[E-trademarks] Can an exclusive TM licensee without a written agreement sue for infringement?

[Jessica R. Friedman]

My client is the exclusive licensee of the right to market ABC products in the U.S., but it has no written license agreement.
My client and its licensor want my client to challenge a third-party PTO application to register a mark whose use would infringe the ABC mark.

I am aware of the 11th Circuit’s decision Overhead Door Company of Kansas City v. OGD Equipment Company, LLC, Case No. 22-10985 (Fed. Cir. Aug. 22, 2023), that even if a written trademark license doesn’t grant the right to sue for infringement of the trademark, the licensee still may be able to do so if the license doesn’t actually prohibit the licensee from doing so.

Should I just prepare a trademark license agreement that permits my client to sue for infringement and take all other actions to protect the ABC mark? Are there other cases I should be looking at?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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