Intellectual propertyTrademark

Licensing your trademark: A lesson from the Kardashian sisters

The Kardashian sisters recently won a large trademark infringement case that they filed against Haven Beauty and its principal investor, Hillair Capital Management. Haven Beauty was licensing the trademarked Kardashian name to sell the Kardashian Beauty line of cosmetics.

The Kardashians accused Haven Beauty of failing to pay required royalties and launching new products without seeking the Kardashians’ approval. Last month, U.S. District Central Court of California judge James Selna ruled in favor of the Kardashians, stating that “the licensee cannot both stop paying royalties but nevertheless continue using the trademark.”

This lawsuit illustrates the importance of a clearly written and legally enforceable trademark license—in this case, the agreement between Haven Beauty and the Kardashians included required royalty payments and the Kardashians’ pre-approval of new products, both of which Haven Beauty failed to provide.

Trademark licenses typically contain contractual language regarding:

  • The trademark, licensor, and licensee
  • Where the licensor can use the trademark (certain U.S. states, for example)
  • The goods and/or services that the licensor can sell under the trademark (and the quality of said goods and/or services)
  • How long the license will be in place, and whether or not it can be renewed
  • Whether or not the license is exclusive

Trademark licenses also often address:

  • Royalties, including how much is paid and when payments are due
  • The reasons why the license can be terminated
  • Whether or not the license can be enforced using legal action

Trademark licenses can be fairly complicated documents, and it’s essential to hire a knowledgeable attorney to make sure the license is enforceable and provides for every possible scenario.