Can You Use a Trademarked Brand Name to Sell Products?

When Can an Online Retailer Use a Manufacturer’s Brand Name?

A retailer may use a manufacturer’s brand name to truthfully identify the product it sells or the product its own item works with, so long as the use is not likely to confuse buyers about the source of the goods or about sponsorship. Confusion is the line the federal statute draws.

The Eighth Circuit decided Calvin Klein Cosmetics Corp. v. Lenox Laboratories, Inc., 815 F.2d 500 (8th Cir. 1987) on appeal from the federal court in Minnesota, in a dispute over a copy of a designer perfume. The court stated the rule: “An imitator may use in a truthful way an originator’s trademark when advertising that the imitator’s product is a copy so long as that use is not likely to create confusion in the consumer’s mind as to the source of the product being sold.” The court added, “A trademark is not a monopoly on the use of a name or a phrase.”

The federal infringement statute is 15 U.S.C. § 1114(1). It reaches a use of a registered mark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” A companion provision is 15 U.S.C. § 1125(a)(1)(A). It reaches a use that “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” The Supreme Court framed the principle a century ago in Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). It wrote: “When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”

How Does the First Sale Rule Protect Resellers of Genuine Products?

Once a brand owner sells a genuine product, the buyer and later sellers may resell that product under its brand name without the owner’s permission, so long as it is not materially different from what the owner sells. Federal courts call this the first sale rule, and it is what lets a store that buys genuine goods through a distributor or liquidator list them by brand.

The Eleventh Circuit described the rule in Davidoff & CIE, S.A. v. PLD International Corp., 263 F.3d 1297 (11th Cir. 2001). After the owner’s authorized first sale, it wrote, “subsequent sales of the product by others do not constitute infringement even though such sales are not authorized by the trademark owner.” The same court recognized that “the lack of quality control can rise to the level of a material difference from the trademark owner’s product and create a likelihood of confusion.” “Several courts have held that the purchase and resale of goods solely within the United States may constitute infringement when differences exist in quality control or the products themselves,” the court noted. The Tenth Circuit, in a case about radar detectors resold on eBay, put it this way: “a purchaser who does no more than stock, display, and resell a producer’s product under the producer’s trademark violates no right conferred upon the producer by the Lanham Act.” That case is Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 2009).

The rule also covers naming the brand in the listing. In Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), the Second Circuit held that eBay did not directly infringe by using the TIFFANY mark on its site and in sponsored search links. The court reasoned that “eBay used the mark to describe accurately the genuine Tiffany goods offered for sale on its website.” The court quoted its earlier rule: “As a general rule, trademark law does not reach the sale of genuine goods bearing a true mark even though the sale is not authorized by the mark owner.” These are decisions of other federal circuits, so they persuade a Minnesota federal court without binding it.

What Makes a Resold Product Materially Different?

A resold product is materially different when it differs from what the brand owner sells in a way buyers would care about when deciding to buy. A materially different product is not treated as genuine, so the first sale rule stops protecting the seller, and the resale can infringe.

Davidoff set the standard: “A material difference is one that consumers consider relevant to a decision about whether to purchase a product,” and “the threshold of materiality must be kept low to include even subtle differences between products.” In that case, the batch codes had been etched off the fragrance bottles, which left a visible mark, and the court affirmed an injunction against the reseller. Beltronics extended the test beyond the product itself. The manufacturer honored warranties and offered upgrades and recalls only for detectors with original serial labels. The court held that “material differences may include the warranties and services associated with Beltronics’s radar detectors.” The court added that a reseller can avoid liability “by, for example, sufficiently disclosing that the product differs from the originally sold product.” The seller’s eBay warranty notice in that case was not consistent or complete enough.

Used and refurbished goods follow a related rule. In Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), the Supreme Court allowed reconditioned spark plugs to keep the Champion name with clear labeling. The Court explained that “Inferiority is immaterial so long as the article is clearly and distinctly sold as repaired or reconditioned rather than as new.” The Court also set a limit: “Cases may be imagined where the reconditioning or repair would be so extensive or so basic that it would be a misnomer to call the article by its original name, even though the words “used” or “repaired” were added.” Minnesota law points the same way. Under Minn. Stat. § 325D.44 subd. 1, a seller engages in a deceptive trade practice when it “represents that goods are original or new if they are deteriorated, altered, reconditioned, reclaimed, used, or secondhand.” My page on repackaging and relabeling a branded product covers changes to the packaging itself.

