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?”
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?”