Trademark Infringement

Trademarks are infringed by using another trademark which is likely to be confused with the trademark. Although a variety of factors are used to determine likelihood of confusion, the most important factors are the similarity of the trademarks as well as the relatedness of the products or services which are identified by the trademarks.

The similarity of the marks is evaluated by comparing the appearance, sound, meaning, and commercial impression of the trademarks.

Related goods or services are those which a consumer would believe originate from the same source. If a consumer would not believe that the products or services originate from the same source, then there is no trademark infringement even if the trademarks are similar. However, if a trademark is famous, then liability for trademark dilution remains a risk.


This website is intended to provide general information on the protection of intellectual property, and not legal advice for any specific situation. Every situation is unique, and no website can possibly consider the unique aspects of every situation, or provide the proper advice for each situation. Furthermore, many situations may be covered by state law and/or the laws of foreign countries as well as federal law, and laws vary from state to state or from country to country. Additionally, trademark is a specialized, highly subjective subject. I therefore encourage you to contact me to evaluate your specific situation and goals, and to determine the best way to avoid liability.

Trademark Dilution

If a trademark is famous, then anyone using a similar trademark can be found liable for trademark dilution even if the products or services are not related.

Infringement of Stylized Design Trademarks

As a general rule, the word portion of a trademark is more important than the design elements in determining likelihood of confusion. A likelihood of confusion can potentially be found when similar words are used, even if they are used with very different design elements. However, if the design elements are sufficiently close, then a likelihood of confusion can potentially result even if the words within each trademark are different. The opinion in Jack Daniel’s Properties Inc. v. VIP Products, LLC, which is discussed below, pointed out the similarities in the designs used with completely different words, and the district court originally ruled that trademark infringement had occurred.

When registering trademarks, the broadest protection is obtained by registering the words as a standard character trademark without regard to font or style as well as registering the stylized design in which the words usually appear.

Trademark Infringement by Parodies

The extent to which a trademark may be used as a parody was recently addressed by the US Supreme Court in the case of Jack Daniel’s Properties Inc. v. VIP Products, LLC. This case held that when a trademark is used to identify the source of goods or services, the fact that the trademark is a parody does not insulate the party using that trademark from a claim of trademark infringement.

Jack Daniel’s involved a dog’s chew toy which closely resembled the shape of a bottle of Jack Daniel’s whiskey. The words “Bad Spaniels” appeared in a manner which mimicked the Jack Daniel’s logo. The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” were replaced with “The Old No. 2 On Your Tennessee Carpet.” Many of the graphics on the chew toy’s label matched those on the label of a bottle of Jack Daniel’s whiskey.

Parodying, commenting, and criticizing a trademark owner are considered to be fair use of a trademark. However, commenting on a trademark owner is different from using a trademark to identify a source of products or services. Some entities have attempted to register and use trademarks which are arguably confusingly similar to other trademarks, relying on parody to insulate them from claims of trademark infringement. The Supreme Court clarified in the Jack Daniel’s opinion that this exception, which was intended to protect the right of free expression under the First Amendment, does not extend to use of confusingly similar trademarks. If a trademark is confusingly similar to another trademark, its status as a humorous parody will not insulate the potential infringer from liability for trademark infringement.

Avoiding Trademark Infringement when Modifying and Reselling Products – False Designation of Origin and Reverse Passing Off

In general, under the first sale doctrine, you are free to do almost anything you want with a trademarked product that you purchased from a legitimate source. The first sale satisfies and extinguishes the trademark holder's rights. However, there are exceptions, and if not done carefully, you could end up liable for trademark infringement, reverse passing off, or false designation of origin.

Selling the product unmodified, under the original trademark, is likely to be okay. However, see the gray market discussion below.

Selling the products with the original trademark, but modified in any way, is only okay if you make it clear that you are selling a modified product. It must be clear that the original trademark holder does not endorse the modifications to the product, and the modified product should not be advertised as meeting the quality standards of the trademark holder. Otherwise, it is trademark infringement. Even if you make it clear that you are selling a modified product, you risk a potential accusation of trademark infringement, as explained by the example discussed below.

Selling the products unmodified, or with trivial modifications, and removing the original trademark, is reverse passing off or false designation of origin.

Selling the products with more significant modifications, for example, changing the original product into a completely different product without the original trademark, is likely to be okay.

A common situation is purchasing fabric displaying a trademark across the fabric, sewing another item using that fabric, and then selling that new item. The fabric was sold for personal use. The newly created product bears the trademark of a trademark owner which did not approve that new product. Selling that product is therefore likely to be trademark infringement.

The above explanation is intended to convey basic concepts, and cannot be taken as legal advice for any specific situation. Trademark is a highly subjective area of law, and can be tricky. You should discuss your specific situation with a trademark attorney in order to ensure that you are not risking liability. Please contact me with your questions.

An Example of the Limitations on the First Sale Doctrine

One of the most educational examples of the limitations on the first sale doctrine is the case of Rolex Watch USA, Inc. v. BeckerTime, LLC, 91 F.4th 776 (5th Cir. 2024). This case illustrates how a company which is trying to sell refurbished products in an honest manner can unintentionally run afoul of the original manufacturer’s trademark rights.

Although the decision of the United States Court of Appeals for the Fifth Circuit has the greatest value as precedent, a full understanding of the decision requires consideration of the opinion of the United States District Court for the Northern District of Texas. This opinion is Rolex Watch USA, Inc. v. BeckerTime, LLC, 2022 WL 286184 (N.D.TX 2022).

