Using U.S. Customs and Border Protection (CBP) as a first line of defense against importation of goods infringing on registered trademarks is an effective component to any IP monitoring and protection strategy. Interim amendments to CBP regulations pertaining to importations of merchandise bearing suspected counterfeit trademarks or trade names recorded with CBP were originally published in April, 2012. After an extensive comment and review period the Final Rule on these regulations becomes effective on October 19, 2015. CBP regulations provide for disclosure of certain information to trademark when merchandise is detained or seized for suspected violations of trademark laws. The amount of information disclosed depends on what stage CBP is in the examination, detention and seizure process and can be important to trademark owners for keeping current on the status of CBP activities and preparing to seek civil remedies for trademark infringement.  Information obtained from CBP during this process can also be invaluable in shaping intellectual property monitoring and protection strategies to focus on foreign countries, manufacturers, importers and exporters who may pose the greatest threat to the value of intellectual property rights. The Final Rule is published in Federal Register Vol. 80, No. 181 (Sept. 18, 2015) beginning at page 56380.

FINAL RULE AMENDMENTS

The Final Rule includes four substantive changes to the interim rule directed to the exchange of information between CBP, the mark owner and the importer of the detained merchandise. The amendments still facilitate CBP's examination and determination of whether the detained merchandise should be seized, but safeguard against improper use of by the mark owner of the importer's trade secret information. First, CBP may disclose to a mark owner information appearing on the detained merchandise or its retail packaging that may other wise be protected by the Trade Secrets Act, but only for the purpose of obtaining assistance in determining whether merchandise bears a counterfeit mark. Second, CBP is required to release to the importer an unredacted sample or image of the suspect merchandise or its retail packaging any time after presentation of the suspected goods for examination. This will enable importer in providing a meaningful response to the detention notice as the importer may not otherwise have complete information about the marks appearing on the imported goods. Third, CBP is required to release limited importation information to the mark owner no later than the time of issuance of the detention notice to the importer. This changes the 30 business day requirement from the interim amendments. Finally the Final Rules CBP notify the mark owner that use of any trade secret information disclosed by CBP to the mark owner is for the sole purpose of assisting CBP.

FINAL RULE SUMMARY

Detention Period – CBP may detain any merchandise for 30 days from the date of presentation for examination if it suspects the merchandise bears a counterfeit mark. Federal Regulations define a “counterfeit mark” as a “spurious mark that is identical with, or substantially indistinguishable from a mark registered on the Principal Register of the US Patent and Trademark Office.” The 30-day detention period is not extendable and any goods not released at the conclusion of the detention period will be denied entry into the US.

Notice and Information to Importers – CBP will notify the importer of the detention in a written Notice of Detention within 5 days of a decision to detain suspect merchandise and the importer will have 7 days from the issuance of the Notice of Detention to establish the authenticity of the detained goods. CBP will disclose the importer unredacted photographs, images or an unredacted sample for the importer's examination and testing. The Notice of Detention will also advise the importer that CBP may have already provide the mark owner with limited information about the detained goods.

Information to Mark Owners – CBP will automatically disclose to the mark owner the following information at any time after goods are presented for entry into the US, but no later than the date of the Notice of Detention: date of importation, port of entry, merchandise description, quantity, and country of origin. CBP may provide to the mark owner redacted photographs, images or samples in order for the mark to assist CBP in determining if the detained article bears a counterfeit mark. CBP may provide to the mark owner unredacted information on the detained goods if the importer fails to establish the authenticity of the detained goods within the 7 day response period. Provision of unredacted materials the mark owner must be accompanied by the statement advising the mark owner the unredacted materials can only be used to verify the goods bear a counterfeit mark and warning the mark owner against misuse of importer trade secrets. The importer will be notified when CBP makes such disclosure.

Seizure – CBP can seize the suspect merchandise at any time after being presented for examination once it determines the merchandise bear a counterfeit mark. When merchandise is seized CBP will disclose to the mark owner comprehensive importation information, if available, including: date of importation, port of entry, description and quantity of the seized merchandise from the Notice of Seizure, country of origin, name and address of the manufacturer, name and address of the exporter, and name and address of the importer. This disclosure will occur within 30 days of the Notice of Seizure.