ABA-201: TRADEMARK LEGISLATION COMMITTEE
MINUTES – TUESDAY, NOVEMBER 19, 2013
Introduction
- Opening remarks (Jim Bikoff)
Legislative Updates
(a) Federal
a. HR 2582 – PATENT Jobs Act. To end the application of the Sequester to the
USPTO. Introduced June 28, 2013. ABA supports this bill. No new
movement. (Rob Newman monitoring status)
b. HR 3167 – Playing Fair on Trade and Innovation Act. To amend the Trade
Act of 1974 such that countries are ineligible for Generalized System of
Preferences (GSP) trade status with US if they fail to provide adequate and
effective protection for intellectual property rights. Introduced September 20,
2013. Remains in House Ways and Means Committee. No new movement.
(Jessica Flores monitoring status)
c. Other federal bills we are monitoring:
i. S 662 Trade Facilitation and Trade Enforcement Reauthorization Act
2013. Hearings held in Senate Finance Committee on May 22, 2013.
U.S. Chamber of Commerce and 35 other organizations sent a letter of
support to two senators urging that the legislation reach the floor this
year. National Association of Manufacturers also wrote a letter in
support. Jessica will draft a proposal in support of the Act on behalf of
the committee. (Jessica Flores)
ii. S 660 – Innovation Through Trade Act of 2013. To amend the Trade
Act to establish the position of Chief Innovation and Intellectual
Property Negotiator in the Office of the USTR. Introduced March 22,
2013 and referred to Finance Committee. No new movement. (Jessica
Flores)
iii. HR 22 Foreign Counterfeit Merchandise Prevention Act. Referred to
Committee on January 25, 2013. No new movement. (Jessica Flores)
iv. HR 778 No Stolen Trademarks Honored in America Act. Referred to
Committee on April 15, 2013. A number of new sponsors signed on.
Team conference call scheduled for Dec. 6, 2013 to discuss. (Matthew
Hintz / Justin Ourso / Abi Oyewole / Khouloud Elmasri) v. HR 3309 Innovation Act. Introduced Oct. 22, 2013. This is primarily a
patent bill addressing patent assertion entities (patent trolls). INTA
supported this bill and provided trademark licensing provisions it
originally developed to amend the Bankruptcy Code (reflected in
Patent Transparency and Improvements Act of 2013). ABA opposed
1 the entire bill. On November 20, House Judiciary Committee voted to
favorably report H.R. 3309 to the full House. Monitoring for the
publication of two confidential memos regarding this bill. Team
working on a summary report of the bill, TM provisions in particular,
and positions of the ABA, the National Bankruptcy Conference, and
the Rules Committee of the Judicial Conference, to be presented at
next conference call, on Jan. 21, 2014. (Justin Ourso / Ryan Fountain)
vi. HR 1278 Non-Disparagement of Native American Persons or Peoples
in Trademark Registration Act of 2013. Referred to Committee on
April 15, 2013. No new movement. Action outside of the bill pushing
Redskins to change the name. (Elan Raffel)
(b) State/Local laws we are monitoring:
a. Utah and Texas passed bills to clarify registration of trade names at the state
level and related rights. (Kathryn Kent)
b. Georgia -- recently passed a trademark bill allowing it to tax users of the
Georgia Grown mark to promote their agricultural products. (Kathryn Kent)
c. Washington – recently passed a trademark bill allowing it to tax marijuana
brand names and any related trademarks. (Kathryn Kent)
d. West Virginia – law recognizing tribe rights in certain names. Still pending.
(Kathryn Kent)
e. Minnesota HR 1116 (originally Minnesota Small Business Protection Act; HR
6215) -- targets trademark bullying. Introduced in March 2013. No new
movement and none projected before the end of the session Dec. 2013.
(Kathryn Kent/Matthew Hintz)
f. Vermont consumer protection law amendments (Kathryn Kent)
g. NYC Council Int-0544-2011: A local law to amend the administrative code of
the city of New York, in relation to the purchase of counterfeit goods.
Introduced by City Council on April 28, 2011; Sponsored by Margaret Chin;
Laid over by Committee on June 13, 2013. Mayor’s office did not support the
bill. Session ends shortly. (Summary by Matthew Hintz submitted to
Committee)
h. NYC Council Int-1173: A local law to amend the nuisance abatement law to
include violations related to counterfeit trademarks (e.g., a building used in
connection with storing/manufacturing counterfeit goods could be construed a
nuisance). Introduced on the Oct. 30. (Kathryn Kent/Matthew Hintz)
i. Kathryn/Matthew will put together an alert to on new/revised state statutes for
the ABA monthly eNews update. (Kathryn Kent/Matthew Hintz)
2 Other Updates
(a) Task Force on Online Piracy & Counterfeiting. During Nov. 20 teleconference, team
agreed on next steps and deadlines: comments to the draft, executive summary and
conclusion in particular, due by December 15, 2013. Final paper expected for April 2014
Section Meeting. (Chris Frangiosa monitoring status/activity)
Subcommittees
(b)
(c)
(d)
(e)
State Legislation (chair: Kathryn Kent; vice chair: Matthew Hintz)
Foreign Counterfeiting Prevention (chair: Jessica Flores)
Fashion Design (chair: Jennifer Rothman)
Suggestions for new subcommittees
Events
(a) April 2014 Meeting
a. Proposal for a panel entitled “Shutting Down Rogue Websites” jointly sponsored
by the Trademark Legislation, Copyright Legislation, International Trademark
Treaties & Laws, and International Action Group Committees. (Proposal
accepted; confirming speakers)
b. Call for Papers for the new ABA-IPL Intellectual Property Law Scholarship
Symposium (Susan Montgomery)
(b) August 2014 Annual Meeting
a. Proposal for panel on new court decisions on online piracy and counterfeiting
(Preliminary acceptance of proposal; confirming speakers)
b. Proposal for panel on dangerous counterfeit products (Preliminary acceptance of
proposal; confirming speakers)
(c) Webinars – topic raised for future discussion
(d) Articles – topic raised for future discussion
a. ABA seeking Peer Reviewers for ABA-IPL Section book(s) on trademark topics
–contact info for the topics seeking reviewers sent to Amy Mandel of ABA.
b. ABA seeking content for the ABA monthly updates.
New Business
(a) Update on USPTO IPR Attache' Discussion on Fighting Piracy and Counterfeiting (Jim
Bikoff / Phillip Barengolts)
(b) Lanham Act Update: USPTO has proposed to repeal Section 21 of the Lanham Act, 15
U.S.C. § 1071(b) eliminating district court appeals from Trademark Trial and Appeal
Board in ex parte cases. Bill to be monitored and committee members to participate in a
cross-committee task force to determine a position on the proposal and to introduce a
resolution to the Section’s Council.
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