INTA Commends United States Congress for Inclusion of Lanham Act in…

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Mary Denison, United States Patent and Trademark Office Commissioner for Trademarks, and Peter Brody, Partner at Ropes & Gray LLP. Mr. Brody provided INTA's testimony at the hearing.

The International Trademark Association (INTA) applauds the United States House Committee on the Judiciary for holding a hearing today, “Counterfeits and Cluttering: Emerging Threats to The Integrity of the Trademark System and the Impact on American Consumers and Businesses.” The hearing took place before the Subcommittee on Courts, Intellectual Property and the Internet.

INTA was successful in its request to the House Judiciary Committee to include in a hearing agenda issues related to the enforcement of the Lanham Act—the federal statute that governs trademarks, service marks, and unfair competition. The Lanham Act protects the owner of a federally registered trademark against the use of similar marks, or false advertising, that are likely to cause consumer confusion, and allows for both monetary and injunctive relief.

At issue are impediments for trademark owners to obtain injunctive relief.

“Trademark infringement or false advertising often deceive consumers into buying products that are not what they believe them to be,” said INTA CEO Etienne Sanz de Acedo. “Not only does this hurt the consumer, it also hurts the reputation of the business that is the target of the infringement or advertisement. The Lanham Act has long provided brand owners with a legal remedy to address this issue, with injunctive relief typically being the only effective solution.”

Providing INTA’s testimony was Peter M. Brody, Partner of the Washington, D.C., law firm of Ropes & Gray LLP. Mr. Brody serves as Chair of INTA’s Legislation and Regulation Committee’s U.S. Subcommittee.

He specifically advocated for legislation to amend the Lanham Act to restore what he called “an endangered but vital principle”—a presumption of irreparable harm. 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 has created an obstacle to petitioners obtaining injunctive relief.

“The legislation will restore this long-standing principle to appropriate cases involving trademark counterfeiting, infringement, dilution, false advertising, and cybersquatting,” Mr. Brody said.

“Reputational harm is difficult to remedy effectively through a mere damages award. Consequently, the federal circuits had long held that a showing of likelihood of consumer confusion in Lanham Act cases led to a rebuttable presumption of irreparable harm to the business whose reputation was at risk,” he said. “Assuming all other elements of the test for injunctive relief were met, that business could generally obtain an injunction preventing further such harm.”

Recently, the circuit courts have been split in their decisions, with some discarding this rebuttable presumption. “This has occurred even where a plaintiff has shown a likelihood of success in the litigation, making it overly difficult to obtain injunctive relief in such cases,” noted Mr. Brody.

In May 2017, INTA’s Board of Directors passed a resolution to address the inconsistency in the courts’ application of the rebuttable presumption of irreparable harm. The resolution called for the Lanham Act to be amended so as 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 motion for a preliminary injunction, a finding of probable success on the merits of the claim.

Today’s hearing also focused on two other topics: One is the potential relationship between counterfeiting and online platforms. The other is the recent increase in fraudulent trademark filings, including steps that have been taken and others now under consideration to address this problem and the larger issue of the integrity of the U.S. Register.

About the International Trademark Association (INTA)
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property to foster consumer trust, economic growth, and innovation. Members include more than 7,200 trademark owners, professionals, and academics from 187 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Brussels, Santiago, Shanghai, Singapore, and Washington, D.C., and representatives in Geneva and New Delhi. For more information, visit http://www.inta.org.

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