Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.

PEACEABLE PLANET, INC. v. TY

United States District Court, N.D. Illinois, Eastern Division


July 12, 2004.

PEACEABLE PLANET, INC., Plaintiff,
v.
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.

BACKGROUND

  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 disparagement.

  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.

  ANALYSIS

  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.

  CONCLUSION

  For the foregoing reasons, the Court grants Defendants' Motion to Stay Proceedings Pending Defendants' Petition for Writ of Certiorari.


Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.