The Vail Resorts ‘Park City’ dispute prompted run on trademarks | ParkRecord.com

The Vail Resorts ‘Park City’ dispute prompted run on trademarks

Firms with the city’s name in moniker seek to protect their brands

by Jay Hamburger
THE PARK RECORD

The Market at Park City is one of the places that sells Park City Coffee Roaster products. The coffee company wants to secure a federal trademark for the Park City Coffee Roaster name. Other businesses that use the name of the city in their moniker made trademark moves this year amid a fiercely contested dispute regarding a bid by Park City Mountain Resort owner Vail Resorts to trademark the name Park City.

The Park City Film Series last spring quietly filed a federal trademark application in an effort to secure the rights to the name of the popular showcase of independent productions shown at the Park City Library, complete with the words "Park City."

It was in early May, just before an unrelated trademark application, submitted to the U.S. Patent and Trademark Office by Park City Mountain Resort's Colorado-based owner, Vail Resorts, caused havoc in Park City. Vail Resorts sought a trademark on the name 'Park City' as it relates to a mountain resort, stirring a fierce opposition movement, an uproarious protest outside of the Marsac Building and high-level talks between the Colorado firm and City Hall officials. Vail Resorts eventually bowed to the opposition, abandoning the efforts to secure the 'Park City' trademark in July.

In the months since Vail Resorts ended its efforts, though, other businesses, government entities or not-for-profit organizations with the name of the city in their moniker have filed paperwork with the Patent and Trademark Office seeking trademarks. Trademark applications with the name of the city as part of a name have been regularly filed over the years without controversy, but the attention the Vail Resorts' application drew was highly unusual and has spurred some of the year's filings.

The Film Series has an attorney on its board of directors who noticed the trademark application filed by Vail Resorts prior to it becoming a community cause. Katharine Wang, the executive director of the Film Series, said the organization moved forward with its own trademark application in response. It would be "devastating" if the Film Series, dating to 1999, was someday forced to change its name based on a trademark issue, she said.

"It was something we had not thought about until Vail's application, to trademark the name," Wang said in an interview, describing that the Film Series' leadership did not want to risk losing the name. "Let's not find out at the back end of this by getting a cease-and-desist letter six months from now."

The Patent and Trademark Office in late November granted a trademark to the organization for the name "Park City Film Series." The trademark protects the Film Series from another group using the same name as it relates to entertainment and educational programs, according to the federal paperwork.

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"We were created by the people of Park City . . . We came out of Park City. We are Park City in that sense," Wang said.

'Park City' disputed

The PCMR move to secure a trademark for the name 'Park City' was started prior to the acquisition of the resort by Vail Resorts, which purchased the property from Powdr Corp. in 2014 as part of a settlement of a lease lawsuit involving the Colorado firm, Powdr Corp., and the owner of the land underlying most of the PCMR terrain.

The former owner sought a trademark on the name "Park City," but Powdr Corp. encountered resistance from the Patent and Trademark Office since it wanted the trademark to cover a broad range of services. Vail Resorts later narrowed the breadth of the trademark application so it was centered on the core business of a mountain resort.

The Patent and Trademark Office in May published the application for opposition, an important step in any bid for a trademark. At that time, the existence of the application became widely known in Park City. The idea that a corporation like Vail Resorts could secure a trademark for the name of the community, even if it was a narrowly tailored one, infuriated certain segments of Park City.

Opponents argued that Vail Resorts could someday threaten legal action against other businesses that use the name of the city if a trademark was granted even as the PCMR owner pledged it would not move against the many Park City-branded businesses in the area. Other people who were displeased saw the trademark application as a corporate grab of the name of the community in a place that is proud of its independent streak. Approximately 100 individuals, businesses or government entities sent submittals to the Patent and Trademark Office indicating they were considering a formal opposition to the application. City Hall was among those that considered a formal opposition.

The dispute propelled Vail Resorts into a high-stakes round of talks with City Hall leaders, culminating in a July meeting between delegations from Park City and Vail Resorts at the Marsac Building. Up to 250 people demonstrated in opposition to the trademark application in a parking lot outside as Mayor Jack Thomas, Vail Resorts CEO Rob Katz and other officials from the two sides met in a closed-door meeting.

Based on displeasure with the trademark application, City Hall by then had indicated it would review whether it would further pursue a partnership with Vail Resorts meant to fund infrastructure upgrades at PCMR. Vail Resorts had by the time of the meeting said it wanted to be treated fairly as it sought the trademark. Vail Resorts abandoned the trademark application shortly after the meeting at City Hall, saying it had become a distraction from more important issues in the community.

Trademark applications brewing

Park City Coffee Roaster in late July, near the height of the dispute involving the 'Park City' trademark, submitted an application with the Patent and Trademark Office for its name.

The company started in 1997 and had not sought a trademark until the tensions of 2016 about the name "Park City." Park City Coffee Roaster had once operated at PCMR but lost the business there when Vail Resorts, which has a partnership with Starbucks, acquired the resort. Rob Hibl, who co-owns Park City Coffee Roaster with his twin brother, said there was uneasiness as Vail Resorts pursued the trademark application since the name of the community is in the moniker of their business. He said Park City Coffee Roaster "did feel some reservations because of what Vail was doing."

"We didn't trust them, to be honest with you . . . They're in it for the almighty dollar," Hibl said.

Park City Coffee Roaster and the Park City Film Series are two examples in a run of trademark applications this year that include the name of the community. Park City Lock & Key filed an application with the Patent and Trademark Office in October while Park City Sport submitted its trademark paperwork in August. City Hall itself, meanwhile, filed applications seeking trademarks for names and logos associated with the municipal government. The City Hall applications, filed as a result of the dispute with Vail Resorts, include the "Park City 1884" logo, the "Park City Ice Arena" name and the "Park City Golf Club" name. The Patent and Trademark Office has just begun processing the applications.

The Patent and Trademark Office has questioned the Park City Coffee Roaster and Park City Sport applications based on the names being "primarily geographically descriptive." Neither has won a trademark. The Park City Lock & Key application is in the early stages of processing.

Park City Coffee Roaster anticipates it will secure the trademark during the first quarter of 2017. Hibl said businesses evolve over time and there is a concern that Vail Resorts could eventually launch a coffee company to serve its properties.

"What we wanted to do is stop them from doing that with the words 'Park City Coffee Roaster,'" Hibl said, adding, "This was our way of stopping that in the tracks."