I wonder if they have to get BNSF permission? BNSF controls itself and all its predecessors names.
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If Pan Am can be a Railway? 
Well for now at least as CSX is buying them out.
Northern Pacific has not been an entity since 1970. The name is likely in the public domain regardless.
https://trademarks.justia.com/...lway-company-107071/
Appears that "Northern Pacific" is still a trademark owned by BNSF. The trademark is classified under the genera of "Railroad transportation services" so perhaps an airline may be far enough removed that a license is not needed. However, the airline is still providing a transportation service.
A War Bonnet DC-4 - who knew ?
When two (or more) railroads merge to form a new railroad, the reporting marks and name of the old railroads become the property of the new railroad. Similarly, if railroad A buys railroad B, the reporting marks and name of railroad B become the property of railroad A.
In the early 1990s, Chicago & North Western bought new freight cars that came from the factory lettered with reporting marks "CMO" (Omaha Road) and "MSTL" (Minneapolis & St. Louis), railroads C&NW had taken control of decades earlier. I believe they also used "CGW" (Chicago Great Western) reporting marks on some new cars. Again, these were not old cars still painted for the old railroad, but new cars bought by C&NW.
Some of these reporting marks are still used by Union Pacific, who bought C&NW in the 1990s.
@GG1 4877 posted:Northern Pacific has not been an entity since 1970. The name is likely in the public domain regardless.
A business name is a trademark. Trademark protection can be continued indefinitely, as long as it's being used in some way as it was originally used (i.e. with respect to something involving a railroad), as long as it's renewed every 10 years.
Regardless, another business can use someone else's trademarked name if that use is not confusingly similar (in the mind of the public) to original business's use of the name. Presumably, it has been determined that use of the name Northern Pacific with respect to an airline is not confusingly similar to its use as the name of a railroad. Therefore, the use of the name Northern Pacific for an airline would be allowed.
All depends on whether the rights holder even cares. It could be the folks creating Northern Pacific Air talked to BNSF and they were okay with it. If they didn't and BNSF sued , BNSF would need to make a case that the airline is similar enough to the train service that it would be harmed. Given that the Northern Pacific hasn't existed since 1970 and this is an airline, would be a very hard case to press.
On the other hand, the owner of the 4 seasons restaurant in NYC once sued a hamburger place out west for using the name "4 seasons", hopefully the judge threw it out (I don't recall), was patently ridiculous.
@Rusty Traque posted:Not quite as Santa Fe Skyway was affiliated with the Santa Fe railroad, just as Canadian Pacific Airlines was affiliated with Canadian Pacific railway. Santa Fe Skyway lasted two years from 1946-1948.
The new Northern Pacific Airline has no such affiliation with BNSF or any predecessor roads.
Rusty
Just wanted to add that Santa Fe Skyway lasted only two years from 1946-1948 because it was not successful. On the contrary, Santa Fe Skyways was successful and growing rapidly. The ICC (Interstate Commerce Commission) was not a fan of a railroad owning a airline (freight or passenger) at the time and Santa Fe was forced to liquidate its air holdings. In essence, the ICC told Santa Fe that it could be either an airline or a railroad, but not both.
@bigkid posted:BNSF would need to make a case that the airline is similar enough to the train service that it would be harmed. Given that the Northern Pacific hasn't existed since 1970 and this is an airline, would be a very hard case to press.
Define "very hard", particularly since at times airlines and railroads have been under common ownership in the past, under the umbrella heading transportation business. Given that I'd disagree that the conclusion is clear and trivial here; it's not.
Here's an example:
By RuthAS - Own work, CC BY 3.0, https://commons.wikimedia.org/...x.php?curid=18688802
(BTW -- It doesn't matter whether the rail version of Northern Pacific has not existed since 1970. What matters is whether the trademark continues to be held, and paid for.)
Mike
@wjstix posted:When two (or more) railroads merge to form a new railroad, the reporting marks and name of the old railroads become the property of the new railroad. Similarly, if railroad A buys railroad B, the reporting marks and name of railroad B become the property of railroad A.
