Copyright (c) 2008 All rights reserved. http://works.bepress.com/jeffrey_samuels Recent documents in Jeffrey M Samuels en-us Sun, 30 Nov 2008 15:31:01 PST 3600 http://works.bepress.com/jeffrey_samuels/32 http://works.bepress.com/jeffrey_samuels/32 Mon, 10 Mar 2008 15:46:12 PDT This Subcommittee prepared the following paper on a circuit-by- circuit review of the issue of gray market goods and the material differences test. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/31 http://works.bepress.com/jeffrey_samuels/31 Mon, 10 Mar 2008 15:38:09 PDT Scope of Task Force. The Task Force was formed in December 2004 to review various proposals to amend the Federal Trademark Dilution Act (FTDA), 15 U.S.C. ?1125(c) (Pub. L. 104-98, 109 Stat. 985). The FTDA was enacted into law on January 16, 1996 to provide a remedy for the dilution of "famous" marks. Since its enactment, the statute has been the subject of almost 400 reported judicial decisions (see J. Thomas McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts, 41 Houston Law Review No. 3), with splits of authority on a wide number of issues. In its 2003 decision in Moseley v. V Secret Catalogue, 537 U.S. 418 (2003), the Supreme Court resolved one conflict in ruling that the owner of a "famous" mark must prove actual dilution in order to be entitled to relief under the FTDA. Largely as a result of Moseley, discussions ensued, primarily within the International Trademark Association, with respect to proposed amendments to the FTDA. Last April, the House Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on a "Committee Print to Amend the Federal Trademark Dilution Act." At that hearing, then Section Chair Robert W. Sacoff testified that the Act should be amended in three ways: (1) to create a likelihood of dilution standard for relief; (2) to provide a specific cause of action for dilution by tarnishment; and (3) to allow non-inherently distinctive marks to be eligible for protection. The Committee Print was never introduced as a bill and no further consideration was given to the matter. The recently convened 109th Congress is expected, however, to consider FTDA reform. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/30 http://works.bepress.com/jeffrey_samuels/30 Mon, 10 Mar 2008 15:04:02 PDT As this is written, the patent and trademark law communities await word as to who will be appointed to lead the Patent and Trademark Office during the Clinton Administration. While that question will likely be answered long before publication of this article, perhaps its observations and recommendations can help formulate opinion and guide the agency's new leadership. This article will reflect on five years of management experience at the PTO' and on what changes are needed to make the PTO a more effective and responsive organization. Jeffrey M. Samuels Patent & Trademark Office http://works.bepress.com/jeffrey_samuels/29 http://works.bepress.com/jeffrey_samuels/29 Mon, 10 Mar 2008 14:58:57 PDT The Trademark Law Revision Act [hereinafter TLRA or the Act] was enacted on November 16, 1988, and becomes effective November 16, 1989. The new Act provides that an application for a federal trademark registration may be based on a bona fide intention to use a mark in commerce. This change harmonizes U.S. trademark law with that of most other countries.The Patent and Trademark Office [hereinafter PTO] has drafted proposed rules implementing the intent to use provisions of the new law. The new rules will go into effect at the same time as the Act. The following "Questions and Answers" address changes that will affect the trademark law practitioner. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/28 http://works.bepress.com/jeffrey_samuels/28 Mon, 10 Mar 2008 14:22:59 PDT The scope of copyright protection for computer programs has proven to be a vexing issue for the courts. Over the past year, several courts focused on the issue and reached different results. This article will give background and then review and comment upon the newest decisions. Jeffrey M. Samuels Copyright http://works.bepress.com/jeffrey_samuels/27 http://works.bepress.com/jeffrey_samuels/27 Wed, 05 Mar 2008 11:46:54 PST In the year following implementation of the Trademark Law Revision Act of 1988 (the TLRA), Pub. L. No. 100-667, 102 Stat. 3935 (1988), the Trademark Examining Operation (TMEO) witnessed a dramatic increase in the filing of trademark applications. A large portion of the increase can be attributed to the provision in the TLRA authorizing the filing of "intent to use" (ITU) applications. Though the pace of examination by the TMEO's corps of Examining Attorneys has not slowed, the increased number of applications awaiting examination has caused the average time it takes both to begin and to conclude examination of an application to increase. Accordingly, for the Trademark practitioner desiring expedited examination of an application, it is more important than ever to prepare that application thoroughly and to prosecute it vigorously, while taking care to note the effect the TLRA has had on application requirements, examination procedures and substantive issues. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/26 http://works.bepress.com/jeffrey_samuels/26 Wed, 05 Mar 2008 11:43:32 PST In the year following implementation of the Trademark Law Revision Act of 1988 (the TLRA), Pub. L. No. 100-667, 102 Stat. 3935 (1988), the Patent and Trademark Office (PTO) witnessed a dramatic increase in the filing of trademark applications. A large portion of the increase was attributable to the provision in the TLRA authorizing the filing of "intent to use" (ITU) applications. During the second and third years under the revised statute, filing levels dropped slightly, but remained well above pre-TLRA annual levels.Though the pace of examination by the PTO's Trademark Examining Attorneys did not slow, and despite the hiring of additional examiners, the increased number of applications awaiting examination has caused the average time it takes both to begin and to conclude examination of an application to increase. Accordingly, for the Trademark practitioner desiring expedited examination of an application, it is more important than ever to prepare that application thoroughly and to prosecute it vigorously, while taking care to note the effect the TLRA has had on application requirements, examination procedures and substantive issues. