D.H. Pace Company, Inc. v. OGD Equipment Company, LLC

[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 22-10985
____________________
D.H. PACE COMPANY, INC.,
d.b.a. Overhead Door Company of
Atlanta,
d.b.a. Overhead Door Company of
Kansas City,
Plaintiff-Counter
Defendant-Appellant,
versus
OGD EQUIPMENT COMPANY, LLC,
Defendant-Counter
Claimant-Appellee.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 1 of 25

-- 1 of 25 --

2 Opinion of the Court 22-10985
____________________
Appeal from the United States District Court
for the Northern District of Georgia
D.C. Docket No. 1:20-cv-00410-TCB
____________________
Before BRANCH and B RASHER , Circuit Judges, and WINSOR ,∗
District Judge.
B RANCH, Circuit Judge:
At issue in this case is whether Plaintiff D.H. Pace Company,
Inc. (“Pace”), a trademark licensee, can bring a claim against a third
party for unfair competition under the Lanham Act when its
licensing agreement does not expressly authorize it to do so. Under
the facts of this case, we conclude that it can.
This appeal involves three entities, although only two are
parties to this lawsuit. Pace (a company that sells and services
garage doors) sued a competitor, Overhead Garage Door (“OGD”)
(a company that also offers garage door services), alleging a host of
federal and state law violations relating to OGD’s trade practices.
Pace and Overhead Door Corporation (a garage door
manufacturer that is not a party to this case but that has a name
noticeably similar to Defendant OGD, its competition) have a
∗ The Honorable Allen C. Winsor, United States District Judge for the
Northern District of Florida, sitting by designation.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 2 of 25

-- 2 of 25 --

22-10985 Opinion of the Court 3
licensing agreement in which Pace is the licensee and Overhead
Door Corporation is the licensor. As part of this agreement, Pace
uses Overhead Door Corporation’s marks.
Before Pace brought this suit, Overhead Door Corporation
and OGD had been in litigation involving OGD’s alleged
trademark infringement and unfair trade practices (much like
Pace’s instant allegations), which culminated in a settlement
agreement between Overhead Door Corporation and OGD.
In the instant lawsuit, the district court granted summary
judgment to OGD on all of Pace’s claims, concluding in large part
that Pace could not bring suit because Pace was a nonexclusive
licensee that lacked sufficient ownership rights in Overhead Door
Corporation’s marks, and because OGD and Overhead Door
Corporation’s settlement agreement extinguished Pace’s claims.
Pace timely appealed.
After careful review of the record and with the benefit of
oral argument, we conclude that Pace may bring its federal and
state law claims. Accordingly, we vacate the district court’s order
to the extent it is inconsistent with this opinion and remand for
further proceedings.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 3 of 25

-- 3 of 25 --

4 Opinion of the Court 22-10985
I. Background
a. Factual Background
i.
The Parties
Pace is a garage door company based in Olathe, Kansas. For
nearly a century, Pace and its predecessors have been in the
business of selling, installing, and servicing garage doors in the
greater Atlanta and Kansas City areas and using the trade names
“Overhead Door Company of Atlanta” and “Overhead Door
Company of Kansas City.” Pace has spent millions of dollars
advertising and promoting these trade names through its websites,
on social media, through search engines, and at trade shows.
Overhead Door Corporation, Pace’s licensor, manufactures
garage doors and garage door openers. Overhead Door
Corporation owns a federally registered trademark (a red ribbon
with the words “Overhead Door”) and uses that mark, as well as
several others, in connection with the promotion and sale of its
products.
Pace’s competitor, OGD, is a Texas-based company that
offers residential and commercial property owners “overhead door
service[s] across the nation,” including “installations, repairs, and
maintenance for overhead doors and dock equipment.” OGD
started operating as “Overhead Garage Door” in 2011 and first
entered the Atlanta and Kansas City markets in 2019.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 4 of 25

