Protect Your Mark; Record with Customs

Kelley Drye Client Advisory

Importers into the U.S. should be aware that U.S. Customs and Border Protection (“Customs”) enforces Intellectual Property Rights by seizing products with infringing trademarks, copyrights, and patents.  In fact, Customs has made IPR enforcement a priority trade issue. However, an importer must record their mark with Customs to take advantage of this protection.  Registering a mark with the Office of Patents & Trademarks is insufficient as Customs is the agency with seizure authority at the ports.  Seizures extend to counterfeit goods bearing trademarks or goods that bear infringing marks.

Customs recordation process has proven effective.  In recently released figures, Customs announced that in 2013, China accounted for 72% of all seizures and that the manufacturer’s suggested retail price (MSRP) of the seized goods increased from $1.3 billion in 2012 to $1.7 billion in 2013.  The breakdown of counterfeit merchandise by commodity is as follows:

  • $700 million in handbags and wallets;
  • $503 million in watches and jewelry;
  • $116 million in wearing apparel and accessories; and
  • $55 million in footwear.

In addition to seizing these unauthorized goods, Customs provides valuable information to trademark holders, such as the identities of the importer and the characteristics of the goods that can be repurposed for filing civil actions or for bolstering an anti-counterfeiting program.  Customs has also increased post-entry audits of importers involved with counterfeit goods.  Investigations often lead to civil fines and occasionally criminal investigation.