TMR Committee Meeting Minutes – Miami, FL
Thursday, November 14, 2013
12:45 p.m. – 2:45 p.m.
Loews Miami Beach Hotel – Cowrie I
I. Welcome and Introductions
II. Highlights of 2013 TMR Issues and Those in Pipeline
As of 2013, 75% of what TMR publishes isgenerated by this committee—either because some of you are writing the articles yourselves or because some of you have solicited authors to write them. This leaves only 25% that are submitted randomly for publication consideration.
We thank all of you who have helped supply that content—it has made a big difference this year. For those of you on the Committee next term, we strongly encourage these activities going forward. And we thank those of you have reviewed and provided feedback on the articles we have received.
As evidence of your efforts to generate content, Issue No. 4, published in October,was a rather robust one.
The Evolution of Dilution in the United States from 1927 to 2013By Jerre B. Swann[former E-I-C; also long-time member of Comm. and contributor to TMR]
Public Domain Preservation in EU Trademark Law—A Model for Other Regions?
By Martin Senftleben[recruited by Minders & Solicitors Task Force]
The United States Supplemental Register: Solace, Substance, or Just Extinct?
By Anne Gilson LaLonde and Jerome Gilson
Three-Dimensional Trademark Registration in Japan
By Junko Izumi
The Mark of a Resold Good
By Yvette Joy Liebesman and Benjamin Wilson
ICANN Dot-Anything: Rethinking the Scope of the New gTLD Expansion, Its Effect on Government Regulation, and Its Impact on Trademark Owners
By Ukeme Awakessien Jeter
Book Reviews
Overlapping Intellectual Property Rights
Edited by Neil Wilkof [incoming TMR Senior Editor] and ShamnadBasheer [reviewed by Ken Wilton]
Trademark and Deceptive Advertising Surveys: Law, Science, and Design
Edited by Shari Seidman Diamond and Jerre B. Swann [reviewed by Bruce Isaacson]
For the last issue of 2013, Issue No. 5, we will publish the following articles:
Paul MaeyaertJoreoenMuyidermans—“The Likelihood of Confusion in Europe”
Deborah Jay—“Ten Truths of False Advertising Surveys”
Pam Chestek—“Who Owns the Open Source Project Name?”
Griffin Barnett—“ICANN standards for morality and the new gTLDs”
Teresa Scassa—“Antisocial Trademarks”
Big news for 2014!
We will publishanewEU 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,inApril 2014.
Guy Heath Guywill be leading this mammothproject, which means that he willdevelop 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, including Pier Luigi, who will now continue to have a hand in the TMR once his tenure as Editor-in-Chief comes to an end next month.
III.Minders & Solicitors Task ForceUpdate (Leader: Neil Wilkof)
This term, the task force brought 9 articles to publication—articles from India, Australia, Japan, the EU, and also the US. We are working on getting a few others to publication, including one on the relevance of context when determining infringement under EU law, which is with a“super editor,” and one on extended trademark protection vs. extended trademark use, which is in the midst of the review process.
IV.Commentary Section Task Force Update (Leader: Neil Wilkof)
The focus of this new section is to publish a brief comment (not a case summary or the like) on trademark-related subjects, including attention to strictly legal issues, trademark strategy, trademark policy concerns, commercialization and licensing of trademarks, and issues that are branding-focused and brand-oriented.The preferred length for the Commentary is between 750 and 1500 words.
It is our goal that members of the Committee have the first opportunity to contribute pieces for this section. We will turn outside the Committee only if necessary or under unusual circumstances.
Proposed Commentsfor December’s Issue No. 5:
(1) Neal Platt—Persistent Infirmities in Trademark Priority: Toward a Cure (proposed curative period for improper filings)
(2) Glenn Mitchell--“Aura” as Quality – A Sumptuary Law for Our Times?(Quality function of trademarks currently going beyond material characteristics?)
(3) Neil Wilkof—The Socrates Effect in Approaching Trademark Prosecution (weight of evidence re distinctiveness (acquired / inherent))
V. Theme Issue Task Force Update
The thinking behind the publication of theme issues (one per year) is to vary some of the content of what TMR publishes, and to increase Committee member involvement.
We have initially targeted 2 theme ideas from the list of Committee-member proposed topics, which are (1) a trademark "use" issue, and (2) a design issue.
The most logical theme issue to tackle first (for publication next year) is a trademark "use" issue. Apart from an ongoing subject of controversy, it was, quite fortuitously, the subject of a recent flurry of articles that were either received or proposed to the TMR.
We are currently pursuing the following articles from around the globe:
(1)TMR Committee member Paul Tackaberry submitted an article earlier in the year, which has undergone full editorial review. It is entitled "Exploring the Boundaries of 'Use' Under Canadian Trademark Law".
(2)As a result of the soliciting efforts of our Minders & Solicitors task force, INTA member Axel Nordemann of Germany volunteered to co-author with US practitioner Tara Aaron a comparative piece on the concepts of use under US and CTM laws. February 2014 is the targeted submission.
(3)TMR Committee member Max Ng, from Singapore, has agreed to write on Internet use-from the perspective of Southeaast Asia-which was a topic he discussed at an INTA roundtable last year in that region.
(4)Siegrun Kane (on our task force) has referred us to practitioner, George Fu, from Shanghai, who has volunteered to write on 1 of 4 topics (most likely the balancing of fair use and exclusivity in TM rights).
(5)David Mayberry (on our task force) is attempting to orchestrate a survey piece on how AdWords have fared in the Google cases across jurisdictions.
