House Subcommittee Holds Hearing on Trademark Amendments Bill

(May 5, 1999) The House Courts and Intellectual Property Subcommittee held a hearing on Wednesday afternoon, May 5, on HR 1565, the Trademark Amendments Act of 1999.

HR 1565 IH was introduced by Rep. Howard Coble (R-NC) on April 27, 1999. Rep. Coble is the Chairman of the House Judiciary Committee's Subcommittee on Court and Intellectual Property. The bill would:

• allow suits for trademark infringement to be brought against the federal government;
• require plaintiffs in Lanham Act suits for trade dress infringement to prove that the trade dress is not functional; and
• amend the Federal Trademark Dilution Act of 1995 by allowing holders of famous marks with a right to oppose or seek cancellation of a mark that would cause dilution.

Trademark infringement and dilution, and Lanham Act trade dress infringement, are becoming increasingly important matters for companies conducting business online. For example, there is the complaint filed in federal court in Alexandria, Virginia, by America Online against AT&T. AOL alleged a variety of trademark and Lanham Act violations by AT&T in connection with its email services.

Michael Kirk, Executive Director of the American Intellectual Property Law Association, testified that the "AIPLA supports the improvements in the protection of trademark assets which would be made by H.R. 1565." In addition, he supports further clarification of the trade dress provisions.

Kim Muller, Vice President for Trademark Affairs and Policies of the International Trademark Association, testified in favor of the bill.

Garo Partoyan, Chairman of the Trademark Committee of the Intellectual Property Owners Association, also testified in favor of the bill.

The only opposition to the bill came from the Patent and Trademark Office. Todd Dickenson, the Acting Commissioner of Patents and Trademarks, testified on behalf of the Clinton administration. He opposed the provision that would make the federal government subject to suits for trademark infringement. He also said that he was concerned about the increased workload to the Trademark Trial and Appeal Board that would result from the bill.

Rep. Coble

Rep. Coble had this to say about sovereign immunity: "Currently, the Federal Government can not be sued for trademark infringement by a private citizen or corporate entity. Yet, the Federal Government enters the marketplace as a competitor to private business and is in a position to sue others for infringement. This runs counter to our sense of "fairness." H.R. 1565 will level the playing field in this respect."

However, while the bill deals with a variety of changes to trademark law, the topic which attracted the most attention at the hearing was the plight of aging rock and roll musicians.

Rep. Coble referred to the problem as "imposter performers." He said that "on any given night, all across the nation, fake oldies groups take the stage under the name of the original groups. Because they perform for a lower price than the true original performers, the original performers are at home, not working."

The Subcommittee heard from Chuck Blasco, one of the original members of the Vogues, and Jon Bauman, who is better known as the singer named "Bowser" from the 1950s style rock group Sha Na Na. Bowser was as articulate and effective as any witness to testify before Congressional committees.

"We are really of one mind that we ought to do something about this," said Rep. Zoe Lofgren (D-CA) (web site | bio). She stated that this is something "which we all think is dreadful, and want to do something about."

The bill in its current form does not yet address this problem. The Subcommittee merely heard testimony. Rep. Coble intends to amend the bill. He stated that "I know Mr. Berman joins me in seeking a constructive amendment to this legislation addressing this issue."

At the conclusion of the hearing Rep. Edward Pease (R-IN) stated that "I find myself in support of HR 1565." He added that he would also work for its passage.

House Judiciary Committee Chairman Henry Hyde (R-IL) did not attend the hearing, but released a detailed summary of the bill.

Rep. Coble presided at the hearing. Rep. Lofgren, Rep. Pease, and Rep. Bob Goodlatte (R-VA) also participated as members of the subcommittee. In addition, Rep. Ron Klink (D-PA) appeared briefly at the beginning of the hearing to introduce Chuck Blasco, who is a constituent of his. The Ranking Member, Rep. Howard Berman (D-CA), had a scheduling conflict, and did not attend.