On Friday, the United States Supreme Court (SCOTUS) granted a petition for certiorari in the case called Mission Product v. Tempnology, in order to hear a case involving trademark law and bankruptcy law. The issue that is to be heard relates to what happens to a trademark license when the owner of the brand files for bankruptcy.
Currently, the different Circuit Courts of Appeal are not all in agreement as to what should happen. In certain particular Circuit Courts of Appeal, the licensor that files bankruptcy can use a particular bankruptcy code provision, identified as Section 363 under the Bankruptcy Code, in order to cancel the right of a licensee to use the bankrupt company’s trademark. However, in certain other Circuit Court’s of Appeal, the courts have been allowing the trademark licensee the right to continue using the bankrupt’s trademark.
The issue is as much a question of trademark law as it is bankruptcy law. Under the Bankruptcy Code, the law allows a bankrupt the right to accept or reject a contract, wherein both sides still have obligations. This is known as an executory contract. However, Section 363 contains an exemption for certain forms of intellectual property, but it currently does not include trademarks.
The two most well-recognized opinions where the courts’ position diverge is the Seventh Circuit and the First Circuit, which is where the Mission Product case is pending. In essence, the Mission Product appellate court has held that courts should not impose upon a bankrupt the obligation to continue to monitor how its trademark was being used, which goes to the essence and policy of bankruptcy law.
Never a dull moment in intellectual property and bankruptcy law.
ERIC N. ASSOULINE, ESQ.
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