Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc. - 875 F.2d 1026 (2d Cir. 1989)

Rule:

A finding of dilution must be based on two elements. First, plaintiff's mark must possess a distinctive quality capable of dilution. Second, plaintiff must show a likelihood of dilution.

Facts:

Plaintiff Mead Data Central, Inc. instituted a suit to enjoin defendant Toyota Motor Corporation’s use of LEXUS. According to plaintiff, the defendant’s use of LEXUS was likely to dilute the distinctive quality of LEXIS, the mark used by plaintiff for its computerized legal research service. The district court ruled in favor of the plaintiff. Defendant appealed. 

Issue:

Was the defendant’s use of LEXUS likely to dilute the distinctive quality of LEXIS, thereby justifying the grant of injunction in favor of the plaintiff? 

Answer:

No.

Conclusion:

The court reversed the decision of the district court. The court concluded that in the field of commercial advertising, which was the field subject to regulation, there was no substantial similarity between plaintiff's mark, LEXIS and that of defendants. Such distinctiveness as LEXIS possessed was limited to the narrow market of attorneys and accountants. Moreover, the process that LEXIS represented was widely disparate from the product represented by LEXUS. For the general public, LEXIS had no distinctive quality that LEXUS would dilute. On the other hand, the recognized sophistication of attorneys, the principal users of the service, had substantial relevance. Because of this knowledgeable sophistication, it was unlikely that, even in the market where plaintiff principally operated, there would be any significant amount of blurring between the LEXIS and LEXUS marks.