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Trademarks as Intellectual Property

Are trademarks “intellectual property”? There’s a debate for another time and place. Meanwhile, however, there is a move afoot in Congress to relocate the Lanham Act, moving it from Title 15 of the United States Code over to Title 35, where the Patent Act lives.

The explanation that accompanies a discussion draft of the proposed legislation reads, in part:

To reflect the emergence of intellectual property law as a distinct field of law, the bill consolidates the Lanham Act, governing trademarks, and various other provisions of law relating to intellectual property with the patents title. To restate these various provisions of law as a cohesive unit, it is necessary to make minor changes in the organization of the title.

One wonders what mischief this language might cause down the road.

There’s more, however. The National Law Journal (sadly, not available online) has carried an exchange of letters on the wisdom of the change. Tom McCarthy, author of McCarthy on Trademarks and Unfair Competition, opposes it; in the August 28 issue, Peter LeFevre, identified as law revision counsel to the U.S. House of Representatives, explains that the change is nothing more than Congress continuing its practice of “enacting individual titles of the code into positive law.” Mr. LeFevre is apparently using the phrase “positive law” in a very restrictive sense: Titles of the U.S. Code that are enacted as “positive law” are presumptive evidence of the content of the law; titles not so enacted are merely prima facie evidence of the content of the law.

Over the last 50 years or so, has the fact that the Lanham Act has not been enacted as positive law ever caused a problem — for trademark lawyers, the Trademark Office, or the courts?