1. What are the classes of goods that the following marks would fall under?
S.NO Class Trademark ID Trademark Clearance Report
Mark Goods or in the USPTO
service. ID Manual
1 Sugar-free Class 30 of the 030-1605
chocolates WIPO 030-1603
Convention 030-1400
2 Gin with 44% Class 33 of the 033-316
alcohol content WIPO 021-3981
Convention
3. Social Media Class 09, of the 041-2368
Mobile Apps WIPO
Convention
4 Legal Services Class 45 of the 045-2552
WIPO 045-1193
Convention 045-2644
045-2580
5 Pharmaceutical Class 10 of the
syrups and WIPO
Medical Convention
equipment
2. Would the above trademark, “KIDS Apparels”, be considered distinctive in nature?
2.1. This comes under the class 25 of the WIPO Convention,
2.1.1. Class 25 states about the One piece garments for children and infants.
2.1.2. ID manual of the trademark : 025-953; 025-1133 ; 025-1131
2.1.3. Any similar mark : This is 88592275 Name : CORNER KIDS Apparels
Quite similar.
2.2. This mark “ KIDS Apparels” is distinctive due to the following reasons:
2.2.1. A U.S. resident woman has been conducting her business under the name
"KIDS Apparels," specializing in children's garments, for the past six
months in the United States.
2.2.2. During this period, her garments have gained significant public attention
and popularity. The products have been actively marketed and are widely
available to the public.
2.2.3. The use of the "KIDS Apparels" mark over the last six months has
created a substantial public impact, establishing the brand as distinctive in
nature. This mark is prior in use.
2.2.4. Although the mark “KIDS Apparels" consists of generic words such has
“KIDS” it has distinctiveness, also known as secondary meaning, applied
to marks that are initially descriptive or generic but become distinctive
through extensive use.
2.2.5. The brand “KIDS APPARELS” is suggestive that it somewhere connects
with the kids inner wear, that is, it is suggestive in nature.
2.2.6. It is fanciful, appealing to the eyes and good to hear. And new words all
together.
2.2.7. In EC Brand Comércio, Importação e Exportação de Vestuário em Geral
Ltda (“EC Brand”) v EUIPO, the General Court upheld the BoA’s decision
that the proposed mark PANTYS for sanitary towels and women’s
underwear should not be registered because it was devoid of distinctive
character and was descriptive under article 7(1)(b) and 7(1)(c) of
Regulation 2017/1001.
3. A company who wishes to sell luxury bags under the name ‘LEXUS’.
3.1. The “LEXUS” will be under the class 18 of the WIPO CONVENTION.
3.2. The Class 18 falls under the “Luggage and carrying bags”.
3.3. The Trademark manual ID of the USPTO is 014-1020.
3.4. Trademark Clearance search report :I have attached the reports that include all
the trademarks for your review.
LEGAL OPINION
On
Is “LEXUS” eligible for the Trademark Application
Dated : 13 oct 2024
Background:
The client, founder of a luxury bag company, has reached out to me via email seeking
information regarding the eligibility of the name "LEXUS" for a trademark application.
Additionally, they would like to know if they can legally sell their luxury bags under the name
"LEXUS."
Queries
1. Has the name "LEXUS" been registered for any goods or services in Class 18?
2. What is the scope of protection for the existing "LEXUS" trademark?
3. Is there a possibility of filing under a different class?
4. Can we consider a co-existence agreement with any similar name brands?
5. What is the likelihood of consumer confusion between the similar brands who have
similar trademarks.
6. What would be the cost implications of defending a trademark application or potential
infringement claim?
7. What are the consequences of using the mark without registering it?
Responses to Queries
Response to Query 1
Has the name "LEXUS" been registered for any goods or services in Class 18?
The trademark "Lexus" is already registered by multiple well-established brands, including
Toyota Jidosha Kabushiki Kaisha (Toyota Corporation, Japan) and
Cesar Parra (an individual from Venezuela). Given that "Lexus" is a well-known
trademark, especially in the luxury automobile sector, using the same name for luxury bags
would likely raise significant legal challenges, even if the product categories differ.
