Could infringing imports be jeopardizing your intellectual property rights without your knowledge? U.S. Customs and Border Protection (CBP) may be a valuable resource to protect your registered U.S. trademarks and copyrights, trade name, and U.S. patents at the border gates.
These benefits and protections to IP owners do not automatically follow issuance of a U.S. patent, trademark registration, or copyright registration, however. IP owners must take affirmative steps.
CBP is the primary federal agency responsible for securing America’s borders. With more than 60,000 employees, CBP monitors U.S. borders at and between 328 ports of entry, including more than 95,000 miles of shoreline, 1,900 miles of border with Mexico, and 5,000 miles of border with Canada. On a typical day, CBP welcomes nearly 1 million visitors, screens more than 67,000 cargo containers, arrests more than 1,100 individuals, and seizes nearly 6 tons of illicit drugs. CBP is also armed with the legal authority to detain, seize, examine, and forfeit or destroy infringing goods, and can make infringement determinations, subject to appellate review by U.S. federal courts. CPB is not required to establish personal jurisdiction over the importing party or prove intent to infringe to take enforcement action.
In fiscal year 2014, CBP processed 31.6 million trade entries, and seized approximately $1.2 billion worth of goods believed to infringe U.S. IP rights. The commodities that CBP seized in connection with more than 23,000 seizures included apparel and accessories, consumer electronics, pharmaceuticals and personal care products, footwear, watches, jewelry, optical media, computers and accessories, labels, tags, toys, and other goods. CBP analyzed samples and found intellectual property rights violations in commercial products that included integrated circuits, networking devices, gaming devices, and cell phones. Approximately 63% of the seized goods originated in China.
In comparison, CBP processed more than $2.3 trillion in trade in fiscal year 2013, including nearly 25 million cargo containers. CBP conducted more than 24,000 seizures of goods that violated intellectual property rights, with a total retail value of $1.7 billion, representing a 38 percent increase in value from fiscal year 2012.
To take advantage of CBP’s formidable IP enforcement resources and intercept foreign pirated, counterfeit, or gray market goods at the border, intellectual property owners may record U.S. trademark and copyright registrations and trade names with CBP. Owners of U.S. trademark registrations may also apply for “Lever rule” protection to prevent parallel imports of gray market goods, which are branded goods that are purchased outside the U.S. and imported for sale into the U.S. without authorization from the U.S. trademark owner. Patent owners cannot presently record U.S. patents with CBP, but may be entitled to exclusion of infringing imports into the U.S. under Section 337 of the Tariff Act of 1930.
Trademarks
A trademark owner who has registered a trademark with the United States Patent and Trademark Office (USPTO) may apply to record the trademark registration with CBP, and may also apply for “Lever rule” protection against parallel imports or gray market goods. CBP primarily focuses its border trademark enforcement efforts on marks that have been recorded with CBP.
Trade Names
A trade name is the name under which a company does business. Trade names are not registered with the USPTO, but may be recorded with CBP if they have been used to identify a trade or manufacturer for at least six months. Notice of tentative recordation of a trade name is published in the Federal Register and the Customs Bulletin and Decisions (Customs Bulletin) to provide notice to the public and give interested parties an opportunity to oppose the recordation.
Copyrights
CBP’s border enforcement of copyrights is primarily concentrated on works of authorship covered under copyrights that are registered with the U.S. Copyright Office (USCO) and have been recorded with the agency.
Patents
Although a patent that is issued by the USPTO may not be recorded with CBP, the agency enforces exclusion orders issued by the U.S. International Trade Commission (ITC) pursuant to Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), which provides relief to U.S. industries that have established the existence of unfair trade practices in importing. ITC exclusion orders are issued for findings of patent infringement, among other things. CBP has authority to exclude importation of articles that infringe a patent pursuant to an exclusion order issued by the ITC.
To harness the powers of CBP to close the border gates on infringing imports, consult with an experienced intellectual property attorney.
News and commentary from the Intellectual Property attorneys at Preti Flaherty.
