Category Archives: Enacted Legislation

ABA Intellectual Property Law Section Weighs in on USPTO’s Trademark Misuse Study

by Christina Frangiosa


On February 4, 2011, the Intellectual Property Law (“IPL”) Section of the American Bar Association submitted its formal response to the USPTO’s request for comments (initial request; final request) in support of the study mandated by Trademark Technical Amendments Act (Pub. L. No. 111-146). This study sought information regarding what the Trademark Technical Amendments Act and the USPTO characterized as the potential for small businesses to be disproportionately victimized by the “misuse” of a corporation’s trademarks (with a strong implication that the dispute could be characterized as a “Golaith” taking advantage of a “David”). After the USPTO posted its initial request for comments, the Congress passed an amendment (the Copyright Cleanup, Clarification, and Corrections Act of 2010, Public L. No. 111-295) to the required study, de-emphasizing the large corporation versus small business focus that had characterized the initial study. This amendment removed the assumption that abusive litigation conduct in trademark cases occurred only at the hands of large businesses, but retained the assumption that only small businesses could be harmed.

The USPTO’s final request for comments to the study required responses no later than February 7. In its letter, the ABA IPL Section reported that it had conducted its own study of its members and summarized the results. It also attached copies of the survey questions and responses for further evaluation by the USPTO. The study conducted by the ABA IPL Section suggests that the problem was not so one-sided, and that other parties in litigation could be harmed by a trademark owner’s enforcement activities, but that a one-size fits all remedy “does not appear to be warranted.” The letter further suggested that current sanctions (pursuant to Rule 11 of the Federal Rules of Civil Procedure) available for imposition by courts during litigation could be sufficient to remedy the harm and deter future bad conduct, provided that the Courts were willing to impose them in instances where the litigation conduct of one party in a trademark case qualified as abusive.

The ABA IPL Section further reported that some respondents felt that the USPTO’s study overlooked the fact that property rights in trademarks are based on use in commerce and do not stem only from registration. It also seemed to overlook the trademark owner’s enforcement obligations – even for common law marks which have not achieved registration (which can support litigation based on 15 U.S.C. § 1125). Failing to enforce one’s trademark rights when required may result in a loss of rights to enforce the trademark against other potential infringers. Because there is no guarantee of success in litigation, the presumption that enforcing a common law trademark amounts to “misuse” is, therefore, flawed.

Prior Privacy and IP Law Blog posts about this topic:

* 11/28/10 Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

* 10/18/10 USPTO Seeks Comments on Potential Trademark Misuse

Neither statute requires that the USPTO publish the comments that it has received in response to its request, but the results of the study are due to be reported to Congress no later than one year after the enactment of Public Law No. 111-146, or by March 17, 2011. As a result, it is possible that we will see some level of detail about the survey results when the report is made.

Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

by Christina Frangiosa


The Copyright Cleanup, Clarification, and Corrections Act of 2010 (S. 3689), proposed by Sen. Leahy to make certain technical amendments to both copyright and trademark law, cleared both chambers of Congress and was sent to the White House on November 19, 2010 for review and signature. The final bill, as enrolled, can be found here.

Easily missed in this Bill is a provision modifying the Trademark Technical Amendments Act (“TTAA,” now Pub. L. No. 111-146), and in particular, the study that the Department of Commerce is obligated to perform relating to trademark misuse. The TTAA currently requires the Department to study:

1.”the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;” and
2.”the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

Pub. L. No. 111-146 § 4(a). The modification in S. 3689 states, “(h) TRADEMARK TECHNICAL AMENDMENTS ACT.—Section 4(a)(1) of Public Law 111–146 is amended by striking ”by corporations attempting” and inserting ”the purpose of which is”.”

In my initial blog posting about this Bill, I had posited that Congress would not reach S. 3689 because it had been proposed so late in the session. Pundits have argued that the remaining term of this Congress would be spent drafting and passing a budget, since one had not been proposed to date. However, it appears that this amendment may be enacted before the new year. The impact of this amendment, in fact, may be minimal because the mandated study has already begun, with comments due to the USTPO before January 7, 2011.

