Last week, the USPTO hosted a public forum on “Continuing Legal Education Programs on Trademark Policing Measures and Tactics.” This forum was a follow up to one of the recommendations made in the Department of Commerce’s study on trademark litigation tactics completed earlier this year for Congress.
The forum was held with the Commissioner for Trademarks, Deborah Cohn, and the Director of the USPTO David Kappos. About twenty people attended from the USPTO and the public, including representatives from the major intellectual property bar associations. I attended and participated in the discussion. A summary of the forum by the USPTO was posted on the USPTO.gov website this week. Commissioner Cohn closed the event by encouraging follow up from anyone with additional ideas or thoughts.
Of course, I have many ideas on the subject! More education of the public and small businesses would benefit the trademark system as a whole and all brand owners in many ways.
I have sent a letter to Commissioner Cohn (below) featuring a list of suggestions and a call for the USPTO to convene a committee or working group to continue and further the efforts to enhance public and business education about trademarks in general and about trademark infringement and litigation issues.
Do you have additional ideas? Let me know in the comments!
Dear Commissioner Cohn,
Thank you for the opportunity to participate in the recent forum on “Continuing Legal Education Programs on Trademark Policing Measures and Tactics” hosted by the USPTO on November 29th. It is always an honor and privilege to meet with you, Director Kappos, staff from the USPTO, and esteemed members from the trademark bar.
I am pleased that the forum produced a consensus that an effort, spearheaded by the USPTO, to provide more education and information for the general public and businesses owners about trademarks in general and trademark policing issues would be beneficial. I write to follow-up regarding some further ideas and suggestions for such initiatives.
As I noted at the conclusion of the forum, I believe it is critical that the USPTO organize and lead these educational efforts. As a government agency, the USPTO has a much broader “constituency” and is better positioned to reach diverse group of individuals and businesses. Intellectual property associations, on the other hand, are primarily set up to work on behalf of their members. Some intellectual property associations have an inherent potential conflict of interest when it comes to spreading a message benefiting all business owners, brand owners, or the public as a whole, rather than merely their membership.
The USPTO already provides excellent information on many topics in a variety of places, including educational materials for students, printed brochures and guides, and seminars such as those at the Trademark Expo. Expanding the breath and amount of content, as well as the reach and distribution, is very achievable. To address more directly the issues tackled in the April 2011 Report to Congress on trademark litigation tactics, the content must include information about trademark infringement, policing, litigation, and defenses, along with general trademark and registration information. Providing businesses and brand owners with a greater understanding of the potential risks of adopting and using trademarks, as well as the range of issues, defenses, options, and costs at play when brand owners make or react to allegations of infringement, will benefit the trademark system at large, the public, the economy, the courts, the Trademark Trial and Appeal Board, and the USPTO.
Potential channels for disseminating information by the USPTO, with the assistance from stakeholders, include:
- U.S. Small Business Administration (SBA);
- Local chambers of commerce;
- USPTO (or constituent) speakers and exhibits for industry associations and conferences, particularly those that have large numbers of small business members (i.e. software developers, blogs, restaurants, toys, retail merchants, music, real estate, electronics);
- Websites and other online resources of the USPTO, SBA, and Department of Commerce;
- Patent and Trademark Resource Centers (PTRC);
- State agencies handling incorporation and/or fictitious name filings (I find that a large number of unrepresented new businesses believe that filing with the state protects their brand name.);
- Small Business Innovation Research (SBIR) / Small Business Technology Transfer (STTR) communities;
- International trade organizations and federal and state trade agencies, such as International Trade Administration (ITA);
- Institute for Intellectual Property and Social Justice (IIPSJ);
- Law schools;
- Business schools;
- Community colleges;
- Undergraduate universities (in particular, business and entrepreneur clubs);
- Grade schools and high schools (in particular, business and entrepreneur clubs);
- Business bar associations and other bar associations and sections that are not primarily composed of members in the field of intellectual property;
- Inventors networks, clubs, and conferences;
- Small business associations such as National Small Business Association (NSBA), the National Federation of Independent Businesses (NFIB); and others.
In providing information pursuant to this outreach effort, every effort should be made to have offerings in a variety of formats, media, and locations. For example, the outreach should include, but not be limited to, printed materials, electronic materials, videos, physical seminars, virtual seminars, social media, and exhibits at conferences. An additional, smaller trademark expo held outside of the Washington metro area in collaboration with local businesses, attorneys, and chambers of commerce would present an incredible opportunity to expand the success of the National Trademark Expo.
As it was aptly noted at the forum, “an ounce of prevention is worth of a pound of cure.” Educating the public and business owners on trademark issues will benefit all – applicants, registrants, common law rights holders, the USPTO, the trademark bar, and others. With the leadership of yourself and Director Kappos and the continued willingness of the USPTO to team with its many constituencies, these efforts can have a significant effect to make the USPTO and the trademark system even more valuable for brand owners, business owners, the public, and the American economy.
To kick-start the efforts, I urge the USPTO to immediately convene a committee or working group to focus and lead on these issues and to develop specific outreach strategies to implement in the next year. Such a committee could include representatives from the USPTO, TPAC, Department of Commerce, SBA, small business community, academia, and the trademark bar.
Thank you for your continued outreach and leadership on these issues. Do not hesitate to let me know if there is anything I can do to advance these goals.
Erik M. Pelton
Erik M. Pelton & Associates, PLLC®