-- 4 of 25 --

22-10985 Opinion of the Court 5
ii.
The Licensing Agreement
In certain markets, including Atlanta and Kansas City, Pace
operates under distribution and licensing agreements1 (the
“licensing agreement”) with Overhead Door Corporation. Under
their agreement—in which Overhead Door Corporation is the
licensor and Pace is a nonexclusive licensee2—Overhead Door
Corporation granted Pace the right to sell its products and, with its
permission, to use certain trade names in connection with the
promotion and sale of its products, including “Overhead Door”
and “Overhead” (collectively, the “marks”). Although the licensing
agreement spells out the terms and conditions for using Overhead
Door Corporation’s marks and trade names, it does not address
trademark enforcement or either party’s ability to sue.
iii.
OGD and Overhead Door Corporation’s
Previous Litigation
In 2017, Overhead Door Corporation’s in-house counsel
sent OGD a letter that accused OGD of false advertising. The letter
asserted that OGD’s use of the term “Overhead Door—Official
Website” in a paid internet advertisement was causing confusion
1 Pace’s right to use Overhead Door Corporation’s marks derives from two
nonexclusive license agreements. The agreements are identical in all material
respects. Accordingly, like the district court and the parties, we refer to these
contracts collectively as the “licensing agreement.”
2 On top of selling and servicing Overhead Door Corporation products, Pace
also sells products from other garage door manufacturers.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 5 of 25

-- 5 of 25 --

6 Opinion of the Court 22-10985
among consumers who were mistakenly believing that the
advertisement was for Overhead Door Corporation’s website.
Then, a few months later, Overhead Door Corporation sent OGD
a demand letter “on matters involving trademark infringement and
unfair competition.” Ultimately, the friction between the two
companies came to a head when OGD won the race to the
courthouse, suing Overhead Door Corporation and one of its
distributors in federal court in Texas.3 OGD alleged that Overhead
Door Corporation was engaging in unfair competition under state
and federal law and sought a declaration that Overhead Door
Corporation’s trademark and trade name were invalid or
unenforceable. OGD also asked the court to declare that
“overhead,” “overhead door,” and “overhead doors” were generic
terms and thus not subject to trademark protection.
Overhead Door Corporation counterclaimed, alleging that
the term “Overhead Door” was closely associated with Overhead
Door Corporation and its licensees and that OGD was knowingly
and wrongfully passing itself off as an Overhead Door Corporation
affiliate. As a result, Overhead Door Corporation argued, OGD
was confusing and deceiving Overhead Door Corporation’s
current and prospective customers into the mistaken belief that
OGD was affiliated with or endorsed by Overhead Door
Corporation.
3 In the Texas lawsuit, OGD sued one of Overhead Door Corporation’s Texas
distributors—not Pace.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 6 of 25

-- 6 of 25 --

22-10985 Opinion of the Court 7
In November 2019, after two years of litigation, OGD and
Overhead Door Corporation entered into a settlement agreement
that resolved all their claims and contained mutual releases. Under
the agreement, OGD could use a redacted version of the
settlement agreement as a defense in any legal action brought by
an Overhead Door Corporation distributor or licensee.
Importantly, however, the agreement also stated that it was not
binding on any “current and future licensees . . . of [Overhead
Door Corporation].”
b. Procedural History
On January 28, 2020, Pace filed this lawsuit, suing OGD for
unfair competition in violation of § 43(a) of the Lanham Act, 15
U.S.C. § 1125(a); deceptive trade practices in violation of the
Georgia Uniform Deceptive Trade Practices Act (“GUDTPA”),
O.C.G.A. § 10-1-370
et seq.; unfair competition in violation of
O.C.G.A. § 23-2-55, as well as Georgia and Kansas common law;
and trademark infringement in violation of Georgia common law.4
Pace alleged that OGD, in directly competing with Pace,
intentionally misled and confused consumers into believing that
OGD was the same company as, or otherwise affiliated with, Pace
and Overhead Door Company of Atlanta and Overhead Door
Company of Kansas City. Pace also alleged that it owned common
law rights in the trade names “Overhead Door Company of
4 Pace amended its complaint twice over the course of litigation, reasserting
the same causes of action in each amended complaint.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 7 of 25

