Happy Birthday, National Parks! Would You Like Your Trademarks Back?

Entrance sign at Yosemite National ParkAugust 25, 2016 marks the 100th birthday of the National Park Service, which runs the nation’s 413 national parks.  Although I am not a particularly outdoorsy person, my relatives are, so here we are on summer vacation in Acadia National Park in Maine. I must admit that it is really beautiful here, and the mosquitoes have not devoured me yet. As a trademark lawyer, however, I can’t help but be reminded of what has become one of the most controversial trademark disputes of all time – whether a private party can own trademarks for YOSEMITE NATIONAL PARK and other iconic names associated with the national parks.

Delaware North, also known as DNC Parks & Resorts at Yosemite, Inc., has been the concessionaire for Yosemite National Park since the early 1990s. When the National Park Service announced that it would no longer work with Delaware North but was instead awarding the contract to a new concessionaire, Aramark, the troubles began. According to court filings, Delaware North demanded that Aramark pay Delaware North $44 million to acquire the right to use various Yosemite-related trademarks, or otherwise refrain from using them in connection with the sale of goods and services. Some sources have put that figure at $51 million. In response, the National Park Service has temporarily pulled t‑shirts saying YOSEMITE NATIONAL PARK from gift shops and renamed the famed Ahwahnee Hotel to the Majestic Yosemite Hotel (which was apparently not within the scope of Delaware North’s alleged trademark rights).

These issues will play out in court, as Delaware North commenced a lawsuit last September in the United States Court of Federal Claims, seeking to enforce its alleged contractual rights to compensation for the trademarks. The entire contract, and a report valuing the trademarks, have not been fully disclosed in the public record. A separate cancellation action filed in the Trademark Trial and Appeal Board, in which the United States seeks cancellation of the trademarks at issue (or transfer of ownership to the National Park Service), will be stayed pending the outcome of the federal lawsuit.

In normal circumstances, a party in the position of the National Park Service would have a number of tools to prevent a vendor or concessionaire such as Delaware North from acquiring trademark rights. For example, it is legally improper for a licensee to obtain federal registrations in its own name, as only the trademark owner can do so. Indeed, when Delaware North applied for some of the trademarks at issue, for example YOSEMITE NATIONAL PARK, the U.S. Patent and Trademark Office denied registration on all of the grounds that you would expect, including false association and descriptiveness. In response, Delaware North submitted a highly redacted version of its concession contract with the National Park Service, establishing that it did in fact have an association with the National Park Service.  However, according to National Park Service, other provisions in the contract suggested that Delaware North’s rights in Yosemite-related trademarks were limited. Because Delaware North redacted many of those other provisions, the U.S. Patent and Trademark Office did not consider them.

While there are other complications, such as the geographically descriptive nature of the trademarks at issue and the availability of the nominative fair use doctrine, the contract is what makes this case such a difficult one.

The lessons for trademark owners are clear:

  1. Be very careful not to unintentionally give away your trademark rights in your contracts, and when at all possible, cast the relationship as one of licensor and licensee (with you obviously being the licensor).
  1. If you become aware that your vendor (or concessionaire, or distributor, or really anyone at all) registers your trademark in its own name, you should immediately file a petition for cancellation with the Trademark Trial and Appeal Board, and under no circumstances allow the registration to pass the five-year mark and become incontestable under the trademark laws. If the registration becomes incontestable, you may still have grounds for cancellation, however they are much more limited.
  1. It goes without saying that the same advice applies to domain names as well as trademarks.

Failing to properly outline trademark ownership rights in your service contracts and monitor your service provider’s trademark filing activities could lead to an unpleasant legal dispute, and in some cases, a public relations nightmare.

Special thanks to Theresa Canzoneri for her assistance in putting together this article.

Addendum: Another interesting question is whether the National Historic Preservation Act applies, which states in part, “Notwithstanding [the federal trademark statute], buildings and structures on or eligible for inclusion on the National Register (either individually or as part of a historic district), or designated as an individual landmark or as a contributing building in a historic district by a unit of State or local government, may retain the name historically associated with the building or structure.”  I addressed that issue in another version of this post that appeared in the National Parks Traveler.

 

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