## Facts

- Barcamerica International USA Trust owned a federal registration for the “Leonardo Da Vinci” / “Da Vinci” trademark for wine; the registration achieved incontestable status under the Lanham Act.
- Barcamerica’s evidence of marketplace use showed very limited sales volumes over many years.
- Barcamerica entered a 1988 nonexclusive license with Renaissance Vineyards allowing use of the “Da Vinci” mark for wine; the agreement contained no express quality-control provisions.
- In 1989, Barcamerica granted Renaissance an exclusive U.S. license for wine and other alcoholic beverages; that agreement likewise did not impose meaningful, enforceable quality standards or inspection rights.
- Defendants produced evidence that Barcamerica did not regularly test or otherwise monitor the quality of wine sold under the licensed mark and lacked a reliable system to ensure consistent quality.
- Barcamerica relied primarily on informal tasting and trust in Renaissance’s personnel rather than documented standards or ongoing supervision.
- Cantine, an Italian producer, sold wine under “Leonardo Da Vinci,” and Tyfield imported it into the United States; Barcamerica sued for trademark infringement.
- Tyfield and Cantine counterclaimed that Barcamerica abandoned the mark through naked licensing; the district court granted summary judgment for defendants on abandonment.

## Issues

1. Whether Barcamerica’s licensing of the “Leonardo Da Vinci” / “Da Vinci” mark without adequate quality control constituted naked licensing that resulted in abandonment under the Lanham Act.
2. Whether incontestable status of the federal registration precluded an abandonment defense based on naked licensing.
3. Whether summary judgment was proper on the abandonment issue given the evidence of quality control (or lack thereof).

## Decision

- The Ninth Circuit affirmed summary judgment for Tyfield and Cantine.
- The court held that Barcamerica engaged in naked licensing by failing to impose or exercise adequate quality control over the licensee’s use of the mark.
- The court held that such naked licensing constituted abandonment, preventing Barcamerica from enforcing the mark against defendants.
- The court held that incontestability does not bar an abandonment defense; abandonment remains available under 15 U.S.C. § 1115(b).

## Legal Principles

- A trademark licensor must maintain adequate quality control over goods sold under the mark to preserve the mark’s source-identifying function.
- “Naked licensing” occurs when a mark is licensed without sufficient contractual quality-control provisions and without actual, reasonable supervision of the licensee’s product quality.
- Uncontrolled licensing is a “course of conduct” that can abandon a mark because the mark may cease to signify consistent quality and controlled source.
- Trust in a licensee or sporadic, informal checks are insufficient absent reasonable steps to detect and prevent misleading use.
- Incontestable federal registration status does not immunize a mark from defenses expressly preserved by statute, including abandonment.

## Conclusion

The court ruled that Barcamerica’s failure to require and enforce meaningful quality control in its wine trademark licenses was naked licensing that abandoned the mark, and that the mark’s incontestable status did not prevent defendants from asserting abandonment as a complete defense to infringement.


Barcamerica Int’l USA Tr. v. Tyfield Imps., Inc., 289 F.3d 589 (9th Cir. 2002)