Trevor Little

In January, we considered what the early signs told us about the likely impact of the Trump administration on the trademark and wider IP environment. Three months on, and nearing his 100th day in office, the president has revealed his nomination for IP enforcement coordinator (IPEC) in the Executive Office of the President. However, with the USPTO hit by a hiring freeze and uncertainty over the future leadership of the agency, the question of what impact his administration will ultimately have on trademarks and the IP ecosystem remains unanswered. So what do we know?

Nomination for key IP role revealed… – On Friday the White House revealed President Trump’s intention to nominate Vishal J Amin of Michigan for the role of Intellectual Property Enforcement Coordinator. The position was created in 2008, with Victoria Espinel assuming the role the following year and serving the Obama administration in this capacity for four years. Daniel H Marti succeeded her and left the role in January. Amin is currently senior counsel on the House Judiciary Committee, where he serves as an advisor on issues dealing with intellectual property, international trade, competition and technology policy. Earlier in his career, he served in the Administration of President George W Bush at the White House, as Associate Director for Domestic Policy, and at the US Department of Commerce, as Special Assistant and Associate Director for Policy in the Office of the Secretary. In a release issued by The Software Alliance (BSA), Espinel welcomed the nomination, stating: “I understand the unique challenges and rewarding opportunities that the coordinator faces, and Vishal Amin is an outstanding choice to tackle those head on.” Recording Industry Association of America Chairman and CEO Cary Sherman also commented on the move: “The prompt appointment and consideration of this position is critical, and we commend President Trump for his choice. Vishal Amin is a smart, thoughtful leader and we look forward to working with him.”Should Senate confirmation follow, the administration’s IP policy priorities should become clearer.

… while new Supreme Court justice’s IP approach remains hard to discern - Yesterday Colorado judge Neil Gorsuch was sworn in as a justice on the Supreme Court. The natural question to ask is ‘what can we learn from his previous IP decisions?’. As it stands, his body of work in this respect is limited. Writing on IAM, Baker Donelson’s Peter L Brewer suggests: “Much is currently being written and reported about him, particularly with regard to his previous writings and writing style over the past 10 years. However, nothing has been said thus far about intellectual property. This may be because there is not much to say.” The National Law Journal writes that his written opinions have not clearly favoured intellectual property owners or accused infringers. He has contributed a handful of decisions on copyright and trademark cases and what is discernible, Howard S Hogan and Lucas C. Townsend write, is that “over the 10 years that he has served on the US Court of Appeals for the Tenth Circuit, Gorsuch's decisions in intellectual property disputes have reflected a close attention to statutory text and a preference for narrow results that hew closely to precedent”. Additionally, they suggest that his general approach to administrative law questions “could reflect some scepticism toward deference to the US Patent and Trademark Office”.

But the search seemingly goes on for one key appointment – As President Trump settled into the White House, administration appointments followed.However, confusion lingers over the position of USPTO Director. Prior to inauguration day there were rumours that Michelle Lee was to carry on in the job but an official announcement did not follow. The office itself would not comment when asked who was occupying the hot seat, and it took a Freedom of Information Request on March 10 to obtain an answer – the USPTO confirming that Lee remained in situ. However, on IP Watchdog last week Gene Quinn reports that Commerce Secretary Wilbur Ross has been interviewing prospective candidates for the position, with former Johnson & Johnson IP executive Phil Johnson and former Federal Circuit Chief Judge Randall Rader both still in the running. Once that process plays out, a possible change of leadership (or maintenance of the status quo) will provide a clearer sense of the administration’s IP direction.

Thaw out: call for USPTO hiring freeze to be halted – The USPTO leadership position is one government position that candidates are being considered for. However, it is the exception that proves the rule. After taking office, the President announced a 90-day freeze across the federal government and yesterday, on our sister title IAM, Richard Lloyd reported that a group of IP advocacy groups, industry bodies and companies have written to Trump to highlight the impact of the ongoing hiring freeze on the USPTO and, more broadly, on US innovation. While focused on the impact for the patent side of USPTO operations, the list of positions that can’t currently be filled spans all aspects of the USPTO’s operations, with an administrative trademark judge, trademark attorney and trademark specialist positions going vacant. Of course, the IP community is not alone in calling for an exception to be made. The Senior Executives Association have asked for a selective pause in the hiring freeze to tackle a ‘leadership vacuum’ within the federal government, while lawmakers have called for Defence Department acquisitions to resume. The IP community will likely agree with the letter’s closing sentiment: “We appreciate the steps that your administration has taken to put America first, and we hope that you will keep this purpose in mind in exempting the USPTO from the hiring freeze and asking Congress to permanently end the practice of USPTO fee diversion.” For now, though, the impact of the Trump administration is a halt on hiring. How that impacts pendency and USPTO efficiency remains to be seen.

