## Facts

- Toys “R” Us, Inc. operated a national toy retail business with extensive sales and advertising and cultivated a family-oriented, gun-free public image.
- Geoffrey, Inc., a wholly owned subsidiary, owned the “Toys ‘R’ Us” family of trademarks and licensed them to Toys “R” Us.
- Plaintiffs used a family of “R Us” marks associated with a stylized, reversed “R” and child-oriented branding.
- Richard Feinberg operated a small Massachusetts firearms business that used the names “Guns Are Us” and later “Guns Are We,” and maintained the domain name “gunsareus.com” for a firearms website.
- After plaintiffs objected, Feinberg altered his business name, but continued using the “gunsareus.com” domain.
- The firearms business primarily sold to dealers, had some Internet sales, and had limited sales involving New York firearms dealers.
- Plaintiffs sued under the Lanham Act and New York law, alleging trademark infringement, false designation of origin, unfair competition, and dilution, and sought damages and injunctive relief barring the names and domain.

## Issues

1. Whether defendants’ use of “Guns Are Us,” “Guns Are We,” and “gunsareus.com” created a likelihood of confusion with plaintiffs’ “R Us” marks under the Lanham Act and New York law.
2. Whether defendants’ use diluted plaintiffs’ famous marks by blurring or tarnishment under federal and New York dilution law.

## Decision

- The court denied plaintiffs’ motion for summary judgment.
- The court granted summary judgment for defendants and dismissed the complaint.
- The court held there was no likelihood of confusion because the marks’ overall commercial impressions differed, the products and markets were remote (children’s retail goods versus firearms), plaintiffs were unlikely to enter the firearms market, and purchasers (including online firearms customers) were relatively careful.
- The court held there was no actionable dilution because defendants’ use did not lessen the marks’ capacity to identify plaintiffs’ goods (no blurring) and did not create a harmful association with plaintiffs (no tarnishment), given the absence of likely consumer association.
- The court found no evidence of an intent to deceive by copying plaintiffs’ distinctive mark features.

## Legal Principles

- Trademark infringement and related unfair-competition claims require a likelihood of consumer confusion as to source, sponsorship, or affiliation, evaluated through multi-factor analysis emphasizing overall commercial impression, market proximity, and purchase conditions.
- Differences in mark presentation and meaning (including the absence of a distinctive stylized element) can defeat similarity despite shared phrasing.
- Where goods and channels of trade are substantially unrelated and the senior user is unlikely to enter the junior user’s market, confusion is less likely as a matter of law.
- Dilution by blurring requires a showing that the junior use weakens the famous mark’s distinctiveness as a source identifier; dissimilar marks and remote markets can negate this showing.
- Dilution by tarnishment requires a likely association that harms the famous mark’s reputation; where consumers are unlikely to associate the parties, controversial junior products alone do not establish tarnishment.

## Conclusion

The court concluded that a small firearms business’s use of “Guns Are Us/We” and the “gunsareus.com” domain neither confused consumers nor diluted the famous “R Us” marks, and it entered judgment for defendants on all claims.


Toys “R” Us, Inc. v. Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y. 1998)