On cross-examination, Feinstein tried hard to avoid admitting that the names were intended to suggest an association with these famous name-brand drugs. He tried to phrase his answers in terms of suggesting an association not with the name-brand drugs themselves but with the functions or benefits of those drugs. Feinstein's balancing act does not withstand a moment's scrutiny.
His chosen product names suggest the intended functions or benefits of name-brand drugs precisely because consumers are familiar with the names and benefits of the famous drugs. The HERBSCRIPTIONS ® line includes ZONK OUT, which obviously does not include the "HERB-" prefix or any other part of a word suggesting an association with a famous brand name drug or family of drugs. Feinstein testified that ZONK OUT is intended to promote deep sleep. He admitted that he used that name because "I did not believe that there was a sleeping preparation out there that was so widely known with a suffix that would call to mind a certain function so as to help the consumer know that melatonin combined with passion flower and calcium magnesium would help them sleep." Tr. His testimony continued: Q So you couldn'tfor your product for deep sleep, you couldn't find a product with a brand name sufficiently well known that called to mind that function of promoting deep sleep to fit with this particular product, is that correct? A I don't know if I'd agree with what thesay that again, please. (Whereupon the pending question was read back.) As compared to Lilly, which is a worldwide pharmaceutical company established in 1876, with annual sales in the billions of dollars, Natural Answers launched its business in 1999 and has one full-time employee, founder Brian Feinstein. Natural Answers' sales of HERBROZAC have amounted to no more than $2000 to date.
Feinstein and Natural Answers have filed applications to register trademarks for HERBSCRIPTIONS ® and the various Natural Answers products, including HERBROZAC. Feinstein submitted his application to register HERBROZAC in September 1998. On January 5, 1999, a lawyer for Lilly sent a letter to Feinstein asking him to withdraw the trademark application. The proposed HERBROZAC mark was first published for opposition in August 1999. Lilly has filed a notice of opposition to Feinstein's application. Among Natural Answers' other trademarks, its applications to register HERBOCET ®, HERBSCRIPTIONS ®, HERBASPRIN ®, and HERBADRYL ® have been allowed. Its application for HerbenolPM has been published for opposition and the seller of TylenolPM ® has filed a notice of opposition. Natural Answers' application for VITA-AGRA has been published for opposition. On the web page for HERBROZAC, Natural Answers included several references to PROZAC ® in the source file until December 1999. These references were not visible to a casual visitor to the web page, but they were visible to a visitor who sought to access it. (The source file for a web page is available on most computer terminals by highlighting the "view" command and then clicking on "source" or "page source." See Def. 106.) These so-called "metatags" naming PROZAC ® in the source file were read by search engines searching Internet sites. The effect of the PROZAC ® metatags was to make the HERBROZAC web page responsive to Internet users' searches for sites relating to PROZAC ®. The PROZAC ® metatags apparently did little to raise the visibility of the HERBROZAC web page. Tests on various search engines before the metatags were removed indicated that the HERBROZAC web page was swamped by many other web pages with far more references to PROZAC ®. Natural Answers removed the PROZAC ® metatags from the source files of its web site in December 1999 after Lilly raised in this lawsuit a specific objection to their use. Herbal Diet Supplements and Pharmaceutical Companies. The legal line between pharmaceutical drugs and herbal remedies has begun to blur in the market place. Several major pharmaceutical companies have recently *840 begun marketing herbal products based, as HERBROZAC is, on St. These companies include Warner-Lambert and SmithKline Beecham. This phenomenon lends weight to a possibility that is legally important. It would not be unreasonable for a number of consumers who see or hear the name HERBROZAC not only to associate the name with PROZAC ® but also to assume or expect that there is some affiliation between the two. Even though the two products are distributed differently and are subject to very different regulatory regimes, they obviously are marketed to address similar if not identical conditions. The fact that some other major pharmaceutical companies are now marketing herbal products in general, and especially herbal products for mood elevation tends to lend some support to the possibility of confusion with respect to association or affiliation. In a recent Lanham Act case the Seventh Circuit set forth its definitive standard for deciding motions for preliminary injunctions: As a threshold matter, a party seeking a preliminary injunction must demonstrate (1) some likelihood of succeeding on the merits, and (2) that it has "no adequate remedy at law" and will suffer "irreparable harm" if preliminary relief is denied.
If the moving party cannot establish either of these prerequisites, a court's inquiry is over and the injunction must be denied. If, however, the moving party clears both thresholds, the court must then consider: (3) the irreparable harm the non-moving party will suffer if preliminary relief is granted, balancing that harm against the irreparable harm to the moving party if relief is denied; and (4) the public interest, meaning the consequences of granting or denying the injunction to nonparties. The court, sitting as would a chancellor in equity, then "weighs" all four factors in deciding whether to grant the injunction, seeking at all times to "minimize the costs of being mistaken." We call this process the "sliding scale" approach: the more likely it is the plaintiff will succeed on the merits, the less the balance of irreparable harms need weigh towards its side; the less likely it is the plaintiff will succeed, the more the balance need weigh towards its side. 1992) (vacating denial of preliminary injunction where Abbott showed likelihood of succeeding on merits and court should have presumed irreparable harm from deceptive comparative advertising) (citations omitted). To succeed on a trademark infringement claim, a plaintiff must establish that it has a protectable trademark and that the alleged infringer's use of that trademark is likely to cause confusion among consumers. Matsui America, Inc., 909 F.2d 250, 252 (7th Cir.1990); International Kennel Club of Chicago, Inc. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir.1988).
Lilly's PROZAC ® mark was registered more than five years ago and has been in continuous use for more than five years, so the mark is "incontestable." 15 U.S.C. Since Lilly's PROZAC ® mark is incontestable, Natural Answers cannot argue that the PROZAC ® mark is invalid or unprotectable.