UP dose not require a fee per say to use their stuff but dose require written permision to use their images (except for personal use).
I would be surprised if that "DD40X in yellow and grey" did not have a UP herald and/or the UP name. THAT would be trademarked. I am pretty sure that if the loco was only yellow and grey, they would have won. And how many rock bands know someone who can supply an unlettered yellow and grey diesel?
For the distillery, I expect the problem was NOT that it featured a UP engine, but that the same name and/or trademark was showing. Thus I assert that they could have put depictions of Big Boys and 4-12-2's (both only used on the UP) on the bottle and gotten away with it. But the various shields and such and the name would be a no-no.
A trademark is a trade-mark. That is, it is some sort of two-dimensional graphic that is applied to the product. You can sell a model of a UP 4-12-2 without their permission. You cannot letter it for UP without it.
Same for UPS. You can sell a model of a UPS trailer all day. But ya better not letter it for UPS.
Ed
The whole issue came up at the UP when they hired a new CEO from a retail manufacturing background. That's when UP's "brand" started to be talked about and the whole branding/trademark issue came up.
Three incidents that happened that illustrate the idea of branding:
A rock group produced a music video that showed a model engine running over people, they used a DD40X in yellow and grey as the model engine. The UP sued saying that the DD40X and the yellow and grey paint scheme would associate people with the UP and the UP didn't want to be associated with the image and message in the video. The UP won.
A distillery in Nebraska bottled whiskey with a label that featured a UP engine on it. The UP sued because they weren't associated with the distillery and didn't want their image to be associated with alcohol use. The UP won.
A publisher produced a calender with UP photos and marketed it as the "Union Pacific Railroad Calender". Since the UP already produces a calender by that name and has for decades, the UP sued to force him to change the name of the calender so there would be no confusion between the two calenders. The UP won.
The problem with railroads is that they allowed (encouraged) model suppliers to letter engines for their railroads back in the day (free advertising back when they operated passenger trains). However times have changed and railroads now have to protect their image more (see above examples). Try producing a model lettered for UPS without getting a license from them and see what happens.
Dave H. Painted side goes up. My website : wnbranch.com
I guess the point I was trying to make is that although of course a company needs to protect it's trademarks by warning and if necessary taking legal action against anyone improperly using their trademark, I don't believe the company loses the right to a trademark they own just because they don't actively use it...so I don't think companies use 'old' trademarks specifically for the purpose of keeping the trademark. (Some folks might be confusing a trademark with a patent - you can't just sit on a patent, you do have to show you're actively using it to keep the patent in force.)
TO use Azrail's example, everyone understands GM still owns the rights to the Pontiac and Oldsmobile names. But they don't need to come out with a car with "Pontiac" on it every so often to prove they still own the trademarked name.
Also, keep in mind that companies often use old names as a convenience - like UP having so many freight cars that to keep them separate they use other reporting marks they own, like CNW or CMO, so they could have a UP 123789 car and a CNW 123789 car, and be able to keep them separate for accounting and routing purposes. Another example would be Fender guitars. Fender had a supplier named L.C. Squier (I think they made Fender's guitar strings for them); eventually they bought Squier and began using the Squier name for a lower-priced line of electric guitars. It was a convenient way to separate those cheaper guitars from the more expensive Fender-labelled ones. They didn't do it to 'protect' the Squier name / trademark.
Many businesses protect their defunct logos and names.GM still holds the rights to the Pontiac and Oldsmobile names/logos. Chevron still has "Standard" stations in the former Standard Oil of CA/KY regions. ExxonMobil still makes products using the Gargoyle, Humble and Enco names.
Keep in mind to sue someone over misuse of a trademark, you have to show that it's your trademark and that the person or people you're suing are using the trademark or something very similar to try to deceive people.
If you come up with a cola-flavored soda pop and call it "Coqa Cola" and make a logo that is clearly meant to look like the Coca-Cola logo, to the extent some people are buying your product thinking they're buying Coca-Cola, then Coke will (successfully) sue you.
However, I suspect when the Chicago Central railroad introduced their 'green diamond' herald, which was very close to the old Illinois Central herald, I don't think they had to get permission from anyone to do it. It clearly said "Chicago Central", and the engines paint schemes otherwise weren't that close to the I.C. They weren't trying to make people think their railroad was the I.C.
BTW...I've heard it several times before that railroads were doing heritage units etc. as a way of protecting their trademarks, but it's always been from railfans. Has anyone ever seen a railroad letter or press release stating they were doing something like that as a way of protecting their trademarks?
as mentioned some railroads made it a habit to protect their rights to names from predecessors or older logos. For instance, the UP used to paint their obsolete "Overland Route" shield on some boxcars every few years to show that they were "using" the logos and that their trademark was current. That is the real reason behind the "Heritage" locomotives. Not only to honor their history and to boost employee morale, but to place the older logos on current equipment to show the legal authorities that the company is still "using" the logo.
"Trademark" might not be best term when thinking of railroads. When a railroad is formed, it's name is created by a charter or registered with the government. The federal government assigns the railroad it's reporting marks - 4 letters or less that are the 'official' name of the railroad shown on their freight cars and other equipment.
If later another railroad buys that railroad, they also buy the railroad's name and reporting marks. If the railroad did trademark something like a herald (logo), that is part of the sale. That ownership of the reporting marks etc. continues basically forever, regardless of whether the purchasing railroad actively uses them or not. They're not really ever 'abandoned'.
