Different folks have different viewpoints on railway preservation. A local enthusiast group (no names please) recently registered a trademark on the name and logo of a local "fallen flag" railroad, and are now asking some people who want to use the name to seek a liscence from them (currently for a token fee, but I don't like the precedent). This all seems counter-productive to the concept of keeping the history alive, but everyone is entitled to their opinion.

Does anyone out there have any similar tales in this regard? Is there a larger legal issue at work here that might prevent such a practce? Seems to me there was a gent who tried to trademark the Pennsy keystone or some other similar railroading icon and was forced to retreat. Perhaps you've been in a similar situation or are familiar with some statute or case law? Would appreciate hearing from you. Thanks!

jsmatlak@earthlink.net

In regards to Fallen Flags, I think that the new road retains rights over the trademarks, etc. of the fallen flag.

For example, I have a notepad with various designs from my favorite road. I wanted to reprint the designs for new scratch pads. I wrote the new road, telling them of my intentions, stressing the point that this was for me only, not a commercial thing. After several notes back and forth, permission was granted.

Now, there are some trademarks that might expire along the way, and an individual may be able to 'claim' ownership of that mark, but I prefer to err on the side of caution and check to make sure!

Regards,
Burlington John

Burlington Route Historical Society
CBQJohn@msn.com

> Different folks have different viewpoints on
> railway preservation. A local enthusiast
> group (no names please) recently registered
> a trademark on the name and logo of a local
> "fallen flag" railroad, and are
> now asking some people who want to use the
> name to seek a liscence from them (currently
> for a token fee, but I don't like the
> precedent). This all seems
> counter-productive to the concept of keeping
> the history alive, but everyone is entitled
> to their opinion.

> Does anyone out there have any similar tales
> in this regard? Is there a larger legal
> issue at work here that might prevent such a
> practce? Seems to me there was a gent who
> tried to trademark the Pennsy keystone or
> some other similar railroading icon and was
> forced to retreat. Perhaps you've been in a
> similar situation or are familiar with some
> statute or case law? Would appreciate
> hearing from you. Thanks!

Two examples come to mind. One was the case you mention, the "Pennsylvania Railroad of Indiana," if I have the name right, the guy that incorporated and "claimed" the PRR keystone. Penn Central put a stop to that one quick.

There is a gentleman in Durango who, according to rumor, has "claimed" the pre-1923 Denver & Rio Grande heralds, but I don't know that for sure. I haven't heard of him seeking licensing fees if he has indeed done so.

It's a moot point, however, in his case and your local one as well. Trademark law is excruciatingly clear: while "text" trademarks may revert to the public domain if they are not enforced (the words "Aspirin" and "Xerox" were both registered trademarks which did so), graphic logos remain the property of the company who registers or first used them.

And trademarks do NOT have to be registered to be protected. If the registration application made by your local example is granted, it can be overturned once the original user of trademark or its successor makes its rights known.

That is, if they choose to. Since there is not a lot of money in licensing "fallen flag" heralds for mugs, T-Shirts, model decals, and the like, they may not pursue it. They may not even be aware of it.

If you have a preservation concern, perhaps the best thing to do is notify the corporate successor of the effort and suggest they formally donate their rights in the herald to a historical society.

Check the "basic facts" link on the US Patent and Trademark Office web site (below) for more authoritative information.

JAC


US Patent and Trademark Office

In dealing with Norfolk Southern, they have wisely kept the rights to their various predecessor logos. At the same time, for bonafide organizations working in transportation history, they have been very generous to grant permission to use the emblems of the SR and N&W and others, thus keeping the logos out of the hands of any potential vultures.

http://nctrans.org
Wrinnbo@aol.com

>I was at the Danbury Railroad Musem last summer and I noted that their ex Boston and Maine engine had DRM painted on the tender. I asked the tour guide why not B&B and he reported that Guilford Transportation Corp wanted an excessive liscence fee to use the historic name. It seems that not all corporations are not as helpful as NS or UP!

ted_miles@NPS.gov

'Taint necessarily so. What about B&M F-7s at North Conway, and B&M 3713 in Scranton? Not to mention two B&M 0-6-0s and a 4-4-0, and quite a few cabooses and other diesels in preserved settings, all carrying B&M heralds, from the square to the Minuteman, to the "Mc Ginnis".

