On January 24th, 2020, the Department of Homeland Security released a report titled “Combating Trafficking in Counterfeit and Pirated Goods.” This report was a response to the Presidential Memorandum that was released on April 3, 2019 titled “Memorandum on Combating Trafficking in Counterfeit and Pirated Goods.” An action called for the Department of Homeland Security’s to “Assess Contributory Trademark Infringement Liability for E-commerce.” As a result, the United States Patent and Trademark Office is hoping to obtain information from intellectual property rights owners, online third-party marketplaces and intermediaries, and other private sector stakeholders, on trademark infringements in the e-commerce setting, and, whether or not to pursue changes in application of secondary infringement standards to other platforms. Specifically, the United States Patent and Trademark Office is seeking:
- Is the court’s current doctrine of secondary infringement liability effective in combating the problem of counterfeit goods sold on the internet? If not, please specify the drawbacks of this approach.
- Have you taken action or defended against secondary trademark infringement claims against an e-commerce platform, online third-party marketplace or intermediary, where the claim was that the seller was facilitating counterfeit goods? What challenges, if any, did you face in making or defending these claims?
- Have you ever chosen not to take action against an e-commerce platform or online third-party marketplace or intermediary because of interpretation of the doctrine of secondary infringement? Would a different interpretation of the doctrine have influenced your decision?
- If you have identified shortcomings in the current application of the secondary infringement doctrine in your answers above, please state how you would resolve those shortcomings.
- Are you aware of any other laws or legal doctrines that could supplement the standard for secondary trademark infringement and reduce the sale of counterfeit foods online?
There are two methods to which you may send your comments and responses to the United States Patent and Trademark Office:
- Electronic Submission:
Submit responses online at https://www.regulations.gov
On the homepage, enter PTO-T-2020-0035 in the “search” box, click “Comment Now” icon, complete required fields, and enter your comments. - Written Submissions:
You may send all written paper submissions to:
United States Patent and Trademark Office
Mail Stop OPIA, P.O. Box 1450
Alexandria, VA 22314
Comments must be received by December 28, 2020 at 5pm.