New York Court Lets Naked Licensing Counterclaims Proceed in Weather Brands Trademark Case

By Imaduddin

Photo: ds_30 / Pixabay

In an order dated 20 October 2026, Judge Denise Cote of the US District Court for the Southern District of New York allowed the defendants in Weather Brands LLC v. Blue Mineral Corporation (No. 1:25-cv-02423) to add counterclaims, and refused to dismiss them. According to a summary of the order published by the Law Office of Michael P. Eddy, the counterclaims seek a declaration of non-infringement, a declaration that the asserted marks are generic or descriptive or have been abandoned, and cancellation of the registrations.

One theory is that Weather Brands abandoned its mark through "naked licensing", meaning it let licensee All Season Power LLC, which joined the case as an intervening plaintiff in May 2026, use the mark without adequate quality control. The plaintiffs argued the counterclaims came too late, after the January 2026 deadline to amend pleadings. The court disagreed, noting that the naked licensing theory arose from events after that deadline and from discovery following the intervention.

The ruling was procedural. The genericness, abandonment and naked licensing theories remain allegations that have not been tested on the merits.

The case is a reminder for licensors everywhere. Under US law, a licence with no real control over quality can put the mark itself at risk. In Indonesia, Law No. 20 of 2016 requires trademark licences to be recorded with DJKI to bind third parties, and licensors should include quality control terms in the agreement and keep evidence that they enforce them.

Sources

• CourtListener, docket for Weather Brands LLC v. Blue Mineral LLC, No. 1:25-cv-02423 (S.D.N.Y.)
• Trademark Support (Law Office of Michael P. Eddy), "Judge Cote lets Blue Mineral's naked licensing counterclaims proceed in the Weather Brands trademark case" (22 October 2026)
• 15 U.S.C. § 1064, cancellation of registration (Cornell LII)