The U.S. Court of Appeals for the Ninth Circuit has held thatan incontestable, federally registered trademark may be abandoned and cancelledbased on the owner's grant of a single "naked license." BarcamericaInt'l USA Trust v. Tyfield Importers, Inc., 2002 U.S. App. LEXIS 8657 (9thCir. May 6, 2002). The plaintiff owned an incontestable federal trademarkregistration for the mark LEONARDO DA VINCI for wine. The defendant used thesame mark, LEONARDO DA VINCI, on the same goods, wine. The plaintiff sued fortrademark infringement and the defendant counterclaimed for cancellation of theplaintiff's federal trademark registration on the grounds of abandonment. The district court awarded summary judgment in favor of thedefendant, noting that the plaintiff had licensed its mark to a third party,and the license agreement did not contain a quality control provision, i.e.,a provision that gave the plaintiff the right to control the quality of thewine sold under the mark. Further, the plaintiff had not, in fact, exercisedquality control over the licensee's wine sold under the mark. Accordingly, thedistrict court held that the plaintiff had abandoned its mark and ordered thecancellation of the plaintiff's federal registration. The Ninth Circuit affirmed, explaining that "a trademarkowner may grant a license and remain protected provided quality control of thegoods and services sold under the trademark by the licensee ismaintained." The court also explained that "'uncontrolled' or 'naked' licensingmay result in the...
Federally Registered Trademark May Be Abandoned Based on the Grant of a Single 'Naked' License
|Author:||Mr John Dabney|
|Profession:||McDermott Will & Emery|
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