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October 14, 2015

Comments from Erik M. Pelton & Associates, PLLC


Regarding U.S. Intellectual Property Enforcement Coordinators
Development of the Joint Strategic Plan on Intellectual Property Enforcement
The following are the comments of the firm of Erik M. Pelton & Associates, PLLC of
Falls Church, Virginia, in response to the Request of the U.S. Intellectual Property Enforcement
Coordinator for Public Comments: Development of Joint Strategic Plan on Intellectual Property
Enforcement published September 1, 2015. The full request for comments was published in the
Federal Register in Vol. 80, No. 169 at page 52800.

Introduction
Intellectual property is one of Americans greatest resources. American inventions power
the global economy and solve our problemsboth large and small. American books, movies,
and music spread American ideas and values across the world, and American brands serve as
cultural and economic ambassadors. Intellectual propertys importance, both at home and abroad,
grows continuously. While creativity and innovation continue to flourish under our existing
intellectual property system, we cannot rest on the status quo. To encourage innovation and
protect American businesses and ideas at home and around the world, we must strengthen our
intellectual property system and ensure that it works for all participants in the American
economy, large or small.
While U.S. IP policy has emphasized sanctions and punishment, as well as use of trade
agreements to push for reduced infringement abroad, our IP system would benefit from greater
investment in efficiencies and education that would strengthen public access and save US
businesses time and resources. US policy must lay a stronger foundation on which businesses
and individuals can create and innovate by shoring up our IP infrastructure and arming
businesses and individuals with the understanding of what intellectual property is, why it
matters, and what our laws achieve.
The Joint Strategic Plan should emphasize investing in the US IP infrastructure (such as
the outdated computer systems of the Copyright Office and the Patent and Trademark Office)
and educating the public and businesses about IP law. It should also emphasize fairly balancing
the interests of both large and small players. In recent years, we have seen increased public

backlash against intellectual property laws. This is, in part, caused by reasonable perceptions that
the law is too often used as vehicle for those with greater resources to bully small businesses and
individuals. But it is also caused by fundamental misunderstandings about what intellectual
property is, how our IP system works, and what the law does and does not do. Such abuses of the
intellectual property system and the lack of public knowledge impose significant burdens on the
economy and, rather than encouraging innovation and competition, stifle the ability of small
businesses and entrepreneurs to thrive. These burdens force many small businesses to spend
valuable time and resources defending against unnecessary claims and often result in the
abandonment of legitimate and valuable IP rights, restricting innovation and damaging our
economy.
An increased focus on efficiencies and education would reduce the amount of violations
of IP rights, as well as reduce costs of IP owners and the societal and economic burdens caused
by IP violations. Less need for enforcement would reduce the burdens on businesses and on the
government, both of whom would save time and resources currently spent litigating and policing
IP.
Our suggestions described herein aim to achieve more education to prevent infringement
of IP rights, as well as to strike a balance with the damage caused by rising over-enforcement of
IP rights. Note that the initiatives described herein require relatively low expenditures and are
very likely to result in savings to both the government and the overall economy if they achieve
the intended result of reducing infringement of intellectual property.

About Erik M. Pelton & Associates, PLLC


Erik M. Pelton & Associates, PLLC (EMP&A) is a boutique trademark law firm located in
Falls Church, Virginia. Established in 1999 by Mr. Pelton following two years of working for the
U.S. Patent and Trademark Office as a trademark examiner, EMP&A has registered more than
two thousand U.S. trademarks for clients who are overwhelmingly small businesses. The firm
has represented dozens of small business plaintiffs and defendants in all phases of trademark
disputes and Trademark Trial and Appeal Board opposition and cancellation proceedings.
EMP&A attorneys are actively involved in the International Trademark Association (INTA) and
the American Bar Associations Intellectual Property Law section (ABA-IPL).

Strategic Recommendations
Identified Issue: Increase education and outreach to small business owners and individuals
regarding the importance of protecting intellectual property and IP infringement issues.
Although the USPTO and the SBA have made good efforts to increase their outreach to
small businesses about intellectual property, a great deal more can be done. Providing clear
educational resources about intellectual property rights tailored to entrepreneurs and small
businesses is perhaps the most efficient way to reduce the costs of IP enforcement of all parties.
Educating entrepreneurs serves several important purposes. First, it encourages small businesses
to avail themselves of intellectual property protection early, so that they are better positioned to
protect themselves from their innovations in the marketplace. Second, it allows small businesses
to protect themselves better from predatory threats of litigation. Third, it prevents infringement
by businesses, who will have a better understanding of what intellectual property rights are, ways
to know whether an activity may be infringing the rights of others, the importance of intellectual
property to their business and the economy, and what can be done with someone is accused of
infringement.
More workshops, seminars, videos, podcasts, and printed and online materials would all
be valuable resources to small businesses. These materials and events should cover not just
topics such as Benefits of Registering Your Trademark, but also basic information about what
does and does not constitute infringement, such as What is Fair Use, and When Does it Apply?
We suggest that the Department of Commerce, Library of Congress, U.S. Patent and Trademark
Office, and Small Business Administration, along with other agencies, address this issue.

