Talking Trademarks: An Exclusive Interview with INTA’s Debbie Cohn

Debbie Cohn

On January 13, 2016, I had the opportunity to speak with Debbie Cohn on the record. Cohn, the former Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO), is now Senior Director of Government Relations for the International Trademark Association (INTA).

What follows is our wide ranging discussion, which start out with what Cohn is doing with INTA and then moves into an in depth discussion of issues surrounding counterfeiting, the newly formed Trademark Caucus in Congress, and the recent Federal Circuit decision on disparaging trademark registrations in the so-called Slants case. We ended with the familiar fun questions that give us an opportunity to get to know Cohn.

Without further ado, here is my interview with Debbie Cohn.

QUINN: Thank you, Debbie, for taking the time to chat with me today. I really appreciate it. I always enjoy the chance to chat with you. It’s been a while since I last had you on the record and I know you’re no longer at the PTO any more so I thought maybe we could start with a general question as to where are you now and what are you doing?

COHN: Gene, it’s a pleasure to talk with you. I’m now at the International Trademark Association, which is commonly known as INTA. I’ve been here since March of 2015. And just in case you don’t know a lot about INTA or the International Trademark Association it’s actually as the word “international” suggests a global association. It consists of trademark owners and professionals all with the common cause of supporting trademarks and other related intellectual property to promote commerce and to protect consumers. We have more than 6500 trademark owners from more than 190 countries. Our membership includes major corporations, small and medium –sized enterprises, law firms, non-profits and others, including government agencies, all of whom benefit from the different resources, training, networking and policy development programs that we offer. We’re headquartered in New York and have offices here in D.C., Brussels, Shanghai, and New Deli. And we’re about to open an office in Singapore.

QUINN: What is it that you’re doing specifically with INTA in D.C.?

COHN: I’m in the D.C. office as Senior Director of Government Relations and my role here is to raise the visibility of INTA members’ positions on trademark issues within the U.S. government arena. I work with the government agencies in the area, the federal legislators, and even other associations to develop our policies on different trademark issues that pertain to the U.S. and to Washington D.C.

I also work with the INTA committees and specifically those committees that have areas that relate to U.S. practice. INTA has a number of member committees that focus on various substantive trademark issues among other areas of interest to trademark owners and practitioners. These include everything from anti-counterfeiting and enforcement to Internet issues. I’m currently involved with the Trademark Office Practices and the Harmonization of Trademark Law and Practices Committees. To give you an idea of the scope of our committee focus, our Trademark Office Practices Committee actually consists of eleven different subcommittees from various regions around the world. So for example there’s a USPTO subcommittee that works with the USPTO on examination and other issues that are important to practitioners. There are similar subcommittees from the various regions around the world, for example, India, Africa, Europe, Asia and Latin America.   And this year we just started a TM5 subcommittee. If you’re not familiar with the TM5, it’s a partnership, similar to IP5, between the offices of the U.S., the EU, China, Korea, and Japan with the goal of harmonizing and improving different office practices to benefit the user experience. They work together on projects and discuss ways to collaborate to help make examination practices and user experiences with the various offices run more smoothly.

Another important role of mine is with the INTA Political Action Committee to try to raise the visibility of trademarks and INTA in U.S. Congress.

QUINN: And I understand that there’s actually a Congressional trademark caucus now in the Congress?

COHN: Yes! This is actually really big news for us in the trademark arena. Although there has been an IP caucus for a number of years, that has generally focused more on patent and copyright issues. The congressional trademark caucus brings specific attention to trademark issues, including the negative impact that trademark counterfeiting has on the economy and on consumer health and safety. It was initially launched in 2014 and then re-launched in June of 2015. It’s bipartisan and bicameral, with four highly committed Co-Chairs: Senators Grassley and Coons, and Representatives DelBene and Forbes. Since we re-launched in June, the CTC has grown to 17 members from both the House and Senate. And we’re looking to get more members involved. We had two very successful briefings in 2015. The first one was an educational briefing that covered why trademarks are important, some of the problems of infringement and how they affect the public, and important health and safety trademark issues in the pharmaceutical area. The second briefing focused on counterfeits during the holiday season. We heard from a number of different speakers about the dangers of buying counterfeit products and how to avoid counterfeit products. The program included Bruce Foucart from the National IPR Coordination Center talking about some of the ways that law enforcement attempts to combat counterfeits during the holiday season. The briefing was educational and very well received. So we’re trying to do more of that. The CTC is anxious to have more briefings and activities in 2016 and INTA is working closely with them along with some of the other IP associations to get that going.

