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Looking at two centuries of trademarks

INTA’s law journal The Trademark Reporter (TMR) is celebrating its 100th anniversary this year. Today, four leading thinkers will mark the achievement by examining past and future trends in trademarks. James Bush reports.

When The Trademark Reporter was first published in 1911, there was no European Community, no U.S. Lanham Act and no Internet. It would even be 16 years until the trademark law concept of dilution was introduced by Frank Schechter. Would he and other great minds of that era have been able to imagine how the trademark field would evolve over the next 100 years?

At today’s session CT22 “A Century of Trademark Law: Looking Back and Looking Forward,” four leading scholars will commemorate the centennial of The Trademark Reporter by forecasting the future of trademark law based on how the subject has developed over the last century.

It is important for busy trademark practitioners in 2011 to take time to examine the history of their profession, says session moderator J. Thomas McCarthy (University of San Francisco School of Law): “Trademark law today continues to be largely a product of late nineteenth century notions of brick and mortar sales outlets, limited communications and rigid national boundaries. The realities of twenty-first century markets and modern communications will require continual changes to the law by both scholars, legislators and practitioners.” And McCarthy advises that to be successful practitioners must acknowledge and accept current marketplace realities: “The trademark practitioner who will thrive will be someone who is comfortable with rapid changes in marketing and communications and can adapt quickly.”

Looking back: Internet, counterfeiting

One of the realities of today’s marketplace is the Internet, and McCarthy says the increasing use of the web is the most significant trademark-related development of recent times: “More and more ordinary people around the world are selling and buying all sorts of things over the Internet, fundamentally altering the way that people are exposed to trademarks and the meaning they attach to those marks.”

Panelist Eric Goldman (Santa Clara University School of Law) agrees that the Internet has had a revolutionary effect, though he pinpoints the rise of user-generated content online as the key challenge to trademark law. The ability to create and publish content “has given consumers unprecedented power to publicly discuss, criticize, parody and emulate brands,” says Goldman.

But the growth of international counterfeiting is also of major significance, says panelist Lord Justice Robin Jacob (University College London and a former judge of the Court of Appeal of England and Wales). According to Jacob, “subjects such as exotic trademarks are of peripheral significance” compared with the effects of counterfeiting in healthcare and in products affecting public safety.

Panelist Miles Alexander (Kilpatrick, Townsend & Stockton) views the proliferation of counterfeiting “as presenting challenging geographic political, economic and cultural issues that are exacerbated by a dearth of control over Internet marketing.” He believes that “as with other illegal activities, ranging from alcohol prohibition and prostitution to illicit drugs, even strong criminal laws are difficult to enforce where strong countervailing consumer demand and economic incentives exist.”

Looking forward: further harmonization

It comes as no surprise, then, when Jacob says that counterfeiting is one of the areas where international harmonization is most needed. But he also says that harmonization is crucial when it comes to importation of goods bearing a trademark lawfully applied in another country. “I take the view that the EU has gone wrong here, with its peculiar rule that such goods can only be imported into the EU if the trademark owner has expressly agreed to such importation. With the world becoming a global market, we are moving to global trademarks.”

McCarthy says that the increasingly global marketplace makes harmonization necessary in the area of national registration requirements. While there has been much progress in this area, there is still much to be done, according to McCarthy. “The need to satisfy widely different registration requirements in dozens of nations creates an unnecessary expense and a barrier to entry by smaller newcomers into the world market.”

Globalizing businesses will call for increased harmonization of trademark procedure and enforcement, agrees Jacob: “There will be pressure from business to reduce the complexity of the trademark world as we know it.” And harmonization may go beyond simply ensuring that there are fewer differences among national laws. “It is entirely possible that large regional trademark offices may come into existence,” Jacob hypothesizes.

Alexander cautions against pinpointing one or two areas most needing harmonization, “particularly in a field of law in which interrelated problems require challenging creative solutions.” He notes that “the challenges of harmonization range from diversity of ‘use’ requirements in registration, maintenance, enforcement and jurisdiction to the quagmire of geographic rights problems, including the rights of the myriad of preexisting small business in cities and villages around the world which do not attempt to register their marks.”

INTA and The Trademark Reporter

“The Trademark Reporter, now celebrating its 100th anniversary at this conference, is a wonderful quintessential scholarly publication which owes its existence to both practitioners and academic scholars. Those who have contributed to its pages have been able to address the past, present and future and to state and advocate their views without restraint. Its existence is a great credit to INTA, an organization that does have a mission and positions that are frequently criticized in a publication that independently operates under its auspices.”—Miles J. Alexander (Kilpatrick Townsend & Stockton LLP), former Editor-in-Chief of The Trademark Reporter

Highlights of the TMR’s first 100 years

1911–the first volume is a true case reporter, including the text of nearly 100 U.S. trademark law decisions, as well as statutory materials and the text of a Convention relating to trademarks adopted by the “Fourth International Congress of American States” in Buenos Aires in 1910

1940–the TMR expands its focus to include articles, editorial notes and comments on current developments in the trademark field from around the world

1948–first Annual Review of the U.S. Lanham Act

1953–the Association hires the TMR’s first staff Managing Editor

1970s–the Editorial Board takes its current form, structured along the lines of other leading law reviews

1993–first International Annual Review of Trademark Jurisprudence

2006–the TMR becomes available on INTA’s website

For more information about the history of the TMR, see Miles J. Alexander & Daniel R. Bereskin, History of the Trademark Reporter, 101 TMR 52-64 (2011), first published at 93 TMR 56-68 (2003).

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