Owners of intellectual property utilized in connection with imported merchandise (for example, jewelry made from copyrighted designs, trademarks affixed to apparel, or patented devices) have every reason to be concerned about counterfeits from overseas. While monitoring counterfeiting seems like a daunting task, small business owners with IP have five tools at their disposal that can potentially thwart the importation of counterfeits into the U.S. Time is of the essence in combating counterfeiting, and the timeline from initiation to resolution using these tools is greatly shortened compared to litigation, a fact which makes them indispensable.
1. U.S. Customs & Border Protection (CBP)
U.S. Customs and Border Protection (CBP) is a government agency tasked with “keeping terrorists and their weapons out of the U.S. while facilitating lawful international travel and trade.” Regarding trade, CBP plays an important role in maintaining U.S. economic competitiveness by “reducing costs for industry and enforcing trade laws against counterfeit, unsafe, and fraudulently entered goods…” Using IP-related laws and regulations tailored to its mission, the CBP can act as an IP owner’s sentinel at points of entry into the U.S.
2. CBP's Online IP Recordation Procedure
Recently enacted laws and regulations facilitate CBP’s mission in policing counterfeit goods. First, owners of federally registered trademarks and copyrights can take advantage of the CBP’s online administrative recordation process (“Intellectual Property Rights e-Recordation”); the copyright recordation fee is $190, and the trademark recordation fee per class of goods is $190.
3. CBP's Detention of Counterfeit Goods
Second, changes made in October 2015 to CBP regulations (19 C.F.R. § 133.21) related to the detention of suspected counterfeit goods removed a major impediment to effective coordination with IP owners. Previously, the Trade Secrets Act, 18 U.S.C. §1905, prevented CBP from disclosing information appearing on merchandise or its packaging to third parties, which made enforcement cumbersome.
4. Trade Reconciliation and Trade Enforcement Act of 2015 (“TRTEA”)
The TRTEA is a new customs law enacted on February 24, 2016 that includes some important changes in the area of IP rights protection. Under the law, a new National Intellectual Property Rights Coordination Center operating within U.S. Customs and Immigration Enforcement (ICE) was created, which will be responsible for coordinating IP investigations against producers, smugglers, and distributors of infringing merchandise. The TRTEA allows CBP to provide better notice of potentially infringing merchandise to IP rights holders. Also, the TRTEA created the post of Chief Innovation and Intellectual Property Negotiator, whose mandate will be to enforce existing trade agreements involving intellectual property and to negotiate for better IP protections in future treaty negotiations.
5. U.S. International Trade Commission (ITC) “Section 337 Investigations”
Owners of patents, copyrights, trademarks (both registered and common law), and trade dress can seek an exclusion order stopping importation of infringing goods, or the issuance of a cease and desist order against the same, by initiating a Section 337 investigation through the U.S. International Trade Commission (ITC). In some “exceptional” circumstances, expedited relief may be available. These investigations are conducted by the ITC after an IP owner files a complaint, and culminate in administrative law trial proceedings and review by the Commission.