Opinion
No. 00 C 5230.
February 9, 2001
OPINION AND ORDER
Before the court is Plaintiff's motion for a preliminary injunction. For the following reasons, the motion is granted.
I. BACKGROUND
This case involves trademark infringement under 15 U.S.C. § 1114 (1) and 15 U.S.C. § 1125 (a), dilution under 15 U.S.C. § 1125 (c), and unfair competition and deceptive trade practices under federal and state common law. Plaintiff, Ty, Inc. (hereinafter "Ty"), is a leading manufacturer of plush animal toys marketed as BEANIE BABIES®, which have been a phenomenon over the past several years. In connection with BEANIE BABIES®, Ty has registered several marks, including BEANIE BABIES®, Reg. No. 2,049,196, THE BEANIE BABIES COLLECTION®, Reg. No. 2,080,995, and BEANIE BABIES OFFICIAL CLUB®, Reg. No. 2,368,016. Ty also asserts ownership of common law trademark rights in BEANIE(S)™, BEANIE BUDDIES™, BEANIE KIDS™, and TEENIE BEANIE BABIES™.
All of Ty's plush animal toys are of similar construction and labeling. The toys are constructed in animal shapes typically around 8" long, using a velour-type fabric that is filled with plastic pellets. Each animal has attached to it a tag that states the name of the animal, its "birth date," and a short poem about the toy.
Defendants Softbelly's, Inc. and Positive Products Consultants (hereinafter "Softbelly") manufacture and sell plush animals marketed as "Screenie Beanies." Screenie Beanies are constructed in animal shapes around the same size as Ty's products, made of a velour-type material, except for the underside, which is a chamois material, and are filled with pellets. Screenie Beanies have attached to them a tag featuring the name "Screenie Beanie Collection," the animal's name, "birth date", and a short poem. The chamois underside of Screenie Beanies can be used to clean computer monitors, and Softbelly markets them as such.
Ty discovered Screenie Beanies in June of 1999. Immediately, Ty's counsel sent a cease and desist letter to Screen Team, Inc., the company Ty knew to be the current distributor of "Screenie Beanies." Ty later learned of Softbelly's involvement with the production and distribution of "Screenie Beanies." After failed discussions between Ty and Softbelly's concerning the trademark issues, Ty filed suit on August 24, 2000. Ty now moves for a preliminary injunction, arguing that Softbelly's "Screenie Beanies" infringes and/or dilutes Ty's registered and common law marks. Softbelly opposes the injunction, arguing that Ty does not have any ownership interest in the term "Beanies," and even if it does, it has become a generic term used throughout the stuffed or plush toy industry.
II. DISCUSSION
The purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held. As a threshold matter, a party seeking a preliminary injuction must demonstrate (1) some likelihood of success on the merits and (2) that it has no adequate remedy at law and will suffer irreparable harm if the injunction is denied. See Meridan Mut. Ins. Co. v. Meridan Ins. Group. Inc., 128 F.3d 1111, 1114-15 (7th Cir. 1997). If the plaintiff fails to establish either of these elements, then the court's analysis "ends and the preliminary injunction should not be issued." Adams v. City of Chicago, 135 F.3d 1150, 1154 (7th Cir. 1998). It, however, the moving party clears both thresholds, "the court must next consider (3) the irreparable harm the nonmovant will suffer if the injunction is granted balanced against the irreparable harm to the movant if relief is denied, and (4) the effect granting or denying the injunction will have on non-parties." Meridan, 128 F.3d at 1114. The court then weighs the four factors in deciding whether to grant the injunction. See Abbott Laboratories v. Mead Johnson Co., 971 F.2d 6, 11-12 (7th Cir. 1992). The Seventh Circuit has portrayed the proper weighing process as a "sliding scale" approach, that is, "the stronger the case on the merits, the less irreparable harm must be shown." Ty Inc., v. GMA Accessories, Inc., 132 F.3d 1167, 1172 (7th Cir. 1997) (citations omitted). "The balancing of the imponderables involved in the decision whether to grant or deny a preliminary injunction is a task calling for a judgment based on the particulars of the individual case" Planned Parenthood of Wis. v. Doyle, 162 F.3d 463, 465 (7th Cir. 1990).
