Interesting finds re: UP, trademarks, and Fallen Flags....

[nblum]

Actually, on other threads, several of us have pointed out and protested the UP's insistence on intrusive auditing of proprietary sales information, 3% fees paid in advance of sales, etc. as extortion in the form of a licensing agreement. That is the main objection to the UP licensing program, in addition to their desire to obtain fees for defunct trademarks of the fallen flag roads. Personally, I hope it is the UP that goes out of business rather than Lionel and Athearn :). Not that the latter two are perfect or wonderful companies, but the UP has shown itself to be a thoroughly repulsive, grasping corporate thug in this matter.

[BigJim]

I'm surprised that none of you are showing any objections to the heavy handed way UP intends to collect the fees in question!!!

[nblum]

I think you are correct that UP will have no trouble proving its right to enforce the UP's current trademarks. I think the problem they are going to almost certainly have is for the fallen flags, and getting ANY award for prior use of even the UP trademarks since that was clearly done with tacit approval of the UP's management during those years. This is never going to court, but is a strategy on the model railroad manufacturers part to bring the UP to the table with more reasonable licensing terms. The current terms are punitive and usurious and will not be acceptable under any circumstances is my guess.

[Anonymous]

QUOTE: Risk of loss may be less for established marks, but it's still there. The length of time that UP has failed in its obligation to enforce its marks can certainly work to Lionel's favor. And I know Statute of Limitations doesn't apply to trademarks, but in law in general, there are limitations on lesser offenses as to how long someone can wait after being ”wronged” and still bring a lawsuit. That was a response to what I read as a broad “...wait too long to enforce rights....” - my mistake. But even “famous”entities can lose marks to abandonment. Ford recently lost “GT40” and “Futura”, first registered by Ford back in the 50's and 60's, as applied to autos and related parts. Ruling was that Ford could show no “intent to renew” after those car models were dropped and the marks fell into abandonment from non-use. Ford snoozed, and then “loozed”. And I believe you brought up estoppel and laches in another thread that could work to Lionel's favor - none of us knows what Lionel might have hiding in their files from years back. Obviously each side thinks they've got a solid case.

You are missing the way this has been interpreted by the courts; it doesn't matter how YOU or I feel this should go. Famous and distinctive marks are treated differently. And there is no risk of loss and the risk is not "still there"

Unlike that Ford issue; UP has been using its trademark since the beginning and hasn't stopped using the mark; Look at the their trains see the mark on the engines; that 's use. UP never abandoned the mark;

Also Ford may have not used the GT40 or Futura marks but these are not the uncontestable FORD mark. That will never be abandon. so that, let's say, you could use it on your products.

SOLID CASE??
Lionel has yet to Answer UP's complaint and likely Lionel wont Answer anytime soon. So you cant really say that Lionel thinks it has a solid case because it hasn't said anything yet.

QUOTE: Looking at the overall summaries of contested patents and trademarks handled by the PTO, not considering just “famous” or “valuable” ones. There are many thousands each year, with varying outcomes. Although technically, alot fewer actually go beyond the PTO to court.

And no, I don't think returning the money after it's stolen negates the criminal act, but using the term “stealing” when referring to the unauthorized use of IP such as trademarks can be misleading (or should that be misunderstood?), since tangible property is not being taken from the owner thus preventing the owner access to or use of it. Theft of tangible property is criminal, while I believe infringement of the rights of the IP holder is treated differently. Monetary damages can be assessed if harm to the value of the trademark has been determined to occur. Then again, things can get really complicated if some other criminal activity is associated with the infringement. Oh man! Here comes that migrane again!

Infringement is another form of theft and is a federal crime; instead of money or property as the object of the crime IP theft involves a different form of property; intellectual. IP theft may not involve physical property as in a state criminal action but it is still stealing. Infringement is a federal crime that violates federal law.

