[Federal Register Volume 90, Number 95 (Monday, May 19, 2025)]
[Notices]
[Pages 21291-21294]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-08891]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-C-2025-0016]
Request for Comments on OECD's Working Party on Countering
Illicit Trade (WP-CIT) Draft Voluntary Guidelines for Countering
Illicit Trade in Counterfeit Goods on Online Marketplaces
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public roundtable and request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
working across government and with the private sector to address
counterfeiting. As part of this effort, the USPTO seeks feedback from
interested parties on their observations and experiences in combatting
the trafficking of counterfeit products through online marketplaces.
The discussion will focus on the Organisation for Economic Co-operation
and Development's (``OECD'') recent work on Draft Voluntary Guidelines
for Countering Illicit Trade in Counterfeit Goods on Online
Marketplaces (the ``Guidelines''). The USPTO will host a roundtable on
the topics listed in this notice on Thursday, June 5, 2025, which will
be held at the OECD Washington Center in person and virtually.
[[Page 21292]]
DATES:
Comments: Comments must be received by 11:59 p.m. ET on Friday,
June 27, 2025. The Guidelines will be available to review upon request
per the instructions at https://www.uspto.gov/about-us/events/roundtable-oecd-e-commerce-guidelines.
Public Roundtable Event: The public roundtable event will be held
at the OECD Washington Center in person and virtually on Thursday, June
5, 2025 beginning at 9 a.m. Interested parties wishing to attend the
public roundtable event in person must register by May 29, 2025.
Registration for remote attendance will be available through June 5,
2025. Registration for both in-person and virtual options, along with
the agenda, is available at https://www.uspto.gov/about-us/events/roundtable-oecd-e-commerce-guidelines. Parties interested in speaking
at the event may submit their requests with the instructions provided
on the registration page at https://www.uspto.gov/about-us/events/roundtable-oecd-e-commerce-guidelines. Please note that requests to
speak will be accommodated on a first-come, first-served basis. Due to
the limited number of time slots available for speakers, the USPTO may
not be able to accommodate all requests.
ADDRESSES:
(1) Electronic Submissions: Submit all electronic comments via the
Federal e-Rulemaking Portal at www.regulations.gov (at the homepage,
enter ``PTO-C-2025-0016'' in the ``Search'' ' box, select the
``Comment'' 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 only in Microsoft Word, Microsoft Excel, or
Adobe PDF formats. 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, please submit the
comment as a written/paper submission in the manner detailed below.
(2) Written/Paper Submissions: Send all written/paper submissions
to: United States Patent and Trademark Office, Mail Stop OPIA, P.O. Box
1450, Alexandria, VA 22314. Submission packaging should clearly
indicate that materials are responsive to Docket No. PTO-C-2025-0016,
Office of Policy and International Affairs, Comment Request; Call for
Feedback on OECD's Working Party on Countering Illicit Trade (WP-CIT)
Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit
Goods on Online Marketplaces.
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 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(s) and
description(s), 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. 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 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 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.
FOR FURTHER INFORMATION CONTACT: Ameen Imam, USPTO, Office of Policy
and International Affairs, at [email protected]. Please direct media
inquiries to the Office of the Chief Communications Officer, USPTO, at
571-272-8400.
SUPPLEMENTARY INFORMATION: In recent years, online marketplaces have
created new opportunities for businesses, consumers, and brands by
opening new channels of distribution, reducing costs, broadening
consumer access and options for goods, and increasing convenience.
However, online marketplaces have also been exploited by opportunist
actors trafficking in the sale and distribution of counterfeit goods.
This was noted in the April 3, 2019 Presidential Memorandum titled
``Memorandum on Combating Trafficking in Counterfeit and Pirated
Goods.'' \1\ The Presidential Memo raised awareness about the impact of
counterfeit goods on economic competitiveness, by harming United States
intellectual property (IP) rightsholders, cheating consumers, and
damaging the reputation of online markets. The Presidential Memo
recognized the necessity of cooperation and collaboration between
various stakeholders, like online marketplaces, governments, and rights
holders. Voluntary agreements and initiatives that put best practices
into use by rights holders, governments, and online marketplace
operators are powerful tools in combatting counterfeiting.
