Rights of licensees to corporate name

Our small firm became a licensee of a corporation [headquartered in another state] over 20 years ago. Although the licensing agreement expired many years ago, our firm has continued, with the corporation's knowledge and assent, to operate and to market our services under the corporate name, using corporate logos, using marketing materials obtained from the corporation, etc. A few years ago, the corporation was sold. Now we have been informally notified by the new owner (and will soon receive formal notification) that the corporation is terminating the relationship with "licensees" including our firm. What rights/recourse does our firm have? Can we continue operating/marketing our services under the name we have used for the past 20+ years?

Interesting question. When A buys business B & all its assets, A steps into B's shoes and has all legal rights B had. A TM is an asset. Thus, the question is whether B could order you to cease & desist if it hadn't sold. Your obvious defense is the doctrine of laches or the statute of limitations: B can't sleep on its rights for a long time, then sue. Ask an intellectual property lawyer about the statute of limitations for bringing a TM infringement suit. If B was outside the limitations period, A can't sue you either. A bought a TM that it can't enforce agaisnt you.

A will argue that you had an informal license that B could have revoked at any time. Therefore, you weren't violating B's TM all those years & the statute of limitations hasn't begun to run.


How much would it cost you to convert to a new name? Could you convert & still keep your customer base, or would the customers think they should deal with A now? How much will an opinion letter from a TM attorney cost you?

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This is not legal advice and you are not my client. Double check everything with your own attorney and your state's laws.

[This message has been edited by Tracey (edited June 11, 2000).]