[Federal Register Volume 85, Number 220 (Friday, November 13, 2020)]
[Pages 72635-72637]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-25163]



Patent and Trademark Office

[Docket No. PTO-T-2020-0035]

Secondary Trademark Infringement Liability in the E-Commerce 

AGENCY: Patent and Trademark Office, Department of Commerce.

ACTION: Request for comments.


SUMMARY: On January 24, 2020, the Department of Homeland Security (DHS) 
released its Report to the President of the United States titled 
``Combating Trafficking in Counterfeit and Pirated Goods'' (DHS 
Report). The report responded to the April 3, 2019, Presidential 
Memorandum titled ``Memorandum on Combating Trafficking in Counterfeit 
and Pirated Goods'' (Presidential Memorandum). Among the action items 
identified in the DHS Report was action 9, titled ``Assess Contributory 
Trademark Infringement Liability for E-Commerce.'' In order to 
implement this action item, the United States Patent and Trademark 
Office (USPTO) is seeking information from intellectual property rights 
holders, online third-party marketplaces and other third-party online 
intermediaries, and other private sector stakeholders, on the 
application of the traditional doctrines of trademark infringement to 
the e-commerce setting. More specifically, the USPTO seeks input on the 
application of contributory and/or vicarious trademark infringement 
liability (secondary infringement liability) to e-commerce.

DATES: Comments must be received by 5 p.m. EST on December 28, 2020.

ADDRESSES: You may submit comments and responses to the questions below 
by one of the following methods:
    (a) Electronic Submissions: Submit all electronic comments via the 
Federal e-Rulemaking Portal at https://www.regulations.gov (at the 
homepage, enter PTO-T-2020-0035 in the ``Search''' box, click the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach your comments). The materials in the docket will not be edited 
to remove identifying or contact information, and the USPTO cautions 
against including any information in an electronic submission that the 
submitter does not want publicly disclosed. Attachments to electronic 
comments will be accepted in Microsoft Word or Excel or Adobe PDF 
formats only. Comments containing references to studies, research, and 
other empirical data that are not widely published should include 
copies of the referenced materials. Please do not submit additional 
materials. If you want to submit a comment with confidential business 
information that you do not wish to be made public, submit the comment 
as a written/paper submission in the manner detailed below.
    (b) Written/Paper Submissions: Send all written/paper submissions 
to: United States Patent and Trademark Office, Mail Stop OPIA, P.O. Box 
1450, Alexandria, Virginia 22314. Submission packaging should clearly 
indicate that materials are responsive to Docket No. PTO-T-2020-0035, 
Office of Policy and International Affairs, Comment Request; Secondary 
Trademark Infringement Liability in the E-Commerce Setting.
    Submissions of Confidential Business Information: Any submissions 
containing confidential business information must be delivered in a 
sealed envelope marked ``confidential treatment requested'' to the 
address listed above. Submitters should provide an index listing the 
document(s) or information that they would like the USPTO to withhold. 
The index should include information such as numbers used to identify 
the relevant document(s) or information, document title and 
description, and relevant page numbers and/or section numbers within a 
document. Submitters should provide a statement explaining their 
grounds for objecting to the disclosure of the information to the 
public as well. The USPTO also requests that submitters of confidential 
business information include a non-confidential version (either 
redacted or summarized) of those confidential submissions that will be 
available for public viewing and posted on https://www.regulations.gov. 
In the event that the submitter cannot provide a non-confidential 
version of its submission, the USPTO requests that the submitter post a 
notice in the docket stating that it has provided the USPTO with 
confidential business information. Should a submitter fail to either 
docket a non-confidential version of its submission or post a notice 
that confidential business information has been provided, the USPTO 
will note the receipt of the submission on the docket with the 
submitter's organization or name (to the degree permitted by law) and 
the date of submission.

[[Page 72636]]

and International Affairs, at [email protected] or 571-272-9300. 
Please direct media inquiries to the USPTO's Office of the Chief 
Communications Officer at 571-272-8400.

