The Law Journal of the International Trademark Association

TheTrademarkReporter ®

January–February, 2011 Vol. 101 No. 1

1911–2011

Celebrating

Vol. 101 TMR 7

REFLECTIONS OF FORMER EDITORS-IN-CHIEF

On the occasion of The Trademark Reporter’s 100th Anniversary, we have asked its past Editors-in-Chief to reflect on their terms in charge of the journal and to share the memories of their tenures.

Werner Janssen, Jr.∗

Editor, May 1966–May 1968

The call for past Editors-in-Chief to contribute to this special issue of The Trademark Reporter (TMR) honoring its 100th anniversary has given me reason to reflect upon my tenure of over forty years ago. It has prompted me to note some of the changes that have taken place in the publication of the TMR since my term as Editor-in-Chief.

Publication of the TMR in the 1960s took place under a number of conditions far different from those prevailing today. First of all, the TMR was published on a monthly basis instead of every two months. Second, there were not as many trademark attorneys then as there are today, meaning that there were far fewer potential authors to draw upon. As one can imagine, filling up the journal every month presented a constant struggle, and that’s a fact. Third, the Editorial Board consisted of less than one fifth the number of members comprising today’s Board. A fourth difference is that there were fewer trademark-related legislative developments and treaties, which meant fewer subjects to write about. Lastly, there was no Internet, no World Wide Web, no e-mail, nor were there fax machines.

During my term as Editor-in-Chief, the TMR continued to expand its coverage of international trademark-related topics. For example, in 1966, the TMR published an article by Stephen P. Ladas on the problems of licensing abroad.1 Also, in that same year, the TMR included as a regular feature “Notes from Other

∗ Former Partner, von Maltitz, Derenberg, Kunin & Janssen, New York, New York, Associate Member, International Trademark Association.

1. Stephen P. Ladas, Problems of Licensing Abroad, 56 TMR 484 (1966).

8 Vol. 101 TMR

Nations” by Harold Traub.2 In the following year, in 1967, there appeared “Technical Trademark Questions—International” by Gabriel M. Frayne,3 and in 1968, “Letter from the Netherlands” by L. Wichers Hoeth.4 To complement these pieces, the TMR published reviews of international publications, including those that had no available English translations. Further, with no Internet to rely upon, the editors provided lists, in nearly every TMR issue, of trademark titles that were recently published throughout the world. Perhaps these steps to incorporate international trademark law topics into TMR’s published issues augured the association’s name change from “United States Trademark Association” to “International Trademark Association,” reflecting INTA’s continually expanding global focus.

2. Harold Traub, Notes from Other Nations, 56 TMR 177 (1966).

3. Gabriel M. Frayne, Technical Trademark Questions—International, 57 TMR 822 (1967).

4. L. Wichers Hoeth, Letter from the Netherlands, 58 TMR 31 (1968).

Vol. 101 TMR 9

Miles J. Alexander∗ Editor, May 1978–April 1980

My path to becoming the Editor of The Trademark Reporter (TMR), as I suspect may be the case with many of my colleagues who have and will be privileged to serve in that capacity, was attributable to the network of friends, colleagues, and mentors who encouraged me and paved the path for my extensive involvement in the International Trademark Association (INTA).

Mr. Ernest Rogers, a senior partner in my firm who played a major role in the protection of the Coca-Cola mark, became my mentor in the 1950s and through the decades that followed. I was encouraged to develop an expertise in the trademark area and to become active in INTA, then known as the United States Trademark Association (USTA). During the same time, I was blessed with having an exceptionally talented group of friends and law school classmates who devoted their professional careers to leadership in the trademark area. This group included Ron Lehrman and his partner, Alvin Fross, a former Editor of TMR, who had a major influence on my career and graciously introduced me to their myriad of friends who were well-known lawyers around the world in what was a small, collegial, close-knit bar. My unique group of Harvard Law School classmates—Arthur Greenbaum, Al Robin, Allan Zelnick, and David Kera—also encouraged my participation in INTA and the TMR. Despite the New York–centric tradition of leadership, they supported and encouraged my involvement from distant Atlanta. Becoming Editor of the TMR expanded its geographic reach and was one of many actions contributing to its becoming the international publication that it is today. However, without the guidance, encouragement, and approval of Charlotte Jones, who was the embodiment of TMR and the talented bedrock of the publication, none of my limited success in this role would have been possible.

Serving on the Editorial Board of TMR was a natural calling for someone whose interest in the history of the trademark bar had been piqued by mentors. One of my early projects was to volunteer to lead efforts for a special edition of the TMR dedicated to Edward S. Rogers, the father of the Lanham Act and perhaps the greatest trademark scholar and lawyer in the first half of the 20th century.

∗ Partner, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, Associate Member, International Trademark Association.

10 Vol. 101 TMR

I urge anyone seeking an understanding of the historical context of trademark law, including the meaning of the terms “brand” and “goodwill,” and anyone wanting exposure to quintessential in-depth thinking and articulate writing in our field to read that special issue of the TMR.1 It is entirely devoted to Mr. Rogers’ writings and contributions to the field and contains tributes from other giants of his generation who paid homage to him, including Stephen Ladas and Walter Derenberg. Rogers’ writings are as fresh and informative today as they were when written early in the last century.

As has been the case with other TMR Editors, my experience with the TMR led to many related activities in INTA. After my TMR tenure, I became involved in the Publications Committee and still take great pride in having conceptualized State Trademark and Unfair Competition Law with the help of other lawyers in virtually every state of the United States. (The idea was based on my experience as a JAG Air Force officer in Clovis, New Mexico, and in Newfoundland, where our only access to state laws was contained in the Martindale & Hubbell legal digest; I knew there was a need for a better legal resource in this area.) We brought the publication to fruition in 1989 with the continued efforts of Virginia Taylor, who succeeded me as Chair of the Publications Committee. State Trademark and Unfair Competition Law continues to provide a convenient research tool for the trademark bar to readily review key aspects of trademark and unfair competition law in all 50 states of the United States. Beyond this, from my TMR experience, my interests expanded into many other trademark areas, including serving as an Advisor on the Restatement of the Law of Unfair Competition, as Chair of the Trademark Public Advisory Committee of the U.S. Patent and Trademark Office, and as General Counsel for INTA. None of these would have occurred absent my activities in connection with the TMR.

My nostalgic trip through time would be incomplete without noting some of the articles in the TMR during my tenure as Editor-in-Chief. The point of mentioning the scope of articles that appear during that two-year period is to urge readers of this Anniversary Issue of the TMR to avoid the mistake of treating the historic treasure trove of past articles as ancient history. Rather, it is a vibrant source of ever-relevant observations by some of the great minds in every era of this publication—those who were gracious

1. 62 TMR 175 (1972).

Vol. 101 TMR 11

enough to share their in-depth analysis of critical questions with their colleagues.

The following chronological list is incomplete and gives only examples of the type of in-depth articles, reports, and features that were published during my tenure and that are representative of those that have appeared during the tenure of every Editor.

Beverly Pattershall’s iconic “Two Hundred Years of American Trademark Law”2 was a hallmark article that was published at the beginning of my tenure. Soon thereafter, we put together Walter Derenberg’s Memorial Issue,3 which contained, inter alia, Sidney Diamond’s “Legal Protection for ‘Moral Rights’ of Authors and Other Creators”4 as well as “Territorial Scope and Situs of Trademarks and Good Will,”5 “Product Simulation: A Right Or A Wrong?,”6 and “The Myth of Proposed International Trademark ‘Registration’ Treaty (TRT),”7 all by Walter Derenberg.

“100 Years and Today: The Foundation for the Future” by Leslie Taggart8 and “The Next 100 Years—What Will it be Like in 2078 AD” by Sidney Diamond9 were comprehensive articles that looked at the present and future of trademark law.

The Annual Review of Lanham Act cases, ably led by Arthur Greenbaum with an all-star cast of those assisting him, continued the 25-year tradition established by Walter Derenberg.10

The year 1979 began with a series of articles on antitrust considerations and trademark law,11 followed in the next issue12 with a series of articles on licensing, franchising, and tort liability by licensors, by authors including Bill Borchard, David Ehrlich, Ken Germain, and Don Kaul. In the same issue, “Tips From the TTAB” by David Kera,13 “Notes From Other Nations” by Stephen Bigger,14 and “Notes From Canada” by Dan Bereskin,15 reinforced the international scope of the TMR. 2. 68 TMR 121 (1978).

3. 68 TMR 215 (1978).

4. 68 TMR 244 (1978).

5. 68 TMR 387 (1978).

6. 68 TMR 405 (1978).

7. 68 TMR 433 (1978).

8. 68 TMR 611 (1978).

9. 68 TMR 622 (1978), reprinted infra pp. 69-80.

10. 68 TMR 687 (1978).

11. 69 TMR 1 (1979).

12. 69 TMR 109 (1979).

13. 69 TMR 159 (1979).

14. 69 TMR 166 (1979).

12 Vol. 101 TMR

Similarly, in the past (and during my tenure), the TMR provided book reviews and lists of relevant trademark articles from other publications, thus serving an invaluable function at a time before easy access to these materials through the computer and Internet; it was also a time when the number of books, articles, and other publications on trademark law was not so extensive that the comprehensive listing of all of them in the TMR would become impractical or redundant. It brings to mind Professor Tom McCarthy filling the early need of the trademark bar by including in the early editions of his landmark treatise all reported U.S. trademark decisions. The TMR, during my tenure, carried forward the tradition of reprinting amicus curiae briefs, e.g., in the Bordens16 and Century 21 Real Estate17 cases, a practice that continues to this day.

The currency of the articles as an ever-present source of scholarship were further exemplified by Dan McClure’s “Trademark and Unfair Competition: A Critical History of Legal Thought”18 and Jerre Swann’s classic article on “The Validity of Dual Functioning Trademarks: Genericism Tested by Consumer Understanding Rather Than by Consumer Use.”19

Messrs. Grimes and Battersby offered a prelude to their current publication in this area with their article “The Protection of Merchandising Properties.”20

In the same issue, Werner Janssen (who edited TMR more than a decade earlier) offered a comprehensive review of the treatment of comparative advertising in multiple continents.21 In the following year, still during my two-year tenure, Iver Cooper converted his Master’s thesis into an article dealing comprehensively with “Trademark Aspects of Pharmaceutical Product Design,”22 while William Walker offered his prescient warnings in his article “A Program to Combat International Commercial Counterfeiting.”23

15. 69 TMR 183 (1979).

16. 69 TMR 265 (1979).