(6)Elizabeth Fekete has offered to update her article, “Rights Derived From Use on an Unregistered Mark and Cancellation of Marks for Nonuse: The Brazilian System, in the Context of Harmonization Process in Mercosur” (The content of this 2003 article was presented at the INTA 125th Annual Meeting in Amsterdam.)
VI.Book Review Task Force Update
Our newly formed Book Review Task Force has identified major legal publishers and contacts from whom we requested (and can regularly request) new titles.
Our task force is currently reviewing some of the books we have received so far. And some of the other books are being reviewed by TMR Committee members who responded to the “Call for Book Reviewers.”
We have received seven new books to date and we hope to get all the reviews published in time for the last TMR issue of the year, which is December’s Issue No. 5.
Books Undergoing Reviews by Task Force Members
TTAB Practice (ALM): Anne Hiaring Hocking
Trade Dress: Evolution, Strategy and Practice (Oxford – now LexisNexis): Jeremy Roe
Products Comparison Manual (BNA): Jennifer Gregor
Trademark Surveys: A Litigator's Guide (Oxford – now LexisNexis): Christine Hernandez
Books Undergoing Reviews by TMR Committee Members
Trademark Surveys (Jacob Jacoby, BNA): Steve Feingold
International Trademark Dilution (Dan Bereskin, ed., West): Jennifer McKay
Canadian Intellectual Property Law and Strategy (Oxford): Paul Tackaberry
VII.Brainstorming for Continued Enhancement of TMR Content and Committee Member Participation
Looking ahead to the next Committee term, we held a brainstorming session so that tablemates could share their ideas onfurther enhancing TMR content and Committee-member participation (118 members).
Proposed new article topics: The following article topics were proposed (many that already appear on the TMR’s “Proposed Article Topic List”):
1.Substantive Practical Tips: e.g., revive Tips from the TTAB (Tips from the TTAB is already on the Open Topics list) add other tribunals:
a.Wisdom from the Bench
b.ex parte practice tips
c.European and CTM filing tips from OHIM
2.The role of Concurrent Use in the internet age – new TTAB decisions expected on concurrent use
3.Proofs required to establish distinctiveness in the TTAB – is a smaller company at a disadvantage and what makes a mark “Highly Descriptive” in the TTAB analysis
4.Trademark issues in various social media platforms (this is already on the Open Topics list)
Additional suggestions for theme issues:
5.Tribute Issue to Senior Practitioners: e.g., McCarthy / Gilson compilations
6.Trademark Lifestyle / Legal Practice Issue: e.g., demographic changes, work vs. leisure, billing, women’s issues
[Note to fit within TMR standards, the above would have to have scholarly articles. Some expressed concern that issues with a focus on individual achievements or on gender are not appropriate for a scholarly trademark journal.]
Suggestions for committee management / task forces:
7.Increase communication among committee members
8.Increase use of committee portal
9.task forces to share summaries of their conference calls with rest of the Committee to keep it up to date in between major meetings
10.addurl to Proposed Article Topic list to emails.
Suggestions for generating more articles:
11.INTA Session on “So You Want to Write an Article”
12.Assign members to get an author for specific topics from Proposed Article Topic List
13.Solicit Articles from Other Sources such as business schools (Jerre Swan wrote a TMR article in 2006 addressing an interdisciplinary approach to TMs – maybe that would give someone some ideas on an article that might be of interest to the TM bar)
Discussion regarding future of TMR:
A debate ensued about how the TMR should approach the population’s changing reading habits with fewer people reading and the demand for shorter blurbs rather than longer articles. The flip side is that the TMR is a scholarly journal and lawyers will always need scholarly works that synthesize and take a viewpoint on topics of interest, regardless of the fact that such articles won’t be read for recreational purposes.
VIII.2014-2015 Committee Term
Statistics for new Editorial Board / TMR Committee:
Chair / Editor-in-Chief: Jonathan Moskin
Vice Chair / Senior Editor: Dan Glazer
Senior Editors:
Katie McCarthy, Jessica Elliott Cardon, Glenn Mitchell, Raffi Zerounian,
Neil Wilkof
Committee members for next term = 112. [Add jurisdictional breakdown.]
IX.Thank You to Everyone Who Served During 2012-2013 Committee Term
Thank you to all the members of the Editorial Board for the time they carved out of their practices and personal lives to prepare article reviews over the course of the past 2 years.
Also, thank you to our Senior Editors, who have synthesized all those reviews for our contributors and who’ll continue to do so next term.
And a big thank you to Pier Luigi, whose tenure as Editor-in-Chief has capped over 16 years with the TMR.PierLuigifirst became involved with the TMR Editorial Board in 1997.
Apart from his responsibilities as an IP practitioner for over 20 years in Florence (currently founding and managing partner of Studio Legale SIB, Florence, Italy) as well as adjunct IP professor (Univ. of Florence School of Economics), Pier Luigi has also served on INTA’s Board of Directors, he has been a frequent speaker at INTA events, and he has written several articles for The Trademark Reporter, including the most recent one in 2011 that he co-authored for the 100th Anniversary issue (“Trademark Functions and Protected Interests in the Decisions of the European Court of Justice”).Pier Luigi has also been a longtime contributor to the TMR’s International Annual Review.
We are grateful for Pier Luigi’s leadership, insight, and the sheer pleasure of working with him. [Pier Luigi was presented with a framed mock TMR cover that contained his name and years of service as Editor-in-Chief and Editorial Board member.]
X. AOB/Questions/Comments