In the early 1990s, Chicago & North Western bought new freight cars that came from the factory lettered with reporting marks "CMO" (Omaha Road) and "MSTL" (Minneapolis & St. Louis), railroads C&NW had taken control of decades earlier. I believe they also used "CGW" (Chicago Great Western) reporting marks on some new cars. Again, these were not old cars still painted for the old railroad, but new cars bought by C&NW.
Some of these reporting marks are still used by Union Pacific, who bought C&NW in the 1990s.
That's true, but just to clarify, it's only true as long as old railroad B still had the legal rights to those names and marks and they had not expired or become public domain at the time of the merger with or acquisition by the new railroad A.
Trademarks are not like other forms of 'property'. In the United States, trademark rights continue only so long as the mark is used in commerce.
I am not aware of a litigated case, but I think there is a good argument that companies like BNSF are no longer using a fallen flag name in commerce, at least not in connection with the "railroad transportation services" for which it is registered.
In any case, in June 2021 the airline filed its own trademark applications for "Northern Pacific" in connection with airline transportation services. Under section 2(d) of the Lanham Act, their registration cannot be approved if it would cause confusion with an existing trademark. So the USPTO will have to decide:
- Does BNSF still have rights in the "Northern Pacific" mark in connection with railroad transportation services? (debatable)
- If so, would use of the "Northern Pacific" mark for airline transportation services cause confusion with "Northern Pacific" mark for railway transportation services? (much more likely, I think)
@Professor Chaos posted:Trademarks are not like other forms of 'property'. In the United States, trademark rights continue only so long as the mark is used in commerce.
I am not aware of a litigated case, but I think there is a good argument that companies like BNSF are no longer using a fallen flag name in commerce, at least not in connection with the "railroad transportation services" for which it is registered.
In any case, in June 2021 the airline filed its own trademark applications for "Northern Pacific" in connection with airline transportation services. Under section 2(d) of the Lanham Act, their registration cannot be approved if it would cause confusion with an existing trademark. So the USPTO will have to decide:
- Does BNSF still have rights in the "Northern Pacific" mark in connection with railroad transportation services? (debatable)
- If so, would use of the "Northern Pacific" mark for airline transportation services cause confusion with "Northern Pacific" mark for railway transportation services? (much more likely, I think)
To the best of my knowledge, Northern Pacific currently only appears as a herald (along with six others) on BNSF's 25th anniversary locomotives and three "Heritage" covered hoppers. These locomotives and Heritage cars retain BNSF reporting marks.
I would guess that would be a case that the words "Northern Pacific" are not being used as an active mark for railway transportation services.
Rusty
Well, as long as they don't use NP's slogan: "The view is terrific on Northern Pacific." 
I’d wonder if (and whom) they’re hiring, but my guess is they won’t be around long enough for BNSF to sue for using the NP name…
Tom
I think some folks are thinking of like songs, where the publishing company and the songwriters can only get royalties for a certain number of years, after which it then goes into the "public domain" and anyone can record or perform the song without paying anybody. As far as I know, if company A and B merge to become company C, company C continues to own the names A and B pretty much forever. The federal charter (signed by President Lincoln) creating the NP is still valid, ownership of it having passed to BN and later BNSF. The trackage BNSF operates that were built on land NP received via land grants doesn't go back to the state or whoever owned it before it was granted to NP.
@wjstix posted:I think some folks are thinking of like songs, where the publishing company and the songwriters can only get royalties for a certain number of years, after which it then goes into the "public domain" and anyone can record or perform the song without paying anybody. As far as I know, if company A and B merge to become company C, company C continues to own the names A and B pretty much forever. The federal charter (signed by President Lincoln) creating the NP is still valid, ownership of it having passed to BN and later BNSF. The trackage BNSF operates that were built on land NP received via land grants doesn't go back to the state or whoever owned it before it was granted to NP.
