U.S. Customs (Customs & Border Protection (CBP)) is authorized to record registered trademarks and copyrights to block unauthorized imports. Over the years we have found this to be a very cost effective IP enforcement tool for our clients - you have a law enforcement agency of the U.S. government actively helping you monitor and enforce your IP rights at the U.S. borders. Recordation is available for registered trademarks and copyrights only (and not available for patents).
Customs just announced a new function added to CBP's intranet. If there are specific indicia that can help identify your goods, as distinguished from the likely infringing goods, you should definitely bring it to the attention to CBP through the submission of your PRODUCT IDENTIFICATION GUIDES. The following email from CBP sets forth the rules, and please note some of the restrictions, such as:
- IPR holders that address legal authorities or direct action may be barred from future port training.
You should get help as necessary in preparing the PRODUCT IDENTIFICATION GUIDES.
We checked with CBP, and note the following additional points:
1. CBP prefers that the PI Guides be submitted in .PDF format. After the Guides are vetted by headquarters, that is what is going to be entered into the IPRiS intranet, and used by the various ITS (International Trade Specialists) at all of the ports of entry of the United States.
2. The recordation holder can amend and submit new PI Guides at any time, with the change in products and marketing materials.
3. However, the flip side is that the ITS is supposed to work ONLY with the PI Guides already placed in IPRiS (since this is a new system, it'd be interesting to see how Customs interprets that rule - e.g., whether that means no).
4. I asked about the situation when the recordation holder does not file a PI Guide. Customs will still continue to enforce the recorded IP, but the implication is that cases with PI Guides will probably be "easier" for CBP to work with.
5. About this "port training", I am told that recordation holders could request meetings with the ITS at the port of interest (e.g., Long Beach), and go down and talk to the International Trade Specialist about how to IDENTIFY infringing products. But care has to be taken so as NOT to argue legal authorities or push for direct action against specific infringers.
6. CBP's current policy is that allegations about infringement should be made with discretion. They do not want to see "naked" allegations without proof. They also have an electronic submission form for making allegations of IP infringement (of course for RECORDED copyrights and trademarks only), located at:
From: BRABANT, GARY D [mailto:gary.brabant@dhs.gov]
Sent: Wednesday, March 09, 2011 10:55 AM
Subject: Product Identification Guides
Sent: Wednesday, March 09, 2011 10:55 AM
Subject: Product Identification Guides
This email is to thank you for recording your registered trademark(s) and/or copyright(s) with Customs & Border Protection (CBP). Some rights owners have already taken advantage of a recently added function to CBP’s Intranet, and provided their Product Identification Guides to CBP for upload to our Intellectual Property Rights internal Search system (IPRiS). Rights owners who have recorded their copyright(s) and/or trademark(s) with CBP but have not submitted their product identification guides should seriously consider doing so. Submission of the product guide helps us with quicker response for authentication, and for protecting producers and consumers against the health and safety risks associated with fake commodities that work their way into supply chains. The job of authenticating products and identifying counterfeit and pirated merchandise at US ports of entry is a difficult task, and these guides are another tool providing assistance to CBP Officers and Import Specialists in the fight against counterfeit and piratical goods.
We would like to take this opportunity to invite you and your company to submit a Product Identification Guide so that CBP can maintain a secure central repository of information that CBP Officers and Import Specialists can use for product authentication throughout the U.S. and at ports of entry. When you create a Product Identification Guide, please see below for general guidelines and incorporation of a required disclaimer. Once this process is completed, we will review your Guide for accuracy, and after approval, it will be posted to our secure intranet.
For any additional assistance or questions, please contact one of our International Trade Specialists, Mr. Gary Brabant, gary.d.brabant@dhs.gov , tel: 202-863-6603; or Mr. Marty Canner, martin.canner@dhs.gov , tel: 202-863-6612.
IPR PRODUCT IDENTIFICATION GUIDES: GUIDELINES
The following guidelines are provided to clarify current CBP policy related to product identification training:
- Product identification training materials from IPR holders should neither address CBP legal authority nor offer legal opinions concerning the course of action that CBP officers should take in any particular situation.
- CBP need not have made an actual determination that a suspect product is “counterfeit” and “piratical” in order for IPR holders to use these terms in their training materials. However, when developing their training materials, IPR holders are encouraged to use terms such as “suspect” or “allegedly infringing” rather than “counterfeit” or “piratical,” where possible.
- IPR holders shall not instruct CBP officers and import specialists, either verbally or in writing, to examine, detain, or seize goods for IPR violations.
- Field offices and/or ports may exercise discretion when considering any offer of training from IPR holders. Impact on port operations, such as staffing issues, should always be considered.
- Training is to be declined if an IPR holder has not recorded their rights with CBP.
- IPR holders that address legal authorities or direct action may be barred from future port training.
- A copy of the disclaimer statement (below) is required to be attached to each copy of the product identification training materials before the materials are disseminated to field personnel.
DISCLAIMER
The opinions expressed herein are those of the right owner and do not necessarily reflect the position of U.S. Customs and Border Protection (CBP). Decisions as to whether or not merchandise should be detained or seized for infringing protected intellectual property rights are to be made in accordance with established procedures by CBP personnel at the appropriate management level of the concerned field office. CBP personnel who have questions arising from this product identification training material or manual should call the IPR Helpdesk at 562-980-3119, ext. 252, or the IPR and Restricted Merchandise Branch, Regulations and Rulings at (202) 325-0020.
