When a licensing agreement ends, the former licensee should stop using your trademark. If the business keeps displaying your name, logo or other protected branding, customers may still believe it remains connected to your company. For a New York City business, that confusion could affect your reputation and control over the brand.
Why does continued use create confusion concerns?
Federal trademark law can prohibit use of a registered mark without permission when it is likely to confuse customers. That risk can be higher after a licensing relationship ends because customers once had a valid reason to connect the business with your brand. A business that keeps using the mark after its rights end is sometimes called a holdover licensee.
Courts may first consider whether the license expired or was properly terminated under the agreement. If the marks differ, courts in the Second Circuit may also use the Polaroid factors to assess customer confusion. These factors include how strong and similar the marks are, evidence that buyers were misled and how carefully customers make purchasing decisions.
What remedies may be available?
A trademark owner may seek an injunction, which is a court order that can stop the continued use. Other remedies may include damages, the former licensee’s profits and, in some cases, destruction of materials that display the mark without permission.
Beyond federal law, New York also protects distinctive trademarks from dilution. Dilution can occur when use of a mark weakens it or harms its reputation. Unlike ordinary trademark infringement, a dilution claim does not require likely customer confusion.
What should you document after the license ends?
Your licensing agreement, termination notices, screenshots, product samples and customer communications can help show when permission ended and how the mark was used afterward.
A lawyer can review those records and the licensing terms to determine which contract or infringement claims may apply. Addressing continued use early can help you regain control over how your brand appears in the market.