Thousands of trademark attorneys have begun to descend upon our nation’s capital this weekend for the annual conference of INTA® (International Trademark Association). Some may want to attend the Senate Judiciary Committee’s hearing related to intellectual property scheduled for Wednesday morning, May 9, at 10 am.
For more details, see the Senate webpage: “Oversight of the Office of the Intellectual Property Enforcement Coordinator”
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.
As the USPTO has yet to communicate any information about the study prepared for congress on “trademark litigation tactics” (aka the “bullies study”), I am writing to Senator Patrick Leahy, chair of the Senate Committee on Judiciary and author of the relevant provisions of The Trademark Technical and Conforming Amendment Act of 2010 (Pub. L. No. 111-146, 124 Stat. 66 (2010) to request Congressional hearings.
The body of my letter is presented below. If you agree and would like to support this request for hearings, download this PDF (for small business) or this PDF (for attorneys), sign it and email (to: info at erikpelton dot com) or fax it (to 703-997-five-three-four-nine) back to me so that I may attach it to my letter. I will mail out the letter on Friday afternoon.
Body of letter:
Dear Senator Leahy:
I write to urge the Senate Judiciary Committee to hold public hearings on the findings of the Administration’s recent study of abusive trademark litigation tactics that was mandated by Congress pursuant to The Trademark Technical and Conforming Amendment Act of 2010 (the “Study”). Pub. L. No. 111-146, 124 Stat. 66 (2010). I am a small business owner as well as a trademark attorney who has represented hundreds of small businesses in trademark matters. Congress ought to review the findings of the Study and investigate the disadvantages faced by small businesses seeking registration and protection of their legitimate trademark rights.
Given your longstanding service to the Judiciary Committee, your leadership in intellectual property policy and reform, and your commitment to fairness for small businesses that led to creation of the Study, I know that you understand the important role that trademark rights play in the American economy and in the growth and success of new businesses, large and small. However, it is my understanding that the U.S. Patent and Trademark Office (“USPTO”) has recently completed the Study but has not made the results public. Furthermore, and despite the importance of the issue, the USPTO, Department of Commerce, Office of the U.S. Intellectual Property Enforcement Coordinator (“IPEC”), and other involved agencies have conducted little, if any, public discussion in the preparation of the Study. To my knowledge, the Study was only on the agenda of a single USPTO public forum in Detroit and was the subject of a USPTO “Request for Comments” that was published with little attention. No other public roundtables or hearings were conducted. To ensure that the trademark system balances the needs of both small and big businesses, it is important that Congress make certain that the Study has adequately taken into account the experiences of small businesses and entrepreneurs and has considered what changes might be necessary.
I therefore urge the Committee to conduct open hearings regarding abusive trademark litigation tactics; their affect on small businesses, innovation, and growth; and those steps that Congress, the USPTO, IPEC, and others may take to address this issue.
Thank you for your leadership on this issue, and I look forward to your response.
The Congressional bill which created the USPTO study (S. 2968 here) required that “study and report” be provided “to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives” not later “than 1 year after the date of enactment of this Act” which became effective on March 17, 2010. As result, the study and report are due today. The statute directs the Secretary of Commerce to carry out the study and report, but it appears that the USPTO (part of the Department of Commerce) was given the lead on the task.
Here are just a few questions as the report is completed and made to Congress:
- Will the study and report recommend any changes or actions by the USPTO, by Congress, or by other government agencies? Will is recommend any changes to the law?
- Will the study and report be made public?
- Will the House or Senate hold any public hearings on the issues?
- Has the Intellectual Property Enforcement Coordinator been involved in the study and report at all? The study has not been mentioned in her recent testimony, on her office’s website or in its recent Annual Report.
The answers remain to be seen.
The U.S. Intellectual Property Enforcement Coordinator, Victoria Espinel, recently released her first annual report (large PDF).
Ms. Espinel has accomplished a lot in just one year on the job. She has brought energy and clarity to enforcement strategy from the government and to renewed efforts from law enforcement. She has raised awareness of counterfeiting issues. And she has helped various parts of the government work on communicating and coordinating with each other.
President Obama has noted on several occasions recently how innovation by U.S. businesses is one of the keys to growing the economy and making restoring American success. See his 2011 State of the Union speech and his talk to the U.S. Chamber of Commerce. He has cited intellectual property as one of America’s core assets and exports.
What I find missing in this discussion, and particularly in Ms. Espinel’s report, is any discussion of balance – of any checks on the system to ensure that law enforcement, government agencies, and businesses do not overreach in seeking to enforce the intellectual property rights. There is no discussion of the potential harm cause by such over-enforcement, or of the issues small businesses face defending themselves in enforcement actions small businesses or affording be enforcers.
In crafting the White House’s policy, law enforcement strategies, and other intellectual property issues, I fear that the voice of small businesses is not heard.
For example:
According to SBA.gov, small businesses
Yet they are noticeably absent from government policies to protect and enforce intellectual property rights.