17. 69 TMR 273 (1979).

18. 69 TMR 305 (1979).

19. 69 TMR 357 (1979).

20. 69 TMR 431 (1979).

21. Werner Janssen, Jr., Recent Legal Developments Abroad in Comparative Advertising, 69 TMR 397 (1979).

22. 70 TMR 1 (1980).

23. 70 TMR 117 (1980).

Vol. 101 TMR 13

The list of dozens of authors who contributed much during my rewarding tenure goes on, including outstanding practitioners such as Gary Ropski, Tony Fletcher, Floyd Mandell, Guy Blynn, and Perla Kuhn, to name but a few.

One of the great pleasures from my sharing the above thoughts with TMR readers has been the incentive to selectively reread some of these great materials and apply much of it to current issues now facing the trademark bar, my firm’s clients, and the public.

I would be remiss if this short trip through time did not note that the TMR also served as a platform for working with many colleagues who have impacted my life and career, including in particular: (i) one of my partners, Jerre Swann, a subsequent Editor of the TMR whose writing ability I cannot realistically hope to equal; and (ii) a great Canadian lawyer, Dan Bereskin, who has been devoted to the successful internationalization of USTA and the TMR over many decades. Meeting with fellow members of the trademark bar is a quintessential example of professional networking, and fulfilling personal friendships that have grown out of participation in and tenure at the TMR and INTA. The experience has provided rewards beyond measure and continues to pay dividends to this day, above and beyond the considerable benefits outlined above. Perhaps the greatest single reward is provoking thoughtful analysis of the major issues raised by unselfish, articulate colleagues who, with each issue of the TMR, challenge us to avoid mental inertia and candidly examine views on both sides of controversial issues, without any limitation by special interests. This attribute of independence by the TMR is to the great credit of the INTA Executive Director and Board, the TMR Editors, and the TMR Editorial Board. Throughout the years, the TMR has been the benchmark of integrity in trademark law, making it the leading publication in our field.

14 Vol. 101 TMR

William M. Borchard∗ Editor, May 1980–April 1982

Charlotte Jones ran The Trademark Reporter (TMR) with an iron fist, limiting the changes allowed to each Editor. I was permitted to change the title of my position to “Editor-in-Chief.” I thought this was appropriate because I read every article submitted for publication, rode herd on articles’ editors, and beat the bushes for new submissions (making my two years seem like ten). This effort made me more current on trademark and unfair competition law issues than at any other time in my career. As a young partner struggling to handle existing clients while developing new clients, performing administrative duties within the firm, and trying to be a good husband and father to two young children, the additional TMR responsibilities consumed any possible free time. But the personal rewards were enormous.

Most striking to me about the articles we published are the spectrum of issues, many of which are still debated today—generic words,1 personal names,2 equitable defenses,3 right of publicity,4 and secondary meaning.5 Other issues have become more settled—related goods,6 antitrust defenses,7 and trade dress functionality.8 And the quality of authors was first rate, including luminaries

∗ Partner, Cowan Liebowitz & Latman, P.C., New York, New York, Associate Member, International Trademark Association.

1. Ralph H. Folsom & Larry L. Teply, Trademarked Generic Words, 70 TMR 206 (1980).

2. Floyd A. Mandell, Personal Name Trademarks—Your Name May Not Be Your Own, 70 TMR 326 (1980).

3. Guy M. Blynn, Litigation Before the TTAB and CCPA: The Equitable Defenses, 70 TMR 367 (1980); Iver P. Cooper, “Unclean Hands” and “Unlawful Use in Commerce”: Trademarks Adrift on the Regulatory Tide, 71 TMR 38 (1981).

4. Ellen P. Winner, Right of Identity: Right of Publicity and Protection for a Trademark’s “Persona,” 71 TMR 193 (1981).

5. John M. Scagnelli, Dawn of a New Doctrine?—Trademark Protection for Incipient Secondary Meaning, 71 TMR 527 (1981).

6. David Goldberg & William M. Borchard, Related Goods Trademark Cases in the Second Circuit, 70 TMR 287 (1980).

7. William C. Holmes, Trademark Licensing as Structural Antitrust Relief: An Analytical Framework, 71 TMR 127; David W. Hill, Antitrust Violations as a Defense to Trademark Infringement, 71 TMR 148 (1981).

8. David W. Ehrlich, Functionality of Trade Dress: A Recent Case and a Proposed Analysis, 71 TMR 252 (1981).

Vol. 101 TMR 15

such as Floyd A. Mandell,9 Thomas J. McCarthy,10 and Saul Lefkowitz.11 We also anticipated the expansion of the United States Trademark Association (USTA) into the International Trademark Association (INTA) by publishing articles on Canadian,12 Japanese,13 and Brazilian14 issues, as well as on the protection of trademarks with an international reputation but no local use or registration.15 My memory of all the hard work has dimmed, but my strong feeling of achievement lives on.

9. Mandell, supra note 2.

10. J. Thomas McCarthy, Important Trends in Trademark and Unfair Competition Law During the Decade of the 1970s, 71 TMR 93 (1981).

11. Saul Lefkowitz, Disclaimers—May They Rest in Peace, 71 TMR 215 (1981).

12. Maurice A. Forget, The Quebec Charter of the French Language—Recent Developments, 70 TMR 339 (1980); M.E. Heinicke, Backlog Elimination in the Canadian Trade Marks Office, 70 TMR 405 (1980).

13. David S. Guttman, International Trademarks and the Japanese Language: A Guide for the Perplexed, 71 TMR 570 (1981).

14. Thomas Leonardos, On Protection of Notorious Marks in Brazil, 71 TMR 576 (1981).

15. Thomas J. Hoffmann & Susan E. Brownstone, Protection of Trademark Rights Acquired by International Reputation Without Use of Registration, 71 TMR 1 (1981).

16 Vol. 101 TMR

Anthony L. Fletcher∗ Editor, May 1982–April 1984

The first time I was offered editorship of The Trademark Reporter (TMR), I declined because (1) I was in a rough patch in my other (personal) life, and (2) I did not believe I was ready. The first was a valid reason, and, as I had suspected, being editorial honcho of TMR was not what my other life needed at the time. As I found out when I accepted the next time it was offered, nobody is ever ready for the job, until, perhaps, (s)he leaves it.

In May of 1982, I inherited no inventory or work in progress, and the first two issues of 1982 remained to be written. The fastest thing Charlotte and I could think of to get one issue out was to do a special one on the anatomy of Inwood Laboratories v. Ives Laboratories,1 the then-pending decision by the Supreme Court. We collected the petition for certiorari, all briefs including amici, and the transcript of oral argument; we also assembled a TMR panel to discuss the decision (Tom McCarthy from academia, Bev Patishall from what is now Pattishall, McAuliffe, Newbury, Hilliard & Geraldson in Chicago, Ron Kranzow from Frito-Lay, and a couple of kids who, it turned out, had both opinions and a future—Vince Palladino and Jerre Swann) and published the transcript of that discussion as well. The eagerly awaited decision turned out to be an exercise in the meaning of the clearly erroneous rule, but we had put together an issue.2

The second issue (March–April 1982) looked more like the typical TMR issue nearly thirty years ago—a reprint of Ladas Award winner Nancy Greiwe’s article on antidilution statutes as an attack on comparative advertising;3 articles on European Economic Community (EEC) licensing,4 anti-counterfeiting laws in Taiwan,5 and the use of computers in trademark

∗ Senior Principal, Fish & Richardson P.C., New York, New York, Associate Member, International Trademark Association.

1. 456 U.S. 844 (1982).

2. 72 TMR 1 (1982).

3. Nancy Greiwe, Antidilution Statutes: A New Attack on Comparative Advertising, 72 TMR 178 (1982).

4. See, e.g., Hermann Kinkeldey, Pitfalls of Trademark Licensing in the EEC, 72 TMR 145 (1982).

5. Elson Pow & John S. Lee, Taiwan’s Anti-Counterfeit Measures: A Hazard for Trademark Owners, 72 TMR 157 (1982).

Vol. 101 TMR 17

management;6 The “Trademark Forum”7 (the equivalent of what we now call “op-ed”); Board member “Tips From the TTAB”8 and “Notes From Canada”9 (by Dan Bereskin); and trademark book and article reviews.

Perhaps the most notable piece in the next two issues was Gary Ropski’s on the right of publicity (May–June 1982).10 September–October 198211 introduced me to the “memorial” issue—in that case, Daphne Robert Leeds. I hoped that would be my only obituary, but it wasn’t. After the formal memorial section, we fitted in Jim Kolemay’s “Monetary Relief for Trademark Infringement under the Lanham Act,”12 90 small-print pages of classic scholarship that won the Ladas Award. November–December 1982 was devoted to Ken Germain’s Annual Review.13

January–February 1983 had an article by former TTAB Chairman Saul Lefkowitz (“Double Trademarking”),14 a short piece on joint trademark ownership by Tom McCarthy,15 and comments by Jerry Gilson, TTAB Chair Dan Skoler, and Mack Webner.16 March–April 1983 was the issue of which I was proudest: the (then-) Cowan, Liebowitz triad of Art Greenbaum, Jane Ginsburg, and Steve Weinberg shared urgent thoughts on generecism and the “anti-Monopoly” decision (a hot issue at the time);17 Allan Zelnick expounded on “The Doctrine of ‘Functionality”;18 and Brad

6. Frank H. Cullen, Using Computers for Trademark Management, 72 TMR 162 (1982).

7. See, e.g., J. Timothy Hobbs, The Trademark Forum: Nantucket and Beyond; Reviving the Registrability of Geographic Marks, 72 TMR 204 (1982).

8. See, e.g., Louise E. Frugé, Tips From the TTAB: An “Object” Lesson, 72 TMR 211 (1982).

9. See, e.g., Daniel R. Bereskin, Notes From Canada, 72 TMR 216 (1982).

10. Gary M. Ropski, The Right of Publicity—The Trend Towards Protecting a Celebrity’s Celebrity, 72 TMR 251 (1982).

11. In Memoriam, Daphne Robert Leeds, 72 TMR 437 (1982).

12. James M. Koelemay, Jr., Monetary Relief for Trademark Infringement Under the Lanham Act, 72 TMR 458 (1982).

13. Kenneth B. Germain, The Thirty-Fifth Year of Administration of the Lanham Trademark Act of 1946, 72 TMR 559 (1982).

14. Saul Lefkowitz, Double Trademarking—We’ve Come a Long Way, 73 TMR 11 (1983).

15. J. Thomas McCarthy, Joint Ownership of a Trademark, 73 TMR 1 (1983).

16. Jerome Gilson, Daniel L. Skoler, & W.M. Webner, Comments on the Possibility of Arbitration of TTAB Proceedings, 73 TMR 64-72 (1983).

