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USPTO Advances Recommendations from DHS Report on Combating Trafficking in Counterfeit and Pirated Goods

February 11, 2021

USPTO Advances Recommendations from DHS Report on Combating Trafficking in Counterfeit and Pirated Goods

By: Travis Johnson, IACC Vice President – Legislative Affairs, Senior Counsel

Late last year, the U.S. Patent and Trademark Office published requests for comments, seeking input from the public regarding the implementation of two recommendations included in the Department of Homeland Security’s January 2020 Report to the President entitled, “Combating Trafficking in Counterfeit and Pirated Goods.  The IACC recently provided feedback to the USPTO in connection with each of these inquiries, as discussed below.

          a. Secondary Liability in E-Commerce

Action Item 9, detailed in the DHS Report, called for an assessment of contributory trademark infringement liability in the e-commerce context; the PTO’s request for comments sought input from the public by posing six questions regarding the current legal landscape and applicability of secondary liability theories in the online environment, and information regarding whether the existing framework serves to advance the protection of intellectual property, and of consumers, while fostering a robust and trusted ecosystem. 

Based on feedback provided by IACC members, we asserted that our laws have not kept pace with technology, and amendments to provide greater certainty about the duties and expectations of stakeholders should be considered as a means to addressing the explosive growth in online trafficking that we’ve witnessed over the past two decades.

Our complete comments are available here.

          b. National Consumer Awareness Campaign

The eleventh action item enumerated in the DHS Report encouraged the development of a nationwide campaign to raise consumers’ awareness of issues relevant to the trafficking of counterfeits and the impacts of that illicit activity on consumers, governments, and legitimate businesses.

While the IACC supports the concept outlined in the DHS Report, and is encouraged by the USPTO’s efforts to develop a public awareness campaign; our comments underscore the importance of taking a thoughtful, data-driven approach to doing so.  To that end, we’ve recommended that the U.S. government begin by conducting foundational research to identify the most significant factors that lead to consumers’ purchasing counterfeit goods, and what messaging would be most effective in changing those behaviors.  Doing so should allow for a more impactful campaign. 

Our comments are available here.

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