We don’t put companies in jail, but we do fine them. And now the FTC is looking at putting officers in jail, too. So while you may object to the term stealing as applied to Lionel’s actions with regard to infringing on UP name; taking something with the intent of using it without paying for it is stealing.

QUOTE: No, only on big corporations trying to cover up their failures to meet business obligations by bullying and extorting smaller ones. And perhaps I would buy some stock in UP to vote the directors out if I was a lawyer or highly-paid exec with money rolling in hand-over-fist, but I'm just a lowly under-paid peon, so I'll have to stick to voicing my thoughts and opinions on discussion forums like this.

So now we're really starting to get off-topic. We'll just have to agree to disagree on who's the villian and who's the “innocent” in this case. Although in reality, both sides have at least a little of each in them. Considering the recent addition of dilution to trademark law, and the limited number of cases that have referenced it, this case could end up being a landmark case if it goes far enough!

Lionel is a big corp too and they choose to engage in an illegal activity. Why the ardent attack on UP for enforcing its rights

STOCK
Well even one share of stock entitles you to speak at the meetings. Maybe we all should each buy a share and have more to say there.

Dilution
Finally, UP is going nowhere with this dilution attack under Lanham. But dilution is not new. The Federal Trademark Dilution Act of 1995 has been effective in the United States since January 1996. This Act is now Section 43 (c) of the Lanham Act, 15 U.S.C. Section 1125(c).

Even though the U.S. Supreme Court recently issued its first dilution decision in 2003, dilution is not new. The court holding prompted a comprehensive review of the U.S. federal dilution statute. In Moseley v. V Secret, the Court ruled that the federal dilution statute requires proof of actual harm in dilution cases and that consumers’ mere mental association is not enough to win a case, particularly where the marks in question are not identical.

Here the marks ARE identical but still how does dilution of the mark apply to this case?

From the definition ( a Google search gave me:), dilution is the unauthorized use of a highly distinctive mark by another in a manner which tends to blur its distinctiveness or tarnish its image even without any likelihood of confusion. Dilution is when the unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique, singular or particular. UP will have a hard time making this argument against LIONEL. LIONEL uses UP's mark BECAUSE UP uses it on UP's trains and any loss of uniqueness would affect LIONEL more than UP..

When one uses the term “dilution” in the context of trademarks, it is typically a reference to the protection of famous and well-known marks. The protection of marks from dilution differs from the protection accorded marks from trademark infringement. Dilution does not rely upon the standard test of infringement, which is the likelihood of confusion, deception or mistake. See again, we treat famous and well-known marks differently.

I dont see how UP could make a case for dilution of their mark. No one would believe that the toy trains were real trains and buying a Lionel was actually coming from UP instead; or that Lionel's Use causes dilution of the distinctive quality of UP's mark. LIONEL wants the distinctivness to continue so if LIONEL use follows in great detail UP's use in every train is has.

UP may have a problem with this one, but I dont think this is a landmark matter, simply a case of taking something without licensing it.

Alan

[GPJ68]

QUOTE: 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!

Risk of loss may be less for established marks, but it's still there. The length of time that UP has failed in its obligation to enforce its marks can certainly work to Lionel's favor. And I know Statute of Limitations doesn't apply to trademarks, but in law in general, there are limitations on lesser offenses as to how long someone can wait after being ”wronged” and still bring a lawsuit. That was a response to what I read as a broad “...wait too long to enforce rights....” - my mistake. But even “famous”entities can lose marks to abandonment. Ford recently lost “GT40” and “Futura”, first registered by Ford back in the 50's and 60's, as applied to autos and related parts. Ruling was that Ford could show no “intent to renew” after those car models were dropped and the marks fell into abandonment from non-use. Ford snoozed, and then “loozed”. And I believe you brought up estoppel and laches in another thread that could work to Lionel's favor - none of us knows what Lionel might have hiding in their files from years back. Obviously each side thinks they've got a solid case.

