Tag Archives: Copyright (c) 2011 by Christina D. Frangiosa All Rights Reserved.

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.

New Bill Seeks to Eliminate Social Security Numbers as Uniform Identifiers

by Christina Frangiosa


On January 7, 2011, Representative Ron Paul (R-TX) introduced a bill entitled the “Identity Theft Prevention Act of 2011” (H.R. 220). The Bill seeks to address the pervasive use of Social Security Numbers by various federal, state and local government agencies and to prevent identity theft by eliminating any use of those numbers in connection with government services. It prohibits governmental agencies from requiring mandatory or even voluntary disclosure of an individual’s Social Security Number in connection with documents filed by individuals.

The Bill includes amendments to the Social Security Act (42 U.S.C. 405(c)(2)), the Internal Revenue Code (26 U.S.C. §§ 6109(d)), and the Privacy Act of 1974 (5 U.S.C. 552a note, 88 Stat. 1909) in the following notable ways:

  • Social Security Act – H.R. 220 §§ 2(b) and (d)(2):
    • Requires that Social Security Account Numbers be randomly generated instead of confirming to a specific numbering system (the Social Security Numbering Scheme is described in detail on the Social Security Administration’s archive);
    • Provides that the Social Security Account Number be owned by the individual;
    • Prohibits the Social Security Administration from divulging that number to anyone (other than the account holder himself/herself); and
    • Requires that any pre-existing Social Security Numbers be declared null and void and reissued within 5 years of enactment of the Bill in accordance with the new “random generation” rules. Certain cross-references to the old numbers may be made, but these are limited.
  • Internal Revenue Code – § 2(c)(1):
  • Privacy Act – H.R. 220 § 3:
    • Section 7 of the Privacy Act (5 U.S.C. § 552a (note)) currently reads as follows:
      Sec. 7(a) (1) It shall be unlawful for any Federal, State or local government agency to deny to any individual any right, benefit, or privilege provided by law because of such individual’s refusal to disclose his social security account number.
      (2) the provisions of paragraph (1) of this subsection shall not apply with respect to—
      (A) any disclosure which is required by Federal statute, or
      (B) any disclosure of a social security number to any Federal, State, or local agency maintaining a system of records in existence and operating before January 1, 1975, if such disclosure was required under statute or regulation adopted prior to such date to verify the identity of an individual.
      (b) Any Federal, State or local government agency which requests an individual to disclose his social security account number shall inform that individual whether that disclosure is mandatory or voluntary, by what statutory or other authority such number is solicited, and what uses will be made of it.
    • Pursuant to H.R. 220, these provisions would be amended to read as follows:
      Sec. 7(a) (1) It shall be unlawful for any Federal, State or local government agency to deny to any individual any right, benefit, or privilege provided by law because of such individual’s refusal to disclose his social security account number.
      (2) The provisions of paragraph (1) of this subsection shall not apply with respect to any disclosure which is required under regulations of the Commissioner of Social Security pursuant to section 205(c)(2) of the Social Security Act or under regulations of the Secretary of the Treasury pursuant to section 6109(d) of the Internal Revenue Code of 1986.
      (b) Except with respect to disclosures described in subsection (a)(2), no agency or instrumentality of the Federal Government, a State, a political subdivision of a State, or any combination of the foregoing may request an individual to disclose his social security account number, on either a mandatory or voluntary basis.

The Bill also prohibits “Government Wide Uniform Identifying Numbers” (Section 4) and “Government Established Identifiers” (Section 5). These two prohibitions would go into effect on January 1, 2012.

Under Section 4, the Bill provides that “any two agencies or instrumentalities of the Federal Government may not implement the same identifying number with respect to any individual” except where authorized by 42 U.S.C. 405(c)(2) [the Social Security Act sections described above]. Id. § 4(a).

