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Trademark

CBPCounterfeitsDepartment of Homeland SecurityImportIPR, Trademarks and LogosSeizuresU.S.Customs

31,560 Shipments Were Seized by CBP in 2016 for ONE Reason

posted by Jennifer Diaz March 23, 2017 0 comments

ipr

Last year, on a typical day the U.S. Customs and Border Protections (CBP) seized about $3.8 million worth of products because of Intellectual Property Rights (IPR) Violations. CBP reported that the total number of IPR seizures has increased nine (9) percent since last year, from 28,865 in 2015 to 31,560 in 2016. With the manufacturer’s suggested retail price (MSRP) exceeding $1.3 trillion.

What is Causing the Increase in Seizures?

Recordation of Trademark And Copyright With The CBP

In addition to registration of IPR with the U.S. Patent and Trademark Office (USPTO for trademarks), or the U.S. Copyright Office (for copyrights), owners can record said trademark or copyright with CBP. This additional step grants CBP additional enforcement power in both seizing counterfeit and piratical goods as well as thereafter issuing penalties for the MSRP value of the goods. In previous blog posts, we explained benefits of taking the extra step of recording your registered trademark or copyright with CBP, and CBP’s additional enforcement powers as a result of the recordations. Continue Reading

Best PracticesCBPCounterfeitsIPR, Trademarks and Logos

Yet Another Reason to Record your Trademark or Copyright with U.S. Customs and Border Protection (CBP)

posted by Jennifer Diaz April 12, 2016 3 Comments

TshirtCo-Authored by Jennifer Diaz and Kristina Hernandez-Tilson, an attorney in Miami, Florida, practices in state and federal court, litigating matters of civil and administrative law. 

Whether you are importing goods to the United States, or are a U.S. trademarks or copyright owner, there is a new law on the books that should be of interest to you, the Trade Facilitation and Trade Enforcement Act of 2015 (TFTE), which was signed into law on February 24, 2016.  TFTE, a bipartisan piece of legislation, is comprehensive in scope. In this Article, we will look specifically at Sections 302 through 311, the section on “Import-Related Protection of Intellectual Property Rights” (IPR). The TFTE highlights the fact that CBP treats IPR as a priority trade initiative.

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Best PracticesC-TPATCBPCounterfeitsIPR, Trademarks and LogosU.S.Customs

CBP Pilot Program Focuses on Pre-Compliance

posted by Jennifer Diaz October 13, 2014 0 comments

IPR CBP is currently taking volunteers for a brand new Intellectual Property Rights (IPR) voluntary pre-compliance program.  The Journal of Commerce reported on the new pilot program here.

Do you agree with my comments?

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Best PracticesCBPCounterfeitsIPR, Trademarks and Logos

As U.S. Imports from China Intensify so does CBP Enforcement

posted by Jennifer Diaz September 18, 2012 0 comments

Co-authored by Michael De Biase

With the concentration of US imports from China increasing in parallel with intellectual property rights seizures, companies rely heavily on the government, specifically on US Customs and Border Protection ("CBP") to help protect and enforce their intellectual property rights ("IPR").

According to Global Sources, a leading business-to-business media company and a primary facilitator of trade with Greater China, "US imports from China [are] more concentrated than ever".

Data from the U.S. Department of Commerce establishes that importation into the U.S. is a concentrated field, with the top 500 U.S. importers – 0.4 % of all importers – comprising roughly 68% of all imports by value in 2010. Imports from China, although somewhat less concentrated, are still dominated by larger enterprises, as companies with more than 500 employees – 4% of all importers from China – account for 60% of all imports from China. As concentration increases, the opportunity to trade in quantities that take advantage of China’s economies of scale decrease; thus, heightened concentration is not a good thing for Chinese manufacturers.

While the import concentration from China is growing, CBP is reporting a record number of IPR seizures. From 2010-2011 alone, IPR seizures increase by 24%, and have nearly doubled since 2009. Considering that China is the number one source company of imports, it should come as no surprise that it also accounts for the largest number of IPR seizures, with 62% of all IPR seizures being sourced from China.

Intellectual property rights are some of the most valuable assets of the largest importers, and they must protect these rights. Here are some of our top tips to use when seeking to protect your IPR.

