2310-008A Trademark and Tradename Protection

Published CBP guidance; operative status and applicability must be assessed from the retained publisher edition.

Customs Directive No. 2310-008A
Date: April 7, 2000
Originating Office: OR&R
Supersedes: 2300-08 Jan 16, 199
Review Date
: April 2002
TRADEMARK AND TRADENAME PROTECTION
1. PURPOSE. To provide relevant information and guidelines on Customs polici es
and procedures with respect to trademark and trade name protection.
2. POLICY
2.1 In order to fulfill its statutory, regulatory, and treaty-based obligations of
preventing the importation of merchandise which violates certain trademark and trade
name rights which have been registered with the U.S. Patent and Trademark Office,
U.S. Customs is vested with the authority to: (1) exclude from entry, (2) detain, and/or
(3) seize, violative trademarked goods. In order to most effectively provide protection
against such violative imports, Customs has established an intellectual property rights
(IPR) enforcement regime which offers rights holders a two-tiered enforcement option,
while providing Customs officers with up-to-date, detailed information about the rights
being protected.
2.2 The first tier of this two-tiered approach is Customs protection afforded pursuant to
the "recordation process." Under this system, trademark holders, once having duly
registered their trademark rights with the U.S. Patent & Trademark Office, and
tradename holders, may request that Customs collect and retain information relative to
those rights for a specified time, during which Customs shall, either of its own initiative,
or with the assistance of the trademark holder, actively monitor imports in order to
prevent the importation of violative articles.
2.3 The second tier is Customs "application process." Under this system, trademark
holders, once having duly registered their trademark rights with the U.S. Patent &
Trademark Office and recorded same with U.S. Customs, and tradename holders, may
provide Customs with information relative to the importation of violative imports so that
Customs can prevent such importation.
3. AUTHORITIES/REFERENCES. Relevant statutory and regulatory citations
associated with Customs enforcement of trademarks and trade names are listed below.
The narratives listed below are synopses of the statutory/regulatory mandates; care
should be used to cite actual language of statutory/regulatory provisi ons in the course
of enforcement actions. Officers should undertake to review the descriptions of laws
and regulations contained within this Directive in order to gain a comprehensive
understanding of their i ntent and purpose.
3.1 UNITED STATES CODE

3.1.1 Title 19 U.S.C. §§ 1526(a) and (b) -Prohibits the importation, with certain
exceptions noted in section 133.23(d) of the Customs Regulations, of foreign-made
merchandise, if the merchandise, or its packaging or labeling, bears a registered
trademark or trade name owned by a U.S. citizen or corporation, which is recorded with
U.S. Customs. Any such merchandise imported into the United States in violation of
the provisi ons of this section shall be subject to detention pursuant to 19 CFR § 133.25.
Failure to meet conditions set forth in 19 CFR § 133.23(d) shall lead to seizure and
forfeiture pursuant to 19 CFR § 133.23(f).
3.1.2 Title 19 U.S.C. § 1526(e) - Subjects to seizure and forfeiture any merchandise
bearing a counterfeit mark. (Title 15 U.S.C. Section 1127 defines “counterfeit” as a
spurious mark, which is identical with, or substantially indistinguishable from, a
registered mark).
3.1.3 Title 19 U.S.C. § 1526(f) - Provides for imposition of civil f ines in cases when
goods are seized and forfeited under §1526(e).
3.1.4 Title 15 U.S.C. § 1124 - Provides that no [articl e] of imported merchandise which
shall copy or simulate a trade name or a trademark registered in accordance with
provisi ons of this chapter, shall be admitted to entry at any customhouse (this covers
both domestic and foreign-made articles).
3.1.5 Title 15 U.S.C. § 1125 - Proscribes importations or entry at any customhouse of
the United States, goods or containers which use words, terms, or descriptions which
are likely to cause confusion, or to cause mistake , or to dece ive as to the affiliation or
sponsorship.
3.1.6 Title 19 U.S.C. § 1595a(a) - Provides for seizures and forfeiture of conveyances
if use d in, to aid in, or to facilitate, the importation of any article contrary to law.
3.1.7 Title 19 U.S.C. § 1595a(b) - Provides Customs with the authority to issue civil
penalties equal to the value of the merchandise attempted to be introduced contrary to
law.
3.1.8 Title 19 U.S.C. § 1595a(c)(2)(C) -Provides seizure and forfeiture authority for
articles introduced or attempted to be introduced which violate trademarks, trade
names, or copyrights.
3.1.9 Title 18 U.S.C. § 2320 - Prohibits the intentional trafficking or attempts at
trafficking in goods bearing counterfeit trademarks and provides criminal sanctions.
3.2 CODE OF FEDERAL REGULATIONS
3.2.1 Customs Regulations 19 CFR §§ 133.1 – 133.7 - Recordation of trademarks
with Customs.
3.2.2 Customs Regulations 19 CFR §§ 133.11 –133.15 - Recordation of trade names
with Customs.

