Summary Statement of

Q. TODD DICKINSON

ACTING ASSISTANT SECRETARY OF COMMERCE AND

ACTING COMMISSIONER OF PATENTS AND TRADEMARKS

May 5, 1999

H.R. 1565 - "The Trademark Amendments Act of 1999"

Section 2 - - "Dilution as a Grounds for Opposition and Cancellation"

The Administration supports this legislation but anticipates a potentially large increase in the number of motions filed before the Trademark Trial and Appeal Board. The Administration would like to work with the Committee to develop options for implementing this proposed legislation in ways that will result in the most benefit to customers while minimizing the burden for the Administration. .

Section 3 - - "Remedies in Cases of Dilution of Famous Marks"

The Administration supports the proposed amendment to Sections 34 and 36 of the Trademark Act, providing for remedies in the case of dilution of famous marks.

Section 4 - - "Liability of Governments for Trademark Infringement and Dilution"

With respect to making the federal government liable for trademark infringement/dilution, the Administration will consult internally with the Department of Justice and reserves its position on this issue.

Section 5 - - "Civil Actions for Trade Dress Infringement"

Regarding civil actions for trade dress infringement, the Administration supports the proposed amendment to Section 43 of the Trademark Act, which addresses the issue of burden of proof between private litigants.

Section 6 - - "Technical Amendments

The Administration supports the proposed housekeeping amendment to Section 10 of the Trademark Act.

Statement of

Q. TODD DICKINSON

ACTING ASSISTANT SECRETARY OF COMMERCE AND

ACTING COMMISSIONER OF PATENTS AND TRADEMARKS

before the

SUBCOMMITTEE ON COURTS AND INTELLECTUAL PROPERTY

COMMITTEE ON THE JUDICIARY

U.S. HOUSE OF REPRESENTATIVES

on

May 5, 1999

Mr. Chairman and Members of the Committee:

Thank you for providing me with this opportunity to present the views of the Administration on H.R. 1565, the "Trademark Amendments Act of 1999," as introduced on April 27, 1999.

Mr. Chairman, I will keep my remarks brief.

We welcome the "Trademark Amendments Act of 1999," and support the addition of dilution as a grounds for opposition and cancellation in proceedings before the Trademark Trial and Appeal Board (TTAB). To borrow a phrase from patent law, this proposal addresses a need long felt amongst trademark owners. Like our customers, we value certainty. Accordingly, we understand and appreciate the very legitimate concerns shared by all mark owners with respect to dilution of their valuable properties. This amendment will finally provide greater certainty to mark owners by giving them access to the experience and knowledge of our TTAB on the admittedly difficult legal issue of dilution. We believe that the TTAB will be invaluable in establishing the case law which will itself lead to certainty and consistency in the area of dilution law.

Having said this, we do feel obligated to share with the Committee the very real considerations regarding the workload that will certainly result from this amendment. In an internal survey conducted in 1998, the Board determined that a dilution claim could have been made in approximately 36% of the opposition and cancellation cases before the Board. The Administration therefore presumes that, with this amendment, many of the oppositions and cancellations that previously would have asserted only priority and likelihood of confusion claims, will include dilution claims. The TTAB's workload is thus likely to increase both in volume and complexity. In practical terms, this amendment will mean more initial papers to process, more discovery and trial motions to resolve, and larger evidentiary records to consider in reaching final decisions on these cases.

We will be happy to work with the Committee to develop options for implementing this proposed legislation in ways that will result in the most benefit to our customers and the least burden for the Administration.

Regarding the other sections of the "Trademark Amendments Act of 1999," Mr. Chair, I will quickly add the following comments.

Section 3 - - "Remedies in Cases of Dilution of Famous Marks" - - The Administration supports the proposed amendment to Sections 34 and 36 of the Trademark Act, providing for remedies in the case of dilution of famous marks.

Section 4 - - "Liability of Governments for Trademark Infringement and Dilution"

With respect to making the federal government liable for trademark infringement or dilution, the Administration will consult internally with the Department of Justice, and respectfully reserves its comments on this section.

Section 5 - - "Civil Actions for Trade Dress Infringement" - Regarding civil actions for trade dress infringement, the Administration supports the proposed amendment to Section 43 of the Trademark Act, which addresses the issue of burden of proof between private litigants.

Section 6 - - "Technical Amendments - - The Administration supports the proposed housekeeping amendment to Section 10 of the Trademark Act.