SUPPLEMENTARY INFORMATION: The DHS Report describes how the rapid 
growth of e-commerce platforms, ``further catalyzed by third-party 
online marketplaces connected to the platforms, has revolutionized the 
way products are bought and sold.'' DHS Report at 7, available at 
https://www.dhs.gov/sites/default/files/publications/20_0124_plcy_counterfeit-pirated-goods-report_01.pdf . This overall 
growth ``has facilitated online trafficking in counterfeit and pirated 
goods.'' Id. (The DHS Report addresses both trademark counterfeiting 
and copyright piracy, but action 9, the subject of this Federal 
Register Notice (FRN), is limited to trademark counterfeiting.) 
American consumers shopping on e-commerce platforms now face a greater 
risk of purchasing counterfeits, including goods that endanger the 
health and safety of unsuspecting consumers. The U.S. Congress has also 
taken up the issue of dangerous counterfeits. On March 2, 2020, H.R. 
6058, the ``SHOP SAFE Act of 2020,'' which addresses the contributory 
liability of e-commerce platforms in relation to counterfeit goods 
implicating health and safety, was introduced in the House of 
    Historically, counterfeits were distributed through in-person 
transactions, such as those at swap meets, and by individual sellers, 
often on street corners. Today, many counterfeits are trafficked 
through e-commerce supply chains in concert with marketing, sales, and 
distribution networks. See DHS Report at 10. While e-commerce has 
supported the launch of thousands of legitimate businesses, it has also 
enabled counterfeiters to easily establish attractive ``store-fronts'' 
to compete with legitimate businesses. See id. at 11.
    The development of the DHS Report benefitted from extensive 
interagency discussion that included DHS, the Department of Justice, 
the Office of the United States Trade Representative, the Department of 
Commerce, the Food and Drug Administration, the Office of the 
Intellectual Property Enforcement Coordinator, and the Department of 
State. The DHS Report also benefited from outreach to, and comments 
from, numerous private sector stakeholders, including responses to the 
Department of Commerce's FRN 2019-14715 titled ``Comment Request; 
Report on the State of Counterfeit and Pirated Goods Trafficking and 
Recommendations,'' issued on July 10, 2019. 84 FR 32861. The FRN 
requested comments on a variety of issues drawn from the Presidential 
Memorandum. As summarized in the DHS Report, the comments relevant to 
the subject of this FRN included rights holder assertions that the 
present legal landscape for online secondary liability in the e-
commerce space is ``out of date.'' DHS Report at 24. In particular, the 
rights holders noted, in the brick-and-mortar economy, contributory 
infringement liability has been well developed through case law for the 
licensing and oversight of sellers, but a comparable regime is largely 
nonexistent in the e-commerce realm. Id. at 24-25. Comments were also 
received from platforms noting that they have ``invested heavily in 
proactive efforts to prevent counterfeits from reaching their online 
stores,'' and several commenters noted that some platforms have 
significant interactions with law enforcement to combat counterfeits 
trafficking. Id. at 25.
    The DHS Report includes a section on ``Immediate Action by DHS and 
Recommendations for the USG [U.S. Government].'' The ninth item, titled 
``Assess Contributory Trademark Infringement Liability for E-
Commerce,'' calls for the Department of Commerce to seek input from the 
private sector and other stakeholders as to the application of the 
traditional doctrines of trademark infringement to the e-commerce 
setting, including whether to pursue changes in the application of the 
secondary infringement standards to platforms. See DHS Report at 33. 
This FRN seeks comments on that issue.
    Request for Information: The USPTO requests information from 
interested stakeholders, including but not limited to trademark owners 
affected by the sale of counterfeit goods offered through e-commerce 
platforms and online third-party marketplaces and intermediaries.
    Respondents may address any, all, or none of the following 
questions. Please identify, where possible, the question(s) your 
comments are intended to address.
    Respondents may organize their submissions in any manner. Reminder: 
Respondents have the responsibility to request that any information 
contained in a submission be treated as confidential business 
information and must certify that such information is confidential and 
would not customarily be released to the public by the submitter. 
Confidential business information must be clearly designated as such 
and provided only by mail carrier as described above.
    The USPTO welcomes all input relevant to the application of the 
traditional doctrines of secondary trademark infringement to the e-
commerce setting, more specifically whether to pursue changes in the 
application of the secondary infringement standards to platforms. In 
particular, we seek the following information:
    1. Is the doctrine of secondary infringement liability, as 
currently applied by the courts, an effective tool in addressing the 
problem of the online sale of counterfeit goods? If not, please 
identify the shortcomings in this approach to combatting counterfeits 
sold online, including whether the shortcomings are general to all 
goods and modes of e-commerce or whether they are specific to a 
particular type of goods or e-commerce.
    2. Have you pursued or defended secondary trademark infringement 
claims against an e-commerce platform, online third-party marketplace, 
or other online third-party intermediary where the claim was that the 
intermediary facilitated the sale of counterfeit goods, including 
counterfeit goods offered by a third-party seller? If so, what 
challenges did you face in pursuing or defending these claims under a 
secondary infringement theory, and what was the result?
    3. If you have chosen not to pursue a potential claim or defend 
against a claim for secondary trademark infringement against an e-
commerce platform, online third-party marketplace, or other online 
third-party intermediary for reasons related to the current 
interpretation of the doctrine of secondary infringement, please 
explain how your decision-making was affected by the state of the law 
and how a different interpretation might have led to a different 
    4. To the extent you have identified shortcomings in the current 
application of the doctrine of secondary infringement in your answers 
to the above questions, please explain how you would recommend 
resolving those shortcomings.
    a. For all types of recommendations, please identify their scope, 
including the type of goods or e-commerce affected. Where appropriate, 
please prioritize your recommendations.
    b. If your recommendation includes implementation in steps and/or 
over time, please identify each step and the contemplated timeframe for 

[[Page 72637]]

    5. Please provide any studies or other information in your 
possession that demonstrate whether or not a change in the law of 
secondary liability for trademark counterfeiting with respect to e-
commerce platforms, online third-party marketplaces, and other online 
third-party intermediaries would be effective in reducing online sales 
of counterfeit goods, or whether it would pose any risks.
    6. Are there any other areas of law or legal doctrines that could 
help inform or supplement the standard for secondary trademark 
infringement to reduce online sales of counterfeit goods?

    Dated: November 6, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2020-25163 Filed 11-12-20; 8:45 am]