I have been creating jewelry from COACH keychain charms I have purchased. They are all 100% authentic charms. I clearly state in every auction that the actual jewelry has been made by me,not by COACH and that the only thing made by COACH is the charms and that I am not endorsed by or affiliated with COACH in anyway. I have been selling very well until I was hit with a trademark violation and had my auctions pulled. This was not by VERO, but by what I believe is a competitior selling the same items. There are many other people selling this type of jewelry, some even showing the COACH name on boxes and bags in the background and their auctions are still up and running. Am I within my rights to be able to sell these items or not? Thanks!!
What you need to understand is that a Trademark identifies the source of goods. So when you use a famous TM product and incorporate that product into your final product, the question remains as to the source. If Coach may be clearly identified as a brand, then you need a permission to use from Coach, even though you legally bought the charms. there is not first sale doctrine applicable to branded products that can be used as parts to final products.
Consult with a TM attorney before things get worse.
USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.
Your use of the "Coach" keychain charms without permission probably constitutes illegal trademark infringement. The purpose of trademark law is to avoid consumer confusion. Even though you disclai an association with Coach, there is a significant likelihood that consumers might be confused into believing that your jewelry is associated with or endorsed by coach. Without permission from Coach, in all probability you are engaging in trademark infrignement. If you want to continue to sell these items, you will need permission or a license from Coach---and Coach does not have to grant you this permission. Trademark owners often do not want their trademarks to associated with what they might view as inferior items because this might dilute the value and harm the reputation of the trademark owner. If you continue to sell this items, you face a very substantial risk that you will be named as a defendant in a trademark infrignement suit----and these law suits are very expensive to defend.
My strong suggestion is that you should immediately retain IP counsel in New Jersey (I practice both in New York and New Jersey) to advise you on this matter. The general advice that you receive on this web-site is no substitute for retaining counsel, laying out all the facts and circumstances, and then developing a coherent business and legal strategy. The investment you make in legal counsel will save you great financial distress and frustrastion in the future.
As has been noted, you would have the right to sell the COACH charms themselves on eBay under the "first sale" doctrine.
However, while it may seem counter-intuitive, when you use a "branded" item in "new" work that is to be offered for sale -- called a derivative work or a collective work -- you have to get permission from the owner.
Not sure what you mean by VERO, but if it was not COACH that reported a trademark violation to eBay, COACH may be willing to grant you a license to do what you're doing.
As my colleague indicated, you should sit down with a trademark attorney in your area to discuss the specifics and your options. Many attorneys offer a free 30-60 minute consultation, and you will likely be able to come up with a game plan in that short amount of time.
Any answer or other information posted above is general in nature and is not intended, nor should it be construed, as legal advice. This posting does not create an attorney-client relationship between you and the posting attorney, and you are urged to engage a qualified attorney who is licensed to practice in the relevant jurisdiction.
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