  1. Perform a search to see if there are other companies exploiting your IPR. You cannot protect something to which you don’t own the rights.
  2. Register your IPR with the appropriate U.S. federal entity; whether the Copyright Office or U.S. Patent and Trademark Office, registration is an important security measure.
  3. Record your IPR with CBP. CBP will provide its protective services for a minimal fee of $190 for 10 years of protection at all ports of entry.  There are numerous other benefits to recordation
  4. Know your manufacturer or the company from which you source your products. Find out who else sources from this manufacturer, and determine whether they have had any IPR issues.
  5. Execute thorough distribution agreements or purchase and sale agreements, and try to use letters of credit or escrow accounts.
U.S.Customs

How I Helped Release $2.5 Million Stuck in Customs

posted by Jennifer Diaz May 3, 2012 0 comments

Jennifer DiazBefore beginning a career in international trade, I did not ever stop to think that the t-shirt I was wearing or dishes I was using were likely made elsewhere, and went through a long complicated logistics supply chain in order to reach my local store. Little did I know that when anything goes wrong in that complicated supply chain, it would be my job to help. Recently, a client had over 2.5 million dollars worth of electronic merchandise on hold by U.S. Customs and Border Protection (Customs) for alleged intellectual property rights violations. In plain English, Customs was under the impression my client was trying to import goods with trademarks or logos they did not have the authorization to import.

When you see the symbols below, make sure you think about LICENSES to use them!!

For this client, this was a lot of money at stake, and it could have put them out of business if we did not come up with a quick solution. Instead of thinking of the band aid type solution, to solely fix this issue, we came up with a compliance plan for the client to use going forward, that would also help solve the current issue.

The compliance plan involved both a short term and long term solution. In the short term, the goal was to have the 2.5 million dollars worth of merchandise released ASAP. To accomplish this goal, we had to prove to Customs that our client had the appropriate authorization from the relevant trademark holders. (Good time for you to check over your trademark licenses, are they all in place?  Do you have easy access to them if Customs comes a knockin’?)

For the long term solution, we began to work with Customs to prove that the client was a reputable importer. In this case, actions spoke much louder than words. Instead of telling Customs our client was compliant, we were able to produce documentation, and develop a relationship with the appropriately picked personnel in Customs. Through this relationship, we started a new process where the client utilized a pre-compliance program with Customs for all new products the client would import. This pre-compliance program included Customs review and internal track keeping of the client’s new products and relevant license agreements. This way, Customs had a first hand sneak peak at the new products and any potential issues would be addressed before, not after importation.

I am happy to report that all of my clients 2.5 million dollars worth of merchandise was released, and in a relatively short period of time. To date, all products that were pre-approved by Customs are typically immediately released by Customs and do not go through additional timely intensive exams.

Have you ever had a shipment on hold? What type of compliance programs do you have in place? I’d love to hear your stories, email me!

CounterfeitsImport

Yes, You May Legally Import Counterfeit Merchandise into the United States

posted by Customs & International Trade Law Blog January 24, 2010 10 Comments

Peter A. Quinter, Florida Customs LawyerMy friends tell me one of their favorite activities in China is to buy counterfeit items such as Gucci handbags or Montblanc pens. My friends do worry about U.S. Customs and Border Protection (U.S. Customs) officers looking through their luggage upon arrival at an airport in the United States, seizing the counterfeit items, and fining them.  The truth is that U.S. Customs allows the importation of counterfeit merchandise, but closely follow the rules as I explain them to you now.

First, know that it is generally illegal to import counterfeit merchandise into the United States.  The word "counterfeit" is defined in the Lanham Act at 15 U.S.C. 1124, and the U.S. Customs applicable law allowing for the seizure of counterfeit merchandise is 19 U.S.C. 1526.  That law gives your friendly U.S. Customs officers who are waiting for you at the airport the authority to look through your luggage, and seize counterfeit merchandise from you.  The U.S. Customs regulations at 19 CFR Part 133 give more specific guidelines to travelers interested in this topic. 

What the readers of this blog, and even many U.S. Customs officers, do not know is that it is perfectly legal for a person who visits China, or any other foreign country, to buy counterfeit merchandise there, including one counterfeit Gucci bag and one counterfeit Montblanc pen, declare it on the U.S. Customs declaration form, pass through U.S. Customs, and enjoy using the counterfeit items in the United States.   Of course, you generally get what you pay for, so the $2,000 Gucci bag that you purchased in China for $80 may not be such a bargain, but it can be a lot of fun to shop at a Chinese flea market, and compare the purchased products to the genuine items at your local U.S.-based retail store, or so I am told. 