QUINN: And I know during the holiday seasons one of the big counterfeiting issues was dealing with these so-called hover boards.

COHN: Right, yes, that was a huge problem.

QUINN: Some of these counterfeit products are just flat out dangerous.

COHN: Yes- in many toys and the types of items like the hover board there’s an inherent danger. There’s an inherent danger in anything that relies on batteries to operate for example or anything that can ignite. There are so many possibilities for dangerous products and when there’s not the type of quality control that the trademark owners demand in their products to protect consumers you just really have no control over what the item is going to be and how it can affect you as a consumer.

QUINN: Well one of the things with counterfeiting that I’ve found to some extent bizarre is that everybody that has seriously looked at the issue knows that counterfeiters are organized criminals. And increasingly in some areas they’re not just organized criminals, but they are terrorists who are engaging in this activity and they make an awful lot of money. Now this is not to suggest that this is the only way that these organizations make money, but this is a way that these organizations make money. And the criminal penalties for counterfeiting are extremely small in comparison to something like trafficking drugs, for example. And the profit margins are pretty high. And by some estimates higher than they are with respect to trafficking drugs. And you tell this to some people and they simply refuse to believe it. And not only do they refuse to believe it they laugh at you like you’re the person that is crazy. Like, “oh, you’re just ridiculous, organized crime and terrorists are not engaging in bootlegging or piracy or counterfeiting.” I think it’s an extreme form of denial. I also think it’s people liking free stuff, cheaper stuff and anything that violates that seems to not fit their predetermined narrative and they’re just not going to believe it because it doesn’t seem to be in their own best interest. I wonder what it is that we can do, if anything.

COHN: Right. I think that’s a really good point. People want to look at counterfeiting as a victimless crime. And clearly it’s not. And it’s one of the most pervasive problems affecting trademark owners globally. And it also affects consumers. It affects consumers because they need to be able to rely on trademarks when they’re purchasing products. But it also affects consumers because it’s an important health and safety issue as we discussed in many different products. And I think the governments at the national and international level have to look at the anti-counterfeiting laws and enforcement and try to address the problems that you just so accurately pointed out. The organized crime and the serious threats posed by counterfeiting, and yes, terrorism. Now I think part of the issue is having empirical evidence on these linkages and I think that’s something that the governments need to try to do more of or try to do better with the help of organizations like INTA. So I completely agree with your assessment of how people react to it and I think at this point what we can do is try to educate and bring these issues to the forefront. And that’s precisely what we’re trying to do through the congressional trademark caucus. Educate our lawmakers and educate the public about the dangers of counterfeiting not just to trademarks owners but to consumers and the linkage between counterfeiting and things like organized crime and terrorism, which I think clearly you’re absolutely correct about.

QUINN: I suppose if you’re looking at this from a prosecutorial point of view, and I know that not to get into the discussion about whether terrorism should be or should not be treated as a crime versus some kind of military action.

COHN: Right.

QUINN: But if you’re looking at this just from the way that a lawyer would look at this, you go after the smaller crimes in order to find the information out that you need to work your way up the food chain. And it strikes me that one of the things that we’re constantly hearing in the news is about how these terrorists are funding their various activities and enterprises and going after various mechanisms of funding makes all the sense in the world. So it boggles my mind that there has not been a lot more emphasis placed on counterfeiting. Because it strikes me as a crime that if the governments really wanted to get very serious about you could do something about it because it’s not like you can sell these things in mass quantities in an alleyway in New York City. You know what I mean? Sure, there’s that kind of stuff that’s going on but these goods have to be made somewhere, they have to be transported somewhere, they have to be brought into the countries. And I just don’t see as much being done there as I would like or think could be done.

COHN: Right. currently there is a mechanism in place. There is a procedure that Customs and Border Protection goes through at our borders where the trademark owner has a federal registration and registers it at CBP. And in fact the counterfeits—I have a number for 2014- the counterfeits seized at U.S. borders have been valued at over $1.2 billion in 2014. So that’s probably a small part of what’s moving through our borders undetected. But that’s a lot of money, that’s a lot of value in counterfeit goods. And you’re right we’re not doing enough. But there is a procedure in place.

QUINN: That’s scary, that’s the scary part. I mean you’re seizing all that and it’s really only scratching the surface.

COHN: Right. But think about the way the world is now in terms of how people buy products. You buy them online. They get shipped in. there are many, many packages coming into the U.S. some of them are not in large containers, some of them are in small containers. And that’s an awful lot to be detected at the borders. And so I think we need to find more efficient ways of dealing with the problem. There are processes in place. They’re working but they’re not enough.

QUINN: Well, hopefully educating members of Congress and getting these issues in front of them more often. And not only just more often, but getting them in front of a group of people, Members who are interested in them and being involved in them and learning about them, because every issue needs a champion if it’s going to go anywhere.

COHN: Yes. And I think just getting back to our counterfeit discussion about the goods. When you buy something online there’s a lot of anonymity so it makes it more difficult for the source of those counterfeit products to be detected. So that’s another problem that we’re facing now that we weren’t facing years ago.

QUINN: Right. That’s true, that’s true. Because you can buy stuff from anybody and it just shows up in a brown box.

COHN: Exactly. The internet really heightens the problem. And it makes it so much more challenging to address.. So we may need better laws to help us do that. We need to strengthen our enforcement. And I think we need to cooperate internationally to get this done.

QUINN: Now one of the other things when you were saying that you’re involved in these committees with INTA was relating to trademark examination and so forth. And one of the big news stories that has come out in that area over the last several weeks is the decision of the Federal Circuit that law that says that you cannot register disparaging trademarks is unconstitutional. And I don’t know whether you want to comment substantively on that decision, but I would like to get you to tell us a little bit about what might be going on at the Trademark Office in terms of how do they handle a decision like that because that’s a pretty major shift. I don’t suppose we’re going to see a floodgate of disparaging trademarks after all that kind of defeats the purpose, I would think, of a trademark. But at the same time this changes a well-established rule so the word has to be trickling down to the trademark examining attorneys I would think somehow.

COHN: Yes, this decision was a major development and very interesting. But don’t forget it’s not quite over yet or it doesn’t have to be. The USPTO has the opportunity to request cert at the Supreme Court to have the decision reviewed. And it’s very possible that they will do that. So stay tuned on that issue. Once the matter is decided the PTO may to have to change their examination guidelines just like they’ve done in a number of areas where the guidance has changed or the law has changed. And so the good thing is that the PTO doesn’t get all that many marks filed that are disparaging so I don’t think it that it is going to have a major effect on many applications. But it will have some effect. I imagine there will be training involved and there will be some changes to the Trademark Manual of Examining Procedure. Everything that goes along with a change in the law. But as I said, this may not be over yet. And of course there are other decisions waiting in the wings that could be affected by this and so we’ll see how they come down. I’m thinking specifically of the Redskins decision, which is pending at the 4^th Circuit. And of course, since the 4^th Circuit does not have to follow the Federal Circuit, we don’t know whether the result will follow the Slants case.

QUINN: Right. And if they don’t that would really increase the odds that the Supreme Court would step in.

COHN: One would think so, right? I think that this issue is one that the Supreme Court should take up.

QUINN: Well I personally think that we have an incredibly political Supreme Court. And maybe a Supreme Court that’s a little bit too news hungry, I’ll say. So I would think even if the Fourth Circuit were to agree with the Federal Circuit and there was not a Circuit split here, I would still think that the Supreme Court would want to weigh in on this issue.

COHN: Yes, well we’ll have to stay tuned. I think everybody is interested in this. I think it’s a really fascinating issue and especially in the First Amendment area.

QUINN: Yeah. In the patent space we don’t see those. You see those quite a bit more often in the trademark base I suppose.

COHN: They’re still pretty rare!

QUINN: Now this was only dealing with disparaging marks, correct?

COHN: That’s right. It specifically addressed disparagement and nothing else.   The section of the statute that deals with disparagement also prohibits registration of marks that are scandalous and immoral, as well as deceptive. This case dealt only with disparagement, not the other portions of Section 2(a). However, it does leave some questions open about how some of these other areas might be handled in the future. There is another case, In re Brunetti, pending before the Court where the refusal was based on the scandalous portion of Section 2(a) so it will be interesting to see how that case might be affected by the Slant decision.

QUINN: I mean once upon a time I may have filed a trademark or two and I was probably involved in some trademark litigation matters over the years, but you learn more and more about less and less until you know everything about some very little tiny space. And that space for me is patents. So feel free to correct me here if I’m wrong.

COHN: Okay, I will correct you.

QUINN: I would think that since it’s the same part of the statute and since the statute says that you can’t register scandalous or disparaging marks that if the court says you can’t register disparaging marks that the same reasoning should really apply to scandalous marks. Now is there any argument that can be made that it would not other than this decision just didn’t go that far? Or –

COHN: Right. I think that’s probably outside of this discussion.

QUINN: Because that’s a pretty nitty-gritty legal issue I guess.

COHN: I think so. But let me just go back to something that you said a minute ago and I also alluded to and that is that there aren’t that many disparaging marks filed at the PTO and you thought there was unlikely to be a flurry. Having been at the USPTO for 31 years as I was, I saw a lot of marks that were filed at the PTO and some of them were pretty disparaging. So it’s not a big percentage of the filing to be sure but they certainly come in the door. And you’d be surprised what people like to say. So I’ll just leave it at that!

QUINN: Yeah, you know and I suppose so now that I think back on that comment that I said is look at the way that things are going and just look at the political discourse at the moment and there are just certain things that are being said that I think are just beyond the pale. And there are an awful lot of people that seem to just vociferously agree with things that strike me as just bizarre, I guess I’ll say.

COHN: I agree with that.

QUINN: So maybe in a country of over 300 million people there is a subset of people who would find a disparaging trademark to be a useful source indicator. I don’t know. Maybe we’ll find out.

COHN: Right. Either they don’t see anything wrong with disparagement or they don’t consider it disparaging, and that of course was one of the arguments in Redskins case. I mean there’s a question of whether Redskins was actually disparaging when it was registered.

QUINN: I think the more interesting legal question there, and not that we will ever be able to actually get to that although I think in some of the previous iterations of the Redskin case years ago they did focus on this legal issue is not whether it’s disparaging today but whether it was disparaging back then. And the way I always read these Redskin cases was that it was a lack of evidence that it was disparaging back when the mark was actually initially registered. Not that it wasn’t disparaging it’s just that was the critical moment that you had to prove it was disparaging back when it was registered which I think was back in 1920 and there just was no survey evidence or anything contemporaneously back then to suggest that it was so it was like a strict federal procedure evidentiary issue which in today’s day and age with the 24/7 news cycle and the media and the internet is a technicality I suppose in the mind of most people.

COHN: You’re absolutely right. The standard for finding disparagement for registration purposes is that it has to have been disparaging at the time of registration. So even though the Redskins case was recently litigated the, the question is – does the evidence show that it was disparaging then. It’s not what you can find today. It’s the time of registration.