A. Likelihood of Success on the Merits
In the preliminary injunction context, a "likelihood of success" exists if the party seeking injunctive relief shows that it has a "better than negligible" chance of succeeding on the merits. Meridan, 128 F.3d at 1114 (citing International Kennel Club of Chicago, Inc., v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988)). In a trademark case, the movant shows a likelihood of success by establishing that he has a protectable mark, and that a likelihood of confusion exists between the marks or products of the parties. See 15 U.S.C. § 1114 (1)(a); 15 U.S.C. § 1125 (a); International Kennel Club, 846 F.2d at 1084.
Based on the fact that the court found a better than negligible chance that Ty could show a success on the merits on its trademark infringement claim it is not necessary for the court to address Ty's dilution claim. See Ty, Inc. v. The Jones Group, 98 F. Supp.2d 988, 993-94 (N.D. Ill. 2000), aff'd, No. 00-2746, 2001 U.S. App. LEXIS 843 (7th Cir. Jan. 23, 2001)
1. Trademark Infringement
As stated previously, to show a likelihood of success on the merits in a trademark case, a movant must demonstrate: (1) he has a protectable mark, and (2) that a likelihood of confusion exists between the marks or products of the parties. See 15 U.S.C. § 1114 (1)(a); 15 U.S.C. § 1125 (a); International Kennel Club, 846 F.2d at 1084. In terms of a protectable mark and likelihood of confusion, Ty demonstrates a better than negligible chance of establishing both requirements.
a. Protectable Mark
Ty has registered marks consisting of BEANIE BABIES®, THE BEANIE BABIES COLLECTION®, and BEANIE BABIES OFFICIAL CLUB®. The registration are "prima facie evidence of the validity of the registered mark" and of Ty's exclusive right to use the registered marks in connection with its plush toys. See 15 U.S.C. § 1115 (a). However, the primary concern of the court is the validity of the term "beanies" as a mark. Softbelly contends the term "beanies" is not protectable because it is a generic and/or descriptive term. Softbelly initially argues that "beanies" is a generic term based on its use in the pellet-filled or bean-filled plush toy industry. In the alternative, Softbelly argues that "beanies" is a descriptive term because Ty has not been allowed to register it with the United States Patent and Trademark Office ("USPTO"). Ty counters that the terms "beanie" and "beanies" are protectable as trademarks under Section 43(a) of the Lanham Act. Ty's argument is based on the fact that the "beanie(s)" term is arbitrary, fanciful or at the very least suggestive of pellet-filled plush animal toys. And, even if the term "beanie(s)" is descriptive, then it has acquired secondary meaning and is still entitled to trademark protection. The court finds Ty's argument persuasive.
As stated before, BEANIE BABIES® is a federally registered mark. Ty claims both federal and commonlaw trademark rights in the terms "beanie" and "beanies." The term at issue in the instant action is "beanies." The court will refer to them both as "beanie(s)" for clarity.
"When an identifying `word, term, name, symbol or device' claimed as a trade name or mark is not registered with the [USPTO], the burden is on the claimant . . . to establish that it is entitled to protection under § 43(a) of the Lanham Act." Ty, Inc. v. The Jones Group, 98 F. Supp.2d 988, 993-94 (N.D. Ill. 2000) (citing Plantinum Home Mortg. Corp. v. Platinum Fin. Group, 149 F.3d 722, 727 (7th Cir. 1998), aff'd, No. 00-2746, 2001 U.S. App. LEXIS 843 (7th Cir. Jan. 23, 2001). The level of trademark protection available corresponds to the distinctiveness of the mark. Plantinum Home, 149 F.3d at 727. Marks are classified into five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992). The Seventh Circuit has defined these terms:
A generic term is one that is commonly used and does not identify any particular source and, therefore, is not entitled to any trademark protection. A descriptive mark is one that describes the ingredients, qualities, or characteristics of an articles of trade or a service and, generally, it is not protected as a trademark because a merely descriptive mark is a poor means of distinguishing one source of services from another. However, a descriptive mark may receive trademark protection if it acquires secondary meaning in the collective consciousness of the relevant community. Finally, terms that are either suggestive, arbitrary or fanciful are automatically entitled to trademark protection because they are inherently distinctive.Platinum Home, 149 F.3d at 727 (internal citations and quote marks omitted).
