Hong Kong Convention & Exhibition Centre

TMR Committee Agenda Hong Kong Convention & Exhibition Centre Monday, May 12, 2014 1:15 p.m.-3:15 p.m.

I. Welcome and Introductions

II. New Committee Term for 2014-2015

A. Current Senior Editors:  Jonathan Moskin: Chair and Editor-in-Chief  Dan Glazer: Vice Chair  Katie McCarthy  Jessica Elliot  Glenn Mitchell  Raffi Zerounian  Neil Wilkof

B. New Committee Statistics

 65/121members are new this term.  Members by region:  75 North America  20 European Union  12 Latin America  11 Asia-Pacific  3 Middle East

III. TMR Committee Resources on INTA Website

Everything you need to know about the TMR is located on INTA’s website under Global Trademark Resources and The Trademark Reporter (www.inta.org Global Trademark ResourcesThe Trademark Reporter). There you can find:  Current and Archived Issues  Submission Guidelines (includes summary of review process)  Committee Information (including the Welcome Packet and past meeting minutes)

Among other topics, the Welcome Packet discusses the subject of maintaining article submissions and your roles as ambassadors to the TMR to help us find and recruit authors.

IV. Publication Status

Either a good number of our articles are written by TMR Committee members, both current and past members, or these members have been responsible for finding authors to write articles for the TMR.

Looking at the past 2 years, 75% of what the TMR published was generated by this Committee—either because some members wrote the articles themselves or because they recruited authors to write them. This meant that only 5 or 6 articles, or 25%, were submitted randomly by email for publication consideration. It is evident that the publication of each issue is dependent on our Committee members writing articles and our Committee’s help recruiting authors to write them.

As E-I-C Jonathan Moskin and I have expressed via email, the TMR needs your active involvement— including your participation on our task forces to help develop and also diversify the content we publish.

V. New Task Force Updates

1. Minders & Solicitors [Senior Editor Neil Wilkof]

Our Minders & Solicitors task force was the only task force TMR ever had years ago, and it was established to actively recruit authors and monitor the articles they submitted for publication. When it was determined that every TMR member should be helping with this, we disbanded the group. But we decided to revive it several years ago with a new focus on international articles (written in English).

Since its shift in focus, the task force has brought 11 articles to publication (approximately 25%) — articles from India, Australia, Japan, and the EU.

Our new task force is continuing this mission and we have some good prospects from Latin America and China.

2. Commentary Section [Senior Editor Neil Wilkof]

The focus of this new section is to publish a brief comment (not a case summary or the like) on trademark-related subjects, including attention to strictly legal issues, trademark strategy, trademark policy concerns, commercialization and licensing of trademarks, and issues that are branding-focused and brand-oriented.

The preferred length for the Commentary is between 750 and 1500 words.

It is our goal that members of the Committee have the first opportunity to contribute pieces for this section. (We will turn outside the Committee only if necessary or under unusual circumstances.)

We published our first 2 comments in the December 2013 issue (and 3 new ones are planned for the May- June issue).

3. Book Reviews [Editor Anne Hocking]

Our small group of 4 has 2 tasks: (1) Keeping our group informed about new trademark-related publications. (Once new titles are identified, we request comp copies to review.) (2) Our task force members then review the books. First pick of a new book is given to our task force members and then a call for book reviewers is sent to our committee if we have additional titles.

4. Theme Issue: Trademark “Use” [Senior Editor Jessica Elliott / Lisa]

We have a promising pipeline of articles because of the efforts of last year’s trademark-use task force members. They recruited authors and solicited articles, and in some cases, wrote or agreed to write articles themselves for the issue.

The articles we have lined up so far are at various stages of progress—some have already undergone review or are in the process of being reviewed. Other articles are in the midst of being written and I am regularly monitoring their status.

4 of our 8 planned articles have been or are being written by TMR Committee members, and the other 4 have been recruited by this and our M&S task forces—another example of how invaluable our Committee’s active participation has become.

(1) Canada: Committee member Paul Tackaberry, “Exploring the Boundaries of ‘Use’ Under Canadian Trademark Law.

