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Comments from Erik M. Pelton & Associates, PLLC

Regarding U.S. Intellectual Property Enforcement Coordinator’s

Development of the Joint Strategic Plan on Intellectual Property Enforcement

The following are the comments of the firm of Erik M. Pelton & Associates, PLLC of Falls Church, Virginia, in response to the  Request of the U.S. Intellectual Property Enforcement Coordinator for Public Comments: Development of the Joint Strategic Plan on Intellectual Property Enforcement published on June 25, 2012.  The full request for comments was published at http://www.whitehouse.gov/sites/default/files/docs/jsp_2013_frn_final.pdf.

Introduction

Intellectual property rights contribute to an enormous – and growing – portion of the American economy, and intellectual property plays an important role in America’s success as a place where innovation and creativity flourish. Our framework of intellectual property rights is a valuable tool to spur such innovation and to protect American businesses both at home and abroad against misappropriation of such benefits, hard work, and creativity.

If reducing IP infringement is the goal, the Joint Strategic Plan should recommend more than sanctions and punishment s. A Joint Strategic Plan that focuses only on providing additional and stricter tools for enforcement of violations of intellectual property only responds to the problem of IP violations after they occur; it does not directly address the cause of the problem. Reducing the number of violations through prevention and education may have an even greater effect than providing more tools to deal with violations, and it may come at a far lesser cost. As Benjamin Franklin said, “an ounce of prevention is worth a pound of cure.” Accordingly, the Joint Strategic Plan should make great efforts to seek and implement measures that could reduce the number of IP violations.

In addressing infringements both before and after they occur, we believe that the Joint Strategic Plan should fairly balance the interests of legitimately infringed rights holders against the costs imposed on those who are wrongly accused of infringement or mistakenly violate the rights of others. While it is essential to respect and enforce intellectual property rights, excessive measures to prevent infringement are not cost-free. Enforcement regimes that fail to account for manipulation and misuse will inevitably invite abuse, stifle innovation, and limit competition by imposing significant burdens and costs on legitimate and well-intentioned small businesses and entrepreneurs.  These burdens force many small businesses to spend valuable time and resources defending against unnecessary claims and often result in the abandonment of legitimate and valuable IP rights, resulting in restrictions on innovation and damage to our economy.

A strategy for reducing the amount of violations would provide additional protections to the rights of IP owners and, compared to increasing enforcement tools, would come at a greatly reduced societal and economic cost. Less need for enforcement would mean savings for the government and for businesses in litigation, policing, and elsewhere. It is our opinion that greater focus on increasing resources for providing education and information to the public and to businesses about intellectual property rights, registrations, and infringements, would provide a great benefit to the IP system and to IP owners.

Therefore, our suggestions described herein aim to achieve greater education to prevent infringement of IP rights as well as to strike a balance with the damage caused by rising over-enforcement of IP rights. Note that the initiatives described herein require relatively low expenditures and are very likely to result in savings to both the government and the overall economy if they achieve the intended result of reducing the infringement of intellectual property rights.

About Erik M. Pelton & Associates, PLLC

Erik M. Pelton & Associates, PLLC (“EMP&A”) is a boutique trademark law firm located in Falls Church, Virginia. Established in 1999 by Mr. Pelton following two years of working for the U.S. Patent and Trademark Office as a trademark examiner, EMP&A has registered more than 1,600 U.S. trademarks for clients who are overwhelmingly small businesses. The firm has represented dozens of small business plaintiffs and defendants in all phases of trademark disputes and Trademark Trial and Appeal Board Opposition and Cancellation proceedings.

EMP&A attorneys are actively involved in the International Trademark Association (INTA) and the American Bar Association’s Intellectual Property Law section (ABA-IPL). Erik Pelton as a chapter editor for the ABA-IPL 2011 Annual Review of Intellectual Property Law Developments, was a speaker at its 2011 Annual Intellectual Property Law Conference, and is the incoming vice-chair of its USPTO Inter-Partes Trademark Practice committee.

