Commentary:Use for Non-Software

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Commentary on Use for non-software goods and services

See Commentary:Use for Software for additional discussion of trademark law principles as they relate to FOSS projects.

United States

The standard for control over promotional goods is probably more relaxed than for core goods:

If a licensee uses the trademark of a beer or soft drink manufacturer on clothing or glassware, for example, prospective purchasers may be unlikely to assume that the owner of the trademark has more than perfunctory involvement in the production or quality of the licensee's goods even if the manner of use clearly indicates sponsorship by the trademark owner. On the other hand, if the licensee's use is on goods similar or identical to those produced by the trademark owner, purchasers may be likely to assume that the goods are actually manufactured by the owner of the mark. Greater control by the licensor may then be necessary to safeguard the interests of consumers who may purchase the goods on the basis of the licensor's reputation for quality.

Restatement (Third) of Unfair Competition § 33, cmt. c (1995); see also Experience Hendrix, LLC. v. Elec. Hendrix, LLC., No. C07-0338 TSZ, 2008 WL 3243896 at *7 (W.D. Wash. Aug. 7, 2008) ("The type of quality control required to prevent abandonment varies with the circumstances").

There nevertheless is still a duty to exercise quality control, so there should be some effort to have standards that will ensure consistent quality, like the use of vendors authorized by the project or specifications of level of quality for the promotional product.

There is also little question that in the United States there will be a "use in commerce," for which trademark rights accrue, even if the goods are given away for free.

Other jurisdictions

European Union

In Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH, the ECJ decided on a case where a TM owner use his TM only for promotional goods that had no connection whatsoever to the goods the TM was registered for (they were used on free softdrink samples, while the TM owner actually had a clothing business). In that scenario, the ECJ correctly said that there was no genuine use with regard to clothing (there would have been genuine use for softdrinks, if the mark had been registered for those goods, which it wasn't).

In Case C‑442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, the ECJ said that it is irrelevant whether or not goods are sold, as long as giving away the products has a sufficiently close connection to a commercial activity of the TM owner. I.e. I can genuinely use my TM on promo samples and in sponsoring if my ultimate aim is to increase my commercial market share.

In C 127/09 – Coty Prestige Lancaster / Simex and C-324/09 – L'Oréal / eBay, the ECJ decided on cases where promotional goods were given to vendors with the explicit condition that they may not be sold to third parties. The ECJ held that if those goods are then nevertheless sold, the rights of the TM owner are not exhausted, the goods have not been placed on the territory of the EU with consent of the owner, and thus the TMs can still be enforced against whoever sells the goods.