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U.S. Customs Enforcement of Intellectual Property Rights Presented By Robert L. Soza, Jr. Jackson Walker L.L.P. 112 East Pecan, Suite 2400 San Antonio,

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Presentation on theme: "U.S. Customs Enforcement of Intellectual Property Rights Presented By Robert L. Soza, Jr. Jackson Walker L.L.P. 112 East Pecan, Suite 2400 San Antonio,"— Presentation transcript:

1 U.S. Customs Enforcement of Intellectual Property Rights Presented By Robert L. Soza, Jr. Jackson Walker L.L.P. 112 East Pecan, Suite 2400 San Antonio, Texas Telephone: (210)

2 U.S. Customs & Border Protection (CBP) IPR Enforcement CBP devotes substantial resources to target, intercept, detain, seize and forfeit shipments of IPR-violative goods. These enforcement goals are accomplished through the cooperative efforts of CBP enforcement officers, other government agencies, and the trade community.

3 CBP Protects Against Importations That Infringe IPR "Recordation" Process by which CBP collects information from an IP owner about registered trademarks, copyrights, or trade names, and then enters that information into an electronic database accessible by CBP officers across the country CBP uses this recordation information to actively monitor shipments and prevent the importation or exportation of infringing goods.

4 Major Case in defendants in New York, New Jersey and California charged with conspiracy to smuggle over 950 shipments of merchandise from China into the United States The value of the seized goods, had they been authentic, was $700 million Defendants include merchandise distributors, freight forwarders, customs brokers, owners and managers of CBP – bonded warehouses, and managers of a CBP exam site

5 Major Case in 2007 If convicted, Defendants face maximum sentence of 5 years imprisonment for the conspiracy charges and 20 years imprisonment for the money laundering charges Article can be found at:

6 Criminal and Civil Statues 19 U.S.C. § Makes it unlawful to import into the United States any merchandise or foreign manufacture if there is a trademark owned by a citizen of or by a corporation created or organized in the United States so long as such trademarks have been registered with the patent and trademark office and filed with the U.S. Customs. Fines which are in addition to seizure of the merchandise shall not be more than the value of the merchandise had the merchandise been genuine, and if there is a second violation, twice the value of the merchandise had the merchandise been genuine.

7 Criminal and Civil Statues 18 U.S.C. § Makes it a crime to intentionally traffic or attempt to traffic in goods or services which knowingly use a counterfeit mark. If such crime is committed by an individual, the fines shall be no more than $2 million or imprisonment of not more than ten (10) years or both. If the crime is committed by a person other than an individual, the fines shall not be more than $5 million, or imprisonment of twenty (20) years, or both.

8 Criminal and Civil Statues 17 U.S.C. § 506. Makes it a crime to willfully infringe a copyright. A person who commits an offense under this section can be imprisoned for one (1) to five (5) years, depending upon the offense. A second or subsequent offense may subject a person to a term of imprisonment of not more than ten (10) years. See also, 18 U.S.C. § 2318, Trafficking and Counterfeit Labels for phonorecords, computer programs, motion pictures, literary work or other audio visual works.

9 Mid-year 2007 Top IPR Commodities Seized

10 Mid-year 2007 Top Trading Partners for IPR Seizures

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12 Recording Trademarks with CBP Effective Date Recordation and protection is effective on date application is approved, as shown on recordation notice issued by CBP Term Concurrent with the 20-year current registration period or last renewal in U.S. PTO Cancellation of Recordation Recordation canceled if the trademark registration is finally canceled or revoked

13 May record trademark with CBP online at https://apps.ebp.gov/e-recordations Need U.S. Patent & Trademark Office Registration Number Need digital images of the protected mark/work in “.jpg” or “.gif” format, no larger than 2MB Fee of $190 may be paid by credit card or check. If by check, may be 6 week delay, so use credit card Recording Trademarks with CBP

14 Recording Trade Names Trade Names Eligible for Recordation The name or trade style used for at least 6 months to identify a manufacturer or trader may be recorded CBP. Words or designs used as trademarks, whether or not registered in the U.S. Patent and Trademark Office will not be accepted for recordation as a trade name. Generally, the complete business name will be recorded unless convincing proof establishes that only a part of the name is customarily used.

