In catching up on my reading over the holidays, I ran across three separate opinions where the licensee estoppel defense was raised (score: trademark owner 2, licensee 1). I don’t recall the last time I read another opinion on licensee estoppel. Is it a sign of these economic times? Are licensors looking for more income? Are licensees not paying?
HSW Enter., Inc. v. Woo Lae Oak, Inc., No. 08 Civ. 8476(LBS), 2009 WL 4823920 (S.D.N.Y., Dec. 15, 2009) (licensee ceased paying royalties: “having weighed the relevant public interests, the Court concludes that WLO is estopped from challenging HSW’s ownership of the mark pursuant to the doctrine of licensee estoppel.”)
Kebab Gyros, Inc. v. Riyad, No. 3:09-0061, 2009 WL 5170194 (M.D. Tenn. Dec. 17, 2009) (licensee opened additional restaurants: “licensee estoppel does not stop Defendant’s [ ] claim that Plaintiff [ ] abandoned the trademark and trade name through naked licensing to a third party. . . . In light of all of this, the court finds that the licensee estoppel doctrine should not bar the defendant from offering evidence as to the protectibility of the mark at issue.”)
Eureka Water Co. v. Nestle Waters N.A., Inc., No. CIV-07-988-M, 2009 WL 5083577 (W.D. Okla. Dec. 21, 2009)(licensor terminated license: “Having carefully reviewed the parties’ submissions, the Court finds that all of the conduct on which plaintiff bases its abandonment/naked license argument occurred during the life of the license. Accordingly, the Court finds that licensee estoppel bars plaintiff from asserting its abandonment defense.”)
List of trademark suits filed by Dunkin’ Donuts/Baskin Robbins here.
List of trademark suits filed by Subway here.
This work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.
