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If I use a word similar to a trademarked word is it trademark infringement in this scenario?

Durham, NC |

I am a crafter who specializes in recycling things people throw away and I write tutorials on how people can do it at home. Sometimes I like to give the crafts names. Here is a wacky (hypothetical) example: I cut up old t-shirts to make yarn and knit them into reusable, washable tissues. If I call them Teenex is that trademark infringement on the word Kleenex?

Thank you for all the answers. Creating a spin-off name for the upcycled version of something seems to be a trend. Tarn and Plarn are used to convey Yarn made from old t-shirt (tarn) and from plastic bags (Plarn) ... though "Yarn" is not a trademarked word. Lesson - we upcycling crafters need to be careful - I can guarantee that none of us make enough money to hire a legal team .

Attorney Answers 5

  1. Best answer

    I don't think that is infringing on Kleenex. And, Kimberly-Clark has its own problems on the Kleenex of genericism that largely stop it from being aggressive. So, it is low risk because K-C is not likely to want to litigate. Besides, there are multiiple meanings for TEENEX (e.g. the "next big thing", T-necks, etc.) Now, all that does not insure that K-C won't sue you, and does not insure that a Judge won't rule for K-C, it just means that it is unlikely. However, you need to know that if K-C trademark attorneys catch wind of what you are up to they may blow their nose on you with a CDL and you will quickly be out of business because you can't afford to take them on in a lawsuit, even one you might win.

    So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.

  2. For this one, you really need to talk with a trademark attorney who can consider the specific names you are using and the trademarks of potential concern under the protection of attorney client (and possibly work product) privilege.

    To the extent that your hypothetical is close to what you do, I would say that there is definitely an issue to be discussed with an attorney. However, do not take this to mean that the above would definitively be trademark infringement and bear in mind that, even if it would be, you might have available defenses in the particular instance.

    You have clearly identified a potential issue and would be well advised to meet with an attorney to best protect yourself.

    This information is intended to be general and educational in nature. It is not intended to be specific legal advice or establish an attorney-client relationship. I require a signed retainer agreement from a potential client to establish an attorney-client relationship and before I will provide specific legal representation.

  3. I don't really see the two words as causing a liklihood of confusion but I have a different approach - originality. If you really want to make a name for yourself and your products, pick an original name and become a success. Don't try to make your success on a techinicality. If the corporation owning the "kleenex" trademark were to sue you, it would wipe you out financially even if you won.

    The above is general legal and business analysis. It is not "legal advise" 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 terms and conditions item 9, incorporated as if it was reprinted here.

  4. I am not going to comment on your specific example. I just want to explain that companies are very jealous of their valuable marks and how can they be affected when they feel that someone is associating them with products that my affect their reputation. That is the reason they sue anyone coming close to their TM.
    The basic premise is that the consumer should not be confused as to the origin of the product as represented by the mark. But there is much more, and blame goes to English, as English is a language that has phonetic differences, so a word may be written in certain way and pronounced differently.
    An opposition or a claim of TM infringement may be brought not only when the word mark is exactly the same, but when the phonetic equivalent, or close equivalent, may cause confusion. It is not a cut and dry issue. If and when the English language adopts a Castillian or Esperanto languages pronunciation character, then it would be possible to give you a definite answer.
    For specifics in your case check with a TM attorney.

    USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in create an attorney-client relationship with you. You may accept or disregard my free advice in at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

  5. Hypotheticals are virtually meaningless in any trademark infringement analysis, which requires review of the exact TMs at issue and the exact goods or services.

    AVVO Q&As are fine for general principles of law, but if you really want to know if something you've created and named violates any other rightsholders' rights, you'll retain your own IP counsel.

    And take Attorney Doland's comment to heart -- if a basic feature of your crafting relies on using names that trade on the fame and good will of others, you're definitely taking the risk of making yourself a target for litigation.

    Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.