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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
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,
5-5 Gilson on Trademarks § 5.03 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 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 ) ....
"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.
R Us v. Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y. 1998)
"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
"R" Us v. Akkaoui, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29,
Plaintiffs moved for a
preliminary injunction enjoining Defendants from using the name "Adults R
Us" or any colorable variation on Plaintiffs' Toys "R" Us
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.
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
"R" Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189
"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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