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[Mike]

Hello, I just found this forum and very glad that I did.  I have a serious problem that I have been dealing with.  I have a registered trademark that is gaining in recognition, however, I also have a very important customer that continues to misuse my trademark.  Before creating a sticky situation by bringing in a lawyer, maybe by getting some feed back on this I will gain some new ammunition to shoot at them.  I have tried being nice about it and I've been a real ________ about it and still come up with the same responce, "It's just not that important yet".  I really appreciate any help.

[Karen Dudnikov]

How are they using it?

Are they reselling an item purchased from you?

If so, Fair Use gives them the right to use the trademarked name.

I think we need more info on how it is being used.

[Mike]

They do not  put the circle R next to my mark on all of their sales material and they use their own version of my logo (drawings that are similar but I personally think look bad).  Again, this is done on all sales material and their website.  Thanks.

[Karen Dudnikov]

But they are selling items purchased from you?

Keep in mind I'm an accountant, not a lawyer although I play one on TV ;-)

I'm not sure there is anything in federal law that requires a reseller who is not licensed by you to use the (r).  You probably can require/request that they use your logo correctly.

I use M&M/Mars(r) because I'm a licensee and I'm required to display their name the way they want it displayed.

I sell items made from all manners of other licensed fabrics and I don't use the (r) in the circle nor can they make me, although they've tried.

Looked at a grocery newspaper ad.  They are selling name branded items and rarely do you see an (r).

If they are purchasing items from you and reselling them without being a licensee then I think you are stuck.  Maybe you can get them into a licensing agreement and have all that spelled out.

[Mike]

Yes, they are purchasing our products from us for resell.  It is becoming clearer though.  Get them into a licensing agreement or they can no longer sell our products.  Should that be my approach?

[Karen Dudnikov]

If you get them into a licensing agreement then you will probably have to offer something that makes that attractive to them.

In the licensing agreement you can dictate how they represent your product.

First Sale Doctrine and Fair Use says they can buy an item and resell it.

They don't need a licensing agreement to sell your item.  

There are a lot of companies trying to control the secondary market, it's very tough.

[JimIvey]

First, I thought "fair use" was primarily a copyright notion.  To the extent "fair use" applies to trademarks, they don't allow bastardization of the mark which is what Mike is complaining of.

I'm only familiar with a few "fair use" type cases in trademark law (although I'm not sure they call it "fair use" in trademarks).  They generally pertain to references to another's goods/services.  For example, some imposter fragrance said theirs smelled just like Chanel No. __ -- Chanel sued but lost since the imposter was using their trademark to refer to their product.  To prevent the imposter from using the trademark to refer to Chanel's products would wreak upon us the difficulties brought about by the Artist formerly, and once again, known as "Prince."

However, the imposter didn't have the right to butcher the mark by changing fonts, adding/modifying graphics, etc.

As a trademark owner, you have the right to prevent others from using your mark on similar goods/services sold by them.  I believe that includes resellers.  They should be "under license" to use your trademark.

The whole point of a license is that you allow somebody to do something you have the right to prevent them from doing.  The license can have conditions on it.  It ought to have strict guidelines for use -- including fonts, size, orientation, graphics, etc.

There's a thread in this forum regarding getting permission to use the NFL trademark(s).  I'd be curious to see what style guidelines are attached to that license if anyone has it.  Their website might even publish those guidelines.

Your trademark can be a valuable property right and you should take steps to protect it.  To some degree, the cat's already out of the bag.  But you should take steps to get the distributor under license.  You may have to threaten getting a different distributor if they won't comply.

As to "it's just not important yet," that's just plain wrong from your perspective.  You are now building value in your name and it's very important that you build strong name recognition in the purchasing public by consistent use.  In addition, a large portion of the value of the mark is in the designation of quality by the mark.  Why does anybody buy more expensive Kleenex(r) tissues over generic facial tissue?  It's because they want quality tissues and "Kleenex" (to some anyway) means quality.  Any sloppy use of your trademark harms the value of your mark.  This distributor is hurting your property rights and you need to stop him ASAP.

I hope that helps.

Regards.

[Karen Dudnikov]

"As a trademark owner, you have the right to prevent others from using your mark on similar goods/services sold by them.  I believe that includes resellers.  They should be "under license" to use your trademark."

I believe the people are selling his product. Don't know how/where they are getting it.

I can go to Target, buy a Winnie the Pooh lunch box and sell it as a Disney Winnie the Pooh lunch box and not put an (r).

I have a license w/Mars.  Basically I have to represent the company name in a certain way, attach a tag with my company name and their copyright info. Only sell in the USA and carry liability insurance.

Fair Use on the other items like Disney and MLB means I can use the name of what I'm selling.  MLB tried to tell me I couldn't use the name New York Yankees since it was trademarked.  We pointed that if that was descriptive to the fabric item I was selling I could.

9th District New Kids on the Block was a great case for us.

Another example. Nexus only wants their hair care products sold in a salon.  If I own a salon I'm signing an agreement that limits what I can do.

If however a salon is going out of business I can go and buy up all their stock and sell it myself.

First Sale Doctrine.

As I've said, I'm not an attorney, just someone who has taken on some of the big guys and won.

[M. Arthur Auslander]

Dear Mike,

From all the posting, I don't get a clear picture of the problem. If you have something good going it might be worth getting the advice of an intellectual property lawyer that you can trust rather than have to speculate as to what can be done by hypothesis.

