NATIONAL OFFICES: 461 FROM ROAD, PARAMUS, NJ 07652-3524
(201) 599-7880 - Phone
(201) 262-9097 - Fax
VIA DHL EXPRESS
April 24, 1995
Mr. Miles O'Neil
Johnson Road
Austin, TX 78641
Re: ROADKILLS-R-US
File No. TI95-082
Dear Mr. O'Neil:
It has come to our attention that you are using the
designation ROADKILLS-R-US in advertising as a slogan in
connection with your goods and services. Your use of this term is
likely to cause confusion with respect to our marks and, in
addition, constitutes a dilution with respect to our marks under
the laws of your state.
We are the owner of numerous federal trademark registrations
including TOYS "R" US, KIDS "R" US, PORTRAITS "R" US, and
COMPUTERS "R" US, as well as a number of common law marks
including SPORTS "R" US. CONSEQUENTLY, WE MUST ASK THAT YOU
IMMEDIATELY DISCONTINUE YOUR USE OF ROADKILLS-R-US. Enclosed are
copies of some of our federal registrations.
Toys "R" Us, Inc. is engaged in the sale of a vast spectrum
of items under a family of trademarks and service marks, all of
which include the prominent and distinctive display of "R US".
The fact that there are no other "R US" or "ARE US" marks on the
Federal Register speaks for itself on the issue of Toys "R" Us,
success in thwarting infringements of its marks. I am attaching a
list of just some of the legal proceedings in the United States,
and if reported, the citations to cases in which settlement was
reached or judgments were rendered in favor of Toys "R" Us. In
all cases, use of the marks which were objected to by Toys "R" Us
were discontinued.
Please be advised that in a number of different actions that
we have instituted to protect our rights, the Court has
consistently held that the dominant portion of our mark is the
designation "R US". Accordingly, it has been held that marks such
as BAGS "R" US, KIDS "R" US, LAMPS "R" US, PHONES-R-US, etc. have
been considered to be an infringement of our marks. In addition,
the United States District Court for the Central District of
California held in Geoffrey, Inc. v. Douglas S. Stratton d/b/a
PHONES-R-US, 16 U.S.P.Q.2d 1691 (C.D.Cal.1990) affld 951 F.2d 359
(9th Cir. 1991), _cert._denied_ U.S. #I 113 S. Ct. 153, 121
L.Ed.2d 103, _reh'g_denied_ U.S. _, 113 S. Ct. 679, 121 L.Ed.2d
601 (1992), that the "R US" marks were coined by and are
exclusively associated with our company and that our company has
a family of "`R' US" marks.
As a result of our extensive promotion and use of the "R
US" designation, it is associated with our company. For example,
our goods and services have been associated with amusement park
services, car service stations and credit card services. Thus,
consumers would be likely to believe that TOYS "R" US endorsed,
if not licensed, your business.
Over the years, we have built significant good will in our
"R US" marks through their use on thousands of items which we
sell throughout our 618 TOYS "R" US stores and 209 KIDS "R" US
stores nationwide. When a customer enters one of our TOYS "R" US
or KIDS "R" US stores, they expect to find the finest in service
and merchandise. You can therefore imagine what problems we would
encounter if we were to allow an individual or entity to run a
business utilizing the name ROADKILLS-R-US over which we would
have no control as to its quality. People might easily believe
that we were in some way sponsoring this entity and this could
adversely effect our long-standing customer good will. While we
have no reason to believe that yours is anything but a quality
establishment, if we were to make an exception in this case and
allow you to continue to infringe upon our registered trademarks,
where would we stop? How could we pick and choose between who
could infringe upon our trademarks and who could not?
Under the general principles of trademark law, it makes no
difference whether an entity uses a forward "R", a backwards "R",
an "R" in quotes, an "R" without quotes, or "ARE", since all of
these designations are pronounced in the exact same manner and
thus would each be considered an infringement. The reasoning
behind this principle is stated by the second circuit in
Grotrain, Helfferich, Schultz, etc. v Steinway & Sons, 523 F.2d
1331, 1340 (1975), "Trademarks, like small children, are not only
seen but heard."
Thus, an infringement occurs if the marks are visually the
same, if they sound the same or if they have the same meaning.
Differences in spelling or overall appearance are irrelevant in
this case because the two marks are pronounced the same way. For
example, when spoken, there is no difference between "R" and
"ARE". In further support of this position, I enclose a copy of
McCarthy, Trademarks and Unfair Competition, Section 23:4.
As you consider alternative slogans for your business, we
ask that you avoid such names as ROADKILLS ARE US, ROADKILLS AND
US, ROADKILLS BY US, ROADKILLS N US, ROADKILLS & US, etc. All of
the foregoing are colorable imitations of our marks and are thus
equally unacceptable.
This letter is being sent by DHL Express Mail and we request
that we have their response within two (2) weeks from April 25,
1995, the date of your receipt of this letter so that we can act
accordingly.
Very truly yours,
TOYS-"R"-US. INC.
Mavis Fowler
Mavis Fowler
MF:jg General Attorney
enclosures: (1) Trademark Registrations
(2) Citation of Cases
(3) McCarthy, Trademarks and Unfair Competition
S:\LEGAL\INF\TI95082.SA14
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Last updated: 25 October 2001