3.2.3 Customs Regulations 19 CFR § 133.21 - Seizure of articles bearing counterfeit
trademarks and related disclosure information.
3.2.4 Customs Regulations 19 CFR § 133.22 - Detention of articles bearing
“confusingly similar” marks subject to restrictions and related disclosure information.
3.2.5 Customs Regulations 19 CFR § 133.23 - Restrictions on importations of gray
market articles.
3.2.6 Customs Regulations 19 CFR § 133.24 - Restrictions on articles accompanying
importers and mail importations.
3.2.7 Customs Regulations 19 CFR § 133.25 - Procedures on detention of articles
subject to restriction.
3.2.8 Customs Regulations 19 CFR § 133.26 - Demand for Redelivery of released
merchandise.
3.2.9 Customs Regulations 19 CFR § 133.27 - Civil fines for those involved in the
importation of counterfeit trademark goods.
4. ENFORCEMENT
4.1 In General. Agency policy dictates that U.S. Customs focus its enforcement efforts
on trademarks and trade names that are "recorded" with Customs. Unrecorded
trademarks which have been registered with the U.S. Patent and Trademark Office on
the Principal Register, while not a priority, may be enforced, if and when possible, and
in such a manner as the sound administr ation of the Customs laws shall not be
compromised. Customs policy mandates that the majority of resources and emphasis
should be placed upon the enforcement of recorded trademarks.
4.1.2 Prior to the initiation of any IPR action, the IPR Module should be consulted to
ascertain whether the trademark in question is in fact recorded with Customs, and if so,
the extent of protection the trademark is entitled to. The “IPR Module” is a function
located within the Automated Commerci al System (ACS), which contains individual
records and information relative to all IPRs recorded with Customs.
4.1.3 When undertaking a trademark enforcement action, officers should accurately
note the trademark recordation number(s) involved and accurately record same in
records of the case. Similarly, officers seeking IPR Branch assistance in arriving at
infringement determinations are expected to have consulted the IPR Module prior to
seeking assistance and should be prepared to accurately cite specific information from
the relevant IPR recordation.
4.2 Processing an IPR Case: When to Take Action
4.2.1 Customs policy mandates that suspect trademark-violative goods can only be

