Last week, a trademark dispute between the National Park Service and DNC Parks & Resorts at Yosemite, Inc. resulted in the name change of many beloved landmarks in Yosemite National Park. So, how did it happen?
The Concession Contracts
DNC is a concessionaire that provides lodging, food and beverage, and entertainment services to tourists that visit Yosemite National Park. This is a pretty common situation in our National Parks. The Park Service awards contracts to third parties who manage hotels, food service, and other operations in the parks.
The Park Service awarded the Yosemite concession contract to DNC in1993. Prior to 1993, the Yosemite Park & Curry Company provided those services. In fact the Curry Company in various forms provided concessions in the park for more than 100 years. During that time, the Curry Company made improvements and ran concessions that became iconic to park visitors, including the Ahwahnee Hotel, the Wawona Hotel, and Curry Village. While Curry Company received compensation from running the concessions; the physical improvements belonged to the National Park Service in accord with the contracts between the Park Service and Curry. When DNC took over operations in 1993, it purchased from Curry Company all property related to the concessions including things like customer lists and, according to DNC, intellectual property. However, the contract between Curry and DNC refers only to “other property” and does not list any intellectual property assets.
Fast forward to the present. With DNC’s contract term ending, the Park Service issued an RFP for the Yosemite concession. DNC and Aramark submitted proposals, and Aramark won. Under the contract between DNC and the Park Service, Aramark must acquire from DNC “all other property used or held for use” in operating the concessions. DNC informed the Park Service that the property used in concession operations includes Yosemite-related trademarks it values at more than $51 million.
Who Owns A Name, And What Is It Worth?
It turns out that beginning in 2003, DNC started registering trademarks related to many attractions in Yosemite, including Awahnee Hotel, Wawona Hotel, Curry Village, and Badger Pass. It is these registered trademarks, apparently applied for without notice to the Park Service, that DNC claims are worth more than $51 million. The Park Service balked at both DNC’s ownership of the trademarks and their high valuation, and refused to negotiate the issue. In response, DNC sued the Park Service for breach of contract and the Park Service brought cancellation proceedings against DNC in the Trademark Trial and Appeal Board.
DNC claims that the Park Service violated its contract with DNC when it granted Aramark the concession contract without requiring it to pay $51 million to DNC for the trademarks. The Park Service claims that the trademarks should be cancelled because they create a false association – in other words, if DNC uses the marks, people will think it is the Park Service – or because DNC has abandoned the marks because, without the concession contract it will not use them. Otherwise, the Park Service argues, the marks should be transferred to the Park Service.
Lessons In Contract And Trademark
The dispute does not appear to be going away anytime soon and it will be very interesting to watch. Beyond a little sadness and nostalgia brought about by the name changes announced this week, we can take away two lessons.
First, when transferring intellectual property rights: always be clear about what you are transferring. Time and again we see litigation happen when contracts are not clear about what rights exist and are transferred. Here, the original contract between Curry and DNC does not expressly list particular intellectual property rights, which throws into question what rights, if any, existed or were transferred initially and what later rights are contemplated under the later contracts. Remember how this kind of chain-of-title issue made a difference in the Happy Birthday case.
Second, watch out for trademark filings! Here, DNC apparently sought and received trademark registrations to iconic Yosemite landmark names without the Park Service knowing about it. Had the Park Service known, it could have opposed the applications and, potentially, prevented the registrations from happening. While the office has examiners who review applications and question applicants, you cannot rely on the examiners alone to protect your interests. Register your own marks, of course, but as soon as your IP protection budget allows, you should discuss with your IP attorney ordering one or more watch notices, which will provide you with early notice of potentially harmful marks you may want to consider opposing.
Of course there are some intriguing issues relating to whether these trademarks should have been registered in the first place. We’ll be podcasting about this case in the coming weeks. Join us!