Litman on the Drafter of the Lanham Act

Jessica Litman, University of Michigan Law School, has posted Edward S. Rogers, the Lanham Act, and the Common Law, which is forthcoming in the Research Handbook on the History of Trademark Law, edited by Robert G. Bone and Lionel Bentley:

This book chapter is a deep dive into the story of Edward Sidney Rogers's authorship of the legislation that became the Lanham Act. Because Rogers believed that Congress lacked the power to alter the substantive law of trademark and unfair competition, he crafted draft legislation that focused on registration and other procedural details rather than substantive rights and defenses. He sought to advance two incompatible goals: he hoped to preserve the robust common law of unfair competition while requiring, or at least encouraging, all trademark owners to register their marks. Both the supporters and the opponents of the bills that Rogers drafted expressed deep affection for the extant common law of trademarks and unfair competition. They appear to have assumed that the statute would supplement the common law rather than replacing it. Except to the extent that the statute expressly abrogated common law doctrine, most members of the trademark bar believed that even after the statute's effective date, common law rules would continue to control most determinations.

Along the way, the chapter recounts other interesting if not-very-consequential details. For example, Rogers’s representation of drug companies at the turn of the century familiarized him with the 1906 Pure Food and Drug Act. When he wanted to include a provision in his legislation that enabled recovery for false representation, he turned to the Pure Food and Drug Act for a model. When Representative William Sirovich, then one of only ten Jews in Congress, assumed the chairmanship of the House Patent Committee in 1931, he decided that instead of continuing to rely on Rogers and the ABA for trademark legislation, he would ask Frank Schechter to draft an alternative bill. Part of the reason may have been the ABA’s efforts in the early 20th century to block Jews from practicing law. Finally, the notion that federal law controlled infringement of registered trademarks but state law controlled unfair competition arose in the 1940s in the wake of the Supreme Court’s decision in Erie Railroad v. Tompkins. Before that, trademark lawyers agreed that the two sorts of actions arose from a single body of law.

--Dan Ernst