In the

United States Court of Appeals

For the Seventh Circuit

No. 00-2746

Ty, Inc.,

Plaintiff-Appellee,

v.

The Jones Group, Inc.,

Defendant-Appellant.

Appeal from the United States District Court

for the Northern District of Illinois, Eastern Division.

No. 99 C 2057--Ian H. Levin, Magistrate Judge.

Argued December 4, 2000--Decided January 23, 2001

 Before Flaum, Chief Judge, and Diane P. Wood and

Williams, Circuit Judges.

 Flaum, Chief Judge. The Jones Group, Inc.

("Jones") manufactures and sells "Beanie Racers,"

which are plush toys shaped like race cars. Ty,

which sells plush toys under the name "Beanie

Babies," obtained a preliminary injunction

against Jones, forcing it to stop producing and

selling Beanie Racers. Jones asks us to reverse

the magistrate judge’s grant of a preliminary

injunction in favor of Ty on several grounds. For

the reasons stated herein, we affirm.

I. Background

 Ty in 1993 began selling plush toys throughout

the United States under the name "Beanie Babies"

and has sold over a billion Beanie Babies since

the product’s inception. Dozens of newspaper and

magazine articles, television news stories, web

sites, books, and magazines have emerged

concerning Ty’s Beanie Babies, apparently making

the product a national sales phenomenon. Ty has

obtained U.S. Federal Trademark Registrations for

the marks "Beanie Babies" and "The Beanie Babies

Collection." Beanie Babies are small, plush

animals filled with plastic pellets. Generally,

they are eight to nine inches long and typically

are made from a velboa-type fabric. A red, heartshaped hang tag with Ty’s logo on it is attached

to each Beanie Babies product. 
 Jones is a licensee of NASCAR and began in 1998

manufacturing and selling Beanie Racers, which

are bean-filled replicas of NASCAR racing cars.

Attached to each Beanie Racer is a white and

rectangular shaped hang tag with the following

information on it: (1) the Beanie Racers mark;

(2) the multi-colored NASCAR mark; (3) the

signature of the driver of each NASCAR race car,

including a disclosure which recognizes the

individual or entity who owns the rights to such

signature; and (4) the corporate sponsor of each

NASCAR race car. Beanie Racers are approximately

eight inches long, are filled with plastic

pellets, and are made of velboa-type plush

fabric. 

 Ty sent Jones a cease and desist letter dated

July 17, 1997 informing Jones that its Beanie

Racers infringed upon Ty’s trademark rights.

Jones proceeded forward with the production of

its Beanie Racers and Ty responded by pursuing

legal action against Jones. In its suit, Ty

alleges that Jones engaged in trademark

infringement, unfair competition, and dilution in

violation of federal and state laws. On November

17, 1999, Ty requested a preliminary injunction

against Jones prohibiting Jones from selling

plush toys under the name Beanie Racers pending

the outcome of the suit. The magistrate judge

granted Ty’s motion for a preliminary injunction

in an Opinion and Order dated June 5, 2000. Jones

requested a reconsideration of the magistrate

judge’s opinion, but the magistrate judge decided

not to alter his original opinion. On July 7,

2000, the magistrate judge entered the

preliminary injunction against Jones and set a

bond in the amount of $500,000. Jones is

appealing the grant of the preliminary injunction

pursuant to an interlocutory appeal, 28 U.S.C.

sec. 1292(a)(1). 

II. Discussion

A. Sliding Scale Analysis

 A party seeking to obtain a preliminary

injunction must demonstrate: (1) its case has

some likelihood of success on the merits; (2)

that no adequate remedy at law exists; and (3) it

will suffer irreparable harm if the injunction is

not granted. See Abbott Labs. v. Mead Johnson &

Co., 971 F.2d 6, 11 (7th Cir. 1992). If the court

is satisfied that these three conditions have

been met, then it must consider the irreparable

harm that the nonmoving party will suffer if

preliminary relief is granted, balancing such

harm against the irreparable harm the moving

party will suffer if relief is denied. See Storck

USA, L.P. v. Farley Candy Co., 14 F.3d 311, 314

(7th Cir. 1994). Finally, the court must consider
the public interest (non-parties) in denying or

granting the injunction. Id. The court then

weighs all of these factors, "sitting as would a

chancellor in equity," when it decides whether to

grant the injunction. Abbott Labs., 971 F.2d at

12. This process involves engaging in what we

term the sliding scale approach; the more likely

the plaintiff will succeed on the merits, the

less the balance of irreparable harms need favor

the plaintiff’s position. Id. The sliding scale

approach is not mathematical in nature, rather

"it is more properly characterized as subjective

and intuitive, one which permits district courts

to weigh the competing considerations and mold

appropriate relief." Id. (internal citations and

quotation marks omitted). 