Tour guides at museums sometimes put their own spin on things-- I've heard some rather eye-opening editorializing and "details" about GG-1s from a tour guide at Pa. State RR Museum a few years ago.

hpincus@mindspring.com

I'm with Howard on this one, Ted - it sounds more like "if you don't know the answer, make something up" than anything else.

Most successor railroads make a clear delineation between commercial and non-commercial use. Union Pacific has outsourced all its commercial licensing to IMG in New York, but retains control over non-commercial licensing. When the C&TS contacted UP about using D&RGW logos on equipment, we were given the go-ahead by John Bromley. Had we wanted to produce souvenirs with those same logos to sell, we would have had to license them through IMG.

JAC

US Patent and Trademark Office

Remember Tom's motto, "it is easier to apologize than to get permission". The chances of the right person at a railroad finding out that you have painted a box car and added a logo from a railroad long gone but in the family tree is slim to none. Many of the people in these corporations do not know that the old what ever line was once part of so and so corporation.

Now you say you will get in big trouble, how is that there are people selling everything from clocks to underwear with railroad logos from Fallen Flags and the railroads or other hold companies have not don't anything about it. The old logos have become public domain.

So just paint that old gondola and add the logo and don't worry about it.

Steam Railroading Message Board
tgears@dca.net

> Remember Tom's motto, "it is easier to
> apologize than to get permission".

It's not just railroad trademarks that you should be concerned about!

When the Billy Jones "Wildcat" Railroad (an 18" gauge steam railroad in Los Gatos, California) opened in 1970, a well known carton "puddy-cat" figure was used as the railroad's mascot. Letterhead, tickets, the passenger cars, even souvenirs included images of this particular feline.

As luck would have it, someone connected with Warner Brothers passed through and rode our little train. Soon thereafter we received a cordial letter from their attorneys. Perhaps, recognizing the financial limits of our non-profit organization, they negotiated a reasonable phasing out schedule of their image. Needless to say, our own mascot was quickly created and applied to letterhead, the passenger cars, etc; however, it took several years for us to run out of the brochure stock!



ken.middlebrook@nsc.com

> Remember Tom's motto, "it is easier to
> apologize than to get permission". The
> chances of the right person at a railroad
> finding out that you have painted a box car
> and added a logo from a railroad long gone
> but in the family tree is slim to none. Many
> of the people in these corporations do not
> know that the old what ever line was once
> part of so and so corporation.

Now Tom, I'm not trying to pick a fight here, but if your neighbor came over and borrowed your car, or lawn mower, or raided your fridge, figuring he would apologize if you caught him, how would you feel?

On the one hand we claim to be upstanding organizations whose aim is to celebrate the history of the Southern, the Pennsy, etc. On the other hand we don't act in a businesslike fashion, and try to "get away with" something. We'll get a lot more respect FROM the Class 1s if we show some respect TO the Class 1s. Let's show them the basic courtesy we expect, and use the manners that our mamas taught us.

> how
> is that there are people selling everything
> from clocks to underwear with railroad logos
> from Fallen Flags and the railroads or other
> hold companies have not don't anything about
> it.

Perhaps they've licensed the logos legally? Surely not all, of course. But a reputable manufacturer will do so.

>The old logos have become public domain.

Sorry, Tom, their is NO SUCH THING in US Law. (Read my earlier post.) Claiming and wishing don't make it so. I researched this over a year ago, and discussed it with a P&T lawyer.

JAC

US Patent and Trademark Office

Are you saying that if I own a Boston and Maine passenger car, let's say, that I cannot repaint it as B&M without getting permission from whoever now owns what's left of the B&M railroad? After all, my museum is not "doing business as" the Boston and Maine Railroad; we're not in the railroad business at all. We don't ship anything anywhere.

I looked at the site you recommend. If I'm cutting through the dense cloud of legalese correctly, a mark has to be re-registered every 10 years certifying that the mark is being used in the normal course of business. Neither Guilford nor anybody else is doing business as B&M, are they? Will they actually sue anyone who labels a piece of equipment for B&M, D&H, etc.? Why would they?

Where's a good lawyer when you need one? Kevin, are you listening? Kevin???

