# Trademark Question



## Gixxerjoe04 (Jan 31, 2014)

So i have a question someone hopefully might know the answer to. I make the magnetic bottle openers that catch the beer caps and stick to your fridge. I was at walmart awhile back and found our local college team wall mount openers and bought them out because people here are crazy for them(as am I haha). Anyways I've made and sold them all pretty easily but couldn't find anymore so I found the company who sells them to walmart. Set up a whole sale account so i could buy them and got them even cheaper which was nice. Got to thinking after the fact of trademark infringement and all that stuff i know nothing about except it exists. The company I buy the wall mounts is licensed with the NCAA since they sell tons of college team stuff. Would I need a license to sell my stuff with the college teams' logo on it as well? Of course I'm just a small time guy not making tons of money or anything but was looking to try and grow some. Was going to try and contact the apparel stores around here trying to sell them but wanted to see if what I'm doing is "illegal" and if it's even feasible to get it to be legal.


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## jtm (Dec 2, 2013)

If you want to put any trademarked logo on your work, you need to have a license from the trademark owner to do so. (and this situation does not fall under any fair use exemption).

It doesn't matter that you're a "small" company. Nor does it matter if you were to give them away instead of selling them.

Would anyone ever go after a small guy for a couple of things? Who knows. But be aware the risk is there.


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## MrUnix (May 18, 2012)

Not a lawyer, nor do I play one on the internet… but I'm guessing that Walmart is not licensed by the NCAA to sell those items either (or the NBA, or NFL, or any of the other 'trademarked' logo items they sell).. they buy it from a licensed source, so any royalties or licensing fees should have already been paid by them. I would not think that every reseller down the line would need to be licensed.. just the original producer/distributor. If you are really concerned, about the only option would be to get a real legal opinion.. random blathering on a woodworking forum might not be the best source 

Cheers,
Brad


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## Gixxerjoe04 (Jan 31, 2014)

Well it's late and I'm bored, thinking about it so I had to ask someone haha. Of all companies I figure walmart is licensed for everything to sell, but yea it sucks if everyone down the line has to be licensed and pay royalties as well. So if i still bought the openers from Walmart like i did at first and it was feasible for me to afford the licensing and whatever to become legal. Then i wholesaled them to another company in town they'd have to be licensed to sell the stuff as well(not sure if they need just one license as a whole to sell all trademarked items or what), so that's 4 companies paying for a license and paying royalties I assume on one product, if that's how it all works. Going to try and find the right person to call tomorrow and hopefully i can get it figured out.


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## jtm (Dec 2, 2013)

Licenses are very specific from the trademark owners.

Purchasing a licensed keychain downstream in the supply chain does not permit you to re-purpose the item and then sell it as a licensed good. You can however, resell the keychain in its original form under the first sale doctrine. What you can not do materially alter it.

For a rather extreme example, you could not buy one of the sports teams trademarked sweatshirts, cut the logo out, and then stitch it on to a sofa, and then sell that sofa.

So if you are taking these licensed keychains, modifying them in any way, and then selling them, then yes, you could be infringing the trademark.


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## wormil (Nov 19, 2011)

This is what they refer to as a grey market item. It's yours, you can do what you want with it including reselling it but with some caveats. The concept is known as "trademark exhaustion" or "first sale". Basically your bottle catcher just happens to have that team keychain on it, you are not selling "home team bottle catchers". The downside is that in America it doesn't matter if you are right or wrong, legal or not, you can still be sued and whoever has the most money will usually win by exhausting the other.


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