Could I name it something else popular as long as that company did not compete with me?
When you say "brand" you are inferring that you are selecting a word or words, with or without a design, to identify the source of the goods you are marketing. Your intended purpose appears to be to select a "popular," or famous trademark to use as your own for a different class of goods.
Generally, courts will consider many factors to determine whether a mark is reasonably likely to be confused with a similar mark. Only one factor of which is whether the competing mark is used in the same class of goods or services. See, Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (Cust. & Pat.App. 1973).
The example you used "Kleenex" would likely cause you significant problems due to the multiple registrations by the KIMBERLY-CLARK WORLDWIDE, INC. CORPORATION for "Kleenex" alone and combined with other words. Here are just a few of them: USPTO Reg. Nos. 2728865; 0297536; 1189423; 1785525; 2086808; 1706685; 2156767; 3772055.
Additionally, selecting a distinctive famous mark, of which Kleenex may well be, may subject someone to a dilution action. 15 U.S.C. 1125(c); Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999) ("Dilution is a cause of action invented and reserved for a select class of marks -- those marks with such powerful consumer associations that even non-competing uses can impinge their value."). In a dilution action, the absence of likelihood of confusion is not a defense. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429 (2003) ("Neither the absence of any likelihood of confusion nor the absence of competition, however, provides a defense
to the statutory dilution claim").
Avoid the problems created by what you are suggesting. Consult with counsel and come up with your own unique mark.
This post is for general informational purposes only. No attempt is made to provide legal advice.
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My colleagues are correct. Do not even consider using a famous mark unless you want to be in court and pay considerable sums.
Please speak with a business attorney to advise you on your business. This is particularly important if your business will have several owners. Good luck.
This answer is for informational purposes only and is not legal advice regarding your question and does not establish an attorney-client relationship.
My colleagues are right, of course you can't. Here's why.
The only reason you want to use someone else's already popular name is because the rightsholder has already spent hundreds of thousands of dollars accomplishing that popularity so you won't have to. You're hoping that if you use a famous name, consumers will make false assumptions about the source of your clothes and/or pay more attention to your clothes then they otherwise would. And that's why the rightsholder would sue you and win --their customers would be confused and their brand would be diluted and tarnished.
Choose your brand name only with your own lawyer's help to make sure it's viable and available. It's too important a decision to not get it right the 1st time, since the consequences of screwing up are getting sued, having to re-brand, and wasting lots of time, money, and effort.
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Intellectual Property Law Attorney
Absolutely not. You would be asking for a law suit, and you would use. Kleenex is a famous trademark (one of the most famous in the world). Your use invites consumer confusion and would tend to tarnish and dilute the value of the trademark. You would be sued the moment the owners of the trademark find out about your scheme.
You need a basic education in intellectual property law if you are going to develop a clothing brand. Your branding and marketing strategies are critical to your success, but you are obviously on the road to failure if you think this is a plausible marketing concept. You may be a wonderful, creative clothing designer, but if you want to establish a successful clothing brand you need to assemble a team of marketing and legal experts to assist you in a branding program that will avoid expensive law suits. Your IP lawyer should be part of your "branding" process from the very beginning---otherwise you will just waste time and money in pursuing goofy ideas such as this.
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Intellectual Property Law Attorney
No. 15 USC 1125 prohibits this. It is unfair competition and trademark dilution.
KLEENEX is registered in Class 25 (clothing class) for diapers, so that is a bad example, particularly if you would sell baby clothing.
Google "trademark dilution" and you will see the problem in using a famous brand for a different line of products. If you are considering such a thing, you need to see an intellectual property attorney to get help in formulating a strategy designed to minimize risk.
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.
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