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 Is it trademark infringement? 
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Joined: 2011-12-29 10:29:29
Posts: 35
During a recent conversation, a friend presented a scenario that I was not quite sure how to answer and I curious what some of the trademark people thought.

Say I make and sell and consumer product. I am way too small of a fish to afford the high priced licenses to sell my product with college or professional sports teams logos. I do not want to get caught up in a trademark infringement battle with Big Sports, so I think, hey why not buy stickers from a licensed sticker salesperson and sell my product with a sticker. I can either buy the stickers and put them on the product before sale and sell my product having the logo on it or I can just sell my product with an unstuck sticker as a package, then the buying consumer can put the sticker on the product, if they want.

It seems that putting the sticker on the product first would likely get me into trouble. Even if I bought the stickers first, the first sale or exhaustion doctrine does not seem appropriate here since I am essentially adding a protected logo to my product without permission which would likely confuse the consumer as to the source.

But, if I just package the sticker with the product and sell them as a set, new product and resale of sticker, would I be okay? Stickers are intended to be stuck on something, I am simply making the process of locating and buying a sticker for placement on my product simpler for the buyer of my product and the stickers will only go on the product if the buyer wishes to do so.


2012-02-24 14:57:49
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Joined: 2011-12-24 18:23:00
Posts: 104
Interesting hypothetical. I can't find an immediate flaw in it. See Restatement (Third) of Unfair Competition § 24 cmt. b, at 254 (1995).

Your position would be strengthened if you sold the merchandise + unaffixed sticker with a slip of paper (or perhaps a label on the merchandise where the sticker would be expected to be affixed) saying something to the effect of "Yak Merchandisers is not an authorized agent of Big Sports, Inc. Other than the sticker, the merchandise enclosed is not officially licensed merchandise."

I would think that such a disclaimer would tend to bulletproof your case. The whole point of trademark law is to prevent consumer deception as to the source of goods. If no consumer could ever be deceived, there would be no cause of action. Except see Au-Tomotive Gold, Inc. v. Volkswagen of America.

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2012-02-24 15:20:27
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Joined: 2012-01-20 17:49:57
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Robert K S wrote:
Except see Au-Tomotive Gold, Inc. v. Volkswagen of America.


That's the rub, is it not? There, the automotive companies were not in the business of keychains, and yet they prevailed.

I am curious are to what types (if any) of limitations might exist for the people selling stickers. Can any use of stickers
be constrained? Is the exhaustion doctrine different than in other IP (like copyright), since the combination ("sticker" plus "other merchandise") just might be viewed as a thinly veiled attempt to get around someone else's (potentially) properly licenced (as in quality controlled) business of the "sticker" on that "other merchandise." Does it matter what the other merchandise is?


2012-02-24 16:01:01
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Are you sure they weren't in the business of keychains? The opinion seems to indicate they were making the same products as Au-Tomotive.

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2012-02-24 16:28:00
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I found reference to this. I don't know if it applies, but I'd be worried about those criminal penalties.

Stop Counterfeiting in Manufactured Goods Act, Pub. L. No. 109-181, 120 Stat. 285 (2006), enacted on March 16, 2006.

As enacted, the Act:
(1) modifies the definition of “counterfeit mark” to include a spurious mark applied to or consisting of a label or packaging of any type designed or intended to be used on or in connection with goods/services for which the mark is registered in the PTO or that is substantially indistinguishable from such registered mark, and that is likely to cause confusion;
(2) amends the U.S. criminal code to revise provisions prohibiting the trafficking in counterfeit goods/services to include trafficking in such labels or packaging;
(3) clarifies that the statutory prohibition on trafficking in such illegal goods extends to barter or similar transactions;
(4) subjects to forfeiture any article that bears or consists of a counterfeit mark and any property used to violate the prohibition against counterfeit marks;
(5) directs a court to order the destruction of any such article and to order any person convicted of the offense to forfeit to the U.S. property used in commission of the crime and to pay restitution; and
(6) provides for prison terms of up to 20 years and fines of up to $15,000,000 for repeat offenders.

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2012-02-24 16:47:44
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