How to Block the Import of Infringing Products: Make U.S. Customs Your Ally

If your products or those of your competitors are being manufactured overseas (which nowadays is the vast majority of cases), then you must consider the Intellectual Property Rights (IPR) enforcement program of U.S. Customs and Border Protection (CBP). The IPR enforcement program enables owners of federally registered trademarks and copyrights to record their U.S. registrations with Customs. Keep in mind that U.S. Customs does not handle any patent claims, which need to be brought before the International Trade Commission.

The first step, of course, is to federally register your trademarks and copyrights. You cannot approach U.S. Customs with simply an assertion of your rights in a particular trademark or copyright. U.S. Customs is providing a recordation process, so you need to obtain a federal registration first, and then record the registration. Also, your trademark registration must exist on the Principal Register of the U.S. Patent and Trademark Office (PTO), as opposed to the Supplemental Register. Keep this in mind whenever you are prosecuting a trademark application with the PTO, and the option of a registration on the Supplemental Register is being offered. Ideally, you should be thinking ahead before infringement even occurs: apply for your trademarks and copyrights as early as possible. For trademarks which have not yet been used in commerce, file an intent-to-use (ITU) trademark application. You can also apply for copyright protection prior to publication.

When applying for recordation with Customs, make sure you (or your attorney) provide detailed information identifying specific manufacturers, importers and consignees (to whom the goods are shipped) of the infringing goods. Practically speaking, recording your registrations without providing such identification may lead to ineffective results. Consider how many trademark and copyright registrations are continually being recorded with Customs. Then, consider the ceaseless container loads of merchandise arriving at U.S. ports each day. Now, take into account the limited number of Customs agents, and the fact that human eyes and hands can only go so far in inspecting the flood of merchandise. You get the picture. You have to make it easy for Customs to recognize the specific parties who bring in the infringing products.

If you have knowledge of a specific party overseas who might bring in infringing goods, it might be worthwhile to investigate the possibility of that party using a different name or entity to import the goods. In other words, if you suspect Company X of bringing in infringing merchandise, and Company X knows they are on your radar, Company X might use Company Y on documentation for bringing in the goods.

Having U.S. Customs on your side can save you a great deal of time and money by avoiding costly litigation.