Executive Advocacy
AIPLA regularly provides comments to different agencies within the U.S. government, as well as to other domestic organizations, on matters impacting intellectual property laws and protection.
Internal Revenue Service
- AIPLA Testimony on proposed revisions to 26 C.F.R. Parts 1 and 301, delivered February 21, 2008 before the Internal Revenue Service. (PDF)
- AIPLA Response to the October 2007 rule proposed by the U.S. Internal Revenue Service (IRS) on “Patented Transactions,”submitted December 26, 2007 (3 pages - 37K* - Click PDF to view the Response; click HERE to view the IRS proposed rule (10/22/2007)
National Academy of Sciences
- AIPLA Response to the National Research Council's Report on Reaping The Benefits of Genomic and Proteomic Research (31 pages –197K* Click HEREto view the Response; For information on the Report: Reaping the Benefits of Genomic and Proteomic Research: Intellectual Property Rights, Innovation, and Public Health, please visit The National Academies Press by clicking HERE.)
- AIPLA Response to the National Academies Report entitled "A Patent System for the 21st Century" (49 pages–243K* Click PDF to view the Response; Click PDF to view the Report.)
National Institutes of Health
- Comments on Draft Report to the Secretary of Health and Human Services: "Public Consultation Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests" 74(52) Federal Register 11730 (March 19, 2009) ( PDF)
National Institute of Standards and Technology
- AIPLA Comments to NIST on March-In Rights Guidance, February 5, 2024 (PDF)
- AIPLA Feedback to NIST Draft Green Paper on ROI Initiative February 8, 2019 (PDF)
- AIPLA Response NIST Bayh-Dole Regulation, Dec 9, 2016 (PDF)
- AIPLA Comments to the National Institute of Standards and Technology (National Science and Technology Council's Sub-Committee on Standards) on Standardization Feedback for Sub-Committee on Standards, February 18, 2011 (PDF)
US Customs and Border Protection
- AIPLA Comments to U.S. Customs and Border Protection on Customs 21st Century Framework, February 2, 2019 (PDF)
- AIPLA Comments to U.S. Customs and Border Protection on Proposed Rulemaking, "Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border," June 25, 2012 (PDF)
US International Trade Commission
- AIPLA Comments on the International Trade Commission’s Investigation of Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), May 3, 2023 (PDF)
- AIPLA Comments on Proposed Amendments to the Commission's Rules of General Application, Adjudication and Enforcement, November 23, 2015 (PDF)
- AIPLA Comments on Commission FY2015 Budget and Space for Section 337 Investigations, May 19, 2014 (PDF)
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator in Response to Request for Public Comments: "Interagency Review of Exclusion Order Enforcement Process," July 19, 2013 (PDF)
- AIPLA Comments on "Notice of Proposed Rulemaking on Rules of General Application, Adjudication, and Enforcement,” December 4, 2012 (PDF)
- AIPLA Comments on "Notice of Proposed Rulemaking on Rules of General Application, Adjudication, and Enforcement,” September 17, 2012 (PDF)
- AIPLA Comments on Proposed Revisions to Rules of Practice and Procedure and Proposed Handbook on Filing Procedures, August 5, 2011 (PDF)
- AIPLA Comments on proposed revisions to 19 C.F.R. Sections 201 and 210, filed March 19, 2008 at the US International Trade Commission (PDF)
US Securities and Exchange Commission
- AIPLA Comments to Concept Release on Business and Financial Disclosure Required by Regulation S-K, August 9, 2016 (PDF)
US Trade Representative
- Letter Submitted to the Office of the US Trade Representative Supporting US Opposition to TRIPS Waiver Proposal, March 30, 2021 (PDF)
- AIPLA Comments on the Draft Convention on the Recognition and Enforcement of Foreign Judgments Relating to Civil or Commercial Matters, March 19, 2018 (PDF)
- AIPLA and PhRMA Comments on Draft Convention on the Recognition and Enforcement of Foreign Judgments Relating to Civil or Commercial Matters Currently Being Negotiated at The Hague Conference on Private International Law, July 19, 2017 (PDF)
- AIPLA Comments on the proposed Anti-Counterfeiting Trade Agreement ("ACTA" or "Agreement") and the ongoing negotiations between the possible Member States, submitted September 27, 2010. (PDF)
- AIPLA Comments on the Proposed Amendment and Correction of Trademark Registrations published in the Federal Register on December 18, 2003 (Comments submitted February 2, 2004) (PDF)
- AIPLA Comments on the "Work Program set forth in the draft Ministerial Declaration submitted by the WTO General Council and WTO Director-General for consideration at the Fourth Session of the Ministerial Conference scheduled for Doha, Qatar next month" (October 11, 2001) (PDF)
Other
AIPLA Files Comments to Health and Human Services (HHS) on the World Health Organization's (WHO) Proposed Pandemic Treaty
- AIPLA Comments to HHS on WHO Pandemic Treaty, January 31, 2024 (PDF)
AIPLA Files Comments on Proposed Final Pretrial Conference Pilot and Order
- AIPLA Files Comments on Proposed Final Pretrial Conference Pilot and Order, August 26, 2022 (PDF)
AIPLA Comments to ACUS on Patent Small Claims Court
- AIPLA Comments on a Potential Small Claims Patent Court or Small Claims Patent Proceeding and its Impacts, July 5, 2022 (PDF)
Regarding the Position of the USPTO Director
- AIPLA Comments to the Department of Commerce Regarding the Position of USPTO Director, June 28, 2017 (PDF)
- AIPLA White Paper Concerning the Recommended Qualifications for the Next Director and Deputy Director of the U.S. Patent and Trademark Office, November 2013 (PDF)
Office of the Presidential Transition
- AIPLA Letter to Biden Administration, February 26, 2021 (PDF)
- AIPLA Letter to President-Elect Donald Trump, January 4, 2017 (PDF)
U.S. Intellectual Property Enforcement Coordinator
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator on Development of the Joint Strategic Plan on Intellectual Property Enforcement, December 3, 2018 (PDF)
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator on Development of the Joint Strategic Plan on Intellectual Property Enforcement, October 30, 2015 (PDF)
