Zepol has created a handbook on intellectual property protection in cooperation with trade law firm Neville Peterson LLP. Work with U.S. Customs to protect your companies IP rights.
Global intelligence that moves your business.
Intellectual Property Rights Handbook:
A Guide for Importers and Exporters
Table of Contents
About our Intellectual Property Rights Report for Importers and
Exporters: ......................................................................... 3
Protecting Trademarks with CBP ............................................ 5
CBP Protection of Trade Names ............................................ 21
CBP Protection of Copyrights ............................................... 25
Patents: CBP Enforcement of Section 337 Orders .................... 32
Customs Anti-Counterfeiting Activity ..................................... 44
Defending Customs Seizures and Penalties in IPR Cases .......... 50
About Neville Peterson LLP .................................................. 59
Contact Neville Peterson LLP ................................................ 61
About Zepol ...................................................................... 62
For Zepol Subscription Information: ...................................... 63
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About our Intellectual Property Rights
Handbook for Importers and Exporters:
As the most innovative and advanced U.S. trade information provider to the
international trade community, Zepol has created this handbook of
intellectual property rights for importers, suppliers, transportation
companies, and other parties interested in international trade in cooperation
with Neville Peterson, LLP. The handbook provides a better understanding of
what importers can do to protect their intellectual property.
Intellectual property ? including trademarks, trade names, service marks,
patents, copyrights, and maskworks ? is a driving force in global commerce.
A clever new invention, creative software app, or manufacturing method can
become the basis for establishment of multibillion-dollar industries. Smart
design and branding can breathe new life into tired product sectors and
generate enormous sales. In an Information Age economy, intellectual
property is king.
Creators and owners of intellectual property (IP) zealously invoke the
protections of United States law to safeguard their inventions. Patents,
trademarks and copyrights are registered, advertised, and enforced.
Licensees pay billions of dollars for the right to practice technologies, or
apply brand names to their goods. Infringers and counterfeiters are pursued
in the civil courts and, in some cases, punished with criminal sanctions.
However, the world beyond United States borders can be a dark and
dangerous place for American IP owners. Infringers, knockoff artists and
software pirates abound. Counterfeiters create bogus ? and often dangerous
? versions of well-known goods. And many foreign countries have less
intellectual property protection than afforded under United States law; in
places, officials and court systems turn a blind (or blinking) eye to blatant
counterfeiting and piracy.
What can be done about infringement from offshore?
Quite a lot, actually.
Congress has given United States Customs and Border Protection important
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and broad-reaching responsibilities and powers concerning the enforcement
of United States intellectual property rights (IPR) ? including the power to
exclude infringing goods from entry into the United States, and the right to
seize, forfeit and destroy counterfeit goods. Customs? powers can be put to
the service of IP owners at little or no cost, and can be superior, in some
ways, to conventional IP litigation in the Federal courts. Even where private
litigation is pursued, Customs-enforced remedies should be a significant part
of any corporate IP protection program.
This report describes the various Customs-administered IP remedies, and
explains how American rights holders can most effectively use them.
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Protecting Trademarks with CBP
Trademark Recordation: ?The $190 Injunction?
Both the Lanham Ac 1t ? the United States basic trademark statute ? and the
Tariff Act of 19302 authorize CBP to exclude from entry into the United
States articles which infringe trademarks registered in the United States ?
provided the trademark owner ?records? its mark with CBP for import
The recordation process involves the payment of a fee of $190 for each
trademark class for which protection is sought ? leading some to refer to the
recordation process as ?the $190 injunction.? The name derives from the
fact that Customs? exclusion of infringing goods is equivalent, in many ways,
to the protection that a trademark owner would receive if it pursued the
more difficult and expensive option of seeking and obtaining a preliminary
injunction in Federal court, prohibiting importation and sale of infringing
For many companies, the process of obtaining trademark protection is not
considered complete until the mark has been recorded with Customs for
See 15 U.S.C. §1120 et seq.
Section 526(a) of the Tariff Act of 1930, as amended [19 U.S.C. §1526(a)] provides:
1526. Merchandise bearing American trade-mark
(a) Importation prohibited
Except as provided in subsection (d) of this section, it shall be unlawful to import into
the United States any merchandise of foreign manufacture if such merchandise, or the
label, sign, print, package, wrapper, or receptacle, bears a trademark owned by a
citizen of, or by a corporation or association created or organized within, the United
States, and registered in the Patent and Trademark Office by a person domiciled in the
United States, under the provisions of sections 81 to 109 of title 15, and if a copy of the
certificate of registration of such trademark is filed with the Secretary of the Treasury,
in the manner provided in section 106 of said title 15, unless written consent of the
owner of such trademark is produced at the time of making entry.
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Recording the Mark ? A Simple Process
How does an IP owner record its trademark with Customs for import
protection? It?s a simple procedure.
Section 133.21 of the Customs Regulations [19 U.S.C. §133.21] requires the
IP owner to submit an application for recordation of a mark ? usually in the
form of a letter. A mark registered on the Principal Register of the United
States Patent and Trademark Office (USPTO)3 can be recorded with CBP. The
application to record must contain the elements in the following table:
Information Required in Regulatory Authority
Application to Record Trademark
Must be addressed to: 19 C.F.R. §133.2(a)
Intellectual Property Rights (IPR) &
Restricted Merchandise Branch,
U.S. Customs and Border
1300 Pennsylvania Avenue, NW.,
Washington, DC 20229
Name 19 C.F.R. §133.2(b)
Complete business address
Citizenship of the trademark owner
or owners (if a partnership, the
citizenship of each partner; if an
association or corporation the State,
country, or other political
jurisdiction within which it was
organized, incorporated, or created)
The places of manufacture of goods 19 C.F.R. §133.2( c)
bearing the recorded trademark
(i.e., legitimate goods);
Trademarks on the USPTO?s Supplemental Register *i.e., number marks used to designate models of a good] may
not be recorded with Customs.
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The name and principal business 19 C.F.R. §133.2(c)
address of each foreign person or
business entity authorized or
licensed to use the trademark and a
statement as to the use authorized
Identity of any parent or subsidiary 19 C.F.R. §133.2(d)
company or other foreign company
under common ownership or control
which uses the trademark abroad.
