NO -- NOT ALL USERS of the Bluetooth Trademark are required to be Bluetooth SIG members, nor to get their approval in any way. SOME USERS of the Bluetooth Trademark can be exempt, under the legal doctrine of "First Sale".
Traditionally, the "first sale" doctrine meant that you had to get permission to use a trademark as the initial seller/supplier of a product, but not as a reseller of it.
So, for instance, you had to have Coca-Cola's permission to use their tradename IF you were the bottler (manufacturer) initially producing and supplying the trademarked bottles of Coca-Cola.
But if you were a grocer, re-selling those trademarked bottles of Coca-Cola to the public, you did NOT have to get permission to use that name in your advertising. So you could publish a flyer advertising "We have Coca-Cola!", and no permission from the trademark owner was required.
In a landmark case, involving Bluetooth, specifically, the Fiat/Chrysler automaker ("FCA") decided install a Bluetooth-trademarked gadget in their FCA cars, and advertise that they had such a Bluetooth feature -- WITHOUT joining the Bluetooth SIG, or getting their permission.
Bluetooth SIG hauled them into federal district court, and the DISTRICT court agreed with Bluetooth SIG. HOWEVER, FCA appealed to the federal Ninth Circuit Court of Appeals (on the West Coast), who REVERSED the District Court's ruling. The Court of Appeals declared that FCA was in the right, because -- under the appeals court's interpretation of the First Sale doctrine -- if the larger gadget (in this case, a car) simply "incorporates" a properly-trademarked item, then the seller of the larger gadget doesn't have to get permission to advertise they have a Bluetooth item in their product.
In their ruling, the panel of federal appeals court judges said:
"...the first sale doctrine applies when a trademarked product has been incorporated in a new product. ... end product manufacturers may not need further testing if they incorporate a previously qualified product."
They reaffirmed the TRADITIONAL exemption...:
"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."
...BUT THEN ADDED the FURTHER EXEMPTION:
"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."
This may explain why the above-mentioned link to Bluetooth SIG -- https://www.bluetooth.com/en-us/develop-with-bluetooth/qualification-listing -- is now a dead link (Bluetooth SIG has apparently removed its content without explanation).
The U.S. Ninth Circuit Court of Appeals sent the whole matter back to the local federal District Court to get clarification on whether or not FCA had met the requirement that the re-packager "adequately discloses how the trademarked product was incorporated."
But I can't find any record of the District Court ruling on that detail. I suspect Bluetooth settled with FCA out-of-court, and off-the-record, leaving that issue unresolved, legally (except privately between Bluetooth and FCA).
See:
BLUETOOTH SIG INC. v. FCA US LLC, No. 21-35561
D.C. No. 2:18-cv-01493-RAJ, posted online at the Court's website, at:
https://cdn.ca9.uscourts.gov/datastore/opinions/2022/04/06/21-35561.pdf
...AND...
summaries / commentary by various reputable sources:
Reuters:
https://www.reuters.com/legal/transactional/us-appeals-court-revives-fiat-chrysler-defense-bluetooth-trademark-case-2022-04-06/
Justia Law:
https://law.justia.com/cases/federal/appellate-courts/ca9/21-35561/21-35561-2022-04-06.html
WARNING: You probably should confer with an attorney who has the time to research this thoroughly before producing or promoting a Bluetooth-branded product -- BEFORE joining or even contacting the Bluetooth SIG, (in my humble opinion). But it might be helpful to share this info with him. Do NOT expect Bluetooth SIG to help you figure this out. They don't get money if you don't pay.
And if they can, they will demand THOUSANDS of dollars, or even TENS of THOUSANDS of dollars, in punitive fines and "cost recovery expenses" and "attorney's fees" the moment they see you advertising something without their consent. (And they claim they have an active internet-search program hunting for violators. I know of one they "caught.")
They've really "lawyered up" and drafted mind-blowing layers of legal contracts as part of their bewildering, largely automated permission process. They tempt you to join, seemingly as a routine process -- then have you "over a barrel" with all the contracts (which they claim they can rewrite at any time) which you commit to when you sign up for membership in the SIG.
Approach ANYTHING with Bluetooth, and its trademark, with EXTREME caution, if at all. They don't play nice.
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