9th Circuit decision regarding rejecting state attempt to claim ownership of private party's trademarks

The Ninth Circuit recently decided a trademark case that, while interesting, involves a fact pattern unlikely to pop up again anytime soon. Department of Parks and Recreation v. Bazaar del Mundo Inc., No. 05-02244-JTM (May 24, 2006), concerned a dispute over the marks CASA DE BANDINI and CASA DE PICO. These two marks were being used by the party that for decades had the concession for restaurants it ran under the same name in San Diego's Old Town State Historic park. Before giving the concession to the defendant, the California Department of Parks and Recreation ("Parks Dept") hadn't used these marks for restaurants or as trademarks for anything else. The Parks Dept argued that it had previously used the names in brochures for the park, but the 9th Circuit held that these were only historic references, not uses as trademarks. The 9th Circuit also held that the Parks Dept's concession agreement with the defendants was merely a standard leasing arrangement, not a trademark license, thus rejecting the Parks Dept's argument that it MUST have owned trademark rights -- or else why would it have purported to license them?

The Parks Dept was apparently upset with the defendant because, after the concession expired and the Parks Dept re-bid it and wanted to award it to someone else, it found out that the defendant (the prior concessionaire) had registered the marks years before, and had taken the position that not only could the new concessionaire not use them, but also that the old concessionaire could continue to use them in another location.