So for example in the early 1990's Chicago & NorthWestern bought some new freight cars that they assigned reporting marks "CMO", for the old Chicago St.Paul Minneapolis & Omaha - a railroad folded in the CNW in 1957. Union Pacific bought C&NW a few years later, and with it they bought the rights to all the reporting marks etc. that C&NW had acquired...CNW, CMO, MSTL, CGW, etc.
THANK YOU. Clear and consise. So the answer is they were never abandoned. I thought otherwise.
jeffhergertIowa Interstate Railroad owns the rights to the Rock Island emblem. The company, while exiting the railroad business, survived the bankruptcy and eventually became a holding company under the Chicago Pacific name. It was merged into The Maytag Co, who was interested in some of their holdings.
OK, good to know. Thanks, Jeff.
Even when it seems like the circumstances might suggest a name was no longer in use, the convoluted nature of corporate holdings very rarely ever makes that so.
Mike Lehman
Urbana, IL
mlehman shartli I know its an old topic but how did it happen? I mean from a legal stand point. Dont abandoned trademarks end up in the public domain? Model manufacturers suddenly have to pay to use things that used to be free of charge. Yeah, it is an old topic. As was already noted, it might seem like those trademarks were abandoned, but that's rarely the case. First, they're part of the assets acquired when a RR is purchased and/or merged. Second, they typically do remain in some limited use, although maybe not emblazoned across 1,000s of cars like they did before. Instead, they're on paper in company literature and financial documents. To address this seeming "disappearance" some RRs have taken to painting "heritage" cars and motive power in part to be very public about the continuation of such use. When it comes to legalities, usage being stopped to the extent that someone could claim and capture the trademark just has no legal legs. You might get a return to public domain in the case of a bankruptcy or other complete shutdown, the cases of the NYO&W and the Rock Island being the first that come to mind. The only two lines that made much of an issue of this were CSX and UP. Yes, some legal wrangling and back and forth and there was apparently some belief that money could be made through licensing. But models fall into a gray category in terms of being an infringing use and there was no pot o' gold at the end of this rainbow. My understanding is that now any fees are nominal. The licensing agreements mostly cover for evidence that the company is enforcing control over its intellectual property and that seems to make the lawyers happy. So, very minimal to no impact on the costs of production.
shartli I know its an old topic but how did it happen? I mean from a legal stand point. Dont abandoned trademarks end up in the public domain? Model manufacturers suddenly have to pay to use things that used to be free of charge.
I know its an old topic but how did it happen? I mean from a legal stand point. Dont abandoned trademarks end up in the public domain?
Model manufacturers suddenly have to pay to use things that used to be free of charge.
Yeah, it is an old topic. As was already noted, it might seem like those trademarks were abandoned, but that's rarely the case. First, they're part of the assets acquired when a RR is purchased and/or merged. Second, they typically do remain in some limited use, although maybe not emblazoned across 1,000s of cars like they did before. Instead, they're on paper in company literature and financial documents.
To address this seeming "disappearance" some RRs have taken to painting "heritage" cars and motive power in part to be very public about the continuation of such use. When it comes to legalities, usage being stopped to the extent that someone could claim and capture the trademark just has no legal legs. You might get a return to public domain in the case of a bankruptcy or other complete shutdown, the cases of the NYO&W and the Rock Island being the first that come to mind.
The only two lines that made much of an issue of this were CSX and UP. Yes, some legal wrangling and back and forth and there was apparently some belief that money could be made through licensing. But models fall into a gray category in terms of being an infringing use and there was no pot o' gold at the end of this rainbow. My understanding is that now any fees are nominal. The licensing agreements mostly cover for evidence that the company is enforcing control over its intellectual property and that seems to make the lawyers happy. So, very minimal to no impact on the costs of production.
Iowa Interstate Railroad owns the rights to the Rock Island emblem. The company, while exiting the railroad business, survived the bankruptcy and eventually became a holding company under the Chicago Pacific name. It was merged into The Maytag Co, who was interested in some of their holdings.
Jeff
The trademarks are doubtless registered with the fed.
But.
I suspect if you don't protect your trademark "adequately", then a subsequent user could claim in a lawsuit by you that you had, in fact, abandoned it.
So, if no one ever copies your trademark, it's (in this case) registered and you're set.
If someone DOES copy it and you don't sue, and it starts happening over and over again, at some point a court is going to say you abandoned it. Note that simply copying a trademark and not getting sued does not automatically make the trademark abandoned. I, for example, could copy the UP trademark, use it in commerce with a buddy of mine for a few bucks. And never even tell much of anyone except a couple of other buddies. No way does that mess up the real UP's rights. But there IS a point where large useage WOULD cause UP to lose control of the trademark. And large corporations like to kind of nip that in the bud.
So, even if you aren't "using" your trademark, you'd better protect it IF you want to keep it.
And when railroads move to hassle model makers about trademark useage, top of their desire is to have those model makers concede that the railroad does hold the trademark. Getting huge profits out of the model makers in the process is wishful thinking. As we all most likely know.
Most never let the trademark go out of currant, even on aquired names. Union Pacific holds trademarks for all their aquired names like Southern Pacific and Cotton Belt etc.