All this talk about the UP trademark saga, Lionel lawsuits, other manufactures’ cave-in to UP, etc., finally got me to doing a little surfin’ for more info. Found this site “Trademark Center” http://www.tmcenter.com/tmsearch.htm
that links to the U.S. Patent Office website (http://www.uspto.gov/), where you can search active and abandoned trademarks, patents, etc. Did some quick searching and found the following:
Searched for “Union Pacific”, “Southern Pacific”, “Western Pacific” and others, and found that UP possibly hasn’t received final registration of some of these old trademarks - system shows several that list UP as the applicant as being close to or in the “published for opposition” phase, or “A request for an extension of time to file an opposition has been filed”. These are applications for trademarks on goods and services such as mugs, shirts, jewelry, models (including model trains) etc, etc, etc. Perhaps UP has jumped the gun on threatening to enforce trademarks for particular goods and services not yet completely through the process - and Lionel and Athern are calling UP’s bluff ??
There’s a gentleman in Raleigh, NC who has recently applied for trademarks (specifically for model trains and accessories) for “C&O”, “B&O”, “Western Maryland”, and many other fallen flag railroads. The applied-for “Mark” is simply the name of the railroad on a plain background, no designs, artwork, or anything else. Most (if not all) of this gentleman’s applications that I saw are still very early in the process, if even assigned to an examining attorney yet. Application dates are mostly late 2003/early 2004.
Another individual attempted to trademark the PRR keystone and “RPR THE PENNSYLVANIA RAILROAD COMPANY” several years ago, but was denied when he failed to respond to an Office action request. The same NC gentleman from above is trying for “PENNSYLVANIA RAILROAD” in plain type now (and specifically for model trains and access.)
Excellent argument in my opinion. By the non use standard no fallen flag should be able to be claimed by anyone, thus falling into the public domain. How is a guy in Maryland going to use and defend that stuff, he has no business with those names.
Union Pacific Railroad Company has filed a complaint in U.S. District Court for the District of Nebraska naming as defendants Lionel, L.L.C. and Athearn, Inc. The defendants are model railroad manufacturers who have refused to enter into licensing agreements for their commercial use of Union Pacific trademarks. The complaint alleges claims of infringement of federally registered trademarks, trademark dilution under § 43(c) of the Lanham Act, Unfair Competition under § 43(a) of the Lanham Act, common law trademark infringement, unfair competition, and violation of the Nebraska Uniform Deceptive Trade Practices Act.
Union Pacific believes it is imperative that it defends its trademarks against unauthorized use by Lionel and Athearn. Both companies repeatedly have rejected Union Pacific’s lawful licensing requests.
Not only have Lionel and Athearn failed to license use of Union Pacific’s historic trademarks, they have violated trademark protection laws by producing new models featuring Union Pacific’s latest “Building America” branding and advertising campaign.
Union Pacific notes that Lionel has a very active licensing program that protects its own trademark. It is difficult to understand why Lionel and Athearn believe they are above the law, while more than 60 other manufacturers, including many model railroad manufacturers, have licensed their Union Pacific products in accordance with the law."
UP is claiming deception and unfair competition, here is a link to what I
The part of the quote that GPJ68 cited that gets my attention is this:
If I read this right, then UP can (and apparently has) file for trademarks on the fallen flags. If it then subletters its cars for these flags (which we know UP is doing), it’s clearly using the trademark & it is no longer abandoned, so they can indeed charge royalties for the use of the fallen flags.
It’s clear that at one time the fallen flag trademarks were indeed abandoned. While I don’t think anyone will be liable to pay for use of those logos during the period of abandonment, it’s going to be interesting watching the UP lawyers argue that they have “… regained exclusive and active use …” of the logos. If the court finds in UP’s favor, Lionel & Athearn may have to pay damages indeed.
I doubt that there will be any kind of penalties for past use if the ruling is in UP’s favor. I also think that there could be seperate rulings for the current trademarks and the fallen flags. The argument for the currrent holds a lot more water in my mind. That raises the question: if UP loses the claim to control the fallen flags, will they still think that this is worth doing?
I still don’t think that there’s anything deceptive or damaging about what the model manufacturers are doing. The truth is that they are realy glorifing all of the railroads, and should be left to do so in peace.
I agree, there’s nothing decpetive or damaging about painting a model of a UP train in UP’s colors. But a manufacturer offering hundreds of copies of these models already painted is totally different from your or I doing it in our homes later on a single copy.
As I read the quotes from GPJ68, it seems like UP has a strong case. Thank God I’m not going to be the judge on this one; the mountain of paper is going to take a few acres of rainforest to supply.
