15.16 Trademark Ownership—Licensee

            Although 15 U.S.C. § 1060 requires that assignments of registrations be written, a license can be oral. 

            The Ninth Circuit Court of Appeals has not addressed whether a licensee of a registered mark can bring a trademark infringement lawsuit under § 32 of the Lanham Act. But the plain text of that section and the majority view strongly suggest that a licensee cannot. See15 U.S.C. § 1114(1) (An infringer “shall be liable in a civil action by the registrant.”); 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:3 (5th ed. 2019) (collecting cases). But see Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 158-59 (1st Cir. 1977) (indicating, in dictum, that licensee would be able to bring trademark infringement claim under § 32 of the Lanham Act if it was an “exclusive licensee”).  

For trademark infringement actions of unregistered marks, a licensee has a right to sue under Section 43(a) of the Lanham Act. See 15 U.S.C. § 1125(a)(1) (allowing for a trademark action “by any person who believes that he or she is likely to be damaged by” trademark infringement).   

For a definition of licensee, see Instruction 15.1 (Preliminary Instruction—Trademark). 

Revised March 2025