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Peaceable Planet, Inc. v. Ty, Inc. - 362 F.3d 986 (7th Cir. 2004)

Rule:

The reluctance to allow personal names to be used as trademarks reflects valid concerns (three such concerns, to be precise), but they are distinct from the concern that powers the rule that descriptive marks are not protected until they acquire secondary meaning. One of the concerns is a reluctance to forbid a person to use his own name in his own business. 

Facts:

Plaintiff toy manufacturer sued defendant toy manufacturer in the United States District Court for the Northern District of Illinois, Eastern Division, for trademark infringement, false advertising, and state law claims including product disparagement. The trial court granted summary judgment for defendant. Plaintiff appealed. Plaintiff sold a toy camel that it named "Niles." Defendant, which was much better known than plaintiff, later began selling a toy camel that also was named "Niles." Plaintiff alleged that defendant's actions amounted to reverse passing off. The trial court found that "Niles" was a personal name that could not be afforded trademark protection absent a showing that it had acquired secondary meaning. 

Issue:

Did the district court err when it ruled that "Niles," being a personal name, is a descriptive mark that the law does not protect unless and until it has acquired secondary meaning?

Answer:

Yes

Conclusion:

The appellate court reversed the trial court's grant of summary judgment on the claims other than product disparagement, and remanded those for further proceedings. The United States Vourt of Appeals for the Seventh Circuit concluded that the extension of the surname rule under 15 U.S.C.S. § 1052(e)(4) and (f) to first names was a judicial innovation that need not be extended further than its rationale, which did not apply. In addition, use of the name was suggestive rather than descriptive in nature. Without protection, defendant might be able to acquire secondary meaning for its use of the name, which would allow it to enjoin plaintiff from using the name even though it was the first to do so. Dismissal of the product disparagement count was upheld, however, because plaintiff's claim that consumers could think that its toy was pirated involved defamation, not product disparagement.

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