 

I.                   Strategy Recommendations

Identified Issue: Increase education to students about intellectual property and its role in our society.

Government agencies could develop enhanced curricula for schools –at all levels – about intellectual property rights, teaching students what they are, how they are protected and registered, what happens when they are infringed, and why they are essential to our economy. Such curricula should reach beyond the classrooms to also include online, games, and a variety of other media. In particular, secondary, college and graduate level classes on business and marketing would be perfectly suited for using such curricula. We suggest the Department of Commerce, Library of Congress, and U.S. Patent and Trademark Office, in conjunction with the Department of Education and other educational agencies, address this issue.

Identified Issue: Increase education to the general public about intellectual property and its role in our society.

Providing more information and more opportunities for education to the general public on intellectual properties would also provide immense value by increasing awareness of IP issues. More workshops, seminars, and print and online materials would be valuable resources to the public. We suggest the Department of Commerce, Library of Congress, and U.S. Patent and Trademark Office, along with other agencies, address this issue.

 

Identified Issue: Increase education and outreach to small business owners regarding the importance of protecting intellectual property and IP infringement issues.

Providing clear educational resources about intellectual property rights tailored to entrepreneurs and small businesses is perhaps the most efficient way to reduce the costs of IP enforcement for all parties.  A great deal of infringement could be prevented by educating entrepreneurs about the range of intellectual property rights, ways to know whether an activity may be infringing others’ rights, and the importance of considering intellectual property issues every time they start a new business.  As an added benefit, small businesses will be more likely to avail themselves of intellectual property protections early so they are better positioned to benefit from their innovations in the marketplace. More workshops, seminars, printed materials and online materials would all be valuable resources to small businesses. We suggest the Department of Commerce, Library of Congress, U.S. Patent and Trademark Office, and Small Business Administration (SBA), along with other agencies, address this issue.

Identified issue: Help protect small businesses before government agencies.

The opacity of IP enforcement procedures before government agencies often induces small businesses and entrepreneurs to unnecessarily yield their valid IP rights when challenged by more sophisticated parties. For example, those without a trademark attorney on call will be more likely to let a notice of opposition or cancellation from the Trademark Trial and Appeal Board go unchallenged simply because their rights and the process for preserving them are not clearly presented by the government in laymen’s terms. In addition, small businesses that do attempt to fight such challenges are disproportionately harmed by delay, uncertainty, and costs imposed throughout the proceedings.  To level the playing field, the government must clarify and simplify the enforcement process and reduce the time and cost of proceedings.  We suggest the U.S. Patent and Trademark Office provide leadership in making additional information and training about these issues targeted for and available to small business owners.

Identified issue:  Ensure that small businesses are a part of policy decision making processes.

In addition, the small business community is underrepresented in Congressional hearings related to trademark issues, other public agency intellectual property hearings, conferences and seminars, and at the Public Advisory Committees (TPAC and PPAC) of the USPTO. We suggest that Congress and Federal agencies encourage and invite participation from the SBA and from the small business community in future hearings and agency activities that relate to intellectual property.

Identified issue: Customs and Border Protection tools are infrequently used by small businesses.

Small businesses are also unfairly damaged by overreaching activities related to U.S. Customs and Border Protection (CBP). Claims of counterfeiting and CBP seizures often relate to small businesses. Many such claims and seizures are justified, but those that are not are infrequently challenged. We suggest that the CBP and other government agencies educate importers, CBP officials, and IP owners regarding the dangers of overreaching IP enforcement attempts. We also recommend creating an easier and more affordable mechanism to appeal CBP seizures that are based on alleged IP violations; making all presentations and materials provided by rights holders to CBP officials publicly available; encouraging parties who perceive they are the targets of overreaching enforcement efforts to make presentations to CBP officials; and penalize parties for attempting to overreach in using the CBP to enforce their intellectual property irghts.

Identified Issue: Follow up regarding issues raised in the “Trademark Litigation Tactics Study.”

