Commentary:Use for Non-Software

The "Commentary" pages are are explanatory material relevant to those adopting the Model Trademark Guidelines, like Reporter's Notes for a Restatement or advisory committee notes for model laws. They provide information to the end users of the guidelines about the legal, practical and ideological rationale embodied in the guidelines.

If you want to discuss what's on the Commentary page, use the "Discussion" tab for the Commentary page.

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

Case C-206/01 Arsenal Football Club v Matthew Reed: "In a situation which is not covered by Article 6(1) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, where a third party uses in the course of trade a sign which is identical to a validly registered trade mark on goods which are identical to those for which it is registered, the trade mark proprietor of the mark is entitled, in circumstances such as those in the present case, to rely on Article 5(1)(a) of that directive to prevent that use. It is immaterial that, in the context of that use, the sign is perceived as a badge of support for or loyalty or affiliation to the trade mark proprietor."

Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH: "Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items."

Case C‑442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’: "Article 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be construed as meaning that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations."