As we reported last year, the National Park Service suffered an odd embarrassment when it was forced to acknowledge that it may have unwittingly frittered away some valuable trademarks associated with the Yosemite National Park.
The popular park had to change the names of several iconic sites due to trademark concerns after awarding a $2 billion federal contract to a new concessionaire. For example, the Ahwahnee Hotel, built in 1927, became the Majestic Yosemite Hotel in March of this year when Aramark took it over from DNC Parks & Resorts. Curry Village, which has borne that name since it opened in 1899, was renamed Half Dome Village, Badger Pass Ski Area, which became California’s first ski resort in the 1930s, was renamed the Yosemite Ski & Snowboard Area and Yosemite Lodge at the Falls was renamed Yosemite Valley Lodge. The Wawona Hotel will become Big Trees Lodge.
Luckily, the Park drew the line at the previous concessionaire’s trademark claim to “Yosemite National Park.”
The names were changed to eliminate potential trademark issues with DNC, which lost a $2 billion bid last year to renew its contract. The new contract was granted instead to a subsidiary of Aramark.
In an attempt to avoid similar trademark disasters in the future, Californian has taken the unusual step of legislating around the problem. As Michael A Grow of Arent Fox LLP reported in a post entitled California Heritage Protection Act,
On September 21 2016 California adopted a new law that prohibits California State Parks from granting trademark or service mark rights in park names or names associated with historical, cultural or recreational resources to any businesses operating within the parks. As of January 1 2017, any contract that violates this provision will be deemed unenforceable under California law.
This law grew out of a recent contract dispute involving federally owned Yosemite National Park, which is located in the Sierra Nevada Mountains east of San Francisco, California. For many years, privately owned DNC Parks and Resorts of Yosemite Inc provided lodging, restaurant and other services to park visitors under a contract with the National Park Service (NPS). In 2015, however, the NPS sought new bids and awarded a 15-year contract allowing Yosemite Hospitality Inc, a subsidiary of Aramark Corporation, to replace DNC as the provider of the services. DNC then filed Civil Action 15-1034C in the US Court of Claims, accusing the US government of breach of contract and contending that it was entitled to compensation for various trademarks and other intellectual property it had been forced to buy as a precondition to operating as a concessionaire in Yosemite.
According to DNC, it had been compelled by the US government to purchase certain trademarks and service marks formerly owned by Curry Company in 1993. Curry had operated concessions in Yosemite under these marks for more than a century. Among these were the federally registered marks THE AHWAHNEE, CURRY VILLAGE and WAHWONA, all of which were used for hotel or lodging services, and BADGER PASS used for a ski resort. DNC claimed that it had been required to pay $61.5 million (equivalent to $115 million today) for the marks and that NPS was now contractually obligated to require Aramark to purchase them from DNC.
The amount requested by DNC for the intellectual property was $51.2 million. Although most trademarks used continuously over a significant period of time appreciate in value, the NPS refused to comply with this demand, accused DNC of refusing to negotiate and claimed that the value of the marks was closer to $1.6 million. As a further measure, the US Department of the Interior filed petitions to cancel DNC’s registrations on false suggestion of connection and abandonment grounds.
In the midst of the dispute, DNC sent Aramark a letter stating that if it used DNC’s federally registered trademarks without paying for them, it would be liable for trademark infringement. However, DNC offered to let NPS maintain the names during the pendency of the lawsuit. Perhaps to bolster its abandonment claims, the NPS has taken down signs bearing the DNC marks and new names are now being used. For example, the Ahwahnee Hotel is now operating under the name Majestic Yellowstone Hotel.
The NPS actually owns the land and buildings operated under the marks. However, the NPS has never claimed that it owns the DNC’s registered marks, which have been used openly and without objection for decades. Similarly, NPS never licensed DNC or any prior owner to use the marks nor has it ever offered or sold any goods or services under the mark. Thus, the marks identify and distinguish the goods and services of DNC, not the government.
For the rest of the story, check out No more trademark giveaways