Jeffrey M Samuels

Patent, Trademark and Copyright Laws

Jeffrey M. Samuels — Mon, 14 Nov 2011 17:38:06 PST

International Trademark Treaties and Laws

Jeffrey M. Samuels et al. — 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.

Federal Trademark Dilution Act Task Force: Report and Resolutions

Jeffrey M. Samuels — 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.

Reflections on Management of the PTO

Jeffrey M. Samuels et al. — 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.

Questions and Answers on Intent to Use: The Trademark Law Revision Act and Rules

Jeffrey M. Samuels et al. — 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.

New Developments in Copyright Protection of Computer Software

Jeffrey M. Samuels et al. — 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.

How to Handle Basic Copyright and Trademark Problems: 1991

Jeffrey M. Samuels et al. — 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.

How To Handle Basic Copyright and Trademark Problems: 1992

Jeffrey M. Samuels et al. — 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.

Understanding Basic Trademark Law

Jeffrey M. Samuels — 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.

Color Trademarks: Shades of Confusion

Jeffrey M. Samuels et al. — 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.

The Changing Landscape of International Trademark Law

Jeffrey M. Samuels et al. — 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.

The Madrid Protocol and Trademark Harmonization

Jeffrey M. Samuels — Wed, 05 Mar 2008 10:50:18 PST

Over the past few years, the World Intellectual Property Organization (WIPO), a specialized body of the United Nations, has undertaken efforts to streamline and simplify the procedures associated with the practice of trademark law around the world. One initiative, a “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” (Madrid Protocol), should make it easier and cheaper for trademark owners to obtain and maintain protection abroad. Another initiative, the “Trademark Law Treaty,” would harmonize various administrative and procedural aspects of international trademark practice.

Understanding Basic Trademark Law: 1994

Jeffrey M. Samuels — Wed, 05 Mar 2008 10:42:22 PST

The following is a comprehensive overview covering virtually all aspects of practice in the U.S. Patent and Trademark Office related to trademarks. The primary purpose of the paper is to introduce attorneys and others to PTO trademark practice. Please consult the authorities cited in the outline for a complete and up-to-date treatment of any specific area of interest.

Understanding Basic Trademark Law: 1995

Jeffrey M. Samuels — Wed, 05 Mar 2008 10:36:29 PST

Protection For Color Under U.S. Trademark Law

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 10:20:21 PST

Compared with most national trademark laws, the U.S. trademark statute (“Lanham Act”) affords significant protection to color. The United States Supreme Court's March 1995 decision in Qualitex Co. v. Jacobson Products Co. clarified that color alone is registrable. Further, trademark owners can protect color as part of a product's trade dress and can claim color as a feature of a mark. The purpose of this article is to familiarize the reader with the scope of U.S. trademark law vis-a-vis color, with an emphasis on recent developments regarding the registrability of color alone.

The Trademark Office as a Government Corporation

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 10:09:12 PST

As the Lanham Act (“Lanham Act”) passes the half-century mark, it is time for Congress to cut the Patent and Trademark Office's (“PTO's”) Trademark Operations free from its ties to the agency's Patent Operations, and provide it with the administrative freedom to respond to an ever-increasing workload and to function in a more business-like manner. This goal could be achieved if Trademark Operations were recreated as a government corporation. During the recently concluded 104th Congress, four bills were introduced to amend the Lanham Act and other statutes to make the PTO a government corporation. It is expected that similar proposals will be introduced early in 1997. Of the four proposals, only the Hatch Bill would have provided the PTO's Trademark Operations (“Trademarks”) with greater autonomy than it presently has vis-à-vis the PTO's Patent Operations (“Patents”). This Essay explains why the 105th Congress should remove Trademarks from the PTO, and establish a government corporation wholly devoted to those operations.

Recent Developments in Trademark Law and Practice

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 09:55:52 PST

Nineteen ninety-six was an exciting year for U.S. trademark law. The enactment of the Federal Trademark Dilution Act and a number of notable court decisions, relating to such issues as “dual-use” trademarks, the constructive use and anti-assignment provisions of the “Trademark Law Revision Act,” and Internet domain names, high-lighted the year's developments. This article will consider in summary form the significant judicial, legislative and regulatory changes that took place during the year.

Noteworthy PTO Trademark Decisions

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 09:44:40 PST

This article reviews, the decisions of the Trademark Trial and Appeal Board and the Assistant Commissioner for Trademarks during late 1996 and most of 1997. The decisions of the Board on the issue of trade dress functionality and of the Commissioner relating to intent to use practice are particularly noteworthy.

Significant Recent Trademark Decisions

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 08:33:43 PST

This article reviews the significant federal cases relating to trademark law over the past year. Disputes relating to trade dress, the Internet, and dilution continue to challenge the judiciary. There were also interesting decisions involving infringement, false advertising, antitrust, bad faith, attorney's fees, PTO practice and procedure and internationally related issues.

Principal Opinions Affecting PTO Trademark Practice

Jeffrey M. Samuels et al. — Wed, 05 Mar 2008 08:16:26 PST

This past year featured interesting decisions by the Trademark Trial and Appeal Board and its primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, as well as by Office of the Assistant Commissioner for Trademarks. Of particular note were the comments of Federal Circuit Judge Michel regarding the Board's responsibility to explain the rationale for its ultimate conclusion on the issue of likelihood of confusion. The Board issued several split decisions on the issue of likelihood of confusion, involving such well-known marks as UNCLE BEN'S and HARD ROCK CAFE, and addressed important procedural questions relating to such issues as “clear error” and the application of the “constructive use” provisions of Section 7(c) of the Lanham Act. Finally, a number of petition decisions further liberalized practice in several key respects.