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/25 http://works.bepress.com/jeffrey_samuels/25 Wed, 05 Mar 2008 11:36:27 PST In the year following implementation of the Trademark Law Revision Act of 1988 (the TLRA), Pub. L. No. 100-667, 102 Stat. 3935 (1988), the Patent and Trademark Office (PTO) witnessed a dramatic increase in the filing of trademark applications. A large portion of the increase was attributable to the provision in the TLRA authorizing the filing of "intent to use" (ITU) applications. During the second, third and fourth years under the revised statute, filing levels dropped slightly, but remained well above pre-TLRA annual levels.Though the pace of examination by the PTO's Trademark Examining Attorneys did not slow, and despite the hiring of additional examiners, the increased number of applications awaiting examination has caused the average time it takes both to begin and to conclude examination of an application to increase. Accordingly, for the Trademark practitioner desiring expedited examination of an application, it is more important than ever to prepare that application thoroughly and to prosecute it vigorously, while taking care to note the effect the TLRA has had on application requirements, examination procedures and substantive issues. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/24 http://works.bepress.com/jeffrey_samuels/24 Wed, 05 Mar 2008 11:16:37 PST Over the long history of United States trademark law, [FN1] few principles were as "black and white" as the prohibition against protection for color alone. While color, when combined with words, designs, symbols or other arbitrary and distinguishing matter, may be protectible, color per se is not - or was not.The color per se rule is founded on two major policy considerations. First, there is concern that since the number of colors is limited, to grant exclusive rights in colors would soon deplete the available stock and, thus, be anticompetitive. Second, there is concern that if color per se is protectible, trademark infringement suits would soon denigrate into questions of shade confusion that the judiciary is ill-equipped to resolve. But, in 1985, the United States Court of Appeals for the Federal Circuit held in In re Owens-Corning Fiberglas Corp. that the color "pink" for home insulation was registrable as a trademark. This holding reverberated throughout the legal and business communities and was thought to represent a major change in the law.Since Owens-Corning was decided, a number of other courts considered the issue of whether color per se is registrable as a trademark. This article will examine to what extent the Owens-Corning decision is being followed in other jurisdictions. The basic conclusion is that Owens-Corning did not result in widespread trademark protection for color per se. Some courts refuse to follow Owens-Corning and it is still the extraordinary case in which the overall color of a product is protected. In a sense, then, Owens-Corning may best be viewed as being of mixed precedential value. This article also proposes an amendment to the Lanham Act which would increase the likelihood that Owens-Corning would be followed in appropriate fact situations. Jeffrey M. Samuels Trademarks http://works.bepress.com/jeffrey_samuels/23 http://works.bepress.com/jeffrey_samuels/23 Wed, 05 Mar 2008 11:05:44 PST With the internationalization of markets, obtaining, maintaining, and enforcing trademark rights on a multilateral basis is critical. Because "trademark rights exist in each country solely according to that country's statutory scheme," the procedures and the standards for registrability differ around the world. Unfortunately, as national laws vary considerably and it is often necessary to file in each country where protection is sought, international trademark protection is often a "time-consuming, costly, and complicated process." Moreover, in some countries, the enforcement of trademark rights is virtually non-existent. Significant changes addressing many of these problems are on the horizon. Both the North American Free Trade Agreement [FN4] (NAFTA) and the Uruguay Round of the General Agreement on Tariffs and Trade [FN5] (GATT) contain provisions setting forth minimum standards of protection for trademarks. Also, the World Intellectual Property Organization (WIPO) currently is fostering two important initiatives: the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and the Draft Trademark Law Treaty. ]The NAFTA implementing legislation became law on December 8, 1993. After a great deal of uncertainty, the GATT round concluded on December 15, 1993, and it is anticipated that the United States will endorse the agreement. Discussion of the Draft Trademark Law Treaty continues, and a diplomatic conference to be held in late 1994 should finalize its provisions. The Madrid Protocol, already in its final form, awaits only national approvals prior to implementation. Though far from certain, the United States may eventually adhere to both the Madrid Protocol and the Trademark Law Treaty. This Article explains the trademark provisions contained in the GATT and the NAFTA, as well as the basic provisions of the Madrid Protocol and the WIPO Draft Trademark Law Treaty. The Article then discusses their probable impact on trademark owners and practitioners. Jeffrey M. Samuels Trademarks