In a trademark dispute, does the principle of licensee estoppel apply if there was no license agreement, written or verbal, between the parties?
For more than 5 years, I was a top-performing affiliate for a small online retailer. The company has now terminated its affiliate program and they've demanded I surrender several web sites and domains I've owned claiming trademark infringement.
I've owned these domains since 2003 and 2004... I sent them millions in sales over the years, and they never had a problem with them until now. Dirty rats.
I'd like to petition to cancel the mark on the Supplemental Register that seems to be the root of all the controversy. Frankly, I never knew they had a mark until I got the first C & D. The lawyers tell me that although it could be a generic term, I'm barred from petitioning to cancel based on "licensee estoppel."
"A trademark licensee is precluded from challenging the validity of the licensed marks, or, for example, the enforceability of the agreement itself as a prohibited 'naked' transfer. The estoppel applies not only during the term of the agreement but also after it expires, unless the challenge is based on events occurring after the agreement’s expiration."
Here's what gets me: There never was any Trademark License Agreement, and the Affiliate Agreement (which remained unchanged from 2002 until they ended the program last year) doesn't mention anything at all about their ownership of a mark. Nothing. Nada.
Can I still file a petition to cancel? Isn't the lack of any License Agreement, and their failure to police their mark for more than 5 years, for that matter, a clear case of Abandonment through Naked Licensing?