Be careful what you decide to argue to a Court, because it will “live forever”.
There once was a service called “Lexis”,
Which catered to those most electus;
But argued such stars,
Seeing cases and cars,
Might think that there was a connectus.
In 1988, Mead, trying to stop Toyota from importing the new LEXUS car, argued to a New York Court, that the lawyers and accountants who used the LEXIS database service might get confused as to whether the owners of the LEXIS and LEXUS marks were connected or related:
Typically, sophistication of the buyer is a factor that will weigh against a finding of likelihood of confusion. See Centaur, supra, 830 F.2d at 1228. Mead, however, contends that in this case sophisticated consumers are more likely to be confused because they tend to be more aware than unsophisticated consumers of the diversification of large corporations. This conclusion, Mead argues, is more compelling in the case of car manufacturers, several of which are already in the computer business. This argument is unpersuasive. If a consumer is sophisticated enough to understand that some car manufacturers are involved in the computer industry, he is likely to be sufficiently sophisticated to realize that not every car manufacturer is in the computer industry. In sum, the court finds no reason not to apply the usual rule that the sophistication of consumers militates against a finding of likelihood of confusion.
1: Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 702 F. Supp. 1031, 1039 (S.D.N.Y. 1988) (dismissing Lexis’ claim of trademark infringement, but granting a permanent injunction against using “LEXUS” based on alleged “dilution” of “LEXIS”, under New York’s antidilution statute). Finally, see Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2nd Cir. 1989) (reversing the injunction, finding no dilution).