On August 3, 2021, Tru Kids Inc., doing business as Toys R Us ("Toys R Us" or "Plaintiff"), filed a complaint against Real Investment, LLC, doing business as Toys & Beyond ("Toys & Beyond" or "Defendant"), for trademark infringement, dilution, and unfair competition. Toys R Us is the owner of many famous trademarks that are registered with the United States Patent and Trademark Office ("USPTO"), including the Toys R Us name, logo and jingle (I Don't Wanna Grow Up, I'm A Toys "R" Us Kid). Toys R Us alleges that Toys & Beyond opened a toy store in one of its former locations in Paramus, New Jersey, using similar trade dress with the goal of trading on the famous Toys R Us name. Toys R Us alleges that Toys & Beyond's use of Toys R Us' intellectual property and trade dress damages the reputation and goodwill associated with Toys R Us stores. Toys R Us is seeking both a preliminary and permanent injunction to bar Toys & Beyond from using Toys R Us intellectual property, along with associated damages and attorneys' fees.
What constitutes trademark infringement?
A trademark is a word, phrase, symbol, or design, or a combination of the foregoing, that identifies and distinguishes the source of certain goods or services. If a party is offering similar goods and/or services through branding that is similar to a registered (or common law) mark, that person/entity may be guilty of trademark infringement. Owners of "famous" marks are afforded additional trademark protections by virtue of the fact that the public has come to associate their marks with a certain quality of goods and/or services. When trademarks are inherently distinctive and famous, owners may allege dilution on the grounds that similar marks diminish the goodwill associated with their marks.
Trade dress is the overall look and feel of a product or the product packaging. Some examples of trade dress include the design of a product (the shape of the Coca-Cola bottle), the color of a product (the red-sole of a Christian Louboutin shoe), and the layout of a restaurant (the color scheme and arrangement of IHOP restaurants). To receive trade dress protection, the elements sought to be protected must be entirely non-functional and the trade dress must be distinctive enough to identify the source of the subject product. Trade dress is eligible for trademark protection when it is inherently distinctive or obvious to consumers who the source of the given product is. Trade dress that is less distinctive may also receive trademark protection if secondary meaning can be demonstrated, through use in commerce that evidences that consumers associate the trade dress with the subject product.
To maintain trademark protection, trademark owners must police the marketplace for instances of trademark infringement. Given the foregoing, if Toys R Us had not challenged Toys & Beyond, it would run the risk of losing protection over its intellectual property. It seems that Toys R Us tried to address the alleged trademark infringement prior to going to court by sending Toys & Beyond a cease and desist letter. Because Toys & Beyond did not comply with the terms of the demand letter, it now finds itself in the middle of a potentially expensive and time-consuming trademark litigation proceeding. Businesses that believe that a third party may be infringing upon their intellectual property rights should consult with experienced trademark lawyers to discuss available avenues of recourse.
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