When assessing the similarities between trademarks, the USPTO typically considers the
following factors:
1. Fame of an Existing Mark: While "Lexus" may not be as universally recognized as the
"Golden Arches" (McDonald’s), the brand associated with Toyota is undeniably famous
and commands strong consumer recognition.
2. Similarity in Trade Channels: Both luxury bags and luxury automobiles may fall under
similar avenues of trade, particularly in Class 18, which covers leather goods. This
overlap strengthens the argument for potential confusion between the two marks.
3. Likelihood of Confusion: Given the identical word mark "Lexus," there is a high
likelihood of confusion, especially when the name and luxury connotations are directly
comparable.
4. Sales Channels and Market Reach: Toyota’s Lexus brand has a significant international
presence, being sold across various channels, including online and in physical retail
locations. This broad geographic and market reach further elevates the risk of consumer
confusion if the name "Lexus" were used for luxury bags.
Response to Query 2
What is the scope of protection for the existing "LEXUS" trademark?
The valid question here : Registration Allowed If Services/Goods are Different Although Within
the Same Class?
There are several complexities addressed in Query 1.
In summary, having two trademarks filed under the same class doesn't automatically imply that
they are similar or conflicting. If the products are significantly different and cater to distinct
target markets and distribution channels, it is possible to have your mark approved, even if it
exists in the same class as another potentially similar mark.
However, even if you can demonstrate that the marks are not confusingly similar, a USPTO
examiner may still flag it and issue an office action if they perceive any possibility of conflict.
Assuming there are no other similarities, you might overcome the office action through a No
Likelihood of Confusion analysis, which could lead to the mark's approval.
While you might succeed in getting the mark approved, there are no guarantees that it won’t be
flagged by an examiner or require a rebuttal to an office action.
Response to Query 3
Is there a possibility of filing under a different class?
To determine which trademark class a bag falls into, it's important to identify the specific type of
bag you’re referring to. Such has handbag, camera bag etc.
To get a more precise classification, you'll want to provide details about the bag’s purpose,
materials, and target market. If you can clarify which type of bag you're considering, I can help
narrow it down further!
Response to Query 4
Can we consider a co-existence agreement with any similar name brands
Toyota is not a small company; it operates on an international scale. Therefore, entering into a
coexistence agreement would be nearly impossible.
Response to Query 5
What is the likelihood of consumer confusion between the similar brands who have similar
trademarks.
Since both marks are word marks with identical spelling, the similarity in name alone would
likely cause consumer confusion. The average consumer might assume that the luxury bags are
an extension of or endorsed by the Lexus car brand, which is precisely the kind of confusion the
USPTO seeks to avoid.
What would be the cost implications of defending a trademark application or potential
infringement claim?
TEAS Plus: $250 per class - This option requires more information upfront and allows for a
streamlined application process.
TEAS Standard: $350 per class - This option provides more flexibility in the descriptions of
goods/services but has a higher filing fee.
Attorney fees for filing a trademark application can vary widely based on several factors,
including the attorney's experience, the complexity of the application, and the number of classes
of goods or services involved. Typically, you might expect:
$2,000 to $5,000 or more – This range may apply if your application requires extensive research,
handling of office actions, or if you are filing for multiple classes of goods or services.
Response to Query 6
What are the consequences of using the mark without registering it?
Using someone else's trademark without their permission is considered trademark infringement.
This can result in legal action, financial penalties, and damage to your business's reputation.
Without registration, enforcing your trademark rights against infringers can be more
complicated. You may need to provide evidence of your mark's distinctiveness and your prior
use, which can be a burdensome process.
A business without legally protected brand names or logos may be less attractive to investors.
I hope that the above shall suffice for your present purposes. We shall be happy to provide a
detailed analysis of the issues considered herein, should you so require. Please do not hesitate to
contact us for any clarifications.
Yours truly,
Chandana Surthi
IP Paralegal
References :
NICE Classification
ID Manual Trademark.
Trademark Clearance Report
[I have attached all the reports containing the similar trademark clearance and search results
for your review.
Please let me know if you have any questions or need further information]
