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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Toys "R" Us, Inc., et al. v. Richard Feinberg, et al.

26 F. Supp. 2d 639 (S.D.N.Y., October 28, 1998) vacated, 201 F.3d 432 (2d. Cir., Nov. 10, 1999)

Defendants operate a website at "" at which they sell firearms. At the time of the court's decision, both defendants' e-commerce business, as well as their sole brick and mortar retail store, operated under the name "We Are Guns." Defendants' website sales are made almost exclusively to firearms dealers.

Plaintiff Geoffrey Inc. owns the famous "Toys "R" Us" family of marks, which it has licensed to plaintiff Toys "R" Us, Inc. While plaintiffs' marks are used in connection with the sale of a wide array of items that appeal to children, including toys, the marks are not used in the sale of firearms. Indeed, plaintiffs do not even sell toy guns in their stores. Complaining that defendants' use of the words "are us" in their domain name infringed and diluted their marks, plaintiffs brought suit.

The court disagreed, and awarded summary judgment to the defendants. Plaintiffs' trademark infringement, false designation of origin and unfair competition claims failed because of the "absence of any likelihood of confusion between defendants' and plaintiffs' products." The court concluded that:

It is doubtful that prudent purchasers would be misled into thinking that Toys "R" Us sponsored, approved, or endorsed defendants' firearms products, sold out of a small shop in Massachusetts and on his website.

This conclusion was buttressed by the lack of similarity between plaintiffs' "R Us" marks and defendants' "areus" mark; the absence of any competitive proximity between the products offered by the parties (children oriented vs. firearms); the fact that plaintiffs were not likely to use their marks to sell firearms, and the relative sophistication of the consumers making the purchasing decision. Of interest is the court's determination that "consumers looking at defendants' website are Internet users and, presumably, sophisticated."

The court also found that plaintiffs' dilution claims lacked merit. Here, the inquiry turned not on whether plaintiffs' marks were famous, but rather whether defendants' use diluted those marks. The court found that defendants' use did not blur the mark, or lessen its capacity to identify and distinguish plaintiffs' goods or services. Nor did defendants' use tarnish plaintiffs' marks by associating them with the sale of firearms. The court's decision was based on its view that the marks were dissimilar, and that consumers were therefor not likely to associate defendants' business with plaintiffs. Presumably, the court was also influenced by the small size of defendants' operation and the limited field in which they operated.

The full text of the district court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.

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