 754 (6th Cir. 2005) (two-step likelihood-of-confusion framework; strength/distinctiveness matters)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (recognizes inherently distinctive marks; no need for secondary meaning)
- Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358 (6th Cir. 1984) (describe/suggestive spectrum; secondary meaning not always required)
- Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982) (eight-factor likelihood-of-confusion test; ultimate question is consumer affiliation)
- Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578 (3d Cir. 2002) (literal falsity vs. deception in advertising; consumer perception matters)
- Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, 132 S. Ct. 1670 (S. Ct. 2012) (context matters for terms like 'not an' and 'not any' in meaning)
- Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002) (likelihood of confusion involves fact/law mix; de novo review on summary judgment)
- Conwood Co., L.P. v. U.S. Tobacco Co., 290 F.3d 768 (6th Cir. 2002) (antitrust injury requires harm to competition; proximate cause)
- Spectrum Sports, Inc. v. McQuillan, 506 U.S. 447 (U.S. 1993) (antitrust evaluation to protect competition, not competitors)