            The study, completed more than a year ago, was directed by Congress to be conducted by the Department of Commerce in consultation with the Intellectual Property Enforcement Coordinator. The study left many questions unresolved, such as the extent of abusive trademark litigation tactics and the potential remedies or solutions for any such problems. The study was completed with almost no public forums or hearings, and since the study’s completion only one follow-up hearing or forum has been held (by the USPTO, on the issues related to outreach and education by IP attorneys and IP associations). Congress has held no hearings on the issue, and there has been little or no action taken by the USPTO or IPEC to implement its recommendations to urge greater pro bono efforts from the private sector and more Continuing Legal Education (CLE) programs on trademark litigation issues for attorneys.  Note that we applaud the efforts of the USPTO in creating the position of Managing Attorney for Trademark Outreach and in expanding its outreach initiatives and programs. We recommend that IPEC, the USPTO, and/or Congress convene additional hearings or forums to discuss the issues raised in the report.

 

II.                Threat Assessment

No specific comments or recommendations are made.

 

III.             Optional Questions

1.         How can international regulatory and law enforcement collaboration and information sharing be enhanced to address cross-border intellectual property infringement?

Law enforcement agents should be provided with greater training on what activities do not constitute intellectual property infringement, such as fair use and parallel imports. Close determinations regarding infringement should be handled by the courts and should be dealt with by the parties involved, not by government agencies. Not everything remotely similar to an American product with a registered trademark or patent is an infringement.

2.         What legal or operational changes might be made, or collaborative steps undertaken between federal agencies and the private sector, to streamline or improve the efficacy of enforcement efforts directed at protecting intellectual property rights?

Federal agencies should provide additional resources to educate the public and the business community about what intellectual property is, why intellectual property is valuable and important, what constitutes infringement, and what can be done when someone is accused of infringement. See comments made under Statutory Recommendations.

3.         What measures can be taken by the private sector to share actionable information on entities engaging in or supporting infringement of intellectual property rights?

The process for reporting violations of intellectual property rights to Customs and Border Protection could be made much more accessible, clear, and accountable. One online system for reporting violations at all ports of entry, for example, would be helpful as would a way to track the status of the requests. Our firm made a request last year to a CBP office and never even received an acknowledgement of our letter, nor any substantive response. Furthermore, the requests themselves should be publicly available and published online in a searchable database.

  1. To the extent necessary, what government safeguards and conditions would be useful to facilitate sharing of such information?

Making such information publicly available to all reduces the risk that rights holders will use the CBP’s enforcement procedures as a tool for anti-competitive conduct. A business whose goods are improperly detained, or potentially detained, based on an overbroad descriptive of a right holder’s IP rights would be able to address the matters with the rights holder directly.

4.         What information developed from law enforcement and intelligence community threat assessments would be beneficial to the private sector in order to mitigate the risk of trade secret theft and economic espionage?

No specific comments or recommendations are made.

5. What additional measures by the U.S. Government would most significantly enhance efforts to combat trade secret theft and economic espionage?

No specific comments or recommendations are made.

6.         When goods are imported into the United States, U.S. Customs and Border Protection (“CBP”) and other federal agencies charged with enforcing intellectual property rights and ensuring the safety of products entering the stream commerce, e.g., U.S. Food and Drug Administration and the Consumer Product Safety Commission, engage in a risk-based assessment of the level of risk that a shipment contains violative goods, and decides whether to inspect the shipment based on this risk determination. What steps can federal agencies and the private sector take to improve the risk assessment process so that high risk shipments may be quickly identified and segmented from lower risk shipments?

No specific comments or recommendations are made.

7.         What authentication tools and track and trace technologies would significantly enhance federal efforts to identify suspect counterfeit or pirated goods?

No specific comments or recommendations are made.

8.         In a global economy that increasingly utilizes Internet based e-commerce and mobile platforms for transactions, the number of shipments sent through international mail and express carrier services has dramatically grown in recent years. Accordingly, law enforcement efforts directed at interdicting infringing goods shipped in the express and international mail environments have resulted in significant increases to seizure levels of infringing goods shipped through these modes of transit. What steps could be undertaken by CBP, its partner U.S. Government agencies, and the private sector to further improve detection of express carrier and international mail shipments containing infringing goods?