USPTO Seeks Comments on Potential Trademark Misuse

by Christina Frangiosa


The US Patent and Trademark Office (USPTO) has posted a request for public comment “regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics.” Comments are due by January 7, 2011 and the details of what to address in the comments can be found in the USPTO’s request.

This study is mandated by the Trademark Technical and Conforming Amendment Act of 2010 (see below).

Statutory Background

The Trademark Technical and Conforming Amendment Act of 2010 (Pub. L. No. 111-146) was signed into law on March 17, 2010, and generally addresses technical amendments to the Trademark Act. However, buried at the end of the law (initially proposed as HR 4515 and S 2968), is a provision requiring that the Secretary of Commerce should undertake a study to determine:

  1. “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;” and
  2. “the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

Pub. L. No. 111-146 § 4(a). The study is due within one year after the enactment of the Bill – thus placing the deadline no later than March 17, 2011.

During the debates in the Senate in early March, both Senators Coble and Johnson conceded that Section 4 (where this “study” language appears) needed work, but that the remainder of the Bill was so important that it should pass without amendment to avoid the delay of returning an amended Bill to the House for approval. (For background on legislative procedure and how Bills get enacted, see What Does the House Do? and How Does a Senate Bill Become Law?.)

Senators Coble and Johnson also explained that Senator Leahy (who had proposed S. 2968) had agreed to “improve the language” in a subsequent bill.

SEN. JOHNSON:  “However, the bill is not perfect. It includes a study provision regarding alleged trademark lawsuit abuse and small businesses. While we don’t want to delay the necessary relief to the trademark owner that this bill will provide by immediate passage of S. 2968, the ranking member and I are committed to working with Senator Leahy to refine the text of this study provision at our soonest opportunity.” 111 Cong. Rec. at H1081 (Mar. 3, 2010).

SEN. COBLE: “[T]he legislation includes a study provision that was inserted at the behest of the other body. It directs the Intellectual Property Enforcement Coordinator and the Department of Commerce to evaluate and report on treatment of smaller businesses involved in litigation. Along with Chairman Conyers and the chairman of the subcommittee, the distinguished gentleman from Georgia, I believe the study text could be clarified further.  I’m happy to report that Senator Leahy has agreed to work with us on making the necessary minor revisions to improve the language.  We intend to move this language at a later date on a different vehicle.  We just don’t want to delay further consideration of S. 2968 by requiring the other body to pass the bill for a second time.”  111 Cong. Rec. at H1081 (Mar. 3, 2010).

Indeed, Senator Leahy introduced an amendment contained within a separate bill, the “Copyright Cleanup, Clarification and Corrections Act of 2010” (S. 3689, proposed on August 2, 2010). This Bill passed the Senate and was referred to the House Budget Committee and the House Judiciary Committee before Congress when on recess. This Bill changes the focuses to “the extent to which small businesses may be harmed by litigation tactics by corporations attempting the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” (Former language crossed out; new language in bold and italics).

While the Congress may return from its current recess after the elections in order to pass a budget or appropriations measure, this Bill may not progress further before the end of the Congressional term. If that is the case, then it would need to be re-proposed in January before it can be adopted.

Comments Requested by the USPTO

In the meantime, in the absence of “improved language,” the Department of Commerce (and in particular, the USPTO) is now undertaking this study and has requested public comment, due by January 7, 2011. In particular, the USPTO has requested comment about the following topics:

. . . Although the USPTO would find it most beneficial to receive responses to every item, you may answer all or any portion of the following questions.

1.  Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.  Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2.  In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.
3.  Please describe situations where you have been involved in receiving a cease-and-desist letter.  Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4.  Please describe situations where you have been involved in trademark litigation in state or federal courts.   Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s).  Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5.  Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners.  Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition.  Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6.  Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7.  Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8.  Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should the USPTO do?