?Common ownership? requires a
50% or greater ownership of the
?Common control? requires common
control over policy and is not
necessarily synonymous with
A status copy of the certificate of 19 C.F.R. §133.3(a)(1)
registration certified by the U.S.
Patent and Trademark Office
showing title to be presently in the
name of the applicant
Five (5) copies of the certificate of 19 C.F.R. §133.3(a)(2)
registration, reproduced on
approximately 8-1/2" x 10-1/2"
Registration fee of $190 for each 19 C.F.R. §133.3(b)
class of merchandise for which
Customs enforcement is requested
(as shown on face of the trademark
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CBP publishes monthly a list of trademark and trade name recordations [see
sample listing at Exhibit A].
Recordation and Enforcement of ?Service Marks?
Customs also records and enforces ?service marks?. A service mark is a
mark which is applied to a good to indicate that the good meets some
standard or is in some way approved. Usually, the issuer of a service mark is
a service provider, who does not itself produce a trademarked good.
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Examples of service marks include the Underwriters? Laboratories (UL)
service and registration marks, applied to electrical products, and
certification marks issued by trade associations and private standards-
setting agencies, such as the Juvenile Product Manufacturers Association
(JPMA). The courts have held that service marks, like conventional
trademarks, can be recorded with CBP for import enforcement purposes, and
enforced at the border by Customs inspectors and agents.4
In enforcing recorded service marks, CBP officers often look beyond the
mark itself, and look to the terms of the licensing agreements which
authorized users of the mark itself have signed. For example, if a company
is authorized to apply the UL mark to radios made in one factory, but applies
the mark to radios made in a different factory not approved by UL, CBP will
seize the radios as infringing or even counte 5rfeit. Similarly, if a licensing
agreement calls for a particular inspection to be performed, and this is not
done, CBP may exclude the goods as infringing or counterfeit. This type of
enforcement is somewhat controversial, since critics argue that CBP is not
really enforcing the trademark or service mark per se, but undertaking
enforcement of contractual provisions better left to private litigation.
However, the courts have as yet given no indication that they will limit CBP?s
ability to seize and forfeit goods bearing a service mark based on violations
of contractual undertakings which support the issuance of the marks.
See, e.g., United States v. 10,510 Packaged Computer Towers, 152 F. Supp. 2d 1159 (N.D.Cal. 2001); United States
v. 4500 Audek Model 5601 AM/FM Clock Radios, 220 F.3d 529 (7th Cir. 2000).
United States v. 4500 Audek Model 5601 AM/FM Clock Radios, 220 F.3d 529 (7th Cir. 2000).
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Customs Enforcement ? What Will the Agency Do?
What type of protection does the trademark owner get from recording its
mark with Customs for import protection? Quite a lot actually.
First, Customs will generally exclude from entry any goods bearing the
marks if they are not imported by the recordant, or a person authorized by
the recordant. In some cases, as discussed below, this exclusion may even
apply to genuine ?gray market? goods manufactured by the trademark
owner or under its authority.
Customs will also exclude from entry goods bearing marks which are
?confusingly similar? to the recorded mark. This allows Customs to make
determinations of infringement, and to take action accordingly. For example,
a watch bearing the name ?ROLET? might be deemed infringing of the
registered mark for ?ROLEX? watches, and excluded from entry.
In making determinations of infringement, Customs is expected to make a
comparison of the language appearing on the imported goods under
consideration with the mark as it actually appears on genuine goods ? not
just the mark as it appears on the USPTO registration or the CBP
See Ross Cosmetics Distribution Centers, Inc. v. United States, 17 CIT 966 (1993); Montres Rolex v. Snyder, 718
F.2d 524, 527-28 (2d Cir.1983) cert. denied 465 U.S. 1100 (1984).
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Goods excluded as ?infringing? are not automatically subject to seizure and
forfeiture. Arguably, the importer should be free to export the goods back to
their source, or to some other market outside of CBP?s jurisdiction. However,
in many cases, CBP will attempt to seize and forfeit these goods, relying
upon discretionary authority set out in Section 596 of the Tariff Ac 7t. In
some cases, the factual and legal predicate for such seizures and forfeitures
is questionable at best. However, IPR owners often benefit from Customs?
actions, which in private litigation often could not be secured by means of an
Where goods are deemed to bear counterfeit versions of trademarks
(whether or not registered with CBP), Customs is obligated not only to
Customs frequently relies on 19 U.S.C. §1595a( c), which provides in pertinent part:
1595a. Forfeitures and other penalties.
(c) Merchandise introduced contrary to law
Merchandise which is introduced or attempted to be introduced into the United States contrary
to law shall be treated as follows:
(1) The merchandise shall be seized and forfeited if it -
(A) is stolen, smuggled, or clandestinely imported or introduced;
(B) is a controlled substance, as defined in the Controlled Substances Act (21
U.S.C. 801 et seq.), and is not imported in accordance with applicable law;
(C) is a contraband article, as defined in section 80302 of title 49; or
(D) is a plastic explosive, as defined in section 841(q) of title 18, which does not
contain a detection agent, as defined in section 841(p) of such title.
(2) The merchandise may be seized and forfeited if -
(C) it is merchandise or packaging in which copyright, trademark, or trade
name protection violations are involved (including, but not limited to,
violations of section 1124,1125, or 1127 of title 15, section 506 or 509 of title
17, or section 2318 or 2320 of title 18);
(D) it is trade dress merchandise involved in the violation of a court order citing
section 1125 of title 15;
It is important to note that the statute distinguishes cases where CBP ?shall? seize and forfeit merchandise from
cases where the agency has discretion, i.e., ?may? seize and forfeit merchandise, but is not obligated to do so.
Intellectual property rights violations other than counterfeiting do not require seizure and forfeiture.
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exclude the goods, but to seize and forfeit same. Seizure authority is
contained both in civil statutes, viz. Section 526(e) of the Tariff Ac 8t, but
also in the Federal Criminal Code 9.
