Friday, February 13, 2009

Hualapai Tribe opens a new front in its long running trademark battle over GRAND CANYON WEST

The "Skywalk"at the Hualpai Tribe's Grand Canyon West
(AP Photo from Flickr)

I previously wrote (link here) about the Trademark Trial and Appeal Board decision in the opposition filed by Grand Canyon West Ranch, LLC (“Ranch”) against the Hualapai Tribe over the Indian tribe’s attempt to register the mark GRAND CANYON WEST. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (June 30, 2008).

By way of background, Ranch, which had its own pending applications for GRAND CANYON WEST RANCH (filed about a year after Hualapai Tribe’s application), opposed registration of the mark on the basis that it was geographically descriptive (and had not acquired distinctiveness) and because of fraud of the PTO. While the TTAB decision determined that the Hualapai Tribe had proven that the mark GRAND CANYON WEST had acquired distinctiveness, the Board nonetheless sustained the opposition based on fraud. Hualapai Tribe has filed an appeal to the Federal Circuit of the TTAB’s decision (Appeal No. 2009-1012). A copy of the Amicus Curiae brief filed by the AIPLA in support of the Hualapai Tribe is available here. Apparently, Ranch did not appeal the Board’s determination regarding acquired distinctiveness.

So while that appeal is pending, on February 12, 2009, Grand Canyon Resort Corporation (“GCR”), the Hualapai Tribe’s federally chartered corporation, filed a lawsuit in the U.S. District Court for the District of Arizona against Ranch. See Grand Canyon Resort Corporation v. Grand Canyon West Ranch, LLC, Case No. 09-cv-00289 (D. Ariz.). A copy of the complaint can be downloaded here. Not surprisingly, GCR is now attempting to stop Ranch from using the mark GRAND CANYON WEST RANCH in connection with its tourism business.

GCR claims that it has used the mark GRAND CANYON WEST in connection tourism related to the Hualapai Tribe’s land on the west rim of the Grand Canyon commonly referred to as “Grand Canyon West” since October 1998. [Note: In the TTAB decision, the Hualapai Tribe claimed use of “Grand Canyon West” back to 1986, but in that case, the party fighting the opposition was the Hualapai Tribe, whereas the plaintiff in this case did not exist until October 1998.] According to the complaint, GCR’s tourism revenue from GRAND CANYON WEST was $2.8 million. [Query– Is that from 1998 to 2000, for the year 2000 alone, or from the time they began operating “Grand Canyon West” including the time when it was operated by the Hualapai Tribe? The amount seems low regardless.]

For a period of time before 2000, GCR (or possibly its predecessor-in-interest) had an agreement with a company name Heli-USA, Inc. to provide helicopter tours at Grand Canyon West. The agreement was apparently terminated in 2000 after a dispute arose between GCR and a principal of Heli-USA, Nigel Turner.

According to the complaint, Turner, through Ranch (another company that he owned or managed) purchased some property that was located on the same road which leads to GCR’s “Grand Canyon West” sometime in 2000 or 2001. At that time, Ranch named the property “Grand Canyon West Ranch” and began operating it a tourist destination – presumably in competition with the tourism services offered by GCR.

GCR seeks a declaratory judgment that is consistent with the TTAB’s decision that GCR’s GRAND CANYON WEST mark has acquired distinctiveness. GCR’s other causes of action are for federal trademark infringement, federal trademark dilution, and common law trademark infringement.

Vegas™Esq. Comments:
The TTAB Opposition was filed back in September 8, 2004, so it’s fair to say that GCR knew about Ranch’s use of “Grand Canyon West Ranch” at least as far back as September 2004 (and more likely knew about it going all the way back to 2001). But instead of taking action back in 2004 to stop Ranch’s use of the mark GRAND CANYON WEST RANCH, GCR waited 4 years and 4 months to take such action. Laches, anyone?

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