-- 7 of 25 --

8 Opinion of the Court 22-10985
Atlanta” and “Overhead Door Company of Kansas City” and that
OGD’s use of “Overhead Door LLC” was designed to mislead and
confuse customers in violation of federal and state law. Pace
sought a permanent injunction, corrective advertising, and lost
profits, among other damages.
In response, OGD asserted numerous affirmative defenses
against Pace’s claims and filed a counterclaim against Pace, seeking
a declaratory judgment that the terms “overhead,” “overhead
door,” and “overhead doors” are generic and thus not protected
under trademark law.
Extensive discovery followed, and OGD eventually moved
for summary judgment on its counterclaim and all of Pace’s claims.
Pace then moved for partial summary judgment on 15 of OGD’s
affirmative defenses, arguing that they either lacked supporting
evidence, failed as a matter of law, or did not constitute a defense.
After hearing oral argument on the parties’ motions, the
district court granted OGD’s motion for summary judgment on all
of Pace’s claims and denied Pace’s motion for partial summary
judgment. As to OGD’s counterclaim, although the district court
found that there was a genuine and material dispute about the
genericness of the terms “overhead” and “overhead door(s),” it
dismissed the counterclaim as moot. As relevant to this appeal, the
district court divided its reasoning into roughly four parts.
First, the district court concluded that Pace met the
statutory requirements to bring a Lanham Act cause of action after
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 8 of 25

-- 8 of 25 --

22-10985 Opinion of the Court 9
observing that Pace produced “scores” of examples of “confusion—
largely caused by OGD and its technician and corporate practices—
and [finding that] Pace’s goodwill and company reputation [fell]
squarely within the Lanham Act’s zone of protection.”5
Second, notwithstanding its finding that Pace fell within the
Lanham Act’s purview, the district court, relying on our precedent
in
Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc.,
920 F.3d 704 (11th Cir. 2019), concluded that the licensing
agreement between Pace and Overhead Door Corporation stood
as a “contractual bar” to Pace bringing suit. Specifically, the district
court reasoned that because the licensing agreement did not
5 The district court describes Pace’s ability to bring a claim under the Lanham
Act as meeting the “requirements for standing under the statute.” This
verbiage suggests that the district court may be referring to “prudential
standing,” a doctrine that the Supreme Court has deemed a “misnomer”
because it is “not derived from Article III.”
Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 126 (2014) (quotation omitted). Instead, the
more accurate and precise inquiry is whether Pace “has a cause of action under
the statute.”
Id. at 128 (explaining that courts “do not ask whether in our
judgment Congress
should have authorized [a plaintiff’s] suit, but whether
Congress in fact did so,” reasoning that a court “cannot limit a cause of action
that Congress has created merely because ‘prudence’ dictates”);
see also
Highland Consulting Grp., Inc. v. Minjares, 74 F.4th 1352, 1359 (11th Cir.
2023) (explaining that the “prudential standing” label is misleading because the
absence of a valid cause of action does not implicate subject matter-jurisdiction
and that under
Lexmark, “the question is whether the plaintiff has a cause of
action under the statute” (quotation omitted)). Accordingly, we characterize
the district court’s conclusion in these terms—namely, whether Pace has a
cause of action under the statute.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 9 of 25

-- 9 of 25 --

10 Opinion of the Court 22-10985
affirmatively grant Pace a right to sue, Pace lacked such a right
under
Kroma. The district court also concluded that Pace, “as a
non-exclusive licensee, [did] not possess sufficient rights in the
marks to bring its claims.”
Third, the district court concluded that Pace’s state law and
common law claims for trademark infringement, unfair
competition, and deceptive trade practices failed to withstand
summary judgment for similar reasons: because the licensing
agreement did not grant Pace a right to sue on the marks and
“[b]ecause Pace’s rights in the marks derive from its licensing
agreement with [Overhead Door Corporation], Pace may not
independently maintain its claims.”
Fourth, the district court concluded that OGD and
Overhead Door Corporation’s settlement agreement provided a
“further” independent bar to Pace’s claims. The district court
reasoned that because “Pace’s rights in the marks are derived
entirely from its licensing agreement with [Overhead Door
Corporation], [Overhead Door Corporation’s] voluntary discharge
of those rights in the [s]ettlement [a]greement acts to discharge
Pace’s rights as well.”
Pace now appeals the district court’s summary judgment
order.
II. Standard of Review
We review the district court’s grant of summary judgment
de novo.
Kroma, 920 F.3d at 707. Summary judgment is proper
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 10 of 25

