Seized By Customs: Trademark Issues at the Border

Things happen. Especially when monolithic bureaucracies come into play. Allow me a brief aside. Two years ago, when I last went on a true vacation, I passed through a TSA checkpoint. I was wearing flip flops so it would be easy to take off my shoes as I passed through the screening area (always thinking ahead). I deposited my carry-on bag and other stuff, walked through the gamma ray machine, got felt up by a portly gentleman (who looked about as enthused about feeling as I was about being felt), and was about to take my flip flops and go alone my merry way. Then something happened. The TSA agent was really getting into checking out my flip flops. He noticed a flap in the heel area which opened up and revealed a small compartment, inside of which was a miniature pen. Figurative alarms went off on this guy’s face. Needless to say, my wife and I were detained. I explained that my dad bought me the sandals for a birthday present and thought it was a really clever gimmick (it is!) so that if you needed a pen while taking a stroll on the beach, you were Johnny-on-the-spot. Truth be told, I think it’s fairly obvious that the sandals are designed stash items other than pens (in fact, the name says it all: Reef Stash Sandals”, sold here). They called in a supervisor, I explained the situation and apologized gratuitously, and after a while I made it through, lesson learned.

The point is, sometimes its easier to beg permission than ask forgiveness. If you have a registered trademark, and there is any chance your mark could be infringing on other imports, you recording your mark with U.S. Customs pursuant to 19 C.F.R. Part 133, Subpart A.  Section 42 of the Lanham Act [15 U.S.C. Section 1124] and Section 526 of the Tariff Act prohibit the importation of goods which “copy or simulate” registered trademarks owned by U.S. citizens or corporations. Customs officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.

The benefit is that Customs enters the mark into its system and your mark is entered into a product specific database used to block illegal imports.  If you suspect your product is being infringed upon, you can and should provide Customs with  information regarding the counterfeit or gray market import, and request ongoing trade advisories for your product.  This allows you to use Customs to enforce your mark preemptively, and is quite cost-effective, especially compared with litigation. Bear in mind, Customs will not exclude infringing goods in cases where the United States and foreign trademarks are owned by the same person, or by related corporations or parties subject to “common ownership or control” pursuant to 19 C.F.R. Sections 133.21(c)(1),(2). Remember that there are far too many marks and too many goods for Customs to monitor without your help, so don’t get complacent.

Still, Customs, like other executive agencies, is not obligated to follow every lead, and may exercise its own judgment relative to enforcement measures, though some courts have found that trademark holders may obtain an injunction requiring Customs to enforce suspected infringement. Regardless, trademark holders retain their full arsenal of civil rights and remedies.

Aaron Thalwitzer is an attorney practicing civil litigation and intellectual property law with Zies Widerman & Malek in Melbourne, Brevard County, Florida.