SW Legal studies in Business

Tarnishment of Trademark Justifies Injunction and Payment of Attorney Fees
Description

Court held that for a company to make unauthorized use of a well-known trademark, despite being warned against its use, in an effort to draw attention to company services, was dilution of a mark by tarnishment that justified an injunction against further use and warranted payment of attorney fees by defendant.

Topic Intellectual Property
Key Words

Trademark; Infringement; Confusion; Dilution

C A S E   S U M M A R Y
Facts

Pfizer makes and sells Viagra, a prescription drug. It has two registered trademarks: Viagra and Viva Viagra. Huge sums have been spent using the trademarks in advertisements for the drug. Sachs maintains a website, JetAngel.com, that sells outdoor advertising that appears on decommissioned military equipment such as fighter jets and tanks. Sachs towed a 20 foot missile, bearing the name Viagra on it, and parked it in front of Pfizer’s headquarters in New York. As it attracted a lot of attention, he used the opportunity to get media coverage for his business. Pfizer immediately sent Sachs a letter demanding he cease using Viagra marks. Sachs ignored the letter and continued to move his Viagra-branded missile to various locations and announced a national tour. Pfizer sued and the district court granted a temporary restraining order prohibiting Sachs from using or displaying Viagra marks in connection with any goods or services. Pfizer proceeded to sue.

Decision

Viagra is a protected trademark. It is a strong, distinctive, well-known mark. Use of it by Sachs is likely to cause confusion in the market. The public may think Pfizer has endorsed or approved of the use of the mark by Sachs. The use by Sachs on his missile is not protected by the First Amendment as he claims; his use was for commercial purposes for his benefit. He attempted to capitalize on the value of the mark. The use of the marks constituted dilution by tarnishment in violation of the Lanham Act. Tarnishment can occur when the mark is portrayed in an unwholesome or unsavory context that can damage the prestige of the plaintiff’s unrelated goods. Under the act, Pfizer is entitled to attorney fees because of the violations by Sachs.

Citation Pfizer, Inc. v. Sachs, ---F.Supp.2d--- (2009 WL 2876255, S.D., N.Y., 2009)

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