Obviously, with thousands of marks recorded for import protection, CBP
officers ? who administer not only the Customs laws, but laws for more than
60 other Federal agencies ? cannot be expected to detect and stop every
infringing product. For this reason, it is important that IPR holders who want
Customs to aggressively enforce their marks work closely with the agency to
help train Customs agents in detecting infringing goods, and provide specific
investigative tips regarding sources of infringing merchandise. CBP has
established a specialized IPR website, which contains publicly-available
information concerning marks recorded for import protection. The intranet
portion of the website contains confidential enforcement information for use
by CBP inspectors at ports of entry nationwide.
19 U.S.C. §1526(e) provides:
(e) Merchandise bearing counterfeit mark; seizure and forfeiture; disposition of seized goods
Any such merchandise bearing a counterfeit mark (within the meaning of section 1127 of title 15)
imported into the United States in violation of the provisions of section 1124 of title 15, shall be
seized and, in the absence of the written consent of the trademark owner, forfeited for violations
of the customs laws. Upon seizure of such merchandise, the Secretary shall notify the owner of
the trademark, and shall, after forfeiture, destroy the merchandise. Alternatively, if the
merchandise is not unsafe or a hazard to health, and the Secretary has the consent of the
trademark owner, the Secretary may obliterate the trademark where feasible and dispose of the
goods seized -
(1) by delivery to such Federal, State, and local government agencies as in the opinion of the
Secretary have a need for such merchandise,
(2) by gift to such eleemosynary institutions as in the opinion of the Secretary have a need for
such merchandise, or
(3) more than 90 days after the date of forfeiture, by sale by the Customs Service at public
auction under such regulations as the Secretary prescribes, except that before making any such
sale the Secretary shall determine that no Federal, State, or local government agency or
eleemosynary institution has established a need for such merchandise under paragraph (1) or
18 U.S.C. §2320(b) provides criminal penalties for persons who intentionally traffic in counterfeit merchandise,
and contains a separate seizure and forfeiture authority relating to such merchandise. The courts have held that
CBP may exercise this authority to seize counterfeit goods, even if criminal charges are not brought. See Ross
Cosmetics Distribution Centers v. United States, 17 CIT 996 (1993).
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IPR owners often prepare Powerpoint or similar presentations which depict
their goods and infringing versions, and provide them to CBP for
dissemination to inspectors via the intranet site. In addition, with CBP?s
approval (and sometimes participation), IPR owners may get the chance to
conduct some internal training for CBP officers concerning how to spot
infringing goods. These presentations can be useful tools for helping to train
CBP officials concerning subtle or complex issues of trademark law.
We discuss in a separate section how importers can deal with CBP detentions
and seizures of goods accused of IPR violations.
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Access to Samples of Suspected Infringing or Counterfeit
Assume that CBP officers have detained and seized merchandise at a distant
port which is suspected of being counterfeit. Is it truly counterfeit? Is it
genuine ?gray market? merchandise? Merely infringing? Obviously, the
answer to this question will determine how the shipment will be handled and
Where Customs seizes merchandise, it provides the IPR holder with
extensive information concerning the merchandise seized 10, so that the IPR
holder can advise Customs as to whether the product is genuine, counterfeit,
Section 133.21 ( c) of the Customs Regulations [19 C.F.R. §133.21( c)] provides:
(c) Notice to trademark owner. When merchandise is seized under this section, Customs shall
disclose to the owner of the trademark the following information, if available, within 30 days,
excluding weekends and holidays, of the date of the notice of seizure:
(1) The date of importation;
(2) The port of entry;
(3) A description of the merchandise;
(4) The quantity involved;
(5) The name and address of the manufacturer;
(6) The country of origin of the merchandise;
(7) The name and address of the exporter; and
(8) The name and address of the importer.
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Often, the CBP inspectors will not be in a position to know the answer to this
question, but the IPR holder could readily answer it. Alternatively, Customs
may have already decided that the good is a ?counterfeit? subject to seizure
and forfeiture, but the IPR owner may want to obtain a sample of the goods
to use in connection with private litigation against the importer. Customs
regulations contain a provision which allow the IPR owner to obtain a sample
of the merchandise from the detained shipment. Section 133.21(d) of the
Customs Regulations [19 C.F.R. §133.21(d) provides:
Samples available to the trademark owner. At any time following
seizure of the merchandise, Customs may provide a sample of the
suspect merchandise to the owner of the trademark for examination,
testing, or other use in pursuit of a related private civil remedy for
trademark infringement. To obtain a sample under this section, the
trademark/trade name owner must furnish Customs a bond in the
form and amount specified by the port director, conditioned to hold the
United States, its officers and employees, and the importer or owner of
the imported article harmless from any loss or damage resulting from
the furnishing of a sample by Customs to the trademark owner.
Customs may demand the return of the sample at any time. The
owner must return the sample to Customs upon demand or at the
conclusion of the examination, testing, or other use in pursuit of a
related private civil remedy for trademark infringement. In the event
that the sample is damaged, destroyed, or lost while in the possession
of the trademark owner, the owner shall, in lieu of return of the
sample, certify to Customs that: "The sample described as [insert
description] and provided pursuant to 19 CFR 133.21(d) was
(damaged/destroyed/lost) during examination, testing, or other use."
Recording a mark with CBP for import protection, or availing itself of
Customs enforcement of its intellectual property, in no way precludes an IPR
owner from pursuing its private remedies against suspected infringers or
coun 1terfeiters 1. Obtaining a sample from Customs can be an excellent way
to gain information concerning the claims that can be brought against
In this regard, it should be borne in mind that, absent a court order directing Customs to act, the agency has
discretion in enforcing intellectual property rights. In particular cases, the agency may decline to undertake
enforcement and leave the trademark owner to its private remedies. See, e.g., Weil Ceramics & Glass, Inc. v. Dash,
878 F.2d 659, 11 USPQ2d 1001 (3d Cir. 1989).
At present, however, Customs has identified IPR enforcement as a priority area for the agency and is
devoting substantial resources to detecting, excluding and, where appropriate, seizing and forfeiting infringing and
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Customs? Exclusion of Genuine ?Gray Market? Goods
Under certain circumstances, Customs will exclude genuine ?gray market?
versions of goods bearing marks which have been recorded with the agency
for import protection. However, to avoid promoting secondary price
discrimination, Customs? regulations indicate that the agency will not exclude
genuine gray market goods when the U.S. and foreign owner of the
trademark are the ?same person? or are under ?common ownership and
For purposes of this limitation, the term ?common ownership? is defined in
the Customs regulations as ?[i]ndividual or aggregate ownership of more
than 50 percent of the business entity; and ?common control? means
?effective control in policy and operations and is not necessarily synonymous
with common ownership 13?.