17. Arthur J. Greenbaum, Jane C. Ginsburg, & Steven M. Weinberg, A Proposal for Evaluating Genericism After “Anti-Monopoly,” 73 TMR 101 (1983).

18. Allan Zelnick, The Doctrine of “Functionality,” 73 TMR 128 (1983).

18 Vol. 101 TMR

Duft (Federal Circuit clerk to Judge Giles S. Rich) explained “Aesthetic Functionality”19 as well as it could be explained at the time. The latter won The Ladas Award. May–June 1983 was the Sydney Diamond memorial issue.20

July–August 1983 was the survey issue I had announced and begun planning when I first took the reins of editorship.21 September–October 1983 was a counterfeiting issue, to which young Jed S. Rakoff (now a U.S.D.J. in S.D.N.Y.) contributed to two articles.22 November–December 1983 was another Annual Review by Ken Germain and Steve Weinberg.23 January–February 1984 had another TMR Panel (Alan Cooper, Julius Lunsford, Catherine McCarthy, Gary Ropski) on “Fraud in the TM Office.”24 March–April 198425 was heavily oriented toward international trademark matters in jurisdictions such as Latin America, the EEC (as it was then called), and developing nations.

Then I bequeathed Charlotte, the steady hand who made it all happen, and whatever work I had in progress to John Pegram. May, 1982, through April, 1984, was a unique, and in so many ways memorable and rewarding, period for me. I got to hobnob with and edit works by the finest trademark minds, to meet and befriend the foremost thinkers in the business, and modulate a powerful and respected voice in the trademark community. I wouldn’t do it again, but I wouldn’t have missed it for the world.

19. Bradford J. Duft, “Aesthetic” Functionality, 73 TMR 151 (1983).

20. Sidney A. Diamond Memorial Edition, 73 TMR 219 (1983).

21. Survey Issue, 73 TMR 349 (1983).

22. Jed S. Rakoff & Ira B. Wolff, Commercial Counterfeiting: The Inadequacy of Existing Remedies, 73 TMR 493 (1983); Jed S. Rakoff, For Passage Now of the Trademark Counterfeiting Act: 104 Years Is Long Enough to Wait, 73 TMR 553 (1983).

23. Kenneth B. Germain & Steven M. Weinberg, The Thirty-Sixth Year of Administration of the Lanham Trademark Act of 1946, 73 TMR 577 (1983).

24. Alan S. Cooper, Julius R. Lunsford, Jr., Catherine F. McCarthy, & Gary M. Ropski, Fraud in the Trademark Office: A TMR Panel, 74 TMR 50 (1984).

25. 74 TMR 109 (1984).

Vol. 101 TMR 19

John B. Pegram∗ Editor, May 1984–April 1986

The topics addressed in The Trademark Reporter (TMR) 25 years ago still interest trademark practitioners today. For example, the protection of marks outside the field of registered goods was addressed in several articles. The May–June 1984 issue opened with a paper by David Goldberg, Bill Borchard, and Cobby Shereff on related goods in the Second Circuit.1 Beverly Pattishall supported protection against dilution in a July–August 1984 article;2 however, Prof. Emeritus Milton Handler’s “Are the State Antidilution Laws Compatible With the National Protection of Trademarks?”3 opposed legislation in that area, in the May–June 1985 issue. On another topic of continuing interest, the lead article in the September–October 1985 issue by Brian Coggio, Jennifer Gordon, and Laura Coruzzi considered “The History and Present Status of Gray Goods.”4 Bruce Keller wrote in the May–June 1985 issue on the private regulation of advertising under Section 43(a).5 And it is interesting to compare the use requirement in Trademark Office proceedings as described in Bob Sacoff’s March–April 19866 article with the present situation, which permits intent to use applications.

Tony Fletcher was a hard act to follow as TMR Editor-in-Chief, but—fortunately—he continued as a major contributor. In my term, he wrote on the functionality defense and, in 1985, succeeded Ken Germain as author of the Annual Review of court cases.

∗ Senior Principal, Fish & Richardson P.C., New York, New York, Associate Member, International Trademark Association.

1. David Goldberg, William M. Borchard, & Cobby J. Shereff, Mushrooms Revisited: More on Related Goods in the Second Circuit, 74 TMR 207 (1984).

2. Beverly W. Pattishall, Dawning Acceptance of the Dilution Rationale for Trademark-Trade Identity Protection, 74 TMR 289 (1984).

3. Milton W. Handler, Are the State Antidilution Laws Compatible With the National Protection of Trademarks?, 75 TMR 269 (1985).

4. Brian D. Coggio, Jennifer Gordon, & Laura A. Coruzzi, The History and Present Status of Gray Goods, 75 TMR 433 (1985).

5. Bruce P. Keller, How Do You Spell Relief? Private Regulation of Advertising Under Section 43(a) of the Lanham Act, 75 TMR 227 (1985).

6. Robert W. Sacoff, The Trademark Use Requirement in Trademark Registration, Opposition and Cancellation Proceedings, 76 TMR 99 (1986).

20 Vol. 101 TMR

On January 8, 1985, the Supreme Court decided Park ’N Fly, Inc. v. Dollar Park and Fly, Inc.,7 clarifying the meaning of “incontestability.” The March–April 1985 TMR8 issue was devoted to that case, the second such issue to be devoted to a particular landmark decision. We included excerpts from the application file as well as the pretrial order and opinions, and reprinted a student note that was cited by the Supreme Court. The package was tied up by a panel analysis, in which William Ball, Howard Barnaby, Jerry Gilson, Henry Leeds, and Kathy McKnight responded to questions from the TMR editors and to the comments of other panelists.

The TMR has been blessed for years with many useful contributions from the Trademark Office and the Trademark Trial and Appeal Board. We persuaded TTAB Chairman Saul Lefkowitz and Board member Janet Rice to convert Janet’s CLE outline on TTAB practice into an 88-page treatise on adversary proceedings before the Board, filling the July–August 1985 issue.9 That was the immediate antecedent for the Board’s Manual and was the leading TTAB handbook for several years. The column “Tips from the TTAB,” written by Board members and staff attorneys, continued to provide practical guidance on various aspects of Board practice. Tips authors in 1984–86 included Gary Krugman, T. Jeffrey Quinn, Janet Rice, Louise Rooney, and Rany Simms.

Although our Association still had “United States” in its name, TMR regularly published “Notes from Canada” by Dan Bereskin and Jonathan Cohen, “Notes from Other Nations” by Stephen Bigger and Barbara Kagedan, and a strong complement of articles on foreign and international trademark topics. For example, Assistant Commissioner Dan Skoler wrote a comparative examination of opposition and cancellation procedures in six nations for our September–October 1984 issue.10 Also, former Editor-in-Chief Werner Janssen, Jr., regularly contributed his encyclopedic listings of trademark articles from around the world, which were especially useful in that era before Internet search engine.

Another achievement in that era, around 25 years ago, may not be apparent from looking at the TMR. Indeed, that was our intent. In the early 1980s and for years before, the TMR was

7. 469 U.S. 189 (1985).

8. 75 TMR 115 (1985).

9. 75 TMR 323 (1985).

10. Daniel L. Skoler, Trademark Appeal, Opposition and Cancellation Procedure in Six Nations: A Comparative Examination, 74 TMR 367 (1984).

Vol. 101 TMR 21

typeset by linotype machine and printed by letterpress. Our publication had a traditional “printed” appearance. Over a period of several years, Managing Editor Charlotte Jones worked with the editors and printers to make a series of transitions, first to offset printing of material retyped in a special format by an outside service and eventually to using conventional word processing programs to edit and format the authors’ electronic manuscripts, without retyping and without loss of the traditional appearance.

22 Vol. 101 TMR

Vincent N. Palladino∗ Editor, May 1986–April 1988

I was thirty-five, and barely ten years out of law school, when it fell to me to head up The Trademark Reporter (TMR). The lead article in the first issue was Beverly Pattishall’s retrospective look at the then 40-year-old Lanham Act.1 Beverly drew on works by Nims and Rogers, Callmann and Derenberg, Handler and Lunsford—all leading practitioners and scholars in their time. In the September–October 1987 issue, we published a distinguished United States Trademark Association (USTA) panel’s recommendations for updating the statute whose history and impact Beverly had chronicled.2 To a remarkable degree, the Lanham Act amendments of 1989 reflect the views expressed in that report.

If the law is a seamless web that expands over time, building on what has come before even as it marks milestones in a changing world, so too is the TMR. Today’s TMR has shed some conventions. During my term, we reviewed books and articles and closed many issues with a listing of every new publication in the field—domestic and foreign—of which the editors had become aware. But the true strength of this special publication endures: a steadfast commitment to excellence that has been and will be passed on by generations of lawyers engaged in the practice of trademark law.

∗ Partner, Ropes & Gray LLP, New York, New York, Associate Member, International Trademark Association (INTA); Past Board Member, INTA.

1. Beverly W. Pattishall, The Lanham Trademark Act—Its Impact Over Four Decades, 76 TMR 193 (1986).

2. The United States Trademark Association (USTA) Trademark Review Commission: Report and Recommendations to USTA President and Board of Directors, 77 TMR 375 (1987).

Vol. 101 TMR 23

Jerre B. Swann∗ Editor, May 1988–April 1990

From reviewing my two-volume set that Charlotte Jones gave me—a memento always presented to Editors-in-Chief of The Trademark Reporter (TMR) upon their “retirement”—I confirmed the conclusion leaked in “The Trademark Reporter as Catalyst”:1 the two most significant articles during my tenure dealt with trademark economics. The conclusion, however, was reached far more as a consequence of necessity than I had anticipated: I could not rationally differentiate between a host of the articles in terms of quality; the decision had to be based on the then relevance (to me) of the subject matter.

The first article, “The Economics of Trademark Law” by William M. Landes and Richard A. Posner,2 literally fell into my lap.3 As I recall, I dared only one comment, and it was not acknowledged.4 The time expended from receipt to publication was virtually zero (even Charlotte was subdued), and the article remains a seminal work in the field.

The second article, “The Economics of Trademarks” by Nicholas S. Economides,5 is equally brilliant,6 but Professor ∗ Partner, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, Associate Member, International Trademark Association (INTA).

