Alt Legal Webinar SummaryAll Abroad: Insights from USPTO Attachés
Alt Legal Team | May 30, 2025
This article summarizes the Alt Legal Webinar, “All Abroad: Insights from USPTO Attachés,” which was presented on May 7, 2025. Learn more about the webinar here.
Counterfeits, Port Pressure, and Policy Advocacy in Latin America
Jenn Chicoski, the IP attaché based at the U.S. Embassy in Lima, Peru, spoke first among the attachés. She covers five countries in the Andean region: Peru, Chile, Colombia, Ecuador, and Bolivia. She described the attaché’s day-to-day work, including embassy-based operations and collaboration with the U.S. Foreign Commercial Service.
Jenn explained that Peru ranks second globally (tied with Paraguay) for counterfeiting activity, behind only China. With the recent opening of Chancay, a massive new deep-water port, the country faces rising imports of counterfeit goods from China and elsewhere. Jenn is advocating for the appointment of a specialized IP prosecutor for the port to address these issues.
She’s also working to support Peru’s accession to the Madrid Protocol so that companies can more easily extend trademark protection there. Currently, only Colombia and Chile among her five countries participate in the Madrid system.
Jenn highlighted regulatory shifts like brand restrictions in Chile, where packaging for sugary or fatty foods can no longer feature cartoon characters, sports mascots, or animals. She shared an example of foil-wrapped, featureless chocolate bunnies and Santas in Chile, stripped of their branding due to these policies. She emphasized that these restrictions raise trademark concerns and could erode longstanding brand equity.
Other efforts in her region include engagement with the Andean Community’s Tribunal of Justice, following a new Memorandum of Understanding, and legal capacity-building in the face of GI policies that potentially threaten common terms like cheese names long used by U.S. producers.
New Beginnings in Sub-Saharan Africa
Katherine Hiner, newly appointed as the first IP attaché to Sub-Saharan Africa, described her early days stationed in Johannesburg, South Africa. Her territory includes 49 countries, and while she acknowledged that she’s just getting started, she’s already working on building relationships and continuing the USPTO’s regional initiatives.
She pointed out the public health threats of counterfeit goods—including fake alcohol, tobacco, hygiene products, and electronics. Katherine stressed that industry engagement has been key, with brand owners helping her identify the worst-affected sectors and provide leads for enforcement.
She’s also monitoring brand labeling laws that could negatively impact trademark usage—echoing concerns raised in Latin America—and reiterated that trademarks serve a vital consumer protection role by helping distinguish genuine goods from counterfeits.
Brazil and Beyond: The IP Landscape in Mercosur
Cairo Jennings, IP attaché based in Rio de Janeiro, Brazil, covers Brazil, Argentina, Venezuela, Paraguay, and Uruguay. He described Brazil as accounting for about 70% of U.S. stakeholder interest in the region.
Cairo emphasized Brazil’s progress in recent years, including its 2021–2022 accession to the Madrid Protocol and its recognition of nontraditional trademarks including:
- Position marks, like the iconic red sole of Louboutin shoes.
- 3D marks, such as the shape of a PlayStation controller.
- Slogans, which were previously unregistrable due to their “advertising character.”
These developments open new avenues for brand protection, but he warned of challenges like significant examination backlogs (currently up to two years).
He also described the Tri-Border Area (Brazil, Paraguay, Argentina) as a hotspot for counterfeit traffic. In one case, a U.S. company was unaware that its 3D product configuration could now be protected in Brazil. Cairo guided them through recent policy updates to help them proceed.
Geneva: Shifting Global Narratives
Helene Liwinski, on detail to the Office of the U.S. Trade Representative posted to the U.S. Mission to the WTO in Geneva, spoke about her work at the TRIPS Council, where formal and informal meetings take place year-round. Part of her mission in Geneva is to promote IP as a tool for economic development.
Helene pointed out that while patent-related issues dominate the agenda, trademark and copyright issues can be more accessible entry points for global IP discussions. She described trademarks as especially relevant for developing economies and small businesses looking to export.
She’s also deeply involved in technology transfer discussions, advocating for strong IP systems as a necessary part of enabling environments.
China: Long Games, Live Streams, and Legal Grey Zones
Conrad Wong, a seasoned IP attaché focused on Guangzhou, Hong Kong, and Macau, underscored the importance of long-term thinking when dealing with China’s complex and evolving IP environment. He discussed:
- Bad-faith trademark filings, enabled by China’s first-to-file system.
- E-commerce enforcement challenges, especially via livestreaming and short-video sales, which make counterfeits harder to track.
- The growing lack of transparency in Chinese courts and data, which complicates IP strategy.
He shared historical context (like the 99-year lease of Hong Kong) to illustrate China’s strategic patience and urged U.S. businesses to retain local counsel and think in decades, not quarters. He also addressed the challenges of bilateral engagement under current geopolitical tensions, describing a pivot to lower-level but more fruitful informal interactions.
Practical Advice for IP Practitioners
The Q&A session, moderated by Debbie Lashley-Johnson, tackled tactical questions:
- On Madrid Protocol vs. national filings, the consensus was that while Madrid is efficient, local counsel is often essential for enforcement and filings.
- Jenn recommended leveraging resources from the Foreign Commercial Service and country-specific IP toolkits to identify local associates.
- Cairo and Conrad emphasized maintaining strong foreign associate networks—a practice often formalized at global trademark events like INTA.
Asked who their stakeholders are, Debbie clarified that the attachés serve all U.S. rights holders, from inventors and entrepreneurs to large corporations.
When asked what she looks for in attachés, Debbie stressed a mix of IP expertise, international policy experience, and diplomatic finesse. Conrad added that language skills, self-direction, and flexibility are critical—“You’re 9,000 miles from home flying the flag,” he said.