Legal Question in Business Law in California

resale of a licensed trademark

My company makes blankets. We want to make our items using fabric with characters from Sesame Street, Disney, etc. Do we need permission from the 'parent companies' before we sell? Keep in mind, the fabric is already imprinted with the characters, we would just be using it to create our blankets.

Sincerely,

SH


Asked on 11/03/03, 2:23 am

2 Answers from Attorneys

Michael Olden Law Offices of Michael A. Olden

Re: resale of a licensed trademark

Yes yes yes not only do you need your permission which will have to negotiate how much you paid to them for the use of their characters on your product. Merely because you're using a fabric which are ready contains pictures of the characters doesn't mean that he can be used to free, without payment of money, when you are going to make a profit on it. It's a wet think about it, you want to use those characters because more blankets would sell with the use of the characters and then if they didn't have them. If you just made a plain red blanket, not too many sales.

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Answered on 11/03/03, 11:28 am
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Re: resale of a licensed trademark

In trademark law there is a "first sale doctrine" which says that when a trademarked item is first sold to a consumer, it may subsequently be resold (e.g. as a second-hand item) without violating the trademark rights of the manufacturer.

Unfortunately, there is a fair number of cases holding that the first-sale doctrine doesn't apply to buyers who re-use the trademarked product to incorporate it in a product of their own making. The theory of these cases is to discourage diluting or cheapening the trademark image and identity.

You might never be challenged, but it is far safer to obtain a license for your intended re-use.

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Answered on 11/03/03, 2:19 pm


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