SUBCOMMITTEE ON COURTS, CIVIL LIBERTIES, OF THE COMMITTEE ON THE JUDICIARY NINETY-EIGHTH CONGRESS 40-208 O Printed for the use of the Committee on the Judiciary U.S. GOVERNMENT PRINTING OFFICE WASHINGTON: 1985 SUBCOMMITTEE ON COURTS, CIVIL LIBERTIES, AND THE ADMINISTRATION OF JUSTICE ROBERT W. KASTENMEIER, Wisconsin, Chairman JACK BROOKS, Texas CARLOS J. MOORHEAD, California HENRY J. HYDE, Illinois MICHAEL DEWINE, Ohio THOMAS N. KINDNESS, Ohio HAROLD S. SAWYER, Michigan MICHAEL J. REMINGTON, Chief Counsel David W. BEIER, Counsel THOMAS MOONEY, Associate Counsel (II) CONTENTS Appendix 1-legislative materials: A. H.R. 4460, 98th Congress, 1st session. B. Comments by Hon. Robert W. Kastenmeier on introduction of H.R. C. H.R. 6285, 98th Congress, 2d session D. S. 1990, 98th Congress, 2d session.. E. Senate Report 627, 98th Congress, 2d session (1984).. A. Letter to Hon. Peter W. Rodino, Jr., from Irving P. Margulies, acting general counsel, U.S. Department of Commerce, dated December 30, B. Letter to Hon. Peter W. Rodino, Jr., from Irving P. Margulies, General 79 C. Letter to Michael Remington, Esq., from Herbert F. Schwartz, Esq. Attachment: Memorandum with respect to H.R. 4460.. D. Letter to Hon. Robert W. Kastenmeier from Denis A. Firth, president, E. Letter to Robert W. Kastenmeier from William A. Finkelstein, Trade- F. Letter to Hon. Robert W. Kastenmeier from Douglas W. Wyatt, presi- G. Letter to Hon. Peter W. Rodino, Jr., from Norman St. Landau, Esq., H. Letter to Hon. Robert W. Kastenmeier from Prof. Kenneth B. Ger- I. Letter to Hon. Robert W. Kastenmeier from Mark Silbergeld, director, K. Letter to Hon. Robert W. Kastenmeier from E. Edward Kavanaugh, president, the Cosmetic, Toiletry and Fragrance Association, Inc., dated 1205 10/96 53-005-00→ Appendix 3-additional materials: A. Hemp, "Trademark Law Is Unsettled," New York Times, September 7, 1983 B. A. Greenbaum, J. Ginsburg, & S. Weinberg, "A Proposal for Evaluating Genericism after Anti-Monopoly," 73 Trademark Reporter 101 (1983). Page 134 136 C. Trillin, "U.S. Journal: Berkeley, Cal., Monopoly and History," New 163 D. Zeisel, "The Surveys That Broke Monopoly," 50 University of Chicago 167 E. Stern, "Genericide: Cancellation of a Registered Trademark," 51 Fordham Law Review 666 (1983)..... 181 F. Osawa & Co. v. B & H Photo, et al., No. 83 Civ. 6874 (PNL), (S.D.N.Y. 211 G. Letter to Michael J. Remington, Esq. from William M. Borchard, Esq., dated February 16, 1984.. 222 Attachment: Warner Bros. Inc. v. Gay Toys, Inc., No. 83-7365 (2d Cir., 222 TRADEMARK REFORM ACT OF 1983 THURSDAY, JUNE 28, 1984 HOUSE OF REPRESENTATIVES, SUBCOMMITTEE ON COURTS, CIVIL LIBERTIES AND THE ADMINISTRATION OF Justice, COMMITTEE ON THE JUDICIARY, Washington, DC. The subcommittee met, pursuant to call, at 10:15 a.m., in room 2226, Rayburn House Office Building, Hon. Robert W. Kastenmeier (chairman of the subcommittee) presiding. Present: Representatives Kastenmeier and DeWine. Staff present: Michael J. Remington, chief counsel; David W. Beier, counsel; Joseph V. Wolfe, associate counsel; and Audrey K. Marcus, clerical staff. Mr. KASTENMEIER. The subcommittee will come to order. I hope that we will be joined shortly by more of our colleagues. I should report that many of our colleagues were at the SenateHouse conference on bankruptcy last night until after 2:30 a.m., so they may be late this morning. This morning the subcommittee will hear testimony on H.R. 4660, the Trademark Reform Act of 1983. The bill defines the appropriate test for courts to apply in determining whether a mark has become generic. It also provides for exclusive appellate jurisdiction over trademark cases in the U.S. Court of Appeals for the Federal Circuit. Clarification of the provisions of the Lanham Trademark Act relating to genericness is necessary because of the Ninth Circuit Court of Appeals' decision in Antimonopoly v. General Mills Fun Group, Inc. That decision makes it extremely difficult for trademark owners to prevent their marks from becoming generic. The provision of the bill which unites Federal appellate court jurisdiction in trademark cases is aimed at eliminating conflicting decisions among the circuits. Generally, issues of trademark law are dealt with within the limited context and arena of a legal controversy. Nevertheless, the importance of trademark issues, especially the aspect of genericness, should not be underestimated. Established, recognizable and stable trademarks are absolutely essential to informed consumer purchasing. It is rare that this branch and the general public have the opportunity to receive the views of organizations and individuals so well versed in the law of trademarks. We certainly welcome this opportunity. (1) |