 We review a district court’s decision to grant

or deny a preliminary injunction under the abuse

of discretion standard. Id. A district court when

analyzing the relevant factors abuses it

discretion when it commits a clear error of fact

or an error of law. Id. at 13. We accord, absent

any clear error of fact or an error of law,

"great deference" to the district court’s

weighing of the relevant factors. Id. "[W]hile

our review is more searching than an examination

of whether the district court weighed those

factors irrationally or fancifully, we may not

substitute our judgment for that of the district

court." Id. (internal citations and quotation

marks omitted). 

 Jones finds fault with the manner in which the

magistrate judge weighed the relevant factors in

deciding to grant a preliminary injunction in

favor of Ty. Balancing the harms "involves a twostep process. First the court must assess the

plaintiff’s chance of success. Next it must

balance the hardships in accordance with this

determination." Farley Candy Co., 14 F.3d at 314.

Initially, the court only needs to determine that

the plaintiff has some likelihood of success on

the merits. However, at the balancing stage, the

court must determine how great the moving party’s

likelihood of success on the merits is in order

to properly balance the potential harms. See id.

at 314 n.1. Jones contends that the magistrate

judge failed to conduct a sliding scale analysis

in his June 5, 2000 Opinion and Order and that he

balanced the harms to the respective parties

before considering whether Ty had shown that it

had a likelihood of succeeding on the merits.

When the magistrate judge balanced the harms,

according to Jones, it had not yet determined how

great Ty’s likelihood of success on the merits

was; therefore, the magistrate judge improperly

balanced the harms.

 Jones, in a motion for reconsideration, alerted
the magistrate judge to its belief that he had

failed in the opinion to engage in the sliding

scale approach. The magistrate judge conducted a

hearing on June 20, 2000 to address the matter

and then on July 7, 2000 issued a supplemental

order denying Jones’ motion for reconsideration.

Jones points out that the magistrate judge’s

original opinion made no mention about Ty’s

approximately 50 - 50 chance of succeeding on the

merits. Further, Jones notes that the magistrate

judge in his original opinion found, after

addressing the likelihood of confusion factors,

that Ty had "a better than negligible chance of

showing likelihood of confusion." Jones concludes

that the magistrate judge’s assertion that Ty had

about a 50 - 50 likelihood of success on the

merits is at odds with his conclusion that Ty had

a better than negligible chance of showing a

likelihood of confusion. Jones claims that the

magistrate judge failed to properly conduct a

sliding scale analysis because he balanced the

harms before assessing Ty’s likelihood of success

on the merits and the magistrate judge’s

determination of the likelihood of success on the

merits seems inconsistent with his original

opinion.

 Both in a supplemental order and a hearing

conducted on June 20, 2000, the magistrate judge

indicated that he had evaluated Ty’s likelihood

of success on the merits before considering the

balancing of the harms. The magistrate judge said

in his supplemental order that "in analyzing the

issues, this Court did evaluate the Plaintiff’s

likelihood of success on the merits prior to

considering the balancing of harms. Specifically,

based on the record before it, the Court

determined that the Plaintiff had about a 50 - 50

chance of likelihood of success on the merits.

This evaluation of [the] likelihood of success

was, then, considered and applied by the Court in

its making of the balancing of harms analysis

required in the Seventh Circuit." During the June

20, 2000 hearing regarding Jones’ motion for

reconsideration, the magistrate judge stressed

that he had conducted a sliding scale analysis

and that Ty had some likelihood to succeed on the

merits:

I just want to mention that it may have been

unfortunate on my side, putting the balancing of

the harms before the likelihood of success on the

merits in terms of the format of the opinion, but

the reality of the situation is I looked at the

likelihood of success on the merits before I got

to the . . . balancing of the harm . . . . I

might not have articulated it in the opinion, but

it was quite obvious to me that they had . . . a

pretty decent chance of winning[;] . . . perhaps

up to a fifty-fifty chance of prevailing on [the]
permanent injunction. This is not a case where

there’s just a slight chance of winning.

