TMR COMMITTEE WELCOME PACKET – 2014-2015

Overview

The Trademark Reporter (TMR) is the world's leading scholarly journal dedicated solely to trademark law and practice. It is peer-reviewed by the TMR Editorial Board, which focuses on bringing to publication cutting-edge articles that are at the forefront of trademark thinking, taking into account both the scholarly needs and content requirements of the journal's diverse international audience. As well, consistent with the TMR's broadened editorial mission, the journal seeks to includemore practice-oriented pieces, reviews of important publications in the trademark area, and shorter commentaries on all aspects of trademark law. Looking ahead to 2015, the TMR will begin adding to its published content contributions in languages other than English, an endeavor that advances the International Trademark Association’s 2014-2017 Strategic Plan to achieve internationalization.

Since it first appeared in 1911, the TMR remains one of INTA’s most longstanding and highly regarded publications. Published six times a year, the TMR is read by trademark practitioners, judges, and academics throughout the world. The journal is currently delivered electronically to nearly 6,500 INTA members in over 180 countries. It is also available directly from INTA’s website, where it is downloadable in both PDF and eReader formats. In addition, it is included in online legal research services, such as Lexis, Westlaw, and Bloomberg.

The first and secondissues of every year are dedicated to the Annual Reviews: The United States Annual Review is published in the January-February issue and the European Union Annual Review (new in 2014) will be published in the March-April issue. The other four issuescontain scholarly articles on trademark-related topics and, from time to time, special volumes such as theme issues (one theme issue in 2014 and one theme issue in 2015), and special short features such as commentaries (new in 2013) and book reviews.

This prestigious history and reputation of the TMR attracts a wide range of authors who wish to write articles that explore timely trademark topics. Further, the Editorial Board of the TMR provides a peer-reviewed editorial process that clearly distinguishes the TMR from student-edited law school journals or reviews. The editorial review process is rigorous to assure the continued publication of high-caliber, scholarly articles that our readership has come to expect.

As a member of the Editorial Board of the TMR Committee, you have the opportunity to contribute to the TMR’s tradition of excellence. We count on your expertise and experience to enhance the quality of articles published. We rely on you as ambassadors of the TMR to develop topic ideas and solicit articles, particularly from international regions. We hope that you find your time spent on the TMR Committee to be a rewarding experience.

The following material is meant to give you an overview of the TMR process and procedures, and to define your responsibilities as a member of the Editorial Board in greater detail.

I. Members of the TMR Committee

The TMR Committee is comprised of the Editor-in-Chief who is the Chair of the Committee, six Subcommittee Chairs who are Senior Editors of the TMR Editorial Board (one of whom is also the Vice Chair of the TMR Committee), individual members of the TMR Editorial Board, and the Managing Editor of the TMR. The Managing Editor is part of the INTA staff and acts as Staff Liaison between the TMR Committee and INTA. As a member of the Editorial Board of the TMR Committee, you will serve a two-year term.

The following people currently hold the positions of Chair, Vice Chair, and Subcommittee Chairs (Senior Editors):

Jonathan Moskin, Editor-in-Chief and Chair of TMR Committee

Daniel Glazer, Vice Chair of TMR Committee

Kathleen McCarthy

[Senior Editors—continued]

Jessica Elliott Cardon

Glenn Mitchell

Raffi Zerounian

Neil Wilkof

The responsibilities of each of the above will be discussed in the relevant sections throughout this information packet.

II. “Regular” TMR Issues and Features

The TMR Editorial Board is responsible for soliciting and editing articles as well as writing the reviews of books. Each of these features is discussed below in greater detail. Because members of the Editorial Board do not usually work on the United States Annual Review and the Intentional Annual Review (IAR), these will be discussed later in this packet.

A. Overview of the Article Review Process

When an original article is submitted for possible publication in the TMR, it is initially sent to the Senior Editors for a “pre-review” to assess the topic and quality of the article, and to decide if the article is one that we wish to pursue. The author will be notified whether the article is preliminarily accepted to proceed to the next stage of review.

If initially accepted, an email containing the article and the due date is sent out to the entire Editorial Board asking for three (3) volunteers for review and comment. You must respond to the email in ordered to be considered for this assignment. It is helpful if you list the reason(s) why you are interested, e.g., the article is in your area of expertise or you are interested in the topic. Note, however, that it is often helpful to have someone unfamiliar with the topic review the article and provide feedback on whether the article is well written, makes a thorough argument and provides the necessary information for other readers who may not be familiar with the specifics of the topic. Based on factors such as how much time has elapsed since you completed an assignment, the Managing Editor will either assign you the article or tell you that it has been given to others. Editors are given three to four weeks to review the article. To ensure an objective process, the author’s name is removed from the article.

