Tuesday, May 3, 2011

Department of Commerce Issued Report on Trademark Litigation Tactics

The U.S. Department of Congress issued its Report to Congress on Trademark Litigation Tactics on April 27, 2011. See also USPTO's summary of its requests for comment. The report provided an excellent summary of trademark rights and trademark owners' duties to enforce their rights or risk losing them. It also summarized the comments that the USPTO received during its two requests for public comment. In its formal Recommendations the Department proposed that it: 1) "engage the private sector about providing free or low-cost legal advice to small businesses via pro bono programs and IPR clinics;" 2) "engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics;" and 3) enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks." Report at 26.

After having received comments from stakeholders and others during the comment periods, the Department conceded that it was "unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner's rights," id., which the Department had been tasked to explore. This analysis matches the conclusion of at least one of the bar associations that submitted comments – specifically, the American Bar Association's Intellectual Property Law Section. See Feb. 4, 2011 Letter from the ABA IPL Section at 2 ("Although there is no consensus, as would be expected considering the diversity of the Section, the results reflect that trademark abuse is not limited to small businesses but can be experienced by any party defending a trademark suit.").

The Department's Report further concluded that "because trademark enforcement is a private property rights litigation issue, if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system and by private sector outreach, support and education relating to these issues." Report at 26. Again, the ABA IPL Letter made a similar point: based on a survey that the IPL Section had conducted, "The responses indicate that there is no consensus about many of these issues, lending further support to the conclusion that determining litigation misconduct - in a trademark case or otherwise – requires a fact-intensive analysis that cannot be addressed by a single, catch-all legislative solution." Feb. 4, 2011 Letter at 4.

At the end of the Report, the Department provided several resources that small businesses could consult to assist it in its enforcement efforts. See Report at 22-25 (narrative discussion); and Appendix A (USG Resource Contact Information Sheet). The links in the Appendix are listed below for ease of reference (the descriptions of each reference below is verbatim from the report. Note that copying this information does not violate a copyright, since government works are not subject to the Copyright Law. 17 U.S.C. § 105):
  • STOP Hotline at 1-866-999-HALT.
  • "SME IP Training Tutorial" an online training tool for SMEs: http://www.StopFakes.gov/525/menu/index.htm.
  • "APEC Intellectual Property Explorer," tool helps businesses identify their intellectual property assets, http://www.stopfakes.gov/.
  • "Experts' Advice for Small Businesses Seeking Foreign Patents" (GAO Report), http://www.gao.gov/new.items/d03910.pdf.
  • USPTO Inventors Assistance, http://www.uspto.gov/inventors/iac/index.jsp; FAQs, http://www.uspto.gov/inventors/independent/index.jsp; and computer-based training, "From Concept to Protection," http://www.uspto.gov/inventors/index.jsp
  • USPTO "TMIN," the Trademark Information Network, which features broadcast-style videos that cover important topics and application filing tips, http://www.uspto.gov/trademarks/process/TMIN.jsp
  • "International IP Advisory Program", through which U.S. small businesses can obtain one hour of free legal advice on their IP issues in various countries, http://www.stopfakes.gov/int_ipr_ap.asp
  • U.S. Copyright Office website for registration and general information (including Circular 1, "Copyright Basics"): http://www.copyright.gov,
  • USITC's Trade Remedy Assistance Office (TRAO): online www.usitc.gov/trade_remedy/trao , by telephone at (800) 343-9822 or (202) 205-2200, or by fax at (202) 205-2139
More information about the statutes that commissioned the study as well as analysis of the ABA IPL Section's letter can be found in prior posts within this blog.

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