QUOTE: Where to start?? Frankly, I don’t know from where you get your statistics, but according to the PTO it doesn't happen all that often with valuable patents; as for copyrights Disney just had congress extend the time period so that Mickey is not drawn doing something weird to Pluto. Once again the same thing applies to trademarks; sure if a business goes under then they don’t pay to continue the mark, but that rarely happens with famous marks like UPs.

STOLEN we obviously have a different take on theft of Intellectual Property as being a stolen right where damages are presumed by the courts. Maybe you think that if you steal money from a bank in a Robbery; that if you give the money back to the bank the next day that no crime has occurred. Not true. That UP waited so long doesn't necessarily bar their rights for an action against someone infringing on their rights in the past.

Looking at the overall summaries of contested patents and trademarks handled by the PTO, not considering just “famous” or “valuable” ones. There are many thousands each year, with varying outcomes. Although technically, alot fewer actually go beyond the PTO to court.

And no, I don't think returning the money after it's stolen negates the criminal act, but using the term “stealing” when referring to the unauthorized use of IP such as trademarks can be misleading (or should that be misunderstood?), since tangible property is not being taken from the owner thus preventing the owner access to or use of it. Theft of tangible property is criminal, while I believe infringement of the rights of the IP holder is treated differently. Monetary damages can be assessed if harm to the value of the trademark has been determined to occur. Then again, things can get really complicated if some other criminal activity is associated with the infringement. Oh man! Here comes that migrane again!

QUOTE: So it's Okay to pick on big corporations. Well you got me there; If you really don't like what UP is doing buy UP voting stock and enough of it so that you can vote these so-called evil minded UP directors OUT. By the way when you do your stock will likely be worth less because UP isn't pursuing its rights that will ultimately decrease the profits for UP

No, only on big corporations trying to cover up their failures to meet business obligations by bullying and extorting smaller ones. And perhaps I would buy some stock in UP to vote the directors out if I was a lawyer or highly-paid exec with money rolling in hand-over-fist, but I'm just a lowly under-paid peon, so I'll have to stick to voicing my thoughts and opinions on discussion forums like this.

So now we're really starting to get off-topic. We'll just have to agree to disagree on who's the villian and who's the “innocent” in this case. Although in reality, both sides have at least a little of each in them. Considering the recent addition of dilution to trademark law, and the limited number of cases that have referenced it, this case could end up being a landmark case if it goes far enough!

[Anonymous]

GPJ68

In response to my thread you said:

QUOTE: 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 loose. 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

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!

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 on future model offerings. As far as the Fallen Flags and historical UP marks no longer in active use, IMHO (and earnestly hope) UP has lost exclusivity of those trademarks in the area of model trains by failing to defend the marks against unauthorized use for 50+ years.

And personally, I'd follow Lionel's example and aggressively defend my trademark, patent, copyright, whatever from infringement right from the start, not wait until 50+ years later.

Where to start?? Frankly, I don’t know from where you get your statistics, but according to the PTO it doesn't happen all that often with valuable patents; as for copyrights Disney just had congress extend the time period so that Mickey is not drawn doing something weird to Pluto. Once again the same thing applies to trademarks; sure if a business goes under then they don’t pay to continue the mark, but that rarely happens with famous marks like UPs.

STOLEN we obviously have a different take on theft of Intellectual Property as being a stolen right where damages are presumed by the courts. Maybe you think that if you steal money from a bank in a Robbery; that if you give the money back to the bank the next day that no crime has occurred. Not true. That UP waited so long doesn't necessarily bar their rights for an action against someone infringing on their rights in the past.

QUOTE: Not intolerable of other's rights, just intolerable of large corporations/entities bullying around smaller ones after they've (the big ones) failed to properly defend their rights for so long.

And if you compare the UP License Agreement and the CSX Agreement, you'll see just how heavy-handed UP's requirements are. CSX's does include their Fallen Flags (B&O, C&O, etc.) in their agreement, but the one-time fees (for a 3 year period) and other requirements such as approval of designs are FAR less intrusive and expensive for the licensee than UP's. Unfortunately, I couldn't find any listing of currently authorized licensees on the CSX site, but since there's been no mention of any recent CSX lawsuits against model train manufacturers for trademark infringement , I'll make a guarded assumption that Lionel et.al. are on-board with CSX licenses.

