Intellectual Property

Like a Scene from the “Godfather,” Toys “R” Us Tells Smokes R Us, “Don’t Mess with the Family (of Marks)” - FREE DOWNLOAD

A recent filing in the Middle District of Pennsylvania highlights Toys "R" Us' aggressive protection of the "R Us" family of marks. In its April 28th complaint, Toys "R" Us accuses Smokes R Us of, but not limited to, trademark dilution, trademark infringement and cybersquatting. According to the complaint, Smokes R Us operates "tobacco superstores" that sell, among other things, cigarettes, smoking paraphernalia and synthetic/"designer" drugs.

The Toys "R" Us mark was first used in 1957. Toys "R" Us has since obtained a multitude of trademark registrations for the "R Us" family of marks. These include the "R Us" mark by itself and many others. Collectively, the "R Us" family of marks is described as a global "super brand" that reinforces Toys "R" Us' image as the preeminent retailer of toys, baby and childrens products. The complaint places the "R Us" family of marks within a group of famous trademark families that includes McDonald's "MC" family and Kodak's "KODA" family. As noted by Anne Gilson Lalonde in her treatise, Gilson on Trademarks:

Courts have protected common prefixes and suffixes in several cases. In one such case, the McDonald's restaurant chain, owner of a variety of trademarks having the prefix "Mc" (McDONALD'S, McD.L.T., EGG McMUFFIN, etc.), filed suit against a bagel bakery and restaurant using the name McBAGEL'S. The plaintiff claimed protection for the prefix when used in conjunction with any generic food name. The court upheld the claim, finding that confusion was likely. It stressed that the "Mc" formative was completely arbitrary and fanciful, and that it enhanced the distinctiveness of the plaintiff's family of marks. Accordingly, it prohibited the use of the prefix solely in combination with a generic food item. Anne Gilson Lalonde, Gilson on Trademarks § 5.03 (2011).

In the past, Toys "R" Us has aggressively protected the "R Us" family of marks. Toys "R" Us highlights its enforcement history as follows:

in Geoffrey Inc. v. Stratton, 951 F.2d 359 (9th Cir. 1991), the Ninth Circuit upheld a district court opinion finding that the "R US" designation is a fanciful mark coined by TOYS, is part of a protectable "family" of marks, and was infringed and diluted by the use of "PHONES-R-US." Similarly, in Toys "R Us, Inc. v. Akkaoui, Judge Wilken of the Northern District of California found that the R Us Family of Marks is famous, distinctive and was diluted by the use of "Adults R Us" in connection with a line of sexual products. ...

TOYS has maintained vigilant watch over the U.S. federal trademark register, successfully opposing the registration of any infringing or dilutive marks in actions before the Trademark Trial and Appeal Board. As a result, there are no active registrations for any third party mark that incorporates the "R US" designation.

TOYS has brought multiple domain name proceedings against third parties attempting to use, register or traffic in domain names that incorporate the registered "R US" mark. Domain name arbitration panels, including those of the World Intellectual Property Organization ("WIPO"), have consistently found such marks to be in violation of TOYS' rights in its federally-registered R US Family of Marks. For example, TOYS has been successful in seizing the domain names "bestcreditcardsrus.info, "insurancerus.info, "personalinjurylawyersrus.com, "freeonlinegamesrus.com, "homebusinessopportunityrus.com, "tattoosrus.info, "digitalproductsrus.com, "desklampsrus.com, and many others.

In support of its claims, Toys "R" Us alleges that the Smokes R Us mark dilutes and tarnishes the "R Us" family of marks. Specifically, Toys "R" Us alleges that:

SRU tarnishes the R US Family of Marks and TOYS' image as a wholesome retailer of children's toys and baby products. SRU's use of the SRU Marks associates recreational drug use and adult-only activity with the R US Family of Marks in the eyes of both parents and children.

View or download the entire complaint filed in Toys "R" Us, Inc, et al. v. Smokes R US of PA Corp, et al., 11cv820 (M.D. Pa. April 28. 2011)

 

For more information, read:

5-5 Gilson on Trademarks § 5.03[6] Similarity of the Marks: Sound, Appearance and Meaning - The "Family of Marks" Doctrine (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

Many trademark owners seek to create an association among their various marks by using a single component that is common to each. 103 For example, a hypothetical cosmetics company might offer CAROUSE YOUR POUT lipstick, CAROUSE YOUR BLINK eyeliner ....

1-6 Trademark and Unfair Competition Deskbook § 6.05[6] Similarity of Goods and Services -  Family of Marks (Non-subscribers can purchase Trademark and Unfair Competition Deskbook at the LexisNexis Bookstore)

Rights in a mark may be strengthened if the mark, or its salient component, is used in connection with a range of products or services. This is sometimes referred to as a "family" of marks. In J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460 (Fed. Cir. 1991) , the Federal Circuit explained ( 932 F.2d at 1462 ) ....

Toys "R" Us v. Abir, 1999 U.S. Dist. LEXIS 1275 (S.D.N.Y. Feb. 5, 1999)

Plaintiffs filed this action alleging violations of federal and state laws related to trademark infringement, unfair competition, and dilution against the defendants, who had registered the name "TOYSAREUS.COM" as their Internet domain name.

Toys R Us v. Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y. 1998)

Plaintiffs Toys "R" Us, Inc. and Geoffrey, Inc., licensee and owner respectively of the Toys "R" Us trademark, brought this action against defendants, appearing pro se, in connection with defendants' use of the trade names "Guns Are Us," "Guns are We," and the internet domain name "gunsareus.com."

Toys "R" Us v. Akkaoui, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29, 1996)

Plaintiffs moved for a preliminary injunction enjoining Defendants from using the name "Adults R Us" or any colorable variation on Plaintiffs' Toys "R" Us trademark.

Geoffrey, Inc. v. Stratton, 1991 U.S. App. LEXIS 31302 (9th Cir. Dec. 27, 1991)

Stratton appealed from the district court's order and final judgment, which found that Stratton's use of the mark and tradename "PHONES-R-US" infringed and diluted Geoffrey's federal and common law rights in the "TOYS 'R' US" and other "'R' US" marks in violation of the Lanham Act, 15 U.S.C. § 1114(1), and Cal. Bus. & Prof. Code § 14330.

Geoffrey, Inc. v. Toys 'R Us, Inc., 756 F. Supp. 661 (D.P.R. 1991)

Plaintiff sought a preliminary injunction to prevent the defendants from using their Puerto Rico registered corporate name "TOYS 'R US, INC." in connection with the distribution, advertising and sales of its goods or services or holding out that the defendants' goods or services were in any way associated with the plaintiff.

Toys "R" Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D.N.Y. 1983)

Plaintiff Toys "R" Us, Inc. instituted this action for trademark infringement, unfair competition, and violation of the New York anti-dilution statute against defendant Canarsie Kiddie Shop, Inc., d/b/a Kids 'r' Us.

 

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