D.H. Pace Company, Inc. v. OGD Equipment Company, LLC, 78 F.4th 1286

Pace is a long‑standing regional garage‑door seller/licensee that uses "Overhead Door" trade names under nonexclusive licensing agreements with Overhead Door Corporation (licensor). The licensing agreements are silent on enforcement or a licensee's right to sue.
Overhead Door Corporation (registrant of a federally registered mark) and OGD (a competitor) litigated trademark and unfair‑competition claims; that suit settled in 2019 with mutual releases and an express clause stating the settlement is not binding on current or future licensees.
Pace sued OGD under § 43(a) of the Lanham Act and asserted state‑law unfair competition, deceptive‑trade‑practices, and common‑law trademark claims, alleging consumer confusion and diversion of business.
The district court granted summary judgment to OGD, holding (1) under Kroma the licensing agreement barred Pace from suing because it lacked a right‑to‑sue, (2) Pace’s nonexclusive license status deprived it of sufficient rights, and (3) the prior settlement between OGD and the registrant extinguished Pace’s claims.
On appeal the Eleventh Circuit concluded Pace falls within § 43(a)’s zone of interests and reversed those three bars: the licensing agreement did not reserve enforcement to the licensor, nonexclusive status does not foreclose § 43(a) suits, and the settlement expressly excluded licensees so it does not preclude Pace’s claims.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the licensing agreement bars a licensee from suing under § 43(a)	Licensing agreement is silent on enforcement; Kroma does not impose a positive "right‑to‑sue" requirement	Kroma requires license agreements to grant an affirmative right to sue; silence means no right	Court: No bar — silence does not preclude a § 43(a) claim; Kroma only controls where the agreement explicitly reserves enforcement to the licensor
Whether a nonexclusive licensee may sue under § 43(a)	§ 43(a) permits "any person" in the zone of interests to sue; nonexclusive licensee can sue	Nonexclusive licensees lack sufficient proprietary rights to bring suit	Court: Nonexclusive status does not categorically bar a § 43(a) suit
Whether the prior settlement between registrant and OGD precludes Pace’s claims	Settlement expressly excludes current/future licensees; it does not bind Pace	Registrant’s release of claims discharges licensee’s derivative rights, so Pace is barred	Court: Settlement not binding on licensees per its terms; it does not bar Pace
Whether Pace's state and common‑law claims independently fail because rights are derivative	State/common‑law claims are independently viable and were litigated	State/common‑law claims fail for same reasons as federal claim (derivative)	Court: For same reasons above, state/common‑law claims are not barred; remand for further proceedings

Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc., 920 F.3d 704 (11th Cir. 2019) (license agreement that reserves ownership and enforcement to licensor can preclude licensee suit)
Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (§ 43(a) scope limited by zone‑of‑interests and proximate‑cause tests)
Highland Consulting Grp., Inc. v. Minjares, 74 F.4th 1352 (11th Cir. 2023) (discussing limits of prudential standing and proper framing of statutory cause of action)
Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154 (1st Cir. 1977) (nonexclusive licensee may sue under § 43(a) despite lack of registrant status)
Shell Co. v. Los Frailes Serv. Station, Inc., 596 F. Supp. 2d 193 (D.P.R. 2008) (distinguishing § 32 registrant suits from broader § 43(a) claims)