Is refurbishing an old machine trademark infringement? Mold-A-Rama v. Weiner

A trademark is something on a product which indicates to consumers who produced a product. Traditionally a trademark is thought of as a word, phrase or symbol, but anything that a manufacturer uses to brand products can be granted trademark protection. The key thing which defines a trademark is the association consumers make between the trademark and the manufacturer that brands its products with the trademark. The first person to use a trademark in commerce is typically referred to as the senior user in United States trademark law. A senior user is granted superior rights to a trademark over subsequent users, or junior users. A trademark can be registered to grant the owner of a trademark additional rights, but registration of a trademark is not required to acquire some rights to a trademark.

United States trademark law grants the owner of a trademark the exclusive right to brand products with the trademark. If someone other than the trademark owner brands products in a way that leads to consumers confusion as to the identity of the manufacturer of a product that can be considered trademark infringement.

While United States trademark law grants a trademark owner some broad rights, there are some limitations. The first sale doctrine protects the right of a buyer to resell legitimately purchased trademarked goods. Once a trademark owner sells branded goods into the marketplace, the trademark owners right to control the distribution of the goods is exhausted. The resale of genuine trademarked goods, even if not authorized, does not constitute trademark infringement. Resellers can advertise that they are selling new, used, or reconditioned goods bearing the trademark, but a reseller cannot imply that there is a special relationship between them and the trademark owner when none exists.

However, the first sale doctrine has its limitations. A purchaser of Rolls Royce hood ornaments could not put those hood ornaments on any car and claim the car is a Rolls Royce car. Similarly, the if a person purchases a Rolls Royce that cannot be driven and uses parts from other manufacturers to make the car operational again, that car cannot be sold as a Rolls Royce. This limitation on the first sale doctrine is to protect consumers from purchasing products which have been materially changed, thinking that they are purchasing an original product.

The first sale doctrine can get tricky when dealing with old technology. Sometimes the it is difficult to source original parts to make an old machine work again. Frequently, even the original manufacturer has difficultly sourcing parts to repair machines that they produced a decade ago. The question then becomes, is it a material change to use new technology to refurbish an old machine? Using different parts is no doubt a change, but if the original parts are not available and the change does not make the refurbished machine inferior, is the change material enough to void the first sale doctrine?

A case which deals with the resale of refurbished products is MOLD-A-RAMA Inc., v. BRUCE WEINER, 18-cv-08261 (N.D.IL 2018). The plaintiff in this case is a company which manufacturers and maintains vending machines which make plastic figures on demand. The machines store raw plastic which is heated and pressed by a mold to form a figure when a customer inserts money into the machine. The MOLD-A-RAMA vending machines are complicated machines that employ technology from the 1950s and 1960s. The plaintiff is the owner of U.S. Registration No. 3,307,209 for the MOLD-A-RAMA trademark. The plaintiff’s business revolves around the service and maintenance of its machines as well as preserving the nostalgia consumers have for the machines.

The defendant is in the business of refurbishing and selling machines which bear the MOLD-A-RAMA trademark and perform a similar process. The defendant advertises the machines as original but fully restored. The plaintiff claims that the defendant refurbishes the machines it sells with unauthorized parts that materially change the machines. In late 2018 the plaintiff sent a cease and desist letter to the defendant requesting that the MOLD-A-RAMA trademark be removed from machines sold by the defendant. The defendant did not respond and continued to sell refurbished machines. The plaintiff then filed this lawsuit for trademark infringement.

The case will turn on whether the defendant’s use of unauthorized parts to repair broken MOLD-A-RAMA machines is considered a material change by the court. And if it is a material change whether consumers were confused by the defendant’s advertising into thinking they were purchasing an original MOLD-A-RAMA machine.

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