The magistrate judge was careful to make it clear

that he did take into account Ty’s likelihood of

success on the merits before balancing the harms

and that he did consider the extent to which Ty

may succeed on the merits. In doing so, he

remarked that this is not a case where Ty had a

"slight chance of winning." This comment implies

that the magistrate judge was comfortable with

his overall determination that granting a

preliminary injunction in favor of Ty was

appropriate because Ty had a realistic chance of

succeeding on the merits. Jones has provided no

convincing evidence that the magistrate judge’s

assertions regarding this issue is somehow

incorrect. In a straightforward fashion, both

during the hearing on the matter and in his

supplemental order, the magistrate judge provided

us with his reasoning with regard to the

balancing of factors in the case. We review such

a decision with great deference and we will not

disturb a magistrate judge’s decision based upon

supposition that his analysis was improper. See

Farley Candy Co., 14 F.3d at 315 ("We will take

the court at its word that its actual comparison

was of the overall appearance of the trade

dresses; therefore there was no error of law.").

Therefore, we find no abuse of discretion with

regard to the manner in which the magistrate

judge conducted the sliding scale analysis. 

B. Likelihood of Success on the Merits

 Ty’s trademark infringement case against Jones

claims that Jones’ use of the name Beanie Racers

violates sec. 43(a) of the Lanham Act, 15 U.S.C.

sec. 1125(a). In order to prevail in an action

under sec. 43(a) of the Lanham Act, Ty must

establish: "(1) that it has a protectible

trademark, and (2) a likelihood of confusion as

to the origin of the defendant’s product."

International Kennel Club of Chicago, Inc. v.

Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir.

1988) (internal citations and quotation marks

omitted). Ty need only demonstrate at the

preliminary injunction stage that it has a

"better than negligible" chance of succeeding on

the merits so that injunctive relief would be

justified. Id. (internal citations and quotation

marks omitted). Jones did not contest the

magistrate judge’s conclusion that Ty has a

protectible interest in the term "Beanie" because

it has a better than negligible chance of proving

that the mark has acquired secondary meaning. We

will therefore accept the magistrate judge’s

determination regarding Ty’s protectible interest

in the term "Beanie." 
 Next, we turn to whether Ty has a valid

likelihood of consumer confusion claim regarding

the origin of Jones’ product. We employ the

following factors to evaluate whether a

likelihood of confusion exists in a trademark

case: (1) the similarity of the marks in

appearance and suggestion; (2) the similarity of

the products; (3) the area and manner of

concurrent use; (4) the degree of care likely to

be used by consumers; (5) the strength of the

plaintiff’s mark; (6) whether any actual

confusion exists; and (7) the defendant’s intent

to palm off its goods as those of the plaintiffs.

See Helene Curtis Indus., Inc. v. Church & Dwight

Co., Inc., 560 F.2d 1325, 1330 (7th Cir. 1977).

The magistrate judge recognized that "[n]one 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 1087 (internal citations and

quotation marks omitted). As a consequence, the

"weight and totality of the most important

factors in each case will ultimately be

determinative of the likelihood of confusion, not

whether the majority of the factors tilt the

scale in favor of one side or the other." Schwinn

Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d

1176, 1187 (7th Cir. 1989). Even though no one

factor is decisive, the similarity of the marks,

the intent of the defendant, and evidence of

actual confusion are the "most important factors"

in a likelihood of confusion case. G. Heileman

Brewing Co., Inc. v. Anheuser-Busch, Inc., 873

F.2d 985, 999 (7th Cir. 1989); see also Eli Lilly

& Co. v. Natural Answers, Inc., 233 F.3d 456, 462

(7th Cir. 2000). The magistrate judge’s findings

with regard to likelihood of confusion are

findings of fact and are subject to a clearly

erroneous standard of review. See Eli Lilly, 233

F.3d at 462. 

