Keeping the INTA Think Tank Humming

Rodrick J. Enns Chair Emerging Issues Subcommittee Enns & Archer LLP Winston-Salem, N.C., U.S.A.

While the words "think tank" are most often associated with august institutions like the Heritage Foundation, the Brookings Institute, and the Council on Foreign Relations, INTA has its very own think tank in the form of the Emerging Issues Subcommittee of the Issues and Policy Committee.

The mission of the Subcommittee is to conduct thoughtful, research-intensive inquiries into weighty questions of trademark law with the aim of making recommendations to INTA as to whether it is appropriate for the organization, as a whole, to take a position on particular policy issues.

According to Rodrick J. Enns, who has chaired the Subcommittee for the last four years, the Subcommittee provides a forum for debates regarding policy topics that do not fall within the jurisdiction of existing standing committees.

When an issue of fundamental trademark policy arises that has not previously been addressed by the INTA Board of Directors, the Emerging Issues Subcommittee will commence a thorough study of the issue. The result may be a recommended resolution for consideration by the Board, a suggestion to another committee that particular legislative or regulatory action be considered, or simply a "white paper" summarizing the results of the Subcommittee's work.

If the Subcommittee and Board agree that action by INTA is appropriate, other committees, such as those charged with legislative drafting or lobbying, will then work on specific implementation. As Mr. Enns puts it, "Our work is purely at the policy or conceptual level. The practical implementation of our recommendations is left to others."

In the past, the Subcommittee has tackled a broad array of issues of interest to international trademark law practitioners. For example, the Subcommittee was involved in the genesis of the U.S. legislation that led to the establishment of dilution as a ground for opposition proceedings.

More recently, it has been exploring the issue of whether INTA should press for the adoption of specialized trademark courts to handle infringement and other disputes.

Another hot topic of debate within the Subcommittee is whether INTA should advocate any refinement of existing trademark laws to make them more consistent with the marketing practices of famous brand owners. As part of that effort, Mr. Enns notes that the Subcommittee is attempting to craft an "articulable definition of dilution that INTA will endorse in order to rationalize the application of U.S. dilution laws to protect famous marks."

The Subcommittee is also exploring whether INTA should support potentially broad changes in the trademark examination process in the United States. With the prospect of the United States participation in the Madrid Protocol looming and the pressure caused by increased filings at the USPTO, some have wondered whether the United States should consider a more streamlined examination process closer to that employed by a number of European countries, perhaps even eliminating substantive examination altogether.

The Subcommittee has for the past year been gathering input from all sources on the potential implications of such a change and has attended an informal meeting on the topic with USPTO officials. Mr. Enns notes that to consider and recommend such a fundamental change in the trademark examination process is not taken lightly, and it has still not been decided, even within the Subcommittee, whether any such change is advisable.

Indeed, Mr. Enns points out that the Subcommittee can ultimately advise the Board that no organizational response is appropriate with regard to a particular issue. For instance, the Subcommittee considered several years ago whether INTA should take a formal position on the protectability of vanity telephone numbers as trademarks. However, Mr. Enns reports that after careful consideration, the Subcommittee decided that, since current law adequately protects such telephone numbers when used as trademarks, and since additional tools are available to protect against bad faith adoption of similar numbers, no refinement of INTA policy was needed or recommended.

Mr. Enns states that "for the four plus years that I have chaired the Subcommittee, we have been blessed with literally dozens of enthusiastic members who have made major contributions to the topics we have addressed. The Subcommittee currently has 17 active members, and we are very grateful for all of the time and effort they put in each year." Given that glowing testimonial from Mr. Enns, there seems to be little doubt that the work of the Subcommittee will continue to flourish, both now and as the new Committee term opens.