The United States Supreme Court, in Kmart v. Cart 14ier, upheld the
Customs? regulations to the extent that they decline Customs enforcement of
trademarks against ?gray market? goods in particular cases where foreign
and domestic trademark owners are the same person or subject to common
ownership or control. .
Section 133.21(d)(1) of the Customs regulations establishes the exception to protection for gray market goods
sold abroad by a recordant. It provides:
(d) Relief from detention of gray market articles. Gray market goods subject to the restrictions of
this section shall be detained for 30 days from the date on which the goods are presented for
Customs examination, to permit the importer to establish that any of the following exceptions, as
well as the circumstances described above in §133.22(c), are applicable:
(1) The trademark or trade name was applied under the authority of a foreign
trademark or trade name owner who is the same as the U.S. owner, a parent or
subsidiary of the U.S. owner, or a party otherwise subject to common ownership or
control with the U.S. owner (in an instance covered by §§133.2(d) and 133.12(d) of this
See 19 C.F.R. §133.2(d).
486 U.S. 281 (1988).
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?Lever Rule? Protection: The Exception to the Exception
As noted above, while Customs generally will not exclude ?gray market?
goods in cases where the U.S. and foreign trademark owner are the ?same
person? or under ?common ownership or control?, the law creates an
exception for cases where the gray market goods offered for importation into
the United States are physically or materially different from goods sold
under the mark in the United States. In these cases, the sale of the genuine
?gray market? good in the United States still has the potential to damage the
reputation of goods bearing the trademark.
This so-called ?Lever rule? exception is based on the decision in Lever
Brothers Co. v. United States, 981 F.2d 1330, 25 USPQ2d 1579 (D.C. Cir.
1993). In Lever, Customs declined to exclude certain imports of ?Sunlight?
dish detergent from the United Kingdom on the ground that the same person
? Lever Brothers, Inc. ? owned the ?Sunlight? mark in the United States and
abroad. However, the Sunlight detergent sold abroad differed from the
United States product in that it was not designed to produce a lot of suds
during washing. As a result of this physical difference, American consumers
who purchased the non-sudsing imported product believed they had received
defective goods. Under these circumstances, the Court ruled, Customs could
be ordered to exclude the gray market goods.
In response to the Lever decision, Customs has amended its regulations to
provide that firms which record their marks for import protection may also
seek ?Lever rule? protection against genuine goods bearing the mark, which
may be ?materially or physically different? than the goods bearing the mark
in the United States. Indeed, some recent decisions have watered down the
requirement for Lever-rule protection to a simple ?material? difference,
which need not be physical. Thus, differences in the packaging of goods, or
in the safety warnings accompanying them, may be sufficient to obtain
exclusion of gray market product 15. Indeed, a number of recent decisions
indicate that a physical difference is not required; it is sufficient if there is a
material difference in such intangible qualities as warranty coverage and the
See, e.g., Gamut Trading Inc. v. United States Int?l Trade Comm., 200 F.3d 775 (Fed. Cir. 1999).
See, e.g., SKF-USA v. United States Int?l Trade Comm., 423 F.3d 1307 (Fed. Cir. 2005); see also Beltronics USA v.
Midwest Inventory Distribution Co., 562 F.3d 1067 (10th Cir. 2009); Boudreau Bros v. United States Int?l Trade
Comm., 444 F.3d 1317 (Fed. Cir. 2006).
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If a company recording its mark with CBP for import protection wishes to
receive ?Lever rule? protection against imports of genuine but materially
different goods bearing the mark, it must make specific application for such
protection. This application may be made with the initial application to
record the mark, or as a separate application for a mark already recorded.
Section 133.2(e) of the Customs Regulations identifies the information which
must be submitted to CBP in connection with an application for Customs-
administered ?Lever-rule? protection. This information is summarized in the
table of the following page.
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INFORMATION REQUIRED FOR ?LEVER-RULE? PROTECTION
Information Required Regulatory Authority
(1) The specific composition of both 19 C.F.R. §133.2(e)(1)
the authorized and gray market
product(s) (including chemical
(2) Formulation, product 19 C.F.R. §133.2(e)(2)
construction, structure, or
composite product components, of
both the authorized and gray
(3) Performance and/or operational 19 C.F.R. §133.3(e)(3)
characteristics of both the
authorized and gray market
(4) Differences resulting from legal 19 C.F.R. §133.3(e)(4)
or regulatory requirements,
(5) Other distinguishing and 19 C.F.R. §133.3(e)(5).
explicitly defined factors that would
likely result in consumer deception
or confusion as proscribed under
While Customs? regulations appear to assume a physical difference in the
goods in question, it is unclear whether a simple material difference in
conditions such as warranty coverage, performance and the like, might
support a claim for Customs-administered Lever-rule protection.
Presumably, it would be sufficient under factors (4) and (5), above. It is also
unclear whether a Customs application is the exclusive way to obtain Lever-
rule protection, or whether the agency may simply be sued in court to seek
an injunction compelling such enforcement.
When Customs receives a request for Lever-rule protection, it publishes
notice of the application in the Customs Bulletin and solicits public comment.
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One question on which comments are typically solicited is whether there are
measures other than exclusion which could address the concerns of
consumer confusion. In some cases, the use of disclaimer labels, for
instance, has been ruled an effective remedy.
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CBP Protection of Trade Names
The Customs Regulations provide a similar protection mechanism for ?trade
names? ? names or styles used to identify a class of products which have not
been reduced to a formal trademark recorded with the USPTO.
Trade Name Recordation ? Another ?$190 Injunction?
The process for recordation of a trade name involves names which have
been in use for at least six (6) months. It also involves the payment of a
$190 fee for the recordation ? another type of ?$190 injunction?.
