Intellectual Property

Customs and Border Protection is responsible for preventing merchandise that infringes U.S. copyrights, trademarks, and other intellectual property rights from entering the country. Customs is also responsible for the enforcement of exclusion ordered issued by the International Trade Commission in Section 337 cases, which generally focus on the enforcement of patent rights.

Trademark Issues

Importers of branded merchandise should be aware that the law prohibits the importation of merchandise bearing a U.S. trademark without the permission of the trademark owner. Thus, importers should be prepared to show authorization from the rights holder. Absent permission, Customs can seize the infringing goods. While Customs can seize any infringing goods, its primary focus is on the interdiction of counterfeit goods. Counterfeit goods are products that bear a mark that copies or simulates a registered trademark. Because counterfeiting is illegal activity, the counterfeited products are often of inferior quality and may pose a risk to health and safety.

Copyrights

Customs also has the power to exclude "piratical" copies of products covered by copyright such as books, music, videos, software, and video games. A piratical copy is one that is produced without the authorization of the copyright holder. Because products imported into the U.S. often include a copyrightable elements (e.g., written instructions, packaging artwork, etc.), copyrights may be a viable alternative to trademark enforcement for companies seeking to prevent the entry of "knock-off products."

Gray Market Goods

It is often possible to find desirable products on sale outside the United States at discounted prices. This creates the possibility that goods will be imported through unauthorized channels. Such goods are called "gray market" or "parallel imports." Because these are genuine products, gray market goods are admissible provided they are not materially different from the products offered for sale in the U.S. As a result, parallel importers must be careful to recognize the differences between their imports and the products authorized for sale in the U.S. Differences such as foreign language labeling, packaging, and formulation may provide a sufficient basis for Customs to exclude the merchandise. Further, companies can seek so-called "Lever Brother Protection" from parallel imports. When granted, Lever Brother Protection requires that parallel imports be labeled as such prior to release.

Recordation

Customs and Border Protection focuses its enforcement efforts on trademarks, copyrights, and trade dress recorded via its electronic system. Recordation is a relatively simple and inexpensive step that provides significant benefits. Recordation publishes the claim for protection to Customs personnel throughout the country and alerts them to the possibility that infringing merchandise is being presented for entry. Recordation should be part of a rights holder's larger strategy of working with Customs to protect its investment in intellectual property.

Section 337

Determining whether a product infringes upon a U.S. patent is often requires the application of complex legal and technical knowledge. Because of the complexity of the issues, the enforcement of patent rights at the border is entrusted to the U.S. International Trade Commission, which has staff attorneys and Administrative Law Judges dedicated to reviewing claims made before the agency. If infringement is found, the ITC can order that the merchandise be excluded from the United States. It falls to Customs and Border Protection to enforce those orders.

Our Role

Barnes/Richardson lawyers have assisted clients with all aspects of the border enforcement of intellectual property law including:

                    Recording trademarks
                    Recording copyrights
                    Developing brand protection materials for training Customs personnel
                    Responding to CBP seizure notices
                    Seeking rulings from CBP to confirm compliance with 337 exclusion orders

Should you have questions or concerns regarding the importation or exclusion of merchandise subject to intellectual property protection, please contact a Barnes/Richardson lawyer.
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