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Yosemite Case Suggests No 'Iconic Names Exception' For TMs

Law360, New York (March 14, 2016, 10:49 AM ET) -- While it has not been as loud and flashy as other recent trademark cases in the news (i.e., the Washington Redskins), the dispute over the use of clearly iconic names associated with Yosemite National Park is fascinating from a trademark perspective. Analysis is difficult, however, because there are presently many more questions than answers. The allegations in the complaint, amended complaint and answer suggest that there are widely differing interpretations of the obligations laid out in a contract between the plaintiff, DNC Parks & Resorts at Yosemite (“DNCY”), and the defendant, the National Park Service (“NPS”). Yet, from the perspective of trademark law, the dispute seems to center around one question: If DNCY is indeed the owner of valid trademark registrations, does it have the presumptive right to prevent others, such as NPS, from using the trademarks? The short answer, assuming no countervailing contractual obligations, is “yes.” There is no question that the trademarks at issue in the dispute are iconic names endowed with great cultural and popular significance. The Ahwahnee hotel and Yosemite National Park: two national treasures bound together in the American collective conscious. Could The Ahwahnee hotel exist anywhere but in Yosemite National Park? Most people would say “no.” If we remove this emotional element, however, the dispute is fairly straightforward with respect to the trademark issues. A landowner leases a site to a tenant who builds a hotel and gives it a name. The hotel becomes famous, and the tenant obtains a trademark registration for the name. The lease subsequently expires or terminates, and the tenant moves to another location. The first building remains, but subsequent tenants would not have the right to use the same name for hotel services, just as a subsequent tenant in a shopping mall would not have the right to continue using the name of a store that had previously occupied the space. The original tenant continues to own its trademark registration, and the exclusive right to use its trademark. The law is clear that the first to register, or the first to use, a trademark is the owner of the trademark. It came as a surprise to many people that “Yosemite National Park” and “The Ahwahnee” are registered trademarks, and that the owner of the trademark registrations is not the NPS. Several trademark registrations for names appearing in the park have existed since the late 1980s. DNCY’s predecessor (Yosemite Park & Curry Co.) owned registered trademarks in connection with hotel and restaurant

Jeff Van Hoosear

Diana Wade

services and other related goods and services. When DNCY took over the management of concessions in the park in 1993, it also acquired many trademark registrations, including registrations for the name and logo for The Ahwahnee hotel. DNCY maintained and renewed these registrations over the years. DNCY filed additional applications for trademarks identical to, or including the names of, restaurants and services in the Park. In 1995, the United States Patent and Trademark Office granted a registration to the mark “Yosemite and Design” for use in connection with “providing recreational activities and facilities in a national park.” In the early 2000s, DNCY filed applications for: “The Ahwahnee” for use on dishware, blankets and clothing; “Yosemite National Park” for use on pens, mugs and shirts; “Curry Village” for use with ice skating services; and “Wawona” for use with restaurant and hotel services. The USPTO issued registrations for all of these marks. Since DNCY is the owner of the registration for the trademark “The Ahwahnee,” it is the presumptive owner of the trademark, and it can keep others, even the NPS, from using the mark in commerce. Pursuant to Section 32 of the Lanham Act,[1] which governs federal registered trademarks, “any person” who uses a reproduction of a mark in commerce without consent of the registrant is liable for trademark infringement. Under the Lanham Act, “any person” includes “the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations or other persons” acting on behalf or with authorization of the United States. The NPS did have an opportunity to prevent the “The Ahwahnee” or “Yosemite National Park” from becoming registered trademarks. Section 13 of the Lanham Act[2] allows “any person who believes that he would be damaged by registration of a mark” to file an opposition at the United States Patent and Trademark Office within 30 days after publication of the mark in the Official Gazette. DNCY stated in its complaint that the NPS brought no oppositions against the Yosemite-related trademarks. In its answer, the NPS admitted that it did not file any opposition. However, NPS also claims that it was unaware of what DNCY was doing and that DNCY had no right under the contract to file any application for trademark registration without its consent. In response to the lawsuit, the NPS has begun changing some of the names. The Ahwahnee hotel is now the “Majestic Yosemite Hotel” and Curry Village is now “Half Dome Village.” However, the NPS will continue to use “Yosemite National Park.” In its complaint, DNCY claimed that they offered the NPS and the new concessionaire a royalty-free license to use the marks for the duration of the litigation. The NPS did not accept the offer. It is speculated that the reason the NPS refused this seemingly generous offer is that the evidence will show that lodging at “The Ahwahnee” hotel, even under another name, will still remain at capacity and still require reservations a year or more in advance. As such, it is really the place and location of the hotel and not the name that attracts the visitors. One of DNCY’s stated goals in pursuing this lawsuit is to receive fair value for the transfer or assignment of the Yosemite-related trademarks to the next concessioner, Aramark. DNCY claims that under its contract with the NPS, the NPS is obligated to require DNCY’s successor to purchase its “operational assets” which include the trademarks. In its answer to DNCY’s complaint, the NPS argued that even if such a contractual obligation exits, the DNCY expert grossly overestimated the value of the trademarks in issue. The NPS claims that goodwill in the trademarks is primarily the result of the use of the trademarks in connection with the government-owned properties within Yosemite National Park. According to the NPS, DNCY’s expert did not take this factor into consideration when preparing the valuation estimate. An interesting wrinkle to the lawsuit was a filing by the NPS at the USPTO on Feb. 26, 2016, which

sought cancellation or transfer of seven trademark registrations in issue in the lawsuit, including the registration issued in 1989 for the mark “The Ahwahnee” for hotel and restaurant services. The NPS bases its claim that DNCY should not own these registrations on two grounds. The NPS claims that the Lanham Act prevents the registration of marks that would create a “false association.” The argument is that “The Ahwahnee” mark was inextricably associated with the NPS, and that a registration owned by DNCY for the mark would create a false association if, in fact, there was no association between DNCY and the NPS. The second basis for the NPS’s action to cancel or transfer the registrations was that DNCY was “expected” to abandon the marks in issue. This particular language is unorthodox, and it will be interesting to see DNCY’s response, which is due on April 6, 2016. Although the parties and the subject matter of this dispute are certainly unusual, the trademark issues are not particularly complex. As the owner of the trademark registrations, DNCY is the presumed owner of the marks and may keep others from using those marks in commerce — even if one of those marks happens to be “The Ahwahnee.” Many of the questions raised in this controversy appear to turn on contractual language or provisions that the public may not ever get to review. This case clearly demonstrates, however, that contracting parties should address the ownership and registration of all relevant trademarks in their negotiation. Even “iconic” marks are not exempt from the Lanham Act. —By Jeff Van Hoosear and Diana Wade, Knobbe Martens Olson & Bear LLP Jeff Van Hoosear is a partner and Diana Wade is an associate in Knobbe Martens' Orange County, California, office. The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice. [1] 15 U.S.C. §1114. [2] 15 U.S.C. §1063

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