The Public Policy Argument Against Trademark Licensee Estoppel and Naked Licensing

Federal courts have sometimes applied the doctrine of licensee estoppel to prohibit a trademark licensee from challenging its licensor’s rights to the licensed mark, particularly where the licensor has failed to establish and monitor quality control and the licensee contends that abandonment has occurred. This Article examines the history of licensee estoppel and those cases on which courts have and have not enforced licensee estoppel; often on the grounds that enforcing licensee estoppel would not serve the public policy of protecting consumers from deceitful practices. This Article also compares trademark licensee estoppel to patent licensee estoppel and recognize that courts have been far less willing to apply licensee estoppel in patent licensing cases although similar principles are involved. This Article concludes that the doctrine of trademark licensee estoppel should generally be abolished.