(2) US – EU: Axel Nordemann (Germany) & Tara Aaron (U.S.), “The Concepts of Use of a Trademark Under European Union and United States Trademark Law”

(3) China: George Fu (Shanghai), “The Balancing of Fair Use and Exclusivity in Trademark Rights Under Chinese Trademark Law: A Third Amendment Perspective”

(4) US – EU: Editor David Mayberry, “Keyword Advertising in the United States and European Community”

(5) Brazil: Editor Elizabeth Fekete has offered to update her article, "Rights Derived From Use on an Unregistered Mark and Cancellation of Marks for Nonuse: The Brazilian System, in the Context of Harmonization Process in Mercosur" (The content of this 2003 article was presented at the INTA 125th Annual Meeting in Amsterdam.)

(6) EU: Danny Friedmann, “Extended Trademark Protection Versus Extended Trademark Use”

(7) India: Latha Nair has agreed to submit an article

(8) US – Sandy Edelman – Proving abandonment of US trademark registrations that have been issued based on foreign registrations before the Lanham Act’s 3-year statutory presumption period has elapsed.

5. New Theme Issue: Design [Editor Rex Connelly / Senior Editor Glenn Mitchell]

Conference call held to kick off the Design Issue Task Force. In line with the current strategic plan, the team emphasized the desire to have contributions from a variety of regions. They also discussed ways in which members could contribute, including (1) identifying and recruiting authors, (2) developing topics and (3) volunteering to submit their own pieces.

Glenn also distributed the design-oriented topics developed at the AM in Dallas, and asked that additional topics be considered.

Articles can range from traditional scholarly pieces, to practice-oriented articles, to short Commentary pieces that fit within the topical scope of the issue.

6. New Business/Economics of Branding [Senior Editor Dan Glazer]

TMR has set a goal of publishing, by the end of 2015, at least two articles that focus on the trademark system and how branding interacts with consumers, companies, and the international economy.

The primary mission of this Task Force is to solicit and obtain scholarly articles written about commercial or business issues related to trademarks and brands. For example, articles might include brand valuation, marketing issues, the business of licensing, or brand extension. Authors of these articles could include business professionals, academics, economists or other individuals who have different (not necessarily legal-focused) perspectives on the value of trademarks and brands, and how they impact the business owners and consumers that use them.

A good starting point for ideas and resources is the 2013 WIPO Report on Brands (pp. 77 and 108): http://www.wipo.int/export/sites/www/freepublications/en/intproperty/944/wipo_pub_944_2013.pdf.

7. New Recruitment of Event Speakers [Senior Editor Katie McCarthy]

Katie and present task force members attended various sessions in Hong Kong.

8. New Multi-Language Issue [Chair / E-I-C Jonathan Moskin / Lisa]

Jonathan and I had a start-up conference call in March, and, in line with INTA’s Strategic Plan to “internationalize” – specifically, that we ultimately publish 30% of the TMR’s content in different languages – we identified some key issues with respect to that plan, which were distributed in April and appear again in Part VI below.

VI. Breakout Session: Brainstorming for Strategies on How to Achieve Publication of Articles in Multiple Languages (Spanish, Portuguese, Chinese)

Attending Committee members expressed their thoughts on publishing articles in Spanish, Portuguese, and Chinese, and how we can make that happen with respect to a number of concerns

*Summary of Committee Discussion*

1. Threshold Question of Concern -- Is there a need/demand for the TMR to include non-English articles?

INTA is a trade association that first and foremost must deploy its limited resources to meet the demonstrated needs of its members.

The goal of addressing legal trademark issues in a scholarly manner in a peer-reviewed journal on an international basis is recognized by the TMR committee as a valuable goal and one that meets the needs of INTA members. The TMR Minders and Solicitors Task Force was established several years ago to increase the number of TMR articles from non-English speaking jurisdictions about the law in jurisdictions outside of the United States. The journal has been, and continues to be, “internationalized” by these efforts. (25% of articles are currently non-US in coverage.)

First impressions from the committee, however, are that there may not be a need for the TMR to actually publish articles in other languages:

 Professional trademark literature in the contemplated foreign languages already exists and this literature reaches both INTA and non-INTA members in the relevant countries.

 Republishing in the TMR articles that already appeared elsewhere in the contemplated foreign languages serves no purpose. Relevant articles that have already been published are available to, and probably already known to, INTA members practicing in those countries. Other INTA members will not be able to read the articles unless they also speak the language or the TMR provides translations into English.

