## Facts

- Toys “R” Us, Inc. and Geoffrey, Inc. owned federally registered “Toys ‘R’ Us” and related trademarks forming a “family” of “R Us” marks used across multiple retail lines.
- Defendants operated commercial Internet sites and domain names using “adultsrus” and the name “Adults ‘R’ Us” to sell sexual devices and clothing.
- Plaintiffs learned of defendants’ use on August 28, 1996, and demanded cessation by letter dated September 13, 1996; defendants refused.
- Plaintiffs sued on September 25, 1996, alleging trademark dilution, trademark infringement, false designation of origin, and unfair competition, and moved for a preliminary injunction.
- Defendants argued injunctive relief was unnecessary because they had stopped using “Adults ‘R’ Us” by October 1, 1996.
- Plaintiffs presented evidence that “Adults R Us” sites and links to defendants’ catalog remained accessible on the Internet after that date.
- Plaintiffs asserted the association of their child- and family-oriented marks with sexual products damaged the reputation and goodwill of the “R Us” marks.

## Issues

1. Whether plaintiffs showed a likelihood of success on the merits of a federal trademark dilution claim under 15 U.S.C. § 1125(c).
2. Whether defendants’ commercial use of “Adults R Us” in domain names and websites caused dilution by tarnishment of the famous “R Us” family of marks.
3. Whether the preliminary-injunction factors (irreparable harm, balance of hardships, and public interest) favored injunctive relief despite defendants’ claimed cessation.

## Decision

- The court granted plaintiffs’ motion for a preliminary injunction.
- The court found plaintiffs were likely to succeed on their federal dilution claim because the “Toys ‘R’ Us” mark and “R Us” family were famous and defendants’ later commercial use caused dilution by tarnishment.
- The court found irreparable harm based on the likelihood of dilution and loss of control over the marks’ reputation.
- The court held the balance of hardships favored plaintiffs; an injunction was necessary to ensure complete removal of the “Adults R Us” name from the Internet and to prevent recurrence.
- The court concluded the public interest supported protecting famous marks from tarnishment.
- The injunction barred defendants from using “Adults R Us” or colorable variations, required cancellation of domain registrations containing “adultsrus,” and required notifying search engines to delete those domain names.
- The court denied, without prejudice as premature, plaintiffs’ request for attorneys’ fees and costs.

## Legal Principles

- A preliminary injunction may issue when the movant shows likely success on the merits and likely irreparable injury, or serious questions plus a sharply favorable balance of hardships and a fair chance of success.
- Under the FTDA, the owner of a famous mark may obtain injunctive relief against a later commercial use that causes dilution of the mark’s distinctive quality.
- Dilution includes tarnishment: use that links a famous mark (or a family of marks) to products or services that harm the mark’s reputation and goodwill.
- For federal dilution, neither consumer confusion nor direct competition between the parties is required.
- Continued online visibility of domains, sites, or links can support injunctive relief even where a defendant asserts it has ceased the challenged use.

## Conclusion

The court enjoined defendants’ “Adults R Us” Internet use because it likely diluted the famous “R Us” family of marks through tarnishment, and plaintiffs showed irreparable harm and equitable factors favoring prompt relief without needing to prove confusion or competition.


Toys “R” Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. 1996)