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\1\ https://trumpwhitehouse.archives.gov/presidential-actions/memorandum-combating-trafficking-counterfeit-pirated-goods/.
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The Organisation for Economic Cooperation and Development (OECD), a
multilateral organization with 38 member countries, through the Working
Party on Countering Illicit Trade (WP-CIT), recently undertook a
comprehensive initiative to provide evidence-based analysis and policy
recommendations to address illicit trade in counterfeit goods on online
marketplaces. This initiative seeks to provide OECD member countries
with insights and best practices that can be uniformly applied in local
economies to enhance enforcement against counterfeit products offered
through online marketplaces.
The initiative encompasses three phases. Phase 1 identified the
scale of the challenge through expert webinars and discussions,
resulting in the 2021 report E-Commerce Challenges in Illicit Trade in
Fakes, Governance Frameworks and Best Practices.\2\ The report
identified the opportunity for future work centered on ``industry-led
solutions'' and the ``development of voluntary codes of conduct.''
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\2\ OECD (2021), E-Commerce Challenges in Illicit Trade in
Fakes: Governance Frameworks and Best Practices, Illicit Trade, OECD
Publishing, Paris, https://doi.org/10.1787/40522de9-en.
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Phase 2 comprised a multi-phased process to bring the plan
identified in Phase 1 to fruition. The first part of Phase 2 involved
the collection and analysis of existing industry best practices to
address the sale of counterfeit products offered through online
marketplaces. Then, OECD organized an Advisory Subgroup, made up of
experts in IP, economics, and enforcement, including from academia, the
private sector, and representatives from OECD member states. The
[[Page 21293]]
Advisory Subgroup put together a comprehensive guide delineating best
practices to mitigate the sale of counterfeit goods on online
marketplaces for three primary stakeholders: governments, online
marketplace operators and rights holders. This guide, the Draft
Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods
on Online Marketplaces (the ``Guidelines''), was presented at the
Spring 2024 WP-CIT meeting. The Guidelines offer an international,
voluntary, and non-binding framework to support efforts to curb
counterfeit trade online.
The Guidelines anchor the overall project and provide the basis for
Phase 3, which seeks to facilitate a public-private and cross-sectoral
dialogue on the best practices offered in the Guidelines at the
national level in select OECD member countries. The United States will
be one of the first countries to hold a public meeting. The discussion
seeks to facilitate an open and transparent exchange of views, and will
offer an opportunity for stakeholders to evaluate the proposed best
practices and identify any remaining gaps in the Guidelines. The
dialogue will strengthen public-private engagement on countering
illicit trade in online marketplaces, foster trust among stakeholders,
and help inform any further refinement of the Guidelines.
The USPTO seeks information from interested parties regarding their
insights, evaluation of the best practices and any remaining gaps in
the Guidelines. In particular, the USPTO requests information from
intellectual property rights holders, online marketplaces and
platforms, consumers, sellers and other private sector stakeholders.
Request for Information
The USPTO requests information from all interested parties,
including trademark owners affected by the sale of counterfeited goods,
online and physical sellers and marketplaces, other online platforms,
consumers, and other parties engaged in the fight against counterfeited
goods entering the stream of commerce and reaching the hands of
consumers, on OECD's Draft Voluntary Guidelines for Countering Illicit
Trade in Counterfeit Goods on Online Marketplaces (the ``Guidelines'').
Interested parties may request a copy of the Guidelines per the
instructions at https://www.uspto.gov/about-us/events/roundtable-oecd-e-commerce-guidelines.
After reviewing the Guidelines, Respondents can direct their
comments to the list of topics provided below.
Respondents may address any or all of the topics outlined below.