No specific comments or recommendations are made.

9.         Are there ways in which CBP could improve its intellectual property rights e-recordation system to enhance ease of use and make it a more useful tool for intellectual property rights enforcement?

CBP’s recordation tool is rather easy to use, but it is not well publicized. It would be more valuable if the USPTO and other federal agencies better promoted the availability and benefits of the CBP e-recordation system. It would also make the system more valuable if it reported – both to a trademark recordant and in the public database – when a particular e-recordation led to a action by CBP. The public has little or no knowledge about how effective a recordation can be to those companies that have well known trademarks and do not spend large amounts of time and money working with and educating CBP regarding their trademarks.

10.       As laid out in IPEC’s 2011 Annual Report on Intellectual Property Enforcement, using our resources as efficiently as possible is a priority. Are there additional ways in which the U.S. Government could make more efficient use of its resources in protecting intellectual property?

As a whole, the U.S. Government should avoid providing incentives for over-enforcement of intellectual property rights. The government, through the office of IPEC and other agencies, should make efforts to ensure that we are not over enforcing intellectual property rights. Over-enforcement of IP rights is contrary to the public good at the heart of intellectual property rights. Over-enforcement stifles innovation and costs jobs. Continued over-enforcement could lead to a backlash that will harm all intellectual property rights owners.

Several policies tend to encourage rights holders to aggressively pursue enforcement actions against activities that are not likely to result in infringement. For example, trademark law favors mark holders that can show a track record of successful enforcement against others, resulting in enforcement for enforcement’s sake instead of a true assessment of the actual likelihood of confusion that may result from permitting the use. Small businesses and entrepreneurs would benefit from the availability of a remedy against rights holders exhibiting a pattern of bad-faith enforcement, even if it were rarely used. At minimum, policy makers need to take into account the hidden costs of over-enforcement, particularly as it affects small businesses. 

Respectfully Submitted,

Erik M. Pelton

Erik M. Pelton & Associates, PLLC®

 

 

Last week, U.S. Intellectual Property Enforcement Coordinator Victoria Espinel released the 2012 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN.

Like previous reports, It touts lots of efforts and initiatives regarding counterfeiting and intellectual property violations. IP enforcement actions and investigations by homeland security, the FBI, and other law enforcement agencies are up significantly.

And like previous reports, it contains nothing specific about aiding small businesses. And nothing about making sure the enforcement efforts are reasonable.

I’m not saying that these efforts are unreasonable. But I am uncertain as to whether anyone is guarding against over enforcement of intellectual property rights. This topic has popped up more often recently (see here too) in the wake of the SOPA and PIPA backlash but is still nascent. Is anyone charged with ensuring that the enforcement doesn’t go too far? Is Congress providing oversight? Are any other independent agencies or bodies monitoring and commenting on this situation? To my knowledge, they are not.

In my opinion, over enforcement of I.P. rights is at least as damaging to our economy as under enforcement. It stifles legitimate business. Ties up our courts with wasteful litigation. And requires parties to spend money that could be better spent on other things – research and development, marketing, new employees, etc. I fear that we are headed towards an IP system where companies that can afford access to courts and to legislators and government official will dictate our intellectual property policies. But these policies should protect all businesses, and the public. They should not be unduly influenced by big businesses.

2012 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN.

 

 

Filmmaker James Lantz is making a documentary movie, A Defiant Dude, about Bo Muller-Moore – the “Eat More Kale” guy – and his trademark dispute with Chik-fil-A®.

The film project was launched via Kickstarter, with nearly 2,000 people having pledged a total of $89,000 to help fund it. See a trailer for the film project here.

I was interviewed earlier this week by James and his crew for nearly 2 hours. We held the interview at Clare and Don’s Beach Shack®, a local Falls Church small business owned by my wife Rebecca Tax and her brother David Tax. Below are some photos from the film shoot.