-- 10 of 25 --

22-10985 Opinion of the Court 11
when the evidence shows “that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter
of law.”
Id. (quoting Fed. R. Civ. P. 56(a)). When reviewing a grant
of summary judgment, we view the evidence in the light most
favorable to the non-moving party and resolve all reasonable
doubts about the facts in favor of the non-movant.
Id.
III. Discussion
On appeal, Pace argues that the district court correctly
determined that it has a cause of action under the Lanham Act but
erred by concluding that the licensing agreement, Pace’s status as
a nonexclusive licensee, and the settlement agreement all
independently bar Pace from bringing its claims. Pace also argues
that, for the same reasons, the district court erred by granting
summary judgment on its state law and common law claims. We
agree with Pace.
Pace brought an unfair competition claim under the
Lanham Act, which “mak[es] actionable the deceptive and
misleading use of marks in . . . commerce” and provides several
enforcement mechanisms to that end.
Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 131 (2014) (quoting 15
U.S.C. § 1127);
see also 15 U.S.C. § 1127 (explaining that the
Lanham Act “mak[es] actionable the deceptive and misleading use
of marks in such commerce,” “protect[s] persons engaged in such
commerce against unfair competition,” and “prevent[s] fraud and
deception in such commerce by the use of reproductions, copies,
counterfeits, or colorable imitations of registered marks”).
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 11 of 25

-- 11 of 25 --

12 Opinion of the Court 22-10985
Under § 32(1) of the Lanham Act, a trademark registrant
may bring a civil action to protect its mark.6 15 U.S.C. § 1114(1).
But Congress did not limit “the [statutory] remedies given” in the
Lanham Act to owners alone.
Id. § 1114(2). Section 43(a)
separately empowers “any person who believes that he or she is or
is likely to be damaged” to sue “[a]ny person” using “any word,
6 Section 32(1) provides, in relevant part:
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with
the sale, offering for sale, distribution, or advertising of any
goods or services on or in connection with which such use
is likely to cause confusion, or to cause mistake, or to
deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a
registered mark and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection
with the sale, offering for sale, distribution, or advertising
of goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to
deceive,
shall be liable in a civil action by the registrant for the remedies
hereinafter provided.
15 U.S.C. § 1114(1).
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 12 of 25

-- 12 of 25 --

22-10985 Opinion of the Court 13
term, name, symbol, or device” or “any . . . false or misleading
description [or misleading representation] of fact” in ways “likely
to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another
person.”7 15 U.S.C. § 1125(a)(1). Pace brought its claim under
§ 43(a).
7 Section 43(a)(1) provides:
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact,
which—
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents
the nature, characteristics, qualities, or geographic origin
of his or her or another person’s goods, services, or
commercial activities,
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.
15 U.S.C. § 1125(a)(1).
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 13 of 25

-- 13 of 25 --

14 Opinion of the Court 22-10985
The Supreme Court has explained that the reach of § 43(a)
is broad.
Lexmark, 572 U.S. at 129 (noting that, when “[r]ead
literally, [§ 43(a)’s] broad language might suggest that an action is
available to anyone who can satisfy the minimum requirements of
Article III” but that it is unlikely that Congress “meant to allow all
factually injured plaintiffs to recover” (quotation omitted)).
Indeed, only a zone-of-interests test and a proximate-cause
requirement supply the limits on who may sue.8
Id. at 129–33.
Considering the “scores” of examples of customer confusion
and that “Pace’s goodwill and company reputation [fell] squarely
within the Lanham Act’s zone of protection,” the district court
concluded that Pace met the requirements for bringing a claim
under the statute. And, notably, the district court’s conclusion is
not challenged on appeal.
Pace does, however, challenge the district court’s holding
that, despite falling “squarely within the Lanham Act’s zone of
protection,” Pace’s claims were nonetheless barred by (1) the
licensing agreement; (2) Pace’s status as a nonexclusive licensee;
and (3) OGD and Overhead Door Corporation’s settlement
agreement. After careful review, we conclude that none of these
8 The zone-of-interests limitation refers to the presumption “that a statutory
cause of action extends only to plaintiffs whose interests fall within the zone
of interests protected by the law invoked.”
Lexmark, 572 U.S. at 129
(quotation omitted). And the proximate-cause limitation refers to the
presumption “that a statutory cause of action is limited to plaintiffs whose
injuries are proximately caused by violations of the statute.”
Id. at 132.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 14 of 25