Trademark rights potentially last forever, but only so long as they continue to be used in connection with particular goods and services. If use in commerce lapses, then the trademark rights no longer exist.
As I said above, trademark rights are not like other forms of property, even intellectual property. Patents and copyrights continue to exist for a defined term regardless of whether the owner is making use of them or not. But trademarks depend on use in commerce.
Why do any of you really care about this. I am not dumb enough to confuse that airplane with a train!
@wjstix posted:I think some folks are thinking of like songs, where the publishing company and the songwriters can only get royalties for a certain number of years, after which it then goes into the "public domain" and anyone can record or perform the song without paying anybody. As far as I know, if company A and B merge to become company C, company C continues to own the names A and B pretty much forever. The federal charter (signed by President Lincoln) creating the NP is still valid, ownership of it having passed to BN and later BNSF. The trackage BNSF operates that were built on land NP received via land grants doesn't go back to the state or whoever owned it before it was granted to NP.
No - a company can only legally transfer to another company as many rights and interests as it lawfully owns at the time of sale, merger or transfer and if a particular right, such as a trademark, has lapsed due to abandonment or lack of use, then it does not automatically transfer over to the new company.
Whether a particular right, such as a trademark, has actually lapsed is a different issue and, although there are some guiding standards, if contested, would be decided on a case-by-case basis.
@Big Jim posted:Why do any of you really care about this. I am not dumb enough to confuse that airplane with a train!
Unfortunately it's not that simple.
Confusion about sponsorship and affiliation, not just identity, can give rise to trademark infringement.
So if some portion of the relevant public believed there was a connection or relationship between an entity providing rail transportation services under the mark "Northern Pacific", and an entity providing air transportation services under the mark "Northern Pacific", then whoever has superior rights in the mark could prevent the other user from using the mark.
Frankly, it's up to BNSF to take any action, if they even bother to.
Rusty
My understanding is a trademark usually involves a brand name, like the commercial name of a product a company makes. It's not the same as the name of the company, which is registered with the government (like with a state's Secretary of State's office) and is use in legal documents, tax returns, etc. I don't believe that expires.
Trains magazine's recent story on the "new" Rock Island in Mississippi noted the railroad had to get permission of the company that owns the rights to the Rock Island name before proceeding, even though there hasn't been a Rock Island RR for 40 years.
@wjstix posted:My understanding is a trademark usually involves a brand name, like the commercial name of a product a company makes. It's not the same as the name of the company, which is registered with the government (like with a state's Secretary of State's office) and is use in legal documents, tax returns, etc. I don't believe that expires.
Trains magazine's recent story on the "new" Rock Island in Mississippi noted the railroad had to get permission of the company that owns the rights to the Rock Island name before proceeding, even though there hasn't been a Rock Island RR for 40 years.
The difference here is the "new" Rock Island is a railroad using "The Rock" colors, naming and graphics.
I didn't see past or current owners of the Rock Island brand suing Dwayne "The Rock" Johnson for trademark infringement.
Then there's Alcatraz Island often referred to as "The Rock."
If anything. Prudential Insurance might have a claim as their slogan used to be "Own A Piece Of The Rock."
Rusty
@Rusty Traque posted:The difference here is the "new" Rock Island is a railroad using "The Rock" colors, naming and graphics.
I didn't see past or current owners of the Rock Island brand suing Dwayne "The Rock" Johnson for trademark infringement.
Rusty
I thought Maytag has rights to the name.
It does not take much to keep rights up. Lionel keeps its Ives rights up on the O track clips. Though this also could be used to keep Ives patents and yrafemarks up.
The 'new' Rock Island, "Rock Island Rail" has the full name "Chicago, Rock Island & Pacific Railroad LLC". It purchased the rights to the railroad name, and the right to use "The Rock" and the "R" logo from the previous owner of those trademarked items. If it hadn't, the owner of those trademarks could have (would have) filed an injunction against them to make them stop.
