Trademark Licensing

Trademark licensing is the process by which a trademark owner (i.e., the licensor) allows another (i.e., the licensee) to make, sell, and distribute goods or services under the licensor's trademark. It is one of the most effective ways to maximize the value of and expand geographically the goodwill associated with licensor's trademark. In 2019, the United States Supreme Court issued a much-anticipated opinion in a trademark licensing and bankruptcy case. The Fifth, Tenth, and Eleventh Circuit Courts addressed various important issues relating to trademark licensing agreements. The Southern District of New York and the Central District of California had trademark licensing decisions to make that attracted much attention. In this chapter, Finnegan attorneys Brett Heavner, Yinfei Wu, and Jessica Hannah review these prominent 2019 trademark licensing cases addressing naked licensing and quality control, terms and termination, standing and jurisdiction, licensee estoppel, and the effect of bankruptcy on licensing.