For each review, you must provide 2 documents: (1) a summary memo and (2) a redlined version of the reviewed article. The summary memo will contain your overall recommendations and explain your impressions of the article. This file is usually 1-2 pages. The redlined file (using the Track Changes feature in Word) will contain your specific comments directly in the article itself. These two files should be returned to the Managing Editor via email.

Appendix A contains a sample summary memo and an excerpted example of edits to an original article.

Your task as a reviewer is to provide a careful critique of both the form and substance of the article—not to rewrite it. You should point out contrary or conflicting authority. You should suggest any improvements you think could be made to the article such as additional issues or arguments that have been overlooked, require amplification, or do not make sense. Organizational changes should also be suggested. It is not enough to point out your theoretical recommendations. You must actually make the changes to the article where you think they should be made.

A former TMR Editor-in-Chief introduced an acronym that Editorial Board members should keep in mind when editing original articles. Members are encouraged to be DIRECT:

Deconstruct—take apart the article in order to fully analyze each part; Initiative—if the reviewer has a question or feels that a case, statute or other law is not addressed, raise the question and try to answer it by providing as much information as possible;

Read carefully and critically;

Examine the sources and challenge the footnotes for support and accuracy;

Correct constructively—give suggestions regarding how to make the article better;

Timely turnaround—it is crucial that you meet your deadline so that the article can move to the next step in the process.

When your edits are returned, they will be sent to one of the Senior Editors who will synthesize the comments and send a detailed feedback letter and redlined copy of the article to the author and Editor-in-Chief. Because your feedback assists the Senior Editors in making the final edits, your comments and edits should be as detailed as possible. The feedback letter and marked-up copy of the article are sent to the author who is given a deadline to revise the article. Once the author returns the article revision, the Senior Editor that wrote the feedback letter will review the revision to ensure that the author made all of the requested edits. Once the Senior Editor approves the revision, the Editor-in-Chief will do a final review of the article.

B. Responsibilities of the Super Editor

At times, an article may require significant revision before it is of publishable quality but there will be enough positive aspects that the article is not rejected outright. The Senior Editors may try to extract the best ideas from the article that they think may be expanded into an article of publishable quality. In order to afford authors the opportunity to retool their articles, we may assign a “Super Editor” either after the pre-review process with the Senior Editors or after the article has been reviewed by members of the TMR Editorial Board.

The job of a Super Editor is to materially improve the already reviewed draft article. A Super Editor acts as the facilitator between the author and the Editorial Board of the TMR. The initial reviewers will have provided various suggestions that must be distilled and transmitted to the author. Often, Super Editors are assigned to work closely with the author to take a promising article that needs work and help bring it to where it can be considered for publication as a great article.

In order to help the author achieve the best possible product, the Super Editor should first consider the evaluations that other editors have written and then discuss with the author what must be done. This may involve reorganization, case or statutory research or discussion, expansion or synthesis of ideas or arguments, as well as consideration of other issues or perspectives that may be of particular interest. In evaluating what the article needs, the Super Editor must consider objectively how this article may be improved to best serve the trademark practitioner and TMR readers. The process can take some time if, for example, recent case law or statutory developments impact the substance of the article.

The Super Editor should not rewrite the article but should direct and facilitate the author to do so by giving him or her guidance and ideas. As the process progresses, the focus will be more on issues of style, usage and form. Again, a Super Editor should be careful to balance the need to retain the author's voice with the goals of clarity and precision writing. The appointment of a Super Editor, however, does not mean the article will be published. If the author does not adopt suggestions or resists improvements that are deemed critical, the Editor-in-Chief and Managing Editor of the TMR still have the right to reject it.

C. Commentaries

The TMR added to its content of scholarly analysis in December 2013 a new commentary section. A commentary is intended to be a short essay (1,000–2,000 words) on trademark law that shares an opinion, stimulates discussion, or responds to a previously published commentary or article. A commentary may be a musing on an aspect of trademark law, a policy issue, or a point of practice. It may be straightforward, provocative, or humorous in style.As we begin the new 2014-2015 committee term,TMR Committee members will be invited to submit a Commentary for publication consideration.

D. Book Reviews

The Managing Editor collects books that may be of interest to trademark practitioners. However, all members of the TMR Editorial Board are asked to suggest books for review whether they are the authors of the books or become aware of the books through their practice.