-- 14 of 25 --

22-10985 Opinion of the Court 15
considerations impedes Pace’s ability to bring its claims and address
each in turn.
a. The licensing agreement does not bar Pace from
suing
The district court concluded that Pace was barred from
bringing its Lanham Act claim because under our precedent in
Kroma, the licensing agreement between Pace and Overhead Door
Corporation acted as a contractual bar to Pace’s suit. Pace argues
that the district court erred, and we agree.
In
Kroma, we affirmed the district court’s grant of summary
judgment based on its finding that the licensing agreement did not
give the licensee “sufficient rights in the mark to sue under the
Lanham Act.” 920 F.3d at 706. Kroma Makeup EU, LLC (“Kroma
EU”), the plaintiff and a cosmetics distributor, had licensed the
federally registered mark “KROMA” from By Lee Tillett, Inc.
(“Tillett”), the owner and registrant of the mark.
Id. Tillett (the
licensor) granted Kroma EU (the licensee) an exclusive license to
import, sell, and distribute KROMA products in Europe and to use
the KROMA mark to further the plaintiff’s business.
Id. Their
licensing agreement “afford[ed] rights and impose[d] obligations
on the parties relating to the enforcement of any trademark
claims.”
Id. at 709. Importantly, the agreement (1) reserved to
Tillett “all ownership and enforcement rights” and (2) required
Tillett to protect the trademark from any illegal use and, if any
infringement did occur, to “guarantee” Kroma EU against any
claims concerning intellectual property rights.
Id. The
Kroma
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 15 of 25

-- 15 of 25 --

16 Opinion of the Court 22-10985
Court explained that these “two integral provisions,” “read
together[,] indicate[d] that Tillett [(the licensor)] alone ha[d] the
exclusive right to sue for infringement.”
Id. at 709–10;
see id. at 709
(using “basic principles of contract interpretation” to conclude that
the “plain language of the agreement” demonstrated “the parties’
intent for Tillett to retain all ownership and enforcement rights”
(quotations omitted)). Accordingly, due to the licensing
agreement’s reservation of enforcement power in the licensor, we
concluded that Kroma EU, the licensee, did “not have sufficient
rights in the mark to sue under the Lanham Act.”
Id. at 706, 709–
10.
Here, the district court erroneously interpreted
Kroma as
imposing a “contractual bar” to Pace’s ability to sue. The district
court acknowledged that the language in the licensing agreement
at issue in
Kroma is not present in the licensing agreement between
Pace and Overhead Door Corporation. But it nonetheless
explained that “
Kroma requires the [c]ourt to analyze what rights
were
given to the licensee, not what rights were withheld.” Using
that metric, the district court concluded that, absent a right to sue
provision, Pace lacked sufficient rights under the licensing
agreement to bring its claims against OGD.
The district court misreads
Kroma. Rather than requiring a
licensing agreement to contain a right to sue provision before a
licensee can bring a Lanham Act claim,
Kroma simply
acknowledges that a licensing agreement between two parties can
limit a licensee’s otherwise broad ability to bring a claim under the
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 16 of 25

