Barcamerica International USA Trust v. Tyfield Importers, Inc.

We must decide whether a company engaged in “naked licensing” of its trademark, thus resulting in abandonment of the mark and ultimately its cancellation.

I

This case involves a dispute over who may use the “Leonardo Da Vinci” trademark for wines.

A

Barcamerica International USA Trust (“Barcamerica”) traces its rights in the Leonardo Da Vinci mark to a February 14, 1984 registration granted by the United States Patent and Trademark Office (“PTO”), on an application filed in 1982. 1 On August 7, 1989, the PTO acknowledged the mark’s “incontestability.” See 15 U.S.C. § 1115 (b). Barcamerica asserts that it has used the mark continuously since the early 1980s. In the district court, it produced invoices evidencing two sales per year for the years 1980 through 1993: one to a former employee and the other to a barter exchange company. Bar-camerica further produced invoices evidencing between three and seven sales per year for the years 1994 through 1998. These include sales to the same former employee, two barter exchange companies, and various sales for “cash.” The sales volume reflected in the invoices for the years 1980 through 1988 range from 160 to 410 cases of wine per year.…