Primer for trademark and copyright protection through the Office of Customs and Border Protection.

• Author: Joffrion, Clayton J.
• Position: Out of State Division

Trademarks and copyrights are some of the most important property rights in commerce. Trademarks can be reproduced or changed ever so slightly, and anyone with printing equipment can violate a copyright. There are mechanisms for obtaining worldwide intellectual property rights protection, but for some reason companies, artists, and authors think the federal protections are all they need.

U.S. Customs and Border Protection

The Office of Customs and Border Protection (CBP) is one of the Department of Homeland Security's largest and most complex components. It has seizure and forfeiture authority for imported articles which violate trademarks, trade names, or copyrights. (1) There are criminal sanctions (2) for the intentional trafficking or attempts at trafficking in goods bearing counterfeit trademarks. Trademarks and copyrights can be filed with the CBP in order to obtain administrative remedies, which can be quicker and more cost effective. Patents are treated differently and will not be addressed here.

Trademark and Tradename Protection

The importation, with certain exceptions, (3) of foreign-made merchandise that bears a registered trademark or trade name owned by a U.S. citizen or corporation recorded with U.S. Customs is prohibited. (4) Merchandise imported in violation of the provisions of this section is subject to detention. (5) Failure to meet conditions set forth in 19 C.F.R. [section] 133.23(d) can lead to seizure and forfeiture. (6)

Any merchandise bearing a counterfeit (7) mark is also subject to seizure and forfeiture. (8) "Counterfeit" is defined as a "spurious mark, which is identical with, or substantially indistinguishable from, a registered mark." (9) Whether a mark is "substantially indistinguishable" is a very specialized issue which requires the assistance of an intellectual property attorney. The Customs Service may also impose civil fines when goods are seized and forfeited. (10)

Also, no article of imported merchandise which copies or simulates a registered trade name or trademark shall be admitted to entry at any customhouse (this covers both domestic and foreign-made articles). (11) Importations which use words, terms, or descriptions likely to cause confusion, or to cause mistakes, or to deceive as to the affiliation or sponsorship are also not to be admitted. (12)

Two Types of Trademark Protection

Articles bearing "confusingly similar" marks may be detained subject to restrictions and related disclosure information. (13) When the mark is "confusingly similar," the articles may be detained subject to further review after the owner of the mark has been given notice. When customs finds a mark to be "substantially indistinguishable," the articles may be seized and forfeited. Obviously, the owner of the mark should take that opportunity to submit evidence that the articles are "substantially indistinguishable" and that seizure and forfeiture are proper. Any conveyances used in, to aid in, or to facilitate, the importation of any article contrary to law are also subject to seizure and forfeiture. (14) Additionally, customs has the authority to issue civil penalties equal to the value of the merchandise. (15)

Gray Market Goods

"Gray market goods," or "parallel imports," are defined generally as foreign-manufactured goods bearing a valid U.S. trademark, which are imported without the consent of the U.S. trademark owner. (16) Customs provides limited protection to trademark owners against importations of certain gray market goods. (17) It is unlawful to import any merchandise of foreign manufacture if the merchandise bears a U.S. trademark registered in the Patent and Trademark Office, unless written consent of the trademark's owner is produced at the time of entry. The owner of a registered trademark may record the trademark with the Department of the Treasury and then the Customs Service. (18)

"Restricted gray market articles" are foreign-made articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the United States, corporation, or association created or organized within the United States and imported without the authorization of the U.S. owner. "Restricted gray market goods" (or articles) also include those bearing a genuine trademark or trade name of a foreign owner 1) under the authority of a foreign trademark, or 2) trade name owner other than the U.S. owner, a parent or subsidiary of the U.S. owner, or 3) a party otherwise subject to "common ownership or control" with the U.S. owner.

Important Exceptions to Denial of Entry: Common Ownership or Control

All "restricted gray market goods" imported into the United States are to be denied entry and are subject to detention unless an exception applies. The term "common ownership" means "individual or aggregate ownership of the business entity," while the term "common control" means "effective control in policy and operations and is not necessarily synonymous with common ownership." (19) So, if an identical or similar mark is applied to imported merchandise by a foreign owner that is subject to common ownership and control with the U.S. owner, CBP will not confer gray market protection to the mark. It is assumed the U.S. common owner or common controller can...