-- 16 of 25 --

22-10985 Opinion of the Court 17
Lanham Act and explains that we must use “basic principles of
contract interpretation” to determine what rights and obligations a
licensing agreement may otherwise impose on parties. 920 F.3d at
709–10 (explaining “the general sentiment that a license agreement
between two parties can limit a licensee’s ability to bring a Lanham
Act claim”). Here, rather than interpret Pace and Overhead Door
Corporation’s licensing agreement, the district court read
Kroma
as requiring a right to sue provision. Not finding one, it concluded
that the lack of such a provision in the licensing agreement here
was fatal to Pace’s claim. But
Kroma never instituted such a
positive requirement. And here, in contrast to the licensing
agreement in
Kroma, both Pace and OGD agree that the licensing
agreement between Pace and Overhead Door Corporation is silent
on the topic of trademark enforcement and on Pace’s ability to sue.
Thus, contrary to the district court’s conclusion, there is no
“contractual bar [to sue] dictated by
Kroma” because—unlike the
licensing agreement in
Kroma—nothing in the licensing agreement
bars Pace from bringing a Lanham Act claim.9
9 The district court highlights
Kroma’s statement that “that a licensee’s right
to sue to protect the mark largely depends on the rights granted to the licensee
in the licensing agreement” when concluding that Pace does not have
sufficient rights in the marks to bring its claim. 920 F.3d at 708 (quotation
omitted). But this language in
Kroma does not change our analysis.
Kroma
merely acknowledged that a licensee’s rights may be limited by a licensing
agreement and instructs courts to use basic contract interpretation to
determine the contours of each party’s rights.
Id. at 709. Further confirming
our reading,
Kroma also notes that our sister circuits similarly look to licensing
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 17 of 25

-- 17 of 25 --

18 Opinion of the Court 22-10985
OGD argues that we should not conclude that Pace can
bring a Lanham Act claim because, in so holding, we necessarily
must rewrite the licensing agreement to give Pace the right to sue.
But this argument fails to consider the Lanham Act’s backdrop and
misconstrues
Kroma. As
Lexmark makes clear, § 43(a) of the
Lanham Act grants broad authority to sue. 572 U.S. at 129. And,
as explained above, Pace falls within that broad grant of authority.
Although
Kroma explains that a licensing agreement can restrict
that broad right to sue, the licensing agreement at issue here does
not do so. Thus, rather than reading a right to sue into the licensing
agreement, as OGD contends, we merely decline to read in a
restriction on Pace’s right to sue when the licensing agreement is
silent and does not impose one. Simply put, without the licensing
agreement posing a contractual bar to Pace’s ability to sue, Pace is
free to bring a Lanham Act claim, subject to the statute’s
restrictions as explained by
Lexmark.10
agreements only for express limitations on a licensee’s otherwise broad rights:
“Our sister courts of appeals have agreed with the general sentiment that a
license agreement between two parties can limit a licensee’s ability to bring a
Lanham Act claim.”
Id. at 710.
10 Relatedly, OGD protests that a “licensee like Pace possesses rights
only as
a result of its license,” meaning that if a licensing agreement does not include
the right to sue, “then a licensee-plaintiff has no right within the ‘zone of
interests’ that § 43(a) of the Lanham Act protects.” But
Kroma, § 43(a) of the
Lanham Act, and the precedent interpreting the Lanham Act do not support
that proposition. To the contrary, § 43(a) provides broad authority to sue, and
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 18 of 25

-- 18 of 25 --

22-10985 Opinion of the Court 19
b. Pace’s status as a nonexclusive licensee does not bar
Pace from suing
The district court, relying on several non-binding cases, also
concluded that “Pace, as a non-exclusive licensee, simply [did] not
possess sufficient rights in the marks to bring its claims.” We are
not persuaded.
As an initial matter, none of the out-of-circuit and district
court cases that the district court cited (and that OGD relies on) are
binding on us.
See Quabaug Rubber Co. v. Fabiano Shoe Co., 567
F.2d 154 (1st Cir. 1977);
Shell Co. v. Los Frailes Serv. Station, Inc.,
596 F. Supp. 2d 193 (D.P.R. 2008),
aff’d sub nom. The Shell Co.
(Puerto Rico) v. Los Frailes Serv. Station, Inc., 605 F.3d 10 (1st Cir.
2010);
Aceto Corp. v. TherapeuticsMD, Inc., 953 F. Supp. 2d 1269,
1280 (S.D. Fla. 2013).
Further, these cases are readily distinguishable. Most
critically, all three cases rely on § 32(1) of the Lanham Act—which
permits a trademark
registrant to bring a civil action—when
analyzing whether a nonexclusive licensee can bring a claim under
the Lanham Act.
See, e.g.,
Quabaug, 567 F.2d at 159–60 (observing
that courts have permitted exclusive licensees, in addition to
trademark registrants, to bring a claim under § 32(1) of the Lanham
Act but noting that “[t]here appear to be no cases where a
nonexclusive licensee has been permitted to maintain a trademark
the district court’s conclusion that Pace meets the statutory requirements to
bring such a claim is unchallenged on appeal.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 19 of 25

