Corporate Logo Use on Commissioned Sample Products

[Klassic]

I have a couple of questions regarding intellectual property rights. Currently, I help manage a company that makes organizational kits that fit into purses to ensure the bag stays organized.

We have produced these organizational kits for a handful of companies for private use and put the company's logo on the bags. So, for example, let's say Apple ordered 1,000 organizational bags for a conference -- we would produce the bags with Apple's logo on it.

Now here's my question -- we want to take pictures of some of the bags we've produced for these companies and post those photos on our official website to broadcast to potential businesses the large company's we've worked with. But these "samples" obviously have other companies' logos on them.

Do I need to produce some sort of waiver to these companies to avoid IP infringement if I want to use their samples on my website?

Secondly, let's say that I just want to show that my organizational bags are compatible with (meaning fit inside) a Chanel purse. I've got a picture of a purse that is clearly Chanel and the organizational bag fitting inside of it. Since I'm showing a Chanel purse, do I need some sort of IP waiver there, too?

Any guidance would be greatly appreciated.

Thanks.

 

[quincy]

Are you in the U.S., Klassic? There can be significant differences in trademark laws between countries, and this site is for U.S. Law questions only.

Although it is possible to use another's trademark or trademarked product in the advertising of your own product, this type of commercial use runs the risk of attracting a lawsuit. Claims of infringement, dilution, tarnishment, false advertising, unfair business practices, etc. . . . all can arise from the unauthorized use of another's trademark.

The best way to avoid these risks entirely is to get permission from the holder of the trademarks to use the logos and products in the manner you describe.

There is much you must avoid in your ad - you cannot use another's trademark or trademarked goods in a way that suggests the trademark holder endorses or sponsors or is in any way connected with your product, and you cannot use another's trademark or trademarked product as a way to promote your own product, and consumers should not be misled by your advertising as to the origin of your product (ie. thinking Chanel makes your product or even that a Chanel purse is included with the purchase of your product).

Advertisements can include disclaimers, stating that there is no connection between the trademarked product and the business being advertised. Prominently placed disclaimers can help to eliminate consumer confusion. Disclaimers do not prevent lawsuits, however. They can only help to mitigate damages in the event of a lawsuit loss.

I strongly recommend that you consult with an IP attorney in your area and go over your advertising plans. Show mock-ups of the ads you wish to publish. Many companies, after reviewing the legal risks involved with using another's trademark, will decide to go with a "generic" logo (one created specifically for the ad) or their own business logo in their ads.

Again, consult with an IP attorney. And good luck with your business.

 

[Klassic]

Yes, this is for the U.S. -- Florida specifically.

Thanks for the advice, quincy. An IP lawyer is most always the way to go, but I'm trying to avoid the legal bills when at all possible.

A waiver and a disclaimer seems the best route here.

 

[justalayman]

A waiver and a disclaimer seems the best route here.

the best route is to not use the logo's. You may not be able to obtain a waiver (I would bet you won't) and a disclaimer only has limited benefits.

 

[quincy]

Getting permission is definitely the wisest course of action.

If you use a disclaimer, I suggest that you run your ad with disclaimer by an assorted group of consumers, to see what effect the disclaimer has. If consumers are confused by the origin of your product or believe that the trademarked company or product is connected with yours, or supports or endorses your product, rework your disclaimer until all confusion disappears.

Do not place any sort of prominence on these trademarks. They should be incidental at best. You stand to have more problems with something like the Apple trademark on your bag than with something like the Chanel trademark displayed on a Chanel product.

A good case to review is Toho Inc v William Morrow and Co, 33 F Supp 2d 1206 (C.D. Cal. 1998).

In addition, you would be wise to take out liability insurance, to cover the costs of a lawsuit should one arise - and, again, there are definite risks involved with your planned uses if you have not obtained prior permission to use the trademarks in the way you have described. Companies like Apple and Chanel have large legal teams and a lot of money to pursue a lawsuit, should they take any exception with your use of their product or their mark.

Again, I encourage you to run your plans by an IP attorney prior to publication of the ads. You eliminate much of the legal risk when you get permission to use the marks or trademarked goods, but a professional's review of your plans is still worth the cost. It will be far less than what you will spend defending against a suit, should one arise.

Good luck.