As reported by the New Mexico Business Weekly, a Massachusetts company called RailRunner N.A, Inc., which develops truck-and-rail systems and is the owner of RAILRUNNER (U.S. Trademark Reg. No. 3,227,113) and RAILRUNNER (Stylized) (U.S. Trademark Reg. No. 2,966,296), for, among other things “Railway bogies,” “Railway vehicles,” “Repair of railway vehicles” “Logistics management in the field of railway vehicles,” “Custom manufacture of railway vehicles,” and “Educational services [related to maintanence and operation of railway vehicles” has sued the New Mexico Department of Transportation for its use of NEW MEXICO RAIL RUNNER EXPRESS for a commuter passenger rail system running from Santa Fe to Albuquerque to Belen, NM.
According to the article, RailRunner (the company) has been warning New Mexico authorities about the use of the name for a while now. RailRunner also brought an opposition to the state’s application to register NEW MEXICO RAIL RUNNER, and the Board granted summary judgment to RailRunner on the ground that the New Mexico agency that originally applied for the mark wrongfully transferred the application (an “intent-to-use” application) to another New Mexico agency, in violation of Section 10 of the Lanham Act.
Now that the state (and its subdivisions) have not renamed the commuter line, RailRunner’s speeding them off to federal court in Massachusetts.
A state official was quoted in the article as saying that she was “confident” that the state would be able to work something out, but, on the merits, it looks like the state should be expecting to end up face-first in a big, flat rock.
But, the state may have one saving grace– Sovereign Immunity. The Eleventh Amendment to the U.S. Constitution essentially prevents individuals from suing states in federal court, and the U.S. Supreme Court has specifically recognized that Congress can’t “force” a state to waive that right through the Lanham Act. As I’ve not been extensively involved in any trademark litigation matters in federal court against state subdivisions, and I’ve not been involved in this apparently long-running dispute between these parties, I don’t know whether sovereign immunity is available in this situation or whether any of the actions of the state has resulted in a sovereign immunity waiver. But only time will tell who’s a wile coyote with their branding and litigation strategy and who’s just Wile E. Coyote, missing the prize and ending up with flattened face and some seared fur.