Requirements for Recording a Trade Name
An application to record a trade name with CBP for import protection must
be sent to Customs? Headquarters Intellectual Property Rights Branch in
The name or trade style used for at least 6 months to identify a
manufacturer or trader may be recorded with the United States Customs
Service. Words or designs used as trademarks, whether or not registered in
the U.S. Patent and Trademark Office shall not be accepted for recordation
as a trade name. Generally, the complete business name will be recorded
unless convincing proof establishes that only a part of the complete name is
customarily used.17 The regulatory requirements for recording a trade name
for import protection is summarized in the following table:
Information Required in Regulatory Authority
Application to Record Trade
name with CBP
Must be addressed to: 19 C.F.R. §133.12(a)
Intellectual Property Rights (IPR) &
Restricted Merchandise Branch,
U.S. Customs and Border
See 19 C.F.R. §133.11.
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1300 Pennsylvania Avenue, NW.,
Washington, DC 20229
The trade name or style to be 19 C.F.R. §133.12(b)
The name and principal business 19 C.F.R. §133.12( c)
address of each foreign person or
business entity authorized or
licensed to use the trade name and
a statement as to the use
(d) The identity of any parent or 19 C.F.R. §133.12(d)
subsidiary company, or other
foreign company under common
ownership or control which uses the
trade name abroad (see §133.2(d))
A description of the merchandise for 19 C.F.R. §133.12(e)
which the trade name is recorded
a statement of the owner, partners, 19 C.F.R. §133.13(a)
or principal corporate officer, and by
statements by at least two other
persons not associated with or
related to the applicant but having
actual knowledge of the facts,
stating that to his best knowledge
(1) The applicant has used the trade
name in connection with the class or
kind of merchandise described in
the application for at least 6
(2) The trade name is not identical
or confusingly similar to any other
trade name or registered trademark
used in connection with such class
or kind of merchandise; and
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(3) The applicant has the sole and
exclusive right to the use of such
trade name in connection with the
merchandise of that class or kind.
Registration feeof $190 for each 19 C.F.R. §133.13(b)
class trade name to be recorded
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n Enforceme t ? What Will Customs Do?
Customs will exclude from entry merchandise bearing a recorded trade name
which is imported without consent of the trade name recordant. Seizure and
forfeiture is also possible in particular cases.
As with other types of Customs IPR enforcement, a recordant?s chances of
obtaining effective Customs enforcement are improved if it can feed the
agency investigative tips concerning potentially infringing goods.
Customs publishes applications to record trade names in the Customs
Bulletin for public comment. Interested parties may offer comments
supporting or opposing the recordation. See 19 C.F.R. §133.14.
Protection for a recorded trade name remains in force as long as the trade
name is used. The recordation shall be canceled upon request of the
recordant or upon evidence of disuse. From time to time, the IPR &
Restricted Merchandise Branch may request the trade name owner to advise
whether the name is still in use. The failure of a trade name owner to
respond to such a request shall be regarded as evidence of disuse. 19 C.F.R.
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CBP Protection of Copyrights
Copyright Recordation and Anti-Piracy Measures
Claims for copyright which have been registered under the terms of the
Copyright Act may be recorded with Customs for import protection. See 19
Persons eligible to record a copyright with Customs include ?[t]he copyright
owner, including any person who has acquired copyright ownership through
an exclusive license, assignment, or otherwise, and claims actual or potential
injury because of actual or contemplated importations of copies (or
phonorecords) of eligible works . . .? 19 C.F.R. §133.31(b).
The requirements for an application to record a copyright (including a
phonorecord) with Customs for import protection are summarized in the
Information Required Regulatory Authority
Application addressed to: 19 C.F.R. §133.32
IPR & Restricted Merchandise
U.S. Customs and Border Protection
1300 Pennsylvania Avenue
Washington, DC 20229
Name and address of copyright 19 C.F.R. §133.32(a)
Statement setting forth the 19 C.F.R. §133.32(b)
circumstances of actual or potential
injury from importation of goods or
recordings infringing the copyrights,
if actual injury is contemplated
The country of manufacture of 19 C.F.R. §133.32(c)
genuine copies or phonorecords of
the protected work
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The name and principal address of 19 C.F.R. §133.32(d)
any foreign person or business
entity authorized or licensed to use
the protected work, and a
statement as to the exclusive rights
The foreign title of the work, if 19 C.F.R. §133.32(e)
different from the U.S. title
In the case of an application to 19 C.F.R. §133.32(e)
record a copyright in a sound
recording, a statement setting forth
the name(s) of the performing
artist(s), and any other identifying
names appearing on the surface of
reproduction of the sound recording,
or its label or container.
An "additional certificate" of 19 C.F.R. §133.33(a)(1)
copyright registration issued by the
U.S. Copyright Office. If the name
of the applicant differs from the
name of the copyright owner
identified in the certificate, the
application shall be accompanied by
a certified copy of any assignment,
exclusive license, or other document
recorded in the U.S. Copyright
Office showing that the applicant
has acquired copyright ownership in
Five photographic or other 19 C.F.R. §133.33(a)(2)
likenesses reproduced on paper
approximately 8-1/2 inch; by 10-
1/2 inch; in size of any copyrighted
work. An application shall be
excepted from this requirement if it
covers a work such as a book,
magazine, periodical, or similar
copyrighted matter readily
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identifiable by title and author or if
it covers a sound recording. Five
likenesses of a component part of a
copyrighted work, together with the
name or title, if any, by which the
part depicted is identifiable, may
accompany an application covering
an entire copyrighted work.
A fee of $190 for each copyright to 19 C.F.R. §133.32(b).
be recorded, check made payable to
?U.S. Customs and Border
A recordation becomes effective when received. It remains in force for up to
twenty (20) years, or until such time as the recordant ceases to own the
Separate application rules are provided for cases where ownership of a
copyright is transferred, and the new owner wishes to continue recordation
and enforcement of the copyright.
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Procedure When Suspected Piratical Copy is Imported.
The importation of piratical copies of copyrighted works is a violation of the
Customs laws. By contrast, importation of lawfully made copies is
permissible. Infringing copies of copyrighted goods are subject to seizure
Whenever Customs seizes goods for suspected violation of copyright, the
port director of Customs must, within 30 days of such seizure, notify the
copyright owner of the following information:
1. The date of importation;
2. The port of entry;
3. A description of the merchandise;
4. The quantity involved;
5. The name and address of the manufacturer;
6. The country of origin of the merchandise;
7. The name and address of the exporter; and
8. The name and address of the importer.
In addition, Customs will make samples of the suspected infringing works
available to the copyright recordant. In order to obtain a sample, the
copyright owner must provide Customs with a bond and hold harmless
agreement. The sample must be returned to Customs upon conclusion of the
seizure case, or of any civil action relating to the imported goods.
