U.S. Customs and Border Protection (CBP) published a final rule on September 18, 2015, that implements procedures for sharing information about imported merchandise with trademark owners for purposes of determining whether merchandise bears a counterfeit mark. Significantly, the rule authorizes CBP to disclose additional information about suspected counterfeit merchandise to trademark owners prior to seizure without violating the Trade Secrets Act. Accordingly, trademark owners may now receive meaningful information about suspect counterfeit merchandise that may include useful information about the supply chains of imported products. This final rule is effective as of October 19, 2015, and adopts as final, with some noteworthy changes, the amendments implemented in the interim rule that CBP issued on April 24, 2012 (CBP Dec. 12-10, 77 Fed. Reg. 24375). CBP also indicated in the final rule that it plans to address other forms of intellectual property, such as merchandise infringing a copyright or the Digital Millennium Copyright Act, in a separate proposed rulemaking.
Under the interim and final rules, U.S. trademark owners may receive more information from CBP about suspected counterfeit merchandise. CBP historically interpreted the Trade Secrets Act (18 U.S.C. § 1905) as applying to markings, alphanumeric symbols and other coding appearing on imported products, because such marks may reveal information about an importer’s supply chain. Prior to the implementation of the interim rule in 2012, CBP’s written policy was to provide only limited importation information or redacted samples to trademark owners in order to determine whether merchandise bears a counterfeit mark. This limited information (date of importation, port of entry, description, quantity and country of origin of the goods) was usually insufficient for trademark owners to determine whether suspect merchandise was counterfeit.
Now, the interim and final rules authorize CBP to disclose to trademark owners the following information prior to seizure: serial numbers, dates of manufacture, lot codes, batch numbers, universal product codes or other identifying marks appearing on the merchandise or its retail packaging, including labels. This information may include the manufacturer, shipper, exporter or importer name and address. CBP can release this information to trademark owners after an importer has had the opportunity to prove the merchandise is genuine within seven days after a detention notice is issued.
Prior to the expiration of the seven day period, right owners can still receive limited importation information, which includes the date of importation, port of entry, and description, quantity, and country of origin of the goods. In response to commenters’ suggestions, and to avoid unnecessary delay, CBP changed the interim rule’s requirement that CBP provide limited importation information to a trademark owner within 30 business days of detention of suspected counterfeit merchandise. Instead, if available, CBP will provide this information to the right owner concurrently with the detention notice issued to the importer.
The final rule also adds a provision that allows CBP to provide the importer with unredacted information, pictures or a sample of the suspect merchandise prior to the disclosure of information to the trademark owner. This change was in response to commenters’ concern that importers do not always have complete information about the marks appearing on imported goods and retail packaging and that samples or images will assist importers in responding to CBP’s request for information. CBP agreed that releasing an unredacted sample or image to importers will help importers to provide meaningful support that the suspect merchandise is genuine.