detained upon a "reasonable suspici on" that said goods bear marks which violate a
federally registered trademark.
4.2.2 If a Customs officer can articulate a basis for having such "reasonable suspici on"
at the time of presentation to Customs, he may formally detain the goods at that time.
Where a Customs officer is unsure whether to formally detain the goods at the time of
presentation to Customs, he may detain the goods for a 5-day period pursuant to 19
U.S.C. § 1499 to determine whether such "reasonable suspici on" exists.
4.2.3 If Customs determines that such "reasonable suspici on" exists, Customs shall
issue a formal letter of detention to the importer before the expiration of the 5-day
period. A sample "Notification of Detention" letter, to be sent to the importer, is
attached to this Directive at Appendix 1.
4.2.4 In accordance with 19 U.S.C. § 1499, the goods must be disposed of in
accordance with relevant statute and regulation. The nature of the violation, if any, will
determine the manner of disposition.
4.3 Characterizing the Violation and Taking Action Against the Goods.
As a general matter, Customs presently recognizes two standards of trademark
infringement in its enforcement of U.S. trademark law: “Counterfeit” and “Confusingly
Similar." Gray market violations are treated separately.
4.3.1 “Counterfeit”—Legal Definition: A spurious (false, non-genuine) trademark
which is identical to, or substantially indistinguishable from, a federally registered U.S.
trademark (15 U.S.C. § 1127).
4.3.2 “Confusingly Similar” --Legal Definition: A mark which is similar to the genuine
trademark such that it is likely to cause confusion as to source or sponsorship
(15 U.S.C. §§ 1114, 1127).
4.3.3 Upon presentation, or at the time of detention or seizure of suspect violative
goods, it is incumbent upon the acting officer to characterize the nature of the alleged
violation. Violative goods should be ascribed to one of the following four
characterizations:
4.3.3.1 Counterfeit trademark violation; protected trademark recorded with Customs;
4.3.3.2 Counterfeit trademark violation; protected trademark not recorded with
Customs;
4.3.3.3 Confusingly similar trademark violation; protected trademark recorded with
Customs;
4.3.3.4 Confusingly similar trademark violation; protected trademark not recorded with
Customs.
4.3.4 Counterfeit marks:

4.3.4.1 Articles bearing "counterfeit" marks of trademarks recorded with Customs shall
be seized and forfeiture proceedings instituted under 19 U.S.C. § 1526(e), as
implemented by 19 CFR § 133.21. Civil penalties shall routinely be imposed pursuant
to 19 U.S.C. § 1526(f).
4.3.4.2 Counterfeit trademark violation; protected trademark not recorded with
Customs. Where administr atively feasible and appropriate, such goods may be seized
pursuant to 19 U.S.C. § 1595a(c)(2)(C) f or a violation of 18 U.S.C. § 2320, as
implemented by 19 CFR § 133.21(a).
4.3.4.3 Cases involving suspected criminal counterfeiting should be referred to the
Office of Investigations (OI). Information relative to forwarding cases to OI is detailed in
the IPR handbook.
4.3.4.4 A sample "Notification of Seizure" letter to be sent to the trademark holder, is
attached to this Directive at Appendix 2. A sample "Notification of Seizure" letter to be
sent to the importer, is attached to this Directive at Appendix 3.
4.3.5 Civil Fines. In accordance with 19 CFR § 133.27, Customs, as authorized by 19
U.S.C. § 1526(f), may impose a civil fine relative to seizures effected in counterfeit
cases only pursuant to 19 U.S.C. § 1526(e). For the first seizure of such merchandise,
the fine shall be not more than the domestic value of the merchandise as if it had been
genuine based upon the manufacturer’s suggested retail price (MSRP) at time of
seizure. For second and subsequent violations, the fine shall not be more than twice
such value. A chart outlining the parameters for l evying such fines is contained in the
IPR handbook.
4.3.6 Confusingly Similar Marks:
4.3.6.1 Confusingly similar trademark; protected trademark recorded with Customs.
4.3.6.1.2 Under 19 CFR § 133.22, such goods shall be detained for 30 days during
which time the importer shall be afforded the opportunity, before expiration of the 30-
day period, to establish that any of the circumstances described in 19 CFR § 133.22(c)
are applicable.
4.3.6.1.3 A sample "Notification of Detention" letter, to be sent to the importer, is
attached to this Directive at Appendix 1. A sample “Notification of Detention” letter, to
be sent to the trademark holder, is attached to this Directive at Appendix 4.
4.3.6.1.4 Failure to establish an exception under 19 CFR § 133.22(c) subjects the
goods to seizure in accordance with 19 U.S.C. § 1595a(c)(2)(C) f or a violation of 15
U.S.C. § 1124, as implemented by 19 CFR § 133.22(f). A sample "Notification of
Seizure" letter, to be sent to the importer, is attached to this Directive at Appendix 5.
4.3.6.2 Confusingly similar trademark; protected trademark not recorded with Customs.
Customs policy is to neither detain nor seize goods bearing such marks.

