If the federal government changed the name of Yosemite National Park to something else, would it change the beauty of the natural setting, the breathtaking grandeur of the vistas or even the popularity of visiting the national park amongst tourists? Probably not.
And even though it seems unlikely that we’ll have to start referring to Yosemite as “That Pretty Valley in Central California with the Big Rock Mountains” (or something equally silly), it makes one wonder how the National Park Service became embroiled in an unexpected battle over rights to several registered trademarks including the trademark for “Yosemite National Park.”
The problems started last year when the Park Service awarded a $2 billion federal contract to a new concessionaire for the operation of the lodging, horseback riding, fishing, and other activities in Yosemite. The new contract was awarded to a division of Aramark. Previously, the contract had been for several decades by DNC Parks & Resorts, a subsidiary of Delaware North, and DNC had the foresight to apply for registration of numerous trademarks for some Yosemite’s most iconic lodging facilities, including the Ahwahnee Hotel. Oddly enough, DNC even applied for and obtained registration of the mark “YOSEMITE NATIONAL PARK” [USPTO TM Reg. No. 2715307] in 2003 for apparel, coffee mugs, pens and stickers.
The Park Service disputes DNC’s right to use the mark and has refused to recognize the registration as enforceable. However, the Park Service has conceded the issue as to the park’s popular lodges and ski areas effective March of this year the well-worn names will change when Aramark takes over as follows:
- The Ahwahnee Hotel will become the Majestic Yosemite Hotel;
- Yosemite Lodge at the Falls will be renamed Yosemite Valley Lodge;
- The Wawona Hotel will become Big Trees Lodge;
- Badger Pass Ski Area will become the Yosemite Ski & Snowboard Area; and
- Curry Village will be renamed Half Dome Village.
Yosemite Superintendent Don Neubacher has admitted that the names are being changed to eliminate potential trademark issues with DNC. “While it is unfortunate that we must take this action, changing the names of these facilities will help us provide seamless service to the American public during the transition to the new concessionaire,” Neubacher said. “Yosemite National Park belongs to the American people. This action will not affect the historic status of the facilities, as they are still important cultural icons to the National Park Service and the public.”
Not willing to leave without a fight, DNC field suit against the United States in September and has asserted ownership and the right to payment for trade names, trademarks and other intellectual property. Further, DNC claims that it paid handsomely for the right to sue (and, presumably, to register) the trademarks when it took over the contract itself in 1993. However, the government denies DNC’s allegations and has argued that it neither gave permission nor even knew about DNC’s registration applications.
Why It Matters. It seems unusual for the federal government to take the position that it “didn’t know” about the trademark registrations when the U.S.P.T.O. is an arm of the federal government and it was the U.S.P.T.O. that issued the registrations. Nevertheless, registration of a trademark is not required in order to use it or even prevent others from infringing it. Ownership can be established based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, including,
- Constructive notice to the public of the registrant’s claim of ownership of the mark;
- A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries; and
- The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.