After several hundred protestors turned out in Park City, Utah to fight Vail Resorts attempt to register the trademark “Park City”, the business group has decided to abandon its trademark application. This is a change of course for the Colorado based ski resort ownership, which had been pursuing trademark protection on its recently acquired Utah asset, Park City Mountain Resort. Local residents are now relieved to know that the name of the town will not be trademarked and local businesses will have less concern over branding conflicts.
This trademark standoff began in 2014 when Vail Resorts purchased Park City Mountain Resort from Powdr Corp. As part of the purchase, Vail Resorts also acquired an already filed trademark application on “Park City”. Powdr filed the initial application in International Class 41 for “providing facilities for skiing and snowboarding.” After the residents of the ski town learned of the trademark application and concern grew, Vail Resorts released a statement saying that it was common practice to file trademark applications to protect the brand of ski resorts.
The citizens didn’t feel the same way, however, and many local businesses feared they would be prevented from using the name of their town in branding and marketing. While the trademark application was limited to services for “providing facilities for skiing and snowboarding”, with winter sports being such a huge part of the Park City economy, local businesses may have been justified in fearing this corporate push to control use of the town name.
Businesses within a geographic region may ask the question, “Can a company or an individual receive trademark rights to a geographic location?” Is it possible for someone to obtain a trademark registration for the name “New York” for example and begin excluding others from using that as a source identifier?
Legal norms regulating the registration of marks dictate that no trademark will register that “Consists of a mark which … (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.” So if a person was in New York, sold pizza in New York and tried to register “New York Pizza”, their application will likely be rejected for being geographically descriptive. This is the rejection that Powdr received when it first tried to register “Park City”.
After Vail Resorts took over prosecution of the application, it submitted arguments and evidence with the USPTO that its use of the mark PARK CITY had acquired secondary meaning, or become distinctive, meaning that consumers associated the term Park City with Park City Mountain Resort, and that the geographically descriptive rejection should be removed. After some back-and-forth with the trademark examining attorney, Vail was able to convince the USTPO that the PARK CITY mark should be allowed registration.
This is when the locals really became vocal in opposition. Their protests were strong enough to cause Vail to abandon the application, saying the trademark application had become a distraction that took away from other, more important issues between the resort and the town.
Although Vail Resorts will forego a trademark registration on Park City, the group will probably identify other trademark and branding opportunities. As illustrated here, securing trademark rights requires careful consideration, including often considerations beyond just whether or not a business can register its marks. If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.