Joe Cleveland and Craig Stone discuss the Lanham Act and its creator, Texas Congressman Fritz Lanham.
State Bar of Texas Podcast
Joe Cleveland is a partner with the Fort Worth firm of Brackett & Ellis, where his practice...
Craig Stone is senior counsel, Intellectual Property for Phillips 66 Company, where his practice focuses on all...
In 1999, Rocky Dhir did the unthinkable: he became a lawyer. In 2021, he did the unforgivable:...
We may not give much thought to how trademark laws affect our daily lives, but the Lanham Act has played a huge role in protecting us as consumers. How? Rocky Dhir welcomes intellectual property experts Joe Cleveland and Craig Stone to discuss the evolution of trademark law and its functions in our economy. They also honor Texas Congressman Fritz Lanham’s contributions to this area of the law and explain how his namesake Act has promoted trust and reliability in United States commerce and inspired other countries to model their laws after its statutes.
Joe Cleveland is a director and shareholder at Brackett & Ellis, P.C., and has practiced in the area of commercial and intellectual property litigation for over 20 years.
Craig Stone is Senior Counsel, Intellectual Property at Phillips 66 Company.
Special thanks to our sponsor, Clio.
Intro: This podcast is brought to you by Clio.
Female: Welcome to the State Bar of Texas Podcast, your monthly source for conversations and curated content to improve your law practice, with your host Rocky Dhir.
Rocky Dhir: Hi and welcome to the State Bar of Texas Podcast. As you listen to this podcast, are you on the phone? What kind of phone? How do you know who made it? Are you listening in your car? Is your car really made by the company whose label is on your dashboard? I mean, how do you know? When you grab a Starbucks, have you ever feared that you might be walking into a fake Starbucks that replaces your favorite blend of coffee with Folgers crystals? Probably not.
And you can thank Fritz Lanham and his name-sake law, the Lanham Act, for that comfort. The intellectual property lawyers out there know the Lanham Act right away. For the rest of us, let’s remind ourselves that the Lanham Act provides trademark protections. Most of us take the Lanham Act for granted thinking it’s been around forever. But this year, 2021, the Act turns 75.
To celebrate and commemorate this important cornerstone of our legal landscape, we have two special guests who will talk to us about the Lanham Act, Fritz Lanham himself and remind us what trademark law is indeed so important. Joe Cleveland is an intellectual property litigation partner with Bracket & Ellis in Fort Worth. He has also authored Fritz Garland Lanham, Father of American Trademark Protection published by the Texas Intellectual Property Law Foundation. Joe serves as Vice-Chair of the Intellectual Property Law Section and was appointed by the Texas Supreme Court to the Texas Board of Disciplinary Appeals.
Alongside Joe, we have Craig Stone who is Senior In-House Counsel for Intellectual Property for Phillips 66 Company. Craig’s practice focuses on all aspects of brand protection and other IP-related areas. Craig is also serving a three-year term on the State Bar of Texas Intellectual Property Section Counsel following his role as Chair of the Trademarks Committee.
So we have two amazing experts, couldn’t have asked for anyone better to come talk to us about the Lanham Act. Now, this might sound a little dry but from everything I’ve been able to read that you guys have been putting together, this is actually fascinating stuff. So Joe Cleveland, Craig Stone, welcome. This is a pleasure. I’m looking forward to this. Thank you both.
Joe Clevaland: Thank you Rocky. We really appreciate you hosting today and look forward to explaining a little bit more about Fritz Lanham and the history of the Lanham Act and what it protects and what it does, but really appreciate you having us here today and thank you for the kind introduction.
Rocky Dhir: Oh absolutely. So let’s cut to the chase. It seems like to most of us, IP law and certainly trademark law is a part of that, it sounds very erudite. If I could use the word nerdy, it sounds nerdy but you know, from every intellectual property lawyer I’ve ever spoken to, this is exciting stuff when you really scratch beneath the surface. So Joe, let’s maybe start with you. Let’s talk about what attracted to IP law and what got you involved in it in the first place?
Joe Cleveland: Well, I think it’s an exciting and interesting area of the law that really opens the doors to a lot of different businesses. If you like to learn about different types of businesses and what they do, trademark is a very easy door to open. You learn about for example I’ve worked with cosmetic companies, I’ve worked with — and learning about their trademarks, I’ve worked with locker manufacturers and learned about their trademarks. So you just learn a lot about the business, how that product or services are marketed to the public and that’s what trademarks are really designed to do.
