AND · 15usc1125:actionable-interest
Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.
Exact element source
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.Source:
docroot/ir/usc/title15.jsonl#title15_sec1125; Unicode character offsets [870:988] (end exclusive); SHA-256 0a5680239d11ae3247a99abab2344db45177346d2d2e3050e95c82fb39f3aca7.Routes and case patterns
| Route | Definition | Merits instance blocks | Distinct merits cases | Examples (up to 3 cases per count group) |
|---|---|---|---|---|
| co-owner-dispute provisional; provisional (1 case) | Whether one co-owner of a mark can sue another co-owner under the Act. | 1 Satisfied 0; not satisfied 1; excluded context 0 | 1 | Reed v. Marshall — 142 F.4th 338 (2025) · United States Court of Appeals for the Fifth Circuit · 2025 — not · law (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) · applied/merits · counted |
| licensee-or-assignee provisional; provisional (1 case) | Whether a plaintiff who holds less than full ownership of the mark (licensee, assignee) has the interest needed to sue. | 1 Satisfied 0; not satisfied 1; excluded context 0 | 1 | Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 — not · law (15usc1125: author: Astra2 · not independently reviewed) · applied/merits · counted |
How courts decided this element
| Case | Element | Holding and scope | Pattern | Exact source quotations |
|---|---|---|---|---|
| Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 — not · law (15usc1125: author: Astra2 · not independently reviewed) | Entitlement to sue and protected commercial interest | not Counted merits instance applied / merits basis: law; party: Kroma EU against Kardashian defendants; subject: party=Kroma EU against Kardashian defendants Pure contract construction resolves statutory entitlement on summary judgment. Economic injury and exclusive distribution do not override this reservation; no universal registered-owner restriction or jurisdictional standing failure is inferred. | licensing/enforcement-reserved-to-licensor | In October 2012, Tillett granted an exclusive license to Kroma EU to import, sell, and distribute KROMA products in Europe, and to use the KROMA mark in furtherance of its business.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [623:804] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.Tillett retains the KROMA trademark as its "exclusive and inalienable property" and "reserves the right to assign/transfer it to any individual person or legal entity."Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [12083:12251] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.But importantly, Section 4.3.2 only vested Kroma EU with the obligation to "inform [Tillett] of any illegal use of the trademark," prompting Tillett to file suit against the infringer-at which point Tillett would be required to compensate Kroma for its losses resulting from the infringement.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [13782:14074] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.We adopt the position taken by the district courts in this circuit-that a licensee's right to sue to protect the mark "largely depends on the rights granted to the licensee in the licensing agreement."Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [7190:7391] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [16861:16979] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35. |
| Reed v. Marshall — 142 F.4th 338 (2025) · United States Court of Appeals for the Fifth Circuit · 2025 — not · law (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Entitlement to sue and protected commercial interest | not Counted merits instance applied / merits basis: law; claim: (a)(1)(A), (a)(1)(B); party: Joi Marshall and Tonya Harris (co-owners of the JADE mark) and Myracle Holloway (their licensee); count: false designation of origin / false association, § 1125(a)(1)(A); subject: party=Joi Marshall and Tonya Harris (co-owners of the JADE mark) and Myracle Holloway (their licensee); count=false designation of origin / false association, § 1125(a)(1)(A) A co-owner's use and licensing of the jointly owned mark is authorised, so a fellow co-owner has no § 1125(a)(1)(A) claim premised on "unauthorized use". The court expressly does not decide whether a false-designation claim requires proof of commercial injury (n.5). | band member suing fellow co-registrants who perform under the jointly owned mark with a substitute singer, no agreement dividing rights | The mark’s registrants were listed as Reed, Marshall, and Harris, all in their individual capacities, and its first use in commerce was identified as July 1, 1992.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [3350:3513] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Discussions of the reunion tour were aborted, and in June 2021, Marshall and Harris entered into a six-month work-for-hire contract with a different singer, Myracle Holloway.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [3514:3688] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Here, the parties failed to enter into a contractual agreement that defined their respective obligations; and some of the mark’s co-owners have had a falling out with another set of co-owners.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [13854:14046] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Despite cease-and-desist letters issued by Reed’s attorney, Marshall, Harris, and Holloway performed as Jade at multiple “90’s Kickback Concert[s]” held in Milwaukee, Miami, and Houston, in November and December 2021.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [3689:3906] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Marshall and Harris, as persons with complete ownership interests in the mark, have an unencumbered right to use the mark as they please.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [20320:20457] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Harris and Marshall have not engaged in “unlawful conduct”: their ownership rights afford the authority to (1) perform under the mark and (2) license Holloway as a guest to perform with them.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [34973:35164] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f.Those facts doom Reed’s theory of liability as to her false designation of origin claim.Source: docroot/ir/caselaw/f4th_142.jsonl#/f4th/142/338; Unicode character offsets [35165:35253] (end exclusive); SHA-256 fe6819c0fcfbdd5d12056879344eac0e9c698c46678782b1d96ba8d63ad9cf9f. |
Court interpretations
interpretation
Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.
Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)
Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.Source:
docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [11514:11870] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.