Like the title says, are there any legal issues in using a name-brand product to make another product (for sale)? For example, could you use Shrinky Dinks brand shrinkable plastic to make and sell little plastic beads? Or use Coca Cola brand cola as an ingredient in a new beverage? Or melt down Febreze brand scented candles to make and sell uniquely-shaped scented candles? (These are all hypothetical so I apologize if they’re bad examples or if I’m not explaining my question well…)
Generally speaking, anything that is made and sold on the open market can be bought and used in another product.
This rule applies to things only, not to creative works or other intellectual property. For example, you can’t use the brand name/trademark/source indicator in order to sell the second product without authorization from the owner. (You also can’t use pieces of someone else’s copyrighted creative work except under narrow circumstances or, for example, a component that incorporates patented ideas.)
(That is to say, unless you purchased the product under a contract that restricts your options. But such contracts usually exist only in supplier-distributor type relationships and other formal business arrangements.)
When aspartame was the big new thing in artificial sweeteners, and NutraSweet was its sole manufacturer (a couple of decades ago), it was charging a pretty hefty license fee to diet soft drinks to carry the “made with NutraSweet” logo. Negotiations with, either Coke or Pepsi (can’t remember which) came down to, basically, “I won’t pay your damn fee, and I’ll just list it as aspartame on the label with everything else.”
But there was never an issue about if they could actually use the stuff in the product.
I work in manufacturing, and we use name-brand things all the time. Not only that, but our products are then used in other products that our customers make and sell. Good thing, too, because they are pretty useless otherwise.
Makes sense! Thanks all.
As kunilou pointed out, what the original manufacturer can control is the name. So you can make M&M cookies, but you can’t call them M&M cookies without permission.
It’s not that simple.
What you cannot do is sell a follow-on/combination product in a way that falsely implies sponsorship, or “source of origin,” to the original manufacturer by using their trademark.
But if you make it clear that what you are selling is your own product that simply incorporates another brand name product, then (in theory), your Grandma’s Rice Krispie treats or iPod beer helmet should be okay.
Hey Huerta what’s with that weasally “in theory?” Well, trademark owners are often over aggressive and may pursue even clearly non-deceptive, non-origin-confusing, uses of their trademarks/images/brandnames (they have to be, as failure to police can lead to diminution of rights). How does this get sorted out? Either the second user caves in the face of nasty letters from Giganticorp, or a court has to decide.
A kind of famous/easy to understand example of this is promotions involving, say, Super Bowl tickets. Doctrinally, “Buy a new king mattress from Tom’s House of Bargains now, and get two Super Bowl tickets” is a completely legitimate ad – no one in their right mind thinks that the NFL is one and the same with Tom, or that the NFL sponsors Tom or vouches for his products (the only basis for a Lanham Act claim). In practice – most advertisers are chicken because the NFL and most sporting leagues (and the Olympics, which routinely chases down Greek diners) are so fascistic that it’s not worth the hassle, which is why you hear ads saying “and win two tickets to the Big Game in Miami” instead.
I recall some news stories about people selling modified Barbie Dolls. Mattel has sued and lost.
This is an interesting example. We have discussed here many times why advertisers do not/cannot say things like, “HDTV Super Bowl Sale!” or “Get extra Doritos for the Super Bowl!” The NFL does not want unlicensed use of their trademark to promote other products. But I don’t know if this would extend to a ticket giveaway, where the tickets are bona fide tickets that actually say Super Bowl right on them.
I’d swear I’ve heard radio contests that flat out said “win Super Bowl tickets.” I don’t know if they had a deal with the NFL or not, but they were just local Boston stations. And if I heard “win two tickets to the Big Game in Miami”, I’d suspect they didn’t have actual SB tickets, and were using weasel words to send me to a Jai Alai match, or even worse to the Pro Bowl.
Nope, I think it really just comes down to risk tolerance and who has the more conservative lawyers.
IIRC, there was a semi-recent case where Apple Computers sued a company that was selling (not Apple brand) computers with the (fully paid for) Apple OS installed. I believe the court found in favor of Apple, on the ground that the license agreement that ships with every copy of Apple specifically forbids its use on non-Apple brand hardware.
Presumably other products could follow the same route and include agreements for consumers to not use their products in manufacturing their own items for sale.
Some people don’t know they can’t say Super Bowl in their ads so they just use those words. Around here I heard a lot of ads for the big game.
If you’re actually giving away Super Bowl tickets then you can use the name under the Nominative Fair Use Doctrine. What you can’t do is to leverage the goodwill of the Super Bowl to then promote or sell something else.
Nope, you still can’t use the mark in commerce (“use in commerce” is a term of art). You can use it secondarily to describe your goods.
You can sell your Fabbo Music Player Beer Helmet and then specify that it is “compatible with Ipod and other major MP3 players.” But you cannot use the trademark Ipod Beer Helmet without a license from the owner of the Ipod mark. No way. Same with Rice Krispies. Kellogg’s has a right to stop you from using their marks in the trademarks for your product, even if you are using genuine Kellogg’s Rice Krispies. That’s why other makers of crisped rice and marshmallow treats don’t use the name “Rice Krispies Treats.”
Yes, you can use anything you want to create a new product.
You cannot benefit, or seek to benefit, from anything the original product’s manufacturer owns (e.g. name, brand, corporate identity, trademarks, intellectual property, copyright material and so on).
You are also not allowed to benefit from things that the original manufacturer has invested in, such as their brand recognition and reputation built up over many years and backed up by their advertising and PR activity. The law in this area generally follows common sense: they have put in the time, the effort and the money to develop this recognition and reputation, so they alone are entitled to benefit from it.