INTA Testifies at United States House Judiciary Subcommittee Hearing on Counterfeits

Published: August 1, 2019

The United States House Committee on the Judiciary held a key anticounterfeiting hearing on July 18, entitled, “Counterfeits and Cluttering: Emerging Threats to the Integrity of the Trademark System and the Impact on American Consumers and Businesses.”

Held before the Subcommittee on Courts, Intellectual Property, and the Internet, the hearing addressed such crucial issues as impediments for trademark owners to objtain injunctive relief.

INTA successfully requested the House Judiciary Committee to include issues related to the enforcement of the Lanham Act, the federal statute that governs trademarks, service marks, and unfair competition. INTA Legislation and Regulation Committee Chair Peter M. Brody (Ropes & Gray LLP, USA) provided the testimony.
(Read the full press release here.)

Advocacy on this issue stemmed from INTA’s May 2017 Board Resolution, which addresses the inconsistency in the courts’ application of the rebuttable presumption of irreparable harm. The Resolution calls for the Lanham Act to be amended to provide that, when a claimant seeks injunctive relief under Section 34 of the Act, a rebuttable presumption of irreparable harm will apply where there has been a finding of liability-or, in the case of a preliminary injunction, a finding of probable success on the merits of the claim.

In his testimony, Mr. Brody requested that Congress consider legislation to amend the Lanham Act to restore “an endangered, but vital principle”-a presumption of irreparable harm. “This legislation will ensure that injunctive relief is available in appropriate cases involving trademark counterfeiting, infringement, dilution, false advertising, and cybersquatting,” he said.

He added that courts in several circuits have erroneously interpreted a U.S. Supreme Court decision regarding irreparable harm in a patent case as applicable to trademark enforcement cases. This, Mr. Brody noted, has created insurmountable obstacles for trademark owners to obtain injunctive relief. Further, he pointed out the challenges in effectively remedying reputational harm merely through an award of damages. Members of Congress from both sides of the aisle expressed interest in gaining further understanding of how this proposed legislative change could assist consumers and businesses.

Other witnesses at the hearing focused on a variety of issues.

The first panel featured government witness Mary Boney Denison, United States Patent and Trademark Office (USPTO) Commissioner for Trademarks, who talked about the USPTO’s initiatives to maintain the integrity of the USPTO Register. Ms. Denison focused on challenges to businesses faced with fraudulent trademark filings, and explained how the agency is trying to tackle this issue. Specifically, she described technological tools the USPTO is testing to assist with the review of applicants’ specimens. Ms. Denison also discussed the creation of a task force charged with focusing on assessing specimens and helping to identify fraudulent filings.

Responding to his testimony, members of Congress expressed great interest in conducting further dialogues with the USPTO on how to decrease fraudulent filings, and to discuss opportunities to support the agency with potential legislation or other initiatives.

The second panel featured academic, private sector, and association witnesses. Providing a scholarly viewpoint, Jeanne Fromer, Professor of Law at the New York University School of Law, testified about her research on “clutter” in the U.S. Trademark Register and its effect on preventing businesses and individuals from obtaining trademark protection.

The next witnesses, representing a variety of councils and associations, presented testimony on how the sale of counterfeit goods online directly hurts consumers and challenges the economy. Members of Congress conveyed their willingness to work with the intellectual property (IP) community to address the immense challenges that online counterfeits pose to consumers and businesses.

This hearing illustrated the bipartisan interest within the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, in working with the IP community in many areas to support and enhance the IP system in the United States-including providing support to the USPTO, examining the legislative opportunities to assist businesses and consumers, and finding ways to increase and enhance IP enforcement.

INTA’s Podcast: Brand & New Features USPTO Director Andrei Iancu

INTA’s innovative and engaging podcast series, Brand & New, hosted an episode on July 16 with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, which is the world’s largest IP office.

In the podcast, Mr. Iancu shares what is on his action-item list to advance the USPTO, including his focus on examination, engagement with stakeholders, and opportunities to utilize technology. He also discusses the role of the USPTO as a leader in helping to expand innovation and support the global IP ecosystem, including IP enforcement through outreach. Additionally, he notes the importance of engaging with stakeholders and generating ideas and perspectives for the entire IP ecosystem.

Later this summer, Brand & New will feature David Kappos, who served as Under Secretary of Commerce for Intellectual Property and Director of the USPTO from 2009 to 2013. The episode is part of a series of interviews with current and former leaders of trademark offices in various parts of the world.

INTA’s free Brand & New podcast are available on Apple Podcasts, Google Podcasts, Spotify, and Stitcher. (Consider subscribing, so you never miss a podcast!) We post a new episode every other Tuesday and maintain an archive of previous podcasts.

USPTO Begins Search for a New Trademark Commissioner

After many years of dedicated and distinguished service to the USPTO and the trademark community, Commissioner for Trademarks Mary Boney Denison will be retiring in December. The USPTO is now searching for her replacement.

The Commissioner for Trademarks oversees and has responsibility for all aspects of the federal agency, including policy, operations, and budget relating to trademark examination, registration, and maintenance; and interacts on a regular basis with a wide array of stakeholders domestically and internationally.

Interested candidates should contact USPTO Chief Administrative Officer Fred Steckler, at [email protected] or 571-272-8815.

INTA Welcomes New Director of Washington, D.C. Office

INTA is pleased to announce the appointment of Jennifer M. McDowell as Director, Government Relations in its Washington, D.C. office. In this role, Ms. McDowell will serve as the Association’s liaison with federal and state policy makers and government officials, contribute to the development of INTA’s positions on national and global intellectual property (IP) issues, and support related INTA committees.

INTA also announces the retirement of Deborah Cohn, Senior Director of Government Relations, effective August 2. Ms. Cohn joined INTA in 2015, after 31 years at the USPTO. During her last four years at the USPTO, she served as Commissioner for Trademarks, where she led legal policy and examination operations for the federal registration of trademarks in the United States.

“We thank Debbie tremendously for her years of service to the IP field. Her substantive achievements leave an impressive mark on not only INTA, but the trademark community as a whole,” INTA CEO Etienne Sanz de Acedo said.

Read the full press release here.

INTA’s Washington, D.C., Representative Office represents the Association’s 2,361 members in North America. Working in collaboration with staff at INTA’s headquarters in New York City, the Washington, D.C, Representative Office leads the Association’s policy, membership, marketing, and communications initiatives in Canada and the United States. To learn more about INTA’s activities in the region, please contact Jennifer McDowell, Director, Government Relations, at [email protected].

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association