New Found Love for recycled corks and cigar labels

[NeedMoreInfo]

My brother and I have found an interest in making cigar holders from old wine corks and cigar labels. There were people who mentioned that we should check to make sure we were not infringing on trademarks by allowing the brand names to show on the wine corks and also attaching the old cigar labels to the cigar holders since these are owned by the respective companies.

Question: Would we be violating any laws if we were to make a cigar holder out of a wine cork from Chateau de Michelle? How about attaching the cigar labels to the wine corks as an additional style? Would we be violating any trademarks from the cigar companies by selling these cigar holders w/ their names on them?

thanks for all your help!
Garcia brothers.

 

[quincy]

My brother and I have found an interest in making cigar holders from old wine corks and cigar labels. There were people who mentioned that we should check to make sure we were not infringing on trademarks by allowing the brand names to show on the wine corks and also attaching the old cigar labels to the cigar holders since these are owned by the respective companies.

Question: Would we be violating any laws if we were to make a cigar holder out of a wine cork from Chateau de Michelle? How about attaching the cigar labels to the wine corks as an additional style? Would we be violating any trademarks from the cigar companies by selling these cigar holders w/ their names on them?

thanks for all your help!
Garcia brothers.

Yes, it is possible that your use of existing trademarks in your products could lead to cease and desist notices or an infringement action or two.

Trademark holders are protective of their rights in their marks because it is up to them to enforce these rights. If they freely allow others to use their trademark in commercial ventures, they can lose all of their own rights in the mark.

I suggest you check with an IP attorney in your area for a review of the specifics. If the cigar labels and corks are old enough and the companies are no longer in business (i.e., the trademarks have been abandoned), then it is possible that you can use them without risk. But, again, this depends on the specifics and will require a personal review.

A clever idea, by the way, and potentially doable. Good luck.



edit to add: trademark laws can vary by country

 

[FlyingRon]

The following is for the US alone.

I'd take a slightly different opinion than Quincy. The mere act of turning goods bearing an existing trademark into new goods is *NOT* trademark infringement. In fact, it's not anything infringement. Once these items enter the commerce stream, the first sale doctrine says you can do what you want with them. That's not to say that some companies won't attempt to restrict your use of these items, but legally they have no leg to stand on.

Now what you can't do is use those marks to promote your new product. You can sell a Cohiba-Chateau St. Michelle doodad, but you can't use their trademarks in marketing your product.

 

[quincy]

The following is for the US alone.

I'd take a slightly different opinion than Quincy. The mere act of turning goods bearing an existing trademark into new goods is *NOT* trademark infringement. In fact, it's not anything infringement. Once these items enter the commerce stream, the first sale doctrine says you can do what you want with them. That's not to say that some companies won't attempt to restrict your use of these items, but legally they have no leg to stand on.

Now what you can't do is use those marks to promote your new product. You can sell a Cohiba-Chateau St. Michelle doodad, but you can't use their trademarks in marketing your product.

And, what is nice, both FlyingRon and I can support our opinions with case law*, too.

Whether using legally purchased goods to create your own products is infringement or not depends on the facts of use.

When trademarks are involved, though, you run an even greater risk of a lawsuit, especially with commercial uses. I definitely agree with FlyingRon that you do not want to use another's trademark to promote your products.

And, yes, this is for U.S. law only.


*for FlyingRon's argument, see Mattel Inc v Walking Mountain Productions, Inc, 4 Fed. Appx. 400 9th Cir (2002) - on a noncommercial use of Barbie dolls in art work which was found not to be infringing

*for my argument, see the following thread: https://forum.freeadvice.com/sports-arts-entertainment-law-86/selling-reconstructed-hockey-jerseys-legal-506442.html, which lists the Circuits which have found using trademarks in reconstructed goods infringing

 

[LdiJ]

And, what is nice, both FlyingRon and I can support our opinions with case law*, too.

Whether using legally purchased goods to create your own products is infringement or not depends on the facts of use.

When trademarks are involved, though, you run an even greater risk of a lawsuit, especially with commercial uses. I definitely agree with FlyingRon that you do not want to use another's trademark to promote your products.

And, yes, this is for U.S. law only.


*for FlyingRon's argument, see Mattel Inc v Walking Mountain Productions, Inc, 4 Fed. Appx. 400 9th Cir (2002) - on a noncommercial use of Barbie dolls in art work which was found not to be infringing

*for my argument, see the following thread: https://forum.freeadvice.com/sports-arts-entertainment-law-86/selling-reconstructed-hockey-jerseys-legal-506442.html, which lists the Circuits which have found using trademarks in reconstructed goods infringing

I am not at all sure that the thread you cited and the arguments made there are similar to what the OP would like to do.

 

[quincy]

I am not at all sure that the thread you cited and the arguments made there are similar to what the OP would like to do.

How come? What do you see as the difference?

Do you think that the cork and cigar label cigar holders would have as much commercial appeal if NeedMoreInfo used generic corks and labels? Or is it likely that consumers will be drawn to the product because of the trademarks on the corks and labels?

It is the commercial aspect of his product that is likely to attract the attention of the trademark holders. An owner of a famous trademark can (in most cases) prevent uses of their mark on another's goods, even those goods that are not competing with their own.

As an additional note, "fair use" in trademark law is not the same as "fair use" in copyright law. Fair use of others' trademarks include uses in comparative advertising (Pepsi v Coke), in parodies, and in news reports and commentary. You can use a trademarked name to describe the trademarked product. Non-commercial uses, like the "Barbie" art work suit I cited, can be considered fair uses.

For trademark fair use, see the Lanham Act, 15 USC, §1115.

I certainly cannot tell you what a court would think of the cigar holders, if a court were ever to hear the matter. I think NeedMoreInfo needs to be careful about using existing trademarks in his commercial venture, however, so that it doesn't wind up being a matter that a court must decide.