U.S. Ninth Circuit Sets Naked License Standard for ?Simple Products?
- Topics:
- Commercial Litigation
- Tags:
- Mark,
- Thelen Reid & Priest,
- Wine
- Source:
- Thelen Reid & Priest
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Overview: The paper discusses a case where on May 20, 2002, the United States Court of Appeals for the Ninth Circuit held that the licensor abandoned its mark ?Leonardo Da Vinci? for wine by engaging in naked licensing and set a standard of what constitutes a naked license for ?simple products? like wine. Barcamerica International USA Trust (?Barcamerica?) was granted a trademark registration for its ?Leonardo Da Vinci? mark by the U.S. Patent and Trademark Office (?PTO?) on February 14, 1984, and incontestability status was granted on August 7, 1989. In 1988, Barcamerica entered into a licensing agreement with Renaissance Vineyards (?Renaissance?) which gave Renaissance the non-exclusive right to use the ?Da Vinci? mark for five years or 4,000 cases, ?whichever comes first.? After investigating Barcamerica?s use of the mark, Cantine concluded that Barcamerica was no longer selling any wine products bearing the "Leonardo Da Vinci" mark and had long since abandoned the mark. Accordingly, Cantine commenced a proceeding in May 1997 in the PTO seeking cancellation of Barcamerica's registration for the mark based on abandonment. Illustrating this case the paper also discusses the issue "naked licensing" and the standard differs from other circuits.
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Format: PDF | Size: 106KB | Date: Jan 2002 | Pages: 4