1. Jerre B. Swann, The Trademark Reporter as Catalyst, infra pp. 81-93. 2. 78 TMR 267 (1988).

3. Robin Rolfe, then Executive Director of the United States Trademark Association (USTA) (which later became INTA), was interested in promoting Chicago school views (Harvard school views having led the Justice Department to oppose enactment of the Lanham Act); and the article was an elaboration of Judge Posner’s “A Bradlee Boal Memorial Lecture” at New York University Law School on March 2, 1988, sponsored by the then USTA Foundation.

4. Professor Landes and Judge Posner had observed “whatever courts might say, . . . XEROX is widely used to denote products as well as [a] particular brand,” Posner, supra note 2, at 273; I had ventured a few months earlier that photocopiers “are generally purchased by office managers and purchasing agents in connection with supplying goods and services to others; . . . it would be irrelevant, therefore, that a business executive or sec-retary uses “xerox” generically as long as the manager of the copy room understands XEROX as a brand name. [fn: “Indeed it would be irrelevant that the manager of the copy room uses “xerox” generically as long as he or she understands there is a KODAK xerox, and IBM xerox, a SAVIN xerox and a XEROX xerox.”], Jerre B. Swann, Anti-Monopoly: An Exercise in Economic Futility, 78 TMR 65, 68 n.17; the authors did not respond, and I dared not venture further.

5. 78 TMR 523 (1988).

6. The Economides article also bore Robin Rolfe’s fingerprints. Financial support for the undertaking was provided by a grant from the USTA.

24 Vol. 101 TMR

Economides had not yet reached his current proficiency in expressing complex economic views in the very basic English of trademark lawyers and, as had several earlier editors, I spent hours converting his submission into an easily comprehended form. In the process (because I wanted to be certain that I accurately captured his ideas), I learned more economics than I had gleaned from years of antitrust practice (and finally felt totally comfortable in rejecting Miles Alexander’s unregenerate Harvard school views). To rebut the super-moralists who decry modern communications as promoting “fantasized decisions by the consu-mer,”7 I still quote Dr. Economides: “perception advertising provides consumers with products (mental images) that they value, and which would have been scarce in its absence.”8 From working with Dr. Economides, I am quite happy with the pleasures that a number of brands afford me, and I do not need watchdogs to protect me from advertisers any more than this country needed Prohibition.

7. Ronald K. L. Collins & David M. Skover, Commerce and Communications, 71 Tex. L. Rev. 697, 698 (1993).

8. Economides, supra note 5, at 535.

Vol. 101 TMR 25

Allan S. Pilson∗ Editor, May 1990–April 1992

Like many of my fellow Editors-in-Chief, I came up through the ranks of The Trademark Reporter (TMR) Editorial Board, serving on various subcommittees assigned to edit submissions. I learned the ropes under the watchful eye of Charlotte Jones, eventually assuming the role of International Articles Editor, which was my initiation into the intricacies of finding, editing, and publishing articles for the TMR. This proved to be excellent training for the day when, apparently after some secret ceremony, Charlotte tapped me as the Editor-in-Chief in 1990.

My memories of that period mostly involve lugging around a separate briefcase full of draft articles and editing them on planes, trains, and automobiles. Of course, one always had to be available when Charlotte called no matter what other pressing matters needed attention. I later came to appreciate that this was the only way to keep the process moving forward.

In an era when e-mails were not in common use, it was not always easy to get people together to exchange views on proposed articles, but I benefited from the tutelage of my predecessors—Werner Janssen, Bill Borchard, Vince Palladino, Tony Fletcher, and Jerre Swann—and enjoyed the support of some very hard-working editors, including Bob Raskopf, Pat Razzano, Steve Weinberg, and Howard Shire.

My first issue as Editor-in-Chief was dedicated to the memory of Saul Lefkowitz,1 who served for 20 years on the Trademark Trial and Appeal Board, including as its Chairman between 1975 and 1981. That issue also included Dick Taylor’s seminal work entitled “Loss of Trademark Rights Through Nonuse: A Comparative Worldwide Analysis”2 and Dan Bereskin’s prescient commentary on the Canada-United States Free Trade Agreement of January 1, 1989,3 which presaged issues that would later arise in the trilateral North American Free Trade Agreement (NAFTA) adopted in 1994. ∗ Partner, Ladas & Parry LLP, New York, New York, Associate Member, International Trademark Association.

1. In Memoriam, Saul Lefkowitz (1919–1990), 80 TMR 195 (1990).

2. Richard J. Taylor, Loss of Trademark Rights Through Nonuse: A Comparative Worldwide Analysis, 80 TMR 197 (1990).

3. Daniel R. Bereskin, The Canada-United States Free Trade Agreement: Are Trademarks a Barrier to Free Trade?, 80 TMR 272 (1990).

26 Vol. 101 TMR

This was the period when commentators began focusing on the relatively new phenomenon of “globalization” of the economy and its impact on such issues as the extraterritorial reach of the Lanham Act,4 parallel imports,5 implementation of the Madrid Protocol,6 trademarks of “common origin” in the European Union,7 delimitation agreements under the Rome Treaty,8 and trademarks in a reunified Germany.9 The nascent concepts set out in these articles have been vindicated by subsequent developments. On the other hand, we have since bid a fond farewell to the issue dealt with by Sheldon Klein in his article entitled “United States Antiboycott Legislation: Consequences for Intellectual Property Owners and Their Counsel.”10

When INTA Executive Director Robin Rolfe presented me with the bound editions of TMR Volumes 1980–1982, she wrote, “Now that you are done with TMR, I have some real work for you!” Although I remained active in various United States Trademark Association (USTA)/International Trademark Association (INTA) committees, especially those devoted to the international expansion of INTA, nothing proved more challenging (or rewarding) than heading up TMR.

4. Robert Alpert, The Export of Trademarked Goods from the United States: The Extraterritorial Reach of the Lanham Act, 81 TMR 125 (1991).

5. Laurence J. Cohen and Adam N. Cooke, How Trademarks and Other Rights May Be Used to Limit Parallel Imports in Europe, 81 TMR 371 (1991).

6. 82 TMR 58 (1992).

7. Christopher Morcom, Trademarks in the European Community After Café Hag II, 81 TMR 534 (1991).

8. Gerd F. Kunze, The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of June 27, 1989, 82 TMR 223 (1992).

9. Kay-Uwe Jonas, Aspects of German Trademark Law After Reunification, 82 TMR 242 (1992).

10. Sheldon H. Klein, United States Antiboycott Legislation: Consequences for Intellectual Property Owners and Their Counsel, 80 TMR 354 (1990).

Vol. 101 TMR 27

Robert L. Raskopf∗ Editor, May 1992–April 1994

It has been about 20 years since I was Editor-in-Chief of The Trademark Reporter (TMR), so no doubt I am forgetting many more things than I am remembering as I write this. There are two distinct memories I have, one of the work and the other of the people.

The work was hard. Perhaps the best way to put it in perspective is that my then 7-year-old son (now 28) told me back then that he had decided not to be a lawyer because “you are always reading, Dad.” For the duration of my E-I-C spin, that was indeed the case. We published the very first annual International Review of Trademark Jurisprudence (currently published as the International Annual Review),1 meaning that not only did we print a several-hundred-page issue, but we also had to locate capable writers in the various jurisdictions and acclimate them to our needs. Of course, the venerable duo of Tony Fletcher and Dave Kera continued to author the popular and successful United States Annual Review.2 Further, we published a 200-page collection of materials from the first World Trademark Symposium under the now not so futuristic heading: “Making History: Trademarks in 2017.”3 Phew. Then, of course, there were the many exceptional articles published throughout the year. I am recalling one special issue concerning dilution that was of particular interest (“Diluton Law: At a Crossroads?”).4 The TMR is known as the scholarly law review for trademarks, and it’s hard to say whether the materials we produced were of the exalted caliber suggested by the moniker. What I can say is that we tried hard to get as much high-quality work out as we could.

The people were fabulous. Looking back at the members of my board from many years later, I know how lucky I was to have the benefit of the wisdom of such a group. And it wasn’t just collective raw intelligence, but also their willingness to donate time even on inconvenient occasions, that I recall best. But now to my most fond

∗ Partner, Quinn Emanuel Urquhart & Sullivan, LLP, New York, New York, Associate Member, International Trademark Association.

1. 83 TMR 1161 (1993).

2. 83 TMR 903 (1993).

3. 82 TMR (1992).

4. 83 TMR 107 (1993).

28 Vol. 101 TMR

memory: Charlotte Jones. Those who served under Charlotte (make no mistake, we served under Charlotte, because she ran the show) knew full well how indispensible and dedicated to the task she was. So, here’s my Charlotte Jones story. Charlotte figured out (quickly) that I liked to get to work early. She also knew that I liked to work on my cases during those early hours. But of course she couldn’t resist calling me (as she too got to work early) to say what she expected of me that day. One day when she called on cue, I had my secretary put her on hold, turned on my speaker phone, and (pretending that I didn’t know she could hear me) yelled, “Try to get rid of her.” To this, she broadcast into my speaker even more loudly, “You’ll NEVER get rid of me.” And she was right. And I wouldn’t have wanted it any other way.

Vol. 101 TMR 29

Steven M. Weinberg∗ Editor, May 1994–April 1996

When I was starting my legal career, I was blessed with mentors who saw in me, as both an academic and as a practicing lawyer, a passion for trademark and copyright law. As early as my first year, I was introduced to The Trademark Reporter (TMR) and to the then small cadre of editors and former Editors-in-Chief, all leaders in our field, who actively were creating a vision for the TMR for the next decade. I was fortunate enough to be asked to play a small role in this vision; I became the first author of the TTAB section of the Annual Review of Trademark Law. In that role, with the guidance and support of then Editor-in-Chief Tony Fletcher and my senior partner Arthur Greenbaum, among others, we were able to shape that portion of the TMR, which over the next three years of my authorship, grew to become equal in significance to that of the U.S. courts section. Being in that role also gave me the opportunity to speak annually at the USPTO, reviewing cases and policies with the examining staff and TTAB judges—a very exciting and often controversial time.

I began my role as Editor-in-Chief in 1994. This was an extraordinarily fascinating time to be Editor. The 1989 amendments to the Lanham Act, including the introduction of intent-to-use basis for applications and the false-advertising amendments to Section 43, were still in their infancy and were actively being tested in the USPTO, the courts, and academia. The concept of a federal dilution law, which had been omitted from the 1989 amendments, was being hotly debated, and the International Trademark Association (INTA) Board pressed forward with a draft federal dilution law (which ultimately was enacted and, a number of years later, amended). The World Wide Web—the “information superhighway,” as it was then called—was less than a year old and was entirely primordial. The first issue of the TMR under my purview, the May–June 1994 issue, contained articles addressing both the pros and the cons of dilution and the possible protection of website interfaces under trade dress laws.

