Legal Question in Business Law in New York

Re: Question regarding Toyota

The legal theory under which you would stand even a ghost of a chance is trademark. Under the Lanham Act (which governs federal trademark in the USA), infringement is characterized by the following:

1. Senior user continuously uses the name in commerce (preferably in interstate commerce) as a trademark or service mark in the same class in which the alleged infringer is using the name; AND

2. Senior user is providing continuous and systematic notice that Senior User is using the name as a mark; AND

3. Senior User started using the name first.

So. Hypothetically, let's say that your name is PRIUS, which is an actual Toyota mark. Let's say you started in 1986 and have continuosly been using the name PRIUS since then in interstate commerce. You clearly started using the name before Toyota did, making you the senior user of the name. However, your PRIUS is a mark for bath salts. While you are the senior user of the name PRIUS, you are NOT the senior user of the name within the class designated for automobiles, which is the class to which Toyota's mark is restricted, just as your mark is restricted to the class designated for bath salts. Confusion between cars and bath salts is unlikely, even by the densest of consumers (and the federal courts think that consumers are remarkably obtuse). Therefore, Toyota's use of PRIUS for automobiles is perfectly legal and non-infringing of your use of PRIUS.

Large companies like Toyota are generally pretty careful about the marks they adopt. They have trademark searches done that find both registered and unregistered marks and they name their products and services in such a way that they do not infringe on the trademarks of others. They try hard to avoid suits like the one you propose. They don't get caught behind this eightball very often.

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