Eureka! You and your team have created the perfect trademark for your business, or perhaps you’ve designed a device, software program or process. However you came to own it, you have an interest in valuable intellectual property, and you want to protect your rights.
Shippers and logistics companies bear a high degree of risk exposure to intellectual property infringement. To mitigate that risk, it’s a good investment of time and effort to employ the full range of resources available to U.S. companies.
It helps to understand the range of concepts under the intellectual property umbrella. The definition can include the design of a device or tool, a custom order-processing program for customers to use, or something as simple as a company name or logo.
Most companies can figure out the first step toward protecting intellectual property; namely, to have an attorney file an application with the U.S. Patent and Trademark Office or the U.S. Copyright Office to guard against infringement in the U.S. The company also may file applications in appropriate foreign jurisdictions to protect its intellectual property from infringement abroad.
The next step is to work with attorneys to find any infringement of the rights to that intellectual property in the United States. Unfortunately, that’s where many shippers and logistics companies deem their task to be completed. An intellectual property owner can, and should, do more.
Companies or individuals can strengthen the enforcement of a registered trademark, copyright or valid trade name by recording it with U.S. Customs and Border Protection. Once recorded, the registration enlists the help of Customs to enforce intellectual property rights at the U.S. border — and in many cases Customs will do so.
At the border, Customs is authorized to exclude, detain or seize imported merchandise that infringes federally registered and recorded trademarks and copyrights, recorded trade names, and merchandise covered by an exclusion order issued by the U.S. International Trade Commission for patent infringement or other violations of intellectual property rights. It focuses enforcement on trademarks, names and copyrights recorded with the agency. Customs will work with the owner of the recorded intellectual property rights to determine whether merchandise violates the firm’s trademark or name.
— Trademarks. Customs has the authority to prevent the importation of merchandise that bears infringing trademarks or trade names. It recognizes three levels of infringement, including counterfeit marks, which are identical with or substantially indistinguishable from federally registered trademarks; copying or simulating marks or trade names that are confusingly similar to a trademark or name recorded with Customs; and restricted gray market goods or parallel imports.
The last category consists of foreign-manufactured merchandise bearing a genuine trademark or trade name identical with, or substantially indistinguishable from, one owned and recorded by a U.S. citizen or company that is imported into the U.S. without the authorization of the U.S. trademark owner. Customs protects only trademarks registered on the principal register of the Patent and Trademark Office. Customs provides gray market protection only to registered trademarks recorded with Customs, where the U.S. trademark owner doesn’t own the foreign trademark abroad, and where no common ownership or control exists between the U.S. trademark owner and the foreign trademark owner.
— Trade Names. A trade name is the name (other than its corporate name) under which a company does business. Trade names aren’t registered with the Patent and Trademark Office but may be recorded with Customs if the name has been used to identify a trader or manufacturer for at least six months.
— Copyrights. Customs has the authority to prevent the importation of piratical copies of protected copyrighted works. For Customs purposes, piratical copies are identical or substantially similar copies of a registered copyrighted work that are produced and imported without authorization of the copyright owner. Customs accepts for recordation only copyrights federally registered with the U.S. Copyright Office.
— Patents and Unfair Competition. What if the company’s intellectual property has become the subject of unfair competition or infringement overseas? Perhaps its registered patent is being infringed outside the U.S. The company can petition the U.S. International Trade Administration to investigate under Section 337 of the Tariff Act of 1930. If the ITA determines Section 337 has been violated, it may issue an exclusion order barring the products from importation into the U.S., and a cease-and-desist order directing the violating parties to cease certain actions. Customs then will enforce the exclusion order at the border to prevent the importation of the products.
Failure to pursue all channels for protecting intellectual property rights can be costly.
Beverly L. Greenberg is of counsel with the Miami office of law firm Arnall Golden Gregory. She focuses her practice on international trade, customs and logistics law, and has represented companies regarding importing merchandise with intellectual properties for 30 years. Contact her at Beverly.Greenberg@AGG.com.