Trademark Estoppel

Does trademark estoppel apply to licensees?

In general, yes, but there are exceptions to trademark estoppel.

Courts and the Trademark Trial and Appeal Board (“TTAB”) have held that licensee estoppel does apply to trademark licenses. For example, in A & M Wings, Inc., v. Glenn Thompson, Cancellation No. 92064044 (T.T.A.B. 2019), the TTAB applied licensee estoppel to dismiss a licensee’s claim that its licensor had abandoned its trademark.

Why do businesses become trademark licensees?

  • You apply for a trademark and you discover that someone already owns the trademark that you want to use.
  • You apply for a trademark that the USPTO approved, but someone with a similar trademark opposes your trademark application, so you settle and get a license instead of spending money litigating whether the trademarks are confusingly similar.
  • You want to buy into a franchise.

When have licencees been able to challenge the validity of a trademark?

A former licencee may assert facts that happen after the term of their trademark license expires. Courts have treated a former licensee like any unrelated party may. See Westco Group, Inc. v. K.B. Assocs., 128 F. Supp. 2d 1082 (N.D. Ohio 2001).

When can licencees of certification marks challenge the trademark registrations?

Anyone with an interest may challenge a certification trademark at anytime.

For example, the Second Circuit refused to apply licensee estoppel to certification marks in Idaho Potato Comm’r v. M&M Produce Farm & Sales, 335 F.3d 130 (2d Cir. 2003). The Court reasoned that certification marks were a form of compulsory license required to be granted to anyone meeting the relevant standards, so the public interest in challenging certification marks was akin to the public interest in challenging patents.