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator in Response to Request for Public Comments: "Interagency Review of Exclusion Order Enforcement Process," July 19, 2013 (PDF)
- AIPLA Comments to OMB Regarding Negative Impact of Sequestration on USPTO Funding and Operations, May 21, 2013 (PDF)
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator in Response to Request for Public Comments for "Trade Secret Theft Strategy Legislative Review," April 22, 2013 (PDF)
- AIPLA Comments to U.S. Intellectual Property Enforcement Coordinator on Development of the Joint Strategic Plan on Intellectual Property Enforcement, August 10, 2012 (PDF)
The Sedona Conference
- AIPLA Comments on the Sedona Conference Report on the Markman Process, submitted February 2, 2007 (PDF)
- AIPLA Comments on the Revised April 2005 Public Comment Draft" of The Sedona Guidelines: Best Practices Addressing Protective Orders, Confidentiality & Public Access in Civil Cases (the "Draft Guidelines"). Filed May 14, 2006. (PDF)
- Letter expressing initial concerns of AIPLA on the Revised April 2005 Public Comment Draft" of The Sedona Guidelines: Best Practices Addressing Protective Orders, Confidentiality & Public Access in Civil Cases (the "Draft Guidelines"). Filed March 10, 2006. (PDF)
Miscellaneous
- AIPLA Joint Comments to Mayor Eric Garcetti in Support of the Anti-Piracy Unit of the Los Angeles Police Department, March 9, 2018 (PDF)
In This Section
Recent Advocacy
Written June 14, 2024
On June 13, 2024, the Supreme Court decided that the Lanham Act’s names clause does not violate the First Amendment. The decision contrasts with the amicus brief filed by AIPLA on August 1, 2023. To read the opinion of the Court, please click here.
BACKGROUND
In 2018, Steve Elster sought to register the expression "TRUMP TOO SMALL" for use in the production of shirts, with the intention of using the mark as a form of political commentary. The trademark examining attorney at the US Patent and Trademark Office (USPTO) rejected the application, referencing two provisions of the Lanham Act: Section 2(c), which prohibits registering a mark that identifies a living individual without their consent, and Section 2(a), which prohibits marks that falsely imply a connection with living or deceased individuals. Elster appealed, claiming that these statutory bars against registration violated his First Amendment rights because they are not narrowly crafted to address a compelling government interest.
The Trademark Trial and Appeal Board (TTAB) upheld the examining attorney’s decision that Section 2(c) is constitutional but did not address Section 2(a). The United States Court of Appeals for the Federal Circuit, however, overturned the TTAB’s decision, stating that the refusal to register Elster’s mark under Section 2(c) violated the First Amendment by restricting the expressive content in the mark criticizing a government official.
On January 27, 2023, the United States petitioned the Supreme Court to hear the case. The Court granted certiorari on June 5, 2023. The question presented is whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.
OPINION OF THE COURT
The Supreme Court ruled that the USPTO did not violate the First Amendment when it refused to register the trademark "Trump Too Small." The decision upheld a federal law prohibiting trademarks that include other people's names, affirming that it does not violate the Constitution. This ruling reverses the U.S. Court of Appeals for the Federal Circuit's decision, which had found that barring the registration of "Trump Too Small" unconstitutionally restricted free speech.
Justice Clarence Thomas, writing for the majority, stated, "The history and tradition of restricting trademarks containing names is sufficient to conclude that the names clause is compatible with the First Amendment." The Court ruled unanimously that prohibiting trademarks with a living person's name without their consent does not violate free speech rights, noting that the decision is narrow in scope.
"The Lanham Act's names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted," Thomas wrote. "These name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause — a content-based, but viewpoint-neutral, trademark restriction — is compatible with the First Amendment."
Justice Thomas delivered the opinion of the court, except as to Part III. Justices Alito and Gorsuch joined that opinion in full; Chief Justice Roberts and Justice Kavanaugh joined all but Part III; and Justice Barrett joined Parts I, II-A, and II-B.
CONCURRING OPINIONS
Justice Kavanaugh, joined by Justice Roberts, concurred with the majority opinion except for Part III. He agreed that the names clause is constitutional, emphasizing the long history of restricting the use of another’s name in trademarks. Kavanaugh also suggested that a viewpoint-neutral, content-based trademark restriction might still be constitutional even without this historical context, and that this issue could be revisited in a future case.
Justice Barrett, joined by Justices Kagan, Sotomayor, and Jackson in part, concurred with the Court's conclusion that the names clause does not violate the First Amendment but disagreed with some of the Court's reasoning. She argued that the historical evidence cited by the Court does not sufficiently establish a tradition justifying the clause. Barrett believes a standard should be adopted, grounded in trademark law and First Amendment precedent, to determine when content-based trademark restrictions are permissible. She emphasized that such restrictions should be allowed if they are reasonable and serve the trademark system's purpose of source identification.
Justice Sotomayor, joined by Justices Kagan and Jackson, concurred with the judgment but disagreed with the Court's reliance on history and tradition to uphold the names clause's constitutionality. She argued that the constitutionality of viewpoint-neutral, content-based trademark registration restrictions should be evaluated using established First Amendment precedent rather than historical analogues. Sotomayor emphasized that such restrictions are permissible if they are reasonable and serve the trademark system's purpose of facilitating source identification, as the names clause does by preventing source confusion and protecting producer goodwill.