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Are there case law examples where a reseller was forbidden to publish the name of the item being resold?

For example suppose a computer reseller acquires a used computer made by HALCO, model HAL-9001 (fake brand and model).

Can HALCO stop the reseller from publishing the brand and model, perhaps in an ad, on their website, or on a piece of paper taped to the unit, as both are trademarked? (There are no authorized HALCO resellers.)

  • Please specify a jurisdiction, a country, as it will make searches for cases easier, and might make a difference. – David Siegel Jun 20 at 23:01
  • Trademark is not a concern. The only time there might be a concern of this type would be if national security were concerned and the military didn't want someone to admit that the thing sold existed. So, for example, you might have to suppress the name "B-20 Bomber radar units" and give it a fake name. – ohwilleke Jun 20 at 23:32
  • USA. Thank you oheilleke. – Randy Zeitman Jun 21 at 0:06
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If the computer is in fact a HAL-9001 (no doubt running the Clarke-68 OS) then the reseller can so describe it without trademark infringement. This is a case of nominative use, where the trademark is used as the name of the thing, to describe and/or refer to it.

In addition, under US law, an attempt to prohibit the reseller from using that term would run into first amendment issues, and would be subject to strict scrutiny.

If the term were used in such a way as to disparage the brand, there could possibly be an action for tarnishment of the trademark. but such actions are now limited in the US on first amendment grounds, following the case of Matal v. Tam. See What is trademark tarnishment or dilution under US law? for more details.

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Not that I know of because there’s nothing wrong with doing that. The trademark identifies a product and can be used by anyone for that purpose.

What you can’t do is use it in a way that causes confusion that your product is the trademarked product when it isn’t.

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