This also was a time when the trademark bar was encountering an expansion of Section 43(a), the protection of color as a trademark, the expansion and contraction of laws affecting

∗ Partner, Cowan, DeBaets, Abrahams & Sheppard LLP, Malibu, California, Associate Member, International Trademark Association.

30 Vol. 101 TMR

configurations and packaging, and the role of surveys in trademark and false-advertising litigation. All of these hot topics were the subject of articles in Volume 84 of the TMR. We also saw the continuing expansion of INTA as a global organization and the growing significance of international trademark law on all of commerce. Significantly, at the time, there was no single source for obtaining information about global trademark developments, and so we at TMR expanded our coverage of international trademark law. We published, as a section of the Annual Review in December 1994, the second and far more expansive International Review of Trademark Jurisprudence, which, under the leadership of two future Editors-in-Chief, Ted Max and Lanning Bryer, took on a life of its own. The excitement about all of these topics—dilution, the Internet, global expansion, trade dress, false advertising, surveys, etc.—all continued in 1995, and the articles published and reviewed reflect that enthusiasm. We also implemented, during my editorship, the role of mentors for authors—people on the TMR dedicated to helping authors structure and complete their articles. The task of taking this forward was ably led by Sandra Edelman, who also later became an Editor-in-Chief.

Becoming associated with the TMR when I did and watching it expand in its scope and significance as technology, brands, and global business exploded, and playing a role in it at such an exciting time in trademark law, was extraordinary for me personally and professionally. Those who were around me knew of my passion for all things Internet and of the role that trademark law, and the TMR, had to play in it. Editor-in-Chief Pat Razzano, who, as a TMR editor, worked closely with me during my tenure, was keenly aware of that passion, and to my surprise dedicated the first all-Internet volume of the TMR to me, an honor for which I always will be extraordinarily grateful.

The TMR was for me not an inorganic publication. It was (and remains) a living, breathing entity composed of truly dedicated and intelligent people, lawyers and non-lawyers alike, including many of the leaders and great thinkers in our field, all of whom discovered how to share a special camaraderie, respect, and passion for each other and for an area of law to which we had all dedicated our professional lives. Being Editor-in-Chief was the great honor of my professional career. There are many people who contributed to getting me there, and supported me during my tenure as Editor, but none more than my guardian angel, the fabulous Charlotte Jones, the heart and soul of that publication, without whom the experience never would have been the same—not just for me, but for all of us.

Vol. 101 TMR 31

Pasquale A. Razzano∗ Editor, May 1996–April 1998

My tenure as Editor-in-Chief of The Trademark Reporter (TMR) encompassed the 50th Anniversary of the Lanham Act. To celebrate that event, it was decided that a commemorative issue of the TMR be created containing reprints of historical articles, reflective articles by leaders in the trademark field who “grew up” with the Act since the time of or shortly after its passage, and commentary on the recently passed Federal Trademark Dilution Act. Louis Pirkey also provided an interesting biographical piece about Fritz Lanham.1 Combined, all of the articles made this an historic edition.2

In the course of preparing this particular issue, I had the pleasure of working with three giants of our profession—Bev Pattishall, Harold Woodward, and Julius Lunsford, each of whom provided their insights into the reasons the Act was needed and how the law developed over the Act’s 50 years of existence.

As an adjunct to the publication of this anniversary edition, the International Trademark Association (INTA) had a celebration party at the Trademark Office facility, then in Crystal City, Virginia. One of the speakers was a Congressman who was instrumental in shepherding the Dilution Act through the House of Representatives. I will never forget the conclusion of his speech about the passage of the Act when he said that as a result of the Act, “trademark infringement could now be stopped without proof of likelihood of confusion,” thus proving that even then, Congressmen did not necessarily read or understand bills they voted on!

One other article from my tenure that truly stands out was a piece entitled “Rambo Lawyering” by Judge Helen Neis of the Federal Circuit.3 The article was a variation on a speech I had heard her give at the American Bar Association and New York Intellectual Property Law Association meetings, urging lawyers to

∗ Partner, Fitzpatrick, Cella, Harper & Scinto, New York, New York, Associate Member, International Trademark Association.

1. Louis T. Pirkey, Fritz Lanham—Portrait of a Remarkable Man, 86 TMR 355 (1996).

2. 86 TMR 353 (1996).

3. Honorable Helen Wilson Nies, Rambo Lawyering, 87 TMR 131 (1997).

32 Vol. 101 TMR

bring civility to the conduct of litigation. It is something all lawyers should read and abide by.

Vol. 101 TMR 33

Howard J. Shire∗ Editor, May 1998–April 2000

I first became exposed to The Trademark Reporter (TMR) shortly after I began my legal career as an associate at the firm of Kaye Scholer Fierman Hays & Handler in New York. In 1980, Bill Borchard, then a partner at Kaye Scholer, was the Editor-in-Chief of the TMR, and I helped him by proofreading and cite checking articles. Years later I joined the TMR Editorial Board and gradually worked my way “up the ladder.” During this time I had the privilege of working with some of the most outstanding attorneys in the trademark field. I had the honor of serving as Editor-in-Chief from 1998 through 2000, when I continued to interact with the leading practitioners in our field.

In looking back at the articles that were published during my tenure, I note that in 1998 we published what was probably one of the first scholarly articles that warned trademark owners about the downside of expanding the universe of top-level domain names, which at that time was limited to just three: .com, .org, and .net.1 How quaint that seems now!

Later that year we published an article that analyzed who should have the burden of proof on functionality of trade dress—the party asserting the trade dress or the defendant.2 This was subsequently resolved by an amendment to the Lanham Act.

Probably the most special issue to me was the September–October 1998 issue, which was dedicated to Milton Handler, a giant in the trademark field, who had a significant influence on me during my early years at Kaye Scholer. He had passed away that year, and in the special dedication issue TMR reprinted two of his articles, one on dilution3 (a special interest of his and a topic on which he influenced my thinking) and one on trademarks and antitrust law.4

∗ Partner, Kenyon & Kenyon LLP, New York, New York, Associate Member, International Trademark Association.

1. Jonathan E. Moskin, Board the Moving Bus: Trademark Owners Beware of Proposals to Improve Management of Internet Names and Addresses, 88 TMR 213 (1998).

2. Theodore H. Davis, Jr., The Burden of Proof in Determinations of Trade Dress Functionality, 88 TMR 325 (1998).

3. Milton W. Handler, Are the State Antidilution Laws Compatible With the National Protection of Trademarks?, 75 TMR 269 (1985) and reprinted in 88 TMR 419 (1988).

4. Milton W. Handler, Trade-Marks and Anti-Trust Laws, 88 TMR 440 (1998).

34 Vol. 101 TMR

Dilution was also a popular topic the following year. In the May–June issue we published one of the first scholarly articles that discussed how to conduct (and how not to conduct) a trademark dilution survey, very few of which had been accepted by the courts at that time.5 In the November–December issue we published Jerre Swann’s excellent article6 that argued in favor of treating some famous brands as a property right, protecting them against any other uses, regardless of whether confusion was likely, a concept that Jerre aptly described “as too ‘radical’ a theory to command acceptance” by the courts at that time.

Above all, my overarching memory of serving as Editor-in-Chief of TMR was Charlotte Jones, whose title was Managing Editor, but who really ran just about the whole show. Charlotte was unceasing in her dedication to the TMR and made certain, among other things, that everyone met his/her deadlines. She was always looking for new ways to improve the TMR; for example, she was instrumental in setting up the International Annual Review, which the TMR started to publish while I was working my way up the TMR ladder. My memories of working with Charlotte will last a very long time.

5. William G. Barber, How To Do a Trademark Dilution Survey (Or Perhaps How Not To Do One), 89 TMR 616 (1999).

6. Jerre B. Swann, An Intuitive Approach to Dilution, 89 TMR 907 (1999).

Vol. 101 TMR 35

Theodore C. Max∗ Editor, May 2000–December 2001

I was privileged to guide The Trademark Reporter (TMR) from the twentieth century into the new millennium of the twenty-first century. It also was a time of great change for the TMR. While credit could be given to many for helping make the TMR what it was then and is still is today, one person—Charlotte Jones—remains responsible for setting the standard of excellence that makes the TMR “The Law Journal of the International Trademark Association” (INTA).1

My time as Editor-in-Chief involved transitioning from the Charlotte Jones tenure as Managing Editor to the Randi Mustello tenure. As the last Editor-in-Chief to serve under Charlotte, my role was not only that of Editor-in-Chief, but also as a caretaker to ensure that the torch of the tradition of excellence and scholarship of the TMR was passed carefully. With Randi Mustello and the Editorial Board, all of whom Charlotte had selected and trained, and now with Lisa Butkiewicz, the prospects for the TMR in the twenty-first century were (and still are) one of continued excellence.

Looking back, the list of the titles written during this time demonstrate not only the breadth of the TMR’s coverage of both United States and international trademark law but also issues of cutting-edge importance, presaging the hot topics for the next decade. This is not atypical because a review of past issues of the TMR reads like a Nostradamus-like prophecy of the coming face of trademark law. The May–June 2000 issue included an insightful article by former Editor-in-Chief Vincent Palladino on genericism,2 an article on the overlap between design patents and trade dress by Hugh Latimer and Karyn K. Ablin,3 and an article on the proposed Trademark Law Treaty by P. Jay Hines.4 The July–August issue contained a special feature on Wal-Mart Stores, Inc.

∗ Partner, Sheppard Mullin Richter & Hampton LLP, New York, New York, Associate Member, International Trademark Association.

1. See Charlotte Jones Dedication Issue on Her Retirement, 91 TMR 1098–1121 (2001); see also 93 TMR 52, 58-59, 61, 62-64 (2003).

2. Vincent N. Palladino, Genericism Rationalized: Another View, 90 TMR 469 (2000).

3. Hugh Latimer & Karyn K. Ablin, Stealth Patents: The Unconstitutionality of Protecting Product Designs Under the Federal Trademark Dilution Act, 90 TMR 489 (2000).

4. P. Jay Hines, The Trademark Law Treaty, The Trademark Law Treaty Implementation Act, and Changes in United States Trademark Practice, 90 TMR 513 (2000).

