Counterfeiting is a crime of global proportions. When intellectual property rights are violated, the resulting harm threatens, not only the viability of the intellectual property owner, but also the U.S. economy as a whole. U.S. innovators regularly struggle with this issue. Even with a registered trademark, copyright, or patent, the challenge of stopping counterfeiters can be overwhelming. This task is particularly burdensome for smaller companies that may not have the resources required to police and protect their intellectual property.
The first step in protecting against counterfeit goods is to ensure that your intellectual property is protected by patent, trademark, copyright or a combination of all three. When a company takes steps to protect its intellectual property through the federal patent, trademark, or copyright process, it opens the door for future collaboration with the U.S. Customs and Border Protection (“CBP”) agency as a means of protecting against counterfeit imports.
The CBP is the primary federal agency in charge of securing American borders against any number of illegal activities. One of the agency’s tasks is to minimize the importation of infringing goods. In carrying out this task, the CBP can exclude, detain, and seize goods if it believes the imported goods infringe federally registered trademarks, copyrights or patents. The mechanisms for excluding infringing goods are slightly different for patents than for trademarks and copyrights.
For owners of registered U.S. copyrights and trademarks, you can record your copyrights and trademarks with the CBP. In registering, you provide CBP personnel with information necessary for them to make infringement determinations at the border when they are inspecting incoming goods. For step-by-step instructions from the CBP click here.
For design and utility patents, you must obtain an exclusion order from the International Trade Commission (“ITC”) before seeking the CBP’s help in stopping infringing imports. The reason for this additional step is likely rooted in the inherent complexity of analyzing patent claims to determine if there is infringement. If a patent holder wants to prohibit infringing goods from being imported, it must file a complaint with the ITC. Although it typically takes 12-18 months to obtain an exclusion order, a patent owner can get a preliminary injunction much sooner, which will stop all accused imports until the conclusion of the case.
Another tool at your disposal is creating a product identification guide, which assists the CBP in making infringement determinations at ports of entry. An effective guide includes the following:
- information about the company;
- intellectual property owned by the company;
- contact information;
- registration number(s);
- recordation number(s);
- ITC investigation number(s), if applicable;
- physical characteristics of product(s);
- photos of genuine and suspect versions of the product(s); and
- manufacturing information.
In addition, companies can provide product identification training to CBP personnel at ports of entry. Such training allows a company to interact with CBP officers who will ultimately inspect shipments for infringing items.
In 2014, the CBP, with the assistance of other federal enforcement counterparts, seized more than 23,000 counterfeit products worth an estimated $1.2 billion. In addition, the CBP enforced approximately 44 exclusion orders. Small businesses needing assistance in preparing and filing a complaint, or who have questions concerning enforcement can reach out to the ITC Trade Remedy Assistance Office (“TRAO”) for support. The TRAO provides information to small businesses concerning benefits available under U.S. trade laws. The TRAO also assists small businesses in preparing and filing for requests for exclusion orders. You can also submit allegations of infringing shipments or conduct to the CBP through their online reporting system. The CBP will use this information to target activities and refer cases for criminal investigations.