As Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO), Mary Boney Denison is the highest-ranking U.S. government official whose role is devoted entirely to brand protection. A U.S. lawyer admitted to the bar in New York and the District of Columbia, she was first exposed to trademark law in 1981. “Coming from a family of architects, the creative aspect of trademarks immediately appealed to me,” Ms. Boney Denison says. In fact, trademark litigation and/or prosecution have made up the bulk of her work ever since. Today, she oversees all aspects of the USPTO’s trademarks department, including policy, operations, and budget relating to trademark examination, registration, and maintenance.
Ms. Boney Denison spoke with Christian W. Liedtke (acuminis llp, USA), a member of the INTA Anticounterfeiting Committee’s United States Subcommittee, about the USPTO’s role in the fight against counterfeiting.
How much USPTO staff is dedicated exclusively to anticounterfeiting issues?
The USPTO is not an enforcement agency; unlike the Department of Justice, the Federal Bureau of Investigations, or U.S. Customs and Border Protection, we don’t actually enforce the law. We do, however, provide advice to the administration and Congress on enforcement policy, train U.S. and foreign government enforcement officials, and assist U.S. businesses facing enforcement problems abroad.
The Office of Policy and International Affairs (OPIA) has a full-time team of eight lawyers dedicated to intellectual property (IP) enforcement matters, and they spend considerable time on anticounterfeiting issues. Many of these lawyers have previous law enforcement or civil litigation experience.
The Enforcement Team works closely with experts in OPIA’s Trademarks Team, China Team, and other regional specialists, as well as with the USPTO’s IP attachés. Our 13 IP attachés are IP experts posted in 10 countries and regions around the world. They advocate for the benefit of U.S. stakeholders to improve IP policies, laws, and regulations abroad, as well as help them to enter foreign markets, protect and enforce their rights, and conduct business abroad.
In addition, through our Global Intellectual Property Academy (GIPA), OPIA attorneys provide training on IP topics including trademark protection and enforcement. In fiscal year 17, GIPA provided training to more than 7,000 foreign officials from 120 countries.
Domestically, the USPTO works to assist U.S. law enforcement when prosecuting IP crimes. We provide certified copies of trademark registration certificates (and other documents) free of charge to prosecutors and investigators for use in criminal counterfeit court proceedings. We created this program to make it easier for law enforcement to obtain, on an expedited basis, documentation needed to establish ownership.
How do you work with foreign authorities?
The USPTO engages with foreign authorities on anticounterfeiting matters in various ways. I speak to my counterparts at regular meetings in the United States and abroad, including at the INTA Annual Meeting.
On an ongoing basis, the OPIA Enforcement Team provides technical expertise to the U.S. and foreign governments in the analysis of other countries’ laws, regulations, and border measures relating to IP enforcement. Additionally, the OPIA represents the United States in the World Intellectual Property Organization’s (WIPO’s) Advisory Committee on Enforcement. They also serve as technical advisors to the U.S. Trade Representative (USTR) in the negotiation, implementation, and enforcement of bilateral and multilateral trade agreements that seek to improve international protection and enforcement for U.S. rights holders, as well as in the preparation of USTR’s Special 301 Report, which is an annual review of the global state of IP rights and enforcement.
GIPA provides training and capacity-building programs to foreign government officials, working with the Enforcement and Trademark Teams. These programs promote best practices for establishing and maintaining robust systems of criminal, civil, and border IP enforcement.
In addition, the IP attachés are in continuous contact with officials in their host countries, including on enforcement matters.
What kinds of projects related to anticounterfeiting are you working on at the moment?
The USPTO has taken the initiative of gathering a U.S. government interagency group to discuss anticounterfeiting public awareness campaigns. We recently hosted an interagency roundtable at which agencies shared their experiences with IP public awareness campaigns, particularly those focusing on anti-piracy or anticounterfeiting. I have also recently announced a national video contest to enhance public awareness, which was unveiled publicly on July 27 during the National Trademark Exposition. See www.uspto.gov/TMVideoContest for more information.
Is there any push to expand your efforts in the anticounterfeiting space?
The USPTO is always looking for ways to improve or expand our IP enforcement efforts. We’re already active in this space, working closely with our enforcement counterparts in the U.S. government. One such vehicle is the National Intellectual Property Rights Center (IPR Center), which stands at the forefront of the government’s response to global IP theft and enforcement of international trade laws. OPIA also works with international intergovernmental bodies, such as the International Criminal Police Organization (INTERPOL), the World Customs Organization, and WIPO, to provide technical assistance to law enforcement officials throughout the world.
How do you get the message out to brand owners and other stakeholders?
Education and building respect for IP are key elements of any effective IP enforcement framework. The USPTO has a history of promoting educational public service announcements and anticounterfeiting/piracy campaigns, with support from the Enforcement Team and IP attachés.
Through our own public awareness campaigns and educational programs that we call “road shows,” we aim to educate both owners and consumers. For example, a “Fake Drugs Kill” campaign was held in Southeast Asia with the goal of building awareness among tourists that their health is at risk from the purchase of counterfeit medicines from unlicensed vendors. As to the “road shows,” trade experts and attorneys from the International Trade Administration, the USPTO, and elsewhere in the Department of Commerce conduct seminars around the United States on how businesses and individuals can protect and enforce their IP rights, both here and abroad.
We have learned that effective messages differ depending on cultures, products, demographics, etc., so we are constantly evaluating and revisiting our efforts based on the intended audiences.
What are some of the biggest challenges you face in your efforts to combat counterfeits?
The most fundamental challenge for USPTO attorneys and attachés lies in working to help our trading partners to establish an effective IP enforcement framework, so as to ensure U.S. businesses’ rights are enforceable wherever they choose to operate. In addition, the Internet and rise of e-commerce have created a more fluid and anonymous medium for selling pirated or counterfeit goods, making IP enforcement even more challenging.
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U.S. Government Resources for Brand Owners
What advice do you have for brand owners about working with U.S. government resources on anticounterfeiting issues?
First and foremost, register your trademarks in the United States and abroad. You cannot enforce your rights as effectively as possible if you have not first taken steps to protect them.
Second, make use of available resources. These include the following government resources:
What is the best way for brand owners to contact you?
- The STOPfakes website (www.STOPfakes.gov) is a good starting point. STOPfakes was designed as a one-stop resource location for information prepared by different government agencies, to educate and assist businesses, particularly small and medium-sized enterprises (SMEs), as well as consumers, government officials, and the general public. It includes business guides, consumer guides, and other information related to IP protection and enforcement.
- If a brand owner has information regarding importations of infringing goods, the IPR Center is a logical next step. IP owners as well as consumers can report violations of IP rights, including counterfeiting, by clicking on the Report IP Theft button (www.iprcenter.gov).
- If brand owners are doing business abroad, our IP attachés are a great resource. They can provide information to help U.S. stakeholders entering foreign markets or seeking to combat counterfeiting in their countries or regions. A full listing of all IP attaché offices can be found at https://www.uspto.gov/learning-and-resources/ip-policy/intellectual-property-attach-program/find-attach.
I am always happy to make myself available to meet with trademark owners. I can be reached at (571) 272- 8901 or via email at email@example.com.
On issues involving OPIA resources, including the IP attachés
, Shira Perlmutter, Chief Policy Officer and Director for International Affairs, is available. Ms. Perlmutter can be reached at (571) 272-9300 or at firstname.lastname@example.org.
© 2018 International Trademark Association