A USD$12M Lesson in trademark registration – Wawona-ship of Majestic Yosemite TradeMarks returned to National Park
We all learn through bitter experience. Sometimes we have the opportunity to learn through the bitter and expensive experience of others. Delaware North Inc has taught both Aramark and the United States Government the very expensive lesson that a trader should always register a trademark.
Following a dispute between concession operators Delaware North Inc and Aramark, the trademarks in iconic locations, branding and slogans at Yosemite National Park will be returned for use at the Park.
The dispute arose when Delaware North Inc lost a USD $2 billion contract it had held since 1993 to run concessions for the Park’s hotels, restaurants and outdoor activities. After the Park had awarded the contract to Aramark in 2016, it was discovered that Delaware North had applied for trademarks over famous locations in the Park. Delaware had applied for the marks when it learned the Park was going to open bidding for the contract.
Since 2016, popular tourist attractions like the Awahnee and Wawona Hotels have been re-named to the Majestic Yosemite Hotel and the Big Trees Lodge. Delaware North were thorough in their trademark registration applications, also filing for Yosemite Lodge, Badger Pass, Curry Village and even the name of the Park itself.
The dispute has recently reached a settlement, with Aramark paying USD $8.16 million and the United States Government paying USD $3.84 million for the names, logos and branded content held by Delaware North.
Under the Park’s 2016 contract with Aramark, those trademarks and service marks will be assigned back to the Yosemite National Park Service for no fee at the end of Aramark’s contract.
Lessons on Ownership – getting your rights right from the start
Yosemite National Park’s issue was entirely avoidable and there are lessons to be learned here for businesses of all kinds.
When it comes to location trademarks, the person who owns the location should own the mark. A trade mark can be used a badge of origin, in the sense that it indicates a connection in the course of trade between goods and the person who applies for the trade mark (the owner) – so why shouldn’t a location owner have the rights to use the name of the location as a badge of origin?
We wonder why it is that the Park did not register these marks under its own name in the first place.
Andrew Musgrave, a leading intellectual property barrister with Hemmant’s List in Brisbane has previously run location trade mark matters, appearing as counsel in the Q1 Case and the Cairns Harbour Lights Case.
Mr Musgrave says, “it is surprising that the US Trade Marks Office was prepared to register this trade mark in anyone’s name. A mark like Majestic Yosemite Hotel seems overly descriptive and, absent acquired distinctiveness is likely to be rejected under the Australian Trade Marks Act section 41.”
In each case, the use of a location trademark will come down to whether the use of the mark can distinguish the owner’s goods and services from others. The Trade Marks Act provides that most marks consisting wholly of a sign ordinarily used to indicate the geographical origin of goods or services will not be inherently adapted to distinguish.
“On the one hand YOSEMITE describes the geographic location, while the addition of the word MAJESTIC is not likely to be sufficiently distinctive to cure that defect. Perhaps if the trademark included a logo, things might be different” suggests Mr Musgrave.
Indeed, a common way of distinguishing a locational trademark is to combine it with a unique logo or device. Common examples of this include the marks registered for sports clubs.
The requirements for distinctiveness can also be overcome where there is no reasonable prospect of the goods or services for which the mark is registered originating from the location. For example, registering SALZBURG DRYCLEANERS in Australia in respect of dry-cleaning services.
Significant prior evidence of use of the location trademark can also be used to establish distinctiveness. By way of example, it was widely reported in the US that the name changes implemented by the Yosemite National Park in 2016 did not sit well with Park visitors.
Mr Musgrave notes in that regard that what saves the Yosemite locational marks and contributes to their value to the Park is their length of time in use. Mr Musgrave says the marks may have acquired distinctiveness.
Beware the TradeMark Troll
This is not the first time Delaware North has registered a trade mark for the name of a piece of iconic US-government-owned property.
TradeMark Trolls are entities that intentionally register marks that have some identified value so that they can later be sold at exorbitant prices to a prospective user of the trademark. An example of this occurred in 2014 following the Malaysia Airlines Flight MH17 tragedy, when a Malaysian company filed with IP Australia to register the trade mark “MH17” in the hours after the plane crash.
In Australia, the Trade Marks Act contains provisions allowing trade mark registration opposition where a mark is registered by a troll. However, like any litigation, it is best to avoid the fight getting your rights right from the start.
If you believe your IP rights are being infringed or you are accused of breach of brand rights, call EAGLEGATE today for a free initial consultation.