How Can a Seller Advertise Compatible or Replacement Parts by Brand?

A seller of compatible, replacement, or comparable products may name the brand its product fits or replaces, because buyers cannot find the right part without that name. The listing should use the brand to distinguish the seller’s product from the original, not to associate the two, because association is what creates the sponsorship question.

The federal court in Minnesota applied Calvin Klein to a compatible product in Lasermaster Corp. v. Sentinel Imaging, 931 F. Supp. 628 (D. Minn. 1996). An Eden Prairie printer maker sought a preliminary injunction against a company selling a lower-priced ink system for its printers, and the court denied it. The ad compared the two systems by name, said the seller’s version cost less, and displayed the seller’s own logo. The court found: “Nowhere within the four corners of the ad is there any allusion to an affiliation with plaintiff.” It concluded, “Plaintiff’s product is mentioned solely for distinction not association.”

Other circuits use a test called nominative fair use, which comes from New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Under it, a seller may refer to another’s product by its mark if three things are true:

1. “the product or service in question must be one not readily identifiable without use of the trademark”;
2. “only so much of the mark or marks may be used as is reasonably necessary to identify the product or service”; and
3. “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”

In Tiffany, the Second Circuit wrote, “We need not address the viability of the doctrine to resolve Tiffany’s claim, however,” leaving the question open. Six years later, in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, 823 F.3d 153 (2d Cir. 2016), that court held “that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act.” It directed that, “in addition to considering the Polaroid factors,” its usual likelihood-of-confusion factors, courts consider three nominative fair use factors that track the New Kids list. For a Minnesota seller, the three questions are still a practical checklist, and they line up with what Lasermaster rewarded. My pages on nominative fair use and comparative advertising cover each doctrine in more depth.

What Uses of a Brand Suggest a False Sponsorship?

A brand’s logo, stylized lettering, look-alike page design, and words like “authorized” or “official” are the uses courts treat as suggesting the brand owner sponsors the seller. A plain word reference to identify the product does not carry that suggestion.

The New Kids court gave the example that a soft drink competitor “would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola’s distinctive lettering.” In Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010), independent auto brokers had used the stylized Lexus mark and logo on their site. The Ninth Circuit agreed that “The Tabaris could adequately communicate their message without using the visual trappings of the Lexus brand.” Toyota had also objected to the brokers’ use of its copyrighted vehicle photography, which the brokers removed; copyright in product photos is a separate question from trademark.

A disclaimer is not required for every truthful use of a brand, though it helps. Tabari held that a speaker need not add a disclaimer to truthful, non-misleading speech, and it added: “While not required, such a disclaimer is relevant to the nominative fair use analysis.” Discussing a Sixth Circuit case where a site also used stylized versions of the owner’s marks, the court cautioned: “Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark.”

Minnesota adds a rule aimed at false claims of status. Minn. Stat. § 325D.44 subd. 1 makes it a deceptive trade practice when a seller “represents that goods or services have sponsorship, approval, characteristics, ingredients, uses, benefits, or quantities that they do not have or that a person has a sponsorship, approval, status, affiliation, or connection that the person does not have.” I suggest describing yourself as an independent seller of the brand and reserving “authorized” for a relationship you can document, because that one word is a representation of fact.

How Do Domain Names, Keyword Ads, and Meta Tags Change the Analysis?

A brand name in a domain, a search ad, or a page’s metadata is judged under the same confusion question as a brand name in the listing text, and the Eighth Circuit does not limit that question to the time of purchase. The clearest risks are a domain made only of the brand plus .com, the brand plus a location or an “e-” prefix, and a domain that claims to be official, all of which the Ninth Circuit treated as suggesting that the brand owner sponsors the site.

