Toyota Motor Corporation and Toyota Motor Sales U.S.A., Inc. (“Toyota”) prevailed in their opposition before the Trademark Trial and Appeal Board (“TTAB”) against the mark PRIUS for various goods including chemical flavorings for the preparation of tobacco, cigarettes and electronic cigarettes. Toyota Jidosha Kabushiki Kaisha, t/a Toyota Motor Corporation and Toyota Motor Sales, U.S.A, Inc. v. HongKong WillRaise Intergrated Circuit Co., Limited (TTAB April 30, 2015).
In addition to likelihood of confusion, Toyota included dilution claims, asserting that the use of PRIUS for these chemicals and tobacco products would dilute and tarnish the famous and distinctive PRIUS mark. In the Notice of Opposition, Toyota noted, among other things, that there was advertising comparing the first e-cigarette to choosing your first automobile. Shortly after discovery was served on HongKong WillRaise Integrated Circuit Co., Limited (“HongKong WillRaise”), they voluntarily abandoned the application, without the consent of Toyota. As a result, the TTAB sustained the opposition in favor of Toyota. Robin Bren and Beth Chapman of the Oblon firm represented Toyota before the TTAB. As Robin Bren states, “Toyota is pleased with the result and with the Oblon firm’s efforts to protect Toyota’s well known and valuable PRIUS mark from erosion and consumer confusion.”