In order to determine whether a mark is generic the court looks to the "primary significance" test. See 15 U.S.C. § 1064 (3). The test asks what is "the primary significance of the registered mark to the relevant public rather than purchaser motivation." 15 U.S.C. § 1064 (3). Evidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listing in dictionaries, trade journals, newspaper and other publications. CVP Sys. v. M-TEK Inc., No. 92-5761, 1994 U.S. Dist LEXIS 13943 at *18 (N.D. Ill. September 29, 1994). Additionally, courts and commentators have suggested that the court can look to competitors' use, movant's use, and the media's use of the mark. See McCarthy on Trademarks and Unfair Competitions § 12:13 (4th ed. 1997); Ty, Inc. v. The Jones Group, 98 F. Supp. 2d at 994. Softbelly's evidence of the term's generic nature is limited to an on-line search listing web sites that use the term "beanie(s)." Softbelly claims that the numerous sites produced from the search demonstrate that the term "beanie(s)" is generically used throughout the industry to refer to any bean bag or plush toy product. But as Ty points out, these web sites appear to be individuals selling "beanie(s)" and not retailers or manufacturers. Ty also presents several forms of evidence that "beanie(s)" is not generic. Consumer surveys show that 60% of consumers tested believed "beanies" to a be a brand name and that 70% of consumers tested thought that the word "beanies" and "beanie" either meant BEANIE BABIES® or Ty, or referred to a toy made or put out by BEANIE BABIES® or Ty. Ty also looked to the dictionary definition for the term "beanie(s)" and none of the definitions defined it with reference to stuffed or plush toys.
Ty submitted into evidence two surveys with its memorandum of law in support of its motion for preliminary injuction: The Admar Survey (Exhibit 4) and Field Research Survey (Exhibit 5).
Further, Ty offered evidence of the use of the term "beanie(s)" by competitors, the media, and themselves. Although some competitors have attempted to use the term "beanie(s)," Ty has aggressively sought to defend the term "beanie(s)" again and again. Ty submits that the following companies have ceased using the term: Bean Mania Magazine (formerly Beanies Mania Magazine), Mary Beth's Bean Bag World Magazine (formerly Mary Beth's Beanie World Magazine), Weebeans plush toys (formerly Weebeanies plush toys), Nici Beanies plush toys (no longer manufactured), Grateful Dead Bean Bag Bears (formerly Grateful Dead Beanie Bears), Bean Brigade plush toys (formerly Beanie Brigade), Bean Bungalow storage units (formerly Beanie bungalow), and Macca Beans plush toys (formerly Macca Beanies). Additionally, the media has almost always linked "beaine(s)" with Ty as exhibited by the numerous newspaper articles, magazines, and books submitted by Ty. (Plaintiff's Reply Exhibit C). Lastly, Ty has never used the term "beanie(s)" generically, and has even faced this very issue in regards to the term "beaine" and prevailed. See Ty Inc. v. The Jones Group, Inc., 98 F. Supp.2d at 996 (Memorandum Opinion and Order of Magistrate Judge Levin of the Northern District of Illinois which found that Ty had a "better than negligible" chance of proving that the "BEANIE" mark was not generic).
The evidence convincingly demonstrates that the relevant public understands the term "beanies" to be inextricably linked to BEANIES BABIES® and/or Ty. The court finds that there is a better than negligible chance of proving that "beanie(s)" is not generic.
Softbelly also contends that the term "beanie(s)" is descriptive and should not be afforded trademark protection. Softbelly relies on the USPTO's suspension of Ty's application for registration of a mark. Unfortunately, Softbe]ly has failed to acknowledge one of the basic tenents of trademark law, first to use, not first to file. See Jimmy Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 434 (7th Cir. 1999); Frederick Atkins, Inc. v. Carson Pirie Scott Co., No. 99-7838, 1999 U.S. Dist. LEXIS 19731, at *4 (N.D. Ill. Dec. 10, 1999). As stated by Ty, their application for registration of the term "beanie(s)" has been suspended because the USPTO is aware of other applications for registration for the same or confusingly similar marks. Yet this does not mean that Ty cannot register its mark, rather it means that Ty must prove it has superior rights in the mark and eliminate the prior applications.Cf. Johnny Blastoff, 188 F.2d at 435; The Money Store v. Harriscorp. Fin. Inc., 689 F.2d 666, 672 (7th Cir. 1982). The USPTO listed 34 other applications containing the term "beanies" or something confusingly similar on the January 5, 1998 response to Ty's application for registration. As of September 18, 2000 only 3 such applications remained to be overcome by Ty's superior fights. Thus, contrary to Softbelly's argument, the USPTO's suspension of registration of Ty's mark is not fatal to Ty's trademark rights in "beanie(s)."