Since I have this (relatively) captive audience, I would also quickly like to provide an update on the subject of trademark fees. As you know, our fees must recover the total costs of the PTO. This means that the costs for products and services that are offered to the public for free, or at less than cost, must be recovered from the patent and trademark fees paid for other products and services. As an example, the costs of operations for our Trademark Business are fully recovered, in the aggregate, from fees charged for trademark products and services. Trademark fees also recover a pro-rata share of the costs of PTO corporate, policy, and information dissemination operations that either do not generate revenue or generate revenue that partially recovers the costs of operations. For example, the fees charged for services of the Trademark Trial and Appeal Board do not fully recover Board operations. The remaining Board costs are offset by revenue from other trademark fees, hence our notation earlier about the administrative effects of adding dilution as a basis for opposition and cancellation.

My staff is now vigorously reviewing projected revenues and costs of the Trademark Business for 2000 and beyond. My purpose in mentioning trademark fees today is to assure members of the Subcommittee, as well as our customers, that should any fee adjustments be necessary, our proposals will be based upon rigorous analysis and open interchange with you and with our customers.

Thank you for your consideration and for providing this forum for presentation of issues of importance to the Administration.

Statement of

Q. TODD DICKINSON

ACTING ASSISTANT SECRETARY OF COMMERCE AND

ACTING COMMISSIONER OF PATENTS AND TRADEMARKS

before the

SUBCOMMITTEE ON COURTS AND INTELLECTUAL PROPERTY

COMMITTEE ON THE JUDICIARY

U.S. HOUSE OF REPRESENTATIVES

on

May 5, 1999

Mr. Chairman and Members of the Committee:

Thank you for providing me with this opportunity to present the views of the Administration on H.R. 1565, the "Trademark Amendments Act of 1999," as introduced on April 27, 1999.

Mr. Chairman, I will keep my remarks brief.

We welcome the "Trademark Amendments Act of 1999," and support the addition of dilution as a grounds for opposition and cancellation in proceedings before the Trademark Trial and Appeal Board (TTAB). To borrow a phrase from patent law, this proposal addresses a need long felt amongst trademark owners. Like our customers, we value certainty. Accordingly, we understand and appreciate the very legitimate concerns shared by all mark owners with respect to dilution of their valuable properties. This amendment will finally provide greater certainty to mark owners by giving them access to the experience and knowledge of our TTAB on the admittedly difficult legal issue of dilution. We believe that the TTAB will be invaluable in establishing the case law which will itself lead to certainty and consistency in the area of dilution law.

Having said this, we do feel obligated to share with the Committee the very real considerations regarding the workload that will certainly result from this amendment. In an internal survey conducted in 1998, the Board determined that a dilution claim could have been made in approximately 36% of the opposition and cancellation cases before the Board. The Administration therefore presumes that, with this amendment, many of the oppositions and cancellations that previously would have asserted only priority and likelihood of confusion claims, will include dilution claims. The TTAB's workload is thus likely to increase both in volume and complexity. In practical terms, this amendment will mean more initial papers to process, more discovery and trial motions to resolve, and larger evidentiary records to consider in reaching final decisions on these cases.

We will be happy to work with the Committee to develop options for implementing this proposed legislation in ways that will result in the most benefit to our customers and the least burden for the Administration.

Regarding the other sections of the "Trademark Amendments Act of 1999," Mr. Chair, I will quickly add the following comments. The Administration supports the proposed amendments identified in Sections 3, 5 and 6. With respect to Section 4, "Liability of Governments for Trademark Infringement and Dilution," the Administration will consult internally with the Department of Justice, and respectfully reserves its comments on this section.

Since I have this (relatively) captive audience, I would also quickly like to provide an update on the subject of trademark fees. As you know, our fees must recover the total costs of the PTO. This means that the costs for products and services that are offered to the public for free, or at less than cost, must be recovered from the patent and trademark fees paid for other products and services. As an example, the costs of operations for our Trademark Business are fully recovered, in the aggregate, from fees charged for trademark products and services. Trademark fees also recover a pro-rata share of the costs of PTO corporate, policy, and information dissemination operations that either do not generate revenue or generate revenue that partially recovers the costs of operations. For example, the fees charged for services of the Trademark Trial and Appeal Board do not fully recover Board operations. The remaining Board costs are offset by revenue from other trademark fees, hence our notation earlier about the administrative effects of adding dilution as a basis for opposition and cancellation.

My staff is now vigorously reviewing projected revenues and costs of the Trademark Business for 2000 and beyond. My purpose in mentioning trademark fees today is to assure members of the Subcommittee, as well as our customers, that should any fee adjustments be necessary, our proposals will be based upon rigorous analysis and open interchange with you and with our customers.

Thank you for your consideration and for providing this forum for presentation of issues of importance to the Administration.