According to Customs Directive No. 2310-011A dated January 24, 2000, "Customs officers shall permit any person arriving in the United States to import one article, which must accompany the person, bearing a counterfeit, confusingly similar, or restricted gray market trademark, provided that the article is for personal use and not for sale."  Moreover, the Directive states that "Customs officers shall permit the arriving person to retain one article of each type accompanying the person." 

Now, don’t go crazy trying to bring too much counterfeit stuff into the United States at once. There are many restrictions.  You can only bring counterfeit stuff in every 30 days, it must "accompany" you which means no FedEx, UPS, or DHL packages, and it is only applicable to "one article of each type" which means, for example, if you attempt to bring in two counterfeit Gucci bags, they both will be seized by U.S. Customs. And "personal use" means for you the traveler only; no counterfeit gifts for your friends and family. 

Finally, please don’t waste the U.S. Customs officer’s time attempting to explain to him that the fancy watches you purchased are marked "Rolexx" so they are not counterfeiting the Rolex trademark because of the different spelling, or that you did not know that importing counterfeit merchandise was illegal, because now you have read this blog post from "Mr. Customs".  

Just in case you do bring in one too many counterfeit products, there is an administrative process to challenge all seizures made by U.S. Customs, as I described in a previous blog post.

IPR, Trademarks and LogosU.S.Customs

Trademark Infringement

posted by Customs & International Trade Law Blog September 30, 2009 3 Comments

Jennifer Diaz, Florida Customs and International Trade LawyerHow often do you think U.S. Customs and Border Protection (CBP) officials have heard an importer say, “. . . but I didn’t tell the manufacturer to put that trademark on there”? Ignorance may be bliss, but CBP will not accept that excuse as an acceptable reason to allow counterfeit merchandise to enter into the United States, or even allow it to move in-transit through the United States. This, however, is the often heard explanation when an importer does not do its due diligence.

There are a few steps every importer should take prior to doing business with a new manufacturer or importing into the United States a new product.

A reputable manufacturer should, and ultimately will, provide a sample. Inspect the sample thoroughly. If it is an electronic item, you may want to go as far as taking it apart to make sure that the inner workings do not contain any trademarks or logos or copyrights which either you did not request or the manufacturer is not licensed to produce. If your sample is different than the merchandise shipped, then you can at least say to CBP, “This is not what I ordered. I have a sample of what I was supposed to receive," and the correspondence with the manufacturer to support your claim. Even if you do not  get your merchandise back from CBP, it is important to understand that you may use your due diligence as a mitigating factor if and when you are fined by CBP.  Fines are routinely issued by CBP pursuant to 19 U.S.C. 1526(e) and equal the Manufactured Suggested Retail Price (MSRP).  Companies which or persons who get such fines may get them reduced by filing a Petition.  Knowing the factors that CBP considers when reviewing the Petition is critical.

Licensing agreements (on paper) can be falsely produced by anyone with a computer and printer. Just because a manufacturer shows you what appears to be a license while attending a reputable tradeshow, does not mean it’s valid.

Just keep the following in mind. Ask for a copy of the licensing agreement, and don’t take a manufacturer’s word that they have a license, verify. Obtain references or work with reputable manufacturers. Don’t think that you’re just getting a great deal, because if it’s too good to be true, then it probably is!  Many trademark and copyright owners maintain websites which list the approved companies authorized to manufacture products with the protected trademarks or copyrights.

And lastly, don’t think that you won’t get caught. Remember, it’s CBP’s job is to protect both you and the economy.  Counterfeits are not limited to cheap handbags at the flea market, but auto parts and aircraft parts,  and many more items that you would not want to be substituted (think medicines).

If a hold, detention, or worse yet, a seizure by CBP occurs at any port in the United States, an importer should promptly contact a customs attorney to file a Petition to attempt to persuade CBP to release the seized merchandise.  Common trademark and copyright counterfeiting is for Bluetooth, Microsoft, Intel, Apple, Underwriter’s Laboratories (UL), and Tetris.  Petitions should contain specific information and attach certain types of documentation to convince CBP that it made an error in the initial seizure.  The Customs and International Trade Department attorneys of Becker & Poliakoff are very knowledgeable and experienced in these matters, and may assist companies with the process.