QUINN: I think the problem was they were trying to use evidence from the 60s, 70s and 80s to prove what was going on in the 1920s in terms of view.

COHN: Well, I think some of the registrations were issued later on.

QUINN: Okay.

COHN: We’d have to go back and look at the case but I believe some of the registrations were issued later. I think one of the registrations—I don’t remember the exact registration dates but they were at least in the 1960s. But of course there was no Internet and as you say the news cycle was different, so that the availability of evidence was different and it would be harder to find records. It’s very interesting and that’s really the problem because we know that it wouldn’t be hard to find evidence today but the question is what was happening then.

QUINN: And depending upon what happens maybe we’ll never wind up knowing. But I wonder how disappointing it would be for people who think that the trademark should be stripped from the Redskins, if it is stripped and then the team just continues to go on and use the name anyway? Because they could always just continue to do that without any trademark protection anyway.

COHN: They could, but they couldn’t avail themselves of the benefits that come from trademark registration and one of those benefits is registering your mark with Customs and Border Protection. When you have a valid registration, CBP will actively stop counterfeits of that trademark from entering the country. And I would think an NFL sports team would want to have that type of protection. They might even require it.

QUINN: Yeah, that’s interesting. I hadn’t thought about the border issue but that’s certainly an issue for the NFL, which does have an awful lot of counterfeit issues of their own.

COHN: Right.

QUINN: And you see some of these things talked about online in the news and occasionally you’ll see somebody selling something online and it’ll clearly be a counterfeit because it’ll be a jersey of a player and the name on the back of the jersey is spelled wrong or something.

COHN: I agree, so I think that trademark registration is probably very important to an organization like the NFL. But you’re absolutely right when you say they don’t have to have the registration to use it.

QUINN: Well, it’ll be interesting to see what winds up happening there.

COHN: Yes.

QUINN: OK, now for some of the fun questions. What is your favorite hobby?

COHN: I enjoy playing piano, reading and theater. I try to work out regularly whenever possible.

QUINN: Are you a sports fan? If yes, what teams do you follow?

COHN: Not a big sports fan, but Washington Nationals would be the one.

QUINN: If and when you have any time to read for pleasure, what do you pick up to read? A novel? A magazine? The newspaper?

COHN: All of the above! My go-to magazine is the New Yorker.

QUINN: Do you have favorite author?

COHN: There are so many that I love, it’s impossible to narrow down. I recently read a book by Anthony Dorr called All the Light We Cannot See. It was amazing.

QUINN: Favorite movie?

COHN: Again, hard to pick one, but many of the Woody Allen films, the African Queen, The Birdcage and Casablanca come to mind.

QUINN: What food or foods could you not live with out?

COHN: Seafood and all kinds of fruits and veggies. I could live without meat!

QUINN: What kind of music do you listen to?

COHN: I love many types of music; Broadway tunes, jazz, rock, folk, anything Cole Porter or Gershwin, to name a few.

QUINN: Favorite bands or singers?

COHN: I recently saw Bette Midler in concert and remembered why I love her so much!

QUINN: Do you have a favorite historical trademark? If so, why?

COHN: Little Debbie, of course. There’s an interesting story behind that mark. Apparently, when Little Debbie turned 18, she tried to get the mark cancelled because she had never actually given consent. However, the court ruled that the consent given by her parent when she was a minor carried through and the mark was still valid.

QUINN: I really appreciate you taking the time to chat with me today and to tell us what you’re doing and to talk about some of these hot issues. Is there anything else that you want to talk about that we haven’t chatted about yet?

COHN: Just to mention that the Internet is another huge issue in trademarks. Last year, INTA brought on a Senior Director for Internet Policy, Lori Schulman, who is working full time on Internet and ICANN issues on behalf of trademark owners.

I encourage you or anybody else who wants to find out more about INTA to get in touch with me or any of our staff. It’s a pleasure to talk to you again, Gene, and let know if you have other questions.

QUINN: Great. It’s always good to talk to you too, Debbie, I really appreciate it.