They’re designed to identify — help consumers identify the products that they want and avoid the products they don’t want. And so just like your example, when you talk about the Starbucks, when you walk into a Starbucks, you automatically know you’re going to get your blend of coffee at that coffee store just exactly like you like it every single time. And Starbucks have spent millions and millions of dollars to ensure that your experience in a Starbucks coffee shop is consistent and they use that brand, the circle with the woman, mermaid in that circle.
Rocky Dhir: The mermaid, that’s right.
Joe Cleveland: So that consumers recognize that consistent brand and quality that they’ve grown accustomed to seeing. And so it’s a designator of source and so customers and consumers know that they’re going to get the cup of coffee that they want.
Rocky Dhir: So Craig, what about your experience? What got you interested in IP law and specifically trademarks? I mean you’re doing this in-house but what drew you into this?
Craig Stone: Well I’ll use a different word than nerdy that attracted me to intellectual property and specifically trademarks. I use the word sexy. I think marketing is –.
Rocky Dhir: Oh dang. Okay, you’re throwing it all down.
Craig Stone: You’re talking about marketing, you’re talking about this world of commerce that completely surrounds us today and you’re talking about consumers who have a very strong emotional connection to the products and services that they buy and see and love. And so for me, the business aspect really attracted me to the area of intellectual property. The other thing I really enjoy about intellectual property is you can practice in different areas. You’re not just a litigator, you’re not just a transaction lawyer, you are all of those. You’re counseling start-up companies on how they will protect their brand in the future.
And for a company like Phillips 66 where we have brands that are going back all the way to 1885, you’re now responsible for maintaining the protection of trademarks and brands that have been around for decades. You are the steward of that iconic logo or device. And so, there’s just such a rich history with brands but for me, it’s just being able to be surrounded by it every day, walking into a store and seeing the fruits of your labor, how you help launch a product or protect a product for, not just the brand owner, but for consumers.
Rocky Dhir: Let’s maybe then jump right in to the Lanham Act itself. So for those of us that — or may be uninitiated, yes, we kind of have an idea what trademarks are but what specifically does the Lanham Act do and why was it so important when it came out?
Craig Stone: We know in the constitution that patents and copyrights are specifically referenced in terms of the protection that American citizens would receive.
Rocky Dhir: That’s right. Okay.
Craig Stone: Trademarks interestingly were not mentioned. And so, the original — the first federal statute that was enacted not until 1870 actually relied on that constitutional language of patents and copyrights and it was ultimately struck down because it was inappropriately enacted based on that clause. It should have been enacted under the commerce clause. So it’s not that there isn’t a constitutional basis, they just used the wrong one when they started out. So out of the gate, the original statute was flawed. And as you move forward through the 19th century, you keep having practical issues with the other statutes that they enact.
So for example, the next flavor of the statute, it did extend protection but you had to meet certain standards of selling goods and services actually outside of the United States or to Native American Indian tribe. So it’s quite narrow. And America was still looking for something that was comprehensive in nature that would give broad scope protection across the entire country and that’s really what the Lanham Act did in 1946. It looked back at some of the failures of these original statutes and it’s brought together a really robust way in which product owners can protect their brands today consistently and uniformly.
Joe Cleveland: Another problem that I may add, Craig gave an excellent explanation to the historical reference about what was in place before the Lanham Act was enacted. Another problem that was sought to be addressed by the Lanham Act was a lot of states were getting into the game. They were enacting their own trademark legislation and it became a very complex, burdensome regulatory environment in which businesses were having to register their marks in every state that they did business in. For example, Coca-Cola, that’s been around since 1893. They were having to register their marks in every state and that’s what the vision of what Fritz Lanham had was he envisioned that there need to be a national registry and a right for trademark in a federal statute and that’s what he brought into the forefront.
And he was not the only one, there’s some other people that helped along the way. There’s another gentleman that was with the ABA, the American Bar Association, that helped lay the foundation really for the Lanham Act that was ultimately signed in law in 1946 by Harry S. Truman. What the Lanham Act — people think the Lanham Act just protects these names that we see a lot like the name Starbucks or Phillips 66. It’s a much broader statute than that. And I just want to give you some examples of where all the trademarks that you see and even smell every day are protected by the Lanham act, or even hear. For example, the name of Apple on Apple computers.
