Hunton Retail Law Resource

Counterfeit goods continue to become increasingly ubiquitous, presenting a host of issues for both retailers and consumers. In addition to a variety of legal consequences and the sometimes massive effect on companies’ bottom lines, counterfeit and pirated goods are often accompanied by risks to public health and safety and even national security.

The US Patent and Trademark Office (PTO) has decided to begin a dialogue regarding anticounterfeiting and antipiracy strategies that have already “proven effective” and development of new strategies for the future. On May 25, 2023, a request for comments published in the Federal Register. 88 Fed. Reg. 33872. The PTO is inviting written remarks from the public with respect to “observations and insights” on the future of anticounterfeiting and antipiracy and will host at least one roundtable discussion event.

For interested retailers, directions for submission of comments may be found in the Federal Register Notice and via the Federal e-Rulemaking Portal at www.regulations.gov. Registration instructions for both in-person and virtual attendance at the October 3, 2023 roundtable may also be found in the Notice, and at www.uspto.gov/about-us/events/roundtable-future-strategies-anti-counterfeiting-and-anti-piracy.

Specifically, the PTO “welcomes all input relevant to future strategies in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers.”

Full List of Issues for Comment:

1. Please identify current anticounterfeiting and antipiracy strategies and any trends you see in how often these practices are guiding the public’s plans for addressing these issues in the future.
2. Please identify the types of harms you have observed from sales of counterfeited and pirated goods.
3. Please indicate how consumers are educated about the harms and dangers that may result from the use and sale of counterfeited or pirated products.
4. Please describe current anticounterfeiting and antipiracy strategies that may be available, identifying which elements have proven successful and those that have not. Your answer should identify the targets of anticounterfeiting and antipiracy efforts, such as ecommerce platforms, physical markets, and social media.
5. Please identify the challenges you anticipate in the ongoing fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers. Please add information on how those challenges might be addressed.
6. What patterns and trends have you observed in counterfeiting and piracy during the COVID–19 pandemic? Do you anticipate that these patterns and trends will continue past the pandemic?
7. What patterns and trends have you observed in counterfeiting and piracy due to shifts in the economy? Do you anticipate that these patterns and trends will continue? And if so, what impact will they have on any current and future strategic plans to combat counterfeiting and piracy?
8. Please indicate whether any strategic plans to combat counterfeiting and piracy might include collaboration with private or public parties, and if a strategic plan is not collaborative, please explain why not. If a strategic plan does include collaboration, please describe the anticounterfeiting and antipiracy strategies employed in the collaboration.
9. Are you considering new collaborative efforts to combat counterfeiting and piracy? What factors will affect your decision? How might those future collaborations be comprised?
10. Please identify effective technologies for use in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, such as counterfeited product identification devices or advanced algorithms to secure supply chains and identify counterfeited goods online. Please explain how any anticipated strategies will improve an overall anticounterfeiting and antipiracy strategy.
11. Please describe how online enforcement activities intersect with trademark and copyright laws or procedures. Do online enforcement strategies include employing existing trademark laws to combat online counterfeiting? Do online enforcement strategies use existing copyright laws to combat online piracy? If so, please describe in detail those activities, and provide any suggestions for maximizing these practices.
12. Please describe any fraudulent documentation or materials you have observed in the furtherance of online counterfeiting and piracy activity. For example, after reporting infringements to platforms, have you seen fraudulent materials attached to a counter-notification?
13. Please provide any data you have on counterfeiting and piracy, including any data showing how the activities may adversely or disproportionately affect certain industries or companies.
14. Please share your thoughts on what more the USPTO or government and private parties can do to ensure entities, including under-resourced individuals and small businesses, can readily enforce their intellectual property rights against counterfeited or pirated goods. What other solutions have you seen or can you envision?