Where records or motion pictures arriving in the United States bear
counterfeit labels, Customs officers are directed to consider making a report
to the United States attorney, for the possible initiation of criminal
proceedings. See 19 C.F.R. §133.42.
Where imported works are suspected of being infringing/piratical copies of
copyrighted works, the Port Director of Customs must advise the importer
that it is considering detention and exclusion of the goods. The importer may
then, if it wishes, file a declaration that the goods are not infringing.
If the importer files a declaration that goods are not infringing, the Port
Director of Customs will provide the copyright owner with information
concerning the imported merchandise. 19 C.F.R. §133.43(a), as follows:
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1. The date of importation;
2. The port of entry;
3. A description of the merchandise;
4. The quantity involved;
5. The country of origin of the merchandise; and
6. Notice that the imported article will be released to the importer
unless, within 30 days from the date of the notice, the copyright owner
files with the port director:
(i) A written demand for the exclusion from entry of the detained
imported article; and
(ii) A bond, in the form and amount specified by the port director,
conditioned to hold the importer or owner of the imported article
harmless from any loss or damage resulting from Customs detention in
the event the Commissioner or his designee determines that the article
is not an infringing copy prohibited importation under section 602 of
the Copyright Act of 1976 (17 U.S.C. 602).
See 19 C.F.R. §133.43(b).
If the copyright owner thereafter files the required bond, Customs will then
conduct an administrative proceeding to address the question of whether the
imported copies are infringing or piratical copies. The importer and the
copyright owner are obligated to exchange information regarding the
imported goods and the claims of infringement, and have the right to submit
briefs to Customs18 addressing the question of infringement.
Thus, Section 133.43(d)(1) provides in pertinent part that:
1) Demand and bond; exchange of briefs. If the copyright owner files a written demand for
exclusion of the suspected infringing copies together with a proper bond, the port director shall
promptly notify the importer and copyright owner that, during a specified time limited to not
more than 30 days, they may submit any evidence, legal briefs or other pertinent material to
substantiate the claim or denial of infringement. The burden of proof shall be upon the party
claiming that the article is in fact an infringing copy.
(i) Exchange of briefs. Before timely submitting the additional evidence, legal briefs, or
other pertinent material to Customs, pursuant to paragraph (c)(1) of this section, in
regard to the disputed claim of infringement, the importer and the copyright owner
shall first provide each other with a copy of all such information, including the
importer's denial of infringement and the copyright owner's demand for exclusion. The
subsequent submission of this information to Customs shall be accompanied by a
written statement confirming that a copy has already been provided to the opposing
party. The port director shall notify the importer and the copyright owner that they shall
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have additional time, not to exceed 30 days, in which to provide a response to the
arguments submitted by the opposing party, and that rebuttal arguments, timely
submitted, shall be fully considered in the decision-making process. During this rebuttal
period and before timely submitting the rebuttal arguments to Customs, the importer
and the copyright owner shall first provide each other with a copy of all such material.
The submission of this rebuttal material to Customs shall be accompanied by a written
statement confirming that a copy has been provided to the opposing party. The port
director shall not accept any additional material from the parties to substantiate the
claim or denial of infringement after the final 30-day rebuttal period expires.
(ii) Decision. Upon receipt of rebuttal arguments, or 30 days after notification if no
rebuttal arguments are submitted, the port director shall forward the entire file,
together with a sample of each style that is considered possibly infringing, to CBP
Headquarters, (Attention: Border Security and Trade Compliance Division, Regulations
and Rulings, Office of International Trade), for decision on the disputed claim of
infringement. The final decision on the disputed claim of infringement shall be
forwarded to the port director who shall send a copy thereof to the copyright owner as
well as to the importer.
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Within 30 days after the briefs are submitted, Customs will transmit the
matter to the Customs Headquarters IPR branch, for a determination of
In order to secure Customs? detention of the goods, the copyright owner
must file a statement that the goods are infringing or piratical, and a bond to
hold Customs harmless from liability for the seizure.
Thus, by posting a bond, the copyright owner has the power to detain an
import shipment of goods suspected of infringing the copyright. However, if
its claim is not sustained, the full amount of the bond is then paid over to
the importer of the suspected merchandise. In contrast to trademark
exclusions, where the importer has little direct recourse to the IPR owner,
the Customs procedure for copyright enforcement requires the IP owner to
assume risk, and to make its case that a copy is piratical.
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Patents: CBP Enforcement of Section 337
A. Section 337 of the Tariff Act of 1930
Section 337 of the Tariff Act of 1930 authorizes the United States
International Trade Commission (ITC), an independent government agency,
to investigate allegations that goods imported into the United States are
being traded by unfair competition or unfair acts. Although Section 337 can
conceivably be invoked against a wide range of practices, most commonly
the statute is used against imported goods alleged to infringe patents or
other intellectual property rights owned by United States firms.
Section 337 investigations are typically commenced following the filing of a
complaint with the ITC19. Upon initiating a Section 337 investigation, the ITC
Section 337 [19 U.S.C. §1337] provides:
(b) Investigation of violations by Commission
(1) The Commission shall investigate any alleged violation of this section on complaint under
oath or upon its initiative. Upon commencing any such investigation, the Commission shall
publish notice thereof in the Federal Register. The Commission shall conclude any such
investigation and make its determination under this section at the earliest practicable time after
the date of publication of notice of such investigation. To promote expeditious adjudication, the
Commission shall, within 45 days after an investigation is initiated, establish a target date for its
(2) During the course of each investigation under this section, the Commission shall consult with,
and seek advice and information from, the Department of Health and Human Services, the
Department of Justice, the Federal Trade Commission, and such other departments and agencies
as it considers appropriate.