UP might have a strong case for their own trademark but for the “Fallen Flags” it seems rather weak. But then I’m only trying to use a little COMMON SENSE which does not seem to exist in the judicial system anymore.[censored]
I think that UP really jumped way to late. what about the smack with MSTS? They wanted trademark $$ when Microsoft was writting MSTS. UP bit off more than they could chew. The Sunset Ltd has more bottlenecks and accidents than any other mainline. I think that they should concentrate on getting the goods to Americans rather than wanting $$ for a stupid logo which I think it is as ugly as HELL. the UP paint scheme needs some creativity added to it… It is puke yellow, bland grey and some red striping to “enhance”…BAH…Lionel has been making trains longer than most of us have been alive…and UP is just NOW asking for $$…Sorry guys…I guess I will not purchase ANYTHING marked with the UP logo.
The trademark and copyright system is not at fault here. Yes, the laws as interpreted by judges over the many years (patent and copyright protection is written into the original constitution) is confusing, but hey that’s job security for some.
Trademarks: Union Pacific owns the right to use UP, UP logos, etc. because certain marks are so well-known and in use for so long that like Ford, GM, etc. UP owns the right to use the mark and it is incontestable and an exclusive right, unless abandoned. However, a famous mark is never abandoned. The mark itself is not owned, but the right to use the mark inconnection with a thing or service to identify the source of the thing or service is. Lionel is making money off of UP efforts to make the mark mean something; famous train service.
As UP doesn’t make toy trains but actually provides a service; real train transportation, etc, it seems that LIONEL should be able to use the mark for TOY trains. Who would purchase a Lionel train thinking, mistaking and confused that in fact UP was making the toy and then buy it for that reason.
However, here is the catch. The mark itself is being used by LIONEL to sell toy trains; Lionel would not use the UP mark if it stood for Union Pudding and was instead a maker of chocolate goop.
Lionel used UP and related logos (those may be copyrighted too.) because of the efforts of UP in making that mark a well-known and famous train transport mark and that as we say becomes UP’s intellectual property value as well as its valuable good will value belongs to UP.
Lionel needs to license this " value" that is owned by UP from UP.
What’s interesting to me is that UP, in its trademark applications for the Fallen Flags, is requesting trademark protection specifically for model and toy train sets (and pins, watches, pens, sports balls, etc.) and NOT for rail transportation services, as those trademarks originally covered before abandonment/non-use due to mergers, buyouts, whatever. Also interesting is the application is for “intent to use” and not "current use"for model train sets.
If I’ve got half an understanding of the requirements to successfully register a trademark, the applicant must actually use the trademark in the manner that it is being applied for - a trademark cannot be registered simply to keep others from using/applying for it, the applicant must actually use it on the goods and/or services they 're attempting to claim. Could UP be planning on marketing their own line of model trains…
Using “Western Pacific Feather River Route” as an example, the initial filing date was 12-31-2002, current status as of 5-14-2004 is “Final review prior to publication has been completed, application will be published for opposition.” Now I’m no lawyer either, but it sounds to me like UP technically doesn’t hold a bona-fide registered trademark for “Western Pacific Feather River Route” yet, if the patent office is about to accept letters of opposition to the trademark application. Seems to me that Lionel (and most other model train manufacturers) has a pretty strong case for getting at least the Fallen Flag applications (specifically to cover model trains) denied, since Lionel et.al. have been producing models with the abandoned trademarks for many many years without any opposition or challenge. I don’t believe a trademark can infringe upon proven prior and consistent use.
I suspect Lionel has a weaker case for any of UP’s currently registered logos/symbols/trademarks:
Though trademark law is generally focused on the need for consumer protection, in many jurisdict
The statute by itself doesn’t tell you what the words mean. The meaning is determined by what judges have said these words mean over many lawsuits over many years. Welcome to My WORLD!
UP owns the use of the trademark on everything from services to rubbers - past present future FOR ALL TIME!!! The UP mark is incontestable. Because it is a famous mark like FORD, it can never be abandon; If FORD goes out of business tomorrow; the trademark will live on and no one will be able to use it again, because of the inherent likelihood of confusion as to the source of the mark.
PREDICTION: Lionel will need to pay up and after a lengthy court battle LIONEL will loose! That is why it will never come to that and the great Lionel will settle out of court.
And here’s the good part; it doesn’t matter what a bunch of train geeks like us think about it or if we boycott UP; UP could not care less; It is UP’s goodwill that Lionel is cashing in on.
Have the “fallen flags” logos truly been abandoned? I still see CNW cars with the ball and bar emblem, I see MP cars with the buzz saw, etc. The UP didn’t go on a painting rampage to eliminate those emblems (except on engines) and has used the modern emblems on promotional items like caps and cups from the company store.
Now for a funny story about trademark infringement.
The Boone & Scenic Valley Railroad in Boone, Iowa have a 44ton engine that is painted red and yellow and has the Iowa State University logo on it. It is affectionately called “Cy” by the volunteers for the ISU Cyclones.
