## Facts

- Peaceable Planet, Inc. designed and sold plush, bean-stuffed animals and introduced a stuffed camel named “Niles” in 1999.
- Ty, Inc., a major plush-toy manufacturer, began selling its own stuffed camel also named “Niles” in 2000.
- Peaceable alleged it coined “Niles” for a camel because it suggested the Nile River and desert travel, not because of any association with an individual named Niles.
- Peaceable sold a few thousand “Niles” camels; Ty sold roughly two million.
- Peaceable sued asserting federal and state claims including trademark infringement and related unfair-competition theories.
- The district court treated “Niles” as a personal name, deemed it descriptive, found no secondary meaning, and dismissed the federal trademark claim concerning “Niles” (and related claims) under Rule 12(b)(6).

## Issues

1. Whether “Niles,” used as the name of a camel plush toy, is necessarily descriptive and unprotectable merely because it is a personal name.
2. Whether dismissal under Rule 12(b)(6) was proper based on a conclusion that Peaceable could not establish distinctiveness or secondary meaning.
3. How the “personal name” doctrine should apply when a name is alleged to be coined or arbitrary as applied to the goods.

## Decision

- The Seventh Circuit reversed the Rule 12(b)(6) dismissal and remanded for further proceedings.
- The court held it was error to treat “Niles” as categorically unprotectable at the pleading stage solely due to its status as a personal name.
- The court held the complaint plausibly alleged that “Niles” could function as a protectable mark, either as inherently distinctive (arbitrary/coinage in context) or through acquired distinctiveness (secondary meaning).
- The court held that whether Peaceable could prove secondary meaning and likelihood of confusion presented fact questions not suitable for resolution on the pleadings.

## Legal Principles

- Trademark distinctiveness depends on the term’s relationship to the goods; a term is descriptive only if it directly conveys information about characteristics or qualities of the product.
- A personal name is not automatically descriptive in all contexts; it may operate as an arbitrary designation for particular goods, especially when uncommon in the relevant market or alleged to be coined for the product.
- Policy concerns about exclusive rights in personal names (including others’ ability to use their own names and the need to keep common names available) are distinct from the doctrine denying protection to descriptive terms absent secondary meaning.
- On a Rule 12(b)(6) motion, the court must accept well-pleaded allegations as true and dismiss only when the plaintiff can prove no set of facts entitling it to relief; claims turning on distinctiveness and secondary meaning often require factual development.

## Conclusion

The Seventh Circuit reinstated the trademark claim concerning “Niles,” holding that the “personal name” label did not justify dismissal at the pleading stage and that protectability and secondary meaning required a factual record rather than categorical assumptions.


Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004)