United States District Court, N.D. Illinois, Eastern Division
July 12, 2004.
PEACEABLE PLANET, INC., Plaintiff,
TY, INC.; and H. TY WARNER, Defendants.
The opinion of the court was delivered by: JOHN W. DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff, Peaceable Planet, Inc., filed suit against the
Defendants, Ty, Inc. and H. Ty Warner, for violations of federal
and state trademark laws. Summary judgment was granted for
Defendants, and the case was dismissed. Thereafter, the case was
affirmed in part, reversed in part, and remanded. Now before the
Court is Defendants' Motion to Stay Proceedings Pending
Defendants' Petition for Writ of Certiorari. The parties also
dispute whether a claim for defamation is before the Court. For
the following reasons, Defendants' Motion to Stay Proceedings
Pending Defendants' Petition for Writ of Certiorari is granted.
The facts, for the purposes of this motion, are as
follows.*fn1 Plaintiff is a manufacturer of plush toy
educational products that are targeted at adults and children.
Defendants design "Beanie Babies" plush toys that are marketed at
children. Plaintiff introduced a plush toy camel named "Niles." Subsequently, Defendants introduced a plush toy
camel as part of its Beanie Babies collection which was also
named Niles. Plaintiff then brought a six-count Complaint against
Defendants, alleging that Defendants infringed their trademark by
using Niles for a similar plush camel. Specifically, Plaintiff
brought counts for: (1) trademark infringement under
15 U.S.C. § 1125(a); (2) false advertising in violation of § 1125(a); (3) a
violation of the Illinois Uniform Deceptive Trade Practices Act,
815 ILCS 510/2; (4) a violation of the Illinois Consumer Fraud
and Deceptive Business Practices Act, 815 ILCS 505/2; (5) a
common law trademark infringement; (6) a common law trade
Defendants were granted summary judgment as to all counts.
Summary judgment as to Counts I-V was granted because Niles was
found to be a personal name that had not acquired secondary
meaning and, thus, was not a protectable trademark. Summary
judgment as to Count VI, a claim for trade disparagement, was
granted because Defendants did not make any false or misleading
statements about the quality of Plaintiff's products. Peaceable
Planet, Inc. v. Ty, Inc., 01 C 7350, 2003 WL 22024992 (N.D.Ill.
Aug. 28, 2003).
On appeal, the United States Court of Appeals for the Seventh
Circuit affirmed in part, reversed in part, and remanded.
Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir.
2004) (Peaceable Planet). The Seventh Circuit held that the
rule requiring personal names to acquire secondary meaning to be
legally protectable did not apply because: (1) none of the
reasons for the rule applied to the name Niles in this case; and
(2) when affixed to a toy camel, the name Niles became a
suggestive mark. Peaceable Planet, 362 F.3d at 989-991.
Therefore, the court concluded that Plaintiff "has a valid
trademark in the name `Niles' as applied to its camel." Peaceable Planet, 362 F.3d at 992. However, the Seventh Circuit
affirmed the summary judgment ruling that dismissed Plaintiff's
trade disparagement count. Peaceable Planet, 362 F.3d at 993.
Defendants filed a motion to stay the proceedings pending their
petition for a writ of certiorari before the Supreme
Court.*fn2 The writ of certiorari was filed by Defendants
on June 30, 2004; and a response from Plaintiff is due on August
2, 2004. Pursuant to Supreme Court Rule 15(5), the briefs will
then be submitted to the members of the Supreme Court ten days
after Plaintiff's response is filed. A decision on the writ of
certiorari could be expected shortly thereafter.
Therefore, considering the relatively short amount of time
anticipated to resolve the pending writ of certiorari, granting
Defendants' stay is the more efficient procedure.
For the foregoing reasons, the Court grants Defendants' Motion
to Stay Proceedings Pending Defendants' Petition for Writ of