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IP: Protect and expand your brand by battling counterfeit products, Part 2

Working with U.S. customs to protect your IP rights

This is the second of a six-part series (see part 1: Brand protection and expansion) exploring how companies can grow the value in their brands by leveraging and protecting their intellectual property. In today's article, we will discuss how to best help U.S. Customs and Border Protection (CBP), a division of the U.S. Department of Homeland Security, keep counterfeit versions of your products out of the United States.

Even as the world economy has sputtered, global intellectual property theft and trafficking in counterfeit and pirated goods has grown at an alarming rate. The Counterfeit Intelligence Bureau of the International Chamber of Commerce estimates that counterfeit goods make up 5 percent to 7 percent of world trade. Counterfeiting is thought to rob U.S. businesses of $200 billion to $250 billion annually, and has evolved into a sophisticated black market industry involving the manufacture and sale of counterfeit versions of everything from pharmaceuticals to airplane parts.

The CBP is a key ally in the uphill battle to keep counterfeit products out of the U.S. CBP examines cargo at more than 300 ports of entry into the U.S., and seizes goods that appear to infringe registered trademarks and copyrights on record with CBP. CBP also has the authority to seize any goods entering the United States, even if the goods are not intended for the U.S. market and the shipment is simply passing through the United States to another country. CBP can also issue monetary fines, request that the U.S. Attorney's Office criminally prosecute the offenders, and/or coordinate and participate in raids on international counterfeit production facilities.

If used properly, CBP can be a cost-effective weapon in a company's intellectual property protection arsenal. Although sheer numbers dictate that not all cargo shipments can be examined by CBP, there are a number of steps intellectual property owners can take to make it easier for CBP to enforce their rights.

First, businesses need to register their key trademarks with CBP, and take advantage of the recently instituted electronic filing system. Once registered, information about the subject intellectual property is available via an electronic database accessible to over 40,000 U.S. CBP officers in the U.S. and abroad. The electronic database can be uploaded with images of protected rights and suspected counterfeits. It is also possible to record a trade name with CBP.

Second, if a brand owner becomes aware of shipments arriving from a particular entity, it can electronically submit allegations of infringing shipments or conduct to CBP via the e-Allegations online reporting system. Submissions can be anonymous, and may include photos and other documentation. CBP disseminates this information to the appropriate office or port of entry for investigation, and uses this information to target suspect activities.

Third, in order to help CBP with making accurate infringement determinations in the field, brand owners can submit product identification guides that are placed on CBP's internal website and linked to the e-Recordation system. These guides contain information about the company, its intellectual property, its CBP recordation numbers, and photos of genuine and suspect versions of the goods. Intellectual property owners can provide physical "pocket guide" versions of these electronic guides to agents assigned to ports of interest. Brand owners can also ask to be allowed to provide product identification training to CBP personal at specific ports of entry, which allows for face-to-face interaction with the officers and import specialists who actually inspect shipments and look for intellectual property right infringements.

Finally, it is critical to maintain a central point of contact between the intellectual property owner or its agent/attorney, so that a prompt determination can be made as to whether the seized goods are truly counterfeit. Intellectual property owners can help CBP with the process by understanding that the relationship with CBP works most effectively when it is a two-way street. U.S. Customs and Border Protection is an essential partner to thwart counterfeiters seeking to infiltrate the U.S. market with knock-off products. By working closely with CBP, intellectual property owners can help enhance the protection this agency provides.

Contributing Author

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Monica Riva Talley

Monica Talley is a director in the trademark practice at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox P.L.L.C....

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