That’s a registered trademark. The logo for McDonald’s Golden Arches. That’s a registered trademark. The slogan for Nike’s “Just do it” is a registered trademark. The color for (00:10:14) pink insulation that you see rolled out with the pink panther playing in the background. That color is a registered trademark.
Rocky Dhir: I just thought that was the color that the insulation came in.
Joe Cleveland: No, they put that color into that insulation to designate it as a source and they got a registered trademark for that.
Rocky Dhir: I don’t know if that’s nerdy or sexy but that is really fascinating. I had no idea, that’s cool. Okay.
Joe Cleveland: And the NBC chimes, the chimes that you hear before the Saturday Night Live comes on. That’s a registered trademark. The roar of the MGM Lion that you see at the beginning of a film, that’s a registered trademark.
Rocky Dhir: Shouldn’t that belong to the lion? The lion did the roar. I mean, come on.
Joe Cleveland: And then even scents can be a trademark like the scent of Plato. If you harken back to your days and you smelled Plato, you would recognize that immediately. If somebody put a handkerchief over your eyes and said, “Smell this, what is it?” you would immediately say, “That’s Plato”. That’s called secondary meaning. That’s what we call in the trademark field secondary meaning where consumers will instantly recognize what the source of that product or goods or services instantly from that mark.
Rocky Dhir: And thank goodness Plato is non-toxic because I’m not going to name names but some of us may have eaten Plato as kids too. So the smell and the taste, I guess those are all secondary. That’s interesting.
Joe Cleveland: So, there are some sexiness to it, I agree with Craig. But you have to be careful what you smell.
Rocky Dhir: Absolutely. Well, Craig, you talked a second ago about everything that happened prior to the Lanham Act and the problems with those laws but can we talk for a moment about when did trademark protection first come up? And what were companies doing before there was comprehensive trademark protection? So before there was even a statute, did you have a lot of knockoff brands coming out into the marketplace? I mean, I’m trying to think back to say the early 1800. If you had some kind of iconic brand that people were using in their homes or in their daily lives, was there a lot of counterfeiting?
Craig Stone: Yeah, I don’t know how much counterfeiting was going on but it’s interesting that this notion of trademark protection actually goes back to a letter that we can see Thomas Jefferson wrote and it had to do with the protection of sales on a boat. And of course, one of the most important things about purchasing products for consumers is what? It’s the quality. So that when you purchase the product, you see the symbol, you recognize the symbol and you can have confidence in knowing that you are going to get something that’s actually going to do what it says it’s going to do, right?
Rocky Dhir: Right.
Craig Stone: So we’re under the common law system of course and so, a lot of these laws are originally derived under the British common law system. And that’s what the American law system is coming up from but Joe touched on this earlier is that, you have a bunch of state common law. So the state courts are giving you a cause of action to protect your brands but when you have this interstate commerce that starts going on especially in the early days of America and goods and services are crossing lines potentially, how do you fight somebody else in another state? And so, this is an interesting time where the country in its early history is wrestling between state common law and federal common law.
Rocky Dhir: State’s rights and federalism, exactly. Sure.
Craig Stone: And if you think back way to the beginning of the first year of law school, when you’re talking about the Erie case, I mean, this is going way back. I can’t even remember all of it but basically, Erie striking down that federal courts can’t create federal common law when there is a dispute between people of two different states. So you’ve got this gap. But with interstate commerce, you need something to fill in. You need some federal overarching law. And so, what the Lanham Act has done, it creates not only a statutory basis to protect your registered trademarks, it really the expansion and the dynamic was to protect your unregistered rights. So even if you didn’t go through the process of registering your trademark like we all do as sophisticated brand owners in IP practitioners, you as a business owner can go in and assert very strong rights under the Lanham Act which was expanded under court decisions of course and recognizes what we really understand as lawyers is sort of a common law claim but that’s been codified.
We call that unfair competition protection which again was historically under state law. And you can still do that in individual states. Texas has unfair competition laws that we can assert against each other. But this is at a federal level because, I mean, just think about commerce today. We are so interconnected. I mean, this is a global economy now and so, that’s really the evolution of the law and why businesses as they expand really saw the need and importance for those legal protections.
