Legal Question in Business Law in California

Re: Trademark

In most cases no. Although under trademark law's "first sale" rule, you are allowed to resell goods you lawfully buy, your hypothetical is a bit different because you are altering the goods in a way that might cause source confusion in the marketplace. Alternatively, you could use what is called a "Coty" disclaimer with your sale of the total product, but this is also very difficult to do without inviting infringement. In the end, it is probably best to get a deal with the company(s). If your product is an improvement or compliment to their product, I am sure most will be receptive to your use.

If you wish to discuss this further or need additional assistance, please feel free to contact me.

Re: Trademark

I agree with the previous answer, but I think the potential problems go beyond source confusion. Also, "first sale" is primarily a copyright doctrine, not particularly applicable here.

As I understand it, your deal is not so much that you're promoting a product as ROSSIGNOL ("collateral use") as that you're modifying a Rossignol product and selling it under your own brand, the Rossignol board being merely a component part of it.

I think your primary exposure to lawsuit and liability is under a principle called 'tarnishment' which describes a certain kind of impermissible trademark infringement whereby '....a trademark is linked to unrelated products or services of poor quality or when the trademark is portrayed in an unwholesome or unsavory context, such that the public associates the poor quality ..... with the plaintiff's unrelated goods." Deere & Co. v. MTD Prods., (2nd Cir. 1994) 41 F.3d 39.

I'm not saying your goods would be poor quality, but that's what Rossignol's attorneys would allege.

The probability of being sued is not necessarily 100% and you might win. However, the safer course is to get an OEM agreement; this would give you better pricing on your raw material too.