United States: Mitigating The Risk Of Infringing Goods By Working With U.S. Customs And Border Protection

Last Updated: January 30 2018
Article by E. Martín Enriquez

A company's brand is among its most valuable assets. Therefore, protecting a company's trademarks is critically important. The importation into the United States of infringing goods presents a substantial brand risk to trademark owners. Few people are aware of the role that the U.S. Customs and Border Protection (CBP) plays in enforcing intellectual property rights at the U.S. border. CBP is authorized to search and seize any goods presented for importation into the U.S. and has legal authority to determine whether they infringe upon a federally registered trademark.

At Lewis Roca Rothgerber Christie LLP, we help our clients protect their brand and marks by working closely with CBP to mitigate the risk of infringing goods being imported into the U.S. We assist our clients in establishing an effective CBP enforcement program by doing the following: (1) recordation of our client's marks, (2) development of training for CBP personnel and ongoing education about our client's marks; and (3) counterfeit prevention.

Recordation

The first step we take to establish a CBP enforcement program for our clients is to record our client's trademarks with CBP. Trademark owners who record their marks benefit from increased CBP enforcement of their mark because (a) CBP focuses enforcement efforts on recorded marks as a matter of policy; and (b) trademark information is available at all ports thereby helping CBP officers with infringement determinations. Owners of recorded trademarks also are entitled to information from CBP related to the detention and seizure of goods bearing infringing marks.

Importantly, only marks registered with the USPTO may be recorded with CBP. CBP permits the filing of paper applications. However, using CBP's e-Recordation system is more efficient. Using the e-Recordation system provides the following benefits:

  • Eliminates the need submit a paper application and supporting documentation, such as copies of certificates of registrations;
  • Allows trademark owner to upload images of their protected trademarks; and
  • Reduces the time for processing the application.

Product Identification Training Guide and Training of CBP Personnel

A Product Identification Training Guide ("PITG") is a manual we assist our clients in preparing to educate CBP on our clients, their marks, and their goods. PITGs help CBP make infringement determinations at the port. All PITGs submitted to CBP are placed on CBP's internal websites and linked to the e-Recordation system. This provides extensive information about recorded intellectual property rights to the field to assist with infringement determinations.

We also help our clients develop product identification training for CBP personnel. Trainings can be conducted in person or via webinars. In person training allows trademark owners to interact face to face with the officers, import specialists, and other CBP personnel who will actually inspect shipments and look for intellectual property rights infringements. According to CBP, trademark owners who conduct product identification trainings see a heightened identification of counterfeit goods.

In person trainings can be transmitted live to multiple ports minimizing your travel costs, maximizing the number of CBP attendants, and allowing for question and answer periods. Training webinars are recorded allowing for future viewing by rotating Port personnel. As product identification information changes, webinars can be updated, building a portfolio of webinars about your products available to CBP.

Counterfeit Prevention

Being prepared to assist CBP in determining whether goods are infringing on a mark is critical to having CBP enforce a client's mark at the border. If contacted by CBP, a trademark owner must respond quickly to assist CBP.

When goods are presented to CBP for importation, CBP has five days to determine whether to detain the goods. Within those five days, CBP may disclose information, such as the port of entry, description of the goods, and country of origin to the trademark owner to assist in its infringement determination. (19 C.F.R. § 133.21(b)(2)). CBP may also provide a trademark owner with images of the suspected goods, a sample, or its retail packaging. If a sample is provided, the trademark owner must post a bond that is typically 120% of the cost, insurance, and freight value of the sample, plus other applicable fees. A trademark owner should respond quickly to inquiries from CBP because absent clear evidence of infringement, CBP may allow the suspected goods entry into the U.S.

If CBP does detains goods, it has five days from the date of detention to notify the importer of the detention. The notice advises the importer of the detention and that information regarding the goods may have been provided to the trademark owner or is being provided concurrently with the notice. The importer has seven days to provide evidence that the goods are not infringing. (19 C.F.R. § 133.219(b)(ii)).

CBP has 30 days from the day of detention to either seize or release the goods. To seize goods, CBP must have probable cause to believe that the goods infringe on the intellectual property rights of another. If goods are seized, CBP must disclose the following information to trademark owners:

  • Date of importation;
  • Port of Entry;
  • Description of the seized goods;
  • Quantity of the seized goods;
  • Country of origin;
  • Name and address of the manufacturer;
  • Name and address of the exporter; and
  • Name and address of the importer.

(19 C.F.R. § 133.21(e)). CBP may provide a sample of the suspected counterfeit goods to the trademark owner for examination, testing, or for possible use in a private cause of action. (19 C.F.R. § 133.21(f)). The trademark owner must post a bond. (Id.).

After the suspected counterfeit goods are seized, they are considered to be subject to forfeiture. CBP may then destroy the counterfeit goods or, alternatively, if the goods are not unsafe and the trademark owner consents, CBP may obliterate the counterfeit mark and either send the goods to a federal, state, or local government agency; donate the goods to charity; or sell the goods at a public auction.

In sum, protecting a company's trademarks is critical to protecting the value of a company's brand. Implementing a CBP enforcement program and working closely with CBP to prevent the importation of counterfeit goods should be an important element of a company's brand protection program. Please contact us if you would like to learn how LRRC can help your company work with CBP to prevent the importation of counterfeit goods.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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