Respondents should identify, where possible, the topic(s) that the
comments are intended to address. Respondents may organize their
submissions in any manner. Please note that respondents have the
opportunity to request that any information contained in a submission
be treated as confidential business information by certifying that such
information is confidential and would not customarily be released to
the public by the respondent. Confidential business information must be
clearly designated as such and provided only by mail carrier (Please
see ADDRESSES section above).
The USPTO welcomes all input relevant to OECD's Guidelines. In
particular, we seek the following information:
Topic 1--Strategies To Combat Sales of Counterfeit Goods on Online
Marketplaces
The Guidelines note that governments, online marketplace operators,
and rights holders (collectively, the ``principal stakeholders'') face
challenges in combatting the trade of counterfeit goods. The methods
criminals use to traffic counterfeit goods on online marketplaces are
dynamic and evolving and, thus, require consistent, effective
collaboration and attention. Accordingly, the Guidelines suggest
sophisticated strategies that involve the cooperation of all three
principal stakeholders.
(a) Please comment on the guidelines suggested for governments and
identify any gaps known to be effective methods for governments that
are not captured in the Guidelines. Paragraphs 17-18 (a.)-(d.).
(b) Please comment on the guidelines suggested for online
marketplace operators and identify any gaps known to be effective
methods for online marketplace operators that are not captured in the
Guidelines, including voluntary versus involuntary best practices for
online operators. Paragraphs 27-28 (a.)-(c.).
(c) Please comment on the guidelines suggested for rights holders
and identify any gaps known to be effective methods for rights holders
that are not captured in the Guidelines. Paragraphs 50-51(a.).
Topic 2--Repeat Infringers
The Guidelines highlight the importance of undertaking effective
action against third-party sellers on online marketplaces that are
actively marketing and selling counterfeit goods on a repeat basis. The
Guidelines recognize the importance of all three principal stakeholders
cooperating in this regard.
(a) Please comment on the suggested guidelines for governments to
undertake, including taking actions against repeat offenders and
supporting registers and watch lists to track entities involved with
the facilitation of counterfeit trade. Paragraphs 19-20(a.)-(b.).
(b) Please comment on the suggested guidelines for online
marketplace operators to undertake, including cooperating with
governments, rights holders and other stakeholders, supporting
registers and watch lists, and implementing measures to deter repeat
infringers. Paragraphs 35-36(a.)-(e.).
(c) Please comment on the suggested guidelines for rights holders
to undertake, including cooperating with governments and online
marketplace operators, and supporting registers and watch lists to
track entities involved with the facilitation of counterfeit trade.
Paragraphs 54-55(a.)-(b.).
Topic 3--Enforcement and Sanctions
The Guidelines recognize the necessity of meaningful enforcement
actions by the principal stakeholders to effectively disrupt the trade
of counterfeit goods. The Guidelines lay out specific actions for each
principal stakeholder.
(a) Please comment on the suggested guidelines for governments to
undertake, including coordinating efforts, information sharing,
effective criminal and civil penalties, and sanctioning online
marketplaces in certain circumstances. Paragraphs 21-22(a.)-(c.).
(b) Please comment on the suggested guidelines for online
marketplaces to undertake, including coordinating efforts and applying
sanctions provided in their terms of service agreements. Paragraphs 44-
45(a.)-(b.).
(c) Please comment on the suggested guidelines for rights holders
to undertake, including cooperating with governments and online
marketplace operators and sharing information and intelligence.
Paragraphs 56-57(a.).
Topic 4--Information Exchange, Transparency and Public Awareness
The Guidelines emphasize the value of information exchange. The
Guidelines note the utility of annual reports by enforcement
authorities and online marketplace operators in improving research and
analysis and providing policy makers with key data
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metrics. Each principal stakeholder has an identified role in this
regard.
(a) Please comment on the suggested guidelines for governments to
undertake, including compiling and reporting data and developing
effective joint campaigns with online marketplace operators and rights
holders. Paragraphs 23-24(a.)-(b.).