A company being sold or merged etc. doesn't stop the company's legal name from being registered with the federal government and in all the states it does business in. You can't call a new railroad "St.Paul & Duluth" because that name is owned by BNSF who got it via BN who got it via NP, who bought the St.P&D in 1900.
An update.
BNSF did sue Northern Pacific Airlines for trademark infringement.
Perhaps no one at BNSF noticed Northern Pacific Airlines until someone at BNSF saw this thread.
@WBC posted:An update.
BNSF did sue Northern Pacific Airlines for trademark infringement.
Unfortunately for BNSF, their trademark involved rail transportation, not "transportation" in general. Unless the planes run on rails, their legal challenge is likely to be unsuccessful. Often times large corporations will file suits like these in an attempt to bludgeon their opponent into submission. Many smaller companies simply can't afford the legal fees and costs to challenge and win.
Northern Pacific, vs. Canadian Pacific involve different trademark laws in a different country, which is a whole different can of worms, and what couldn't fly here did fly there. (pun intended)
From what I know from business law (and maybe the lawyers on here can speak about it more clearly), with trademark infringement , there needs to be pretty specific claims to make the charge stick:1)That a reasonable man (that old legal chestnut) could assume to associate the said trademark on another product with the other one. So obviously, if someone started an airline called "Pan American" or "Pan Am", without the consent of the rights holder (and someone does hold that right), it would be infringement. There also is the concept of endorsement, like if I use a name and that there is some reason to think people might think it is an endorsement (the 4 seasons case rested on, I believe, 2 things 1)that the burger joint would gain from associating its name with a swanky 4 star restaurant in NYC and 2)that the 4 seasons in NY would be harmed that a burger joint has the same name. Pretty sure the case was thrown out or the court found for the burger place). There are hotels called 4 seasons all over the place from what I recall.
There are plenty of Pan Am's out there, was even before airline went kaput. Trucking company, plumbing services, etc, had that name. A bus company might have implications, with some sort of association that the bus company was as good as Pan Am airways, but it would be a difficult case to prove because they are so different. Names are also different than things like logos, a trucking company using the Pan Am logo would be held in infringement, because the logo would imply some connection to the holder.
Obviously you can sue over anything and hope you can get a favorable judge. BNSF I seem to recall sued model traincompan ies for using their various trademarks/paint schemes, and it could be the corporate beancounters looking to get every dime they can out of their 'property'. I don't think BNSF could argue the Northern Pacific Airlines hurt their business, since the railroad disappeared a long time ago, it more than likely is wanting some sort of money to license the name.
@bigkid posted:From what I know from business law (and maybe the lawyers on here can speak about it more clearly), with trademark infringement , there needs to be pretty specific claims to make the charge stick:1)That a reasonable man (that old legal chestnut) could assume to associate the said trademark on another product with the other one. So obviously, if someone started an airline called "Pan American" or "Pan Am", without the consent of the rights holder (and someone does hold that right), it would be infringement. There also is the concept of endorsement, like if I use a name and that there is some reason to think people might think it is an endorsement (the 4 seasons case rested on, I believe, 2 things 1)that the burger joint would gain from associating its name with a swanky 4 star restaurant in NYC and 2)that the 4 seasons in NY would be harmed that a burger joint has the same name. Pretty sure the case was thrown out or the court found for the burger place). There are hotels called 4 seasons all over the place from what I recall.
There are plenty of Pan Am's out there, was even before airline went kaput. Trucking company, plumbing services, etc, had that name. A bus company might have implications, with some sort of association that the bus company was as good as Pan Am airways, but it would be a difficult case to prove because they are so different. Names are also different than things like logos, a trucking company using the Pan Am logo would be held in infringement, because the logo would imply some connection to the holder.
Obviously you can sue over anything and hope you can get a favorable judge. BNSF I seem to recall sued model traincompan ies for using their various trademarks/paint schemes, and it could be the corporate beancounters looking to get every dime they can out of their 'property'. I don't think BNSF could argue the Northern Pacific Airlines hurt their business, since the railroad disappeared a long time ago, it more than likely is wanting some sort of money to license the name.
