Co-Authored by Jennifer Diaz and Kristina Hernandez-Tilson, an attorney in Miami, Florida, practices in state and federal court, litigating matters of civil and administrative law.
Whether you are importing goods to the United States, or are a U.S. trademarks or copyright owner, there is a new law on the books that should be of interest to you, the Trade Facilitation and Trade Enforcement Act of 2015 (TFTE), which was signed into law on February 24, 2016. TFTE, a bipartisan piece of legislation, is comprehensive in scope. In this Article, we will look specifically at Sections
302 through 311, the section on “Import-Related Protection of Intellectual Property Rights” (IPR). The TFTE highlights the fact that CBP treats IPR as a priority trade initiative.
In
this previous article, we explained the benefits of taking the extra step of recording your registered trademark or copyright with U.S. Customs and Border Protection (CBP), instead of relying solely on registration of the intellectual property with the U.S. Patent and Trademark Office (USPTO for trademarks), or the U.S. Copyright Office (for copyrights). Initial registration with the USPTO or the U.S. Copyright Office provides only public notice of ownership of the trademark or copyright, whereas taking the extra step of recording that registered trademark or copyright with CBP transforms the intellectual property into one that is now eligible to receive protection from CBP at over 327 U.S. Ports of Entry. Thanks to TFTE, this protection will now be more robust.
Prior to the passage of this Act, CBP was
authorized, pursuant to section 818(g) of the 2012 National Defense Authorization Act (NDAA), but not
required, to share unredacted images and samples with right holders if CBP suspected a product of infringing an IPR. According to
House Report 114-114 – Part 1, which comments on TFTE, giving this discretion to CBP resulted in implementation of section 818(g) of NDAA that did not provide effective enforcement for trademark and copyright holders, and by replacing 818(g) of NDAA with section 302 of TFTE, the Committee intends for CBP to implement the latter in a manner that ensures effective CBP enforcement of IPR. This means greater protection for U.S. right holders, but also more of a need for
pre-compliance for importers.
Pursuant to section 302, when CBP suspects merchandise that violates a domestic copyright or trademark is being imported into the United States, it is required to provide the U.S. right holder with certain information, so as to facilitate the right holder in conducting his or her own examination and testing of the merchandise. Specifically, CBP must provide information that appears on the merchandise and its packaging and labels, including unredacted images of the merchandise and its packaging and labels. However, it should be noted that this requirement only kicks in if CBP determines that the examination or testing of the merchandise by the owner of the trademark or copyright would assist CBP in determining if the merchandise is being imported in violation of the IPR. In other words, CBP is still allowed to exercise some discretion. CBP is also permitted to use its discretion in determining whether or not it wants to provide the right holder with actual samples, unredacted, of the merchandise.
As a result of this new law, CBP now has even more power to protect against IPR infringement to assist in identifying and seizing goods that violate U.S. IPR holders. During the recordation process with CBP, a right holder has the opportunity to train CBP on how to detect and identify infringing merchandise. Now, section 308 of the TFTE will ensure that CBP officers are trained effectively to catch the infringers. If counterfeit merchandise is seized and forfeited by CBP, CBP can also impose a penalty of the MSRP value of the infringing goods under the authority found in 19 U.S.C. 1526(f), and discussed in CBP’s own “
FP&F Mitigation Guidelines”. The catch however, is that only those companies or individuals whose trademarks have been recorded with CBP enjoy this added benefit. This reinforces our prior advice in the “
Top 10 Tips When Importing”, that all who have registered trademarks or copyrights take the extra step of recording those rights specifically with CBP. Only then will right holders enjoy the new protections afforded by TFTE.
It should also be noted that pursuant to subsection (d) of 302, all these requirements and discretionary powers now imposed on CBP are subject to security interests of the United States. CBP may not provide information, photographs, or samples to a right holder if providing such “would compromise an ongoing law enforcement investigation or national security.”
Lastly, it is important to note that TFTE affords these enhanced protections not only to right holders, but even to those who have “submitted an application for registration under Title 17, United States Code, with the United States Copyright Office, to the same extent and in the same manner as if the copyright were registered with the Copyright Office.” Section 304.
Are you now ready to record your registered trademark or copyright with Customs?
If you have been following our Cuba updates, you'll note we've been busy. A full listing of all of our posts to get you caught up are all the way at the bottom. Here's the Cliff Notes version:
Diaz Trade Law, jointly with the Export Import Bank of the United States (Ex-Im Bank), invite you to join a FREE webinar on How to Finance Your Exports, tailored to Minority & Women-Owned Businesses. The webinar will take place online, Thursday, February 26th, 2016, from 12-1pm (EDT).
Topics covered will include:
If you are in aviation - commercial or private - there are potential new business opportunities in Cuba. The American government and the Republic of Cuba last sat at the negotiation table to discuss Air Transportation agreements in 1957, as parties to the Convention on International Civil Aviation. Nearly sixty years later, on February 16, 2016, the United States government and Cuba entered into an aviation agreement, the U.S.-Cuba Memorandum of Understanding of February 16, 2016, and intend to apply the basis of comity and reciprocity of the agreement.
Diaz Trade Consulting partners with leading experts to bring you compliance seminars catered to your international business.
As of January 27th, 2016, both OFAC and the BIS have amended their regulations again, and below details the top 10 changes as a result. The last update was on September 21, 2015, and can be found here. While the United States maintains its broad embargo on trade with Cuba, OFAC and BIS have released amendments to the Cuban Assets Control Regulations designed to advance President Obama’s policy to engage and empower the Cuban people. The new changes, which can be found here and here, expand the scope of authorized business and travel by U.S. person and companies inside of Cuba. These changes were put into place to help facilitate engagement between the U.S. and Cuba. Click here to read FAQ’s related to Cuba from the OFAC.
Below we’ve providing you with a detailed summary of the top 10 significant changes:
