[DO NOT PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
_____________________________
No. 04-11605
_____________________________ FILED
U.S. COURT OF APPEALS
D. C. Docket No. 03-02486-CV-WBH-1 ELEVENTH CIRCUIT
May 26, 2005
THOMAS K. KAHN
HI-TECH PHARMACEUTICALS, INC., CLERK
Plaintiff-Counter- Defendant-Appellant,
versus
HERBAL HEALTH PRODUCTS, INC.,
d.b.a. Dynamic Life, Inc.,
Plaintiff-Counter -Claimant-Appellee,
DYNAMIC HEALTH PRODUCTS, INC.,
INNOVATIVE COMPANIES, INC.,
d.b.a. Innovative Health Products, Inc.,
ONLINE MEDS RX., INC.,
f.k.a. Dynamic Life, Inc.,
Defendants-Appellees.
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Appeal from the United States District Court
for the Northern District of Georgia
_________________________________________
(May 26, 2005)
Before EDMONDSON, Chief Judge, TJOFLAT and KRAVITCH Circuit Judges.
PER CURIAM:
Plaintiff-Appellant Hi-Tech Pharmaceuticals (“Hi-Tech”) appeals the
district court’s denial of a preliminary injunction against Defendant-Appellee
Herbal Health. Hi-Tech alleged that Herbal Health’s product, Stamina Pro,
infringed on the trademark and trade dress of Hi-Tech’s male sexual enhancement
product, Stamina-Rx. We conclude the district court did not abuse its discretion
by denying the preliminary injunction and affirm. We also deny Herbal Health’s
motion for sanctions.
FACTS
The parties do not dispute these factual findings by the district court. Hi-
Tech began manufacturing Stamina-Rx in 2001. See Hi-Tech Pharms., Inc. v.
Herbal Health Prods., Inc., 311 F. Supp.2d 1353, 1355 (N.D. Ga. 2004). Hi-
Tech’s president, Jared Wheat, registered the Stamina-Rx mark with the United
States Patent and Trademark office on 5 August 2003. The Stamina-Rx pill is blue
and in the shape of a hexagon. It is packaged in a clear bottle with a white top.
The bottle also contains an image, which the district court described as “a robot-
like being with arms raised holding a sphere, and the words ‘maximum sexual
stimulant.’” Hi-Tech Pharms., Inc., 311 F. Supp.2d at 1355.
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Until about late winter or spring of 2003, Herbal Health bought and
distributed Stamina-Rx. After that, Herbal Health began “manufacturing,
marketing, and selling their own dietary supplement for improving sexual
performance called Stamina Pro.” Hi-Tech Pharms., Inc., 311 F. Supp.2d at 1355.
Stamina Pro is a blue pill in hexagonal form, and it too is sold in a clear bottle
with a white top. The district court described the Stamina Pro bottle as having an
“image of a robot-like being with his arms by his sides and the words ‘maximum
male sexual enhancement formula.’ . . . [and containing] the statement ‘compare to
Stamina-Rx TM.’” Id. at 1355-56.
Hi-Tech sought a preliminary injunction to prevent Herbal Health from
producing, marketing, advertising, promoting and selling Stamina Pro. The
district court denied that motion, and Hi-Tech appealed to this Court.
STANDARD OF REVIEW
The decision to grant or deny a motion for preliminary injunction is
reviewed for an abuse of discretion. Cumulus Media, Inc. v. Clear Channel
Communications, Inc., 304 F.3d 1167, 1171-72 (11th Cir. 2002). We review the
district court’s legal conclusions de novo. Id. Findings of fact are reviewed for
clear error. Id. at 1171.
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DISCUSSION
To be entitled to a preliminary injunction, Hi-Tech must demonstrate (1) a
substantial likelihood of success on the merits; (2) a substantial threat of
irreparable injury without the injunction; (3) that the harm to Hi-Tech outweighs
the harm to Herbal Health; and (4) that an injunction would be in the interest of
the public. Palmer v. Braun, 287 F.3d 1325, 1329 (11th Cir. 2002). To show a
likelihood of success on the merits for both the trademark and trade dress
infringement, Hi-Tech must show that consumers will likely confuse the Stamnia-
Rx mark or dress with Stamina Pro. See Carnival Brand Seafood Co. v. Carnival
Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores,
Inc., v. Samara Bros., Inc., 120 S. Ct. 1339, 1343 (2000) (trade dress). Likelihood
of confusion is ultimately a question of fact that we review for clear error.
Cumulus Media, Inc., 304 F.3d at 1172 n.5. Hi-Tech argues that the district court
legally erred by requiring it to show actual consumer confusion instead of the
proper threshold of a likelihood of confusion. We disagree. The district court said
that actual confusion was one of the “most important factors in the likelihood of
confusion analysis,” but it also said that Hi-Tech has “not presently demonstrated
a substantial likelihood of success.” 311 F. Supp.2d at 1357 (emphasis added).
We have long said that the type of mark and evidence of actual confusion are the
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most weighty of considerations. Frehling Enters., Inc., v. Int’l Select Group, Inc.,
192 F.3d 1330, 1335 (11th Cir. 1999). Accordingly, the district court made no
legal error and did not clearly err by finding no likelihood of confusion. Thus,
Hi-Tech cannot show a substantial likelihood of success on the merits.
We also agree with the district court that Hi-Tech did not demonstrate that
irreparable harm would occur without the injunction. Hi-Tech relies on
McDonald’s Corp. v. Robertson, 147 F.3d 1301 (11th Cir. 1998), and it argues
that irreparable harm may be presumed when a likelihood of confusion is
established. Robertson is distinguishable; the district court there found
“substantial likelihood of confusion” existed. Id. at 1310. No such showing was
made here. And, as noted by Judge Hunt, Hi-Tech’s own evidence indicated that
“sales of Stamina-Rx . . . exceeded $3 million in the last month, and the product is
currently on back order.” 311 F. Supp.2d at 1357. Hi-Tech did not challenge this
finding on appeal. We are, therefore, unconvinced that irreparable harm will
befall Hi-Tech without the preliminary injunction.
Herbal Health filed a motion for sanctions pursuant to Federal Rules of
Appellate Procedure 38. That motion is denied.
AFFIRMED.
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