 Jones argues that the magistrate judge abused

his discretion when he found that there was a

likelihood of confusion between the Ty and Jones

marks and therefore Ty had about a 50 - 50 chance

of likelihood of success on the merits. With

regard to four of the factors--that is,

consumers’ degree of care, strength of marks,

actual confusion, and intent to palm off

plaintiff’s goods--the magistrate judge found in

favor of Jones. Ty is not contesting the

magistrate judge’s conclusions with regard to

these factors and so we need not address them. As

an initial matter, Jones claims that the

magistrate judge did not even find that the most

important factors, including similarity of the

marks, the intent of the defendant, and evidence

of actual confusion favored Ty. In fact, he only
found that the similarity of the marks favored

Ty, which according to Jones, reveals that Ty’s

case for likelihood of confusion is not

exceptionally strong. 

 1. Similarity of the Marks

 The magistrate judge determined that there was

a better than negligible chance that consumers

would view the Beanie Racers mark as similar and

source identifying with Ty’s "Beanie" mark. Jones

asserts that the magistrate judge erred when he

said that the "mark in issue is the ’Beanie’

mark." According to Jones, the proper point of

comparison is how a consumer would view the

marks. The Jones mark is Beanie Racers and so the

appropriate comparison would be between "Beanie

Racers" and "Beanie Babies" and not just the word

"Beanie." Jones would like us to find that the

magistrate judge’s emphasis upon the term

"Beanie" is inappropriate. This is difficult to

do considering Jones has not appealed the

magistrate judge’s conclusion that Ty has a

better than negligible chance of showing that the

"Beanie" mark is entitled to protection.

Therefore, it seems proper that the magistrate

judge would focus upon the mark entitled to

protection--that is, the "Beanie" mark--when

comparing the two products. As the magistrate

judge noted, this Circuit adheres to the rule

that "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." Henri’s Food Prods. Co., Inc. v.

Kraft, Inc., 717 F.2d 352, 356 (7th Cir. 1983).

It is "inappropriate to focus on minor stylistic

differences to determine if confusion is likely"

if the public does not encounter the two marks

together. Meridian Mut. Ins. Co. v. Meridian Ins.

Group, Inc., 128 F.3d 1111, 1115 (7th Cir. 1997).

When attempting to determine if two marks are

similar, the comparison should be made "’in light

of what happens in the marketplace,’ [and] not

merely by looking at the two marks side-by-side."

Id. (quoting James Burrough Ltd. v. Sign of

Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.

1976)). With this in mind, we must remember that

Beanie Racers and Beanie Babies when placed sideby-side do have distinctive hang tags that make

them seem dissimilar. However, one presumes that

in the marketplace consumers are not placing the

plush toys side-by-side and noting that the

Beanie Racers hang tag is rectangular and white

and that Ty’s is red and heart-shaped. It is also

unlikely that consumers are necessarily noticing

that most Beanie Baby hang tags do not have the

word "Beanie Baby" on the front of the hang tag;

however, they do all have the mark "The Beanie

Babies Collection" on the inside of the hang
tag./1 The word "Beanie" is a well-known and

famous part of the Ty mark, rendering it the more

salient portion of the mark and therefore

deserving greater weight than the surrounding

elements. 

 Jones argues that the surrounding marks, like

the NASCAR mark, the corporate sponsor mark, and

the signature of the driver, on its hang tag

reduces the likelihood of confusion between its

mark and Ty’s; this is not necessarily a strong

argument. As we have already stated, the term

"Beanie" is salient and reduces the importance of

the surrounding elements. The additional marks on

the Beanie Racers may not reduce the likelihood

of confusion among consumers because they still

may believe that Ty licensed, approved, or

authorized Jones’ production of the Beanie

Racers. See International Kennel Club, 846 at

1088. Ty did license the Beanie Babies mark for

use in McDonald’s promotions in 1997, 1998, and

1999 under the name "Teenie Beanie Babies." Ty

also produces "Beanie Buddies" and "Beanie Kids"

toys. Consumers very well may think that Ty

licensed or sponsored the Beanie Racers as part

of Ty’s line of "Beanie" products. The "Beanie"

mark does seem to be the common thread among all

of Ty’s "Beanie" products, suggesting the mark is

distinctive, and Ty markets its products relying

on the public’s recognition of this term. There

is no indication that the magistrate judge made

any clear error regarding his findings on this

issue. Based on the evidence presented to him, he

found that the "Beanie" mark was a salient aspect

of Ty’s product, and under our deferential

standard of review, we will not disturb his

conclusion.

