Union Pacific Sues Athearn & Lionel

It's amazing how quickly the usual suspects leap at the chance to share their dubious wisdom with us lesser mortals.

Adding to the collective misinformation, someone named "cat" opined that:

And in rapid succession, "Will" has told us that:

Every one of those statements is totally and demonstrably false, as any beginning student of trademark law could tell you. "Will" should have followed his own advice to "Please, at least open a book on corporate law (maybe even read it) before you start commenting and making yourself look foolish".

Trademark law is a complex field, but some of the basic principals are quite clear:

~ All trademark (or service mark) registrations issued or renewed on or after November 16, 1989 are for very limited period of time, and need to be renewed on a regular basis.

~ The trademark applicant must specify the USES to which the mark will be put (in other words, the type of goods sold or the kind of services to be rendered). And the trademark is ONLY valid for that use.

~ The owner of a mark owner must file a declaration under oath at the time of application -- and at regular intervals thereafter -- that the trade or service mark is actually being used by the owner for the purposes specified in the application.

~ As "Will" should have figured out by now, the whole purpose of trademark registration is to identify the source of a product or service -- and to distinguish the goods or services from those provided by others, so that there's no confusion as to the identity of the manufacturer or service provider.

~ A company making an entirely different product, to be sold to a different group of customers under its own trade name is not in violation of trademark law.

If you don't believe it, there are plenty of on-line resources for the rules of trademark registration, including the one provided by the Trademark Office itself:

When was the last time you saw a scale model train or decal that was made or sold by the Union Pacific Railroad?

If you bought an Athearn locomotive decorated for the UP, would you assume that you were buying it from the railroad?

How many model railroaders do you know who are "confused" as to whether scale model trains are actually made by the railroads whose name appears on the side? Or is it more likely that the purchaser will assume that a model train that comes in a box marked "Lionel" is actually made by the Lionel corporation?

Until VERY recently, the only use specified by the Union Pacific for its trademarks was "Providing Transportation of Commodities, Goods and Other Freight by Railroad and Motor Carrier to Others" and similar phrases. Only within the past couple of years has the UP filed _NEW_ trademark applications, claiming to be in the business of making or selling "model trains", "toy train sets" and the like. And at the moment only ONE of those applications has been granted by the Trademark Office.

Why should we be concerned?

-- Because it will cost us more, and the UP's licensing scheme doesn't add a bit of value, accuracy or variety to model trains.

-- Because UP may one day decide to appoint a single exclusive licensee of all of the 1800 railroad names it claims to own.

-- Because UP may decide that certain fallen-flag railroads should not be produced in model form.

-- Because some of UP's trademark applications include a LOT more than model trains. For example, they've claimed the right to license and control any published depiction of their marks in "non-fiction books relating to history and transportation, children's activity books, coloring books, magazines relating to travel, history and transportation, mounted and unmounted photographs, posters, postcards . . . calendars . . . etc.etc."

-- Because UP is not the only company attempting to control fallen-flag railroad names and trying to make a buck off them. There's already a claimant for the exclusive right to use the name "Pacific Electric", and there are some 60 other railroad names for which trademark applications have been made by private individuals -- who have no connection whatever to the "real" railroad.

The Olde Reprobate

I am wondering if MRIA will make a statement or take a stance on the lawsuit.

Union Pacific has requested a jury trial.

This thing has just started. it will be a while before the chickenshit gets really heavy, but it is coming.

Captain Handbrake

I think you have hit on something there JB, you said "high quality models". That's it, neither Lionel or Athearn can be accused of putting out "high quality models".

It is not like they are brass locomotives or accurail or branchline quality rolling stock.

You obviously haven't seen the Genesis line yet. I'm not even going to TRY to defend the current Lionel offerings in HO.

The movies you put out on DVD were covered by copyright law, which lasts for the terms you quoted above. As stated in the trademark laws posted on the USPTO web site at:

(a)(1) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of continued use or excusable nonuse, registrations issued or renewed prior to November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for twenty years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered.

(2) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of continued use or excusable nonuse, registrations issued or renewed on or after November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for ten years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered.

I'm actually surprised to find out that Congress *reduced* the first term of issue from 20 to 10 years beginning in 1989.

Perhaps Deere & Coke were more diligent in the protection of their marks?

Paul

Perhaps Deere and Coca-Cola "granted" a license along with a substantial contribution to Athearn's coffers to have the toys produced as a means of advertising. All that is speculation as no one here knows one way or the other.

