9
Aug/03

TOYS R US v. TOYS AREN'T US


Interesting UK trademark opposition reported by IPKat.  The National Canine Defense League filed for TOYS AREN’T US and Design in connection with its fundraising activities.  Geoffrey Inc., owner of the TOYS “R” US trademark, opposed.  Its successful argument appears to have been that:

” . . . TOYS “R” US mark would become associated in the minds of the public with cruelty to animals, particularly as the NCDL campaigned on emotionally charged and politically contentious issues such as the destruction of dogs and puppy farming . . . The applicant’s use would bring wholly unwanted associations to a mark that had to maintain an appeal to children and parents alike in order to remain successful, even though consumers would know the opponent had nothing to do with cruelty to animals. The fact that the NCDL had laudable objectives and campaigned against the unpleasant activities was likely to be lost on consumers.”

Furthermore, according to IPKat:

NCDL was also found to have registered its mark in bad faith because it adopted a mark that was calculated to bring the TOYS “R” US mark to mind without considering the effect on Geoffrey’s business (even though it had no subjective intent to cause them harm). Such disregard for the consequences of its actions fell short of the standards of acceptable commercial behaviour.

Consider the difference between one advertising campaign using WE AREN’T TOYS with one using TOYS AREN’T US.  The second gets some of its magnetism’ from the mental association to the TOYS “R” US mark but also from the wordplay which nullifies any possibility of commercial association.  This case suggests that the UK Trademark Office recognizes dilution as grounds for opposition and uses a likelihood of, rather than an actual dilution standard.

IPKat concludes with an interesting final queston as to relevance of whether the term in question has become an ingrained part of speech.  As to that, a Google search of the phrase TOYS AREN’T US shows a fair amount of third-party usage.

 

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