Under Section 5, the Bill prohibits any two federal agencies from implementing the same numbering system to assign individual identification numbers to any individual and from conditioning the receipt of any federal grant, contract, or funding on the adoption of a uniform numbering system by a state or local government entity or agency. The Bill makes it clear that “administrative simplification” cannot be the stated purpose in establishing or mandating a uniform standard for identification purposes. Id. § 5(b)(2).

Initial Purpose of Social Security Numbers

As initially implemented, the Social Security Numbering system was not intended as a universal numbering system, and indeed, was not adopted by other agencies as such until at least 1943, when an Executive Order mandated that if a numbering system was required to keep records on individuals, that the Social Security Numbering system be used. Executive Order 9397 (3 CFR (1943-1948 Comp.) 283-284). An interesting chronology of the history of policy changes to the Social Security Numbering System can be found at the Social Security Administration’s web site and the explanation of the meaning of each section of the Social Security Number can be found here.

Status of Legislation
Following its introduction on January 7, 2011, the Bill was referred to the House Ways and Means Committee and the House Oversight and Government Reform Committee.

Basic information about the Bill (except for the actual text) can be found through Thomas (Congress’s legislative portal) at this specific link. The actual text can be found here in a variety of formats, including text, XML and PDF.

Index of 2010 Articles

by Christina Frangiosa


Welcome to a new year, and a new Congress. As of January 5, 2011, the 112th Congress began. According to the U.S. Congress’s web site, here’s how Congressional schedules work: “A new Congress begins at noon January 3 of each odd-numbered year following a general election, unless it designates a different day by law. A Congress lasts for two years, with each year constituting a separate session.” The 111th Congress ended on December 29, and according to the Congressional Record, the 112th Congress actually started on January 5, 2011.

Before we begin discussing new IP legislation, I thought it proper to close out 2010 and provide a list of articles that were published in this blog last year:

Articles (in Reverse Chronological Order)

11/28/10 Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama – Enacted legislation, Trademarks

10/18/10 USPTO Seeks Comments on Potential Trademark Misuse – Enacted legislation, Trademarks

10/13/10 Have We Lawyers Genericized “Bates” Numbers? – Trademarks

8/21/10 Awards of Attorney Fees in Copyright Infringement Cases Are Justified for “Vexatious Conduct” by Attorney – Copyright, Sanctions

7/28/10 ISPs Are Not Required to Search Independently for Potential Infringement – Copyright

7/2/10 Supreme Court Issues Opinion in Bilski v. Kappos Case – Patents

7/1/10 IPEC Releases Joint Strategic Plan on Intellectual Property Enforcement – Cabinet Positions, Counterfeiting, Enacted legislation, Government oversight

7/1/10 New Design

6/1/10 Summary of IPEC’s Responsibilities – Cabinet Positions, Counterfeiting, Enacted legislation, Government oversight

5/7/10 Reassignment of Judge for Google Book Settlement? – Google Book Project, Judiciary

4/27/10 New Law in Utah Prohibits Certain Internet Crimes – Consumer fraud, Cybersecurity, Identity theft, Privacy

4/20/10 Top 10 Ways to Preserve Your Trademarks – Speeches, Trademarks

4/13/10 Fraud on the PTO – A Trademark Perspective – Cancellation, Fraud on the PTO, Medinol, Opposition, Speeches, Trademarks, TTAB

3/18/10 SDNY Orders TAVERN ON THE GREEN Service Mark Cancelled for Fraud – Cancellation, Common law marks, Fraud on the PTO, Trademarks

3/17/10 Welcome Back

1/27/10 Temporary Hiatus

1/14/10 Netflix Sued for Alleged Privacy Violations, Part 2 of the “Two New Privacy Lawsuits Filed” Topic – Privacy

1/7/10 Two New Privacy Lawsuits Filed — Part One, Facebook – Consumer fraud, FTC, Privacy, Privacy policies, Social networking

1/7/10 FTC Releases its Staff Report on its 2/09 Fraud Forum – Consumer fraud, Cybersecurity, FTC, Identity theft, Privacy

Stay tuned for more articles on the three major topics for this blog: Copyright, trademark and privacy law.