15.16 Trademark Ownership—Licensee

            The owner of a trademark may enter into an agreement that permits another person to use the trademark. This type of agreement is called a license, and the person permitted to use the trademark is called a licensee. 

            A license agreement may include the right to exclude others from using the trademark. A licensee may enforce this right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)]. 

            [The plaintiff is a licensee.]

Comment

            Although 15 U.S.C. § 1060 requires that assignments be written, a license can be oral. 

            In licensing trademark rights, the owner may include in the license the right to sue for trademark infringement. The licensee’s right to sue originates from the license and is governed by the terms of the licensing agreement. See DEP Corp. v. Interstate Cigar Co., 622 F.2d 621, 622-23 (2d Cir. 1980) (holding that because the plaintiff was not owner of the trademark, it lacked standing to sue under the Lanham Act; any interests the plaintiff had in the trademark were governed by terms of the licensing agreement); Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 157 (1st Cir. 1977) (holding that the license granted the licensee “the right to enforce the licensed trademark rights against infringers in the United States”). 

Revised March 2024