2022 Licensing Update: Trademark Licensing

Finnegan attorneys Brett Heavner, Yinfei Wu, and Jessica Hannah authored chapter 2 of the Trademark Licensing Update. The chapter takes a critical look at issues that affect the use and maintenance of trademarks in a licensing context. Section 2.02 provides the reader with guidance on interpreting the terms and scope of a licensing agreement. Examined are cases from the Federal Circuit. Section 2.03 describes how, under the Lanham Act, a licensee's use inures to the benefit of the licensor-owner of the mark if the licensor-owner exercises reasonable control over the nature and quality of the licensee's goods or services. The licensor's ability to derive benefit from the licensee's use of the mark is also dependent, however, on the licensee's use of the mark in commerce. A 2021 Southern District of New York case provides meaningful illustration. Section 2.04 takes on the issue of quality control as a fundamental element in all trademark licensing agreements.