I am planning on selling products within the Obstacle Course Racing community, such as Spartan Race, Tough Mudder, etc. The actual products would not contain any of their logos or even names. I just wanted to see if it was legal for me to use their names (not logos) within the product descriptions or Product Categories in my e-commerce website or even in the body of my paragraphs within my website.
For instance, this is how my Product categories would look:
• Product 1 for Spartan Race
• Product 2 for Tough Mudder
Another instance (in a body of a paragraph):
.... it's time to reward yourself from accomplishing the toughest races (like Spartan Race and Tough Mudder)....
I would only be using their names to help with the description of my products, but I would never use any of their names or logos on the actual products I'm selling.
First, what you cannot do -- you cannot use their name in any way that is likely to confuse the public that imply they are endorsing what you are doing or that your product is made by them (unless it is).
What you can do is truthfully refer to a trademark that relates to what you are selling. For example, if you go on online stores, you will see numerous cell phone cases being advertised that say they fit a particular iPhone or Android phone or an iPad or other branded tablets. They are not suggesting they are Apple or Samsung or that those companies have made or sponsored their product. Consumers are not likely to think they are getting a case from the same company as the phone or tablet.
Having said that, however, you don't say what your products are. There could be situations where you are using some aspect of the branded items that do infringe on the trademark or copyright rights of those companies. So the bottom line is you would do well to go over your actual product and planned usage with your own intellectual property attorney in an actual consultation.
Please note: This response is solely general information or suggestions about your issue. It is not intended and should not be considered as legal advice, and I am not your attorney. Such professional advice requires creation of an attorney-client relationship and full disclosure to an attorney of a client’s circumstances and that attorney’s opportunity to analyze those circumstances and review any relevant documents against applicable law.
You may have arguments of at least, fair use, deminimis use, and first amendment arguments for use of the trademark names, which may or may not succeed depending on all of the facts.
You should discuss with an intellectual property attorney in a private consultation.
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So, I'm not 100% on your objectives here, so the below response is really more of a general one.
You are free to use another's trademark descriptively in text to refer to that mark holder. This is called "nominative fair use" and the classic example is using the terms "Coke" or "Pepsi" on a menu as opposed to "cola flavored carbonated beverage." You just have to make certain that you are not presenting a false association, sponsorship, endorsement or other affiliation with any given trademark owner. I would also make sure you understand where to draw the line regards to disparagement to avoid being accused of defamation. Using logos, as you seem to understand, however, is often seen by the courts of using more than what is necessary to convey your point and can lead to accusations of infringement.
Before you commit to anything, 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-Legal, LLC on the basis of this posting.
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