Famed marks get infamous imitators. In 2008, Innovation Ventures, which owns the hugely successful 5-Hour Energy brand, sued imitator N2G for marketing a product named 6-Hour Energy Shot. It won. N2G paid a large fine, and was enjoined from similar actions in the future.
It didn't work. A trial court found N2G in contempt of the court's injunction in 2012 and again last month—in part under the safe distance rule, the subject of Scott Slavick's most recent article in Inside Counsel. The rule allows courts broader discretion to hold defendants in contempt of injunctions—even for selling new products that would not necessarily have infringed the plaintiff's mark on their own—when they make only de minimis changes to an infringing product to present the appearance of compliance with a court's order.
Slavick reminds us of the historical application of the safe-distance rule in the Fifth Circuit's 1951 ruling in Eskay Drugs, Inc. v. Smith, Kline & French Labs., which established that defendants "must do more than see how close they can come with safety to that which they were enjoined from doing." He then identifies the rule's most interesting aspect: whether a trademark owner can use it against a potential infringer who has not been previously adjudged to have infringed the owner's mark but agreed in the past to change a mark at the owner's demand.
Originally published on www.inhousecounsel.com
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.
This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.