I've often wondered about the process (and cost) for model train companies to get approval for using trademarked railroad names. I seem to recall there was an issue several years ago with a license to use the Maersk name and at that time (2015?) there would be no more Maersk model train items made.
@Frank Mulligan posted:I've often wondered about the process (and cost) for model train companies to get approval for using trademarked railroad names. I seem to recall there was an issue several years ago with a license to use the Maersk name and at that time (2015?) there would be no more Maersk model train items made.
The UP went after the model train industry starting in 2003, they were looking for licensing revenue for UP and the railroads that merged/it bought. They sued Athearn and Lionel in like 2004 (note, didn't have this info at the tip of my fingers, looked it up). It was a revenue move pure and simple,part of a broader effort.
It backfired on them, it generated a ton of negative publicity for them which 'surprised' the knuckleheads that came up with this idea, it prob cost them more in negative publicity than they could have gotten back. In 2006 they basically granted a perpetual license to model train companies. In their press releases they tried backtracking, claiming that the only reason they wanted licensing was to make sure that the 'brand was displayed properly', rather than money (which totally contradicted what they filed in court). An executive of one of the model train companies speaking anonymously (I would hazard a guess Athearn) said that was kind of ridiculous, in that model train companies strive to reproduce the real thing as closely as possible.
@bigkid posted:The UP went after the model train industry starting in 2003, they were looking for licensing revenue for UP and the railroads that merged/it bought. They sued Athearn and Lionel in like 2004 (note, didn't have this info at the tip of my fingers, looked it up). It was a revenue move pure and simple,part of a broader effort.
It backfired on them, it generated a ton of negative publicity for them which 'surprised' the knuckleheads that came up with this idea, it prob cost them more in negative publicity than they could have gotten back. In 2006 they basically granted a perpetual license to model train companies. In their press releases they tried backtracking, claiming that the only reason they wanted licensing was to make sure that the 'brand was displayed properly', rather than money (which totally contradicted what they filed in court). An executive of one of the model train companies speaking anonymously (I would hazard a guess Athearn) said that was kind of ridiculous, in that model train companies strive to reproduce the real thing as closely as possible.
Don't know what source you looked at for your information but, UP only "sued" two companies over so-called unauthorized use of any of their logos. One company was a restaurant in up-state New York (reportedly called 'Union Pacific'), which the railroad lost in court, and the other "company" was Nils Huxtable, photographer & calendar producer, from Canada, which the railroad lost and subsequently had to pay a substantial cash settlement to Mr. Huxtable.
The "rest of the story" was, Mike Wolf, of MTH Electric Trains, filed suit against Union Pacific over their screwball attempt at licensing model train companies. All of this was going on shortly after the UP + SP merger, which caused a major melt-down in the Texas area. Such melt-down caused the Wall Street Journal to question why the UP was more concerned with "going after toy train manufacturers" than "running their railroad". At the same time, the CEO responsible for the whole mess, Dick Davidson, retired, and the new CEO quickly told the UP Corporate Attorney to put a stop to all the "toy train licensing foolishness" and settle the suit with MTH Electric Trains.
https://www.redorbit.com/news/..._train_royalty_fees/
"U.P. also filed lawsuits against model-train makers Athearn Inc. and Lionel LLC in 2004. The case against Athearn also was settled. The case against Lionel was dismissed after that company filed for bankruptcy." It went on to say that the UP, in the face of negative backlash, basically granted universal license in 2006.
I'm 99.9% sure BNSF will win the case - assuming the airline doesn't just agree to drop the name first. As I said, a company name isn't like the brand name of a cigarette or candy bar. A company has to register with the federal government and in each state that it serves, so it can pay withholding for its employees, pay sales tax and social security, file corporate tax returns etc. You can't just grab a name of a company and start using it as your own. I don't think it really matters if BNSF can prove damage or not, it just has to prove that it is the legal holder of the name. Basically every time a BNSF train runs on a former NP line, it's showing it's still operating it, especially the trackage located on the federal and state land grants NP was given.