5. DISCLOSURE OF INFORMATION AND PROVIDING SAMPLES TO TRADEMARK

HOLDERS. Customs Regulations 19 CFR §§ 133.21 and 133.22 provide for disclosure

of certain information in cases where goods are detained and/or seized for v iolations of

the trademark laws.

5.1 Disclosure of Counterfeit Cases. When counterfeit articles are seized in

accordance with 19 CFR § 133.21, Customs officers SHALL disclose to the trademark

holder in writing the following information within 30 business days of the date of the

seizure as required in 19 CFR § 133.21(c). See Appendix 1 for sample letter.

Date of Importation:

Port of Entry:

Description of Merchandise:

Quantity:

Name and address of Manufacturer:

Name and address of Exporter:

Name and address of Importer: (Note: If importer of record is broker or

nominal consignee, provide the ultimate consignee if known)

Country of Origin:

5.1.1 Any time after seizure of the merchandise for examination, Customs MAY

provide a sample to the trademark holder for exam, testing, etc. If a request for sample

is made, the trademark holder MUST provide Customs with a bond as required in 19

CFR § 133.21(d).

5.1.2 Amount of the bond is to be specified by the area/port director. The bond is

normally set at 120 percent (120%) of the CIF value of the sample, plus duty and other

applicable fees (but not lower than $100). In cases where the value of the sample is

less than $100, a cash deposit may be accepted by Customs. Customs may demand

return of the sample at any time. The holder must return the sample after exam,

testing, etc. If the sample is damaged, lost or destroyed, in lieu of its return, the holder

must certify to Customs that “the sample described as (full description) and provided

pursuant to 19 CFR§133.21(d) was damaged, destroyed or lost during examination,

testing or other use.” If the sample is not returned, Customs officers should proceed to

forfeit the bond.

5.2 Disclosure: Confusingly Similar cases (copying or simulating

Trademarks or trade names). When articles are subject to the restrictions under

19 CFR § 133.22, Customs officers MAY disclose to the trademark holder the following

information prior to the time that a detention notice is issued under 19 CFR § 133.25.

Once a notice of detention is issued, Customs SHALL disclose to the holder of the

trademark or tradename the following information within 30 days, excluding weekends

and holidays, of the date of the detention. See Appendix 4 for sample letter (internal

only).

Date of Importation:

Port of Entry:

Description of Merchandise:

Quantity:
Country of Origin:
5.2.1 Any time after presentation of the merchandise for examination, Customs
MAY provide a sample to the trademark holder for exam, testing, etc. If a
request for sample is made, the trademark holder MUST provide Customs with a
bond as required in 19 CFR § 133.25.
5.2.2 Amount of the bond is to be specified by the area/port director. The bond is
normally set at 120 percent (120%) of the CIF value of the sample, plus duty and other
applicable fees (but not lower than $100). In cases where the value of the sample is
less than $100, a cash deposit may be accepted by Customs. Customs may demand
return of the sample at any time. The holder must return the sample after exam,
testing, etc. If the sample is damaged, lost or destroyed, in lieu of its return, the holder
must certify to Customs that “the sample described as (full description) and provided
pursuant to 19 CFR §133.25(c) was damaged, destroyed or lost during examination,
testing, or other use.” If the sample is not returned, Customs officers should proceed to
forfeit the bond.
5.2.3 Prior to release of the sample, Customs officers should remove or obliterate any
information indicating the name and/or address of the manufacturer, exporter, and/or
importer, including all bar codes or other identifying marks.
6. RESTRICTED “GRAY MARKET” ARTICLES/GOODS, (AKA “PARALLEL
IMPORTS” OR “DIVERTED GOODS”)
6.1 In General. Restricted “Gray Market” articles (a.k.a. "Parallel Imports" or "Diverted
Goods") are foreign-made articles bearing a genuine trademark or trade name identical
with, or substantially indistinguishable from, one owned and recorded by a citizen of the
United States or a corporation or association created or organized within the United
States which are imported without the authorization of the U.S. holder.
6.1.1 It is important to understand the difference between Gray Market goods and
goods bearing Counterfeit marks. First, by definition, gray market goods will always
be genuine. They bear a trademark which has been applied with the approval of the
trademark holder, but the approval to use the mark is intended to apply to sale in a
country other than the United States. Goods bearing counterfeit marks, on the other
hand, are never genuine; the marks, which are usually identical versi ons of the genuine
trademark, have been applied without the authority of the trademark holder.
6.1.2 Only trademarks which are recorded with U.S. Customs are entitled to gray
market protection. The IPR Branch determines gray market status at the time of
recordation. Claims or questions regarding the validity of gray market protection
afforded to particular trademarks are to be forwarded to the OR&R IPR Branch.

