walgreens 51st and telegraph

That point overlooks another important kind of confusion under the Lanham Act, which has been described as "initial interest confusion," which occurs when a competitor lures potential customers by initially passing off its goods as those of another, even if confusion as to the source of goods is dispelled by the time the sales are completed. See Dorr-Oliver, Inc., 94 F.3d at 382, citing Forum Corp., 903 F.2d at 442 n. In this case there is significant evidence of a risk of such "initial interest confusion" as a result of Natural Answers' use of both the HERBROZAC mark and the term "Prozac" as a "metatag" on its web site.

Natural Answers chose the name HERBROZAC precisely because it suggested a similarity to PROZAC ®. And Natural Answers chose to use the "Prozac" metatags in an attempt to attract the attention of Internet surfers looking for information about PROZAC ®. Where the defendant has deliberately tried to create confusion between its product and the plaintiff's by copying a trademark, the defendant's intent is an "important factor bearing on the likelihood of confusion." Computer Care, 982 F.2d at 1070, quoting Processed Plastic Co. Warner Communications, Inc., 675 F.2d 852, 857 (7th Cir.1982). While a defendant's intent to copy the plaintiff's trademark does not create a presumption of confusion, a defendant's intent can weigh more heavily than other factors in certain cases. Ross Bicycles, Inc., 870 F.2d 1176, 1184-85 (7th Cir.1989).

In this case, Natural Answers' intent to copy Lilly's trademark is clear and is an important factor in considering the risk of confusion by consumers in the source of Natural Answers' product. As discussed above, Natural Answers coined the name HERBROZAC precisely because it would remind consumers of PROZAC ®. Similarly, Natural Answers included in the source files of its web page the term "Prozac" for the clear purpose of attracting attention to its web site when Internet users searched for information about PROZAC ®. The fact that defendant's efforts along these lines have not been successful to date does not undermine the relevance of those efforts as evidence of intent to confuse and mislead. Natural Answers has suggested that this case raises profound and novel issues about the use of trademarks in metatags. The Ninth Circuit recently surveyed the early reported decisions *846 dealing with use of trademarks in metatags in Brookfield Communications, Inc. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.1999). The case involved the use of a competitor's trademark as a metatag to divert interest from that competitor's web site. The Ninth Circuit reversed the district court's denial of injunctive relief and explained how such use of a metatag could violate the Lanham Act: Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (let's call it "Blockbuster") puts up a billboard on a highway reading"West Coast Video: 2 miles ahead at Exit 7"where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill. The Ninth Circuit further explained that its holding would not prohibit use of another's trademark on a web site or in metatags where the use would be a "fair use" under the Lanham Act, such as in nondeceptive comparative advertising or in a fair description of the site. In the case of metatags, however, where the person viewing a web site may not even see the metatags, it is difficult to see how the use could be fair, except in some unusual situations. 2d 331, 339-341 (S.D.N.Y.1999) (use of plaintiff's trademark and domain name in metatags amounted to false designation of origin under Lanham Act; attorneys' fees awarded to plaintiff); SNA, Inc. 2d 554, 562 (E.D.Pa.1999) (defendant's deliberate use of plaintiff's web-site address as a metatag in defendant's web page violated Lanham Act); cf. 2d 1098 (S.D.Cal.1998) (former Playboy Playmate could use "playboy" and "playmate" both in metatags and in references on her web site where the terms fairly and accurately described the contents of the site, and where the site included explicit disclaimers of any current affiliation with plaintiff). Returning to the overall question of likelihood of confusion, the seven factors in the canonical Seventh Circuit formula are not intended to be a mechanical checklist. The overall question remains the likelihood of confusion on the part of consumers, and in this case the relevant type of confusion includes "initial interest confusion" and confusion as to affiliation or association.

Considering all the factors as set forth above, the court concludes that Lilly has shown an unusually strong case on the issue of likelihood of confusion. Most important here are the unusual strength of Lilly's PROZAC ® mark, the strong similarity between PROZAC ® and HERBROZAC, and defendant's intentional selection of the HERBROZAC name precisely because of its similarity to PROZAC ® for the purpose of suggesting an association or affiliation between the products. Add to this mixture the fairly close "competitive proximity" of the two products, especially as pharmaceutical companies expand into the herbal and dietary supplement business, and Lilly has made a powerful showing of likelihood of success on its claim for trademark infringement. Lilly also seeks relief under the Federal Trademark Dilution Act of 1995, which added § 43(c) to the Lanham Act, 15 U.S.C.

Section 43(c) (1) provides: The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.

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