36 Vol. 101 TMR

v. Samara Bros., Inc.,5 with views of the counsel for litigants as to what the Supreme Court’s decision would portend.6 This issue also included an article by Norma Dawson on a British perspective on geographical indications7 and an interesting article by Michael S. Denniston on residual goodwill and abandonment.8 The September–October 2000 issue contained a timely article by Barbara Solomon on new tools to combat cyberpiracy,9 Thomas Casagrande on the Dawn Donut10 rule in the Internet age,11 Sandy Edelman on the litigation impact of failing to conduct a trademark survey,12 and Catherine Krebs and Radhika P. Raju on whether the amended material alteration rule (Trademark Rule 2.72)13 has undermined prior precedent under In re ECCS, Inc.14 and its progeny.15 The November–December 2000 issue contained a thoughtful and important article by Jerre Swann on dilution in light of the federal dilution statute,16 an insightful article by Kung-Ching Liu on well-known trademarks in Taiwan,17 and the first of a series of “Tips from the OHIM,” written by Fernando Lopez de Rego, Head of the Legal Affairs and Litigation Service, OHIM, Alicante, Spain.18

5. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).

6. Editor’s Note: Wal-Mart Stores, Inc. v. Samara Bros., Inc., 90 TMR 561 (2000); Stuart M. Riback, Product Design Trade Dress: Where Do We Go From Here?, 90 TMR 563 (2000); William B. Coston, Wal-Mart Stores, Inc. v. Samara Bros., Inc.: The Triumph of Consumer Protection in Lanham Act Litigation, 90 TMR 572 (2000); reprint of decision of Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).

7. Norma Dawson, Locating Geographical Indication—Perspectives from English Law, 90 TMR 590 (2000).

8. Michael S. Denniston, Residual Good Will in Unused Marks—The Case Against Abandonment, 90 TMR 615 (2000).

9. Barbara A. Solomon, The New Tools to Combat Cyberpiracy—A Comparison, 90 TMR 679 (2000).

10. Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc., 267 F.3d 358 (2d Cir. 1959).

11. Thomas L. Casagrande, The “Dawn Donut Rule”: Still Standing (Article III, That Is) Even With the Rise of the Internet, 90 TMR 723 (2008).

12. Sandra Edelman, Failure to Conduct A Survey in Trademark Infringement Cases: A Critique of the Adverse Inference, 90 TMR 746 (2000).

13. 37 C.F.R. § 2.72.

14. 94 F.3d 1578 (Fed. Cir. 1996).

15. Catherine K. Krebs & Radhika P. Raju, Has the Rule Against Material Alteration of Trademark Drawings Been Materially Altered?, 90 TMR 770 (2000).

16. Jerre B. Swann, Sr., Dilution Redefined for the Year 2000, 90 TMR 823 (2000).

17. Kung-Chung Liu, The Protection of Well-Known Marks in Taiwan: From Case Study to General Theory, 90 TMR 866 (2000).

18. Tips from the Office for Harmonization in the Internet Market (Trademarks and Designs) (OHIM), 90 TMR 990 (2000).

Vol. 101 TMR 37

In the May–June 2001 issue, Vincent Palladino wrote an article critiquing the various decisions in I.P. Lund Trading Aps v. Kohler Co.19 and the issues related to surveying secondary meaning;20 counsel for the litigants in TrafFix Devices, Inc. v. Marketing Displays, Inc.21 contributed articles about the importance of the Supreme Court’s decision;22 and Thomas Hays wrote an article by Thomas Hays on trademark exhaustion in the European Community.23 The July–August issue contained the article “Trademarks and Marketing” written by Jerre Swann, David Aaker, and Matt Rebach,24 an update by Barbara Solomon of her earlier article on domain name disputes,25 and an article by Richard Biagi regarding the intersection between the first amendment and the Federal Trademark Dilution Act.26

The September–October issue was published after the tragedy that made September 11, 2001, an unforgettable date. The tragedy was specially acknowledged in the issue. Featured in the issue were an article by Tom Speits on whether the Trademark Dilution Act was retroactive or not, anticipating a topic that has been hotly litigated since then;27 an article by Liza Krizman on internal trademarks and what constitutes “use in commerce”;28 an article by Antonella Carminatti and Alexandre da Cunhio Lymio on

19. 163 F.3d 27 (1st Cir. 1998). 20. Vincent N. Palladino, Secondary Meaning Surveys in Light of Lund, 91 TMR 573 (2001).

21. 532 U.S. 23 (2001).

22. Robert P. Renke, TrafFix Devices, Inc. v. Marketing Displays, Inc.: The Shrinking Scope of Product Configuration Trade Dress, 91 TMR 624 (2001); Jeanne-Marie Marshall, TrafFix Devices, Inc. v. Marketing Displays, Inc.: A Step in the Right Direction, 91 TMR 632 (2001).

23. Thomas Hays, An Application of the European Rules on Trademark Exhaustion to Extra-Market Goods, 91 TMR 675 (2001).

24. Jerre B. Swann, David A. Aaker, & Matt Reback, Trademarks and Marketing, 91 TMR 787 (2001). The article was prepared in conjunction with a Brand Names Education Foundation program.

25. Barbara A. Solomon, Domain Name Disputes: New Developments and Open Issues, 91 TMR 833 (2001).

26. Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 505 (1995) (later replaced by Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730 (2006)) (codified at 15 U.S.C. § 1125(c)); Richard Biagi, The Intersection of First Amendment Commercial Speech Analysis and the Federal Trademark Dilution Act: A Jurisdictional Roadmap, 91 TMR 867 (2001).

27. Thomas J. Speiss, III, Is the Trademark Dilution Act Retroactive?, 91 TMR 937 (2001).

28. Lisa Kopf Krizman, “But It’s for Internal Use Only!”–A Guide for Trademark Counsel, 91 TMR 964 (2001).

38 Vol. 101 TMR

trademarks and domain names in Brazil;29 an article by Ray Harris and Stephen Winkelman regarding product configuration in light of Wal-Mart Stores, Inc. v. Samara Bros., Inc.;30 and an innovative article by Jack Jacoby on psychological foundations of trademark law.31

The final issue of my tenure included a special Festschrift for Charlotte Jones, featuring written tributes by Alan Drewsen, the Executive Director of INTA; by two former Executive Directors of INTA, by fifteen former Editors-in-Chiefs, and, by the incoming Managing Editor, Randi Mustello.32 If that alone was not impressive enough, the issue also contained topical articles by participants in an INTA panel entitled “The Future of U.S. Dilution: Is It There to Stay or Just a Fad?,”33 an article by Curt Krechevsky and Gailec Sonia on the Nice Agreement,34 an article on the “Gateway Pages” case by Puneet Singh,35 and an article about protection of Olympic trademarks by Anne Wall.36 The issue was certainly a pleasure to edit and a fitting end to the tremendous tenure of the great Managing Editor, Charlotte Jones.

29. Antonella Carminatti & Alexandre da Cunhio Lyrio, Trademarks v. Domain Names—The Brazilian Experience, 91 TMR 980 (2001).

30. Ray K. Harris and Stephen R. Winkelman, Why Product Configurations Cannot Be Inherently Distinctive, 91 TMR 988 (2001).

31. Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion, and Dilution, 91 TMR 1013 (2001).

32. Charlotte Jones Dedication Issue on the Retirement, supra note 1, at 1087-1122.

33. Howard J. Shire, Varying Standards of Assessing Whether There Is Dilution Under the Federal Trademark Dilution Act, 91 TMR 1124 (2001); Dyann L. Kostello, Grappling With The Limits of Fame Under The FTDA—Do Marks Famous Only in A Niche Market Or Limited Geographic Area Qualify for Protection?, 91 TMR 1133 (2001); Steven B. Pokotilow & Stephen A. Fefferman, FTDA Survey Evidence: Does Existing Case Law Provide Any Guidance for Constructing a Survey?, 91 TMR 1150 (2001).

34. Curtis Krechevsky and Gailyc C. Sonia, The Nice Agreement Revisited: Still A Class Act?, 91 TMR 1184 (2001).

35. Puneet Singh, Gateway Pages: A Solution to the Domain Name Conflict?, 91 TMR 1226 (2001).

36. Anne M. Wall, The Game Behind the Games, 91 TMR 1243 (2001).

Vol. 101 TMR 39

Susan Reiss∗ Editor, January 2002–December 2003

During my years as a senior editor of The Trademark Reporter (TMR) and subsequently as Editor-in-Chief, I recall being perpetually immersed in the intricate mechanics of producing each TMR issue. As others in the same position undoubtedly know, this process involves developing new topics, soliciting new articles, reviewing and selecting those articles worthy of publication, and engaging in seemingly endless editing and revising. Continuing pressure to produce led me at the time to have a kind of “TMR myopia.” Indeed, attending to production of the best possible work product did not afford sufficient time to step back and fully appreciate the TMR’s substantive role in fostering positive changes in trademark law, documenting important global developments, and tracking the law in line with fast-paced technological advancements.

In retrospect, it is evident to me now that, in 2002–2003, during an exponential growth in technology, the TMR was fully engaged in reporting on the Internet phenomenon. As the number of websites burgeoned, the TMR published, for example, an article on the emergence of the “initial confusion doctrine,”1 based on potential issues that can arise from users’ website behavior.

The year 2002 also saw the United States’ accession to the Madrid Protocol and a continuing trend toward globalization. Simultaneously, the International Trademark Association (INTA) increased its international focus. Among other events, it held its first Annual Meeting outside of North America, in Amsterdam. The TMR mirrored this enhanced international attention through publication of a raft of articles on subjects such as seniority under European Union trademark law,2 penalties for purchasing counterfeit goods under the Italian criminal system,3 service of

∗ Counsel in the Intellectual Property Group, Shearman & Sterling LLP, New York, New York, Associate Member, International Trademark Association.

1. David M. Klein & Daniel C. Glazer, Reconsidering Initial Interest Confusion on the Internet, 93 TMR 1035 (2003).

2. Verena v. Bomhard & Morten Petersenn, “Seniority” Under European Community Trademark Law, 92 TMR 1327 (2002).

3. Pier Luigi Roncaglia, Handling of Counterfeit Goods: A Hands-On Problem for the Italian Criminal System, 92 TMR 1393 (2002).

40 Vol. 101 TMR

process on foreign nationals,4 and filing under the Madrid Protocol,5 among others.

Finally, the TMR may have played a role in the development of dilution law by showcasing, in articles on the Federal Trademark Dilution Act of 1995 and the Victoria Secret case,6 the shortcomings of the then current law, leading to the enactment of the Trademark Dilution Revision Act of 2006.

