the importation of counterfeits. CBP can also seize products that bear a counterfeit of a trademark that is federally registered but not recorded with Customs and Border Patrol. In practice, however, it is unlikely that such products will be seized, because of the immensity of the task of identifying and seizing products bearing counterfeits of recorded marks. That is why toy companies should make registering their trademarks with CBP a priority.
Seized, Detained, and Destroyed When counterfeit products are seized, CBP notifies the brand owner and also discloses the identity of the manufacturer, exporter, and importer, as well as any available details about the shipment. CBP may also provide a sample of the product to the trademark owner. CBP does this to allow the trademark owner to examine, test, or use the sample to pursue civil remedies against the importer. As for products bearing confusingly similar marks (a “copying or simulating mark”), CBP also has the authority to detain and seize such products, denying entry for the products and detaining them for 30 days. During that period, the importer must either remove the confusingly similar mark or obtain written consent from the trademark owner. If the importer does neither, the products are destroyed at the end of 30 days. However, CBP does not provide this protection against confusingly similar marks for unrecorded trademarks. Again, the bottom line is, toy companies should record their trademarks with CBP. In the case of gray market goods, CBP will not destroy the
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goods, as it may with counterfeit products, but will deny them entry. The standard for gray market goods is that the goods be “physically and materially different” from those authorized products in the U.S. (with some exceptions). For example, some of the differences sought by CBP include labeling, product construction, accessories, and accompanying documentation or warranties. For their part, brand owners must provide CBP with sufficient evidence of the differences between the gray market goods and the brand owner’s U.S. goods. (As with confusingly similar marks, only registered trademarks that are recorded with CBP are entitled to protection against gray market goods.) According to CBP regulations, in order for CBP to allow the gray market goods to enter the country, an importer must remove the registered and recorded trademarks from the products, or affix a disclaimer.
What Recording Requires Counsel can advise toy manufacturers about the process of recording their registered trademarks with CBP to benefit from the agency’s enforcement powers. As discussed above, the recording process requires information from the trademark owner about persons or entities who are authorized to use the trademark, and also about the manufacturing location for the goods. Applying for gray market protection additionally requires evidence of how the foreignmanufactured products differ from those produced for the market in the U.S. Counsel will also advise toy manufacturers about notifying CBP of shipments, activities, or parties suspected of involvement in counter-
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If the brand owner has not given consent in writing for the product to be imported, the products will be seized and may ultimately be destroyed. In addition, civil fines may be imposed by CBP against those who direct, assist, or aid and abet the importation of counterfeits.” THE TOY BOOK • 247