6.2 Processing a Typical Gray Market Case
6.2.1 The first step in processing a gray market case is to determine whether the
trademark in question is entitled to gray market protection by U.S. Customs. To do this,
Customs field officers must consult the ACS IPR Module. Within each ACS IPR
Module trademark recordation file screen, there exists a section entitled "GENUINE
TRADEMARKED ARTICLES RESTRICTED". If the box associated with that section is
marked with a “Y”, this indicates that no one except the trademark holder or his
designee may import genuine articles bearing that trademark. If the box is marked with
an “N”, this indicates that gray market goods bearing that trademark may be imported
by anyone without restriction. If the box is marked with an “L”, this indicates that Lever-
rule protection has been granted. Please refer to the next section for a detailed
explanation.
6.2.2 The next task for Customs officers in the disposition of a gray market case is to
determine whether the goods are genuine; if not, the goods should be treated as a
counterfeit trademark violation, as appropriate. If the goods are genuine, and a "Y"
appears in the trademark recordation screen, the goods may not be imported without
the U.S. trademark owner’s consent. If the goods are genuine and an "N" appears in
the trademark screen, the goods may be imported by anyone regardless of whether the
trademark holder consents. Customs officers should consult the IPR handbook for
advice relative to distinguishing genuine from non-genuine goods. Advice is also
available from the OR&R, IPR Branch.
6.2.3 Imported goods subject to gray market protection should be detained pursuant to
19 CFR § 133.23 and potentially seized and forfeited under 19 U.S.C. § 1526(b), as
implemented by 19 CFR § 133.23(f). Sample "Notification of Detention" letters are
attached to this Directive at Appendix 1 and Appendix 4 (for the importer and trademark
holder, respectively) and a sample "Notification of Seizure" letter for the importer is
attached at Appendix 5.
6.3 “Lever-rule" Cases in General. Pursuant to a court decisi on on March 26, 1999
(Lever Brothers Co. v. U.S. 981 F.2d 1330 (1993)), Customs amended its regulations to
prevent the importation of gray market goods which are "physically and materially
different" from similar goods authorized for i mportation into the United States absent
clear notice to the consu mer. Customs will determine whether physical or material
differences exist.
6.3.1 This determination may include, but is not limited to: composition of both the
authorized and gray market products (including chemical composition), formulation,
product construction, structure or composite product components, of both the
authorized and gray market product; performance and/or operational characteristics of
both the authorized and gray market product; differences resulting from legal or
regulatory requirements; certification etc., and other distinguishing and explici tly defined
factors that would likely result in consumer deception or confusion as proscribed under
applicable law.

