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Brand name I'm planning to use is similar to existing brand but they aren't trademarked. Can they sue me after I've trademarked?

New York, NY |

Here's my situation. After MONTHS of brainstorming I finally came up with the right name for my brand (I took my time because I believe that the brand name is the most important decision I'll ever make here). I immediately went and googled the name and google came up with 2 similar brands. They actually have the same name apart from one having "Apparel" behind it, and the other "Clothing", the latter one doesn't even have a website. None of them are trademarked. My question is, if I go with this name and trademark it, can they sue me after? My name differentiates from theirs in the way that mine is the adjective version of their name which is a noun. Also, from the legal point of view, would I be better off going with a single word name rather than adding Clothing/Apparel behind it?

Attorney Answers 5


  1. If your proposed name is not unique in the field, then you need to choose another one. You don't want any potential confusion as to the source of the goods. Choose something truly unique (think Amazon for books, or made-up words like Xerox and Kodak). To answer your questions: 1. The first user has superior trademark rights, regardless of registration (in general), so, yes, they could ask you to stop and/or sue you for using a confusingly similar brand name. 2. The addition of words like Apparel or Air Lines makes no difference. 3. Noun usage vs adjective usage usually is NOT enough to differentiate two marks.

    This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.


  2. The other brand may not be registered, but is protected by common law trademark if in use in commerce and if distinctive. Normally a trademark should be used as a proper adjective, and use as a noun makes me wonder if this is just a descriptive term.

    I think you need to go back to square one and get a more distinctive name and that you should then consult an intellectual property lawyer for clearance.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.


  3. My colleagues offered good advice and given that we have successfully registered 100s of marks for clients in the fashion industry I am all together confident you will brainstorm something distinctive to work with. Check out the link below to the 'how strong is your mark' page as this may help you better understand how trademarks are evaluated.

    Further, whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process.

    Keep in mind that in the fashion industry your trademark is the centerpiece of your business. Without a good one you are just another article of clothing on a shelf. I suggest that you consult with a lawyer in private and discuss your objectives in more detail and don't try to do it all yourself as you will want to make sure it is done right the first time, which will also save you a lot of money in the future. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.


  4. i think the least important thing you can choose is the name of the brand. I have seen some of the stupidest names make a fortune and the cutest, catchiest names lose everything for lack of what it takes to succeed in one of the most competitive industries in the world.

    They actually have the same name but are different: that's your defense? Pick something totally original, apply your business plan, and make your own reputation.

    The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.


  5. Think for a moment about what a trademark is supposed to do. It is supposed to be a UNIQUE identifier of a set of goods or services. Even if the other people have not trademarked their name, and it is a noun, rather than an adjective, and they have no common-law or state trademark protections from prior existing sales of their goods or services (about as unlikely as anything I can think of), then your MARK would still be so similar as to be confusing or likely to be diluted by the existence of these other marks. Clearly you have NOT chosen the Mark well. Otherwise, there would be no question that it was yours.

    Great examples of good trademarks? Exxon, Xerox, Kodak - all fanciful, made-up words.
    Good arbitrary trademarks that have no relation to the product sold? Apple (computers), Lotus(software), Sun (microsystems)

    You need to find a mark that can become a unique identifier of your goods and services. So far, you haven't even mentioned if you are ALSO in the clothing/apparel business, and I will tell you that if you are, the difference between a noun and an adjective is going to bring a lawsuit with it. And you will likely lose, especially if the other companies have already sold goods into the stream of commerce.

    Get yourself a Trademark attorney who can assist you in doing a proper search for marks on the USPTO website, and might be able to help you refine the name in a way that will enhance the value of your goods and its marketability as well.

    This does not constitute legal advice or the engagement of my services as an attorney.

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