Tabari drew those lines for domains: “When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder.” The court said the same of “domains like official-trademark-site.com or we-are-trademark.com,” which “affirmatively suggest sponsorship or endorsement by the trademark holder and are not nominative fair use.” It added: “Sites like trademark-USA.com, trademark-ofglendale.com or e-trademark.com will also generally suggest sponsorship or endorsement by the trademark holder; the addition of “e” merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand’s local subsidiary, franchise or affiliate.” Outside those patterns, the court judged the site as a whole and vacated an injunction against the brokers’ domains. On metadata, it reasoned that “Use of a trademark in the site’s domain name isn’t materially different” from use in a site’s text or metatags, because a search engine finds the mark wherever it appears.

The Eighth Circuit, which hears appeals from the federal court in Minnesota, took up online brand use in Select Comfort Corp. v. Baxter, 996 F.3d 925 (8th Cir. 2021). In that case, a competing online seller had used the brand owner’s marks as paid search terms, in ad text, and in web addresses. The court held that “a plaintiff should not be barred from proving presale, initial-interest confusion,” and it said “we do not believe it is appropriate to cabin the analysis to any one point in time.” The exception is buyers who “are sophisticated at the level of the careful professional purchasers who were at issue in Sensient,” an earlier case about industrial buyers.

A domain also brings in a separate federal statute. The cybersquatting provision, 15 U.S.C. § 1125(d)(1)(A), applies to a person who “has a bad faith intent to profit from that mark” and registers, traffics in, or uses a domain identical or confusingly similar to that mark. The mark must have been “distinctive at the time of registration of the domain name.” Under § 1125(d)(1)(D), liability for using a domain reaches only “the domain name registrant or that registrant’s authorized licensee.” The Tabari lines are Ninth Circuit rules, so I suggest treating the brand-only domain, the brand plus a location or an “e-” prefix, and the “official” domain as the clearest risks. Because of Select Comfort, I also suggest judging any other brand-bearing domain or keyword ad by the confusion it could cause before the sale as well as at it. My page on the federal cybersquatting statute covers domain disputes in more depth.

Can You Use Another’s Trademark as a Meta Tag?

Using another’s trademark as a meta tag may be permissible when the tag truthfully describes what the page offers, such as that brand’s genuine products or parts that fit them, and nothing on the page suggests the brand owner sponsors the site. The same confusion question that governs domains and listing text decides it.

Meta tags are lines in a page’s HTML code that search engines read and visitors usually do not see. The common ones are the title, which appears in the browser tab; the description tag; and the keywords tag. Google’s documentation on the meta tags it supports, last updated December 10, 2025, says the description tag provides “a short description of the page” and that “In some situations, this description is used in the snippet shown in search results.” The same page says, “The meta-keyword tag is not used by Google Search, and it has no effect on indexing and ranking at all.”

A Successful Meta Tag Use and a Risky Search-Ad Use

The leading successful example is Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), a case about a former Playmate of the Year’s own website. The Ninth Circuit described it in Tabari: “In Welles, we upheld a claim that use of a mark in a site’s metatags constituted nominative fair use; we reasoned that “[s]earchers would have a much more difficult time locating relevant websites” if the law outlawed such truthful, non-misleading use of a mark.” The Third Circuit, in Century 21, summarized Welles as holding that use of the Playboy terms “in the meta-tags of the website of a former Playmate of the Year were nominative fair uses because they served to identify the defendant and did not imply current sponsorship or endorsement.”

The risky side in Minnesota is Select Comfort, described in the section above. A tag that names a brand to draw searchers to a competitor’s goods invites the same presale, initial-interest confusion claim the Eighth Circuit allowed there.

How Do Search Engines View Trademark Use in Meta Tags?

Google’s list of supported meta tags says nothing about penalizing a page for naming a brand in its metadata. The risk of a brand name in a meta tag comes from trademark law, through a claim by the brand owner, rather than from search rankings.

Best Practices for Using Trademarks in Meta Tags

I suggest these practices, each drawn from the cases above:

1. Match the tag to the page. I suggest using a brand in a page’s title, description, or keywords only on a page that sells, repairs, or discusses that brand’s product or a part made to fit it, because that is the truthful use Welles protected.
2. Never use a brand to pull searchers to other goods. A brand tag on a page selling only a competing or unrelated product is the use Select Comfort left open to a confusion claim.
3. Name the brand, do not repeat it. In International Information Systems, the Second Circuit told courts to consider whether a seller “step[ped] over the line into a likelihood of confusion by using the senior user’s mark too prominently or too often, in terms of size, emphasis, or repetition,” quoting a leading treatise.
4. Keep the page consistent with the tag. A truthful tag does not cure a page with the brand’s logo, look-alike design, or an “authorized” claim you cannot document.

