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ARTICLE · 13 DECEMBER 2005

No-Challenge Provisions Unenforceable in Certification Marks Licenses

McDermott Will & Emery
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Addressing the enforceability of a "no-challenge" provision, the U.S. Court of Appeals for the Ninth Circuit has held that a former licensee was not precluded from challenging the validity of a certification mark notwithstanding a provision in the license barring such suits.

United StatesIntellectual Property
Farah Bhatti
Farah Bhatti
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Addressing the enforceability of a "no-challenge" provision, the U.S. Court of Appeals for the Ninth Circuit has held that a former licensee was not precluded from challenging the validity of a certification mark notwithstanding a provision in the license barring such suits. State of Idaho Potato Commission v. G&T Terminal Packaging, Inc., Case No. 04-35229 (9th Cir. Oct. 7, 2005) (Tashima, J.).

The Idaho Potato Commission (IPC), a state agency, owns several certification marks including the words "Idaho" and "Grown in Idaho." G&T, a potato distributor, licensed the certification marks from IPC, agreeing never to challenge the validity of the marks. When G&T later allegedly violated the terms of the license, IPC sued in the District of Idaho alleging breach of the license and infringement. G&T filed suit in the Southern District of New York to have IPC’s marks declared unenforceable and to have them cancelled. IPC then added a breach of contract claim to the Idaho case based on the

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