Trump’s own trademarks: conflict of interest or business as normal? – This is perhaps more ‘what trademarks mean for the presidency’ than vice versa, but it is worth highlighting nonetheless as it is a reminder of Trump’s awareness of the trademark process. In February, we reported on the international media coverage that resulted from a TRUMP mark in class 37 progressing to registration in China. Speculation centred on whether the move represents an inexpensive way for China to curry favour with the president. We argued that the registration was not a surprise, and other legal commentators noted that the approvals and timing were the result of due process. However, the media focused intensified after another 38 marks were granted preliminary approval in China, with reports also highlighting recent Mexico trademarks. Again, the due process arguments remain applicable but even with that the case, a key question is whether the granting (and receipt) of a registered trademark violates the emoluments clause of the US Constitution, which states that “no person holding any office of profit or trust under them, shall, without the Consent of the Congress, accept of any present, emolument, office, or title, of any kind whatever, from any King, Prince, or foreign state”. That debate is still being played out. While Barack Obama’s former ethics lawyer, Norman Eisen, has been quoted as saying “each of these trademarks is a potential emolument”, others argue that – as Trump signed over his business interests to his sons – he has divested his conflicting assets. As one of his lawyers, Morgan Lewis’ Sheri Dillon, stated, he has “isolated” himself from his business interests. This debate will not go away anytime soon, meaning that this particular trademark story will remain in the headlines.

Client cuts ties over law firm’s representation of Trump – Dillon was in the news again recently when her firm’s representation of Trump was cited by the Wallace Global Fund as the reason for the termination of their client relationship. While not strictly a trademark story, the granting of 38 trademarks in China was cited as one of the examples of “ethical carnage” that led the fund to cut ties with Morgan Lewis – charging that the advice given to Trump by Dillon “empowers and even encourages impeachable offenses and undetectable financial conflicts of interest by America’s highest official, and thus is an unprecedented invitation to corruption and assault on our democracy”. The firm had already been the focus of previous media reports due to its association with Trump – specifically, at a time when Trump’s relationship with Russia has been scrutinised, the firm’s receipt of a ‘Russia Law Firm of the Year’ award from Chambers and Partners led to a number of headlines. The award was announced in May 2016, six months before the US election, yet was suddenly back in the headlines for all the wrong reasons. In this instance, while a prestigious client in many respects, association with the Trump brand can clearly have downsides.

More clarity soon with Cuba policy position imminent – At the end of March we reported on a bipartisan congressional delegation calling on the Trump Administration to reverse a US Office of Foreign Assets Control (OFAC) decision to grant a licence allowing Cubaexport to renew the HAVANA CLUB trademark registration in the United States. In 2006, OFAC had prevented the Cuban state company from renewing its registration by retroactively applying Section 211 of the US Omnibus Appropriations Act of 1998 (which forbids the registration or enforcement of a trademark in the United States that is identical or similar to one used in connection with a business or assets that were expropriated). After President Obama ordered the restoration of full diplomatic relations with Cuba, in January 2016 came the news that Cuban state company Cubaexport had received a licence allowing it to renew its the registration in the United States. Slamming the licence as “misguided”, the group of 25 Members of Congress have catapulted the long-running dispute between Pernod Ricard and Bacardi back into the political arena. The Trump administration is expected to unveil its policy stance with respect Cuba in the near future, and that position could have a significant impact on this decades-old dispute.

In short, as we enter the fourth month of Donald Trump’s presidency, the question of what impact his administration will have for trademarks and the IP ecosystem remains unanswered. While key appointments have yet to be confirmed and the USPTO is in hiring freeze mode, the media’s focus on trademarks under Trump have centred on potential conflicts of interest with respect to his own portfolio. As with the start of this year, it is a case of ‘watch this space’.

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