Counterfeit and infringing products as well as falsified medicines seek entry into the United States at very high levels. Recent increases primarily through sales by third-party sellers on online platforms have accelerated dramatically due to the pandemic and the increasing number of consumers who purchase products from online marketplaces.
One of the most efficient and cost-effective remedies for trademark and copyright owners to prevent these products from entering the United States is to take advantage of enforcement remedies offered by the US customs and border patrol (CBP)
The CBP has the authority under the Code of Federal Regulations to inspect products imported into the United States and to detain, seize and destroy merchandise that infringes upon trademarks or copyrights, provided they are registered with the US Patent and Trademark Office or the US Copyright Office.
A recent development would expand the coverage of the existing recordation program to US design patents. On December 5, 2019, a bipartisan group of senators introduced the Counterfeit Goods Seizure Act of 2019 (CGSA) which would add design patents to CBP’s current enforcement mechanism for trademarks and copyrights. While the bill has not made significant progress since its introduction, we are monitoring it with the hope that it will be enacted in 2021
In order to obtain assistance from CBP, the owner needs to record the trademark or copyright with CBP in Washington, DC. Upon recordation, the recordal information is distributed to over 300 ports of entry in the United States.
The official filing fee for recordation is $190 per trademark for each international class of goods. The official filing fee for recordation of a copyright is also $190. The renewal fee is $80 per mark, per class of goods. Recordations remain active for the life of the trademark and must be renewed when trademark registrations are renewed every 10 years. Copyright recordals are active for the life of the copyright.
In order to assist CBP in identifying infringing merchandise, trademark and copyright owners are encouraged to provide CBP with detailed information in the form of an IPR product ID training guide which will contain information on the identification of legitimate and infringing products; the ports of entry for authentic products; names and addresses of suspected exporters/importers of infringing goods and ports of entry for such goods and any other information that can be shared with CBP to stop infringing products at the country‘s borders. This may include samples of legitimate and infringing products either with photographs or actual samples.
In person training may also be conducted by the rights holder at CBP field offices or through webinars for CBP personnel throughout the country.
When faced with suspected infringing goods, CBP can share information with the rights holder to determine whether the goods are infringing. This information may include:
- the country of origin;
- a description of the merchandise;
- photographs of the merchandise;
- a sample of the merchandise and, in some cases,
- information that can be used to identify the manufacturer, exporter or importer such as serial numbers, product codes or batch numbers
Recordation of trademarks and copyrights is also available in the number of countries outside the United States. As an example, the European Union allows customs recordation of trademarks with provisions that are modeled on the US customs recordation system.
We maintain close contact with CBP officials and can assist clients in identifying the trademarks and copyrights that should be considered for recordation, preparing manuals and training materials to help educate CBP on identifying infringing products and answering questions concerning specific issues with regard to obtaining assistance from CBP and overseas customs offices.
Any questions concerning how we can assist clients in taking advantage of CBP remedies should be directed to James L Bikoff and Bruce A. McDonald in the Washington, DC office.