Pfizer, Inc. v. Sachs

Pfizer, Inc. v. Sachs
2009 WL 2876255
September 8, 2009

Issue: Whether the use of the Viagra Marks on a missile used as advertisement for company not affiliated with Pfizer counts as infringement and dilution of the trademarks.

Facts: Pfizer manufactures and sells Viagra. Pfizer has a patent on the Viagra mark, but the “Viva Viagra” mark is a pending trademark application. The defendant operates an unincorporated business that maintains JetAngel.com. JetAngel.com sells outdoor advertising on decommissioned military equipment. On Sept. 8, 2008, Sachs towed a trailer exhibiting a twenty foot decommissioned missile bearing the Viagra marks into Manhattan and parked it right in front of Pfizer’s world headquarters. Sachs used the opportunity to distribute informational pamphlets about his business and even left one for Pfizer. The next day, Pfizer received an e-mail from a company named AVI Media Group which stated that the missile would be back the next week, but this time it would have two female models “riding” it and distributing condoms. The same day Pfizer sent a letter demanding they cease the unauthorized use of the marks. Pfizer also sent a second cease-and-desist the following day. Over the next few weeks, defendants exhibited the missile at an adult entertainment exposition with a banner promoting its advertising services. On Sept. 14, 2008, defendants taunted Pfizer with an e-mail announcing their intention to take the Viagra-brand missile on a tour of New York and twelve other major cities. On Sept. 17, 2008, defendants released a press statement describing the twelve city tour.

Procedural History: On Sept. 18th Pfizer files suit and the Court granted a temporary restraining order prohibiting defendants from using or displaying the Viagra marks in connection with any goods or services. On Order dated October 8, 2008, the Court preliminarily enjoined defendants from further use of the Viagra marks, pending resolution of this action.

Pre-Existing Rules: (1) Lanham Act-legislation that contains federal statutes of trademark law which prohibits trademark infringement, trademark dilution, and false advertising.
(2) Two Pesos, Inc. v. Taco Cabana, Inc.-A “mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.”
(3) Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,-Registered trademarks are presumed to be distinctive and should be afforded the utmost protection.
(4) Polaroid Corp. V. Polarad Elec. Corp.,-Factors to be assessed to determine the likelihood of confusion are: (a) strength of the senior user’s marl; (b) degree of similarity between the marks; (c) competitive proximity of the product and likelihood that the senior user will bridge the gap; (d) evidence of actual confusion; (e) defendant’s bad faith; (f) the quality of defendant’s product; and (g) sophistication of the relevant group.
(5) Pan Am. World Airways, Inc. v. Flight 001, Inc.-“To prevail on a claim of trademark dilution, plaintiff must show that its mark is ‘famous’ and that defendants’ subsequent use of the mark (or similar marks) in commerce is likely to cause dilution by tarnishment.”

Reasoning: As to the trademark infringement claim, Pfizer owns a valid and incontestable trademark registration for its Viagra mark. Also, because “viva” is a Spanish word that is used in an unusual way to refer to Viagra, the Viva Viagra mark is also protectable under the Lanham Act. Furthermore, in determining the likelihood of confusion, the majority of the factors weigh in favor of finding a likelihood of confusion. The First Amendment defense asserted by the defendant’s is denied because the use of the missile branded with the Viagra marks purpose was for their own commercial gain and that is precisely the use that is reserved by the Lanham Act to the owner of the mark; thus, there is no First Amendment right that is protected. The court also reasoned that due to the exhibition of the missile bearing the Viagra marks at an adult entertainment exhibition, plus the intended “riding” girls distributing condoms, were likely to tarnish Pfizer’s reputation.

Holding: Summary judgment was granted to the plaintiff’s with respect to its trademark infringement claim, false designation of the origin, federal trademark dilution, also trademark infringement and unfair competition under New York common law, plus the trademark dilution claim under the New York General Business Law.

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