Abstract: If a shipper or logistics provider has filed for and been granted a trademark, patent or copyright, can the company safely assume that it has fully protected its intellectual property rights? Absolutely not!
This article will explain why that isn’t the case, what additional steps a company should take to fully protect its intellectual property rights, and the risks incurred by not implementing these additional steps. The article will explore how U.S. Customs and Border Protection and the U.S. International Trade Administration can help protect intellectual property.
Deck: Many shippers and logistics companies fail to fully protect patents, trademarks or copyrights.
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 first 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 United States. The company may also 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 IP owner can, and should, do more.
Call in the Feds
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 and Border Protection 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 and/or seize imported merchandise that infringes federally registered and recorded trademarks and copyrights, recorded trade names, and/or 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 its enforcement on trademarks, names and copyrights that have been recorded with the agency. Customs will work with the owner of the recorded intellectual property rights to determine whether the merchandise violates the company’s trademark or name. Here is how:
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 which 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 which are registered on the principal register of the Patent and Trademark Office. Customs provides gray-market protection only to registered trademarks that have been recorded with Customs, where the U.S. trademark owner does not own the foreign trademark abroad, and where no common ownership or control exists between the U.S. trademark owner and the foreign trademark owner.
A trade name is the name (other than its corporate name) under which a company does business. Trade names are not 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.
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 which are produced and imported without authorization of the copyright owner. Customs accepts for recordation only copyrights which are federally registered with the U.S.
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 United States. The company can petition the U.S. International Trade Administration to institute an investigation under Section 337 of the Tariff Act of 1930. If the Commission determines that Section 337 has been violated, it may issue an exclusion order barring the products at issue from importation into the United States, and a cease-and-desist order directing the violating parties to cease certain actions. Customs will then enforce the exclusion order at the border to prevent the importation of the products.
Failure to pursue all channels for protecting IP rights can be costly.