Question
In a trademark dispute, does the principle of licensee estoppel apply if there was no license agreement?
For more than 5 years, I was a top-performing affiliate for a small online retailer. The company has now terminated its affiliate program and they've demanded I surrender several web sites and domains I've owned claiming trademark infringement. I've owned these domains since 2003 and 2004... I sent them millions in sales over the years, and they never had a problem with them until now. Dirty rats. I'd like to petition to cancel the mark on the Supplemental Register that seems to be the root of all the controversy. Frankly, I never knew they had a mark until I got the first C & D. The lawyers tell me that although it could be a generic term, I'm barred from petitioning to cancel based on "licensee estoppel." "A trademark licensee is precluded from challenging the validity of the licensed marks, or, for example, the enforceability of the agreement itself as a prohibited “naked” transfer. The estoppel applies not only during the term of the agreement but also after it expires, unless the challenge is based on events occurring after the agreement’s expiration." Here's what gets me: There never was any Trademark License Agreement, and the Affiliate Agreement (which remained unchanged from 2002 until they ended the program) doesn't mention anything at all about their ownership of a mark. Can I still file a petition to cancel?
6 months ago - 2 answers
Best Answer
Chosen by Asker
Okay, so you use the mark on your domains for more than 5 years and millions in sales, then suddenly the retailer claims "trademark infringement" when they cancel their affiliate program? If this is a case of typosquatting like Land's End v. Remy. Take Jerry's advice. If it's not, then your domains are your domains. Instead of threatening you with infringement, it would be a lot smarter for them to settle. A cancellation proceeding could cost them hundreds of thousands in legal fees. First, a mark entered on the Supplemental Register doesn't have the same rights as a Principal Register Trademark, specifically the presumptions of ownership, validity, or exclusivity. For those reasons, WIPO won't pursue a UDRP for a mark entered on the Supplemental Register. "A complainant’s registration of a mark on the Supplemental Register does not confer any rights under the UDRP because the Supplemental Register provides a complainant no protectable rights." First American Real Estate Solutions L.P. v. Manila Industries, Inc. Second, if the Affiliate Agreement is silent on the use of their mark then there is not a binding Trademark License Agreement. With no license agreement, the question of licensee estoppel is moot. File the petition to cancel. If the company claims estoppel, demand they produce the TLA. See Boss Prods., Inc. v. Port-a-Pit Bar-B-Que Finally, if they allowed you to use the mark for 5 or more years without any complaint, then any infringement action would be dismissed for Acquiescence or Laches. If other affiliates or non-affiliated third parties have also been using the mark for that length of time, you may want to consider Abandonment (Naked Licensing, Failure to Police) as another grounds for cancellation.
Source(s)
Lands' End, Inc. v. Eric Remy, et al. www ... First American Real Estate Solutions L.P. v. Manila Industries, Inc. domains ... Boss Prods., Inc. v. Port-a-Pit Bar-B-Que of Edgerton, Inc. www ...
by John Z
6 months ago
Asker's Rating: 
Other Answers
I hate to be the bearer of sad tidings, but assuming they own the trademark and don't want you to use it you can't legally use it. This has nothing to do with any agreements you may have (had) with them. Do check and make sure that they really do have the trademarks they claim. If they do you must stop using any web sites whose domain names include their trademark. Given the circumstances I don't know if you would have to turn the domain names over to them or not. Since you have been operating a successful business I think the smart thing for you to do is contact an attorney that specializes in intellectual property law to determine your options. Good luck Jerry-the-bookkeeper
by jerry-the-bookkeeper- 6 months ago