Generally, U.S. Customs and Border Protection (“Customs”) applies strict marking requirements when goods are labeled with non-origin geographic references that might mislead consumers as to the items’ actual country of origin (for example, “America” for apparel predominantly from China, “Bottled in Paris” for a perfume from other than France, or even a company’s address). Under this strict standard, the article must also be marked with its actual country of origin in a manner that is legible and permanent, in close proximity to the geographic term, in at least a comparable size, and preceded by “made in,” “product of,” or some similar indicator of origin.
However, these requirements are relaxed when the geographic term is part of a trademark that was applied for or registered in the U.S. Patent and Trademark Office (“USPTO”) or when it is part of a trade name. In these cases, the item must be marked with its actual country of origin in a manner that is legible and permanent. However, it may appear either in close proximity to the location words or in some other conspicuous location. It may also be smaller in size than the location words.
In JBLU, Inc. v. United States, decided March 2, 2016, the U.S. Court of Appeals for the Federal Circuit clarified that the term “trademark,” as used in Customs regulations, includes not only marks registered or applied for in the USPTO, but also unregistered, common law trademarks that exist simply because they are used by a company. Until now, this question had been interpreted inconsistently by the Customs ports of entry.
The Court in JBLU found that the importer of jeans marked with the unregistered trademarks “C’est Toi Jeans USA,” “CT Jeans USA” and “C’est Toi Jeans Los Angeles” was entitled to the relaxed labeling standard even though it had not yet applied to register, or registered, these marks with the USPTO.
Thus, it is now clear that all Customs ports should apply the relaxed labeling standard to items marked with trademarks containing geographic terms, even as to trademarks that exist only because of their use without registration.