In contrast, TMR articles enabled me to see that some aspects of trademark law tended to remain fairly static. For example, Volume 1 of the TMR, issued in 1911, reported on a case brought before the U.S. Supreme Court, Pere Alfredo Luis Baglin v. Cusenier Company.7 Briefly described, in this case, the Order of Carthusian Monks, who had been producing a liqueur at their monastery in France for over 50 years under the mark CHARTREUSE, sought to protect their mark against an adversary that claimed that the mark was merely a geographical indication and further that the Order of Carthusian Monks had abandoned their mark after their expulsion from France, despite the resumption of production in Spain. The Court’s conclusion, that CHARTREUSE constituted a valid trademark and that the monks did not evidence an actual intent to abandon their mark, may be the same result that a court would reach today.

What the TMR was able to produce even during those two short years represents a mere snippet of what it has done over the past 100 years. Especially in this age of Twitter, blogs, and “sound bites,” we have cause to celebrate the TMR’s continuing depth of reportage and keen analysis. Hopefully, the TMR will flourish in this same vein for the next 100 years.

4. Keith M. Stolte, Avoiding Hague Convention Headaches—An Analysis of Lanham Act Section 1(e) Service of Process on Foreign Nationals, 92 TMR 1417 (2002).

5. P. Jay Hines & Jordan S. Weinstein, Using the Madrid Protocol After U.S. Accession, 93 TMR 1003 (2003).

6. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).

7. 31 S. Ct. 669 (1911).

Vol. 101 TMR 41

Sandra Edelman∗ Editor, January 2004–December 2005

I was privileged to serve as Editor-in-Chief of The Trademark Reporter (TMR) in 2004 and 2005. Looking at the articles published in the TMR during my tenure, I am delighted to see a wonderful range of topics—including practice-oriented articles such as “Daubert’s Impact on Survey Experts”1 by Kenneth Plevan; analytical pieces such as “Configuration Protection Harmonized”2 by Jerre Swann and Michael Tarr; as well as quirky, niche topic articles such as “Of Tartans and Trademarks”3 by Ross Petty and “Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks”4 by Jerome Gilson and Anne Gilson LaLonde. I am particularly proud of a “theme” issue on “High Court” cases, which explored the aftermath and impact of significant trademark cases decided in the United States Supreme Court and the high courts of other international jurisdictions.5 (I knew, from many years working as a Committee member and Senior Editor of the TMR, that putting together a theme issue was a wonderful way to attract articles from top-flight authors, and my plan worked exceedingly well.) The 2004–2005 issues of the TMR also reflect the International Trademark Association’s ever-growing emphasis on the international aspects of trademark law and practice: during this time period, we published articles covering dilution in Argentina,6 developments in trademark law in Hungary,7 the protection of

∗ Partner, Dorsey & Whitney LLP, New York, New York, Associate Member, International Trademark Association.

1. Kenneth A. Pleven, Daubert’s Impact on Survey Experts in Lanham Act Litigation, 95 TMR 596 (2005).

2. Jerre B. Swann & Michael J. Tarr, Configuration Protection Harmonized, 94 TMR 1182 (2004).

3. Ross D. Petty, Of Tartans and Trademarks, 94 TMR 859 (2004).

4. Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 TMR 773 (2005).

5. High Court Issue, 94 TMR 943 (2004). 6. Iris Quadrio & Veronica Canese, Considerations Regarding Dilution in Argentina, 94 TMR 684 (2004).

7. Éva Szigeti & Zsófia Klauber, Enlargement of the European Union: Trade Mark Issues in Hungary and Other New EU States, 94 TMR 924 (2004).

42 Vol. 101 TMR

trademarks in Myanmar,8 and many other articles addressing fascinating trademark topics all over the world.

As Editor-in-Chief, I also initiated and continued the updating of procedures and editorial structure to reflect the impact of the Internet and the growing workload of the TMR. With the realization that all of our Committee members had ready access to e-mail, we solidified a system of soliciting volunteers to edit articles, so that print articles no longer arrived on your desk when you were least expecting them on topics on which you did not necessarily have expertise. By offering editorial opportunities to the whole staff via e-mail, we were able to match article assignments to individuals who knew they had the time and background to review and edit submitted articles. I also recommended, and the TMR implemented, an increase in the Senior Editor staff from two United States Original Articles Editors and two International Articles Editors to three apiece, as the workload of the Senior Editors had become increasingly time-consuming. The expansion of the Senior Editor staff also helped provide more leadership and succession opportunities.

Overall, in looking back at my time as Editor-in-Chief and the many years I served on the TMR Committee, I am moved to express my deep-felt appreciation for the working relationships I forged with INTA staff and trademark lawyers from all over the world, and the continuing education in trademark law developments that has benefited my practice and career in innumerable ways. A hearty Happy Anniversary goes out to the TMR for many more successful years to come!

8. Alec Christie, Protecting Trade Marks in Myanmar: Strategies for Foreign Trade Mark Owners, 95 TMR 1357 (2005).

Vol. 101 TMR 43

Robert M. Kunstadt∗ Editor, January 2006–December 2007

As a former Editor-in-Chief of The Trademark Reporter (TMR) asked to look back on the experience, the first thought that comes to mind is that if one has been able to accomplish anything, it has been by standing on the shoulders of giants.1 The TMR tradition is a great one, and it is well-exemplified in Jerre Swann’s article published in this very issue, “The Trademark Reporter as Catalyst.”2 Having been privileged to read that article in advance draft, it reminded me that another of Jerre’s thought-provoking articles was published under my watch as Editor-in-Chief: “An Interdisciplinary Approach to Brand Strength.”3

As Jerre now describes in his own words, he traveled an intellectual path of transformation from what he terms a “Harvard School” skeptic of the value branding offers to consumers, to the “Chicago School” of trademarks as useful indicia of quality, and beyond. His 2006 article represented a way station along this path: the consideration of modern principles of psychology as bearing upon branding (because of the link between the value of a brand and the mental processes used by consumers in making purchase decisions).

Jerre states that he is “from back in the day,”4 as far as the Internet is concerned. Taking the handoff, this subsequent Editor-in-Chief notes that Internet issues strongly dominated the development of trademark law and doctrine between 2006 and 2008. The process is hardly complete and likely never will be. One of the nice things about practicing law in our field is that one always sees something new: new products, new brands, new patentable devices and processes. Hence, the law is compelled to take account of them. We cannot be like the apocryphal patent

∗ Managing Attorney, R. Kunstadt, P.C., New York, NY, Associate Member, International Trademark Association.

1. Appreciation is also due to the staff of TMR, notably Ms. Charlotte Jones, its long-time Managing Editor; as well as to professional colleagues who encouraged pro bono work for the TMR, such as David Weild, III, this author’s former senior partner at Pennie & Edmonds.

2. Jerre B. Swann, The Trademark Reporter as Catalyst, infra pp. 81-93.

3. Jerre B. Swann, An Interdisciplinary Approach to Brand Strength, 96 TMR 943 (2006).

4. Swann, supra note 2, at 91, n.26.

44 Vol. 101 TMR

office director recommending that the patent office be closed because everything has already been invented.

A key question that we face today is whether the pendulum swing from “Harvard School” to “Chicago School” and beyond has gone too far in the direction of protecting merely colorable IP, to the detriment of consumer welfare.

In the field of patent law, the Supreme Court has cut back somewhat on the ambit of “business method patents”5 in the Bilski case.6

In the field of trademark law, expansive revisions of the “dilution” concept may be due for a similar pruning. Certainly the public’s continuing enthusiasm for brand counterfeits suggests that all is not well. Trademark owners’ propensity for branding may not find a universally resonant reception. For example, assertion of purported trademark rights in designs inapt to serve as brand identifiers—but nevertheless being promoted by ad budgets sufficient to support a small nation—may lead to a backlash against brands, branded goods, and their owners.7

The U.S. Intellectual Property Enforcement Coordinator has now been charged by Congress with the task of making a study of trademark enforcement, to determine if it has gone too far.8 The legislative mandate for this study was inspired by the controversy between MONSTER energy drink and VERMONTSTER beer,9 a trademark dispute that came to the attention of Vermont’s influential Senator Leahy. In proposing the Senate bill, he issued a press release explaining the need for it:

I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses. We saw a high-profile case like this in Vermont last year involving a spurious claim against Rock Art Brewery. When a corporation exaggerates the scope of its rights far beyond a

5. Robert M. Kunstadt, Sneak Attack on U.S. Inventiveness, Nat’l L. J., Nov. 9, 1998, at A21.

6. Bilski v. Kappos, 561 U.S. ___ (2010).

7. Robert M. Kunstadt, Trademarks: not just for the rich and famous, 3 Oxford J. Intell. Prop. L. & Prac. 451 (July 2008).

8. The Trademark Technical and Conforming Amendment Act of 2010, effective on March 17, 2010, Pub. Law No. 111-146, 124 Stat. 66 (2010).

9. http://beernews.org/2009/10/timeline-rock-art-vs-monster-energy.

Vol. 101 TMR 45

reasonable interpretation in an attempt to bully a small business out of the market, that is wrong.10 Despite the predominantly positive value of brands to

consumers, cynicism about the value of “branding” as a marketing tool may be fostered by campaigns such as the former British Petroleum’s identifying itself with U.S. Reg. No. 3515941 BP & Design (Yellow, Green and White):

The public might now wonder whether the funds expended on

the associated rebranding campaign to identify BP’s corporate image with green environmentalism may not have been better spent on higher-quality blowout protectors for its deepwater oil-drilling rigs in the Gulf of Mexico.11 BP’s competitors may also wonder why they should have had to tolerate BP’s efforts to appropriate to itself the colors green (signifying environmentalism) and yellow (sunlight and daffodils). In other words, should a forthright oil company that goes about its business of drilling safe oil wells have to stand by while it loses sales to an oil company that overlooks safety while (mis)using trademarks as a marketing tool to project a spurious image of environmentalism? “Branding” of that kind may shade over into unfair competition.12

Hence, Justice Hand’s famous doctrinal observation about a trademark in the wrong hands functioning only as a “mask,” originally made in the context of unfair competition by way of

10. Available at http://www.chow.com/blog/2010/01/monster-energy-versus-vermonster-spat-the-aftermath/.

11. See, e.g., editorial cartoons by Dan Wasserman, “Rebranding Possibilities,” http://www.boston.com/bostonglobe/editorial_opinion/outofline/2010/05/bp_branding.html, May 24, 2010 (“Black Pelicans”); and Mike Thompson, “BP Land,” http://comics.com/ mike_thompson/2010-05-14, May 14, 2010 (a board game with the conclusion “BP has been using the wrong corporate slogan: BP Beyond Petroleum Home of the Whopper”).

