Pfizer stands firm against use of TRIAGRA mark

In Pfizer Inc v Y2K Shipping & Trading Inc (70 USPQ 2d 1592), the US District Court for the Eastern District of New York has granted summary judgment in favour of the plaintiff on its claims that, among other things, the defendant's use of TRIAGRA for a herbal erectile dysfunction remedy infringed its VIAGRA mark pursuant to the Lanham Act, New York law and common law.

Pfizer Inc, the owner of the famous VIAGRA mark for a pharmaceutical product used in the treatment of erectile dysfunction, brought claims of trademark infringement, unfair competition and dilution under the Lanham Act, New York law and common law, and for false advertising under the Lanham Act against Y2K Shipping & Trading Inc, a manufacturer of a herbal erectile dysfunction remedy sold under the mark TRIAGRA. Pfizer moved for summary judgment on its claims.

The US District Court for the Eastern District of New York first examined the infringement claims. It stated that seven of the eight factors for evaluating likelihood of confusion as set out by the Second Circuit in the Polaroid Case weighed strongly in favour of Pfizer and it dismissed various assertions by Y2K that it had adopted TRIAGRA in good faith. The court noted that the 'sophistication of consumers' factor weighed only partially in favour of Pfizer. It reasoned that the 'ordinary purchaser' standard did not apply to purchasers of Viagra, since the product is available only by prescription, and physicians have enough knowledge and expertise to differentiate between the two parties' products. However, with respect to Y2K's goods, the 'ordinary purchaser' standard would apply because purchasers of the TRIAGRA-marked product lack medical expertise and are likely to rely on a mark indicating a reliable source, rather than background research.

Accordingly, the court granted summary judgment on Pfizer's Lanham Act claims. It also stated that its analysis on the federal claims was identical to the analysis necessary under New York or common law, and thus granted summary judgment on these claims as well.

With respect to Pfizer's false advertising claims, Y2K admitted that it had no evidence to support its assertions in product literature and advertising that the TRIAGRA-marked product was approved by the Food and Drugs Administration, had passed clinical trials or had "clinically proven efficacy". Thus, such statements were literally false as a matter of law.

The court entered a permanent injunction against Y2K. It also held that an accounting for profits was warranted under the Lanham Act "based on the strong and uncontroverted evidence of [Y2K's] wilful deception and the likelihood that [Y2K] benefited from its association with the VIAGRA mark". It referred determination as to whether punitive damages, attorney's fees and costs were warranted under state law to the magistrate judge.

Lara Holzman and Sarah Hsia, Alston & Bird LLP, New York

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