41 Pages Posted: 10 Apr 2017 Last revised: 19 Aug 2017
Date Written: April 4, 2017
This article explores a set of trademark cases spanning 30 years that have been unappreciated as sharing a common basic fact pattern: a private concessionaire operates a commercial establishment in a historically famous building – a landmark – and eventually attempts to claim trademark rights in the landmark’s name. These cases range from litigation over Manhattan’s “Tavern on the Green” to very recent disputes over the names of famous hotels in Yosemite and Grand Canyon national parks. Courts and commentators typically analyze these disputes as a question of who holds the “good will” in the name, effectively accepting that the landmark’s name is functioning as a trademark.
This article proposes that a sounder approach begins by questioning whether there are any trademark rights at all, arguing that the landmark name is a “geographically descriptive” term and that consumers enjoying goods and services in the landmark building will continue to have that descriptive meaning as their dominant understanding of the name, undermining any claim for the proper development of trademark “secondary meaning.” The same analysis would apply if a court recognized that the landmark name was simply “highly descriptive” of goods or services delivered in the landmark building: the development of secondary meaning to ground trademark rights is dubious at best. The result is a simpler, faster way to the proper conclusion in these cases: the name and its commercial use stays with the landmark building and whoever is providing goods and services therein.
Keywords: trademarks; intellectual property; landmarks; historic buildings
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