Discussion:
What is the name of your state? IN
I have developed a software add on which works well with another company's product (An Inc. Florida co.). The software doesn't modify or use their software, nothing like that. I want to market and sell this product directly to customers who might own said software. The company's name and product are registered US trademarks.
How can I advertise and label my product in such a way to let people know that it works with the trademarked company name and product? I don't want to pay a licensing fee if I don't have to. Thanks.
Answer:
Generally, the only "fair use" of a trademark is use when the only way t describe something is by using it's trademark. For example, if I'm selling an IBM laptop on, say, eBay, if I couldn't use the trademark, I would be limited to saying something like, "Laptop made by a big New York computer manufacturer also known as big blue" or something like that -- the law recognizes that this is unreasonable, and allows this use of another's mark as a "fair use."
However, even "fair use" can be trumped if your use is likely to cause "confusion" as to whether your product was desgined, authorized, or otherwise associated with the mark holder. The use you describe walks a fine line -- there really isn't a cut-and-dried "safe" use of another's mark in this particular case. You have a couple of choices going forward. First, see if the other company has a "trademark useage policy" on their website -- many companies realize that certain uses of their mark, while not necessarily "fair" uses, are nonetheless good for business, and therefore provide a guideline of what they consider "okay" uses of their mark. I've drafted a few of these, that would be a good place to start.
Second, you could speak with a local attorney who has some experience in trademarks, and who can review all of the relevant facts, and advise you accordingly. You could talk directly with the other company, and see if you could work something out to your mutual benefit (maybe involving licensing fees, maybe not). Finally, you could just do it and hope for the best, but I wouldn't suggest that...
Answer:
divgradcurl,
Thanks for the response. You're validating my own concerns and I appreciate the need to seek additional help with this.
I was operating my business as a sole proprietership. Once I thought about the ramifications of accidently angering another party, I quickly filed Articles of Organization for an LLC with the state. Even if I am guided in my operation by what I believe to be sound legal advice, I still could've been sued and had my personal assets taken by a P.O'd party.