My gut feeling is that there is a simple solution.

There are limit on what you can do once the goods are out of your hands but they cannot misuse your trademark.

They they can resell what you sell them without your trademark if they do not trade on your trademark.

It may be false economy not to pay for legal advice since you have a good thing going. Just make sure that you are dealing with an experience intellectual property lawyer you can trust.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
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[JimIvey]

<blockquote>
I can go to Target, buy a Winnie the Pooh lunch box and sell it as a Disney Winnie the Pooh lunch box and not put an (r).
</blockquote>

What you cannot do is scratch off the "(R)" on the logo/trademark and/or make up your own packaging with your own bastardized version of any of the Disney marks.  

When you call it a "Disney Winnie the Pooh lunch box," you are asserting that it was manufactured and distributed under proper license of Disney and representing that the quality of the product is commensurate with such a proper license.  You and your target market can be reasonably assured of that quality since you bought it through regular retail channels.

However, if you bastardize Disney's marks, you are doing harm to them (whether the harm is significant or whether we should be terribly concerned about Disney are different issues, but the harm is there).  Disney is rather aggressive in protecting their IP so you'd better believe they will come after you if you mess with their marks (make your own images of Winnie or mess with the fonts and use of Disney marks) and they become aware of it.

My understanding of the original post is that Mike's problem is with a distributor, a retailer while he's the wholesaler/manufacturer.  This distributor appears to be making the packaging and placing the trademarks on it -- and apparently doing it poorly or at least improperly.   This is a different issue than your hypothetical raises.  The mark owner has the right to control use of the mark.

Your "First Sale Doctrine" applies to copyrights and patents -- not trademarks.  For example, you can not sell your Winnie the Pooh lunch box as the "Dudnikov Winnie the Pooh" lunch box despite your legitimate purchase of the lunch box at retail.  The first sale doesn't extinguish trademark rights.  You also couldn't call it "Disney Winnie the Poop" lunch box -- a degradation of the original trademark.  Well, you might at least have some First Amendment arguments in that last case, but if your purpose was not commentary but rather commercial sales, you'd have a lot to worry about.

I'm happy you've prevailed in some cases against big companies.  I suspect you're a bit confused as to exactly why you won.

In sum, I believe Mike has rights vis-a-vis his distributor and I'll go out on a limb and suggest it makes good business sense for him to take some steps to exercise those rights.

Regards.

[Karen Dudnikov]

Oh, I agree.  If I sell a Disney item I represent it as such. After all it is attractive because it is a Disney item.  I just don't have to put the (r) after their name.

I do know why I won.  I had federal law on my side. And after my first battle my listings and website toed the line.  Disclaimers in the same size font, backlighted, no infringing characters, careful wording, etc.

The shame of it all is that I had to take them to court to back them down.  I don't believe for a minute that I had case law that Disney or MLB didn't know about.  When I tried to talk it out or send letters they told me they weren't interested in my interperation of case law.

They knew I wasn't doing anything wrong yet they shut down my auctions on eBay anyway.  (along with a lot of other peoples)

They just didn't expect someone to fight back.

Once somebody did though, from what I can see, they've stopped shutting other people down on eBay.

If the resellers are distributors then he has recourse.  If they are going to a store and buying the stuff and reselling it its tougher.

But I don't recreate Disney's logo.  I take pictures of what I'm selling and use that.

[Kevin Flanagan]

OK, here is the situation.  On Ebay I sell a product that is almost the same as Muscle Tech Hydroxycut.  I list it as Hydroxycut Original (Similar to) 300 caps.  Then in the Product description, I have the name of my product and a table with both products ingredients with their names at the top.  

I recently got this shut down because of coyright, patent infringment.  I am still awaiting a response as to what exactly this violates.

What I would like to know is what did I violate?  I am really asking as I dont know.  I am not an authorized dealer of Hydroxycut, but I also wasnt selling hydroxycut and made it clear that I wasnt.  If it makes a difference, I own a bottle of Hydroxycut that is the same ingredients as what I list.  If I were to list it with HYDROXYCUT®, would that take care of my problem?  Thanks.

[tabberone]

Well really you should have started your own thread.

You listed the company name to sell something that wasn't the companies product.

eBay also has something called keyword spamming, you are not allowed to use the name of a product in the title if that is not what you are selling.

You are usually allowed to use the name once in the item description - similar to so and so

If you are not selling the product, don't use the name.

[M. Arthur Auslander]

The fact is you can live with lawyers and you can't live without them either. We will survive even if you don't. This is a reality not a lack of sympathy. It usually cost more once you are in trouble.

That's were my trademarks come from.

[Kevin Flanagan]

Yeah, it kept messing up when I posted to my own thread.  so I put it here.  Thanks...how about this though,

If I were to sell even a small amount of the Hydroxycut product (maybe even 1 pill) + 1 bottle of the other then I could list it by all rules (legal and Ebay) using the name, correct?  I am not concerned with the Ebay rules since they are so inefficient most things get by them anyway.  What I would like is to make sure my items comply with legal rules.

They responded with what you are saying and they think it infringes on their trade dress...which I disagree with.  The bottles have similar colors, but other than that I dont think they look alike.  As far as I know color alone is NOT enough for protection.  I could solve  that anyway by not posting a picture.

This will be my last message if answered and if I have more questions I will post a new thread.  I appreciate you help.