Trademark counterfeiting is a costly problem faced by many businesses. It can mean lost sales as well as irreparable harm to your brand.
In part one of this series, I discussed the difference between counterfeiting and trademark infringement. In this article, I will cover remedies that may be available to you if your case involves counterfeit trademarks: preventing foreign-made counterfeit goods from entering the United States.
There are two main agencies that can help in this regard: US Customs and Border Protection and the International Trade Commission.
US Customs and Border Protection
Under US law, Customs and Border Protection (CBP) has the authority to examine, inspect, and search people, vessels, vehicles, cargo, and baggage that enter the country (19 USC §§ 1581, 1582). CBP officers can detain and seize imported goods that are suspected of using a counterfeit trademark (19 CFR § 133.21) under the definition set out by the Lanham Act.
Here is an overview of that process:
1. The goods are detained.
CBP has five days to notify the importer that the goods were detained due to a suspected counterfeit trademark. The importer has seven days to show that the trademark is not counterfeit. If the importer does not respond or cannot show that the trademark is not counterfeit, then CBP moves to the next step.
2. The trademark owner may be notified and invited to examine the goods.
CBP provides the trademark owner with relevant information about the goods, including import date, port of entry, country of origin, importer and manufacturer’s identities, and samples of the goods to allow for authentication. They may also invite the trademark owner to help examine the goods.
3. The counterfeit goods are seized.
If it is determined during the examination that the goods bear a counterfeit trademark, CBP will seize the goods.
How to Qualify for This Protection
To make use of this power, you must record your US trademark registration with CBP. This process costs $190 per class of goods and can be completed online.
It is recommended to also provide additional information that can assist in helping CBP identify counterfeit goods, such as physical hallmarks and geographic origins of authentic goods, names of authorized licensees and manufacturers, and names of past infringers.
You can also offer CBP personnel seminars on how to identify counterfeit goods.
International Trade Commission
The International Trade Commission (ITC) has the authority to issue an exclusion order to prevent counterfeit goods from entering the country (19 USC § 337).
Here is an overview of that process:
1. A US trademark owner sends a complaint.
Foreign trademark owners cannot benefit from this protection. Only US trademark owners with sufficient domestic industry activities are eligible.
2. ITC conducts an investigation.
The trademark owner, the accused counterfeiter, and an ITC-appointed investigative attorney participate.
3. ITC holds an evidentiary hearing.
This hearing is similar to a US federal court trial, except it is expedited.
4. ITC issues an exclusion order.
If the ITC determines during the hearing that the goods are counterfeit in violation of Section 337, then an exclusion order will be issued barring the counterfeit goods from entering the country. This order will be enforced by CBP.
These border measures are a powerful way to protect your brand, but they are just the start. In the next few posts of this series, I will discuss other remedies available to trademark owners, including how to:
- prevent the creation of counterfeit goods,
- fight counterfeit sales happening on the internet,
- pursue criminal enforcement,
- and obtain damages through civil litigation.
If you need assistance with filing your trademark registrations with the US Customs and Border Protection or investigating possible counterfeit trademarks, you should consider hiring an intellectual property attorney to assist you.