15 May now record trade name by sending to must contain the following information: a)The name, complete business address, and citizenship of the trade name owner or owners (if a partnership, the citizenship of each partner; if an association or corporation, the State, country, or other political jurisdiction within which it was organized, incorporated or created); b)The name or trade style to be recorded; Recording Trade Names

16 c)The name and principal business address of each foreign person or business entity authorized; d)The identity of any parent or subsidiary company, or other foreign company under common ownership or control which uses the trade name abroad (see §133.2(d)); e)A description of the merchandise with which the trade name is associated; and f)A statement of the owner(s) and by at least two other persons not associated with or related to the applicant that: Recording Trade Names

17 1)Applicant has used trade name in connection with class or kind of merchandise described in application for at least 6 months; 2)Trade name is not identical or confusingly similar to any others used in connection with such class or kind of merchandise; and 3)Applicant has sole and exclusive right to use of trade name in connection with merchandise of that class or kind.

18 Recording Trade Names Fee: $190 for each trade name to be recorded. After submitting information by , a representative of the IPR Branch will contact you regarding payment of fee.

19 Recording Trade Names Publication of Trade Name Recordation Notice of tentative recordation Notice of tentative recordation is published in the Federal Register and the Customs Bulletin, specifying procedure and a time period within which interested parties may oppose the recordation

20 Recording Copyrights Notice of Final Action After consideration of any claims, rebuttals, and other relevant evidence, notice of final approval or disapproval of the application shall be published in the Federal Register and the Customs Bulletin. Term Protection shall remain in force as long as the trade name is used. Recordation shall be canceled upon request of recordant or evidence of disuse

21 Recording Copyrights Eligible works: Claims to copyright registered in accordance with the Copyright Acts of July 30, 1947 or of 1976 Persons eligible to record: Copyright owner who claims actual or potential injury because of actual or contemplated importations of copies of eligible works

22 Recording Copyrights May record copyright with CBP online at https://apps.cbp.gov/e-recordations Need U.S. Copyright Office Registration Number Need digital images of the protected work/mail in “.jpg” or “.gif” format, limited to 2MB Fee of $190 may be paid by credit card or check v.1

23 Renewals of Existing Trademark and Copyright Recordations May renew existing trademark or copyright recordation by sending to Follow instructions and links from https://apps.cbp.gov/e-recordations/

24 Searching Database of Registrations at CBP Intellectual Property Rights Search is a searchable database containing public versions of CBP intellectual property rights recordations Can access database at May search by title, product, owner, recordation number, etc. Contains current and expired records

25 Patents Can not record patent with CBP 36 U.S.C. § 271 makes it unlawful to import articles into the United States that infringe a U.S. patent United States International Trade Commission will investigate alleged violation and if violation found, may issue an Exclusion Order to CBP stating that articles will be denied entry into the U.S. Commission can also issue a "cease and desist" order If "cease and desist" order is violated, civil penalty of $100,000 or twice the domestic value of the goods entered for each day of importation that violated the order. Commission may also issue order that articles may be seized and forfeited.

26 Reporting IPR Crimes U.S. Customs and Immigration (ICE) has set up an IPR Coordination Center to help the fight against violations of IPR laws May report IPR crimes on-line at PRform.htm

27 May also contact IPR Coordination Center to report crimes or for further questions at: U.S. Immigration and Customs Enforcement National Intellectual Property Rights 1300 Pennsylvania Avenue, NW, Room 3.5A1 Washington, D.C Phone:(202) (866) IPR-2060 Fax:(202) Direct Line to Tom Hipelius: (202) Reporting IPR Crimes

28 How to Get IPR Border Enforcement Assistance If you have legal or policy-related questions about CBP’s IPR enforcement, contact Office of Regulations & Rulings’ IPR Branch at or at (202) If you need general IPR information or assistance, you may speak with one of CBP’s international trade specialists at (562) , ext. 252 or by at


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