More significantly, Ty contends that the term "beanie(s)" is entitled to trademark protection because it is arbitrary, fanciful, and suggestive, and even if the term "beanie(s)" is descriptive it has acquired secondary meaning. Again, a descriptive mark may receive trademark protection if it acquires secondary meaning. Platinum Home, 149 F.3d at 727. "A mark acquires secondary meaning when it has been used so long and so exclusively by one company in association with its products or services in that particular industry that the `word, term, name, symbol, or device has come to mean that those products or services are the company's trademark.'" Id. (quoting Gimix, Inc. v. JSA Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983)). To establish secondary meaning, the court considers the following factors: (1) the amount and manner of advertising; (2) the sales volume; (3) the length and manner of use; (4) consumer testimony; and (5) consumer surveys. Platinum Home, 149 F.3d at 727.
The court will assess if the term "beanie(s)" has acquired secondary meaning since if it was arbitrary, fanciful, or suggestive it would automatically be entitled to trademark protection. See Platinum Home, 149 F.2d at 727.
All of these factors are present in this case. For example, it is undisputed since their introduction and continuing to date, Ty's BEANIE BABIES® plush toys have enjoyed tremendous success in the marketplace. Ty has sold over 1 billion toys throughout the United States since 1993. The term "beanie(s)" was used by Ty to refer exclusively to BEANIE BABIES® starting in September of 1998. Ty has also licensed the BEANIE BABIES® mark for use in McDonald's promotions in 1997, 1998, 1999, and 2000. The McDonald's promotions distributed over 300 million "Teenie Beanie Babies" plush toys. Consumer surveys submitted into evidence by Ty, which are unrefuted, clearly indicate that the term "beanie(s)" is connected by consumers to Ty and its product and that consumers understand the words "beanies" and "beanie" to either mean BEANIE BABIES® or Ty or refer to a toy made or produced by BEANIE BABIES® or Ty.
Ty submitted into evidence two surveys with it memorandum of law in support of its motion for preliminary injunction: The Admar Survey (Exhibit 4) and Field Research Survey (Exhibit 5). Additionally, the fifth factor of the secondary meaning analysis is consumer testimony. However, Ty does not present any evidence of consumer testimony in arguing that its mark has acquired secondary meaning.
The court finds the use of the term "beanie(s)", national exposure, tremendous sales, and consumer surveys all indicate that Ty has a better than negligible chance of establishing that the mark "beanie(s)" in fact has acquired secondary meaning.
In summary, based on the term "beanie(s)" chances of not being generic and acquiring secondary meaning, the court finds Ty has a better than negligible chance of establishing it has a protectable mark.
b. Likelihood of Confusion
Ty must also demonstrate a likelihood of confusion in order to show a likelihood of success on the merits. The court looks to several factors in determining whether a likelihood of confusion exists: (1) similarity of the marks; (2) similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be used by consumers; (5) strength of complaint's mark; (6) actual confusion; and (7) intent of alleged infringer to "palm off his product as that of another." See Helene Curtis Industries, Inc. v. Church and Dwight Co., Inc., 560 F.2d 1325, 1330 (7th Cir. 1977). These factors are not a mechanical checklist, and "[t]he proper weight given to each . . . will vary from case to case." Eli Lilly Co v. Natural Answers, Inc., 233 F.3d 456, 462 (7th Cir. 2000) (quoting Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 381 (7th Cir. 1996). The test is not whether the public would confuse the marks, but whether the viewer of an accused mark would be likely to associate the product or service with which it is connected with the source of products or services with which an earlier mark is connected.Nike, Inc. v. "Just Did It" Enterprises, 6 F.3d 1225, 1228-29 (7th Cir. 1993). In determining whether to grant a preliminary injunction, the district court must weight the evidence pertaining to each likelihood of confusion factor and balance the seven factors against each other.Barbecue Marx, Inc., v. 551 Odgen, Inc., No. 00-3110, 2000 U.S. App. LEXIS 33581 at *6 (7th Cir. Dec. 12, 2000). When a district court evaluates the likelihood of confusion, "the actual and reasoned weighing of the evidence is imperative and is inherent in a meaningful exercise of discretion[,]" Schwinn Bicycles Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1184 (7th Cir 1989), as is the explicit balancing of the test's factors.Barbecue Marx, Inc., 2000 U.S. App. LEXIS 33581 at *6-7.
