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.