OK, we’re pretty surprised by this outcome.  Blue hexagonal  pills marked STAMINA-Rx and a robot design, sold in a clear bottle not confusingly similar to blue hexagonal pills marked STAMINA-PRO and a robot design, sold in a clear bottle.

The court relies heavily on the absence of evidence of actual confusion.  Actual confusion is an important factor but the absence of evidence is not always the evidence of absence.

2005 U.S. App. LEXIS 9791,*

HI-TECH PHARMACEUTICALS, INC., Plaintiff-Counter-Defendant-Appellant v. 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

No. 04-11605


2005 U.S. App. LEXIS 9791

 May 26, 2005, Decided

 May 26, 2005, Filed


PRIOR HISTORY:   Appeal from the United States District Court for the Northern District of Georgia. D. C. Docket No. 03-02486-CV-WBH-1. Hi-Tech Pharms., Inc. v. Herbal Health Prods., 311 F. Supp. 2d 1353, 2004 U.S. Dist. LEXIS 5833 (N.D. Ga., 2004)

COUNSEL:   For Hi-Tech Pharmaceuticals, Inc., Appellant: Michael Joseph Powell, Baker, Donelson Bearman Caldwell & Berkowitz, ATLANTA, GA
For Herbal Health Products, Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA
For Dynamic Health Products, Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA
For Innovative Companies, Inc., Appellee: Henry D. Fellows, Jr., Fellows, Johnson & La Briola, Atlanta, GA
For Online Meds RX., Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA; John Todd Timmerman, Shumaker Loop & Kendrick, TAMPA, FL; Seaton D. Purdom, Gambrell & Stolz, ATLANTA, GA

JUDGES:   Before EDMONDSON, Chief Judge, TJOFLAT and KRAVITCH Circuit Judges.


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  [*2]  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.


The parties do not dispute these factual findings by the district court. HiTech 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.

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.  [*3]  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.


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.


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)  [*4]  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., 529 U.S. 205, 146 L. Ed. 2d 182, 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  [*5]  (emphasis added). We have long said that the type of mark and evidence of actual confusion are the 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,  [*6]  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.