Specified enforcement on intellectual property at American border

Specified enforcement on intellectual property at American border

Recently U.S. Customs and Border Protection (CBP) has been clarifying on how the agency will handle IP Intellectual Property violations with the aim to offer transparency of its actions

Firstly, CBP defines the range of issues to deal with, namely counterfeit marks, copying or simulating marks, restricted grey market articles (parallel imports). Lever Rule protection, personal use exemption from trademark, restrictions, copyrights (including clearly piratical and possibly piratical), exclusion orders, criminal enforcement, recordation of trademarks and copyrights, IPR search database, disclosure of information, remedies following the seizure of merchandise and  penalties.

Secondly, CBP has the authority to exclude from entry, detain and/or seize violated trademarked merchandise and the agency treats such at three levels of trademark infringement. The first level corresponds with the first point above. A counterfeit mark is defined as a spurious mark that is identical with, or substantially indistinguishable from, a federally registered and recorded trademark. Such merchandise will be seized, and, absent the trademark owner’s written consent to import the merchandise, forfeited for violation of customs laws. After forfeiture, CBP will destroy the merchandise. Alternatively, if the imported merchandise is safe, poses no health hazard and the trademark owner consents, CBP may obliterate the counterfeit mark where feasible and dispose of the seized goods by either delivering the merchandise to any federal, state or local government agency or donating the merchandise to a charitable institution, or selling the merchandise at public auction provided more than 90 days have passed since the date of forfeiture and no federal, state or local government or charitable institution has a need for such merchandise.

A copying or simulating mark or trade name is one that so resembles a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name. Merchandise bearing a copying or simulating mark is subject to detention and possible seizure. Specifically, merchandise bearing a copying or simulating mark will be denied entry and detained for 30 days from the date on which the goods are presented for examination.

Grey market goods are genuine products bearing a trademark/name that has been applied with the approval of the right owner for use in a country other than the U.S. Goods bearing counterfeit marks however are never genuine as these are marks that have been applied without the authority of the trademark/trade name owner. Only trademarks and trade names being recorded with CBP are entitled to grey market protection.

While copyright protection exists from the moment a work is fixed in any tangible medium of expression, CBP focuses its enforcement of copyrights on works that have been recorded with the agency. The basic test for copyright infringement is whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Two steps are involved in the test for infringement, one is the access to the copyrighted work and second substantial similarity not only of general ideas but the expression of those ideas exist as well.

Exclusion order cases are guided under Section 337 of the Tariff Act of 1930 and involve allegations of copyright, patent or registered trademark infringement. Other forms of unfair competition with which Section 337 deals include misappropriation of trade secrets, false advertising and violations of antitrust laws.

CBP specifies that unlike trademarks, copyrights, patents registered with the U.S. Patent and Trademark Office may not be recorded with CBP, but the agency may issue ruling upon written request from an importer or interested party regarding whether prospective importations fall within the scope of an exclusion order issued by the USITC U.S. International Trade Commission.  

With other words, CBP has a multitude of ways to sanction IP violations.


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