One day the general manager gets a call from someone in the university’s licensing department. He had driven by and seen the locomotive. At work he couldn’t find a agreement allowing them to use the Cyclone logo. He wanted the logo removed.
The general manager said that the railroad did not own the engine nor had painted it that way. The ISU person didn’t care, it had to be removed or legal action would be started. After a couple of times of trying to convince this person that the B&SV had no control over the engine, the gm finally said flat out, “it’s your d–n engine, we lease it from you.”
You see, this engine used to be the University"s switch engine when their coal fired power plant received the coal by rail. After the coal started to be trucked in and the rails removed, the engine was leased instead of sold or donated, incase they ever decided to go back to rail delivery direct to the plant.
Two more David vs Goliath stories ended recently with Goliath keeling over - Goliath being The Ford Motor Company:
@ two years ago Ford launched a concept car based on the history-making Ford GT40 road-race car of the 60’s. Problem was that in the 80’s a kit car company was awarded the “GT40” trademark - the recent ruling was that Ford had abandoned the “GT40” trademark with no intent to renew it - Ford apparently made no attempt to (or failed in the attempt to) oppose the kit car company’s application in the 80’s. The new car is now referred to as the “Ford GT”.
Earlier this year Ford unveiled a new gas/electric hybrid vehicle at the New York International Auto Show to be called the “Futura” - again a reference to Ford-badged autos dating back to the 50’s (but discontinued for quite some time since). Problem now is that Pep Boys Auto Parts has laid claim to that trademark for some of their store brand tires. Federal Court ruled the same as the GT40 issue - Ford abandoned the trademark with no intent to renew. The hybrid car, due to be produced next year, is as-yet un-named. Seems someone at Ford neglected to adequately research the trademark prior to the unveiling. Talk about egg on your face!!
The big difference between these two goof-ups and the Fallen Flags fiasco that UP is trying to pull is that the “Davids” already had registered trademarks when they contested Ford’s attempts to re-register abandoned badges, and the trademarks were in related goods and services - autos and auto parts. Going by the info from the Patent Office searches I did, UP is still in the process of applying to register those previously abandoned trademarks specifically for model trains.
In both cases, there are still Ford automobiles existing today with “Futura” and GT40" badges, but produced in the 50’s and 60’s before Ford discontinued using the trademarks. Apparently - at least in these two cases - that’s not enough to show continued use. I should think the same
This has nothing to do with a type, but with a brand itself. Take Coca-Cola for example. Emagine it stops and after 3 years some back street brewery jumps into the market with a drab they call Coca-Cola. Same bottle, same sticker, same identity…
A lot of people buy it and get seriously ill; they trust on a name.
Alan is right in this; UP has the right to lawsuit others using their name and symbols. It’s a very childish way to do so and very unsportive, but seen without emotions they have the “right” to do so.
I still don’t think that there’s anything deceptive or damaging about what the model manufacturers are doing. The truth is that they are realy glorifing all of the railroads, and should be left to do so in peace.
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WRONG! The trademarks belong to them. Lionel is MAKING MONEY using them. Put yourself in UP’s seat. You own The Bigboy line. You’ve trademarked it. Now, some toy company is making millions using your Big Boy logos and you get squat. Tell me that is right. End of story. Get over it.
How long have model trains been produced using UP’s logos? A good 50 years+?? And UP is just now getting around to instituting a licensing program to protect the integrity and value of their trademarks?!? This extortion move on the model railroading community has little to do with any concerns over misuse and abuse of trademarks by model train manufacturers, and has alot to do with tapping a previously untouched revenue stream by what appears to be a badly mis-managed and ineptly run corporation.
The issue here is not whether UP (or any trademark owner) has the “right” to protect their marks from unauthorized use/abuse - trademark law requires the mark holder to actively use the mark and defend it from infringement, or risk losing the registration or exclusive use of the mark. The issue is also not about Lionel agressively protecting its trademarks, but not wanting to follow the same rules with UP.
The issue is the length of time that the various manufacturers (specifically Lionel and Athern, for now) have been producing toy and model trains displaying UP trademarks, during which time UP made no attempt to enforce trademark licensing or infringement. Failure to adequately and consistently defend a trademark can and has resulted in loss of exclusivity for careless mark owners. Seems to me that 50+ years of non-enforcement for model trains gives Lionel et.al. a strong case against UP’s very recent and heavy-handed protection moves. That, and IMHO can’t see how Lionel’s use of UP’s marks has adversely harmed or diluted the mark’s goodwill, value, and integrity, nor has Lionel ever entered into direct competition with UP’s transportation services by using their mark.
