Issue 344, April 30, 2002
While Customs is justifiably focusing much of its enforcement time and efforts on border security issues these days, it is still important to keep in mind that Customs is also the "border guard" in charge of protecting U.S. intellectual property rights (primarily trademarks and copyrights) from infringing or counterfeit imports. To optimize this protection, however, U.S. trademark and copyright holders must invest some effort. Many companies with valuable U.S. intellectual property rights either do not realize this or fail to take advantage of what can be a valuable enforcement resource.

Though a trademark or copyright is federally registered with either the Patent and Trademark Office or the United States Copyright Office, it is important to also record it with Customs so as to ensure the full benefit of Customs enforcement efforts on your Intellectual Property. This is a separate procedure from federal registration, but is not too difficult to accomplish. In addition to this, an effective enforcement strategy also includes educating Customs about the trademark or copyright and providing all known information possible about infringing or counterfeit goods. This should normally be done both at Customs Headquarters and with the Customs officials at the relevant ports.

If these intellectual property rights are recorded, Customs is empowered to act, not just against obvious counterfeits or knock offs, but also against imports that are "confusingly similar" to a recorded trademark or "substantially similar" to a recorded copyright. Customs makes these determinations on a case-by-case basis, applying the law much as a judge would in a federal district court infringement action.

Customs can seize and require forfeiture of imports bearing infringing or counterfeit trademarks and imports that are piratical or infringing copies of recorded copyrights. In addition to seizure and forfeiture, Customs can impose civil fines depending upon the circumstances. In some instances, the penalties for counterfeit trademarks or copyrights can be enormous and draconian. They are calculated as percentages of the manufacturer's suggested retail price (MSRP) of the legitimate good and are not based on the actual cost or price of the infringing item. Importers charged with these penalties will certainly think twice before running afoul of the intellectual property rights again. When protecting intellectual property, it makes sense for U.S. trademark and copyright holders to put these enforcement tools to work.

Our contributing writers, Richard H. Abbey and Joel W. Rogers, are attorneys for Miller & Chevalier Chartered in Washington DC and can be reached at (202) 626-5800 or rabbey@milchev.com and jrogers@milchev.com respectively.

Please note that due to the complex nature of the subject matter, DHL Danzas Air & Ocean cannot be responsible for actions taken by the reader in reliance on the information contained herein without prior consultation with DHL Danzas Air & Ocean.