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U.S. Supreme Court Adopts Rule Protecting a Trademark Licensee’s Ability to Use a Trademark after a Bankrupt Licensor’s Rejection of the License

This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy.  The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing.  The outcome of this case will have different impacts on trademark licensors and licensees, which are explained in detail below.

Under Section 365(a) of the Bankruptcy Code, a debtor has the right to assume or reject an executory contract.  In the event a debtor rejects a contract, the effect of such rejection is governed by Section 365(g), which provides that a debtor’s rejection constitutes a breach of that agreement.  Generally, the effect of a breach of contract vis-a-vis rejection under Section 365 is governed by non-bankruptcy law.  However, a debtor’s rejection of certain intellectual property is specifically governed by Section 365(n).  The Bankruptcy Code defines “intellectual property” to include, inter alia, trade secrets and patent applications; however, trademarks are not included within the definition.  In reaching its decision, the Supreme Court held that a debtor’s rejection of a trademark agreement is governed by Section 365(g) and rejected the debtor-licensor’s argument that the effect of such rejection is influenced by the provision governing the rejection of agreements related to intellectual property, as that term is defined by the Bankruptcy Code.

Prior to the decision, in some circuits, a trademark licensor’s rejection of a license agreement would terminate the licensee’s rights to use the trademark.  This was particularly damaging to licensees whose business was largely built around their procured trademark license.  Under this decision, however, the Supreme Court has stated that a debtor-licensor’s rejection of a trademark license agreement is a breach, not a rescission, of that agreement.  As a result, in the event of such a rejection, it is possible that a licensee may retain certain rights under a license agreement provided that such rights are available to the licensee under applicable non-bankruptcy law governing the debtor-licensor’s breach of the agreement.  As discussed in the decision, it may now be possible for a licensee to continue to use a trademark or license even after the debtor-licensor’s rejection of the relevant agreement so long as the licensee is entitled to such rights under applicable non-bankruptcy law.  In addition to such potential rights under non-bankruptcy law, the Bankruptcy Code also provides licensees with the right to assert a claim for damages under Section 365(g) resulting from the debtor-licensor’s rejection, i.e. breach, of an agreement.

Although this ruling may seem like a disadvantageous outcome for licensors, Justice Sotomayor stated in her concurring opinion:

[T]he Court does not decide that every trademark licensee has the unfettered right to continue using licensed marks post rejection. The Court granted certiorari to decide whether rejection “terminates rights of the licensee that would survive the licensor’s breach under applicable non-bankruptcy law.’ …The answer is no, for the reasons the Court explains. But the baseline inquiry remains whether the licensee’s rights would survive a breach under applicable non-bankruptcy law. Special terms in a licensing contract or state law could bear on that question in individual cases.

Slip Op., 1 (Emphasis added).

As such, Justice Sotomayor’s concurrence seems to indicate that licensors could draft trademark licensing agreements to include, for example, provisions that rescind or revoke licensee rights in the event a breach of the agreement.  Licensees will have to be mindful of such provisions during license negotiations.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 189



About this Author

Susan Weller, Mintz Levin Law Firm, Washington DC, Intellectual Property Law Attorney

Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical...

Alexander Roan Technology Attorney Mintz Levin Law

Alex assists life science and technology companies of all sizes with a wide variety of domestic and foreign intellectual property matters. Alex’s practice includes the preparation and prosecution of patent applications as well as strategic patent counseling in the form of invalidity and infringement analyses, product clearance studies, and due diligence investigations. He also has experience with trademark registration, post-grant proceedings, and patent litigation, including before the US International Trade Commission. Alex’s...

Timothy J. McKeon Bankruptcy & Restructuring Attorney Mintz Law Firm

Tim focuses his practice primarily on bankruptcy and restructuring matters. In the past, Tim has represented chapter 11 debtors, secured and unsecured creditors, indenture trustees, and defendants in bankruptcy litigation matters. 

Prior to joining Mintz, Tim was an associate in the Boston office of a full-service law firm, where he worked on a variety of bankruptcy and litigation matters. Earlier Tim was an associate in the Portland, Maine office of a regional, full-service law firm, where he gained substantial experience representing Chapter...