The popular toy retailer Toys ‘R’ Us is one of the most well-known brands that went out of business after failing to adapt to the widespread emergence of online shopping. By 2017, Toys ‘R’ Us filed for bankruptcy; by 2021, it had closed its last stores in the United States. But, as of August 2022, the brand has started making a comeback and has opened several locations within Macy’s stores with plans for more in 2023.
The resurgence of Toys ‘R’ Us has also seen the brand going after an alcohol brand called “Booze ‘R’ Us” for infringement. During Toys ‘R’ Us’ hiatus Booze ‘R’ Us established itself, seeking trademark registration for the name in December 2021, less than one year after Toys ‘R’ Us shut down its last locations. The U.S. Patent and Trademark Office did not publish the application in the Official Gazette for opposition until April 2023. By that time, Toys ‘R’ Us had already re-emerged, and soon after the Official Gazette publication, it went after the Booze ‘R’ Us trademark.
TRU Kids, Inc., which is the parent company of Toys ‘R’ Us, believes consumers are likely to confuse the alcohol brand with Toys ‘R’ Us. As stated in their trademark opposition:
“[T]he parties’ respective marks are closely similar, they both provide identical retail store services, and the parties’ remaining goods and services are related and complementary… [the] Applicant’s Mark so resembles the TRU Marks as to be likely to cause confusion, to cause mistake, or to deceive.”
The Trademark Trial and Appeal Board will have to determine whether or not consumers are likely to confuse the two retailers. Toys ‘R’ Us being a toy retailer, and Booze ‘R’ Us, an alcohol retailer, may make it hard to prove that consumers would confuse the two, as trademark infringement cases usually cite confusion among consumers. However, TRU Kids, Inc. could also bank on the argument that its Toys ‘R’ Us trademark is being diluted.
Trademark dilution happens when a well-known trademark loses its distinctive quality or uniqueness if another similar trademark is registered. In their filing, TRU Kids, Inc. claims that the registration of the Booze ‘R’ Us trademark would cause trademark dilution for Toys ‘R’ Us, “regardless of the presence or absence of actual or likely confusion, competition, or of actual economic injury.”
This statement means that proving potential customer confusion won’t necessarily be needed in order to stop the Booze ‘R’ Us trademark from being registered. If it is determined that it is unlikely for customers to confuse the two brands, it may still be difficult for Booze ‘R’ Us to prove that their trademark, if registered, would not dilute the trademark of Toys ‘R’ Us. With the trademark opposition filed, Booze ‘R’ Us will have until June 14, 2023, to respond. If Booze ‘R’ Us fails to respond, this could mean a default judgment could be rendered in favor of TRU Kids, Inc. If Booze ‘R’ Us decides to fight the case, it could take a while before a judgment is reached.