Ty, Inc. Loses First Round of Beanie Baby Case to Imperial Toy. Imperial Wins Preliminary Injunction Against Ty's
'Roary' the Lion.
Chicago, II. -- September 13, 1998 -- Imperial Toy Corporation filed with the federal district court, on Friday, a
proposed order that would prevent Ty, Inc. from selling its 'Roary' the lion Beanie Baby. Representing Imperial, Banner
& Witcoff lawyer, Marc Cooperman, confirmed that Imperial won a preliminary injunction against Ty, Inc. last week.
Judge George Lindberg issued the preliminary injunction against Ty, Inc. for use of the name 'Roary' on Ty's bean bag
toy animals.
Ty, Inc. is very aggressive in suing others over Beanie Babies. 'This is believed to be the first Beanie Baby case
where Ty is being sued,' stated Mr. Cooperman.
The case involves Imperial Toy Corporation, based in Los Angeles and Imperial's line of 'Friendly Pebble Pets' bean
bag animals. Imperial markets throughout the world a wide variety of toys including its well-known brands Miracle
Bubbles and Petite Miss makeup and accessories, and is currently celebrating its 30th anniversary.
Imperial began using the name 'Roary' for its bean bag lion in 1996. In May 1997 Ty, Inc., based in Westmont, IL, began
nationwide marketing, selling, and distributing of a bean bag toy lion bearing the identical mark -- the name 'Roary.'
The Intellectual Property law firm of Banner & Witcoff, on behalf of Imperial, alleged that Ty's 'Roary' infringed
Imperial*s previously existing trademark.
In the opinion and order, the Judge agreed with Imperial, concluding that Imperial is likely to succeed at trial in
proving its 'reverse confusion' case -- where the less known product of the two (Imperial's) is the first to bear the
mark. The Judge found that Ty, Inc. was aware of Imperial's prior use of 'Roary' before introducing its own Roary, but
'ignored Imperial's senior rights to the mark.'
In opposition to the preliminary injunction motion, Ty Warner, President of Ty, Inc., testified that Beanie Babies and
Friendly Pebble Pets occupy 'two different niches in the marketplace.' The Judge disagreed with Mr. Warner, noting
Imperial's counsel's impeachment of Warner on this point at the hearing, with his previous testimony that the toys were
'in competition,' leading the Court to find 'Warner's assertion that the toy lines do not compete incredible.'
Trial of the case is scheduled for October, when Imperial will be seeking to permanently enjoin Ty's sale of Roary, and
will also be seeking to recover Ty's profits from its sales of its Roary.