Joe Cleveland: And trademark law not just protects the product name or the brand identity, it could also protect the product packaging. For example, the shape of a Coca-Cola bottle is registered trade dress. The look and feel of a McDonald’s restaurant is registered trade dress. So if I want to open up a McDougal’s and had a golden arch right next to McDonald’s and was selling hamburgers, I would get a cease and desist letter the next day from the in-house counsel of McDonald’s to stop doing that because I’m basically phoning off their mark and trying to confuse the customer into believing that McDougal’s selling hamburgers is now affiliated with McDonald’s.
And that’s really the whole basis of trademark law. It’s really about customer or consumer protection. It’s a consumer protection law. It’s trying to help consumers understand that the choice that they’re making is a factually true choice and they’re not being deceived by somebody that’s coming in second hand trying to sell counterfeit goods or goods just playing off the name of a very popular brand.
Rocky Dhir: So now, Joe, you’ve taken me back to the year I think it was 1986 when coming to America came out and now I want to go watch it and be reminded of McDowell’s once again. So let’s talk for a second, Joe, about you mentioned some of the people involved in the Lanham Act. So let’s talk for a moment if you would about Fritz Lanham and I know you’ve written about him. So when I heard the Lanham Act, until we’ve had this conversation, it never occurred to me that that’s a person. And it makes sense because legislation is usually named after the legislators who are behind it but now, I’m like, “Okay, I’m getting a name. It’s Fritz Lanham.” So tell us about him and tell us what got him in a trademark protection and got him interested in this.
Joe Cleveland: You know, I’d like to say first of all that if you ask any intellectual property in United States or ask 10,000 intellectual properties in the United States from Florida to Alaska and from Maine to California that they ever heard of the Lanham Act, all 10,000 intellectual properties probably would say yes.
Rocky Dhir: Sure.
Joe Cleveland: And before Craig introduced me to the fact that Fritz Lanham was from Texas, he told me that last year, I would say as of last year, I would say just a handful of lawyers in Texas knew that Fritz Lanham was from Weatherford, Texas.
Rocky Dhir: Until you said this, I didn’t know either so that’s great.
Joe Cleveland: And he was born in 1880. His father was a U.S. congressman and a governor of the State of Texas. He’s a lawyer. He went to University of Texas Law School, an undergraduate. He didn’t graduate from law school but he took the bar and became a lawyer, practiced law for a bit in Weatherford. And then he won a special election in 1919 and had a very esteemed congressional career in Washington. He was a democrat and during that era, it was solid days of the Democratic Party in Texas. They had the speaker of the House who was from Texas. The major leaders on the Senate side were from Texas and Fritz Lanham was right there in the mix. And during his career, he not only served on the Patent Committee, but he also served on the Buildings Committee and was the one that really during the Depression, helped get the country back on track by building all these post offices, a lot of the U.S. court buildings in Texas and around the country were built during this time with Fritz Lanham’s efforts. In fact, Fritz Lanham served on the US Supreme Court Building Commission with the past president and current chief justice, Taft. And his name is inscribed on the walls of the US Supreme Court, the only Texan. His name is inscribed in the building of the U.S. Supreme Court and they finished that building in 1935 or so for $3.9 million which was under budget.
Rocky Dhir: Million with an M?
Joe Cleveland: With an M. Which was on time and under budget. And so, he is a very empowering figure in Texas history. That was almost lost to history because although there’s a building named after him in Fort Worth, there’s no book written about him, all his congressional papers are maintained at the Dolph Briscoe Library in UT but they are — his entire blocks of doc, it’s only a half a box of documents. For this man that wrote a law that has been cited by the Supreme Court over 50 times, incited by U.S. courts in state and federal court over 54,000 times, it was almost lost to history.
I guess what got me really interested in the project was when I was reaching out to the descendants and talking to them and hearing the stories and getting pictures and information from them and that’s really kind of peaked my interest in saying that there’s a gap here. There’s a gap in history that needs to be explained. I think all Texans need to be proud of what this man did and our country needs to be proud of what this man did. We owe a tremendous debt of gratitude to him, businesses and consumers like because he has put trademark law in this country on a firm constitutional footing that allowed our country to thrive.
And really, the Lanham Act has become a template for countries around the world. Now, Lanham Act is the basis of many countries’ trademark laws around the world. So, he’s internationally known. Well, his law is internationally known. He was not a known figure in the State of Texas and we hope that’s going to change with some of the things that we’re going to talk about.
Rocky Dhir: So Joe and Craig, let’s take a quick break to get a word from our sponsor.
