Filing Federal Application United States Patent and Trademark Office United States Patent and Trademark Office Principal Register – for distinctive marks Supplemental Register – for descriptive marks Basis of Application Basis of Application Use in commerce Intent to use Priority based on foreign application or registration
Benefits of Federal Registration Constructive notice to third parties Constructive notice to third parties Constructive nationwide date of first use Constructive nationwide date of first use Prima facie evidence of validity of mark Prima facie evidence of validity of mark Mark may become “incontestible” Mark may become “incontestible” Registration with U.S. Customs and Border Protection Registration with U.S. Customs and Border Protection
Likelihood of Confusion–Factors strength of plaintiff’s mark the degree of similarity between the two marks the proximity of goods or services of the parties the likelihood that the plaintiff will bridge the gap between the products evidence of actual confusion defendant’s intent in adopting its mark the quality of defendant’s products sophistication of the relevant consumers The factors are to be balanced; no one factor is determinative.
What is a Statutory Fair Use? 1.Mark is descriptive if and used only to describe Defendant’s goods or services 2.Term is used in good faith 3.Term is used fairly
“Nominative Fair Use” 1.The product or service in question must be one not readily identifiable without use of the trademark; 2.Only so much of the mark or marks may be used as it is reasonably necessary to identify the product or service; and 3.The use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block 971 F2d 309 (9 th Cir. 1992)
Anthony Orosz Assistant Director, Pharmaceutical CEE
Partnering with US Customs and Border Protection for Maximum IP Protection CJ Erickson Long Island Import Export Association
Scope Customs is a “police force” for 40 government agencies regulating both import and export Why have a Customs strategy?
FTC: Made in USA standard USDA:quota/licenses/permits CPSC:children’s products FDA:food, drugs, cosmetics, and medical devices NRC:watches with tritium USPTO:trademarks and copyrights DOD:ITAR DOC:Bureau of Industry and Security BOC:AES electronic data filing OFAC: Sanctions programs
CBP IPR Protection CBP devotes substantial resources to protecting intellectual property rights CBP is vested with the authority to: Exclude goods from entry Detain merchandise Seize merchandise Forfeit counterfeit goods Penalize violators
CBP Enforcement Strategy CBP policy is a two-tiered enforcement approach Recordation of a registered trademark Open and on-going communication with trademark owners
Submission of information and documentation identifying and describing both the mark and the filer. Paper Electronically - https://apps.cbp.gov/e-recordations/https://apps.cbp.gov/e-recordations/ Fee of $190 for recordation of each trademark registration in a single class. Additional $190 fee for each additional class of goods covered by a registration. Recordation of Trademark with Customs
Supplemental Information Educate Customs on what your products look like and how they come into the country
How to Identify Your Goods Samples of imported merchandise Packaging Detailed specifications, drawings, sketches and schematics Copies of sewn-in labels, hangtags and markings RN number Fiber content Tracking label Country of origin Exact size, color, and location of the mark
Mark and Product Features: Location of mark on product Product quality and overall appearance Trim features such as zippers, buttons and snaps Sample labels and tags Shapes
How are Your Goods Imported? Copies of representative shipping documents, packing methodology Schedules of legitimate sources, authorized manufactures, channels of trade List of suspected counterfeiters and suspected ports of entry
Disclosures of Information to Trademark Owners Upon a counterfeit determination, CBP will disclose to rights owners the following information: Date of Importation Port of Entry Description of Merchandise Quantity Involved Name and Address of Manufacturer Country of Origin of Merchandise Name and Address of Exporter Name and Address of Importer
32 32 Real or Counterfeit?
33 33 Authentic LUGZ have:Counterfeit LUGZ have: Black detailed tongue labelGeneric white tongue label
Conclusion Trademark owners are entitled to significant protection from CBP at minimal cost but need to be pro-active Trademark owners are entitled to significant protection from CBP at minimal cost but need to be pro-active Registered trademarks should be recorded with Customs to ensure maximum benefits under relevant statutes and regulations Registered trademarks should be recorded with Customs to ensure maximum benefits under relevant statutes and regulations Proper recordation should be part of any IPR plan to: Proper recordation should be part of any IPR plan to: Safeguard against unauthorized imports Strengthen license and distribution agreements Establish a strong basis for civil and criminal actions against suspected infringers