Pharmaceutical developer Eli Lilly & Company manufactures and markets the drug Prozac and also owns the trademark in the United States. Naples, Fla.-based Natural Answers marketed "Herbrozac," a mood-enhancing herbal supplement, through the Internet.
"In addition to its use of 'Herbrozac' as a brand name, Natural Answers also used the term Prozac in its Web site metatags, although the word did not appear on the [Natural Answers] Web site," Bevilacqua says. Nevertheless, Eli Lilly frowned on the use of the mention of Prozac in Natural Answers' Web site metatags. The pharmaceutical company filed a lawsuit in 1999 in the Seventh Circuit federal district court against Natural Answers for trademark infringement, trademark dilution, and violations of state unfair competition laws.
Although Natural Answers was not successful in setting itself apart from the hundreds of sites a Prozac Web search brings, the appeals court still found in favor of Eli Lilly on the metatag question (No. 00-1375, 7th. Cir. 11/21/2000). Using Prozac in metatags on Natural Answers' Web site, said the appeals court, is like Natural Answers putting up a sign in front of its store with another company's trademark on it.
Trademark basics apply on the Internet
Trademarks, experts say, protect the public interest. Through branding and the use of recognizable trademarks, consumers are able to accurately identify the source of goods and services.
Trademarks also protect a company's name and goodwill, whether in traditional markets or on the Internet."The rules for trademark infringement in Web sites are really no different from other media. Whether it's print or electronic, you can't use other companies' trademarks," Bevilacqua says.
Confusion is important factor in infringement
In print or on the Web, confusion, or the likelihood of confusing buyers, is the most important issue in determining trademark infringement, Bevilacqua says. When courts look at confusion in trademark infringement claims, they review "the strength of the mark, the similarity of the marks, the sophistication of buyers, the similarity of the goods, actual confusion, good faith in adopting a trademark, quality of the defendant's products, and other factors," Bevilacqua says. "It's a subjective test with no one factor being generally more important than the others."
The court found a likelihood of confusion in the Eli Lilly metatag case, the attorney says. The court stated that "Natural Answers' use of 'Prozac' as a metatag ... is evidence of Natural Answers' intent ... and creates a risk of confusion." Bevilacqua says it was clear infringement. "Natural Answers was clearly using a competitor's trademarked product and was trying to drive customers away from the competitor and trying to create confusion."