-- 19 of 25 --

20 Opinion of the Court 22-10985
infringement suit in the absence of the ‘registrant’”);
Shell, 596 F.
Supp. 2d at 201–02 (explaining that § 32(1) restricts relief to
trademark registrants, which may include exclusive licensees, but
“certainly does not include nonexclusive licensees”);
Aceto Corp.,
953 F. Supp. 2d at 1280 (explaining that although trademark
licensees typically do not have the ability to sue under § 32(1),
exclusive licensees may sue under § 32(1)). These analyses are
irrelevant here. Pace, which is not the trademark registrant,
brought a claim under § 43(a) of the Lanham Act—not § 32(1).
Indeed, when discussing a nonexclusive licensee’s ability to bring a
claim under § 43(a), the very same cases conclude that
nonexclusive licensees are free to bring suit under § 43(a).
See e.g.,
Quabaug, 567 F.2d at 160 (concluding that the nonexclusive
licensee could maintain a claim under the Lanham Act, even
without the licensor’s presence in the suit, because § 43(a) “permits
‘any person who believes that he is or is likely to be damaged’ to
bring a ‘civil action’” (quoting 15 U.S.C. § 1125(a)));
id. (explaining
that § 43(a) of the Lanham Act “is to be broadly construed” and that
“one who may suffer adverse consequences from a violation of
[§ 43(a)] has [the ability] to sue regardless of whether he is the
registrant of a trademark”);
Shell, 596 F. Supp. 2d at 204 (holding
that the nonexclusive licensee “ha[d] a reasonable interest to be
protected and ha[d] properly asserted a basis [to sue] pursuant to
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 20 of 25

-- 20 of 25 --

22-10985 Opinion of the Court 21
section 43(a)”). Accordingly, we decline to affirm the district court
based on these inapposite cases.11
c. OGD and Overhead Door Corporation’s settlement
agreement does not bar Pace from suing
The district court also concluded that OGD and Overhead
Door Corporation’s settlement agreement provided an
independent bar to Pace’s ability to sue. Again, we disagree.
The settlement agreement between OGD and Overhead
Door Corporation—which OGD and Overhead Door Corporation
entered into before Pace filed this lawsuit—resolved all their claims
and contained mutual releases that prevent OGD and Overhead
11 Like Pace’s Lanham Act claim, the district court also granted summary
judgment on Pace’s common law and state law claims because “those claims
are based on Pace’s derivative rights in the marks” and “[b]ecause Pace’s rights
in the marks derive from its licensing agreement with [Overhead Door
Corporation], Pace may not independently maintain its claims.” But this
conclusion is erroneous for the reasons we already explained. Pace’s status as
a nonexclusive licensee does not bar Pace from suing and neither does the
licensing agreement.
On appeal, OGD argues that Pace waived its argument “that the
district court erred by holding its state-law claims fell with its federal claim”
because Pace never made this argument below. Moreover, to the extent that
the district court erred in ruling on Pace’s state law claims, OGD argues that
Pace invited such error “by failing to make any argument to the contrary,”
meaning that the district court’s conclusion is unreviewable on appeal. After
reviewing the record, we conclude that Pace has actively litigated its state law
claims at each stage of the proceedings and has not invited error. Thus, we do
not find merit in either of these arguments.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 21 of 25