i. Similarity of the Marks
"If one word or feature of a composite trademark is the salient portion of the mark, it may be given greater weight than the surrounding elements." International Kennel Club, 846 F.2d at 1087-88 (citing Henri's Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352, 356 (7th Cir. 1983)); see also Ty, Inc. v. The Jones Group, 98 F. Supp. 2d at 999 (finding that defendant's "BEANIE RACERS" mark similar to Ty's BEANIE mark); Meridian, 128 F.3d at 1116 (the word "Meridian" was the critical element of both company's names, and trademark was deemed essentially the same). Softbelly claims that "Screenie Beanies" looks and sounds different then Ty's BEANIE BABIES®. However, it is the obvious use of the term "beanie(s)" that make these marks similar. Even though Softbelly's mark makes use of the term "screenie" in conjunction with "beanies," it is still "beanies" which the mark trades on. As such, the marks are clearly similar. Softbelly's further argues that the term "beanie(s)" is generic, but as was previously discussed, "beanie(s)" has a better than negligible chance that it has acquired secondary meaning. Accordingly, the strong similarity of the marks weighs in favor of a finding of likelihood of confusion.
ii. Similarity of Products
The inquiry in comparing the two products is not whether they are interchangeable, but whether "the parties' products are the kind the public might very well attribute to a single source. . . ." Eli Lilly, 233 F.3d at 463 (quoting International Kennel Club, 846 F.2d at 1087)). Although the chamois under side of Softbelly's product may allow some attribute of usefulness not found in Ty's product, the form it cloaks itself in reeks of a likelihood of confusion. Both products are made of a similar velour-type material, about the same size, and quite often in the same animal shapes. Further, both Ty and Softbellys' products have tags attached which state the name, "birth date," and a short poem about the plush toy animal. This factor also supports a finding of likelihood of confusion.
iii. Area and Manner of Concurrent Use
This factor examines "whether there is a relationship in use, promotion, distribution, or sales between the goods or services of the parties." Forum Corp. of North Am. v. Forum Ltd., 903 F.2d 434, 442 (7th Cir. 1990). In determining whether the area and manner of concurrent use as between two marks is likely to cause confusion, cases have tended to focus on "the geographical area of distribution, whether there is evidence of direct competition between the relevant products, whether the products are sold in the same stores, whether the products are sold in the same section of a given store, whether the products are sold through the same `marketing channel.'" Ty, Inc. v. The Jones Group, Inc., 98 F. Supp. 2d at 999 (quoting S Industries, Inc. v. JL Audio, Inc., 29 F. Supp.2d 871, 891-92 (N.D. Ill. 1998)). Softbelly has not presented any evidence as to where their products are sold or advertised, other than to state they are sold in computer stores. In contrast, Ty has presented uncontradicted evidence as to the manner and place for both their and Softbelly's marketing and sales. Softbelly markets it products nationally via retail stores and the internet. A national magazine that often features articles on Ty's products has done the same with Softbelly's product. More significantly, Ty and Softbelly products are both advertised and offered for sale by at least one retail outlet that is the same. The products, because of their very nature and similarity, will inevitably end up in the same stream of commerce. The court finds concurrent use of the products also demonstrates a likelihood of confusion.
