Toys "R" Us, Inc. v. Akkaoui - No. C 96-3381 CW, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29, 1996)

Rule:

The moving party is entitled to preliminary injunction if it establishes either (1) a combination of probable success on the merits and the possibility of irreparable harm, or (2) the existence of serious questions going to the merits, the balance of hardships tipping sharply in its favor, and at least a fair chance of success on the merits. These two formulations represent two points on a sliding scale for preliminary injunctions in which the required degree of irreparable harm must increase as the probability of success decreases.

Facts:

Plaintiffs Toys "R" Us were holding an array of trademarks ending with the phrase "R Us." Plaintiffs subsequently learned that defendants were operating an Internet site and shopping service featuring a variety of sexual devices and clothing under the name "adultsrus." Defendants failed to heed plaintiffs’ demand to shut down defendants’ Internet site. Consequently, plaintiffs filed suit, alleging trademark dilution, trademark infringement, false designation of origin, and unfair competition. Plaintiffs also sought a preliminary injunction to enjoin defendants on the basis of trademark dilution and infringement. Defendants objected, arguing that they had stopped using the name so that there was no longer any activity to enjoin. Nevertheless, sites continued to exist on the Internet.

Issue:

Should the court grant plaintiffs’ motion for preliminary injunction, notwithstanding the fact that defendants had stopped using the name in question? 

Answer:

Yes.

Conclusion:

Upon a review of the record, the court granted the preliminary injunction because plaintiffs established a strong likelihood that they would have prevailed on the merits of their trademark dilution cause of action and defendants failed to establish that they would not have diluted plaintiffs' trademarks in the future. Plaintiffs' request for costs and attorneys' fees was denied because the request was premature.