Trial Court Proceedings Edit
Plaintiff Eli Lilly & Company, owner of the famous PROZAC trademark for prescription antidepressants, sought a preliminary injunction against defendant's promotion and sale of herbal dietary supplements under the mark HERBROZAC. Defendant's website advertised HERBROZAC as "a powerful, and effective all-natural and herbal formula alternative to the prescription drug Prozac," and used plaintiff's PROZAC mark in its metatags.
Finding a likelihood of success on plaintiff's claims for trademark infringement and dilution, the court enjoined defendant from using the mark HERBROZAC in any manner and from using the PROZAC mark in its metatags. Even though consumers were not likely to believe that HERBROZAC capsules were really PROZAC because PROZAC can be purchased only with a prescription, there was a likelihood of confusion about affiliation or association. In particular, there was a risk of confusion, as persons diverted to defendant’s website could consider defendant’s herbal alternative to PROZAC. And defendant’s use of the PROZAC mark in metatags was held not to be a fair use because it was neither "non-deceptive comparative advertising" nor "a fair description of the site."
Regarding plaintiff's dilution claim, the court held that defendant's use of HERBROZAC constituted dilution by blurring. The court rejected the Fourth Circuit's requirement of actual dilution, instead siding with the Second Circuit's test of likelihood of dilution.
Appellate Court Proceedings Edit
The Seventh Circuit affirmed the district court’s grant of a preliminary injunction on both the infringement and dilution claims. In determining for the first time whether the “causes dilution” element of the FTDA can be satisfied by evidence of a likelihood of dilution, or whether proof of actual dilution is required, the court sided with the Second Circuit in requiring only a likelihood of confusion.
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