9.  Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies?  If yes, what should the U.S. courts do?

10.  What other U.S. agencies may have a responsibility to do something about the problem?

11.  Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should Congress do?

12.  Please provide any other comments you may have.

*****
[1] A trademark “bully” could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

Note that this study still contemplates a focus on small businesses and promises to examine whether they are disproportionately affected by trademark owners’ enforcement activities. If the USPTO posts any of the comments it receives, I’ll try to post updates here for anything of particular interest.

IPEC Releases Joint Strategic Plan on Intellectual Property Enforcement

by Christina Frangiosa


Last week (on June 22), the Intellectual Property Enforcement Coordinator (IPEC) Victoria Espinel published the Joint Strategic Plan mandated by the PRO-IP Act. (For prior posts about the IPEC’s duties and responsibilities, see my June 1, 2010 post.) A full copy of the Plan can be found on the IPEC’s site and remarks about the program can be found on the White House’s Blog, (IPEC’s announcement of the Plan’s availability and some general remarks about the program).
This report outlines 33 “enforcement strategy action items”, divided into six categories: 1) leading by example; 2) increasing transparency; 3) ensuring efficiency and coordination; 4) enforcing our rights internationally; 5) securing our supply chain; and 6) building a data-driven government. Listed below are just some of the highlights – not a full list or explanation of each of the 33 action items.

  • A “government-wide working group” will be established to determine how best to ensure that the U.S. government does not obtain counterfeit parts in connection with its government contracts. This group would be required to submit a formal report within 180 days after its first meeting that details its findings and issues remaining for determination. (Page 7)
  • The U.S. government “will review its practices and policies” to ensure that it is not purchasing pirated software so that it can “set an example to our trading partners.” In this regard, the IPEC will propose legislative amendments necessary to implement a 1998 Executive Order. (Page 7)
  • Enhance communications with rightsholders and victims of IP infringement/crimes/piracy, to inform them about how to report IP crime, which types of cases are generally accepted by the U.S. government for prosecution, and the types of information victims could provide to support an enforcement action. (Page 8-9)
  • The U.S. Trade Representative is currently responsible – through its Special 301 process – for providing a Notorious Markets list (defined in the Plan as “a combination of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements.”) (Page 9)
  • The U.S. government will create a database (or combination of databases that function as a unitary whole) that contains information about IP cases, case-specific information about pending investigations. The database “need not” include sensitive IP information such as national security information, trade secrets or grand jury investigation that cannot be disclosed under the Federal Rules of Criminal Procedure (Rule 6(e)). (Page 11)
  • The U.S. Customs and Border Protection will provide samples of allegedly infringing products to rightsholders for testing, provided that a bond is posted for each sample “to cover the potential loss or damage to the sample if the products are ultimately found to be non-infringing.” In this Plan, the IPEC described a streamlined bond option that allows the posting of a single bond to cover multiple samples released by CBP. (Page 17).
  • The U.S. government broadly encourages cooperation in the private sector to police infringing activity and to enforce existing IP rights: “the Administration encourages actions by the private sector to effectively address repeated acts of infringement, while preserving the norms of legitimate competition, free speech, fair process and the privacy of users.” (Page 17)
  • Google, Yahoo and Bing were lauded specifically for their development of “voluntary protocols to prevent the sale of sponsored results for unlawful businesses selling counterfeit medications on-line.” Their list of so-called “unlawful businesses” is based, in part, on verification by the National Association of Boards of Pharmacy’s Verified Internet Pharmacy Practice Sites and/or certifications from the original manufacturers of legitimate and FDA-approved pharmaceuticals. (Page 18) – See also Pharmaceutical Security Institute (PSI) and the Partnership for Safe Medicines. (Page 53).
  • The IPEC will initiate and coordinate a process of reviewing existing IP laws and their penalties (whether civil or criminal) to determine whether their reach is far enough, or whether there are modifications required to “enhance enforcement efforts.” (Page 19).