Regardless of what you think about trademark bullies and about the Eat More Kale situation, one thing is for sure: Eat More Kale, with a Facebook page featuring thousands of followers and now a crowd-sourced film project , is an example of how social media has the potential to affect trademark disputes.

The story and the issues at play are important, and it looks like James is committed to telling the story in an in-depth and informative manner. I can’t wait to see the film and share with you more of what I said about trademark bullies, small businesses, and the value of trademarks.  Stay tuned!

 

Here are some of many things your business does NOT need to have a great trademark:

marketing department

corporate attorney

physical offices

IPO

investors

thousands of customers

millions of dollars

celebrity endorsements

television advertising

website

social media pages

board of directors

In fact, all you need is some creativity and wit. It is helpful if you also take a few minutes to search and make sure the name is unique.  Even more helpful if you file to register it. Even more helpful if you hire an experienced trademark attorney to handle the registration process.

But all you need is a great name.  Two very small, very local examples:

FROG AND TOWED auto wrecker/towing services in Fredericksburg, Virginia.  How could you forget a unique, playful creative name like that?

 

FISHIN… NOT WISHIN is the slogan for a small fishing lodge in remote Maine just steps from the Canadian border. The slogan is great because it is fun, it is fun to say, and it captures the spirit of the place.

If you don’t have a great trademark – brand name, slogan, and/or logo…. what’s your excuse?

What makes a Trademark Bully?

Posted by ipelton on: March 27th, 2012

A lot has been written in the news lately about alleged trademark bullies. Reasonable people can disagree whether trademark bullying is a real issue and whether any particular dispute involves a trademark bully.

The trademark system today almost encourages trademark bullying because there is little repercussion for over-enforcement, especially if picking on a small business, because the odds that the small business can afford to fight back may be minimal. And large brands are embolden by the fact that courts often give weight to the fact that they have successfully enforced their trademarks by getting other businesses to agree to change their names or to default in a proceeding. I believe too much weight is given to these occurrences because many of these results are because of funding and have nothing to do with the merits or with the alleged strength of the trademark being ‘enforced.’ 

These dynamics of situations labeled a trademark bullying are changing in some cases as the internet and social media provide small businesses with a potential platform to gather support for their defense. [See my recent post onSocial media and the future of trademark disputes.] But in the end, going to court still costs money. And many small businesses must make a cost/benefit analysis – is fighting for a name worth it even if I win? And can I risk spending money to fight it and lose?

Of course, trademark bullying is not illegal – again there is little legal repercussion although there may be bad publicity – and arguably I suppose could be a valid business strategy as long as there is little if any punishment. 

So, what makes a trademark bully? I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed.  Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit.  Bullying tactics include unreasonably demanding letters, such as: “respond that you are in compliance with all of our demands within 48 hours.” Or seeking discovery that is overly burdensome and irrelevant just to run up costs for the other party. Or failing to seek a compromise that accomplishes the goal of avoiding confusion or dilution before litigating.

In my opinion, when a business asserts an over-reaching claim with heavy handed tactics, the “trademark bully” label fits. The label may fit even if just one factor is present, i.e. the claim is very over-reaching or the tactics are very heavy-handed.

How do you define a trademark bully? Let me know in the comments.

No Bullying Zone 2" sticker

[image from Kansas Bullying Prevention Program]

Related discussions:

  • Brand Bully Basement™ hosted by brandGEEK®. They define the situation as: Trademark bullying happens when a trademark owner over-reaches in the exercise of its trademark rights.  Usually, though not always, this involves a big company threatening unwarranted costly legal action against a smaller company in order to make the smaller company change its trademark.  Trademark trolls — entities that fraudulently obtain trademark rights for the sole purpose of enforcing them — engage in a similar bullying behavior, though most trolls are individuals or small companies.
  • How Fashionable is the Louis Vuitton “Trademark Bully” Label?
  •