Magazine article Parks & Recreation

Law Review: Park Concessionaire Restaurant Trademark

Magazine article Parks & Recreation

Law Review: Park Concessionaire Restaurant Trademark

Article excerpt

Court case examines who established legal ownership of restaurant trademarks.

In hindsight, the trademark controversy described herein may have been avoided if the original concession agreement and later extensions expressly recognized the state agency's "ownership of any marks developed by the concessionaire through its own goodwill during the term of the agreement." While the original concession agreement was silent on intellectual property rights, 30 years later, a new concession contract did expressly address the issue with the following provision:

Any names, logos, trademarks and/or copyrights developed during and/or pursuant to this contract which will in any way associate with, identify or implicate an affiliation with California State Parks, shall be approved by State, shall belong to State upon creation, and shall continue in States exclusive ownership upon termination of this contract.

Accordingly, to avoid a trademark controversy similar to that described below, agencies may want to have local counsel consider including similar language as a standard provision in concession agreements where appropriate.

What's in a Name?

In the case of Department of Parks & Recreation v. Bazaar Del Mundo, 448 F.3d 1118 (9th Cir. 5/24/2006), the Department of Parks and Recreation for the State of California (the "State") asked the federal court to issue an order prohibiting Bazaar del Mundo from using the registered trademarks CASA DE BANDINI and CASA DE PICO in the operation of restaurants located outside the boundaries of the Old Town San Diego State Historic Park ("Old Town").

The specific issue before the federal court was, therefore, whether the State or Bazaar del Mundo had established legal ownership of the trademarks for these restaurants.

In 1968, the State of California had acquired fourteen acres of land to establish Old Town, including the two properties at issue, Casa de Pico and Casa de Bandini, both built in the 1820's. On June 21, 1971, the State and Bazaar del Mundo entered into a "Concession Agreement" to develop and operate "a Mexican-Style Shopping Arcade in the Casa de Pico Buildings in Old Town for a fiveyear period, in return for rent and a percentage of receipts." Between 1972 and 2001, the Agreement was amended and extended several times, allowing Bazaar del Mundo to extend its concession activities into the "Bandini House - Cosmopolitan Hotel" as well as "Lino's, Hamburguesa, Casa de Pico, and the Casa de Bandini Restaurants."

In 1985, Bazaar del Mundo applied to the United States Patent and Trademark Office ("USPTO") and the Secretary of the State of California, to register the trademarks CASA DE PICO, CASA DE BANDINI, LINO'S, and HAMGURGUESA for restaurant services. The trademarks were published and received no opposition from the State or any other party. Accordingly, the USPTO granted federal registration to Bazaar del Mundo for the mark CASA DE BANDINI on July 16, 1985 and for the mark CASA DE PICO on October 8, 1985.

Before the latest extended Concession Agreement with Bazaar del Mundo was scheduled to expire (June 30, 2001), the State initiated an open bidding process for the next concession agreement. In connection with its request for proposals, the State prepared a sample contract which now included a provision that would govern intellectual property rights. Bazaar del Mundo submitted a bid for the concession, but objected to the intellectual property rights provision.

On October 17, 2003, the State issued a "Notice of Intent to Award" the concession to Delaware North, Inc., a Delaware corporation. In response, Bazaar del Mundo filed a "Protest of Bid Award." While the administrative appeal was pending, the State allowed Bazaar del Mundo to continue operating as a holdover tenant in Old Town. After Bazaar del Mundos appeal was denied, the State issued a "Notice to Vacate" the premises effective March 15, 2005. Delaware North took over the concession on June I1 2005. …

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