(3) Whenever, in the course of an investigation under this section, the Commission has reason to
believe, based on information before it, that a matter, in whole or in part, may come within the
purview of part II of subtitle IV of this chapter, it shall promptly notify the Secretary of Commerce
so that such action may be taken as is otherwise authorized by such part II. If the Commission has
reason to believe that the matter before it (A) is based solely on alleged acts and effects which
are within the purview of section 1671 or 1673 of this title, or (B) relates to an alleged copyright
infringement with respect to which action is prohibited by section 1008 of title 17, the
Commission shall terminate, or not institute, any investigation into the matter. If the
Commission has reason to believe the matter before it is based in part on alleged acts and effects
which are within the purview of section 1671 or 1673 of this title, and in part on alleged acts and
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appoints an Administrative Law Judge (ALJ) to investigate the Complaint and
issue findings and recommendations thereon 20. What follows is an intensive
trial before the ALJ, typically conducted on an expedited basis, with
extensive pretrial discovery and a trial-type hearing 21.
effects which may, independently from or in conjunction with those within the purview of such
section, establish a basis for relief under this section, then it may institute or continue an
investigation into the matter. If the Commission notifies the Secretary or the administering
authority (as defined in section 1677(1) of this title) with respect to a matter under this
paragraph, the Commission may suspend its investigation during the time the matter is before
the Secretary or administering authority for final decision. Any final decision by the
administering authority under section 1671 or 1673 of this title with respect to the matter within
such section 1671 or 1673 of this title of which the Commission has notified the Secretary or
administering authority shall be conclusive upon the Commission with respect to the issue of
less-than-fair-value sales or subsidization and the matters necessary for such decision.
See 19 C.F.R. §§211.9 - 211.11.
See Generally 19 C.F.R. Part 210. For an excellent exposition of Section 337 procedures, see also Herrington
and Thompson, Intellectual Property Rights and United States International Trade Laws (Oceana Press, 2002)
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Following trial (or, in exceptional cases, following summary determination),
the ALJ will issue an ?Initial Determination? (ID), setting forth proposed
findings of fact and conclusions of law, and making a recommendation
concerning what remedy, if any, the ITC should impose 22. The ITC is then
given the opportunity to review the ID 23. The Commission may elect not to
Section 210.42(a) of the ITC?s regulations provides in pertinent part:
§ 210.42 Initial determinations.
(a)(1)(I) On issues concerning violation of section 337. Unless otherwise ordered by the
Commission, the administrative law judge shall certify the record to the Commission and shall file
an initial determination on whether there is a violation of section 337 of the Tariff Act of 1930 no
later than 3 months before the target date set pursuant to § 210.51(a) if the target date is 15
months or less from the date of institution, and no later than 4 months before the target date if
the target date is more than 15 months from the date of institution.
(ii) Recommended determination on issues concerning permanent relief and bonding. Unless the
Commission orders otherwise, within 14 days after issuance of the initial determination on
violation of section 337 of the Tariff Act of 1930, the administrative law judge shall issue a
recommended determination containing findings of fact and recommendations concerning_
(A) The appropriate remedy in the event that the Commission finds a violation of section
(B) The amount of the bond to be posted by the respondents during Presidential review
of Commission action under section 337(j) of the Tariff Act.
The regulation also provides in pertinent part that:
(d) Contents. The initial determination shall include: an opinion stating findings (with specific
page references to principal supporting items of evidence in the record) and conclusions and the
reasons or bases therefor necessary for the disposition of all material issues of fact, law, or
discretion presented in the record; and a statement that, pursuant to § 210.42(h), the initial
determination shall become the determination of the Commission unless a party files a petition
for review of the initial determination pursuant to § 210.43(a) or the Commission, pursuant to §
210.44, orders on its own motion a review of the initial determination or certain issues therein.
The ITC?s regulations provide:
§ 210.44 Commission review on its own motion of initial determinations on matters other
than temporary relief.
Within the time provided in § 210.43(d)(1), the Commission on its own initiative may order
review of an initial determination, or certain issues in the initial determination, when at least one
of the participating Commissioners votes for ordering review. A self-initiated Commission review
of an initial determination will be ordered if it appears that an error or abuse of the kind
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review the ID (effectively adopting the ID as its own decision), may modify
or alter the ID, or may remand the matter to the ALJ for further
All of these Section 337 investigation activities take place in a highly-
compressed time period. Generally, only between 12 and 14 months elapse
from the initiation of an investigation to its conclusion, and the issuance of a
final determination. In this respect, Section 337 investigations are nearly
twice as quick as conventional patent litigation involving the same issues 24.
described in § 210.43(b)(1) is present or the initial determination raises a policy matter which the
Commission thinks is necessary or appropriate to address.
§ 210.45 Review of initial determinations on matters other than temporary relief.
(a) Briefs and oral argument. In the event the Commission orders review of an initial
determination pertaining to issues other than temporary relief, the parties may be requested to
file briefs on the issues under review at a time and of a size and nature specified in the notice of
review. The parties, within the time provided for filing the review briefs, may submit a written
request for a hearing to present oral argument before the Commission, which the Commission in
its discretion may grant or deny. The Commission shall grant the request when at least one of the
participating Commissioners votes in favor of granting the request.
(b) Scope of review. Only the issues set forth in the notice of review, and all subsidiary issues
therein, will be considered by the Commission.
( c) Determination on review. On review, the Commission may affirm, reverse, modify, set aside
or remand for further proceedings, in whole or in part, the initial determination of the
administrative law judge. The Commission also may make any findings or conclusions that in its
judgment are proper based on the record in the proceeding. If the Commission's determination
on review terminates the investigation in its entirety, a notice will be published in the Federal
While Section 337 actions do not provide a forum for a patent owner to seek monetary damages for
infringement, they provide a way in which final injunctive relief may be obtained more quickly than in conventional
patent litigation in the Federal courts. However, intellectual property rights (IPR) owners can maintain separate
suits for damages resulting from infringement proven in Section 337 proceedings. IPR owners also find Section 337
proceedings to be advantageous from a competitive perspective, since respondents cannot counterclaim for
restraint of trade.
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Domestic and foreign respondents have the option, but not the obligation, to
appear and participate in the Section 337 investigation. Named respondents
who do not participate run the risk that a default finding of infringement will
be entered against them 25.
Where the ITC finds that imports have been traded by unfair means, in
violation of Section 337, there are two primary types of relief it can order -
Exclusion Orders and Cease and Desist Orders.