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And we’re back with Joe Cleveland and Craig Stone talking about the Lanham Act. Maybe Craig, talk to us about the evolution of Lanham Act. So, you talked earlier about how the predecessors to the Lanham Act, the constitutional challenges they face then you finally get to the point where you’ve got this federal legislation that has teeth and that has been approved and has been shown to pass constitutional muster. As we move forward, how has a Lanham Act been amended over time and how do you think it’s going to change as time goes on?
Craig Stone: Let me just back up one bit in terms of the timing. So of course, it’s obvious today of how much we’ve benefited from the law over the last 75 years. But keep in mind, Lanham introduced this bill in 1938. So, it took him eight years of really advocating for this law. It was not a slam dunk and there was resistance. There was a resistance from the justice department because you’re coming out of an era where you’ve got big companies, monopolistic companies and that’s what intellectual property effectively does. It creates a legal monopoly where you are an exclusive owner of a single device or a single patent.
And so theoretically, it’s not — they’re having challenges to get this passed. So, he really was a champion of this. I think he had a vision. But as much as we see it, it wasn’t a guarantee. And so, now that we see the act in action, the evolution really happened through the courts and their decisions in recognizing all these broader unfair competition claims. But we actually just had a new law passed at the end of December called the Trademark Modernization Act and it’s recognizing things that are going on. One really important aspect of that particular statute is it reintroduced this theory of a presumption of harm. And so, what had happened a few years ago under a patent decision, this is kind of nerding out but basically, it was a decision striking down that when you’re asking a judge to enter injunctive relief, so stopping somebody from using your intellectual property, he said, “We cannot presume harm and that puts –.
Rocky Dhir: You have to prove harm if you’re the –.
Craig Stone: You have to prove harm and that places an enormous burden on a trademark owner to show consumers are being harmed. They were talking about intangible assets, right? The consumers are not benefiting because there is an infringement out there.
Rocky Dhir: So, the focus is on the consumer, it’s not on the holder of the trademark?
Craig Stone: That’s right. It’s on both. So, the public policy is what we’re preventing is consumer confusion. That’s the confidence aspect. When I reach out to the shelf, I have confidence. Now likewise, we know as a brand owner that’s an extremely valuable asset. Okay?
Rocky Dhir: Sure.
Craig Stone: So, the last statistic I saw is that when you look at the Fortune 500, 84% of that entire value of all those companies, we’re talking trillions and trillions of dollars, is measured in the intangible property, the intangible assets.
Joe Cleveland: Like Coca-Cola, Microsoft, Apple, Amazon.
Craig Stone: A hundred billion dollars, yeah.
Rocky Dhir: Yeah.
Joe Cleveland: Those names are extremely valuable.
Rocky Dhir: And so, this Trademark Modernization Act is effectively saying, all right, now we’re going to presume that there is a certain level of harm to both the consuming public as well as to the trademark holder or I guess in this case, it’s a Trademark Modernization Access so it’s the trademark holder. You don’t have to prove that. I guess you no longer have to prove a prima facie case of harm.
Craig Stone: It’s a presumption of harm of course. It can be rebutted. But basically, and this is really, a really important reason of why all brand owners want to go in and register your mark federally when you go through what is a very robust process, okay? So, I file a federal application with the United States Trademark Office and they go through a very robust review. They’re trying to see, is your mark functioning as a trademark? Is it strong enough, right? Are you using it in commerce? You have to meet all these hurdles. So once you obtain that federal registration, that is a valuable right then you can walk into court and say, “Look at my right.” You don’t have to go through all these extra steps to prove you are the owner or that this is a valid enforceable trademark. It’s like walking into court with a giant sword and a very powerful right.
Joe Cleveland: And Craig raises an interesting point that’s worth addressing a little bit further is, when you’re talking to new business owners about what they want to choose as a trademark for their product or goods or services, you always advise them pick out a strong mark, a strong mark that has really strengthened. There’s kind of a hierarchy at marks of their stronger marks and those sort of very, very weak mark. So, I can kind of step through the process but the strongest mark is what’s called a fanciful or coined mark and that’s a made-up firm. Like Exxon was a made-up word. Texaco is a made-up word. Those are some of the strongest marks, they didn’t even exist until somebody made that word up.
Craig Stone: They have no other meaning. Their sole purpose for existing is to be a brand, to be a trademark, to identify a product or a service.