Captain Handbrake

In lawsuits the jury is just the first round, you get to keep re biting the apple in appeal court as long as you can pay the lawyers

The trick if you are the big guy is to have your lawyers out spend the lawyers the little guy

However like Microsoft or the Strong funds though you want to settle out of court and seal the documents it limits others from using the court case and its finding against you and stops the spending of money on lawyers

Actually, I've never seen an entire episode. The neck ties, stained glass windows part is from a Tom Lehrer song.

Regards,

DAve

```````` That was a mistake. What if they get a bunch of old guys for jurors who had Lionel train sets as kids?! 8^D

Paul - "The CB&Q Guy" (Happily Modeling 1969 In HO.)

Please point out where it says that:

"Edward A. Oates" wrote in news:BCE4ECF4.1E7E% snipped-for-privacy@unearthlylink.net:

That's what I meant -- and it's good to see some US railroads still know 'free advertising' when it comes their way :-D What you're describing pretty much goes for my prototype (Japan) .. most RR companies assist the model company with yard access, plans and schematics, etc .. the results are stunning ...

Too bad greed (and overzealous protection of trademark) has gotten the better of UP ... we'll see how it all goes; for you guys, I'd hope for the best, fear the worst, and settle for anything inbetween.

wrote in news:TuQvc.10568$ snipped-for-privacy@read2.cgocable.net:

I can't offer any comment on that, being an N scale modeler, and my chosen prototype is Japan (specifically, passenger trains). High quality is relative. In my prototype, a 'high quality' model has short couplings, interior lighting, ultra-complex prototypical paint scheme on top of the usual 5- pole motor, reversible end lighting (white/red), correct light position, correct body styles, etc. etc. .. so I'm rather spoilt. :-)

What I've seen from Athearn (which amounts to their new N range), it looks very solid -- Lionel I can't say a word about.

On Thu, 03 Jun 2004 12:12:23 GMT, "Charles P. Woolever" purred:

True Lionel has defended their TM and that has absolutely nothing to do with this issue. The reason for companies like UP and others to suddenly have started defending their TM is because there have been changes in the law. Before one could defend solely if the usage defamed or was inappropriate now it must be defended in ALL cases. In the past letting model companies use their marks and phrases was perfectly fine and did not at all imperil their mark's ownership as the manufacturers did in no way denigrate the UP mark. Moreover they actually acted as a sort of free publicity and UP and the rest welcomed the usage. Then the law changed. No longer was it permitted to overlook some usages which were positive but those had to be treated the same as any other infringement and failure to do so could cost a company their trademark (some argued this was a ploy by big companies to grab the marks of smaller companies who did not have the legal budget to defend every non licensed use. Whatever the reason the law was changed and we are stuck with it and have to obey it, like it or not.) Not only does one have to defend the mark, for the mark to be considered to have value commercial users and licensees MUST pay something. If free the mark has no value and that makes it very hard to show damages if it is used in a negative way. Therefore the demand for payment. in all likelihood it costs UP licensing division more to administer the licenses than UP gets from the licenses. They absorb this differential as the cost of doing business. This whole case is not a case of some big bad business attacking some little guy, it is a case of regulation run amuck and foolish changes in the law. Better people should complain about the law and those who forced them through Congress (Take a bow, Mr. Eisner) instead of whining about a business trying to protect its property.If it means so much to you get on your Congressional representatives to change the law so companies have the discretion to permit benign usage without absurd licensing.

cat

On 3 Jun 2004 10:12:16 -0700, snipped-for-privacy@yahoo.com (Marty Hall) purred:

Neil is NOT part of Lionel management nor does he have any more influence than any other stockholder of similar investment. Sure, if he or any other big investor voices an opinion it is listened to but he does not make business decisions including licensing at Lionel. He is a fan and customer and model railroader, not an executive. He has stated this on several occasions and I tend to believe him.

cat

On 03 Jun 2004 21:20:54 GMT, "JB/NL" purred:

A good part of that is because Japanese copyright and trademark is RADICALLY different than any other nation. Personally I think it is a lot saner and more reasonable than US law.. I deal with Japanese copyright and trademark laws a great deal and aside from the occasional dust up with Bandai (gomen, Hanada san), it is remarkably stress free.

cat

On Fri, 04 Jun 2004 00:10:32 GMT, "Mark Mathu" purred:

Strange as that sounds, it is actually quite short for a complaint of this nature. Remember even a simple eviction which, in days gone by, was a single sheet of paper now runs 7-10 pages in Los Angeles and the response can run several times that. I regret I did not invest in the paper companies when i see the massive increase in pages for a simple filing today.

cat