@wjstix posted:I'm 99.9% sure BNSF will win the case - assuming the airline doesn't just agree to drop the name first. As I said, a company name isn't like the brand name of a cigarette or candy bar. A company has to register with the federal government and in each state that it serves, so it can pay withholding for its employees, pay sales tax and social security, file corporate tax returns etc. You can't just grab a name of a company and start using it as your own. I don't think it really matters if BNSF can prove damage or not, it just has to prove that it is the legal holder of the name. Basically every time a BNSF train runs on a former NP line, it's showing it's still operating it, especially the trackage located on the federal and state land grants NP was given.
That isn't true, if it were ACME would only be a defunct supermarket chain. How many places are called 'Mom's kitchen' or the like? Basically BNSF owns the rights to Northern Pacific railroad. I would bet if you look out there you will find northern Pacific as a business name.
Now if there has been a Northern Pacific airline that NP railway had owner, be a different story. What this is is quite typical,likely trying to scare the airline into paying some sort of ongoing fee to 'license' the name,figuring a small airline doesn't want to spend money litigating this. It is why UP went after Lionel and Athearn, they have huge legal staffs.
@wjstix posted:I'm 99.9% sure BNSF will win the case - assuming the airline doesn't just agree to drop the name first. As I said, a company name isn't like the brand name of a cigarette or candy bar. A company has to register with the federal government and in each state that it serves, so it can pay withholding for its employees, pay sales tax and social security, file corporate tax returns etc. You can't just grab a name of a company and start using it as your own. I don't think it really matters if BNSF can prove damage or not, it just has to prove that it is the legal holder of the name. Basically every time a BNSF train runs on a former NP line, it's showing it's still operating it, especially the trackage located on the federal and state land grants NP was given.
I'm 99% sure you know almost nothing about trademark law. A company name is EXACTLY like the brand name of a cigarette or candy bar. Its a "MARK" used in "TRADE", hence the name. Having a name in one narrow field doesn't give you any rights of the use of the name in an unrelated field. It's quite possible for a trademark to be registered in several different fields at the same time, however "Northern Pacific" wasn't. It was ONLY registered for use in "Railway Transportation Services". And I'm 100% positive Northern Pacific Railroad hasn't issued a paycheck in over 50 years (despite that having NOTHING to do with the trademark). The ONLY reason why "heritage" engines exist is so the corporations can keep alive trademarks (Simply running an engine over their former trackage doesn't suffice), but the trademarks for most of the "fallen flags" are, in most cases, only registered for "Railway Transportation Services".
Sometime in the last 20 years, there was an article about UP running out of car numbers with the initials of their current names.
To solve this, UP revived the use of its predecessor freight car number series for use on its freight car fleet. My understanding was that these predecessor numbering series were being applied to new freight cars that had no relationship with the predecessor RRs.
I don’t know if BNSF, NS, CSX, CN, or CP have also used predecessor freight car number series on new freight cars.
I believe that is correct for U.P. Plus before they were taken over by U.P., C&NW in the nineties had started using CGW (Chicago Great Western), CMO (Omaha Road) and I believe MSTL (Minneapolis & St. Louis) reporting marks on some new cars they were receiving. IIRC the idea was they wanted all of their say covered hoppers to be in the same number range, so by using different reporting initials they increased the numbers available, since you could have a CNW 123456, MSTL 123456, CGW 123456, and CMO 123456.
I don't know much about trademarks. However, I do have some patents. I do know this with patents, if the patent holder knowingly allows someone to infringe on the patent and doesn't do anything about it, soon they will have no patent or the patent will be unenforceable.
Win or loose, BNSF may be in the position where they have to sue to maintain rights. If BNSF knowingly allowed and entity to use the Northern Pacific name without challenge courts may take that as abandonment of the trademark.