But what’s particularly despicable is UP’s intent to capitalize off the abandoned trademarks and logos of the fallen flag railroads they’ve swallowed up over the years. UP is only attempting to re-register those trademarks in order to skim extra income from an established railfan and hobby market - it certainly has
This is so interesting, most of you are coming up in favor of LIONEL stealing; that’s right STEALING.
Lionel is making money by taking something that is clearly not in the public domain and using it without paying the real owner for it.
The only reason is I suspect that none of you want to pay for it either!. You all feel that UP’s stuff, and every other road name, is yours for the taking too, because after all it’s just Toys! Now UP, just by enforcing its rights, is the one who’s HEAVY handed??
WOW!! What convoluted logic is that!
I guess if you wait too long to enforce rights around you guys POOF! you become the bad guy not the one wronged. This is not being done to screw you but to obtain some compensation for something UP created and over the years paid for…. their name.
I hope none of you ever create anything of value and then see someone else steal it from you and making a lot of money from your efforts. Because then the REST will scream that you should shut up and take it!
I never realized that toy trains, it must be all the puffing smoke, makes you THAT intolerable of other’s rights.
Emagine how long this whole process will take. On this forum there is allready a huge amount of pro’s and con’s and this isn’t even the professional lawyer business…
Why wouldn’t you ask UP if they have anything against it if you make a toytrain with their logo? Before you make them? Just ask for approval and it’s okay if they agree.
Probably they demand a trainset for the chairmen’s sons (or the chairmen themselves[:D]) or want a real nice model to display in their headquarters, but simply ask them before you use it…
Everyone has to do that, everyone as to ask when you take something, you want your children to ask before they take cookies, you want your neighbour to ask before he takes your car, why would Lionel not ask UP before they use their name?
Or would you like the idea of a very rotten movie with your name on it, without you knowing it? Or your mondaymorning bedoutfit picture live on the internet without your permission?
It really is that simple, just ask before taking…
One thing I have thought of here that I would like to throw in is that even if UP does license their logo and force manufacturers to get permission to use it, why do they have to charge them money for it? If they want to “protect their name” and make everyone get permission to use their logo that’s one thing, but charing for the use of it is another. I’m no expert on copyright issues or anything (although I’ve learned a lot from all of these topics), so perhaps I might be off here, but to me it would seem that UP wouldn’t have to charge the manufacturers money if they didn’t want to or at least not as much as they are wanting to charge them now.
Actually, trademark law says just that. If the owner doesn’t actively use AND protect the trademark, they risk losing exclusivity. And as far as common law in general, there’s this little thing called “The Statute of Limitations” that precludes untimely prosecution for certain levels or degrees of offenses. So in effect, if you snooze, you CAN looze. UP has waited over 50 years to begin enforcing it’s trademark rights with regard to use on model trains - that’s a long time snoozing.
Frankly, it happens all the time because people don’t follow the proper patent, copyright, trademark, etc. procedures, and the courts have upheld that they are s@*! out of luck. UP hasn’t lost or had any money STOLEN from them by Lionel’s use of their logos if they haven’t previously required that Lionel pay for the use. Lionel hasn’t STOLEN from UP by using the UP trademark to directly compete with UP in the area of transportation services. Lionel is the one that has invested money and effort directly in molds, paint masks, etc. to produce replicas of train items (some with UP markings). UP is the one trying to profit off Lionel’s successful manufacture and marketing of quality model trains that display accurate/historical markings, now that they see there’s “free” money to be made from licensing - something they’ve ignored for over 50 years and not bothered to enforce their trademark rights.
That said, now that UP has finally started to enforce it’s trademark rights, it is proper to expect Lionel et.al. to follow UP’s licensing procedures IF they wi***o use the most current (and futu
However, the case law on that issue interprets the law and says that the risk of loss is far less for an established mark like UPs. And the little thing you called Statute of Limitation doesn’t apply to trademark infringement since marks can stay active indefinitely. So no snoozing here!
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QUOTE: Frankly, it happens all the time because people don’t follow the proper patent, copyright, trademark, etc. procedures, and the courts have upheld that they are s@*! out of luck. UP hasn’t lost or had any money STOLEN from them by Lionel’s use of their logos if they haven’t previously required that Lionel pay for the use. Lionel hasn’t STOLEN from UP by using the UP trademark to directly compete with UP in the area of transportation services. Lionel is the one that has invested money and effort directly in molds, paint masks, etc. to produce replicas of train items (some with UP markings). UP is the one trying to profit off Lionel’s successful manufacture and marketing of quality model trains that display accurate/historical markings, now that they see there’s “free” money to be made from licensing - something they’ve ignored for over 50 years and not bothered to enforce their trademark rights.
That said, now that UP has finally started to enforce it’s trademark rights, it is proper to expect Lionel et.al. to follow UP’s licensing procedures IF they wi***o use the most current (and future) UP marks and logos