(b) Please comment on the suggested guidelines for online
marketplace operators to undertake, including developing joint
campaigns with government and rights holders, tracking trends and
preparing public reports. Paragraphs 46-47(a.)-(c.).
(c) Please comment on the suggested guidelines for rights holders
to undertake, including working with governments and online marketplace
operators on effective joint campaigns. Paragraphs 58-59(a).
Topic 5--Market Surveillance
The Guidelines note the importance of developing, adapting and
sharing effective detection tools that can enable the disruption of
counterfeit goods. Bad actors involved in counterfeit goods trade are
constantly shifting strategies and techniques to avoid detection and
disguise their sales. Accordingly, the Guidelines propose several
practices for online marketplace operators and rights holders.
(a) Please comment on the suggested guidelines for online
marketplace operators to undertake, including monitoring their
marketplaces, sharing information with other parties, consulting with
rights holders, providing tools to governments and rights holders, and
utilizing advanced screening technologies. Paragraphs 29-30(a.)-(e.).
(b) Please comment on the suggested guidelines for rights holders
to undertake, including exploring mechanisms for enhancing the
detection of counterfeit goods on marketplaces and sharing these
techniques and standards. Paragraphs 52-53(a.).
Topic 6--Notifications and Counternotifications
The Guidelines recognize that effective enforcement requires an
effective information gathering process, which only then enables online
marketplace operators to take action. The Guidelines highlight the
importance of policies and programs that facilitate reporting and
promote communication among the principal stakeholders. The Guidelines
propose online marketplace operators consider a number of practices
outlined in Paragraphs 31-32(a.)-(i.).
(a) Please comment on the suggested guidelines for online
marketplace operators to undertake as it relates to mechanisms for
notifications and counternotifications.
Topic 7--Takedown of Listings for Counterfeit Goods
The Guidelines underline the necessity of online marketplace
operators removing and suspending sales of counterfeit goods The
Guidelines propose a number of actions in Paragraphs 33-34(a.)-(d.) for
online marketplace operators to take to effectively suspend sales of
counterfeit products and remove listings.
(a) Please comment on the suggested guidelines for online
marketplace operators to remove and suspend listings offering
counterfeit goods and identify any gaps that may be lacking in the
practices.
Topic 8--Accountability and Liability
The Guidelines recommend that purchasers of counterfeit goods be
entitled to full and prompt refunds. The Guidelines designate online
marketplace operators with the principal role in supporting purchasers
in seeking redress.
(a) Please comment on the suggested guidelines for online
marketplace operators in Paragraphs 37-38(a.)-(d.).
Topic 9--Listings
The Guidelines recommend that online marketplace operators ensure
that the information in product listings is accurate, clear and
complete so that the information can be useful to the principal
stakeholders.
(a) Please comment on the suggested recommendations for online
marketplace operators in Paragraphs 39-40(a.)-(e.).
Topic 10--Third-Party Sellers
The Guidelines identify significant challenges with third-party
sellers and notes that they have become more prominent. The Guidelines
emphasizes the need to adequately vet sellers prior to being allowed to
trade on platforms and for securing commitments from the sellers to
abide by the online marketplace operators' terms of service agreements.
(a) Please comment on the practices enumerated for online
marketplace operators to undertake when working with third-party
sellers both for vetting and for terms of service agreements.
Paragraphs 41, 42(a.)-(d.) and 43(a.)-(c.).
Topic 11--International Cooperation
The Guidelines underline the importance of the principal
stakeholders taking a global perspective with their efforts to combat
illicit trade, including expanding partnerships and public-private
agreements.
(a) Please comment on the practices identified for governments to
undertake to expand international cooperation. Paragraphs 25-26(a.)-
(c.).
(b) Please comment on the suggested guidelines identified for
online marketplace operators to undertake to expand international
cooperation. Paragraphs 48-49 (a.)-(b.).
(c) Please comment on the suggested guidelines identified for
rights holders to undertake to expand international cooperation.
Paragraphs 60-61(a.)-(b).
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-08891 Filed 5-16-25; 8:45 am]
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