trademark licensee standing

Kardashian Case Limits Standing to Assert Trademark Infringement

The Kardashian sisters are well-known (some say notorious) media personalities and businesswomen. 

Their extensive business activities often result in legal disputes.  And where there are disputes, often interesting and important legal decisions are produced. 

A recent Eleventh Circuit decision, Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc. (2019) involved a suit in which the Kardashians were accused of trademark infringement.  They and their company successfully moved to dismiss the case because the plaintiff – a licensee of the asserted trademark – lacked standing to bring a trademark infringement claim. 

Key to the Eleventh Circuit’s holding was that the license provided that the owner retained all rights, including the right to enforce the mark against infringers.  The licensee’s only remedy was to complain to the trademark owner and be compensated for any infringement damages. 

This arrangement meant that only the trademark owner had standing to sue for trademark infringement.

The lesson for trademark owners and licensees is that, in drafting license agreements. they should carefully consider who will have both the right and responsibility to enforce the mark, and what happens if one party fails to enforce. 

For those accused of infringement, the lesson is to carefully consider whether the plaintiff even has a basis to sue.