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Ty Inc. v Perryman

Ty Inc. v Perryman

306 F.3d 509 (7th Cir.)

Facts: P, Ty, Inc., the owner of beanie babies, brought suit against the D, Ruth Perryman, for trademark infringement under the Federal Trademark Dilution Act. The D sells second-hand beanbag stuffed animals, primarily but not exclusively Ty’s Beanie Babies, over the internet. The D operates a website called www.bargainbeanies.com.(external link) D contends that an injunction issued against her is overbroad because the term Beanies is a generic term that P is not entitled to use exclusively.

Procedure: Dist. Ct. granted summary judgment in favor of Ty and entered an injunction that forbids the defendant to use “BEANIE or BEANIES or any colorable imitation thereof (whether alone or in connection with other terms) within any business name, Internet Domain name, or trademark, or in connection with any non-Ty products.”

Issue: Whether a junior user of a senior user’s trademark can be enjoined under the Federal Trademark Dilution Act where the junior uses uses a senior user’s famous mark to market the senior user’s products him or herself in a secondary market?

Holding: No.

Rule: A junior user cannot be enjoined from using a senior user’s famous mark, pursuant to the Federal Trademark Dilution Act, where the junior user uses the mark to sell the senior user’s product in secondary markets even if such use might turn the distinctive mark into a generic term.

Rationale: “Beanie Babies” and “Beanies” are famous trademarks. Everyone has heard of them and they are truly prominent and renowned. The P is seeking an extension of anti-dilution law to forbid commercial uses that accelerate the transition from trademarks (brand names) to generic names (product names). An interpretation of antidilution law as arming trademark owners to enjoin uses of their mark that, while not confusing, threaten to render the mark generic may therefore not be in the public interest.


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Page last modified on Monday 31 of January, 2011 21:56:53 GMT by Bursteinm.
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