Effective last week on April 24, 2012, Customs and Border Patrol (CBP) announced a new procedure that benefits those trademark registrants who record their marks with the agency. CBP will now
disclose to an intellectual property right holder information appearing on merchandise or its retail packaging that may comprise information otherwise protected by the Trade Secrets Act, for the purpose of assisting CBP in determining whether the merchandise bears a counterfeit mark. Such information will be provided to the right holder in the form of photographs or a sample of the goods and/or their retail packaging in their condition as presented to CBP for examination and alphanumeric codes appearing on the goods. The information will include, but not be limited to, serial numbers, universal product codes, and stock keeping unit (SKU) numbers appearing on the imported merchandise and its retail packaging, whether in alphanumeric or other formats. These changes provide a pre-seizure procedure for disclosing information about imported merchandise suspected of bearing a counterfeit mark for the limited purpose of obtaining the right holder’s assistance in determining whether the mark is counterfeit or not.
See Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border (Federal Register, 4/24/12). For the full Federal Register notice, see here: http://www.gpo.gov/fdsys/pkg/PLAW-112publ81/pdf/PLAW-112publ81.pdf (see Sect. 818(g) in particular).
In other words, if Customs has information about a counterfeit, in addition to possibly stopping the shipment, will provide the trademark holder with information regarding the shipment. This is additional trademark monitoring and investigation that could save trademark owners a great amount of time and money to gather details about infringers that could be used to make demands (e.g. ‘cease and desist’ letters) or to use in court, including seeking injunctions.
The new policy is part of the NATIONAL DEFENSE AUTHORIZATION ACT - FOR FISCAL YEAR 2012, but the provision does not appear to be limited to only “defense” related products.
For more details about the “how’s” and “why’s” of recording a trademark registration with Customs and Border Patrol, see: