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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”

 

This Friday morning (February 17, 2012), the Subcommittee on Intellectual Property, Competition and the Internet of the Committee on the Judiciary of the U.S. House of Representatives (try saying that 3 times fast!) is holding a hearing entitled “Litigation as a Predatory Practice.”

As of this writing, no details have been posted regarding the topic or the witnesses. It is my hope that the committee will address the USPTO’s “Trademark Litigation Study” conducted and released last year. It is possible that the hearing will cover patent trolls. In recent years, Congress has shown little interest in trademark matters. Since the study was commissioned in a bill from the Senate Judiciary Committee in early 2010, the topic has not been addressed by either chamber of Congress in any manner. The hearing, in my opinion, has largely fallen on deaf ears. This result may have been expected since the mantra of the study was that there really is no problem regarding trademark litigation tactics and nothing major should be done to address any perceived problems.

[Note: Last Spring, I sent a letter to the Senate judiciary committee Chairman calling for hearings on the trademark litigation tactic issues.]

For more details on Friday’s hearing, see the hearing calendar, which hopefully will soon reflect more details.

I plan to attend the hearing and of course will report in this space on any trademark related news from it.

 United States House of Representatives, Committee on the Judiciary

 

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.

Senate Hearing on Intellectual Property

Posted by ipelton on: July 1st, 2010

Last week I had the pleasure of attending the Senate Judiciary Committee hearing on “Oversight of the Office of the Intellectual Property Enforcement Coordinator.”  A webcast is available. It has been quite some time – law school – since I last saw our Congress in action. The following is a report from the hearing including my comments.  In short, I believe that the panel and witnesses have used scare tactics to ensure that the interests of big business are addressed, and that there is little inquiry or actual oversight regarding other steps that could be taken ensuring balance in the action items proposed.

Me in background (far left) at Senate hearing

The hearing included two parts, the first a report from Victoria Espinel, the first Intellectual Property Enforcement Coordinator, and the second testimony from four industry members – from Warner Bros., AFL-CIO (represents many unions including several that work in film, television and music), U.S. Chamber of Commerce, and Carlin America (a music publisher).

A brief summary of the hearings:

  • In general, there was zero controversy.
  • Ms. Espinel discussed the release earlier in the week of the 2010 Joint Strategic Plan on Intellectual Property Enforcement (download it here).
  • The hearing mentioned several words repeatedly:
    • jobs, organized crime, pharmaceuticals, defense, China
  • Ms. Espinel spoke of five primary initiatives in the the Joint Strategic Plan:
    • Ensure the US government is not engaged in assisting piracy by purchasing counterfeit products in procurement.
    • Ensuring efficiency and coordination among law enforcement agencies
    • Establishing a counterfeit pharmaceutical inter-agency committee
    • Combating internet piracy
    • Information sharing and transparency – collecting, examining and reporting data regarding the total nature and affect of intellectual property theft

    All of the panelists and all of the Senators were entirely supportive of the Joint Strategic Plan and the work of Ms. Espinel

My comments on the Joint Strategic Plan and Ms. Espinel’s testimony:

  • The goals are rather short on details and specifics.
  • The goals are intended to offend no one.  While some of them are ambitious, no one is going to dispute that the government should not by pirated software, or that protecting pharmaceuticals has value to the public.
  • The Plan is geared to help big business (specifically, to help the pharmaceutic industry and defense contractors, and to help Hollywood combat piracy from China and on the internet).
  • The words repeated (jobs, organized crime, pharmaceuticals, defense, China) were intended to create a record that scares people.  This could help pass future intellectual property bills and also make it difficult to argue against the work of Ms. Espinel.  It is difficult to argue with the protecting jobs and keeping organized crime out of the business of internet piracy.  But are these really the most important issues? Is our money and time being used is the most efficient manner in regards to the government’s involvement in oversight of intellectual property? (Is there any evidence that the the “mob” is involved heavily in internet piracy of movies?) Are the issues being addressed in the most effective and balanced manner?  I fear that serious inquiry may be glossed over or skipped altogether.
  • Very little attention to small business.  Small business is mentioned only a handful of times in the 58 page Joint Strategic Plan.
  • Zero concern about the effects of over enforcing intellectual property rights. Businesses and ideas are stifled when intellectual property rights are wrongfully used to bully or scare them.  Discussion of this effect on the economy, on innovation, and on jobs, was not present in the Joint Strategic Plan or the testimony.  I believe this issue needs more study and attention.

Entertaining highlights from the hearing:

  • Senator Franken’s discussion of his past in the entertainment industry, and collection of royalties (“I still get a $12 check every time they run Trading Places”) (minute 109)
  • U.S. World Cup goal scored and reported by the chairman (minute 123)

The focus of greater attention and resources devoted to Intellectual Property issues by Congress, by Ms. Espinel’s office, and by business is a good thing.  But I believe that these resources and time need greater focus and more balance between the interests of large companies and owners of intellectual property on one side, and the growing number smaller businesses who rely on trademarks, copyrights and patents as core elements of their success.