Primer for Trademark and Copyright Protection Through the Office of Customs and Border Protection

Trademarks and copyrights are important property rights for businesses, artists, and authors. U.S. Customs and Border Protection can help protect these rights by seizing imported goods that violate trademarks or copyrights. There are criminal penalties for trafficking in counterfeit goods. Companies and individuals can file their trademarks and copyrights with CBP for quicker and more cost-effective protection. Patents are not included in this process. If a product has a registered trademark or trade name owned by someone in the US, it can’t be imported without permission. If the product has a fake mark or is too similar to a registered one, it can be taken by customs. This also applies to products that copy or imitate a registered trademark or trade name. It’s also illegal to import foreign-made goods with a US trademark without the owner’s permission. If a foreign company and a US company are owned or controlled by the same people, the US company can’t stop the foreign company from importing similar products. But if the imported products are physically different from the US products, and have a label saying they’re not authorized by the US company, they can still be allowed in. If customs thinks that goods with a trademark violate the law, they can detain them for 30 days. During this time, the importer will be told about the detention and can try to prove that there is no violation. Customs can also extend the detention if they have a good reason. Customs can only detain the goods if they have a good reason to believe that the trademark is being violated. If they are not sure, they can detain the goods for five days to figure it out. If they do detain the goods, they have to tell the trademark owner certain information about the goods within 30 days. Before seizing counterfeit goods, customs may give a small amount of the suspected merchandise to the owner of the trademark or trade name for testing. The owner has to ask for it and provide a bond to cover any damage from the sample. Customs can ask for the sample back at any time. If the sample is damaged or lost while with the trademark owner, they have to tell customs. This doesn’t make them not responsible if the goods aren’t actually counterfeit. If merchandise is released from customs but turns out to be restricted, customs can demand it back and impose fines on the person involved. If it’s a first offense, the fine will be the value of the genuine merchandise, and for subsequent offenses, it will be double the value. If you receive a notice that your imported products are being detained or seized due to a trademark issue, you can defend yourself by providing written proof that you are authorized to import the merchandise. Make sure to have agreements from the owners or suppliers of the trademarked products. If your products are still detained, you can petition customs to release them or file a protest. It’s also important to research the trademark and make sure that the products you are importing match the description in the trademark application. If all else fails, you may have to abandon the merchandise or go to court to try to get it back. Infringing copies or phonorecords are illegally made copies of music, movies, or other works that belong to someone else. If these are brought into the United States, customs will seize them and start a legal process to take them away. If the owner of the copyrights wants to check if the seized items are fake, they can ask for a sample. They have to promise to pay for any damage to the sample. If the items have fake labels, the Department of Justice might press criminal charges with big fines or even jail time. If customs suspects that an imported item may be a fake version of a copyrighted work, they will hold the item and let the importer know. The importer can say the item is not a fake, but if they don’t do so within 30 days, it will be considered a fake.

If the importer denies it’s a fake, customs will tell the copyright owner. The owner has 30 days to ask for the item to be kept out of the country and put up a bond. Then, both the importer and the copyright owner can give evidence to back up their claims. The burden of proof is on the copyright owner.

Before giving more evidence to customs, both the importer and the copyright owner have to share their information with each other. Then, they have 30 days to respond to the other party’s arguments. After that, no more evidence can be given. If someone accuses you of importing something that infringes on their copyright, the customs department will review the evidence and make a decision. If they find in favor of the copyright owner, they will stop the importation of the item. But the copyright owner can also go to court to get an injunction to stop the importation. For trademarks, there’s a process where customs can help prevent the importation of items that violate someone’s trademark rights. To record a trademark or copyright with customs, you need to have the U.S. Patent & Trademark registration number and a digital image of the mark. For trademarks, you also need a certified copy of the registration certificate, and for copyrights, you need an additional certificate from the U.S. Copyright Office. You can apply electronically through the Intellectual Property Rights e-Recordation (IPRR) application and pay a fee of $190. This is important because it helps protect your brand or creative work from being copied or imitated by others. This is a list of laws and regulations related to trademarks and counterfeit goods. The author is a lawyer who specializes in international trade law. The information is provided on behalf of a legal association.

Source: https://www.floridabar.org/the-florida-bar-journal/primer-for-trademark-and-copyright-protection-through-the-office-of-customs-and-border-protection/