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Op-Ed | Will The National Parks Get Their Trademarks Back?

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The battle over iconic Yosemite National Park placenames is a primer in trademark law/NPS

Editor's note: With word that efforts to settle their differences over the ownership of trademarks to iconic Yosemite National Park landmarks failed, a legal battle between the National Park Service and DNC Parks & Resorts at Yosemite is expected to resume in the U.S Court of Federal Claims in Washington, D.C. Julia Huston, a partner and chair of the Trademark, Copyright, & Unfair Competition Practice at the law firm of Foley Hoag LLP, weighs in on the standoff in this column. An earlier version of this piece was published in Foley Hoag’s blog, www.trademarkandcopyrightlawblog.com

August 25th marked the 100th birthday of the National Park Service, the umbrella agency that runs the nation’s 413 national parks. Even though I am not a particularly outdoorsy person, my relatives are, so I spent my summer vacation in Acadia National Park in Maine. I must admit, it was truly beautiful there, and the mosquitoes did not devour me. 

As a trademark lawyer, however, I couldn’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 the trademark Yosemite National Park and other iconic names and images associated with the national parks. 

Delaware North, also known as DNC Parks & Resorts at Yosemite, Inc., has been the concessioner 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 concessioner, Aramark, that’s when troubles began. According to court filings, Delaware North demanded that Aramark pay Delaware North $44 million or more 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. In response, the National Park Service 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. The parties recently informed the court that their efforts to settle the case have failed, so it looks like the lawsuit will proceed. 

In normal circumstances, a party in the position of the National Park Service would have a number of tools to prevent a vendor or concessioner 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 – including Yosemite National Park - a trademark examiner at the U.S. Patent and Trademark Office (USPTO) 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, other provisions in the contract allegedly suggested that Delaware North’s rights in Yosemite-related trademarks were limited. Because Delaware North redacted those provisions, the trademark examiner did not consider them. The examiner thereafter approved Delaware North’s trademark application for publication, and no one opposed it, so the registration issued. 

The National Park Service alleged that it was unaware until recently that Delaware North had obtained trademark registrations in its own name. Once this dispute arose, the National Park Service filed a petition to cancel several of Delaware North’s registrations with the Trademark Trial and Appeal Board (TTAB), a specialized division of the USPTO. The role of the TTAB is to cancel registrations that shouldn’t have been issued. Registrations can be cancelled on the basis of information that was not before an examiner or if the examiner made a mistake based on the information that was before him or her.

The TTAB can stay (i.e., suspend) cases if the same issues are being addressed in a federal court proceeding, and that’s what happened here. In order to avoid duplicating efforts and potentially arriving at inconsistent results, the TTAB did not examine the merits of cancellation action filed by the National Park Service and is instead waiting for the federal lawsuit to run its course. That is likely to take a year or more.

Interestingly, neither party raised in their court pleadings the National Historic Preservation Act, 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.”

While the NHPA does not speak to trademark ownership, it would appear to provide a defense to infringement, at least as to the structures themselves (it is less clear that the defense would extend to collateral merchandise such as t-shirts).

In its federal court complaint, Delaware North alleged that the National Park Service did not need to change the name of The Ahwahnee to the Majestic Yosemite Hotel and the Wawona Hotel to Big Trees Lodge, since Delaware North had offered a royalty-free license to the National Park Service, which it could sub-license to other concessioners such as Aramark, for the duration of the litigation. It would seem that Delaware North could argue that the potential applicability of the NHPA is yet another reason that the National Park Service did not need to change the name of the hotels. According to Delaware North, the only reasons that the National Park Service made the changes were in order to drive down the value of the original trademarks and to garner public support. 

This case is a complicated one, particularly given the geographically descriptive nature of the trademarks at issue. Under US trademark law, no one is entitled to claim trademark protection for descriptive words or phrases unless they can show secondary meaning, which means that the words have been used so extensively and exclusively by a single party that consumers have come to recognize the words as an indicator of source. Even when descriptive words attain trademark status through secondary meaning, others can still use those words in accordance with the fair use and nominative fair use doctrines. Even if a geographical designation has acquired secondary meaning, registration must be refused if the use of the trademark falsely suggests a connection with another party - which is what the National Park Service is arguing in this case (along with abandonment and other theories).

But what makes this case so challenging is the existence of the contract and the fact that the National Park Service apparently allowed prior concessioners to register the same and similar trademarks in their own names. A party can contract away its trademark rights, and that may be what the National Park Service did here. The lessons for trademark owners are pretty clear: the owners (or arguable owners) of trademarks should be very careful how they address those trademarks and corresponding domain names in contracts, and should own the trademark registrations in their own names and structure the arrangement as a licensor-licensee relationship wherever possible.

What about the American public? Will a rose by any other name smell as sweet? Well, probably yes, since Americans will continue to enjoy the national parks no matter what they are called.  But there is a lot of public outcry against the idea that a private company such as Delaware North could own the trademarks for America’s national landmarks and limit the ability of the National Park Service and its future licensees to use them. 

It is difficult to predict how this case will come out, particularly since a complete copy of the contract is not in the public record.  Given the complexity of the legal issues, as well as the cost of litigation and public relations considerations, I would expect that the parties will eventually settle in a manner that allows the National Park Service to take ownership of the trademarks.  We will see if my prediction comes true.  In the meantime, I hope you to continue to enjoy the national parks, whatever they are called!

(© 2016 Foley Hoag LLP) The author wishes to thank Theresa Canzoneri for her assistance in putting together this article.

Comments

"But what makes this case so challenging is the existence of the contract and the fact that the National Park Service apparently allowed prior concessioners to register the same and similar trademarks in their own names. A party can contract away its trademark rights, and that may be what the National Park Service did here."

Exactly. The National Park Service was incredibly negligent, in my opinion, the cost of ignoring its History Division and what were once its fine scholars there. Scholars can write all of the books they want, but still the rank and file need to READ them--starting with the director. Water under the bridge, I suppose, but we should hope the next bridge-builders have more common sense.

An excellent summary, by the way. Thank you, Ms. Huston.


Thank you also Ms. Huston. 


Thank you for taking the time to write this article.

 


The National Park Service was incredibly negligent, in my opinion, the cost of ignoring its History Division and what were once its fine scholars there. Scholars can write all of the books they want, but still the rank and file need to READ them--starting with the director. Water under the bridge, I suppose, but we should hope the next bridge-builders have more common sense.

A sensible sentiment, but misplaced. This was prompted by Congressional Intent in the Concessions Improvement Act of 1998, not through some discretionary Executive action.


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