American Bar Association
Section of Intellectual Property Law: TRADEMARKS & UNFAIR COMPETITION DIVISION

Section of Intellectual Property Law:

Message From The Chair

Welcome to the 2015-2016 ABA Committee year in DIVISION II-TRADEMARKS & UNFAIR COMPETITION!

We have a lot of exciting projects underway, and hope that you will join us as we work through them. Whether you are looking to participate actively in developing ABA or IPL Section policy on a particular trademark or unfair competition topic, or whether you are here just to learn more about a new practice area, we are glad you are here.

Below, we’ve identified the Scope of each of our committees. If you find see topics of interest, we encourage you to visit the individual committee’s page and click “Join Our Committee” on the upper right. Then you will receive any written updates from committee chairs about current activities of the committee, participate in committee-wide topical discussions, participate in committee calls, and (if you sign up to be a voting member – see below) you can participate in research and developing policy within the IPL Section, which can perhaps translate to the ABA as a whole.

Many of our committees also work jointly with committees from other divisions. For instance, our Trademark Legislation Committee has held joint conference calls with Copyright Legislation Committee members when a particular bill pending before Congress had both trademark and copyright implications (e.g., the Stop Online Piracy Act (SOPA), Protect IP Act (PIPA) and OPEN). Fostering that cross-divisional partnership makes for very robust discussions that take into account various perspectives.

Over time, our committee structure can change. For instance, we used to have separate committees that dealt with federal trademark legislation (former Committee 201) and state trademark legislation (former Committee 204). Now both federal and state legislation are considered within a single committee: Trademark Legislation.

Similarly, research and recommendations about domain name infringement cases previously fell only under the Trademark Litigation Committee, and now are handled mostly by relatively new committee on Trademarks and the Internet. (Cross-committee discussions among other stakeholders within the Division about Internet-related issues still occur – and are encouraged.)

So, please keep checking back to learn about new developments within Division II. We hope to “meet” you – either by phone during conference calls or in person at our various in person meetings. This year, our main Section meeting is IPL Spring 2016, to be held in Bethesda, MD in April 2016 (details here). Section Members also gather at the ABA’s Annual Meeting to be held in San Francisco, CA in August 2016, and the IPL Section is beginning to develop a West-Coast annual CLE meeting to be held during the fall season (not yet scheduled). As a result, there will be many opportunities for you to network with other colleagues in the trademark/unfair competition space and to learn about new areas of the law.

We look forward to meeting you!

James Davis, Chair
Christina D. Frangiosa, Vice Chair
Rick Biagi, Special Advisor

Subject Matter Coverage of Division II Committees

Division II focuses on trademarks, trade names, branding, unfair trade practices, unfair competition, false advertising, counterfeiting and domain name infringement – essentially any subject area that falls within federal, state and international trademark and unfair competition laws. In order to cover this broad area, the division is broken into several specific committees covering the topics below. We hope you will visit the Committee pages (see links in the sidebar to the right) and sign up!

Trademark LEGISLATION Committee
Scope of Committee: Pending legislation relating to domestic trademark laws or affecting trademark rights and related unfair competition laws and proposals for undertaking structural changes to or other significant improvements in operation of domestic trademark and related unfair competition laws, including, whenever appropriate, working in cooperation and collaboration with other relevant committees.

INTERNATIONAL Trademark Treaties & Laws Committee
Scope of Committee: Issues arising out of differences in the trademark and related unfair competition laws and practices of countries outside the United States, including:
(1) the rights of United States citizens to obtain trademark protection in other countries and the rights of foreign trademark owners to obtain trademark protection in the United States;
(2) the laws of foreign countries and of the United States relative to the rights of exportation and importation of trademarked goods; and
(3) the international conventions and treaties involving trademark rights and related matters of unfair competition; and
Cooperation with other committees and entities, such as the ABA Section of International Law.

