by Erik M. Pelton
Last week the Department of Commerce (of which the USPTO is a part) released its long anticipated study on trademark litigation tactics. In short, the Trademark Litigation Study essentially says: We conducted a thorough study and there is no problem; and if there were a problem, no significant changes would be needed. Hakuna Matata!
In my opinion, the study’s method and analysis are both critically flawed. The study was, by law, to focus on the experiences of small businesses (the request for comments uses the phrase more than 10 times and the statute creating the study directs it to cover “the extent to which small businesses may be harmed by litigation tactics”). Yet very little attention was given to gathering and considering their perspectives. I share some of my thoughts below, but I will skip a lengthy summary of the Study, as there are many good summaries available:
- IP Law Alert: USPTO Issues Report to Congress on Trademark Bully Study (Fitch Even Tabin & Falnnery)
- BrandGeek: USPTO Reports to Congress on Trademark Bullying
- TechDirt: Commerce Department Releases Useless, Biased Report On Trademark Bullying
- Eric Goldman Technology & Marketing Law Blog
- David Pardue’s Trade Secrets and IP Today: Whitewash: Commerce Department Issues Trifling Report On Trademark Bullying
- Seattle Trademark Lawyer: PTO Report Questions Whether a Problem Exists with Trademark Bullying (Michael Atkins)
- Managing Intellectual Property: Trade Mark Bullies Report Dubbed Disappointing
- Pittsburgh Trademark Lawyer: USPTO Releases Study on Trademark Bullies
What went into the Study?
The study says it is the result of “significant outreach to stakeholders and small businesses.” I beg to differ. There was a request for comments, and it was extended several times to allow for additional comments. But there was little promotion of the request by the USPTO and Department of Commerce. The request for comments was barely, if at all, even mentioned on the USPTO’s facebook page, twitter feed, news releases, and Director’s blog. More significantly, there was a lack of real outreach directed to small business groups and organizations and relevant agencies like the Small Business Administration (SBA). The Study touts a single USPTO roundtable, but it was barely publicized, was put together on short notice, was held in only Detroit, was a small part of a larger program, and did not (to my knowledge) include any specific input from small businesses.
The Request for Comments resulted in 79 comments. That number seems paltry for a government agency with a website that has thousands of visitors and filers every week. Of the comments submitted, the Study spends equal time on (and seemingly equal weight to) the comments from four groups of attorneys compared to the other 75 commenters. As I told Managing Intellectual Property a few days ago, “It’s sort of like asking the football team at the high school whether or not there’s a bullying problem.” The Study also notes that there was outreach “to industry via a large industry organization” and consultation with the Trademark Public Advisory Committee (TPAC). TPAC is a great and very useful organization and its opinion certainly should have been sought – but TPAC does not represent the interests of small businesses. The “large industry organization” is not identified in the report. Legal industry? Trademark industry? We cannot presume that this organization represented the views and experiences of small businesses if they are not willing to disclose its name.
The Study’s Findings & Recommendations
The Study briefly goes through each of the questions asked in the Request for Comments and notes how many commenters identified problems, stated whether changes would be useful, and/or suggested specific changes. Those who described or opined on trademark litigation tactics causing problems clearly outweighed those who did not. Yet the Study concludes each time that there is no real problem and that no real changes are needed.
The Study also includes a summary of current federal agency initiatives related to intellectual property. But to my knowledge, these efforts are mostly in support of enforcement and have nothing specific that would help small businesses or would help those burdened y abuse litigation tactics. None of these other government programs relate specifically to abusive trademark tactics or the dangers to the economy and innovation created by over-enforcement of trademarks. The Study cites the Export Legal Assistance Network as an example to emulate. Yet there is a critical difference between attorneys offering “an initial legal consultation free of charge to companies just beginning to export” and advising small business in responding to the questionable infringement threats, litigation, or TTAB proceedings. For starters, export issues involve no adversarial party! In providing export advices, there is no conflict of interest between big business interests vs. small business interests, or in advising a business to take a position that may be contrary to the position the benefits other clients of the same law firm.
Finally, we get to the recommendations made in the Study. In short, these suggestions are to (1) urge pro bono efforts from private sector, (2) urge more CLE (continuing legal education) programs on trademark litigation issues for attorneys, and (3) enhance outreach from several government agencies.
The first two suggestions are to have the lawyers (the commenters who said there is no real problem) do some small outreach and education on their own. This is a stunning result of the Study because the proposals are so weak. In my comments to the USPTO, I suggested outreach and pro bono efforts; they are not bad ideas. But they are the tip of the iceberg at best and should be among a list of much more significant proposals. I refuse to believe that the two most significant things we can recommend are for the people who said there is no problem to do something about it.
While I think the Study is weak and mistaken in much of its analysis, the trademark and small business public is partially to blame for failing in general to submit comments or to publicize the issues. Perhaps a larger public outcry would have necessitated a different result. Seventy-nine comments does not seem like a large number. No associations focusing on small business issues commented. The National Federation of Independent Business (NFIB), US Chamber of Commerce, and other business and trade groups were silent for the most part. (Note, I reached out to NFIB and US Chamber of Commerce in an effort to have them publicize the Request for Comments; to my knowledge both failed to publish any notice in their newsletters or on their website.) Only a handful of other attorneys and law firms with experience working with small businesses submitted comments. While many have now come forward to criticize the findings of the Study and to tell stories of trademark bully experiences, most of them did not submit comments. The Study should have included greater outreach and should have given greater weight to all of the commenters who took the time to respond.
Is this Study the best that can be done on this issue? In my opinion the Study falls woefully short of a thorough review of the issues and the possibilities of making the system better. I have written to Congress urging public hearings on the issues and the Study. I hope you will do the same.
Note that the USPTO has yet to release any of the comments, but I have obtained some of them via a FOIA request. I have published them here.
© 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
Hakuna Matata Lyrics
Hakuna Matata! What a wonderful phrase
Hakuna Matata! Ain’t no passing craze
It means no worries for the rest of your days
It’s our problem-free philosophy
Hakuna Matata!
Hakuna Matata?
Yeah. It’s our motto!
What’s a motto?
Nothing. What’s a-motto with you?
Those two words will solve all your problems
That’s right. Take Pumbaa here
Why, when he was a young warthog…
When I was a young wart hog
Very nice
Thanks
He found his aroma lacked a certain appeal
He could clear the savannah after every meal
I’m a sensitive soul though I seem thick-skinned
And it hurt that my friends never stood downwind
And oh, the shame He was ashamed
Thought of changin’ my name What’s in a name?
And I got downhearted How did ya feel?
Everytime that I…
Hey! Pumbaa! Not in front of the kids!
Oh. Sorry
Hakuna Matata! What a wonderful phrase
Hakuna Matata! Ain’t no passing craze
It means no worries for the rest of your days
It’s our problem-free philosophy
Hakuna Matata!
Hakuna Matata! Hakuna matata!
Hakuna Matata! Hakuna matata!
Hakuna Matata! Hakuna matata!
Hakuna Matata! Hakuna–
It means no worries for the rest of your days
It’s our problem-free philosophy
Hakuna Matata!
(Repeats)
I say “Hakuna”
I say “Matata”
Thanks for your analysis. It’s interesting that the paper I submitted a day earlier based on the same comments the uspto used got somewhat opposite results.
Reid, thanks for your comment. Can you elaborate? What paper did you submit? Can you give readers a link to your paper?