A copy of the book is sent to a member of the Editorial Board, who will then have thirty days to complete the review. Reviewers are encouraged to return their review via email to the Managing Editor. The book also must be returned for INTA’s library.

Appendix B contains examples of book reviews.

The best preparation for writing TMR Book Reviews is to read several of the reviews in past issues. They will give the reviewer a sense of the desired length and detail, as well as the elements of style that have proven successful. A good test of any book is “would I buy this book,” or “would it be helpful for a library, firm, or practitioner to have.”

A typical review is two to five paragraphs long, indicates the scope of the book and, most importantly, explains what the book covers (and does not cover), so that the reader can decide whether he or she wishes to obtain the book. All book reviews should contain information such as whether the book is easy to use, i.e., does it have a good index and whether sections of the book are stronger than others. It is helpful to indicate the background of the author, e.g., a professor of economics, a practitioner, an antitrust specialist; but avoid superlatives in describing the author such as "the leading authority." Indicate the persons to whom the book is targeted, e.g., general practitioners or attorneys who specialize in intellectual property law.

If the book is of poor quality, try to be diplomatic in indicating its limitations. We have undertaken a responsibility to review and let our readers know whether or not the book may be useful. You can suggest weaknesses of the book by indicating its limited scope, by suggesting comparison with other treatments of the subject and by omitting favorable comment. Simply inform the readers of any significant omissions and errors if there are any.

III. Annual Reviews

A. The United States Annual Review

Theodore H. Davis, Jr. and John L. Welch currently write the United States Annual Review, which is published as the January-February issue. Each year it provides a summary of the past year’s decisions of the cases decided under the Lanham Act in the Trademark Trial and Appeal Board, the Court of Appeals for the Federal Circuit, the Court of Appeals for the District of Columbia Circuit, the Commissioner of Patents and Trademarks as well as the courts of general jurisdiction. The United States Annual Review is a valuable resource that analyzes the recent trends and developments in trademark law.

The manuscript for this issue is not sent out to members of the Editorial Board for review, but instead is reviewed by the Senior Editors of the TMR Committee.

B. The European Union Annual Review

New in 2014, the TMR will publish an EU version of the US Annual Review, which will also have a companion Annual Meeting session called the “Annual Review of Leading Case Law in the European Union.” That session will be presented for the first time in Hong Kong, and the issue will be published immediately prior, in April 2014.

Guy Heath is developing the content for both the new issue and Annual Meeting session. Coverage for both the issue and the session will include analysis of key recent decisions that shape European trademark law, from both the EU member states as well as the CTM. Guy has invited 5 “rapporteurs” from the EU to contribute to this endeavor.

IV. Maintaining the Flow of Original Articles

To help maintain a steady flow of articles for publication consideration, the members of the Editorial Board are expected to seek out potential authors among their colleagues who wish to be published. More targeted content is achieved through the efforts of 9 task forces:(1) Multiple-Language Issues Task Force; (2)Business-of-Branding Task Force; (3)Recruitment-of-Event-Speakers-to-Write Task Force; (4)Reviews of Law Review Articles Task Force; (5)Theme Issue on Trademark "Use" Task Force; (6)Theme Issue on "Design"Task Force (product design/trade dress/product configuration/functionality); (7)Minders & Solicitors Task Force; (8) Commentary Section Task; and (9) ForceBook Review Task Force.

In addition, the TMR Managing Editor maintains an online list of article topics for possible publication in the TMR, called the Proposed Article Topic List. The list is comprised of those topics that you, as TMR Committee members, raise at each TMR Committee Meeting. The list is by no means exhaustive, and the TMR welcomes any suggestions you or your colleagues may have, either at our meetings or any time. If you have suggestions or if you would like to write an article on these or any other topics, please send an email me,

Appendix A: Examples of (1) Summary Memo and (2) Edits Made Directly to Original Article

The reviewer’s general comments are followed by the edits written directly on an excerpt of the article.

(1) Example of Summary Memo – “Trademark Valuation: Building Brand Equity”

I.Overview

While this article raises some intriguing themes, it struggles to present the arguments and support in a logical or coherent manner, and makes it rather difficult for the reader to follow the author’s points. I tried to heed the direction that reviewers are “not to rewrite” the article but the lack of sentence and paragraph structure, as well as the use of confusing (and at times questionable) examples in support of the author’s contentions, made it difficult to simply redline the article without offering considerable comments and suggestions, and at times, my own interpretation of the author’s intentions. Accordingly, while this article could benefit from these suggestions as to structure and content, I believe it may require a substantial re-write before being considered for publication.