The defendant sells pre-owned, refurbished Rolex watches with various modifications. Some of these watches included modified dials to which aftermarket diamonds had been added, aftermarket bezels with added diamonds, and/or aftermarket bands or straps with genuine buckles or clasps having the Rolex trademark.

The defendant took steps to ensure that customers understood what they were purchasing. The product descriptions on the defendant’s website and eBay listings indicate that the defendant is not affiliated with the plaintiff, that the replacement parts are not genuine parts from the plaintiff, and that the modifications will void the plaintiff’s warranty. The defendant provided further product descriptions in response to customer inquiries, and reiterated to customers that the plaintiff would no longer service the watches in question.

Unfortunately, the defendant made mistakes which could have misled consumers. The defendant held itself out as having a Rolex-Certified Master Watchmaker despite having no such certification from the plaintiff. The defendant also identified the watches as genuine Rolex watches and provided authenticity guarantees. The phrase “Superlative Chronometer Officially Certified,” which is used by the plaintiff to indicate that a movement meets the standards of the Contrôle Officiel Suisse des Chronomètres, is sometimes printed on a refurbished watch even though the defendant does not test the movements to ensure that the standards are met. This was likely done to restore the original appearance of the dial, which would have originally included that phrase. The defendant did not include any markings indicating that the defendant was the source of the watches. The District Court found that the aftermarket parts were inferior to genuine parts from the plaintiff.

Although the defendant intended to benefit from the plaintiff’s brand recognition (which is inherent in any sale of luxury goods), neither court found that the defendant intended to infringe the plaintiff’s trademarks. Despite the lack of bad intentions, some consumers were actually confused about the authenticity of the watches they bought. Additionally, both courts found the defendant’s disclosures to be inadequate because subsequent purchasers would not be adequately informed of what they were purchasing.

On appeal the Fifth Circuit explained that “a reseller may utilize the trademark of another, so long as it involves nothing more than a restoration to the original condition, and not a new design. In that case, “[f]ull disclosure gives the manufacturer all the protection to which he is entitled.” Rolex Watch USA, Inc. v. BeckerTime, L.L.C., 91 F.4th 776, 783 (5th Cir. 2024)(citing Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 130, 67 S. Ct. 1136, 1139, 91 L. Ed. 1386 (1947)). In this instance, since the watches were modified from their original condition, they were materially different from the watches sold by the plaintiff. Therefore, neither the first sale doctrine nor nominative fair use is applicable.

An injunction was granted limiting the defendant’s ability to sell modified watches and to use the plaintiff’s trademarks in connection with the sale of watches. As exceptions to the injunction, the defendant was permitted to continue selling watches having modified dials on which the plaintiff’s trademarks were not removed and re-applied, as well as watches for which customization was specifically requested by the customer. In such cases, the defendant was required to provide an inscription on the back of the watch indicating that the defendant has customized the watch.

The defendant could have potentially been liable for disgorgement of profits, but the plaintiff had delayed filing suit for ten years. This finding, combined with the lack of a finding of bad faith on the part of the defendant, resulting in a successful defense of latches.

This case provides an example of the risks associated with selling modified products with the original trademark. The extent to which the defendant attempted to ensure that purchasers understood what they were buying demonstrates that they did not intend to infringe the plaintiff’s trademarks or to deceive consumers. Despite this, actual confusion still resulted, and liability for trademark infringement resulted. If you are a trademark owner trying to maintain the value of your trademark, or are in the business of selling refurbished or modified goods and wish to do so in a manner that avoids trademark infringement, please contact me to discuss your specific situation.

Gray Market Goods

Under the first sale doctrine, you are generally allowed to do whatever you want with a lawfully purchased item. The first legitimate sale extinguished the rights of the trademark holder. However, there are exceptions.

Gray market goods are authorized by the manufacturer, but not authorized for sale in the territory where they are being sold. This is sometimes done because the manufacturer sends lower quality goods to regions where quality expectations are not as high as in the US. In other cases, it is done because the manufacturer can obtain a higher price in the US than in other parts of the world.

When you sell a good bearing a trademark, that good must be authentic. For a product to be authentic, in addition to having had the trademark placed on it with the authorization of the trademark holder, it must be identical in every way to the product that would be purchased from an authorized dealer, including the packaging, the warranty, etc. However, manufacturers often only provide warranties to those who purchase from authorized dealers. Once the item has left the authorized dealer network, its history is no longer known, and the manufacturer no longer regards it as a new product. So, if you are advertising the product as "new," which would lead a consumer to expect that it comes with a warranty, you may need to provide your own warranty, and that warranty must be at least what would be offered by the manufacturer.

If you are not an authorized dealer, then you may not hold yourself out as an authorized dealer, or advertise in any way that would lead consumers to believe that there is an association between you and the trademark holder. You may use the trademark to truthfully describe what you are selling, but should not over-use it in a way that would imply any association with the trademark holder.

You are also responsible for ensuring that the goods you are purchasing and re-selling are in fact authentic goods, and not counterfeit goods. If the products turn out to be counterfeit, you can be liable for selling counterfeit goods. Many brand owners are aggressive in looking for and pursuing vendors of counterfeit goods.

In addition to ensuring that you are well-positioned to enforce your own trademarks, my goal is to keep you out of court. Identifying trademark infringement risks in advance and planning to avoid those risks is far less time-consuming and expensive than defending against an accusation of infringement. Please do not hesitate to contact me to discuss your specific needs.