 2. Similarity of the Products

 The magistrate judge determined that the

similarity of the products slightly favored Ty as

well. In assessing whether products are similar,

the question is "whether the products are the

kind the public attributes to a single source."

McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d

1163, 1169 (7th Cir. 1986) (internal citations

and quotation marks omitted). The magistrate

judge commented that it was important that Jones’

advertisements for its Beanie Racers "highlight

the similarities between the two products" by

stating that Beanie Racers "are constructed from

plush fabric like Beanie Babies." Jones in its

motion for reconsideration brought to the

magistrate judge’s attention that third-parties

created these advertisements and not Jones.

Although the magistrate judge may have presumed

the advertisements were created by Jones, this

assumption on the magistrate judge’s part does
not affect his reasoning. He found that the

"similarity of the products slightly favors [the]

Plaintiff in light of the fact that they are both

small stuffed objects and that [the] Defendant

compares its product to that of the Plaintiff in

its own advertisements." In the magistrate

judge’s opinion, it is important that the objects

are similar in that they are small stuffed

objects that are soft, pellet-filled, eight to

nine inch plush toys made from velboa-type

fabric. When considering whether products are

closely related for the purpose of likelihood of

confusion, "[a] closely related product is one

which would reasonably be thought by the buying

public to come from the same source, or thought

to be affiliated with, connected with, or

sponsored by, the trademark owner." Sands, Taylor

& Wood Co. v. Quaker Oats Co., 978 F.2d 947, 958

(7th Cir. 1992) (internal citations and quotation

marks omitted). The similarity between Beanie

Babies and Beanie Racers in that they are small

stuffed objects can be important because the

public may presume that Ty is somehow affiliated

with the Beanie Racers product. Furthermore, even

if Jones did not create the advertisements

comparing Beanie Racers and Beanie Babies, the

advertisements could cause the public to believe

that Beanie Racers come from the same source as

Beanie Babies. We are concerned in this instance

with the public’s perception of who created the

product and therefore whether Jones or one of

Jones’ buyers sponsored the advertisement is not

critical. See McGraw-Edison Co., 787 F.2d at 1169

("the district court apparently ignored the

question of whether the purchasing public might

believe a single source could produce both

electronic fuses (manufactured by McGraw-Edison)

and video games and telephones (licensed by

Disney)"). This is also why whether Ty employees

recognize the difference between the two products

is not crucial as Jones suggests because what is

important is whether customers or potential

customers would be confused. Although the

magistrate judge incorrectly attributed the

advertisements to Jones, the remaining facts

support the magistrate judge’s findings that the

products are similar. The advertisements, whether

created by Jones or third-parties, seem to create

the impression that Beanie Racers are affiliated

or associated with Ty. The magistrate judge’s

findings on this matter are not unsupported and

therefore we will not dislodge his determination

in this regard.

 3. Area and Manner of Concurrent Use

 When considering the area and manner of

concurrent use factor, we have to assess whether

"there is a relationship in use, promotion,
distribution, or sales between the goods or

services of the parties." Forum Corp. of N. 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, the magistrate noted that

several factors can be important: (1) the

relative geographical distribution areas, see

Rust Env’t & Infrastructure, Inc. v. Teunissen,

131 F.3d 1210, 1217 (7th Cir. 1997); (2) whether

there exists evidence of direct competition

between the products, see Smith Fiberglass

Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1330

(7th Cir. 1993); (3) whether the products are

sold to consumers in the same type of store, see

Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967

(2nd Cir. 1981); (4) whether the products are

sold in the similar section of a particular

store, see id.; and (5) whether the product is

sold through the same marketing channels, see

Nike, Inc. v. "Just Did It" Enters., 6 F.3d 1225,

1230 (7th Cir. 1993). 

 The magistrate judge concluded that the manner

and concurrent use of the "Beanie" mark and

Jones’ "Beanie Racers" mark created a better than

negligible chance of a likelihood of confusion.

