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However, if other manufacturers were to follow Natural Answers' footsteps in naming products, the PROZAC ® mark would become less and less distinctive. Natural Answers contends, however, that Lilly cannot succeed on its claim under the federal Dilution Act without showing that actual blurring of the PROZAC ® mark has already occurred. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc.

of Travel Dev., 170 F.3d 449, 458 (4th Cir.1999) (plaintiff in action under Dilution Act must show "an actual lessening of the senior mark's selling power"). The Fourth Circuit held that the statutory phrase "causes dilution" does not mean "likely" to cause dilution. More recently, however, the Second Circuit has disagreed in Nabisco, Inc. This court agrees with the Second Circuit on this issue. The Fourth Circuit's interpretation of the Dilution Act would effectively defeat the purpose of the Act, and focusing on likelihood of dilution does no violence to the statutory language. The theory of dilution by blurring is that if a famous commercial mark exists, and other nonfamous similar marks are permitted to be used in commerce, the famous mark will lose more and more of its distinctiveness with each new similar mark. Put another way: The theory of dilution by blurring is that if one small user can blur the sharp focus of the famous mark to uniquely signify one source, then another and another small user can and will do so. *853 Like being stung by a hundred bees, significant injury is caused by the cumulative effect, not by just one.

The Dilution Act was written to protect a famous mark from the first "bee sting" and to stop the dilution at the beginning of the problem, not at the end. If the holder of a senior mark cannot obtain injunctive relief until after actual dilution has occurred, the holder of the senior mark must suffer significant and irreparable harm before it is entitled to relief. In cases like this one, the senior mark holder would probably not be able to establish proof of actual dilution when the first junior mark has just come on the scene. Lilly has filed this case very early, before Natural Answers has sold even $2000 worth of HERBROZAC. By the time a number of junior marks have come into use, the senior mark holder would have a better chance of establishing actual dilution, but if the senior mark holder waits to file any dilution claims until after it can show actual irreparable harm from dilution, the senior mark holder would be open to the argument that it has not actively protected its mark. In addition, in determining whether the senior mark is famous and distinctive, the junior mark holder will have evidence of all the other junior marks to dispute the senior mark's distinctiveness. With every new junior mark, actual dilution increases and the fame and distinctiveness of the senior mark decreases. This sort of double-edged sword is contrary to the purpose behind the Dilution Act. Its purpose was to give the senior mark holder the ability to protect its mark with injunctive relief when the first junior mark arises and before any substantial harm is done. Thus, Lilly is likely to be able to show: (1) that its PROZAC ® mark is famous, (2) Natural Answers began the use of its HERBROZAC mark after the PROZAC ® mark gained its fame, (3) the HERBROZAC mark dilutes the PROZAC ® mark by blurring it, and (4) that Natural Answers uses its HERBROZAC mark in commerce. Therefore, Lilly has established all four elements of a claim under the Dilution Act and has shown a strong likelihood of success on its dilution claim. The court must also consider the risk of harm to Natural Answers if the court were to grant a preliminary injunction erroneously. An injunction will leave Natural Answers free to market its blend of St. John's Wort and other herbs, but will prohibit Natural Answers from using a mark deceptively similar to Lilly's PROZAC ®. Requiring that change will impose some costs on Natural Answers and might inflict some competitive harm. In view of the evidence that Natural Answers has sold only a very small amount of its product using the HERBROZAC name, however, the extent of the harm appears not to be great. In considering the public interest, the court focuses generally on the interests of any persons not present before the court as parties. The public interest generally favors enforcement of trademark laws so as to prevent confusion on the part of *854 consumers. at 19, International Kennel Club, 846 F.2d at 1092 n. There is certainly no evidence that a preliminary injunction will cause harm to anyone who is not a party to the lawsuit. Preliminary injunctive relief must be tailored to the harm that is threatened. In this case the threat obviously comes from defendant's use of the name HERBROZAC and from its use of the term "Prozac" and similar terms as metatags in the source file for its web site. The court will therefore order defendant to remove the name HERBROZAC from its web site and any other advertising effective immediately. The court will also order defendant to remove references to PROZAC ® (including variations such as "prozack" and "prozac") from the source files of its web site effective immediately.

The court will also order defendant to report to the court no later than January 31, 2000, confirming that defendant has complied with these requirements. The court will not prohibit defendant from filling orders actually received before January 31, 2000, with bottles labeled HERBROZAC, but any orders received after that time may not be filled unless the bottles are relabeled without the HERBROZAC name. Defendant is entitled to security against the risk that the injunction is erroneous. In light of the very low level of HERBROZAC sales and the modest costs needed to comply with the injunction, the court will order plaintiff Lilly to post security in the amount of $10,000 no later than January 27, 2000. A preliminary injunction to this effect shall issue immediately by separate order. [1] By way of comparison, the other five in that category were the safety razor, BAND-AIDS ®, penicillin, TAMPAX ® tampons, and birth control pills, and in the field of travel, the top five were the DC-3, the Harley-Davidson motorcycle, the Ford Model T, skateboards, and the Boeing 707. [2] During December 1999, Natural Answers revised its advertising to remove explicit references to PROZAC ® and deleted the use of "Prozac" in the "metatags" in the source code for its web page.

[3] Natural Answers' web site and product labels for VITA-AGRA include a statement that the product is not a Pfizer product. [4] Like many defendants in trademark cases, Natural Answers has tried to portray itself as a tiny David being bullied by a gigantic Goliath. For the holder of a famous trademark on a successful product, however, there is little alternative because the risk of inaction is so great. Delay or failure in enforcing trademark rights will usually give rise to a laches defense. Thus, even when the infringing use is on a new product produced in small volume by a tiny start-up company, the holder of the trademark and the court must assume that the defendant's new product will achieve great commercial success.


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