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• Forever 15by J. Thomas McCarthy • Reborn at 35by Peter G. LeFevre
Forever 15 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 numerical order must trump their petty concerns. The U.S. government, having solved the easy issues of the budget deficit, immigration, and the Medicare crisis, is moving on to more important and pressing domestic problems. A corner of the bureaucracy in the House of Representatives, known as the Office of the Law Revision Counsel, has made a proposal to tidy up the U.S. Code by moving and renumbering the federal Trademark Act. In fact, the OLRC has gone further, actually expending the many hours needed to prepare a voluminous and comprehensive bill spelling out in detail how the sections of the Trademark Act are to be changed and renumbered to conform with the OLRC’s notions of neatness and order. See “ Amendment of Title 35, United States Code: To Incorporate Trademark Provisions and Certain Other Provisions of Intellectual Property Law.” In the course of tidying up the Trademark Act, the OLRC is also 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 longtime address of the Patent Code. The trademark statutes would then be tacked on to the tail end of the Patent Code and renumbered in order. How come? The reason given is that there is a pressing need to “consolidate” the Trademark Act with the Patent Code. As 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 will not be “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 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 (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 (1878) (“Property in the use of a trademark . . . bears very little analogy to that which exists in copyrights or in patents.”). 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 the office leaves out the Copyright Act. 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 (1984). This moving of 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?” CONFUSION COMING New numbers will surely 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 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 will have to change their phone numbers and their cell-phone lists and their stationery. But neatness counts! Once that is sorted out, the 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!
Reborn at 35 J. Thomas McCarthy ridicules a proposal to move the Trademark Act from Title 15 to Title 35 of the U.S. Code. Professor McCarthy insists that the Trademark Act fits comfortably in Title 15, so there is no reason to move it. What professor McCarthy never mentions and perhaps fails to understand is the principal purpose of the proposal, which is to re-enact the Trademark Act and related laws as part of a positive-law title of the code. The proposal to re-enact the Trademark Act as positive law was prepared by the Office of the Law Revision Counsel of the House of Representatives, which is charged by law with maintaining the official version of the U.S. Code and preparing legislation to enact individual titles of the code into positive law. Congress has the goal of enacting all general and permanent laws of the United States into positive law. As part of this process, existing law is reorganized and restated, without substantive change, to improve the overall organization of the code and of the particular provisions being re-enacted. The style is modernized; large blocks of text are divided into smaller units with appropriate headings; obsolete provisions are repealed; and ambiguities, contradictions, and other imperfections are corrected to the extent this can be done without changing the meaning. The resulting positive-law title becomes legal evidence of the law rather than merely prima facie evidence. On the whole, the law is made more accessible to all. When Congress first published the code in 1926, none of the titles was positive law. Beginning in 1947, Congress started enacting individual titles of the code into positive law. These include Title 17, Copyrights, and Title 35, Patents. The proposal to re-enact the Trademark Act and related laws as part of a positive-law title is merely a continuation of the long-term goal of enacting the entire code into positive law. TOO MUCH COMMERCE The question, then, is not whether the Trademark Act should be positive law, but where in the code the act should be placed. Title 15, titled “Commerce and Trade,” currently consists of more than 1,800 pages (in the official government version, which does not include case annotations) and 105 chapters, covering a wide variety of subjects from professional-boxing safety to commercial-space competitiveness. Professor McCarthy argues that the Trademark Act should remain in Title 15 because the constitutional basis for trademark law is the commerce clause. But laws are not classified into a title of the code based on their constitutional underpinnings. Indeed, if all laws based on the commerce clause were classified into Title 15, the title would balloon to unmanageable proportions. Instead, it makes sense to divide Title 15 into a number of new, smaller titles based on subject matter. This can be done as portions of the code are enacted into positive law. Thus, the choice is whether to put the Trademark Act and related laws into their own title or whether to add them to Title 35, Patents. Both options are possible, but adding them to Title 35 seems like the better option. The trademark laws, by themselves, would make a fairly small title, and it would not make sense in the long run to have a huge number of small titles. But more importantly, contrary to professor McCarthy’s view, Title 35 would make a good fit. Congress recognized the similar nature of patent law and trademark law when it enacted Section 77 of the Act of July 8, 1870 (ch. 230, 16 Stat. 198), which provided for national protection for trademarks registered in the Patent Office. Indeed, it is the U.S. Patent and Trademark Office that administers both laws today. A POSITIVE BENEFIT No doubt, the enactment of a new positive-law title causes a certain amount of disruption, at least in the short run. Experienced practitioners will have to learn new section numbers. But in the long run, the benefits have proved to be worth the cost. Newcomers will find the law much more accessible, for the reasons stated above. Experience with the enactment of other titles has shown that those who resisted the change came to appreciate the change a few years later. The proposal is currently in the form of a draft bill. The Office of the Law Revision Counsel actively seeks responsible comments from all who might be interested. Information about the proposal and the submission of comments can be found online. The insights of professor McCarthy and of other trademark experts and practitioners would be indispensable in producing the best possible positive-law trademark provisions, regardless of where they appear in the code.
J. Thomas McCarthy is a senior professor at the University of San Francisco and the author of the six-volume treatise Trademarks and Unfair Competition . Peter G. LeFevre is law revision counsel to the U.S. House of Representatives. This exchange originally appeared in the National Law Journal , an ALM publication.

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