The magistrate judge stated that "[b]oth products

are sold only to speciality retailers, and are

most likely sold in the same section(s) of such

stores. In addition, both products are produced

in limited numbers and periodically [are] retired

in order to achieve a collectible status.

Finally, both Beanie Babies and Beanie Racers are

featured in the same or similar magazines." Jones

in its motion for reconsideration pointed out

that Beanie Racers are not just sold to

speciality stores. As it turns out, Beanie Racers

are sold to mass market retailers, like Kroger,

Walgreens Drugs, Save A Lots, and J.C. Penney,

which is Jones’ largest customer. Since J.C.

Penney is not a speciality store, it is not an

authorized Ty seller. This misstatement on the

part of the magistrate judge does not fatally

weaken the implication of his comment. Even

though Jones sells Beanie Racers to mass market

retailers, this does not negate that Beanie

Racers are sold to speciality stores and Ty also

sells its Beanie Babies exclusively to speciality

gift stores. One of the biggest customers for

both Beanie Racers and Beanie Babies is Cracker

Barrel. Beanie Racers were sold on the same web

sites as those that sell Ty products as well. The

magistrate judge did not err when he determined

that Beanie Babies and Beanie Racers are sold in

the same store--that is, speciality stores--and

even possibly in the same section of those

stores.

 The magistrate judge also concluded that the
fact that Beanie Racers and Beanie Babies are

featured in the same or similar magazines shows

that they are sold using the same means of

advertising. This proposition would still hold

true even if, as Jones contends, Beanie Racers

were advertised mainly in racing magazines.

Nonetheless, Beanie Racers were still advertised

in the same magazines as Beanie Babies, such as

Mary Beth’s Bean Bag World and Hot Toys

magazines, revealing a somewhat similar

advertising approach on the part of both

entities. Because both products are sold in the

same stores and advertised in some of the same

magazines, this also indicates that the products

to some extent are in direct competition. In

fact, Ty claims that it is possible that the two

companies directly compete with each other in

terms of their target audience. Jones denies this

based on the fact that Ty Warner, owner of Ty,

Inc., said in a deposition in Imperial Toy Corp.

v. Ty, Inc., No. 97 C 8895, 1998 WL 601875 (N.D.

Ill. Sept. 09, 1998) that the largest niche for

Beanie Babies was girls between the ages of five

and fourteen, whereas there is no evidence Beanie

Racers are being sold primarily to girls between

the ages of five and fourteen. Ty claims that Ty

Warner said Ty’s market runs "the whole gamut"

and noted that he thought the largest niche was

girls five to fourteen. One of Jones’ own

principals, according to Ty, Greg Jones, said,

"Beanie Racers have a tremendous appeal to the 40

percent of the NASCAR fan base that has been

largely overlooked for years, namely women and

children." Based on the evidence presented, it

seems undeniable that Beanie Racers and Beanie

Babies were sold and advertised in the same

venues and there exists the possibility that the

two companies targeted similar buyers. Taken

together as a whole, we cannot conclude that the

magistrate judge erred in finding Ty has a better

than negligible chance of showing a likelihood of

confusion based upon the manner and concurrent

use of the "Beanie" mark and Jones’ production of

Beanie Racers.

 4. The Most Important Factors Issue

 In this case, the magistrate judge determined

that the similarity of the marks, the similarity

of the products, and the area and manner of

concurrent use constitute the three most critical

factors in assessing whether there exists a

likelihood of confusion. He acknowledged that

some of the likelihood of confusion factors

weighed in Ty’s favor and others weighed in

Jones’ favor. Nevertheless, he concluded that the

"Plaintiff has, at bottom, a better than

negligible chance of showing likelihood of

confusion." We see no reason to disturb the

magistrate judge’s conclusion. While it is true
that he found that only one of the most important

