I represent a start-up company that has just patented a new kind of electronic wearable. We are interested in sampling some of the sports leagues logos and send to them showing how the product will look. There is no intention to sell the product without proper licensing...only create 2 samples for teams of interest. Will this violate any trademark laws if the product will not be offered for sale. The teams can do whatever they like with the samples if they are not interested. Or...should we produce generic logos for the sampling to given an idea of how the technology works and will showcase their logos. Thanks.
The problem with what you are doing is the appearance of impropriety. If you use someone else's trademark for commercial gain, they would have a colorable claim. The best way would be for you to send it with generic logos and trademarks. If you do not, make sure you send them an explanation that you are merely using their trademark on the samples sent to them or else you might receive a cease and desist from them.
The question is whether your proposed use will be likely to cause consumer confusion. Since you will never offer these or display these to consumers in the marketplace I find it difficult to see how there would be a likelihood of consumer confusion. One way to avoid the issue entirely is to ask permission to make some samples for their evaluation in advance of any presentation. They can hardly object if they agree.
Prior responses are correct. If you offered these samples for sale, you could have a problem. If you appear to be offering them for sale, you could have a dispute and, while you would probably not have exposure to a claim in court, it could be a major disaster. What you might want to do is to produce the sample with a generic logo and when you present it to the NFL, ask if they would like to see it with a real logo. You could then cut-and-paste on a logo (if presenting electronically) or use real paste (or Velcro) if working in actual product.
Use generic logos and/or ask permission to use a team's logos.
In addition to potential trademark issues, you may have copyright infringement concerns if you copy someone's logo.
You should discuss with an intellectual property attorney in a private consultation.
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If you only used their marks on your products as samples to send to them, then you are not really doing anything inappropriate or creating any market confusion, but that does not mean that they will not be concerned that you might. These entities will not respond to unsolicited pitches. If you are seeking a licensing deal with them they have a process for that which comes with rather strict prerequisites.
Before you take any action, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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