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Chapter 11 Debtors Cannot Assume or Assign Trademark License Without Consent from Licensor

January 9, 2006

The federal district court in Blanks v. N.C.P. Marketing Group, Inc. (In re N.C.P. Marketing Group, Inc.), 2005 WL 3253268 (D. Nev.  Nov. 21, 2005) held that a trademark license is "personal and non-assignable" under applicable trademark law, and cannot be assumed or assigned by the chapter 11 debtor licensee without the licensor's consent.  Affirming the bankruptcy court, the district court said that it was ruling on a matter of "first impression" in the bankruptcy context.  The ruling is consistent, however, with non-bankruptcy trademark law.  See e.g., Miller v. Glenn Miller Prods., 318 F. Supp. 2d 923, 938 (C.D. Cal. 2004) (held, non-exclusive trademark licensee cannot sublicense without consent of original licensor); Tap Publ'n, Inc. v. Chinese Yellow Pages (New York) Inc., 925 F. Supp. 212, 218 (S.D.N.Y. 1996) (held, exclusive trademark license was personal to licensee and not assignable without licensor's consent).