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Trademark Litigation Study: Will there be any epilogue?

Posted by ipelton on: July 5th, 2011

It has been two months since the Department of Commerce (of which the USPTO is a part) released its long anticipated study on trademark litigation tactics. So, what has happened since we summarized the report’s findings and recommendations? In a word: nothing.

The study fell like a tree deep in the woods. It made a thud that was barely perceived in the trademark law community. Beyond that small community, the study went unnoticed. Since the report was issued there has been no follow up from the Department of Commerce or the USPTO about implementing any of the recommendations. No hearings have been held or scheduled by either chamber of Congress (note that the judiciary committees of the House and Senate have oversight over intellectual property matters and the USPTO). No cries that the study went too far nor any cries that the study did not go far enough.

image from Prospect.org (click for link)

The US Intellectual Property Enforcement Coordinator recently issued her 2011 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN. Her office was directed to take part in the trademark litigation tactics study by the statute creating it. What did her recent annual report mention about the study? Nothing. What did it say about the USPTO? Nothing except a small mention of its new database that will help Federal agencies better coordinate trainings across the government.

The USPTO has not published any of the comments it received. [Note, I have published those I obtained via  FOIA request here.] The Commissioner of Trademarks, when asked about the USPTO’s follow-up after submission of the study at a recent meeting of the Trademark Public Advisory Committee (TPAC), said the agency was not implementing any recommendations made in the study, but was waiting for affirmation, if any, from Congress.

INTA, the International Trademark Association, recently summarized the study on the front page of its INTABulletin newsletter (June 1, 2011, Vol. 66, No. 10). The summary spoke glowingly of the report and its recommendations and noted that the USPTO made a special effort to reach out to stakeholders, resulting in 79 comments. Anyone who has followed my writing on the topic knows that I believe the government outreach to publicize the study was paltry and the response of 79 comments was lackluster.

One could certainly argue I was too harsh on the USPTO for not publicizing the study and too harsh on the public and the bar for not commenting more. One could argue that there is genuine apathy because the issue does not generate any excitement, and most people and companies in the world of trademarks are content with the status quo. But I refuse to believe it because many small businesses are economically and practically impacted by unfair trademark litigation tactics and there is little question that issues affect the business and spirit of entrepreneurship.

Small businesses with experiences dealing with trademark disputes have spoken. And many members of the bar have spoken on the subject – though not directly and not in comments for the study. See for example the recent comments of attorney Paul W. Reidl (via TTABlog®), former INTA President, regarding a TTAB request for comments concerning TTAB involvement in settlement discussions, which touch on some bullying tactics used in TTAB proceedings. Several trademark bloggers criticized the report when it was released, but few if any of them submitted comments before the report’s release.

As with many legal and political questions, who is asked and how the questions are framed have a large influence on the answers received. I believe that there was not a large enough effort to reach out to small businesses, the very stakeholders who are impacted adversely by the issues in the stud. Of course, small businesses do not generally have trademark specialists, organizations, or lobbyists on hand to respond to requests for comments such as this one. INTA and the other relevant bar associations are generally dominated by big law firms and big corporations and their views dominated the study. Their interests clearly diverge from those of small businesses.

I will continue to call for the Department of Commerce and USPTO to – at a minimum – actually take steps to implement the recommendations made in the study. I will also continue to call for Congress to hold hearings. Unfortately, I may be standing deep in the woods next a tree that has already fallen.

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