Model train company v NY transport: appeal heads to Fourth Circuit


Model train company v NY transport: appeal heads to Fourth Circuit

Steve Mann /

US-based small model train company Mikes Train House has taken its trademark infringement case against New Yorks Metropolitan Transportation Authority (MTA) to the US Court of Appeals for the Fourth Circuit, after a lower court ruling found against the company.

Mikes, based in Columbia, Maryland, originally sued the MTA (pdf) at the US District Court for the District of Maryland for trademark, trade dress and copyright infringement on October 6.

The toy company argued that the MTA infringed its trade dress and trademarks, and asked for a declaratory judgment against MTAs use of advertising that infringed its copyright.

It also asked to cancel MTAs trademark for New York City Transitunder the Lanham Act.

MTA is a public benefit corporation responsible for public transportation in New York and serves 12 counties in the state.

Mikes said that it had been selling subway model cars and trains for over 35 yearsand that its advertising discusses the history of the real-life train or subway car that it is replicating so that consumers understand the significance of the train and its place in American culture.

In the suit, Mikes said that MTAs public transport system had fallen into disrepairand that it had approved $27 billion dollarsin funding to overhaul the system.

Mikes said that MTA resurrected a dispute” that had been dropped a decade agoand threatened to sue Mikes in May for trademark, trade dress and copyright infringement.

According to the suit, MTA owns a mark at the US Patent and Trademark Office for the term New York City Transitfor model trains.

Further, MTA sent Mikes emails in May saying that Mikes use of Metropolitan Transportation Authorityand New York City Transit Authorityfor advertising model subway cars infringed MTAs trademarks. Mikes denied the infringement.

The October suit also said that the MTA competed unfairly, and asked for costs, attorneys’ fees and a trial by jury.

On November 9, the Maryland court granted (pdf) MTAs motion to dismiss Mikes amended complaint for lack of personal jurisdiction, but denied MTAs motion to dismiss the toy companys original complaint.

The court also denied Mikes request for leave to conduct jurisdictional discovery and closed the case.

Mikes filed an appeal (pdf) at the US Court of Appeals for the Fourth Circuit on December 7 against the dismissal of its first amended complaint for lack of personal jurisdiction.  

Mike’s Train House, trademark, trademark infringement, Metropolitan Transportation Authority, trade dress, Fourth Circuit, toys, trains, transport,

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