iv. Degree of Care Likely to be Exercised by Consumers
The degree of care factor seeks to distinguish how likely the relevant group of consumers is to distinguish between different products. S Industries, 29 F. Supp.2d at 892. Where the relevant group of consumers is likely to buy in haste or on impulse, confusion is more likely. Id. Additionally, "where `the cost of the . . . trademarked product is high, the courts assume that purchasers are likely to be more discriminating than they might otherwise be.' Moreover . . . where the product involved was a low value item, the risk of confusion is greater. . . ." Id. (quoting Maxim's Ltd. v. Badonsky, 772 F.2d 388, 393 (7th Cir. 1985)). There is no evidence to suggest that consumers of either product will exercise great care. It has been suggested that since BEANIE BABIES® have reached a collectible status that their purchasers will exercise greater care. See Ty, Inc. v. The Jones Group, 98 F. Supp.2d at 1000. However, what is forgotten is that collectors of Ty's BEANIE BABIES® are not necessarily the largest or most relevant group of consumers. What needs to be kept in mind is that these products are trivial in nature based on what they are (plush stuffed toy animals) and what they cost (under ten dollars). The court believes that the relevant consumer will exercise a relatively minimal degree of care in purchasing these products and this points towards a likelihood of confusion.
v. Strength of Ty's Mark
"The term `strength' as applied to trademarks refers to the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular . . . source." Eli Lilly, 233 F.3d at 464 (quoting Sands, Taylor Wood Co. v. Quaker Oats Co., 978 F.2d 947, 959 (7th Cir. 1992)). Ty's BEANIE BABIES® are a phenomenon. Ty has sold over 1 billion toys throughout the United States since 1993. The term "beanie(s)" was used by Ty to refer exclusively to BEANIE BABIES® starting in September of 1998. McDonald's promotions in 1997, 1998, 1999, and 2000, distributed over 300 million "Teenie Beanie Babies" plush toys. Consumer surveys submitted into evidence by Ty, which are unrefuted, clearly indicate that the term "beanie(s)" is connected by consumers to Ty and its product and that consumers understand the words "beanies" and "beanie" to mean Beanie Baby or Ty, or refer to a toy made or produced by Beanie Baby or Ty. This factor also weighs in favor of a finding of likelihood of confusion.
Ty submitted into evidence two surveys with it memorandum of law in support of its motion for preliminary injunction: The Admar Survey (Exhibit 4) and Field Research Survey (Exhibit 5).
vi. Actual Confusion
There has been no demonstration of actual confusion. However, evidence of actual confusion is not essential to a finding of a likelihood of confusion. Eli Lilly, 233 F.3d at 465. This factor is neutral in the analysis.
vii. Intent to Palm Off the Product as that of Another
Lastly, the court considers Softbelly's intent in terms of its mark and product. In order to find trademark infringement, it is not necessary to find proof of the infringer's fraudulent intent. Ty, Inc. v. The Jones Group, 98 F. Supp.2d at 1001 (citing Ziebart International Corp. v. After Market Assoc., 802 F.2d 220, 227 (7th Cir. 1986); Henri's Food Products, 717 F.2d at 359 (7th Cir. 1983)). No direct evidence of an intent to cause confusion is before the court. Ty does suggest that Softbelly was undoubtedly aware of Ty's mark prior to choosing the "Screenie Beanies" name. Additionally, Ty claims that Softbelly never consulted an attorney before they selected the "Screenie Beanies" name. Ty's claims give the court pause, but the claims are not of the level of evidence where the court can state that Softbelly had malicious intent. This factor does not weigh in favor of a likelihood of confusion.
viii. Conclusion
"None of these factors by itself is dispositive of the likelihood of confusion question, and different factors will weigh more heavily from case to case depending on the particular facts and circumstances involved." International Kennel Club, 846 F.2d at 1086. In this particular situation, the factors of "actual confusion" and "intent to palm off" do not have as much bearing because the discovery process has not be initiated and the response of the public has not been gauged as to the effect of the marketing and sale of "Screenie Beanies." What is relevant are the factors that deal with the tangible aspects of the marks and products: similarity of marks, similarity of products, area of concurrent use, degree of care, strength of the mark. Upon considering each of the factors, the court finds there is a better than negligible chance of showing a likelihood of confusion.
