A trademark may be tarnished when it is linked to "products of shoddy quality," is "portrayed in an unwholesome light or unsavory context," or loses its ability to serve as a "wholesome identifier" of a plaintiff's product. Lilly does not contend that Natural Answer's HERBROZAC mark tarnishes the PROZAC ® mark. Instead, Lilly asserts that the HERBROZAC mark dilutes its PROZAC ® mark by "blurring" it.
Dilution by blurring occurs where customers or prospective customers see the plaintiff's mark on a "plethora of different goods and services," thus potentially diluting and weakening the mark's ability to serve as a unique identifier of one sourcethe plaintiff's product. An often-cited hypothetical example of dilution by blurring would be a piano company marketing a "Kodak piano." "No one would confuse Kodak pianos with Kodak film, but the use of the name on the piano could dilute its effectiveness as a mark for the film." I.P. In a concurring opinion in the Mead Data decision discussed above, Judge Sweet proposed six factors for considering whether blurring has occurred for purposes of the New York dilution statute. These factors or some combination of them have been applied by a number of courts in analyzing the possible dilution of a mark by blurring. The factors consider: (1) the similarity of the marks, (2) the similarity of the products covered by the marks, (3) the sophistication of consumers, (4) predatory intent, (5) the renown of the senior mark, and (6) the renown of the junior mark. Mead Data, 875 F.2d at 1035 (Sweet, J., concurring).
Some courts and commentators have questioned the use of some of these factors, however, in analyzing whether a mark has been blurred for purposes of the federal Dilution Act. See 4 McCarthy, § 24:94.1 (questioning the relevance of factors 2, 3, 4, and 6 because they relate to a "likelihood of confusion" analysis rather than a "blurring" analysis.); I.P. Lund, 163 F.3d at 49 (agreeing with Professor McCarthy on this point). This court agrees that several of these factors relate more to a "likelihood of confusion" analysis than a "blurring" analysis. First, the similarity of the products is not necessarily important because the federal Dilution Act was meant to protect non-similar products ( i.e., to protect Kodak ® film from Kodak pianos). Next, the sophistication of consumers is also unlikely to be important. A consumer's sophistication is a factor in determining whether the person will be confused between two products or their sources. Both the least and the most sophisticated consumers, however, may find that Kodak's mark has been blurred if they see Kodak pianos for sale. The intent of the junior mark's holder is also unlikely to be important. Using the same example, the manufacturer of Kodak pianos may not intend to use the fame of the Kodak ® film mark to assist it in selling its pianos. Despite this lack of intent, however, the Kodak ® mark may still become blurred and less distinctive because of its use on Kodak pianos. Finally, the renown of the junior mark is also not likely to be controlling here. If a junior mark is well known, then the potential for blurring *852 it with the senior mark is obvious. Even if the junior mark is not well known, however, a senior mark still becomes diluted under the theory of blurring each time a new junior mark arises. Therefore, the strength of the junior mark should not matter on this issue (although it may be important in choosing an equitable remedy). Because dilution by blurring is the gradual whittling away of the value of a famous mark by other similar marks, the key issue in determining whether a junior mark blurs a senior mark is whether permitting junior marks to be used will weaken the strength of the senior mark. For blurring to occur, there must be some mental association in the reasonable consumer's mind between the plaintiff's and the defendant's uses of the mark. Accordingly, dilution is likely only where the junior mark is either identical or substantially similar to the senior mark. Therefore, the relevant factors are the similarity of the marks and the strength of the senior mark. The court has already addressed these two factors at length above. There is a strong similarity between these two marks in terms of sight, sound, and meaning. Natural Answers has simply removed PROZAC ®'s first letter and replaced it with "HERB." In addition, the "B" sound is very similar to the "P" sound in PROZAC ®.
As the court stated above, the effect of the HERBROZAC name is to portray the image of an "herbal Prozac." The court has also already addressed the renown of the PROZAC ® mark. PROZAC ® is marketed throughout the United States and the world.
It has been featured in numerous national publications and nationally broadcast television shows, and has been the subject of best-selling books. In short, PROZAC ® has become "a designer label, a buzzword, a brand name familiar to not only the 4.5 million Americans who have taken it, but also those who wonder if they, too, might find a cure for whatever ails them in the little green-and-off-white capsule." Pl.Ex. Considering these two relevant factors, Lilly has shown that it is likely to prevail in showing that the HERBROZAC mark blurs the PROZAC ® mark.