See 19 C.F.R. §§210. 16, 210.17. Section 337(g) of the Tariff Act specifies certain circumstances where a party
will be found in default, and specifies the consequences of such default. In cases where the complainant is not
seeking a general exclusion order as relief, a default may be entered against a named respondent if (1) the
respondent fails to respond to or appear to answer a complaint and notice of investigation, after service thereof,
(2) the respondent fails to show good cause why it should not be held in default, and (3) the complainant seeks
relief limited solely to that person. Under those circumstances, the Commission, considering the facts pleaded in
the complaint to be true, may issue a cease and desist order against the defaulting respondent, unless it
determines, based on certain public interest factors, that no default should be entered. 19 U.S.C. §1337(g)(1).
Where a general exclusion order is sought, and no respondent appears, the ITC may not issue such an
order unless (1) a violation of Section 337 is proven by substantial, reliable and probative evidence, and (2) the
requirements of 19 U.S.C. §1337(d)(2), relating to issuance of general exclusion orders are met.
In addition to these ?statutory? forms of default, the Commission may also draw adverse inference and
issue adverse findings against respondents who fail to take particular actions. 19 C.F.R. § 210.17.
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Exclusion Orders prohibit the importation of goods which infringe a given
patent or other intellectual property righ 26t. They are of two kinds. General
Exclusion Orders (GEOs) prohibit the importation of infringing goods by all
persons, without regard of the identity of the manufacturer or importer.
They thus cover all known importers, as well as any importer of infringing
goods which might appear in the future. Limited Exclusion Orders (LEOs)
prohibit the importation of infringing merchandise produced, exported or
imported by certain named entities. Section 337(d) expresses a preference
for the issuance of Limited Exclusion Orders, unless the ITC determines that
a General Exclusion Order is necessary eliminate the unfair practice. A
General Exclusion Order is an in rem sanction, focusing on the merchandise
rather than on the persons involved with the merchandise.
In addition to, or in lieu of, an Exclusion Order, the ITC may issue a Cease
and Desist Order, an in personam remedy addressed to domestic parties
(who are subject to the ITC?s jurisdiction) and which have been determined
to have infringed an intellectual property right.
Section 337(d) [19 U.S.C. §1337] provides:
(d) Exclusion of articles from entry
(1) If the Commission determines, as a result of an investigation under this section, that there is a
violation of this section, it shall direct that the articles concerned, imported by any person
violating the provision of this section, be excluded from entry into the United States, unless, after
considering the effect of such exclusion upon the public health and welfare, competitive
conditions in the United States economy, the production of like or directly competitive articles in
the United States, and United States consumers, it finds that such articles should not be excluded
from entry. The Commission shall notify the Secretary of the Treasury of its action under this
subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary
shall, through the proper officers refuse such entry.
(2) The authority of the Commission to order an exclusion from entry of articles shall be limited
to persons determined by the Commission to be violating this section unless the Commission
determines that -
(A) a general exclusion from entry of articles is necessary to prevent circumvention of an
exclusion order limited to products of named persons; or
(B) there is a pattern of violation of this section and it is difficult to identify the source of
Cease and Desist Orders are provided for in 19 U.S.C. §1337(f), as follows:
(f) Cease and desist orders; civil penalty for violation of orders
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(1) In addition to, or in lieu of, taking action under subsection (d) or (e) of this section, the
Commission may issue and cause to be served on any person violating this section, or believed to
be violating this section, as the case may be, an order directing such person to cease and desist
from engaging in the unfair methods or acts involved, unless after considering the effect of such
order upon the public health and welfare, competitive conditions in the United States economy,
the production of like or directly competitive articles in the United States, and United States
consumers, it finds that such order should not be issued. The Commission may at any time, upon
such notice and in such manner as it deems proper, modify or revoke any such order, and, in the
case of a revocation, may take action under subsection (d) or (e) of this section, as the case may
be. If a temporary cease and desist order is issued in addition to, or in lieu of, an exclusion order
under subsection (e) of this section, the Commission may require the complainant to post a
bond, in an amount determined by the Commission to be sufficient to protect the respondent
from any injury, as a prerequisite to the issuance of an order under this subsection. If the
Commission later determines that the respondent has not violated the provisions of this section,
the bond may be forfeited to the respondent. The Commission shall prescribe the terms and
conditions under which the bonds may be forfeited under this paragraph.
(2) Any person who violates an order issued by the Commission under paragraph (1) after it has
become final shall forfeit and pay to the United States a civil penalty for each day on which an
importation of articles, or their sale, occurs in violation of the order of not more than the greater
of $100,000 or twice the domestic value of the articles entered or sold on such day in violation of
the order. Such penalty shall accrue to the United States and may be recovered for the United
States in a civil action brought by the Commission in the Federal District Court for the District of
Columbia or for the district in which the violation occurs. In such actions, the United States
district courts may issue mandatory injunctions incorporating the relief sought by the
Commission as they deem appropriate in the enforcement of such final orders of the
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A Cease and Desist Order directs one or more named violators to cease and
desist from the manufacture, importation, sale, or offer for sale, of articles
deemed to infringe the patents or other intellectual property rights involved
in the investigation. Violations of Cease and Desist Orders may be punished
by the ITC through the imposition of a civil penalty in an amount not to
exceed $100,000 for each day 28 the Order is violated.
B. CBP Enforcement of Section 337 Exclusion Orders
Section 337(d) of the Tariff Act provides that, upon issuing an Exclusion
Order, the ITC must provide notice of that order to the Secretary of the
T 9reasury 2, who must then arrange to have the order enforced by
appropriate officers. Historically, the Secretary has empowered CBP officers
[now including offers of the Immigration and Customs Enforcement (ICE)
Bureau of the Department of Homeland Security], to enforce General and
Limited Exclusion Orders. Section 337 enforcement activities are coordinated
by CBP?s? Intellectual Property Rights (IPR) Branch, based in Customs
Headquarters in Washington D.C.
19 U.S.C. §1337(f)(2); see also 19 C.F.R. §210.75 (dealing with Commission enforcement of cease and desist
While United States Customs and Border Protection has been merged into the Department of Homeland
Security, Customs? former parent, the Treasury Department, retains responsibility for various Customs revenue
and enforcement functions.
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Customs? IPR bran