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It's a Licensee Eats Licensee World. Or Is It?

By Scott J. Slavick
October 02, 2013

These days, it is commonplace for companies to license multiple parties in various distinct geographical areas to use the same trademark. The ACME coffee cake you eat in Mississippi may be made by a different licensee than the ACME coffee cake you eat in Oregon. Because different licensees may be competitors of one another in different product lines, the question often arises as to whether one licensee may challenge another's right to use a licensed mark and, if so, where. With the predominance of Internet marketing now continuously eroding what might be considered the traditional geographic “territories” of different licensees, the potential for conflict only becomes more acute.

It's not clear where the legal line is, either. When might one licensee have a right to sue another licensee? And how might the sued licensee best protect itself in the event of a dispute over the licensed mark?

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