In The News

Ropes & Gray Partner Argues Case Before the U.S. Supreme Court with Implications for Trademarks and Restructurings

Practices: Appellate & Supreme Court

On Feb. 20, litigation & enforcement partner Douglas Hallward-Driemeier, head of the firm’s appellate & Supreme Court practice, argued a case before the U.S. Supreme Court with significant implications for licensees under trademark license agreements that are rejected by a debtor-licensor in bankruptcy. The case, Mission Product Holdings, Inc. v. Tempnology, LLC, may resolve whether a trademark licensee loses rights to use a licensed trademark when the the license agreement is rejected. Ropes & Gray represents Tempnology, LLC, now known as Old Cold LLC. 

Tempnology, the debtor-licensor, entered into a co-marketing agreement granting a non-exclusive license to use Tempnology’s trademarks and imposing related obligations on our client to maintain quality control of its trademarks. After filing for bankruptcy, Tempnology rejected the agreement pursuant to section 365 of the Bankruptcy Code, thereby affording the licensee a claim in the bankruptcy for breach of contract. The licensee asserted that it had a right to continue using the trademark.  

Before the Supreme Court, the case presents the question whether, notwithstanding the trustee’s rejection of a trademark license agreement, the licensee retains a right to use licensed trademarks. Although the case involves the rejection of a non-exclusive trademark license agreement, the Court’s decision could bear on the rights of non-debtors following rejection of other executory contracts that are not subject to one of the limited statutory exceptions Congress has established. 

Instead of reaching the merits, however, the Court may agree with Ropes & Gray’s position that the case is moot because there is no live controversy, no damages claim, and no basis for any damages claim for petitioner’s post-rejection deprivation of its non-exclusive trademark license. 

In addition to Mr. Hallward-Driemeier, the Ropes & Gray team included business restructuring partners James Wilton and Gregg Galardi and counsel Patricia Chen; litigation & enforcement associates Jonathan Ference-Burke, Rachel Jennings, and Caroline Boisvert; and business restructuring associates Randy Weber-Levine and Roy Dixon. As co-counsel on this case, the Nixon Peabody, LLC, team included Lee Harrington, George Skelly, Daniel Sklar, and Christopher Desiderio.

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