Trademark Alternatives for Meta Tags

Generic product and category terms are the main alternative to a brand name in metadata, and they do not use the brand owner’s mark. Words such as “cordless drill,” “replacement ink cartridge,” or “refurbished laptop,” your own store or product name, and model-compatibility phrases describe the product to a searcher without leaning on the brand. I suggest pairing them with the brand on pages that sell that brand, and using them alone on pages that do not.

What Does Minnesota Law Add to the Federal Rules?

Minnesota’s Deceptive Trade Practices Act reaches the same confusion about source, sponsorship, and affiliation that federal law reaches, and it lets a manufacturer seek an injunction without proving competition or actual confusion. Minnesota’s trademark chapter adds claims for marks registered with the state and for marks famous in Minnesota.

Under Minn. Stat. § 325D.44 subd. 1, a seller engages in a deceptive trade practice when it “causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods or services,” or “causes likelihood of confusion or of misunderstanding as to affiliation, connection, or association with, or certification by, another,” in clauses (2) and (3). Subdivision 2 provides that “a complainant need not prove competition between the parties or actual confusion or misunderstanding.” The remedy is an injunction: under Minn. Stat. § 325D.45 subd. 1, “A person likely to be damaged by a deceptive trade practice of another may be granted an injunction against it under the principles of equity and on terms that the court considers reasonable. Proof of monetary damage, loss of profits, or intent to deceive is not required.” The same subdivision limits relief against a copied product: “Relief granted for the copying of an article shall be limited to the prevention of confusion or misunderstanding as to source,” which bears on sellers of copied or compatible products. Subdivision 2 allows attorney fees in two situations: when “the party charged with a deceptive trade practice has willfully engaged in the trade practice knowing it to be deceptive,” or when “the party complaining of a deceptive trade practice has brought an action knowing it to be groundless.” My page on Minnesota’s Deceptive Trade Practices Act covers the statute in full.

A manufacturer that registered its mark with Minnesota can sue under Minn. Stat. § 333.28. That section reaches a use, without the registrant’s consent, of a mark “which mark is identical to or so similar to the registered mark as to be likely to cause confusion or mistake on the part of a purchaser of the goods or services or to deceive such a purchaser as to the source or origin of the goods or services.” For the section’s second clause, which covers copying the mark onto labels, packages, or advertisements, the registrant may not recover profits or damages “unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.” Under Minn. Stat. § 333.29 subd. 1, a court “may enter judgment for an amount not to exceed three times the profits and damages and reasonable attorneys’ fees of the prevailing party if the court finds the other party committed the wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.”

The dilution statutes leave room for comparison. Under Minn. Stat. § 333.285, “The owner of a mark that is famous in this state may, subject to the principles of equity and upon terms the court considers reasonable: seek an injunction against another person’s commercial use of a mark or trade name, if the use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.” The owner “is entitled only to injunctive relief in this state, unless the person against whom the injunctive relief is sought willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark.” The statute excludes “fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.” The federal dilution statute, 15 U.S.C. § 1125(c)(3)(A), excludes “Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services.” That last clause is the limit: the exclusion does not cover using the brand as the name of your own product or store.

What Can a Manufacturer Recover If a Listing Crosses the Line?

A manufacturer that proves infringement can get an injunction, the seller’s profits, its own damages, and its court costs under federal law, with attorney fees in exceptional cases. For a counterfeit mark or a cybersquatting domain, the owner may elect statutory damages instead of actual damages and profits under 15 U.S.C. § 1117(c) and (d). For a counterfeit mark the range is “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just,” with a higher cap for willful use, and for a domain it is “not less than $1,000 and not more than $100,000 per domain name, as the court considers just.”