B. Balancing of Harm
In order to succeed on a motion for preliminary injunction, a plaintiff must prove that it has an inadequate remedy at law and that it would suffer irreparable harm if a preliminary injunction does not issue. Ty, Inc., v. The Jones Group, Inc., 98 F. Supp. 2d at 991 (citing Ty, Inc. v. West Highland Publishing, Inc., No. 98-4091, 1998 U.S. Dist. LEXIS 15869 at *19 (ND. Ill. 1998). "These two elements are often merged because they involve the same analysis." Ty, Inc., v. The Jones Group, Inc., 98 F. Supp.2d at 991; Meridian Mut. Ins. Co., 128 F.3d at 1120. Irreparable harm is generally presumed in cases of trademark infringement and dilution. Ely Lilly, 233 F.3d at 469; see also Abbott Labs, 971 F.2d at 16 (regarding the "well established presumption that injuries arising from Lanham Act violations are irreparable, even absent a showing of business loss"); American Dairy Queen Corp v. New Line Prod., Inc., 35 F. Supp.2d 727, 729 (D. Minn. 1998) (presuming irreparable harm by dilution). Additionally, it has been recognized that such irreparable harm is "not susceptible of adequate measurement for remedy at law . . . ."Ty, Inc., v. The Jones Group, Inc., 98 F. Supp. 2d at 991 (citingInternation Kennel Club, 846 F.2d at 1092) (in turn quoting Processed Plastic Co. v. Warner Communications, 675 F.2d 852, 858 (7th Cir. 1982)).
Softbelly claims that Ty waited ten months before filing the instant action and preliminary injunction. Thus, Softbelly argues there can be no irreparable harm. However, "delay is only one among several factors to be considered; [the] cases do not support a general rule that irreparable injury cannot exist if the plaintiff delays in filing its motion for a preliminary injuction." Ty, Inc., v. The Jones Group, Inc., 98 F. Supp. 2d at 992 (citing Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1025 (7th Cir. 1979), cert. denied, 447 U.S. 924 (1980). Softbelly must have been "lulled into a false sense of security or . . . acted in reliance on the plaintiff's delay." Ty, Inc., v. The Jones Group, Inc., 98 F. Supp. 2d at 992. Although there was delay in filing this action and motion, it cannot be considered to stand for a surrender by Ty as to its trademark rights in its marks. Rather, the very fact that Ty sent a cease and desist letter should have placed Softbelly on notice that the instant action and motion could result. The denial of preliminary injunction would cause Ty to suffer irreparable harm and sustain incalculable monetary damages.
The harm identified to Ty must be balanced against the harm Softbelly will suffer if a preliminary injunction is granted. It is obvious that Softbelly will incur harm if it is enjoined from the sale of its product. However, "`[o]ne entering a field already occupied by another has a duty to select a mark that will avoid confusion,' one who fails in this duty cannot later `complain that having to mend its ways will be too expensive.'" Ty, Inc., v. The Jones Group, Inc., 98 F. Supp. 2d at 993 (citing Processed Plastic Co., 675 F.2d at 859) (internal citations omitted). It is obvious that Softbelly had knowledge of Ty's mark and product but still chose to continue down this path. Additionally, Ty has alleged that Softbelly neither sought the advice of a trademark attorney nor did they conduct a search to confirm that there mark was not the same or confusing similarly to another already existing mark. Softbelly has not suggested otherwise. The court finds that the harm suffered by Softbelly if the injunction were granted is not greater than the harm suffered by Ty if an injunction were denied.
C. Public Interest
Softbelly has not presented an argument as to why the granting of preliminary injunction would be harmful to the public. "`Absent such a showing, the statutory policies favoring trademark protection are determinative.'" Ty, Inc., v. The Jones Group Inc., 98 F. Supp. 2d at 1002 (quoting Floralife, Inc v. Floraline Int'l, Inc., 633 F. Supp. 108, 116 (N.D. Ill. 1985). "The Supreme Court has stated that "because trademarks desirably promote competition and the maintenance of product quality, Congress determined that `a sound public policy requires that trademarks should receive nationally the greatest protection they can be given'" Ty, Inc., v. The Jones Group, Inc., 98 F. Supp.2d at 1002 (quoting Park'N'Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985)). Thus, the public interest requires a sacrifice from Softbelly in order to avoid any likelihood of confusion or dilution.
III. CONCLUSION
Ty has shown that it has a better than negligible chance on the merits, there is not an adequate remedy at law, that it will, as well as the public, suffer greater harm if the injunction is denied. For the foregoing reasons the court grants the preliminary injunction.
IT IS SO ORDERED.