USPTO Operations Relating to Trademarks And EX PARTE Trademark Practice Committee
Scope of Committee: Practice before the USPTO with respect to the preparation, filing, and prosecution of trademark applications, the registration of trademarks, and ex parte trademark matters not within the scope of other committees, including:
(1) the administration of the trademark examining operation of the USPTO and its fees and services;
(2) ex parte appeals to the Trademark Trial and Appeal Board; and
(3) changes to the TMEP, the TBMP, and the Trademark Rules of Practice.

USPTO Trademark Affairs INTER PARTES Committee
Scope of Committee: Practice before the USPTO with respect to inter partes proceedings before the Trademark Trial and Appeal Board, including
(1) the administration of the Board and its fees and services,
(2) Board procedure and
(3) changes to the TBMP and the Trademark Rules of Practice.

Trademark TRANSACTIONS Committee
Scope of Committee: Issues related to the laws, regulations and practice at both the federal and state level, that impact trademark transactions, such as trademark licensing, security interests, due diligence in trademark acquisitions and audits, including, whenever appropriate, working in cooperation and collaboration with other relevant committees.

Trademark LITIGATION Committee
Scope of Committee: Practice in the state and federal trial courts in cases involving trademarks, trade dress, trade identity and related unfair competition claims; proposals for improvements in such practice, including decreasing costs and length of pendency of lawsuits; and cooperation with other relevant committees, as well as other ABA entities, on issues relating to the Federal Rules of Civil Procedure, federal and state local trial court rules or other trial practice issues arising under law. Specific areas of focus include:
(1) conflicts between trademarks, trade names and corporate names;
(2) dress of goods and other means of designating source or sponsorship;
(3) product simulation law not involving patents, copyrights or trade secrets;
(4) protection of characters, formats and titles of literary works and the like;
(5) trade libel, disparagement and false advertising and comparative advertising;
(6) protection against commercial exploitation of an individual’s identity;
(7) issues related to dilution and likelihood of dilution; and
(8) issues pertaining to interpretations of Sections 43(a), (b) and (c) of the Lanham Act, 15 U.S.C. §§ 1125 (a), (b) and (c).

Trademarks and the INTERNET Committee
Scope of Committee: Issues related to the Internet and the Internet Corporation for Assigned Names and Numbers (“ICANN”) that concern trademarks and related unfair competition issues, specifically:
(1) initiatives of ICANN’s Intellectual Property Constituency (“IPC”) of the Domain Name Supporting Organization (“DNSO”);
(2) policies for managing generic top level domains (“gTLDs”);
(3) issues relating to online infringement, dilution and matters of unfair competition, and domain names in the United States, including statutory developments, case law and litigation;
(4) practices of trademark registration of domain names by intellectual and industrial property offices around the world;
(5) international litigation and legislation involving trademarks, matters of unfair competition and domain names;
(6) trademarks as they relate to issues of hyperlinking and framing;
(7) trademarks and meta tags, search engine manipulation and other like uses concerning trademarks on the Internet;
including, whenever appropriate, working in cooperation and collaboration with other relevant committees.

Interested in ABA-IPL Policy?

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ABA-IPL Section rules require that Committee members voting on a Committee's policy resolutions be registered as voting members of that Committee. If you wish to participate as only an "information-only" member of the Committee, you are welcome to do so, and this step is not required.

Click here to become a voting member of your selected ABA-IPL Committees.

Registration as a voting member is non-recurring: you only need to register once and that registration remains current as long as you remain an ABA-IPL Section member. Lapse in ABA or Section membership may require re-registration as a voting member. To revert back to "information-only" membership status, please contact the Chair of your Committee, or Section Administrative Assistant Jessie Terry

Please note: Only Lawyer members of the ABA-IPL Section are eligible to vote on policy initiatives. Associate and Law Student members are ineligible to vote on ABA-IPL Section policy considerations. There is no limit on the amount of committees for which you may register to vote, but Section rules prohibit voting on initiatives which began discussion in Committee prior to your registration as a voting member in that Committee.



Davis, James


Biagi, Richard
Frangiosa, Christina

Division Committees

Modified by Christina Frangiosa on November 13, 2015

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