Joe Cleveland: Then you drop down one level down and that’s the arbitrary mark. An arbitrary mark is a name that’s put on a product that has no relation to the product itself. Example would be Camel Cigarettes. Camels do not smoke cigarettes but that’s an arbitrary assignment of that mark.
Rocky Dhir: How do we know that? Have you ever seen?
Joe Cleveland: I’m guessing.
Rocky Dhir: Yeah.
Joe Cleveland: And then another example of an arbitrary mark is Apple computer. Apples have nothing to do with computers. And then you drop down another level and you get into a little icy territory. Next level down is called a suggestive mark and that suggests in the minds of the consumers what the product might be. An example of that would be like Tide detergent, like the rinsing tides or rinsing the clothes or Igloo ice cream. It’s evocative. Like Igloo ice cream. It conjures in the mind of the consumer, “Well, maybe this has to do with something about a frozen dessert.” And then I always tell clients you have to draw a very dark line because after that, you’re getting an extremely dicey territory.
Next level down is called a descriptive mark and that describes the goods or services that you’re selling like the bike shop or steel buildings itself. Steel buildings. That is an extremely difficult trademark to maintain. It’s an extremely mark to get because you have to prove to the U.S. Patent Trademark Office that that mark has been used so much and you spend so much money promoting this mark that consumers automatically associate that mark with that particular producer of those goods or service.
Rocky Dhir: I think we would be remiss if we didn’t talk about how we think trademark law, whether it’s the Lanham Act or whether it’s this new Trademark Modernization Act. How is it going to evolve in this era of increasingly tighter global business? I mean, I think Craig, it was you who talked about things getting global.
Craig Stone: I think what’s so impressive and really is a testament of how successful the Lanham Act is, is just look back and allows 10 to 20 years in how commerce has changed and think about when we first started using iPhones in 2007. And so, the dynamics of how we purchase goods and services today has changed dramatically and yet, this continues to be the backbone of how brand owners protect their rights. And so, even though Fritz and all these other congressmen who were supportive of this law didn’t know what our world would look like today, they created a law that has lasted decades of time.
Rocky Dhir: But as we move forward, for example now, Apple is selling iPhones all over the country using the example and the illustration you just made. Or, Joe, when you talked about Coca Cola, they have been selling all over the world. How do you think our trademark laws are going to — do you think it’s robust enough as it is to survive this type of global push or is there going to have to be some kind of systemic change to them?
Craig Stone: No, it’s a challenge. I mean, this is one of the most interesting areas of the law because IP rights are territorial nature. And so, when I have a right in the United States, that does not guarantee me a right in another country, China or Mexico or the EU. And so, that’s again another really interesting reason why I like practicing in this area because you get to work with so many different cultures and people and there are different laws. But what’s really great is I think you do see a uniformity across international law. And that’s why Joe is saying everybody, even non-American practicing lawyers, know the name Lanham. This statute has been a model for other countries. The U.S. trademark has been a model how other countries can have a robust system for all brand owners. And for brand owners, the most important thing is consistency, right? You want to be able to go in and consistently protect anywhere in the world where your trademark is being misused.
Rocky Dhir: So Joe, because you’re a litigator, you’re probably seeing this from the front lines of the battle fields on this?
Joe Cleveland: Right. And so, the front lines really from a global standpoint is that the border. Goods coming in the border that are coming from other countries that are maybe counterfeit goods, maybe calming off goods that looked like they are lookalike goods and so, we rely on the federal government, U.S. border customs to help us control the border and products, counterfeit products coming into the country. It is a massive scale the amount of products that are counterfeit in this world.
Craig Stone: And let’s not miss out on one of the most important reasons of why trademark protection is so critical is it’s a safety issue. So think about pharmaceuticals coming in. I mean, if you’re a consumer and your doctor is giving you a pill to take to make sure you are healthy, you need to have confidence that there isn’t something that’s been added unintentionally that could do more harm than good. And so, people of course think about trademarks that they are sexy because we like clothes and cars and jewelry but there really is a public aspect in terms of keeping consumers safe. And so, we don’t think about that every day but that is front and center for a lot of companies, it’s front and center for the federal government and that’s certainly the case to Joe’s point that this influx of potentially harmful products. We want to stop those at the border because we need to protect our consumers and our citizens.
