X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Ok, according to Uncle Sam, it’s time to move the trademark law. Where to? Why, to Title 35, where the Patent Code is. Isn’t that where trademark law belongs? The trademark owners and their lawyers will fuss and gripe, but numerological order must trump their petty concerns. The U.S. government, having solved the easy issues of the budget deficit, immigration and a Medicare crisis, is moving on to more important and pressing domestic problems. A corner of the bureaucracy known as the Office of Law Revision Counsel (OLRC) in the House of Representatives has made a proposal to tidy up the United States Code by moving and renumbering the federal Trademark Act. In fact, the OLRC has gone further to actually expend the many hours needed to prepare a voluminous and comprehensive bill spelling out in detail how the sections of the Lanham Trademark Act are to be changed and renumbered to conform with the OLRC’s notions of neatness and order. See Discussion Draft of April 25, 2006, Amendment of Title 35, United States Code, To Incorporate Trademark Provisions and Certain Other Provisions of Intellectual Property Law,” at http://uscode.house.gov/cod/t35/. In the course of tidying up the Trademark Act, the OLRC also is making some “minor changes” in the organization and statutory text in order to remove “imperfections.” Of course, the OLRC promises that these are only “technical” changes that will not “impair the precedential value” of the law. The Trademark Act would be rousted out of its present digs in Title 15, where it has resided for more than half a century since 1946. It would be packed up into boxes and moved over to Title 35: the long-time address of the Patent Code. The trademark statutes would then be tacked on to the tail end of the Patent Code and re-numbered in order. How come? The reason given is that there is a pressing need to “consolidate” the Trademark Act with the Patent Code. Since they are both “intellectual property” laws, the OLRC says that they should be housed together. One difficulty is that the title of the newly engorged Title 35 is not “Intellectual Property.” Rather, it will be named “Patents, Trademarks and Other Intellectual Property.” Sort of like “Patents and Other Stuff.” I don’t see what’s broke and needs to be fixed. I think the reason that trademark law got put in Title 15 in the first place was that Title 15 is entitled “Commerce and Trade.” I think that a very good reason for leaving the trademark law in Title 15 is the U.S. Constitution. The constitutional basis for the federal trademark law is the commerce clause. More than 125 years ago, the U.S. Supreme Court rejected the argument that Congress has the power under the patent and copyright clause of the Constitution (Art. 1 � 8, cl. 8) to regulate trademarks. Trade-Mark Cases, 100 U.S. 82, 94 (1879) (“[W]e are unable to see any such power [to regulate trademarks] in the constitutional provision concerning authors and inventors, and their writings and discoveries”). See also McLean v. Fleming, 96 U.S. 245, 254 (1878) (“Property in the use of a trademark . . . bears very little analogy to that which exists in copyrights or in patents”). What about the Copyright Act? The OLRC says nothing about consolidating the Copyright Act with the Patent Code. At least they share a constitutional basis. If the OLRC wants to “consolidate” all IP laws, it is perplexing that it leaves out the Copyright Act. Copyright is, after all, the other half of patents in the same constitutional clause. The Supreme Court said it found “basic similarities between copyrights and patents.” Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417, 439, n.19 (1984). This moving all IP laws into one place has certainly been a pressing need felt by all IP attorneys and their clients for many years. I can’t tell you how many times frustrated and frazzled attorneys have sent me e-mails saying: “Professor McCarthy! I need your help quickly! I’m writing a brief and I’ve lost the Trademark Act and can’t find it! Why isn’t it in Title 35 with the Patent Code?” New numbers would be sure to cause confusion and chaos in legal memos, briefs, courtroom arguments and judicial opinions. For example, in a memo or brief with a citation to the case of A v. B, where the court said it relied on “Lanham Act � 43(a), 15 U.S.C. 1125(a),” it will have to be explained that that same statute is now found in 35 U.S.C. 664(a). For many years, huge amounts of work, paper and time will be expended in trying to explain in writing and orally what is the same and what has been changed in this massive renumbering of the statute. Who will pay for clarifying all this confusion and the extra time spent in sorting it out? Who else? Clients-mostly trademark owners, big and small. Once the OLRC has tidied up all the IP statutes and put them in one pile in shipshape and apple-pie order, I have some other renumbering projects for them. The first is our messy telephone area code system. Can anyone tell me why 212 for Manhattan is right next door to 213 for Los Angeles? Or why 206 for Seattle is sitting cheek to cheek with 207 for Maine? This is a jumble begging to be cleaned up! Of course, everyone in the nation would have to change their phone numbers and their cellphone lists and their stationery, etc. But neatness counts! Once that is sorted out, OLRC can move on to renumbering the federal highways. It’s disgraceful. I mean, I-24 goes from Illinois to Georgia and I-25 from New Mexico to Wyoming! What we need is some government-imposed orderliness in our lives! J. Thomas McCarthy is the author of the six-volume treatise Trademarks and Unfair Competition, published since 1973 by Thomson-West. He is a senior professor at the University of San Francisco and the founding director of the McCarthy Institute for Intellectual Property and Technology Law.

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.