 Many INTA members, who are trademark practitioners required to conduct at least some portion of their business in English, are able to read TMR articles of interest to them in English. The TMR has not received requests for articles in other languages. Indeed, one benefit of the current TMR peer-review system is that articles written in English are sometimes edited by someone who does not speak English as their first language; the editor in that instance can raise questions and help make the article more understandable to a broader audience.

 Trademark practitioners from non-English speaking countries prefer to publish their TMR articles in English both to instruct the INTA membership and broader TMR readership as well as to use the TMR platform as a vehicle to attract potential clients. These goals are served by the current practice of publishing in English.

Based on the above, the following:

 Current assessments are that the desired goal should be to continue our efforts to increase the number of TMR articles, in English, covering the law in non-English speaking countries, not to publish full-scale scholarly articles in other languages.

 Creating new publishing platforms in languages other than English – separate and apart from the TMR -- might be considered. Providing synopses of TMR articles in other languages may be useful. Selecting a few articles for translation initially may be useful.

 Before embarking on full-scale efforts to publish articles in other languages, or other major changes to the TMR peer-review editing structure, and particularly because of the difficulty of implementing quality control with respect to non-English language articles under the current peer-reviewed editing function of the TMR now conducted entirely in English, reliable data should be collected about whether there is a need to publish non-English language articles or whether some other options will better advance the interests of the INTA membership. A survey of the membership could be conducted to determine what percentage of the membership would read such articles and/or would seek to publish their non-English vs. English articles in the TMR. Focus groups on the topic could be held in association with upcoming INTA meetings in various countries. If we opt to provide synopses in other languages of TMR articles, we could have the member complete an online form to indicate if they would be interested in reading the article in another language.

2. Concerns Re: Maintaining Editorial Function of TMR Committee

Currently, the TMR is a respected, peer-reviewed, scholarly journal whereby one or more Senior Editors must have control over all of its contents. If non-English contents are included in TMR, the editorial function could not be performed in the same way, unless full and accurate translations were provided for each foreign language article. Without full translations, the editors would not be able to understand and review the TMR’s contents, and could not make editorial suggestions or raise editorial questions throughout the process. At present, many articles submitted to the TMR are turned down for publication as not up to the quality of the journal. If non-English language contents are to be included in the TMR, the quality-control mechanisms in the editorial process could not be maintained.

3. Concerns Re: Implementation and Performance There has to be a realistic organizational structure to allow for the implementation and performance of the goals. This includes the availability and allocation of the necessary resources. At the moment, this does not seem realistic, both from the point of view of the professional resources needed at INTA and the availability of sufficient INTA members qualified and willing to contribute as authors of articles or editors of the text. At the least, the make-up of the TMR Committee for 2014-2016 does not seem to have any such capability, and it is questionable whether such capability will be available to TMR in the future.

4. Evaluation

Any organization that seeks to implement defined goals needs a valid and reliable set of evaluation criteria to measure the success or failure of the implemented program. It appears that at the moment the only evaluation measure is the quantity of pages as a function of the overall size of a given TMR issue. A single measure is not sufficient. Thus, at the least, a valid and reliable evaluative instrument needs to be developed prior to implementing a program to address the goals.

VII. Senior Editor Tips on How to Prepare a Thorough Review

 It is not the editor’s job to change the author’s writing style.  Correct grammatical errors.  Make suggestions or changes if sentence structure is confusing or if added text will clarify the author's intent.  Don't submit just a redline, include a memo that highlights your thoughts. The more specificity and guidance you can provide in your cover memo, the more helpful your review is to the author and the ultimate quality of the article. For example, rather than just state that the article needs to be restructured, suggest a proposed new structure.  Don't submit just a memo, include a redline that offers specific suggestions.  In regard to the degree to which you need to check citations/read cases, no independent research or cite-checking is required—only if you sense that a case has been mis-cited.  If certain cases or law review articles are discussed at length or are otherwise central to the author’s analysis, a brief review of those sources may result in a more informed analysis about the article. (Read the footnotes (but not necessarily each case cited therein) to see if there is anything that strikes you as “off” or sounds odd to you as presented by the author.)  If reviewers are aware of any, advise authors if additional authority is needed (positive or negative).  Reviewers are encouraged to engage with the author’s argument, to point out holes and to make constructive structural suggestions.  Please make sure to give yourself enough time to complete the review and draft the cover memo. Waiting until the last minute to complete the assignment may result in less thoughtful work product.