Identified Issue: Increase education to students about intellectual property and its role in our
society.
Todays students are tomorrows innovators. Better education about intellectual property
rights will encourage and incentivize the creativity and innovation of students, both during the
course of their education and in the future as they begin their careers. Education will also reduce
infringement. Young people are usually among the first to embrace new technology, and it is no
surprise that young people and students were at the forefront of the digital piracy revolution. Due
in part to the cultural shift of that era, todays young people do not view intellectual property
rights in the same way as previous generations did. Young people no longer buy music or

movies, but license and streamoften, the intellectual property rights involved in their everyday
life are hidden away or obscured by contracts that are clicked through without reading. It is
important that they understand the rights that form the basis of these uses, both to encourage
them to create and protect their own intellectual property and to reduce infringement.
Government agencies could develop curricula for schools at all levels about intellectual
property, teaching students what intellectual property is, how it is protected, what happens when
it is infringed, and why it is important to our economy and society. For example, the popularity
of STEM and STEAM initiatives in our schools present a wonderful opportunity for presenting
IP curriculum.

Identified Issue: Help protect small businesses before government agencies.


The complexity of IP enforcement procedures before government agencies often induces
small businesses and entrepreneurs to unnecessarily yield their valid IP rights when challenged
by more sophisticated parties. For example, those without a trademark attorney on call will be
more likely to let a notice of opposition or cancellation go unchallenged simply because their
rights and the process for preserving them are not clearly presented by the government in
laymens terms. In addition, small businesses that do not attempt to fight such challenges are
disproportionately harmed by delay, uncertainty, and costs imposed throughout the proceedings.
To help level the playing field, the government can clarify and simplify the enforcement process
and reduce the time and cost of proceedings. We suggest the U.S. Patent and Trademark Office
provide leadership in making additional information and training about these issues targeted for
and available to small businesses.

Identified Issue: Ensure that small businesses are a party of policy decision-making processes.
Small businesses employ the majority of American workers, and over the last 20 years
have out-paced large businesses in jobs added to the economy. Despite their importance to the
American economy, the small business community rarely gets a seat at the table. The small
business community is underrepresented in Congressional hearings related to IP, other public
agency intellectual property hearings, conferences and seminars, and at the Public Advisory
Committees (TPAC and PPAC) of the USPTO. We suggest that Congress and Federal agencies

encourage and invite participation from the SBA and from the small business community in
future hearings and agency activities that relate to intellectual property.

Identified Issue: Improve transparency in trade negotiations involving intellectual property.


While the need for some degree of confidentiality in trade-negotiations is understandable,
many trade negotiations include provisions regarding intellectual property laws and regimes.
Any agreements or laws that can affect the rights of American intellectual property owners,
either at home or abroad, should be subject to public comment. None of this is possible when
such agreements are negotiated and approved without any public disclosure.

Identified Issue: Enhance availability of and access to government data.


The government maintains myriad databases related to intellectual property, including
but not limited to the registers of patents, trademarks, copyrights, and customs recordations. An
investment in providing greater distribution of this data will help businesses, academics,
journalists, and others better study and understand trends, history and information in the IP field.
The potential secondary benefits of such information are tremendous. For example, economists
are currently studying whether trademark applications are a reliable economic indicator.
The USPTO, the Copyright Office, and US Customs and Border Control should
collaborate to create a centralized IP data resource, such as a website, with more readily
available data that the public can use to create new IP metrics and analyze IP data.

Identified Issue: Protect intellectual property owners from unscrupulous organizations that
defraud IP rights holders.
Owners of trademark registrations in particular have been targeted increasingly by
scammers using deceptive business names and practices, and publicly available contact
information, to trick these rights holders into paying them for services of negligible or misplaced
value. While the USPTO is aware of the problem and has taken steps to inform trademark
applicants and registrants about these fraudulent ploys, more can and should be done.
The USPTO, the Department of Commerce, the Department of Justice, and the Federal
Trade Commission should investigate these organizations and take action to prevent fraud
against intellectual property owners by these deceptive businesses.

Respectfully submitted,

Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC