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BLUETOOTH SIG INC. V. FCA US LLC

Vacating the district court’s partial summary judgment in favor of the plaintiff and remanding in an action under the Lanham Act, the panel held that the first sale doctrine applies when a trademarked product has been incorporated in a new product.

Bluetooth SIG Inc. (“the SIG”), a nonprofit that administers standards for short-range wireless technology, owns “Bluetooth” marks. To use any of these marks, a product manufacturer must join the SIG, execute a licensing agreement, submit declarations of compliance, and pay fees. Manufacturers of technological components are subject to testing requirements, but end product manufacturers may not need further testing if they incorporate a previously qualified product. The SIG brought trademark claims against FCA US LLC, which makes cars that contain Bluetooth-equipped head units that are manufactured by third-party suppliers and have been qualified by the SIG. FCA uses the SIG’s marks on its head units and in product publications.

Under the first sale doctrine, the right of a producer to control the distribution of its trademarked product does not extend beyond the first sale of the product, and trademark rights are “exhausted” as to a given item upon the first authorized sale of that item. Thus, 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. The panel held that the first sale doctrine also applies when a mark is used to refer to a component incorporated into a new end product, so long as the seller adequately discloses how the trademarked product was incorporated. The panel remanded for the district court to address the fact-intensive issue whether FCA adequately disclosed its relationship with, and qualification to use, Bluetooth technology.

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