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?

4 thoughts on “Trademarks as Intellectual Property

  1. I find this proposed move a bit troubling, too. I always tend to think of trademark (and trade secret) infringements as species of “unfair competition;” it just seems to be that too much of the “value” here is in consumer perceptions (rather than the mark conceived as a “thing” (yes, I’m working through the “thing” article!)).

    On the other hand, the P & T of the PTO seem to reside together in the same office pretty peaceably.

  2. At this point I’m unclear on the need for a change, but is this being driven by international harmonization — i.e. the typical grouping of patent and trademark as “industrial property”?

  3. Hi Susan —

    If you look at the letters, it seems to suggest that the motivation is simply formal indexical harmonization: IP should be with IP. Quoting:

    “But, more importantly, contrary to Professor McCarthy’s view, title 35 would make a good fit. Congress recognized the similar nature of patent law and trademark law when it enacted Section 77 of the Act of July 8, 1870 (ch. 230, 16 Stat. 198), which provided for national protection for trademarks registered in the patent office. Indeed, it is the U.S. Patent and Trademark Office that administers both laws today…. [I]n the long run, the benefits have proven to be worth the cost. Newcomers will find the law much more accessible, for the reasons stated above. Experience with the enactment of other titles has shown that those who resisted the change came to appreciate the change a few years later.”

    (Again, I think McCarthy is right.)

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