| By J Matthew Buchanan on Legislation Representative Mike Simpson (ID) introduced H.R. 784 (.pdf) on February 10, 2005. The bill, dubbed A bill to Clarify that service marks, collective marks, and certification marks are entitled to the same protections, rights, and privileges of trademarks, is identical to S. 2796/H.R. 5194 introduced in the 108th Congress. I haven't been able to locate any significant comments on the introduction of the new bill, but everything from the prior bills is still relevant. This prior PTP post discusses the bills from the 108th Congress. The bill is designed to specifically address the decision of the Second Circuit Court of Appeals in Idaho Potato Commission v. M&M Produce Farm and Sales (.pdf) (335 F.3d 130, 2d Cir. 2003). In Idaho Potato Commission, the court interpreted the Lanham Act as requiring that certification marks be treated differently than trademarks with respect to "no challenge" provisions in license agreements. Under an agreement that includes a "no challenge" provision, the licensee acknowledges and agrees not to challenge the validity of the mark. Many courts have upheld "no challenge" provisions in trademark license agreements and dismissed validity challenges brought by the licensee. Patent license agreements, however, are treated very differently. In Lear v. Adkins (395 U.S. 653, 1969), the Supreme Court explicitly overruled precedent establishing licensee estoppel. In Lear, the Court acknowledged that, considering the preclusive effect of patents, it is desirable to encourage challenges to the validity of a patent. The Court stated that "[l]icensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor's discovery." In Idaho Potato Commission, the Second Circuit Court of Appeals ruled that "no challenge" provisions in license agreements for certification marks are governed by Lear, reasoning that the policy considerations underlying certification marks is more analagous to patent policy than trademark policy. H.R. 784 is designed to remove this newly-established distinction between certification and other types of marks. | 