Huningtons chapter relettered their up dome as up7003, supposedly up changed that. it could be due to they didn't want to straighten out the paperwork when the car is moved and have to explain it wasn't theirs. Just my guess. A lot of these rr's still use reporting marks of the lines they have gobbled up. I wonder if u used a name that has been dormat for 100 years wether there would be a fuss.

bndfbarker@aol.com

> Are you saying that if I own a Boston and
> Maine passenger car, let's say, that I
> cannot repaint it as B&M without getting
> permission from whoever now owns what's left
> of the B&M railroad? After all, my
> museum is not "doing business as"
> the Boston and Maine Railroad; we're not in
> the railroad business at all. We don't ship
> anything anywhere.

Well, I may have, but I certainly didn't intend to ;-) "Plain text" like the words "Boston" and "Maine," gets judged to a slightly different standard. But if you include in that paint job the "Minuteman" logo, or some "stylized" representation of words (the script "New York, New Haven, and Hartford" would be a good example), then I believe you should get permission.

> If I'm
> cutting through the dense cloud of legalese
> correctly, a mark has to be re-registered
> every 10 years certifying that the mark is
> being used in the normal course of business.
> Neither Guilford nor anybody else is doing
> business as B&M, are they?

The 10-year rule is for REGISTERED trademarks. Registering a trademark gets you additional protection (punitive damages, national exclusivity, etc.). But a trademark does not have to be registered to be protected.

Will they
> actually sue anyone who labels a piece of
> equipment for B&M, D&H, etc.? Why
> would they?

Good questions ;-) I suspect not. It's a non-commercial use, and as you say you're not likely to be confused with them.

But "Will you get caught?" is the wrong test in my view. Like it or not, those classic railroad heralds are the legal property of someone somewhere. If the tables were turned, you would probably want the courtesy of being asked. If they're unlikely to sue, they're even more unlikely to refuse permission.

> Where's a good lawyer when you need one?

Is there any such thing? ;-) (Apologies to all the lawyers - really)

JAC

> Well, I may have, but I certainly didn't
> intend to ;-) "Plain text" like
> the words "Boston" and
> "Maine," gets judged to a slightly
> different standard. But if you include in
> that paint job the "Minuteman"
> logo, or some "stylized"
> representation of words (the script
> "New York, New Haven, and
> Hartford" would be a good example),
> then I believe you should get permission.

> The 10-year rule is for REGISTERED
> trademarks. Registering a trademark gets you
> additional protection (punitive damages,
> national exclusivity, etc.). But a trademark
> does not have to be registered to be
> protected.

> Will they

> Good questions ;-) I suspect not. It's a
> non-commercial use, and as you say you're
> not likely to be confused with them.

> But "Will you get caught?" is the
> wrong test in my view. Like it or not, those
> classic railroad heralds are the legal
> property of someone somewhere. If the tables
> were turned, you would probably want the
> courtesy of being asked. If they're unlikely
> to sue, they're even more unlikely to refuse
> permission.

> Is there any such thing? ;-) (Apologies to
> all the lawyers - really)

> JAC

This has turned into a very useful discussion, but if I can attempt to bring it back around to my original starting point: the situation I am concerned with has a local rail history group registering a fallen flag railroad name and one of its logos as their own trademark, and in so doing, asking others to license from them the right to use this name and logo. They're only asking for a token fee now, but in the future, who can say? It's the precedent that makes me uncomfortable. Apparently the name and logo had gone unused commercially for some forty years, so now they have registered it and are claiming trademark rights. The railroad in question got swallowed up by another railroad that in turn got swallowed up in the recent UP merger.

All this certainly seems contrary to the spirit of preserving rail history, but that's just an opinion. My question is, is this legal? Can you pick up someone else's unused trademark and claim the rights for yourself, even though the name and logo have been used continuously by countless modelers, authors, and manufacturers of railroad memorabilia and knick-knacks for several decades?

jsmatlak@earthlink.net

I think I know the situation that John Smatlak is talking about. My questions/thoughts are the following:
1) Does the Union Pacific know about this and what have they said?
2) This registration and request for fees (even if at a token dollar) sure seems disingenuous by this historical society.
3) This historical society has never used the name of this company as part of its own name nor has it owned or exhibited any large artifacts (read railroad cars, buses, or trucks) from this company.
4) I agree with John's concern as to where this may lead--higher fees or refusal because of personalities.

The final question is can they do it???

BN

bnorden@gateway.net