## Facts

- Eli Lilly & Company owned the federally registered trademark PROZAC for the prescription antidepressant fluoxetine hydrochloride, a widely recognized and commercially successful product.
- Natural Answers, Inc. and its founder Brian Alexander Feinstein marketed herbal dietary supplements online under the “Herbscriptions” line, using names designed to evoke well-known drugs.
- Natural Answers sold an herbal “mood elevator” called HERBROZAC, promoted as an “all-natural” alternative to the prescription drug Prozac, and used comparative messaging such as “Think Herbs – not drugs!”
- Natural Answers used “Prozac” as an Internet metatag in its website source code (until December 1999), increasing the likelihood that searches for “Prozac” would retrieve its site.
- Lilly sued under the Lanham Act for trademark infringement and dilution and sought a preliminary injunction to stop use of the HERBROZAC mark and references to PROZAC in website source code.
- The district court granted a preliminary injunction; Natural Answers and Feinstein appealed, and the Seventh Circuit affirmed.

## Issues

1. Whether Lilly showed a likelihood of success on its Lanham Act infringement claim by demonstrating a likelihood of confusion between PROZAC and HERBROZAC.
2. Whether Lilly showed a likelihood of success on its federal dilution claim by proving PROZAC was famous and that HERBROZAC (and related use) caused dilution.
3. Whether the preliminary-injunction factors (irreparable harm, inadequate legal remedies, balance of harms, and public interest) supported injunctive relief, including against metatag use.

## Decision

- The district court granted a preliminary injunction barring further use of the HERBROZAC name/mark and barring use of references to PROZAC in Natural Answers’ website source code.
- The court found Lilly likely to succeed on both infringement and dilution, and found irreparable harm, inadequate legal remedies, favorable balance of harms, and consistency with the public interest.
- The Seventh Circuit affirmed, holding the district court did not abuse its discretion in its likelihood-of-confusion analysis, its dilution determination, or its weighing of injunction factors.

## Legal Principles

- Likelihood of confusion may be supported by the senior mark’s strength and fame, close visual/phonetic similarity of marks, overlap in product positioning and marketing channels, and evidence of intent to associate with the senior mark.
- A naming strategy designed to evoke a famous mark, combined with advertising that frames the junior product as an “alternative” to the senior product, supports an inference of intent and increases confusion risk.
- A famous mark may be protected from dilution where a junior mark’s use threatens to blur the famous mark’s distinctiveness by creating a close associative link in consumers’ minds.
- Using another’s mark in a website’s source code (including metatags) to capture search traffic can constitute actionable use supporting injunctive relief when it trades on the mark’s drawing power.
- In trademark cases, loss of control over a strong mark and the difficulty of measuring resulting harm may justify preliminary injunctive relief, especially where the defendant’s hardship is limited and consumer confusion is averted.

## Conclusion

The courts enjoined Natural Answers from using HERBROZAC and from using “Prozac” in its website source code because the challenged conduct likely confused consumers and diluted the famous PROZAC mark, and the equities and public interest favored immediate relief.


Eli Lilly & Co. v. Nat. Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind. 2000), aff’d, 233 F.3d 456 (7th Cir. 2000)