-- 21 of 25 --

22 Opinion of the Court 22-10985
Door Corporation “from raising new claims relating to the actions
of [the other] occurring after the” settlement agreement’s effective
date. We turn first to the provision in the settlement agreement
addressing its scope:
This Agreement shall be binding upon, and shall
inure to the benefit of, (1) OGD and its current and
future Affiliates; (2) [Overhead Door Corporation’s]
business unit doing business under the
trademark/service mark and/or trade name
‘Overhead Door’ and current and future Affiliates of
such business unit; and (3) [Overhead Door] Lubbock
and its current and future Affiliates.
The Parties
expressly acknowledge that this Agreement shall not
be binding on (1) current and future divisions of
[Overhead Door Corporation’s] business that do not
do business under the trademark/serve mark and/or
trade name ‘Overhead Door,’ or (2)
current and
future licensees, distributors, and resellers of
[
Overhead Door Corporation]
except OD Lubbock.
(Emphasis added.)
Thus, although the agreement may prevent OGD and
Overhead Door Corporation from suing each other, the settlement
agreement is “not . . . binding on . . . current and future licensees.”
As such, the settlement agreement is not binding on licensees like
Pace and does not prevent Pace from suing.
See, e.g.,
Great Am.
Ins. Co. v. Primo, 512 S.W.3d 890, 893 (Tex. 2017) (explaining that
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 22 of 25

-- 22 of 25 --

22-10985 Opinion of the Court 23
“[t]he goal of contract interpretation is to ascertain the parties’ true
intent as expressed by the plain language they used” in the
contract);
see also Whittlesey v. Miller, 572 S.W.2d 665, 669 (Tex.
1978) (holding that a release generally cannot bind a party who did
not sign it).12 This conclusion is confirmed by another section of
the settlement agreement, entitled “Potential Distributor
Lawsuits,” which contemplates future lawsuits against OGD by
Overhead Door Corporation’s distributors and licensees:
[Overhead Door Corporation] shall not direct any of
its distributors or licensees to take legal action against
OGD if the acts of OGD that are the basis for such
legal action would not amount to breach of this
Agreement.
For clarity, this limitation shall not apply
to any claims of any [
Overhead Door Corporation]
distributor or licensee that are based on conduct of
OGD that is not the subject of this Agreement.13
(Emphasis added.)
Notwithstanding the settlement agreement’s language, the
district court reasoned, and OGD argues on appeal, that
“[Overhead Door Corporation’s] voluntary discharge of [the]
12 The settlement agreement provides that “[t]he construction, interpretation
and enforcement of [the agreement] shall be governed by the laws of the state
of Texas.”
13 We do not address whether Pace’s claims are based on conduct that is the
subject of the settlement agreement because that question is not before us.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 23 of 25

-- 23 of 25 --

24 Opinion of the Court 22-10985
rights in the [s]ettlement [a]greement acts to discharge Pace’s rights
as well.” For support, OGD emphasizes Pace’s admission that,
according to the terms of its settlement agreement with OGD,
Overhead Door Corporation would be barred from asserting the
claims that Pace is asserting in this case. But although the terms of
the settlement agreement may bar Overhead Door Corporation
from bringing the claims in this case, the settlement agreement is
clear that its terms do not bar licensees like Pace. Indeed, the
agreement expressly contemplates future lawsuits against OGD by
Overhead Door Corporation licensees. And although OGD again
relies on
Kroma and emphasizes that “a licensee’s rights are
derivative of the licensor’s,” OGD provides no authority to support
its argument that a
licensee’s § 43(a) claim under the Lanham Act
is barred if the
registrant’s claim is otherwise barred by a separate
contract between the registrant and a third-party.14 Thus, applying
the plain language of the settlement agreement to this case and
finding no other authority that would bar Pace from bringing its
claims, we conclude that the settlement agreement does not
prohibit Pace from bringing suit.
14 OGD cites
Biosyntec, Inc. v. Baxter Healthcare Corp., 746 F. Supp. 5 (D.
Or. 1990), as support for its argument that because Overhead Door
Corporation cannot pursue the claims that Pace asserts, neither can Pace. But
Biosyntec is not binding on us and does not require a different result in any
event because
Biosyntec involved a patent infringement claim—not a Lanham
Act claim.
See 746 F. Supp. at 10 (explaining that claimants under the patent
statute must be “owners”).
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 24 of 25

-- 24 of 25 --

22-10985 Opinion of the Court 25
IV. Conclusion
In sum, we conclude that the licensing agreement, Pace’s
status as a nonexclusive licensee, and the settlement agreement do
not bar Pace from bringing its claims under the Lanham Act, state
law, or common law. Accordingly, we VACATE the district
court’s order to the extent that it is inconsistent with this opinion
and REMAND for further proceedings.
USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 25 of 25

-- 25 of 25 --