factors--that is, the similarity of the marks--

favored Ty, this does not diminish his overall

determination. See Eli Lilly, 233 F.3d at 462

(stating the three most important factors one

should look to in a likelihood of confusion

case). We allow the magistrate judge the

flexibility to determine what factors are most

critical in a case, and in this instance, the

"Beanie" mark was at the heart of the

disagreement between Jones and Ty. We can find no

abuse of discretion in the magistrate judge’s

particular emphasis on certain factors that

favored Ty. There is no hard and fast requirement

that all three of the most significant factors

must weigh in a plaintiff’s favor for that

particular party to prevail in attaining a

preliminary injunction. The magistrate judge

determined that Ty had both a protectible

interest in the "Beanie" mark and that there was

a likelihood of confusion as to the origin of the

Beanie Racers product; thus, he concluded Ty had

about a 50 - 50 chance of likelihood of success

on the merits. We detect no clear error in the

magistrate judge’s analysis of the facts and

therefore we affirm the magistrate judge’s

decision to find that Ty had some likelihood of

succeeding on the merits.

C. Balancing of the Harms

 Jones challenges the manner in which the

magistrate judge balanced the respective

irreparable harms that may result to each party

if an injunction is granted or denied. We review

a court’s balancing of the preliminary injunction

factors for an abuse of discretion. TMT N. Am.,

Inc. v. Magic Touch, GmbH, 124 F.3d 876, 881 (7th

Cir. 1997). A court when weighing the interests

of the private parties and the public interest

should try to "minimize the costs of being

mistaken." Abbott Labs., 971 F.2d at 12 (internal

citations and quotation marks omitted). The costs

in this case could run high considering the

possible practical harms that may flow from the

grant of a preliminary injunction in favor of Ty.

Jones notes that even if one were to assume that

Ty had about a 50 - 50 chance of succeeding on

the merits, Ty had to show that it would suffer

more harm from the denial of an injunction than

Jones would suffer from an entry of an

injunction. Jones argues that by granting an

injunction, the magistrate judge effectively

ended the parties’ dispute and allowed Ty to seek

the relief it desired without undergoing a trial

on the merits. If Jones desires to continue

selling its product, it could decide to rename

the product, which would involve changing the

hang tags, displays, promotional materials, and
the NASCAR license agreement. Alternatively,

Jones could refrain from selling Beanie Racers

all together. Either option is burdensome and a

change in name will most likely result in a loss

of goodwill because consumers since 1998 have

known the product as Beanie Racers. There is also

the possibility that it would be difficult for

Jones to change the name of its product back to

Beanie Racers if it were to prevail in a later

litigation. Therefore, Jones contends if it were

not forced to go out of business, "at the very

least [Jones] would face the Hobson’s choice of

designing and producing still another new package

or taking its product off the market until a

decision on the merits might be had." Farley

Candy Co., 14 F.3d at 315. Additionally,

according to Jones, the possibility exists that

the injunction would actually cause Jones to go

out of business, whereas Ty’s irreparable harm

must have been less compelling considering it

waited almost eight months to move for a

preliminary injunction. For all of these reasons,

Jones advances that the harm in granting an

injunction would be more burdensome on its

business than denying Ty the right to a

preliminary injunction.

 The magistrate judge determined that the harm

to Ty would be more significant if a preliminary

injunction was not granted. Initially, the

magistrate judge acknowledged that there is no

way to measure Ty’s remedy at law since "damages

occasioned by trademark infringement are by their

very nature irreparable." International Kennel

Club, 846 F.2d at 1092 (internal citations and

quotation marks omitted). These type of injuries

are presumed to be irreparable because "it is

virtually impossible to ascertain the precise

economic consequences of intangible harms, such

as damage to reputation and loss of goodwill,

caused by such violations." Abbott Labs., 971

F.2d at 16. In considering Jones’ argument that

the eight month delay on Ty’s part in pursuing

the preliminary injunction shows that it did not

face a threat of irreparable injury, the

magistrate judge conceded that Ty may have

delayed in bringing its motion for a preliminary

injunction, but he stated that "it cannot be said

that this minimal delay lulled Defendant into a

false sense of security, nor that the delay was

unreasonable." Delay in pursuing a preliminary

injunction may raise questions regarding the

plaintiff’s claim that he or she will face

irreparable harm if a preliminary injunction is

not entered. See Ideal Indus., Inc. v. Gardner

Bender, Inc., 612 F.2d 1018, 1025 (7th Cir.