Under 15 U.S.C. § 1116(a), “A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.” The court presumes the harm, subject to rebuttal, once a violation or a likely one is shown. Money follows under 15 U.S.C. § 1117(a), which lets the owner, “subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action,” in the statute’s words. The subsection allows fees only in limited cases: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” It also provides that “In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount,” which lets the court raise a damages award above the proven loss. For counterfeits, 15 U.S.C. § 1117(b) provides that “the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney’s fee, if the violation consists of” intentionally using a mark known to be counterfeit, or supplying goods or services with the intent that they be used for that violation. If the court finds the use of a counterfeit mark was willful, the statutory damages cap rises to “not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just” under subsection (c). The first sale rule protects only genuine goods, so supplier records showing where the goods came from are worth keeping for every branded product you list.

The manufacturer carries the burden of proving likelihood of confusion. The Supreme Court held in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) that “Section 1115(b) places a burden of proving likelihood of confusion (that is, infringement) on the party charging infringement even when relying on an incontestable registration,” a holding made in a descriptive fair use case. Applying that holding in Tabari, the Ninth Circuit wrote that once a seller shows it used the mark to refer to the trademarked product, “The burden then reverts to the plaintiff to show a likelihood of confusion.” The Third Circuit divides the burden differently. In Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005), it wrote: “Once plaintiff has met its burden of proving that confusion is likely, the burden then shifts to defendant to show that its nominative use of plaintiffs mark is nonetheless fair.” My page on trademark infringement claims in Minnesota covers how those claims proceed.

How Should a Retailer Respond to a Manufacturer’s Cease-and-Desist Letter?

A retailer should sort each use the letter complains about into genuine resale, a compatibility or comparison reference, or a use that looks like the brand’s own, then fix the third kind and answer the letter on the first two. That sorting turns a broad demand into a list of specific uses with specific answers.

I suggest working through the listings in this order, because each step uses a rule from this page:

1. Genuine goods. The first question is whether each branded product came from a source you can document and has not been altered, relabeled, or stripped of codes. Davidoff and Beltronics turn on exactly those facts.
2. Warranty and service differences. If the manufacturer’s warranty or support does not follow goods bought from you, I suggest saying so plainly in the listing, because Beltronics treated those differences as material.
3. Compatibility wording. Wording such as fits Model X or replacement for Model X, with your own brand on your product, follows what the seller in Lasermaster did.
4. Logos, design, and “authorized.” The brand’s logo, stylized lettering, look-alike design, and any claim of authorization you cannot document are the uses most worth changing, because they are the sponsorship signals courts point to.
5. Domains and metadata. A domain made only of the brand name, the brand plus a location or an “e-” prefix, or one claiming to be official is the kind of domain Tabari treated as suggesting sponsorship. Under Select Comfort, a brand owner can also try to prove “presale, initial-interest confusion” from other brand-bearing domains and keyword ads unless the buyers are careful professional purchasers.

I suggest reading the letter’s closing pages first. One trademark demand letter I analyzed for a small business ended with a signature block for the business to accept the letter’s terms, and signing it as written would have accepted every demand, including stopping use of the name immediately. If the dispute reaches court, Calvin Klein shows what a judge should look at: the court vacated an injunction that rested only on the judge’s own look at the packaging, and said “A realistic evaluation of consumer confusion must attempt to recreate the conditions in which buying decisions are made, and the court should try to determine not what it would do, but what a reasonable purchaser in market conditions would do.” My page on how trademark owners use cease-and-desist letters shows the letter from the sender’s side.

Selling Branded Products Without an Infringement Claim

Selling a manufacturer’s genuine products by name, and naming the brand your part fits, is lawful when the use tells the truth and does not suggest a relationship you lack. The risk sits in the specifics: goods that differ from what the brand sells, logos and look-alike design, “authorized” claims, brand-only or brand-plus-location domains, and brand-bearing domains or ads that confuse buyers before the sale. Minnesota’s Deceptive Trade Practices Act and its trademark chapter reach the same conduct, so one review of your listings can address both. My broader material on trademark law in Minnesota covers registration and enforcement from the brand owner’s side.

If a manufacturer has sent you a demand about your listings and you would like my analysis of which uses are lawful and what to change, email [email protected] with a short description of the situation. I start with an intake and conflict check, and I suggest waiting to send the letter or other documents until that check is complete.