12. E. Barraclough, Avoid the greenwash backlash, INTA Daily News, May 24, 2010, at 10 (http://www.managingip.com/Article.aspx?ArticleID=2576856&LS=EMS).

46 Vol. 101 TMR

dilution, may also apply equally aptly to the case of the proprietor’s own deceptively misdescriptive trademark.13

While some trademark owners might rather not hear any such concerns voiced about branding strategies, trademark owners need to consider whether branding taken to undue extremes by a few actors presents a danger to the concept of branding in principle. The TMR historically represents an important forum for the unfettered consideration of such fundamental issues. The continuing vitality of trademark law over 100 years to date, and forward into the future, depends on it.

Other similar trademark public-policy issues are ripe for consideration. Should substantial public prosecutorial resources be devoted to “anti-counterfeiting,” as distinguished from the funding of more efficient and speedier judicial fora for the private enforcement of trademark rights; other IP rights; and indeed for the improvement of the civil justice system in general (i.e., even-handedly in all types of cases including contract enforcement, consumer protection, and non-IP torts)?

And are “anti-counterfeiting coalitions” composed of large business concerns not anti-competitive in the sense that their members ought in many instances to be challenging other members’ assertions of alleged IP rights, rather than uncritically reinforcing their assertion against nonmember third parties, regardless of possible issues of validity and infringement-in-fact and despite possible fair use defenses that may apply (which are hardly given a second thought, before joining such a coalition)?14 Because even the teams of the National Football League do not enjoy automatic immunity from antitrust scrutiny in their cooperative trademark-licensing efforts, the case for trademark-enforcement coordination among clearly separate business concerns now seems harder than ever to sustain.15

13. “[A] merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner’s reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask.” Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928) (L. Hand, J.) (emphasis added).

14. See, e.g., http://arstechnica.com/business/news/2007/03/nfl-fumbles-dmca-takedown-battle-could-face-sanctions.ars (NFL repeatedly uses DMCA to take down a law professor’s YouTube posting that quotes and criticizes the boilerplate copyright-infringement warning notice used in NFL game telecasts).

15. Am. Needle, Inc. v. Nat’l Football League, et al., 560 U.S. ___ (2010), http://www.supremecourt.gov/opinions/09pdf/08-661.pdf.

Vol. 101 TMR 47

If any private parties would merit expenditure of public funds for promoting the enforcement of their private IP rights, first call on such public resources might be to aid in the enforcement of patents, trademarks, and copyrights owned by individuals and small business entities, in the case of infringement by large companies that can defend by attrition—regardless of the merits—as a result of inefficiencies in the justice system that favor well-heeled litigants.16

For example, in a trademark matter, the cost of a consumer survey might deter a small business from asserting its registered trademark against a Fortune 500 business; or the cost of econometric evidence for damages proof might favor settlement with a large litigant.

The contingent fee system provides only partial assistance to the small litigant in such cases, since (1) the infringing litigant can change its mark sooner rather than later, leaving no substantial damages pool to pay a contingent fee; (2) the courts may look with disfavor upon a litigant who insists on pursuing a damages claim when the defendant has ceased infringing; and (3) under such circumstances, the cost of disbursements in an IP case, can dampen enthusiasm for pursuing a remote contingent recovery17—not to mention that engaging counsel on a contingent-fee basis deprives the small entity of a substantial portion of the deserved recovery.

Other challenges for trademark law will be spurred by advances in technology. The Internet now plays a substantial and growing role in the branding equation. For one thing, it provides a massively inexpensive forum for brand critics to vent (“X sucks” sites and the like).18 Branding missteps are not so easy to shove under the rug when the print news cycle ends; just ask Tiger Woods.

Secondly, the Internet offers a philosophical alternative to branding. The owners of “weather.com,” “sex.com,” and the like sit

16. E.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986) ($8.5 million settlement of a $20 million damages claim in a case of already-adjudicated trade dress infringement).

17. Prudent counsel always needs to consider these factors, before accepting a trademark or other IP case on contingency. The situation is different in a contingent-fee accident case, since the harm has already occurred to the plaintiff and the defendant has no power to undo it.

18. Robert M. Kunstadt & Ilaria Maggioni, Re-asserting “Privacy” as a Protectable Interest: Warren and Brandeis Confront the “First-Amendment Doomsday Machine,” 4 Oxford J. Intell. Prop. L. & Prac. 893 (Dec., 2009); and Barraclough, supra note 12, at 10.

48 Vol. 101 TMR

astride valuable intangible property that hardly qualifies under traditional tests for “trademark strength.”

The British Army reportedly played “The World Turned Upside Down” while surrendering to the Continentals at Yorktown. The Internet similarly tends to turn trademark law on its head. Generic terms enjoy powerful selling value as domain names; and brands themselves are used (misused?) on a wide scale to transfer value from the brand owner to both the owner’s branded and generic competitors, and to intermediaries (e.g., Google with its ADWORDS program).

So trademark law is not in a comfortable place; and we have not seen the end of it by a long shot. We cannot doubt that despite our best efforts, 100 years from now capable future editors of The Trademark Reporter will look back upon our thinking in the field in much the same way that we may now go to the science museum to admire the engineering of a 500-ton, forged-iron–and-polished-brass steam engine.

Vol. 101 TMR 49

Clifford W. Browning∗ Editor, January 2008–December 2009

In 1990 I was in the sixth year of a major career change. Five years earlier I had given up all hope of ever becoming a modern day Perry Mason1 when I resigned from Krieg DeVault LLP, a general practice law firm in Indianapolis, Indiana, where I was an apprentice trial lawyer, to join Woodard, Emhardt, et al., a patent and trademark boutique in Indianapolis, to become a patent and trademark lawyer. When I began to receive more trademark questions than patent questions from my new clients at Woodard, Emhardt, et al., I asked senior partner Hal Woodard if I could attend with him the 1991 Annual Meeting of the United States Trademark Association (USTA) in San Francisco so that I could learn more about trademark law. Hal politely told me that he and another partner of the firm were already registered to attend that Meeting and that two attendees was just the right number for Woodard, Emhardt, et al. Undaunted, I contacted USTA and requested a committee preference form. When it arrived, I filled it out and I requested assignment to The Trademark Reporter (TMR) Committee for no reason other than I had been on the law review in law school. When Managing Editor Charlotte Jones received my committee preference form and saw that I was working in Hal Woodard’s law firm, she assigned me to the TMR Committee. As she told me years later, she did so as a favor to Hal. When the committee assignment letter came from USTA, I went directly to Hal Woodard’s office with the news, and I made sure he read the paragraph in the letter that said I had to attend the Annual and Mid-year Meetings of the Association every year to maintain my committee assignment. He conceded the point.2

Therefore, my first USTA Annual Meeting and my first TMR Committee meeting were in San Francisco in 1991. As introductions were being made at the 1991 TMR Committee meeting, I realized that a large number of former Editors-in-Chief

∗ Partner, Krieg DeVault LLP, Indianapolis, Indiana, Associate Member, International Trademark Association.

1. My 1950s U.S. television trial lawyer idol, from whom I learned in my formative years that all trials lasted just 60 minutes, and that the guilty party stood up in the court room in the last moments of the 60 minutes and confessed.

2. Within two years, both Hal and the other partner who had been attending the Annual Meeting stopped attending, as they were not committee members, and I was the only member of the firm who attended the Meetings for a long time thereafter.

50 Vol. 101 TMR

were in attendance, and that among them were members of the Who’s Who of U.S. trademark lawyers. It was at that first TMR Committee meeting that I decided that I, too, would work to some day become the Editor-in-Chief of the TMR. Little did I realize on that day that there were many others in the room who had the same aspiration, and little did I realize that Charlotte Jones had an Editor-in-Chief farm team in place. The farm team was so well defined that she could tell me the year in which I would be called up to become the Editor-in-Chief of the TMR. I must say that she was exactly right, for when she first told me all that I have just recounted, I realized I would be 60-years-old when I became the Editor-in-Chief, and that it would be long after Charlotte had retired. I was actually 58 in 2008 when I became Editor-in-Chief. It was, in fact, two years earlier than Charlotte had predicted, but only because of the untimely and unforeseeable death of Senior Editor Reese Taylor, who would have been called up from the farm team right before me.

I was a member of the TMR Committee from 1991 to 2009, and I do not regret a moment I spent on the Committee. After all, I did succeed in reaching the ultimate goal that I set for myself in San Francisco in 1991.

There is one lasting contribution I did make to the TMR during my tenure as its Editor-in-Chief. I changed its stature from being the “Official Journal of the International Trademark Association” to being “The Law Journal of the International Trademark Association.” The scholarship of the TMR is on par with any other law journal or any other law review, in my opinion, and before the first issue was published on my watch in 2008, the leadership of the International Trademark Association agreed with me.

As an epilogue, I returned to Krieg DeVault LLP in 2006 as a patent and trademark lawyer to solidify a new intellectual property practice group that had been created within the law firm the year before. The irony is that I missed the Annual Meeting in Boston in 2010 as a result of a litigation conflict.

Vol. 101 TMR 51

EDITORS SINCE 1911

As part of this centennial celebration, we honor The Trademark Reporter’s Editors-in-Chief and Managing Editors, who have dedicated themselves to making this publication the premier law journal within the trademark community.

TMR Editors-in-Chief

1911–1978 Arthur William Barber Leon Ernest Daniels Walter J. Derenberg Stephen P. Ladas Henry B. King Walter J. Halliday Walter J. Derenberg* Arthur A. March Gilbert H. Weil Sidney A. Diamond Haynes N. Johnson Werner Janssen, Jr. Robert B. Whittredge Arthur J. Greenbaum Paul B. Morofsky Allan Zelnick Alvin Fross

1978–2011 Miles J. Alexander William M. Borchard Anthony L. Fletcher John B. Pegram Vincent N. Palladino Jerre B. Swann Allan S. Pilson Robert L. Raskopf Steven M. Weinberg Pasquale A. Razzano Howard J. Shire Theodore C. Max Susan Reiss Sandra Edelman Robert M. Kunstadt Clifford W. Browning Lanning G. Bryer

TMR Managing Editors

1953–2011 Doris K. Meyerhoff Hedda S. Rappaport Charlotte Jones Randi J. Mustello Lisa A. Butkiewicz

______________

* Served two separate tenures.