1979). Whether the defendant has been "lulled

into a false sense of security or had acted in

reliance on the plaintiff’s delay" influences

whether we will find that a plaintiff’s decision
to delay in moving for a preliminary injunction

is acceptable or not. Id. Jones has not presented

any affirmative evidence that Ty’s delay in

seeking a preliminary injunction caused Jones to

be lulled into a false sense of security or that

Jones in any way relied on Ty’s delay. The

magistrate judge therefore properly decided that

the evidence of mere delay alone, without any

explanation on Jones’ part of why such a delay

negatively affected them, would not lessen Ty’s

claim of irreparable injury.

 What appears to drive the magistrate judge to

find that the balance of the harms favors Ty is

Jones’ knowledge of Ty’s trademarks prior to

adopting its Beanie Racers mark. Jones has

posited several economic burdens it will face if

an injunction is granted; however, Jones’

position, according to the magistrate judge, is

less than convincing in light of the fact that

the "Defendant conceded that it had full

knowledge of Plaintiff’s trademarks prior to

adopting its mark. In assessing Defendant’s

irreparable harm, the court excludes the burden

it voluntarily assumed by proceeding in the face

of a known risk." Jones argues that it consulted

extensively with legal counsel to establish

intellectual property rights, marks, and

agreements prior to selling or manufacturing its

Beanie Racers product, but these actions do not

lessen the fact that it had knowledge of Ty’s

product and the possible confusion that could be

created between Beanie Racers and Beanie Babies.

"One entering a field already occupied by another

has a duty to select a trademark that will avoid

confusion." Ideal Indus., 612 F.2d at 1026. After

all, both products use the same salient term--

that is, "Beanie." Jones was forewarned of the

possibility that Ty would sue considering Ty sent

Jones a cease and desist letter. Jones went ahead

with its production of the Beanie Racers, despite

such a warning, knowing full well it may face

legal challenges to its product and in turn

negative financial consequences. Jones "[h]aving

adopted its course . . . cannot now complain that

having to mend its ways will be too expensive."

Id. The magistrate judge acknowledged with

respect to Jones’ concern that it might be driven

out of business because of the preliminary

injunction that "I have seen no evidence in the

case . . . that this [injunction] would . . . put

them out of business . . . . I certainly would

not want to put anybody . . . out of business,

but I have not seen anything that would indicate

that this [action] is . . . unjust." Jones’ claim

of irreparable harm rings hollow considering when

it decided to produce the Beanie Racers it had

knowledge of the potential consequences. In

contrast, Ty, according to the magistrate judge,

"stands to suffer significantly if a preliminary
injunction is not entered, as Plaintiff could

lose control of its reputation and goodwill.

Plaintiff would risk losing years of nurturing

its business."

 The magistrate judge was careful not to leave

Jones in a totally vulnerable position before a

hearing on the merits. He provided for a bond of

$500,000, which he believed would adequately

compensate Jones for any harm that may result

from the preliminary injunction. As we have

previously noted, the magistrate judge found Ty’s

likelihood of success on the merits was not

slight and accordingly there was no need for Ty

to make a proportionately stronger showing that

the balance of the harms was in its favor. See

Farley Candy Co., 14 F.3d at 315 ("Once the

district court determined that Storck’s

likelihood of success on the merits of its claim

was slight, it required Storck to make a

proportionately stronger showing that the balance

of harms was in its favor. Accord Abbott

Laboratories, 971 F.2d at 12."). Based upon the

magistrate judge’s balancing of the harms, we

find that he did not abuse his discretion when he

found the harms facing Jones if a preliminary

injunction was granted did not outweigh the harms

facing Ty if such an injunction was not granted. 

III. Conclusion

 The magistrate judge assessed the various

relevant factors when considering Ty’s request

for a preliminary injunction against Jones and we

conclude that the magistrate judge did not abuse

his discretion when he granted said injunction in

favor of Ty. Therefore, we Affirm the magistrate

judge’s decision.

/1 During oral arguments, Ty acknowledged that only

for a certain period of time did the Ty hang tag

have the word "Beanie Baby" on the front of the

hang tag. However, Ty also noted that the term

"Beanie Babies" is located inside the hang tag of

all of the Beanie Babies. Therefore, Jones is

incorrect in alleging that the term "Beanie

Babies" does not appear on the hang tag at all.