Joe Cleveland: And that’s what the Lanham Act does. It helps lawyers, it helps the government protect consumers in the United States from getting adulterated products whether it’s pharmaceutical products, batteries, exploding batteries. Remember the exploding battery cases several years ago? That was arrested at the border because they were able to enforce the law of the Lanham Act and other criminal statutes to stop counterfeit and defective adulterated products coming in the country. So it’s an extremely important consumer protection law. The Dolly protects against consumer confusion but also counterfeit products coming into the country.
Rocky Dhir: This is fascinating. I started out thinking, “Gosh, what can you really say about trademarks and the Lanham Act,” and now I want to talk about this for the rest of the day. This is interesting stuff. Unfortunately, we are running right at the end of our allotted time to –.
Joe Cleveland: I would like to make one last plugging. People are interested in learning more about the Lanham Act, learning more about Fritz Lanham. There’s a terrific opportunity coming up on June 17 and 18.
Rocky Dhir: And FYI everybody, so you’re hearing this in September of 2021. This episode was recorded in June of 2021. So Joe, please continue and for anybody that wants to access this material, it will still be up on the website of www.lanham75.org. So, it’ll still be up there but just understand, we’re talking about something from the recording standpoint. So Joe, please continue.
Joe Cleveland: It’s going to be a virtual online celebration of the 75th anniversary of the Lanham Act. The first day on June 17 is going to be a trademark boot camp and that’s for anybody who wants you to just kind of get introduced to trademark law to understand a little bit more about it. This is all free. It’s eight hours of free CLE and then we’re going to have a live trademark trial, an appeal board hearing. It’s just a judicial body that hears and decides administrative proceedings at the United States Patent and Trademark Office. And then the next day on June the 18th which is Friday, there’s going to be a state office interview with the regional director of the USPTO and also the acting director of the USPTO.
And then we have a blockbuster panel discussion headed by Molly Buck Richard of Dallas. He’s going to be interviewing Lisa Blatt who argued the bookings.comp case before the United States Supreme Court. Dorian Daley, general counsel of Oracle. Oracle just moved to Austin and so, she’s agreed to participate in this panel discussion. Mary Boney Denison, the former commissioner for Trademarks. Michelle Reed, the vice President of Amazon Web Services and the first woman acting director of the USPTO. Chief Judge Barbara Lynn of the United States District Court for the Northern District, Texas. And the Register of Copyright Shira Perlmutter.
They’re going to be on this panel discussion about strategies for success in the world of IP law. It’s really a much broader topic than that. I think it’s just strategies for success as being a really good lawyer. Www.lanham75.org. Lanham75 for the 75th anniversary of the Lanham Act. So we just made that really easy. The other thing that’s going to happen on the Friday, June 17, is the USPTO agreed to do a documentary about the 75 years of the Lanham Act and I’ve seen some cuts of this. It’s a beautifully done documentary film.
Rocky Dhir: Very cool. That sounds fascinating. It sounds like the perfect way to close out our discussion. So Joe, thank you for sharing that. And to both Joe and Craig, I want to thank you both so much for reminding us of the importance of trademark protection and also talking to us about some of the specifics of trademark law. And this has been a trip down memory lane from a historical perspective as we commemorate 75 years of Lanham Act. Thank you both so much.
Joe Cleveland: Thank you, Rocky.
Craig Stone: Thank you for having us.
Rocky Dhir: And of course, I want to thank you for tuning in and encourage you to stay safe and be well. If you like what you heard today, please rate and review us in Apple Podcasts, Google Podcast or your favorite podcast app. Until next time. Remember, life’s a journey, folks. I’m Rocky Dhir signing off.
Outro: If you’d like more information about today’s show, please visit legaltalknetwork.com. Go to texasbar.com/podcast. Subscribe via Apple Podcast and RSS. Find both the State Bar of Texas and Legal Talk Network on Twitter, Facebook and LinkedIn or download the free app from Legal Talk Network in Google Play and iTunes.
The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by the State Bar of Texas, Legal Talk Network or the respective officers, directors, employees, agents, representatives, shareholders or subsidiaries. None of the content should be considered legal advice. As always, consult a lawyer.
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|Published:||September 16, 2021|
|Podcast:||State Bar of Texas Podcast|
|Category:||Legal Education , News & Current Events|
State Bar of Texas Podcast
The State Bar of Texas Podcast invites thought leaders and innovators to share their insight and knowledge on what matters to legal professionals.