Trademarks

A Single Naked License Sinks a Mark: Barcamerica v. Tyfield Importers and the Duty to Police Quality

The Ninth Circuit held that a trademark owner who licensed its DA VINCI wine mark without meaningful quality control abandoned the mark, even though the licensee made well-regarded wine.

February 17, 2025
Rows of wine bottles aging on racks in a cellar
A casual licensing arrangement around a famous winemaker turned a registered DA VINCI mark into an abandoned one. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

A trademark owner can spend decades building a mark, register it, and still lose it without ever signing away a single right — simply by failing to watch what its licensee does. That is the uncomfortable lesson of Barcamerica International USA Trust v. Tyfield Importers, Inc., No. 01-15973, 289 F.3d 589 (9th Cir. May 6, 2002). Writing for the United States Court of Appeals for the Ninth Circuit, the panel affirmed summary judgment that Barcamerica had abandoned its registered DA VINCI mark for wine through “naked licensing” — licensing the mark to another producer without retaining or exercising any meaningful control over the quality of the goods sold under it. The case remains a fixture of licensing practice because it shows how little it takes to forfeit a mark, and how a defendant in an infringement suit can turn the plaintiff’s own license against it.

At a glance

  • Case: Barcamerica International USA Trust v. Tyfield Importers, Inc., No. 01-15973, 289 F.3d 589.
  • Court: United States Court of Appeals for the Ninth Circuit. Argued April 10, 2002; filed May 6, 2002.
  • Posture: Appeal from summary judgment for the defendants, including cancellation of Barcamerica’s registration.
  • Holding: A licensor that grants a license without the right and the practice of controlling the quality of the licensee’s goods engages in naked licensing and abandons the mark. The exception for reliance on a trusted licensee did not save Barcamerica because it had no close working relationship and no actual control.
  • Why it matters: Quality control is not a drafting formality. A license clause without follow-through — and informal tasting without a clause — both fail.

How a licensor lost its own mark

Barcamerica owned the DA VINCI mark for wine and had used it since the 1980s. Rather than litigate from a position of strength, it found itself defending the validity of its own registration. The dispute arose when Cantine Leonardo Da Vinci, an Italian cooperative winery, and its importer, Tyfield Importers, brought “Leonardo Da Vinci” wine into the United States. Barcamerica sued for infringement; Tyfield counterclaimed that Barcamerica had abandoned the DA VINCI mark and sought cancellation of the registration.

The vulnerability lay in how Barcamerica had let its mark be used. It had licensed DA VINCI to Renaissance Vineyards, which made and sold wine under the name. The successive license agreements — one from 1988 and a 1989 agreement drafted by Barcamerica’s own counsel — contained no quality-control provision at all. Barcamerica did not inspect Renaissance’s facilities, did not test the wine on any regular basis, and reserved no right to do so. The only “control” it could point to was occasional, informal wine tasting and its confidence in the reputation of the winemaker associated with Renaissance.

That was not enough. Under the Lanham Act, a mark is abandoned when “any course of conduct of the owner … causes the mark … to lose its significance as a mark.” 15 U.S.C. § 1127. Uncontrolled licensing is the classic such course of conduct: when a licensor stops policing quality, the mark no longer reliably tells consumers anything about the goods, and the law treats the owner as having given up the mark.

Why “good wine” did not save the mark

Barcamerica’s most intuitive argument was that the wine was, in fact, good — Renaissance’s winemaker was well regarded, and the product was not inferior. The Ninth Circuit’s response cut to the doctrinal core of quality control: the point of supervision is not that goods be of “high” quality but that they be of consistent quality, so that consumers who rely on the mark get what they expect. As the court explained the principle, the public is entitled to assume that goods sold under a single mark are consistent and predictable, whatever the absolute quality level. A licensor cannot satisfy that obligation by hoping a talented licensee will keep doing good work; control means the legal right and the practical exercise of authority over what the mark stands for.

The court did acknowledge a recognized softening of the rule. Some licensors maintain adequate control informally where they have a “close working relationship” with the licensee and can reasonably rely on the licensee’s own quality-control efforts. But that exception protects relationships of genuine, demonstrable reliance — typically supported by a history of working together and real knowledge of the licensee’s operations. Barcamerica had no such relationship. It pointed to sporadic tastings and the winemaker’s reputation, but it offered no evidence of an ongoing, dependable mechanism by which it knew and could influence the quality of what Renaissance sold. Reliance on a licensee’s reputation, standing alone, is not control; it is the abdication of control dressed in optimism.

The strategic sting: abandonment as a defense

Barcamerica is also a lesson in litigation posture. The naked-licensing doctrine did not surface because a regulator or a consumer complained. It surfaced because the defendant in an infringement action raised abandonment as an affirmative defense and counterclaim. A plaintiff that sues to enforce a registered mark exposes its own licensing hygiene to discovery, and a poorly supervised license can convert a plaintiff’s enforcement effort into the cancellation of its registration. The remedy the defendants obtained was not merely a loss on the infringement claim but cancellation — the mark gone entirely, at least as registered, leaving the field open.

That dynamic reframes quality control from a back-office compliance task into a front-line risk to the entire asset. The owner who files suit is, in effect, inviting the court to audit how the mark has been used.

Open questions

  • How much informal control is “enough”? Barcamerica disclaimed reliance only on the facts before it. The contours of the close-working-relationship exception — how much history, how much actual knowledge — remain fact-intensive and unpredictable.
  • Does a single license carry the same risk as a licensing program? The case confirms that even one naked license can abandon a mark, but it leaves open how courts weigh isolated lapses against an otherwise robust control regime.
  • What evidence proves control after the fact? The decision rewards contemporaneous records of inspection and testing, but it does not specify how much documentation defeats an abandonment claim at summary judgment.

Implications

  • Put quality control in the agreement and then actually do it. A clause without practice is as fatal as practice without a clause; Barcamerica had neither working for it.
  • Document supervision contemporaneously. Inspection logs, testing results, and approval records are the evidence that defeats an abandonment counterclaim.
  • Treat reputation-based reliance with suspicion. Confidence in a licensee’s skill is not a substitute for retained authority over quality.
  • Audit licenses before suing. Plaintiffs should assume an infringement complaint will trigger scrutiny of their own licensing, including a cancellation counterclaim.
  • Remember the consistency standard. The duty is to ensure predictable quality, not premium quality, so controls should measure conformity to a defined standard.

Frequently asked questions

What is “naked licensing”? Naked licensing is the licensing of a trademark without the licensor retaining and exercising adequate control over the quality of the goods or services the licensee sells under the mark. Because the mark then stops reliably signaling anything to consumers, courts treat the owner as having abandoned it.

Did it matter that the licensed wine was actually good? No. The Ninth Circuit emphasized that the duty is to ensure consistent, predictable quality — not high quality. A licensor cannot rely on a licensee’s talent or reputation as a stand-in for retained control over what the mark represents.

Can a trademark really be lost through one license? Yes. Barcamerica shows that a single inadequately supervised license can support a finding of abandonment, leading to loss and even cancellation of a federal registration.

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