So it's Okay to pick on big corporations. Well you got me there; If you really don't like what UP is doing buy UP voting stock and enough of it so that you can vote these so-called evil minded UP directors OUT. By the way when you do your stock will likely be worth less because UP isn't pursuing its rights that will ultimately decrease the profits for UP

Alan

[GPJ68]

QUOTE:
...I guess if you wait too long to enforce rights around you guys POOF! you become the bad guy not the one wronged....

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.

QUOTE:
...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!

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 on future model offerings. As far as the Fallen Flags and historical UP marks no longer in active use, IMHO (and earnestly hope) UP has lost exclusivity of those trademarks in the area of model trains by failing to defend the marks against unauthorized use for 50+ years.

And personally, I'd follow Lionel's example and aggressively defend my trademark, patent, copyright, whatever from infringement right from the start, not wait until 50+ years later.

QUOTE:
I never realized that toy trains, it must be all the puffing smoke, makes you THAT intolerable of other’s rights.

Alan.

Not intolerable of other's rights, just intolerable of large corporations/entities bullying around smaller ones after they've (the big ones) failed to properly defend their rights for so long.

And if you compare the UP License Agreement and the CSX Agreement, you'll see just how heavy-handed UP's requirements are. CSX's does include their Fallen Flags (B&O, C&O, etc.) in their agreement, but the one-time fees (for a 3 year period) and other requirements such as approval of designs are FAR less intrusive and expensive for the licensee than UP's. Unfortunately, I couldn't find any listing of currently authorized licensees on the CSX site, but since there's been no mention of any recent CSX lawsuits against model train manufacturers for trademark infringement , I'll make a guarded assumption that Lionel et.al. are on-board with CSX licenses.

[Anonymous]

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.

[daan]

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...

[Anonymous]

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.

Alan.

[GPJ68]

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 NOTHING to do with protecting existing and current-use trademarks - UP's applications for formally registering those old marks still have a way to go in the registration process!

Does that mean I think that UP is wrong to try and protect their trademarks? Absolutely not! UP is obligated to do so, or risk losing the marks. What is wrong are their clumsy and heavy-handed methods, especially after so many years of non-enforcement (at least with the model train manufacturers).

As far as Lionel being the EVIL one here for making money using logos they don't have a license for - some folks may be forgetting about the early Lionel years when railroads were PAYING Lionel to use their logos on Lionel products, that Lionel then sold for additional profit. Precident set - if nobody balks (by later charging Lionel with trademark infringement or demanding a license) then why should Lionel voluntarily offer to pay a licensing fee to continue doing what they've previously been paid to do?

UP needs to take a lesson from CSX - back away from this fiasco post-haste and quietly work out a reasonable solution that will protect UP trademarks and re-instill goodwill between all parties - trademark owner, 3rd party manufacturer, and consumer. And UP should have taken lessons from Lionel many years ago and aggressively and consistently defended their trademarks much earlier - then maybe we wouldn't be seeing this legal circus now.

One thing is for certain, this is a mighty complex case that could probably swing in any direction, depending on how well each side presents its case! And obviously this a right hot topic with several different viewpoints - it's probably best if we can all just agree to disagree without getting too emotionally involved.

To borrow a phrase from another train enthusiast - "After all, there just toys!".

[Anonymous]

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.

[daan]

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.

[GPJ68]

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 can be said about old railcars now belonging to UP but still displaying deteriorating trademarks pre-dating the UP mergers and buyouts.

At any rate, I hope UP falls hard on its fat rump in this attempt to profit off model railroaders and the Fallen Flags they've otherwise swallowed up and erased from the rails. But as far as defending and licensing their current and any future UP marks and logos, more power to them -that's part of doing business nowadays.