The Plan also summarizes various Federal Agencies’ enforcement activities in 2010 (to date) (Page 35).
Please comment below about other portions of the Plan if there are other points that should not be overlooked here.

Summary of IPEC’s Responsibilities

by Christina Frangiosa

On October 13, 2008, President Bush signed into law the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act of 2008”). Pub. L. No. 110-403, 122 Stat. 4256 (2008). While the Act principally targets copyright issues, it also increases civil penalties for trademark counterfeiting (including for direct as well as for certain types of contributory infringement), enhances criminal penalties for trafficking in counterfeit goods bearing others’ trademarks and provides additional anti-piracy tools at the executive branch level in the form of an Intellectual Property Enforcement Coordinator (IPEC). It took a full year before someone was appointed to fill the IPEC role (see my October 2009 post describing Ms. Victoria Espinel, the current IPEC).

Since Ms. Espinel’s appointment, however, a number of projects have been assigned to her office. The purpose of this blog post is to summarize briefly those projects and provide links for more information. I also commend to you an article published on CNET shortly after the PRO-IP Act was enacted by Congress (but before the President signed it into law) that provides a basic outline of the position.

As Assigned by the PRO-IP Act

From the outset, the IPEC was tasked with coordinating the development and implementation of a Joint Strategic Plan against counterfeiting and infringement and to facilitate the issuance of policy guidance to other U.S. government agencies and departments relating to domestic and international intellectual property enforcement programs. Pub. L. No. 110-403 § 301. This position appears to be directed to correct a flaw in the “lack of permanent and effective leadership in coordinating” IP enforcement efforts. Prioritizing Resources and Organization for Intellectual Property Act of 2008, House Report 110-617, May 5, 2008 (“House Report”), at 26. As enacted, however, this position does not have any independent prosecutorial or other law enforcement authority, and appears to only have “advisory” duties. Pub. L. No. 110-403
§ 301(b)(2).

Among the IPEC’s initial advisory responsibilities were the following:

1) chair an “interagency intellectual property enforcement advisory committee”;

2) coordinate the Joint Strategic Plan (the “Plan”);

3) assist, when requested, in the implementation of the Plan;

4) facilitate the issuance of policy guidance on “basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law;”

5) report to the President and to Congress about IP enforcement programs;

6) report to Congress about the implementation of the Plan; and

7) “carry out such other functions as the President may direct.” Id. § 301(b)(1).

So, where is this Joint Strategic Plan? On February 23, 2010, the IPEC requested public comment about the proposed content of a Joint Strategic Plan. Coordination and Strategic Planning of the Federal Effort Against Intellectual Property Infringement: Request of the Intellectual Property Enforcement Coordinator for Public Comments Regarding the Joint Strategic Plan, 75 Fed. Reg. 8137 (Feb. 23, 2010). Comments were due by March 24, 2010, and can be found on the IPEC’s web site.

As Assigned by the Trademark Technical and Conforming Amendment Act of 2010

On January 26, 2010, Representatives John Conyers, Jr. (MI) and Lamar Smith (TX) co-sponsored a bill (H.R. 4515) intended to “make certain technical and conforming amendments to the Lanham Act.” Similarly, on January 28, 2010, Senators Patrick Leahy (VT) and Jeff Sessions (AL) co-sponsored an identical bill in the Senate (S. 2968) which was passed without amendment by Unanimous Consent the same day. These bills have now been enacted. See Pub. L. No. 111-146 (enacted Mar. 17, 2010).

In addition, the Act requires the IPEC to conduct a one-year study and prepare a substantive report on two subjects: 1) “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;” and 2) “the best use of Federal Government services to protect trademarks and prevent counterfeiting.” The IPEC’s report would be due within one year after the enactment of the Bill, or no later than March 17, 2011.

For More Information

The Official Site for the IPEC’s Office is http://www.whitehouse.gov/omb/intellectualproperty/. Should you wish to contact the IPEC, the official e-mail address is mailto:[email protected]?subject=Contact%20IPEC.