Trademark law question

[Pokerface]

I don't know very much about trademark law and what it entails but I have a question:

I work in advertising and we are looking to use toys like Barbie, G I Joe, Mr. Potatohead etc. in some of our ads.
Now do I need permission to use them? Or as long as I'm not naming them as their brand names (ie. not calling him "Mr. Potatohead") is it ok?

Thanks

[Sliver]

I'm looking forward to Troutman's copy and paste on the subject.

[troutman]

Originally Posted by Sliver

I'm looking forward to Troutman's copy and paste on the subject.

Not a chance. No free advice. OP should consult with an intellectual property lawyer.

[KTrain]

You might want to hit the dollar store and buy some of the knock offs of these toys for the purposes of your ads. They'll get the same point across but will help you avoid the wraith of Mattel or Hasbro.

[Brotato]

wow... No offence OP, but if you work in advertising and don't know the answer to the above, or have legal contacts to answer it, I would be very scared to hire you.

Speak to an IP lawyer asap.

[valo403]

As others have said you need to speak to an IP lawyer, there could be numerous variables at play here.

Free legal advice, especially in a medium like this, is worth as much as you paid for it.

[burn_this_city]

Judging by the responses, I'd say you're good to go.

[squiggs96]

You are fine to use these as long as you put a legal disclaimer in that states you are not selling those toys.

I'm not an IP lawyer, but I did stay in a Holiday Inn Express last night.

[REDVAN]

An ex gf of mine worked in marketing for a company in Calgary- they had licenses to use different branded images- things like comic characters etc.

I'm sure Barbie would be the same type of thing.

Not sure where to start- but maybe you should check out who makes Barbie, etc, and call their 1-800 number and go from there.

I am not a lawyer, it's just how I'd go about solving this issue.

P.S. When I can ask for CP to do my job for me?

[Regular_John]

Originally Posted by Brotato

wow... No offence OP, but if you work in advertising and don't know the answer to the above, or have legal contacts to answer it, I would be very scared to hire you.

Speak to an IP lawyer asap.

Never dealt with a client have we? They come up with the most asinine ideas at times, "What if our website opened with that great THX sound like from Star Wars!?" (*actual client request I encountered once)

If Pokerface were a dishonest person he'd just say "sure!" and do it, but he's taking the time to research and ask questions about fair use & using other people's trademarks in ads before jumping in. Part of that process is asking questions. Assuming he doesn't find his answer here he'll keep searching.

The fact that he's never encountered this issue before is no indication of his integrity or abilities, but rather his inexperience with this specific set of criteria.

Should he speak to an IP lawyer? Yes, but attempting to find the answer on his own first is not a red flag either.

[Brotato]

Originally Posted by jaydorn

Never dealt with a client have we? They come up with the most asinine ideas at times, "What if our website opened with that great THX sound like from Star Wars!?" (*actual client request I encountered once)

If Pokerface were a dishonest person he'd just say "sure!" and do it, but he's taking the time to research and ask questions about fair use & using other people's trademarks in ads before jumping in. Part of that process is asking questions. Assuming he doesn't find his answer here he'll keep searching.

The fact that he's never encountered this issue before is no indication of his integrity or abilities, but rather his inexperience with this specific set of criteria.

Should he speak to an IP lawyer? Yes, but attempting to find the answer on his own first is not a red flag either.

Fair enough - I don't work in advertising so I assumed this was a common comeuppance in advertising. Obviously I was mistaken and apologize if I was too curt.

[Pokerface]

Thank you for everyone's help... I'm hoping to convince my boss to talk to a lawyer at this point.

For the record I (a creative) was told to research this without getting Lawyers (lawyer's fees) involved at this time. I've dealt with songs and imagery before but not toys, This particular area is pretty grey so I'm just trying to cover all the bases here.

I'm not trying to get CP to do my job I'm asking for help in finding the answers because nobody I work with can answer them, again thank you.

[photon]

Aww, I was going to suggest the "it's easier to ask forgiveness than it is to get permission" legal rule.

[jydk]

Originally Posted by squiggs96

You are fine to use these as long as you put a legal disclaimer in that states you are not selling those toys.

I'm not an IP lawyer, but I did stay in a Holiday Inn Express last night.

This made me laugh pretty hard!

[Regular_John]

Originally Posted by Brotato

Fair enough - I don't work in advertising so I assumed this was a common comeuppance in advertising. Obviously I was mistaken and apologize if I was too curt.

No worries, I just wanted to provide some perspective. Not every agency has IP lawyers at their disposal simply because of the overhead cost.

Big agencies serving public traded fortune 500 companies obviously do. But the smaller ones that are serving local companies just arean't operating at the level where licensing IP becomes a regular practice. Most client's don't wish to spend the money to license IP anyways as it well exceeds their advertising budget.

[Pokerface]

Originally Posted by jaydorn

No worries, I just wanted to provide some perspective. Not every agency has IP lawyers at their disposal simply because of the overhead cost.

Big agencies serving public traded fortune 500 companies obviously do. But the smaller ones that are serving local companies just arean't operating at the level where licensing IP becomes a regular practice. Most client's don't wish to spend the money to license IP anyways as it well exceeds their advertising budget.

That's exactly who we are... We get the "Hi!, I have a $2 budget, can you give my company a campaign like apple?"...sigh...

[REDVAN]

Originally Posted by Pokerface

I'm not trying to get CP to do my job I'm asking for help in finding the answers because nobody I work with can answer them, again thank you.

Just giving you a bit of a hard time, hopefully you weren't offended...

I still think you should contact the company and find out who licenses out their material- a la nat geo, or getty images or whatever, I'm sure you can find a place that has the rights to brand name toys and their images.

[afc wimbledon]

The trouble with trademark law is it the proverbial tar baby area, if you call a lawyer he will tell you you need to get permission, when you try and do that Mattel or the like will either say eff' off or request ad copy for a decision, they won't want barbie advertising a sex shop or the like.

On the other hand if you just go ahead and do it and it stays local likely nothing will happen, of course if it is hugely succesful you get your arse sued off.

Me Id pay some local designer to come up with vaguely familer looking images.

[Titan]

All I know is that Mattel sued the lady in town that made leather and plastic "pleasure clothes" because she named the store after herself. Barbies Shop. I believe she won as she is still using the name but I would not risk the wrath of the big companies.

If you really care:
http://www.iplawalert.com/uploads/file/Link%203.pdf

[Barnes]

Mattel wouldn't even license Barbie for Toy Story 1. I wouldn't even waste anytime looking into it.