And Alan, you can have your world - I chugged half a bottle of asprin trying to rid myself of the migrain I got just perusing the legalese of some of this trademark stuff..... I'm gonna go out and hug a tree tommorrow (measuring it before I push it over to clear a path for logging access), to remind me how lucky I am to NOT have to deal with that legal mumbo-jumbo on a daily basis!

And I agree with you that it's really how the courts interpret the statutes and not necessarily what the words appear to say. Its all gonna come down to just how well each side presents its case to the court - common sense be D!@@)~!

[jeffhergert]

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.

[Anonymous]

GP

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.

Alan

[GPJ68]

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 jurisdictions the concept of dilution has developed recently to protect trademarks as a property right, securing the investment the trademark owner has made in establishing and promoting a strong mark. The concept of dilution is much newer than the rest of trademark law; only in the mid-1990s did the United States enact a law against trademark dilution. A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word Pepsi spoken, or on a billboard). http://www.wordiq.com/definition/Trademark

Seems to me Lionel's only leg to stand on re: current UP logo's is past use (until recently) without contest.

So my guesses on winners and losers, in a nutshell:
Fallen Flags go to Lionel et.al., for uncontested prior use of abandoned marks
Current UP goes to UP, under the recently accepted dilution principles

But then again, those outcomes make sense (to me at least), and we are dealing with both a Federal Agency and our judicial system.........

[Anonymous]

Lawyer View:

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.

Alan

[Anonymous]

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.

AZTRAINMAN

[dougdagrump]

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]

[Anonymous]

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.

Tony

[Big_Boy_4005]

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.

[Anonymous]

The part of the quote that GPJ68 cited that gets my attention is this:

QUOTE: An abandoned mark is not irrevocably in the public domain, but instead can be reregistered by anyone who has regained exclusive and active use, including the original mark owner." (http://www.wordiq.com/definition/Trademark)

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.

Of course, remember, I'm no lawyer.

Tony

[Big_Boy_4005]

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.

This was posted over on the MR forum:

---

From their website press release ( http://www.uprr.com/newsinfo/modelrail.shtml )

"Union Pacific defends trademarks

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 believe is the section of the Lanham Act that UP is at least in part basing their case.

http://www.bitlaw.com/source/15usc/1125.html

If I understand this correctly, this section of the law was written to protect manufacturers of products from having their labels copied. Things like fake designer jeans, and other "knock off" items.

The problem is that model manufacturers are not in competition with railroads. There is nothing deceptive going on here. It would be very difficult to mistake one for the other.

All of this begs the question, does UP have any protection under copyright law if someone copyrights a photo of one of their locomotives? Because in essence that's what they are claiming.

More food for thought.

[GPJ68]

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.)

Also found some other "food for thought" on other sites:

"Trademarks must be actively used and defended. A company claiming (even registering) a trademark that fails to make active use of it, or fails to defend it against infringement, may lose the exclusive right to it. Aside from inconsistent product quality, failure to use the mark for a period of time (often statutorily defined) will result in abandonment of the mark, meaning that it is available to anyone to use. An abandoned mark is not irrevocably in the public domain, but instead can be reregistered by anyone who has regained exclusive and active use, including the original mark owner." (http://www.wordiq.com/definition/Trademark)

And from (http://www.bitlaw.com/source/15usc/1127.html) the following:

A mark shall be deemed to be "abandoned" if either of the following occurs:

(1)

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2)

When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

"Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." certainly oughta cover most all the Fallen Flags, shouldn't it?

The trademark registration process certainly appears to be a very long and drawn-out process. Since UP doesn't appear to have begun pursuing/re-applying for some of the Fallen Flag trademarks until the past year or two, I'm thinkingf UP is just throwing around hollow threats to bluff small-time manufacturers (with small-time bank accounts), so that UP has "evidence" (to show the Patent Office) of its "right" to the trademarks in question in the form of signed agreements acknowledging that "right".

Comments??