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Stop Trademark Infringing and Counterfeit Goods at the Border
Trade in counterfeit or infringing goods is a multi-billion dollar global industry. According to US government reports, counterfeit or infringing products cost US companies up to $250 billion annually and are directly responsible for the loss of 750,000 US jobs.
US law provides a number of remedies to owners of intellectual property (IP) such as trademarks, copyrights, trade names and patents for infringement of their IP rights. Unfortunately, US IP rights generally do not mean much outside the US. Even when a foreign country recognizes US IP rights, enforcement is nowhere near as predictable or effective as enforcement of IP rights in the US. As such, US IP owners are often out of luck when attempting to protect their IP in foreign countries. However, once infringing or counterfeit or infringing products land at an American port or border crossing, US IP owners can enlist the help of US Customs & Border Protection (CBP) to stop these goods from entering the US market.1
Register Your Trademarks with USPTO
The first step is to register the trademark or service mark with the United States Patent Trademark Office (USPTO). Trade names can also be recorded with CBP, but are not registered at the federal level.
Record Your Trademark/Service Mark Registration or Trade Name with CBP
Once the trademark or service mark is registered with the USPTO, IP owners can record the registration with CBP via a relatively simple recordation process. In addition to providing certain information and documentation, CBP charges a recordation fee of $190 per trademark class of goods or services. For example, if an IP owner wanted to record a USPTO registration for a single mark that was registered in three classes of goods, the total filing fee would be $570.
In October 2005, CBP initiated the Intellectual Property Rights e-Recordation (IPRR) system. This system allows IP owners to electronically file recordation applications, thus significantly reducing the amount of time and documentation normally required to process paper applications. However, IPRR can only be used for registered trademarks, and not trade names.
CBP Watches for Infringing and Counterfeit Goods
CBP will watch for any imports of products which appear to contain recorded trademarks or trade names. In addition, IP owners may inform CBP port officials of any suspected imports of allegedly infringing products.
If counterfeit or infringing products are spotted by CBP, CBP will detain the goods and send the IP owner a letter informing them of the attempted importation. If the IP owner does not agree to allow the counterfeit or infringing goods to be released, the goods will be seized, forfeited and destroyed, and the importer can be subject to substantial fines. Moreover, the IP owner will have detailed information about who was involved in the importation so they can pursue legal action against all the parties involved in the counterfeit or infringing operation.
Note: US patents cannot be protected using these procedures. To stop imports of products that infringe on a US patent, patent owners can petition the International Trade Commission (ITC) to initiate Section 337 exclusion proceedings against imported products that infringe on their patent rights.
For more information on trademark protection and trademark infringement, please go to http://www.kk-llp.com.
Return to Trademarks
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