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11th Circuit Finding: Non-Exclusive Licensee Can Bring Lanham Claim Even Though Licensing Agreement was Silent on Enforcement

by | Aug 29, 2023 | Blog, Senior Associate, Uncategorized | 0 comments

The 11th Circuit recently addressed the issue of whether a trademark licensee [D.H. Pace Company, Inc. (“Pace”)] could file suit against a third party [Overhead Garage Door (“OGD”)] for unfair competition under the Lanham Act, when the underlying licensing agreement did not expressly authorize the plaintiff to do so.  Although the licensing agreement did identify the terms and conditions for Pace’s use of the licensor’s trademarks and trade names, the agreement was silent on trademark enforcement matters or the rights to sue for infringement.

The district court concluded that the licensing agreement was a “contractual bar” to Pace filing suit, as no affirmative rights to sue were granted to the licensee (Pace).  Furthermore, the district court held that any rights that Pace did have were derived from the licensing agreement, and because maintaining affirmative claims was not one of them, OGD’s summary judgment motion was granted as a matter of law.

On appeal, the Eleventh Circuit reversed, and found that because the licensing agreement did not pose a contractual bar (and was otherwise silent) on Pace’s ability to sue, Pace was free to bring a Lanham Act claim.  Additionally, the Eleventh Circuit noted that Pace’s status as a non-exclusive licensee was of no moment, and cited with approval to numerous cases standing for the principle that nonexclusive licensees are free to bring suit under § 43(a).

The case is D.H. Pace Co. v. OGD Equip. Co., LLC, No. 22-10985, 2023 U.S. App. LEXIS 22102 (11th Cir. Aug. 22, 2023).