As the FIFA World Cup began, counterfeiters were busy turning out fake uniforms to capitalize on fans’ eagerness to sport their teams’ colors. But last month, vigilant U.S. Customs and Border Protection officers in San Juan intercepted a shipment from Hong Kong containing counterfeit Argentina, Brazil and Italy team uniforms bearing counterfeit Adidas, Puma and Nike trademarks. It is not just the large brands that can get this kind of help. Your brand can get the same protection, and this article will describe how.
In our first article in this series, we discussed budgeting for anti-counterfeiting programs. In the second, we delved deeper into trademark portfolios, commercial agreements and supply chains. But, once a brand owner has registered its trademarks and understands the supply chain and the markets for its products, it should next consider the tools and resources available to prevent counterfeit goods from entering the market where they will compete with the brand’s genuine products. U.S. Customs and Border Protection (CBP) is one of the best resources that exists.
When many people think about U.S. Customs and Border Protection, they envision Border Patrol agents or recall a time standing in line at an airport trying to decide whether they need to declare the souvenirs in their luggage to the Customs officer. Fewer people are aware of CBP’s role in enforcing intellectual property rights. However, CBP is authorized to search and seize any goods presented for import into the United States and has legal authority to determine whether they infringe upon a federally registered trademark. By recording your mark, Customs may be able to use its authority to prevent counterfeit versions of your products from being imported into the United States.
CBP is a component of the Department of Homeland Security. The agency is charged with securing America’s borders and is responsible for protecting legitimate trade by enforcing certain import and export laws at the borders and ports. Two statutes are particularly important to CBP’s authority to enforce trademark rights — the Tariff Act and the Lanham Act — and CBP’s practices and procedures are set out in the Customs Regulations. Part 133 of the Customs Regulations deals with trademarks, tradenames, and copyrights and details the requirements for recording trademarks as well as CBP’s procedures to detain and seize goods that infringe upon them.
The first step to establishing a Customs enforcement program is to record your trademarks with CBP. A mark owner or its representative may “record” a mark that is registered with the U.S. Patent and Trademark Office. The online recordation process is relatively easy and involves uploading information about the mark as well as providing a point of contact and an image of the registered mark and, of course, payment of a modest fee.
After your marks are recorded, Customs may begin taking action against goods suspected of infringing upon them pursuant to the procedures set forth in the Customs Regulations. First, Customs may detain a product suspected of bearing a counterfeit version of your recorded mark. Customs will then notify the importer about the detention. CBP is also authorized, though not required, to disclose certain limited information to the mark owner. Generally, Customs will disclose this information — typically accompanied by photographs of the detained products — in order to obtain assistance with determining whether the goods actually infringe your mark. The mark owner can also acquire a sample of the goods upon request and after furnishing a bond. If CBP does not release the products by the end of the detention period, they will be not be allowed to pass through customs.
Customs may also seize goods at any point after they are presented for examination if it determines that they bear a counterfeit mark. After seizure, CBP must disclose to the mark owner the date of importation; port of entry; a description of the merchandise, including quantity; the country and origin of the merchandise; and the names and addresses of both the importer and exporter. As with detention, a sample of the product and its retail packaging are available to the mark owner that satisfies the bond and indemnity requirements. Following the seizure notification from CBP, the mark owner has 30 days within which to consent to the importation of the goods. Absent consent, the goods will be disposed of pursuant to applicable regulations.
Advocate for your brand
Though Customs may take action, the mark owner’s work is not complete after recording its trademarks. The point of contact identified on the recordation takes on two primary roles that are both important in different ways. First, the contact must be available to respond to inquiries and requests for assistance if Customs seeks the mark owner’s input. CBP is extremely busy and its officers and import specialists need mark owners to respond quickly and accurately. Accordingly, the point of contact must either possess the information necessary to assist Customs or have easy access to the people within the mark owner’s organization who have that information.
Second, the point of contact will receive the seizure notifications from Customs, which can contain information about the shipment — such as the importer and exporter’s names and addresses. This information can help the mark owner develop a more thorough understanding of the sources and scope of counterfeit goods. And, when analyzed properly, this intelligence is incredibly valuable to help guide the mark owner’s independent investigatory and enforcement efforts.
Finally, working with Customs presents the mark owner an opportunity to advocate for its brand. Prompt, reliable responses to Customs will certainly engender goodwill toward you and your brand and may encourage Customs to reach out to you more frequently in the future. A mark owner may also further its brand protection mission by training CBP about its products and by developing professional relationships through personal contacts with the various individuals and offices within the agency that are tasked with enforcing intellectual property rights.
Customs recordation is one resource to combat counterfeits that routinely provides a large return on a relatively small investment of time and money. Despite the apparent ease with which an owner can record its marks online, many brand owners recognize that counsel can assist with navigating and managing their Customs programs. Attorneys designated as the point of contact can liaise with Customs on behalf of their clients, which can ease the burden on the mark owner. They can also collect and analyze the seizure information provided by Customs. Counsel can even help the mark owner advocate for the brand by preparing product guides and by conducting port trainings and outreach to Customs. Every brand holder should consider the potential benefits of recording its marks as well as how counsel can add value to its Customs enforcement program to best protect the value and integrity of the brand.