First-Sale Doctrine for Food Products — Let’s Get to the Bottom of This!

[beekrock]

We’ve all been to the Mom & Pop establishment that offers an “Oreo milkshake” on their menu. Or, the food truck at the local Fair that sells “deep fried Oreos”. Or, maybe even the seller’s on Etsy and eBay that sell home-bagged “crushed Oreos”. Are these simply three examples of small-timers not worthy of a Nabisco lawsuit, or are these three instances of the First-Sale Doctrine at work?

I’m trying to find a dividing OK/not-OK line amongst all of the gray area of this topic. Please correct me if any of the following assumptions are incorrect:

1. I CAN’T use the “Oreo” logos or slogans, without express permission from Oreo.

2. I CAN purchase Oreos and resell them, unchanged, as “Oreos”.

3. I CAN’T create my own chocolate & cream sandwich cookie and call it an “Oreo”.

4. I CAN’T create just any old food product and market it as an “Oreo”, but if my product contains actual Oreos I CAN use “Oreo” in the name — in more of a descriptive sense. For example, “Bob’s Oreo Chunk Cheesecake”. But, what about “Bob’s Oreo Cheesecake”, or “Oreo Chunk Cheesecake”, or simply “Oreo Cheesecake”? Are these all safe? It seems that the line of infringement is crept up upon easily here.

5. I CAN’T deep-fry, or otherwise materially change an Oreo and then simply call it an “Oreo”, but I CAN call it a “Deep Fried Oreo”, as that’s exactly what it is. I see this point argued over online when it comes to people wanting to sell “Freeze-Dried Skittles”. I would think that’s fair-game, but others argue not. If anyone has any case law on this, it would be greatly appreciated!

6. My limited understanding of Trademark law is that it’s in place to protect the consumer just as much, if not more so, than to protect the Trademark holder. The idea being that if the consumer is looking to purchase, say, Oreos, that that should be an endeavor not easily confusable. As such, the true crossing-of-the-line with First-Sale Doctrine would be: “Would a consumer confuse this product for the original manufacturer/producer’s, or otherwise be led to believe that the product is by/from/endorsed/licensed by the original manufacturer/producer?”

 

[adjusterjack]

I think you are correct with items 1, 2, and 3.

For example, “Bob’s Oreo Chunk Cheesecake”. But, what about “Bob’s Oreo Cheesecake”, or “Oreo Chunk Cheesecake”, or simply “Oreo Cheesecake”? Are these all safe?

No, that's clearly infringement.

I CAN call it a “Deep Fried Oreo”, as that’s exactly what it is.

Also infringement.

If anyone has any case law on this, it would be greatly appreciated!

Lawyers have case law.

My limited understanding of Trademark law is that it’s in place to protect the consumer just as much, if not more so, than to protect the Trademark holder.

It's to protect the trademark holder's revenue. Period.

Your limited understanding of trademark law is exactly why you should consult an attorney before using somebody else's brand to sell your products.

 

[beekrock]

Thanks, adjusterjack.

Now I’m really confused. I actually did speak with an attorney who is a Law Professor about this very subject. Granted, the conversation was casual and very brief. When talking with him, I used the go-to example of “Deep Fried Oreos”. He claimed that calling them “Deep Fried Oreos” was acceptable because of the combination Nominative Use & First-Sale doctrines; The product is an Oreo and, even though the original product was modified, you are disclosing how it was modified right in the name. By referring to it by anything other than an “Oreo” would be misleading; much like buying Oreos, repackaging them, and selling them as “Bob’s Chocolate Sandwich Cookies”.

Now, I’m not holding the guy to his word over a 2-minute conversation that he wouldn’t even remember if asked, nor am I looking to hold forum-poster’s opinions here as the Gospel, nor am I trying to hawk repackaged Oreos. I’m just trying to learn about the nuances of this area of law.

So, the three examples in my opening paragraph (the milkshake, deep fried, and crushed Oreos) are all a no-no? Does Nabisco not bother pursuing these people, or do they have counsel that is just constantly sending out C&Ds? I know of several offenders in a 2-mile radius from me. I wonder if Nabisco would be willing to offer a bounty on them

 

[adjusterjack]

Of course you are confused. Here's why.

1 - He's a law professor, not a practicing trademark attorney, a complex and specialized field.
2 - You spent 2 minutes in casual conversation which makes his comments worthless.
3 - Now you have revealed that you are using Orea as an "example" not the real name of a real brand vs the real name of your product. Which also makes any discussion worthless.

You're not the first one who has come here without expecting to get real advice using fake situations.

If you want real advice, consult (meaning pay) a real trademark attorney for an in depth discussion of your real product name vs the real brand name at issue.

Otherwise you're just wasting your time on the internet.

And ours.

 

[beekrock]

Of course you are confused. Here's why.

1 - He's a law professor, not a practicing trademark attorney, a complex and specialized field.
2 - You spent 2 minutes in casual conversation which makes his comments worthless.
3 - Now you have revealed that you are using Orea as an "example" not the real name of a real brand vs the real name of your product. Which also makes any discussion worthless.

You're not the first one who has come here without expecting to get real advice using fake situations.

If you want real advice, consult (meaning pay) a real trademark attorney for an in depth discussion of your real product name vs the real brand name at issue.

Otherwise you're just wasting your time on the internet.

And ours.

I have to say, I find your reaction quite odd. I do appreciate your feedback; that’s why I’m here. I simply asked for insight based solely on the few select scenarios I posted. I don’t have a product, and as such, I’m certainly not paying for an attorney’s opinion on the subject.

This is a forum for open discussion, but instead of starting a discussion, I’m “wasting” my time, “wasting” your time, the law professor’s comments are “worthless”, and I “revealed” that I was using Oreos as an example (as in I was I was hiding something)??? And I get it, this field is very nuanced, but simply saying “Go consult an attorney” is also unproductive for a format like this.

I’ll leave this thread to die out, and I do appreciate your initial response, but try not to chase people away when asking questions. If you have the knowledge to help people here, you should be WANTING to help them. If not, why bother responding?

 

[Just Blue]

I have to say, I find your reaction quite odd. I do appreciate your feedback; that’s why I’m here. I simply asked for insight based solely on the few select scenarios I posted. I don’t have a product, and as such, I’m certainly not paying for an attorney’s opinion on the subject.

This is a forum for open discussion, but instead of starting a discussion, I’m “wasting” my time, “wasting” your time, the law professor’s comments are “worthless”, and I “revealed” that I was using Oreos as an example (as in I was I was hiding something)??? And I get it, this field is very nuanced, but simply saying “Go consult an attorney” is also unproductive for a format like this.

I’ll leave this thread to die out, and I do appreciate your initial response, but try not to chase people away when asking questions. If you have the knowledge to help people here, you should be WANTING to help them. If not, why bother responding?

Apparently you didn't read the Important Message that is at the bottom of every page. This site is for people that are having legal issues to obtain general legal guidance. It is not a debate/discussion site. Had you bothered to read the terms of Free Advice when you joined, you would have know this and not wasted both your time and the time of the volunteers of this site.