6.3.2 19 CFR § 133.2(f) provides that Customs will publish in the Customs Bulletin a
notice listi ng any trademarks for which Leve r-rule protection has been requested and
the specific products for which gray market protection for physically and materially
different products has been requested. Customs will examine the requests before
issuing a determination on whether Leve r-rule protection is granted.
6.3.3 For parties requesting protection, the application for trademark protection will not
take effect until Customs has made and issued this determination. If protection is
granted, Customs will publish in the Customs Bulletin a notice that a trademark will
receive Leve r-rule protection with regard to a specific product.
6.3.4 The new regulation, 19 CFR § 133.23(b), provides that the restriction to
importation will not apply where a label is placed on the product informing the ultimate
purchaser in the United States that the “product is not the product authorized by the
U.S. trademark holder for i mportation, and is physically and materially different.” Under
the new regulation, where this label is placed on goods which would be excluded under
Leve r-rule protection, the goods could then be entered into the United States. The
label is to be placed in close proximity to the trademark as it appears in its most
prominent location on the article itself or the retail package or container. Other
information may be added to dispel consumer confusion. The label is to remain on the
product until the first point of sale to a retail consumer in the United States.
7. MISCELLANEOUS
7.1 Merchandise; Product vs. Packaging. The term "merchandise" encompasses
any goods, articles, etc., which: (1) themselves bear violative marks, or (2) whether
themselves bearing violative marks or not, are contained within packaging which bears
violative marks. That is, goods which themselves do not bear violative marks, but are
contained within packaging which does bear violative marks, are not segregable and
both product and packaging are considered an entirety under the trademark laws and
should, without exception, be seized and subjected to forfeiture under the applicable
statutory authority.
7.2 Forfeited Goods vs. Goods which are Subject to Forfeiture. Please note
that, in accordance with 19 CFR § 133.21(b) and 19 U.S.C. § 1526(e), goods
bearing counterfeit trademarks, whether recorded or not, which have been seized,
in the absence of the written consent of the trademark holder, shall be
subject to
forfeiture, not "forfeited" at that moment. Thus, only after goods have been
forfeited (i.e., the forfeiture has been "perfected"), are the goods subject to the
methods of disposition contained in 19 CFR § 133.52.
7.3 Merchandise Not in Customs Custody; Demand for Redelivery. Where
Customs, after goods have been released, determines that a violation was likely to
have existed, it may order the redelivery of the goods by sending a Notice to Redeliver
(CF 4647) to the importer within 30 days of release of the goods. In cases where a
laboratory analysi s conducted subsequent to release indicates infringement, the notice
to redeliver may properly be issued within 30 days of the date of such report. The
importer has 30 days in which to redeliver the merchandise into Customs custody. If

the importer does not redeliver the merchandise, a claim for l iquidated damages shall
be initiated. The local OI will be notified immediately of all shipments of counterfeit
merchandise which have been released from Customs custody.
7.4 Personal Use Exemption from Trademark Restrictions. Under Public Law
95-410 effective October 3, 1978 (19 U.S.C. § 1526(d)), a traveler arriving in the United
States with a protected trademark article may be granted an exemption to the import
restrictions. Under this exemption, a traveler may import one article of the type bearing
a protected trademark. These exemptions would apply to an article bearing a
counterfeit or confusingly similar trademark, as well as an otherwise restricted gray
market article (19 CFR § 148.55). This exemption applies if the article:
7.4.1 Accompanies a traveler to the United States,
7.4.2 If it is for personal use and not for sale, and
7.4.3 If the traveler has not been granted an exemption for the same type of article
within 30 days preceding his or her arrival.
7.4.4 Further information concerning the personal use exemption is contained in
Customs Directive 2310-011A.
7.5 OTO-1 Bulletin Board. Periodically, special alerts pertaining to specific
trademarks or commodities may be posted to the Office of Field Operations (OFO)
OTO-1 Bulletin Board. Officers should routinely monitor the OTO-1 Bulletin Board to
keep abreast of important developments in IPR enforcement.
8. RESPONSIBILITIES. Area/Port directors, assistant port directors (trade
operations), supervisory import specialists, and supervisory inspectors are responsible
for ensuring that their staffs are aware of the content of this Directive and adhere to the
guidelines provided.
9. ENFORCEMENT ADVICE. Release of merchandise to premises designated by the
importer shall be used sparingly and only upon the filing of a single entry bond for three
times the entered value of the merchandise and a written agreement not to dispose of
the merchandise without Customs permission. No other "constructive custody" release
shall be allowed. Advice may be obtained from the Office of Regulations & Rulings,
Intellectual Property Rights Branch, at 202-927-2330; fax 202-927-1875.
signed
Commissioner of Customs