The battle over rights to use Yosemite National Park names rages on. Following a suit filed last September for breach of contract and to avoid a possible trademark infringement claim by former park concessionaire, Delaware North, the National Park Service (NPS) changed the names of Yosemite park attractions, including the well-known Ahwahnee Hotel and Curry Village. The changes, made on March 1st, were met with outrage by park visitors and aficionados alike who equated Delaware North’s actions to “corporate tricks” and petitioned the New York-based concessionaire to release these names back to NPS and the public at large. One petitioner, a media company founder, resorted to a more forceful tactic to get Delaware North’s attention by purchasing six web domain names, similar to Delaware North’s names and promised to give them to anyone who was against Delaware North in this litigation. By giving away these names, the reputation of Delaware North would most likely be damaged by new domain name owners. California state assemblyman, Ken Cooley, used another type of forceful tactic. He proposed a bill that would ban park concession contracts from transferring ownership of attraction names and disqualifying companies that pursued their ownership from bidding. Delaware North responded to these tactics by criticizing NPS for taking such drastic action because it offered NPS the ability to freely use its trademarked Yosemite Park names for the duration of litigation.

Additionally, on February 26th, about a week before the name changes, the Interior Department filed a petition with the Trademark Trial and Appeal Board (“TTAB”) to cancel Delaware North’s DNC Parks and Resorts, Inc. (“DNCY”) trademarks. The marks in question include “The Ahwahnee,” “Curry Village,” and “Yosemite National Park.” The Interior Department claims that DNCY’s trademarks create a “false association” with the names used by NPS. Essentially, DNCY’s use of the marks would presume a connection to NPS because of NPS’s fame and reputation. The Department also asserts that DNCY abandoned its marks without the intent to resume using them after the concession contract with NPS expired. Lastly, the Department claims that DNCY’s marks dilute the “Yosemite National Park” mark because of how similar the marks are; this effectively impairs the distinctiveness of the “Yosemite National Park” mark. In order for the mark to be diluted by blurring, the TTAB considers six non-exhaustive factors, which depend on affirmative findings of the first two factors: the similarity between the trademarks and whether the similarity or association impairs the distinctiveness of the famous mark (i.e. “Yosemite National Park). However, in order for the famous mark to be diluted by tarnishment, the famous mark must be linked to a product of poor quality, or portrayed in an “unwholesome or unsavory context,” which results in the public associating the poor quality product with the famed product. Overall, it is unlikely the TTAB will find that the DNCY’s marks tarnish the Park’s name. The Department concludes its petition to the TTAB, by requesting either an outright cancellation of DNCY’s marks or a transfer of its marks to NPS. It asserts that DNCY’s reliance on the registered marks is simply a tactic to inflate their demands for compensation in its pending breach of contract suit against the Unites States. The Department also claims that DNCY’s registration is damaging to NPS. DNCY responded with a motion to suspend proceedings, claiming that once the court determines the fair market value of the Yosemite-related marks and DNCY’s registrations for purchase by new concessionaire, Aramark, the TTAB proceedings will be moot.

The marks of “Yosemite National Park,” “The Ahwahnee,” and “Curry Village” were registered by DNCY in 2003 and each mark is incontestable. The three marks represent Yosemite attractions that have been operating for over twenty years under the National Park Service and are designated as National Historic Landmarks. The concern for the future of these marks is legitimate; however, questions remain in the reading of the NPS-DNCY concession contract as to what type of property was transferred between the parties and whether the intellectual property of these attractions was part of the transfer. Determinations will be made but the ultimate question remains as to which forum will have priority in deciding this matter, especially in light of the Supreme Court’s ruling in B&B Hardware, Inc.