U.S. Customs IP Border Enforcement

U.S. Customs and Border Protection ("Customs") is charged with enforcing the U.S. IP border enforcement regime by taking action against imports that infringe registered trademarks, trade names and copyrights, as well as imports that violate exclusion orders issued in Section 337 investigations. While Customs offers significant governmental resources to help IPR owners, to obtain the full benefit of these resources, companies must be pro-active.

Our Capabilities

U.S. and Foreign Companies

U.S. and foreign companies that own U.S. IP rights are often not aware of the many ways in which Customs can help protect their rights. Similarly, U.S. and foreign companies that import merchandise into the United States may need to interact with Customs to avoid or mitigate adverse effects of Customs' enforcement activities. Utilizing years of experience with both IPR litigation and Customs issues, we work closely with Customs Headquarters' IPR Branch officials and port officials to help companies in three major areas:

Section 337 Exclusion Order Enforcement

Heller Ehrman advises companies in dealing with issues arising out of Section 337 exclusion orders. Customs is vested with significant authority and discretion in the enforcement of Section 337 exclusion orders. Difficulties in enforcement arise because of the complex technology that is frequently at issue and because such orders are frequently drafted in broad language that provides Customs with little guidance on the distinguishing characteristics of infringing and non-infringing imports or how the order should be applied to new or redesigned products. 

Heller Ehrman represents both complainant and respondent companies in informal consultations as well as formal inter partes proceedings before the Customs IPR Branch. We helps complainant companies ensure that Customs gives exclusion orders full effect by identifying, understanding, and excluding all infringing imports. Heller Ehrman also helps respondents and third parties whose future importations could be jeopardized, by identifying for Customs the proper limits to the scope of an exclusion order, or by helping to obtain Customs approval of redesigned products that can legitimately be imported consistent with the boundaries of an exclusion order.

Border Enforcement Strategies to Protect Against Imports that Infringe Trademarks and Copyrights

U.S. law provides an opportunity for trademark and copyright holders to register their rights with Customs for border enforcement. While the registration process is relatively simple, real enforcement often requires a cooperative, ongoing effort between Customs and the IPR owner. Heller Ehrman helps IPR holders ensure that their trademarks and copyrights are enforced to the full extent of Customs' abilities. We help IPR holders prepare and file "recordations" for their federally registered trademarks or copyrights, which is a prerequisite for direct Customs border enforcement outside of the Section 337 context. Further, we help clients monitor for evidence of infringing activity, locate the sources of infringing imports, educate Customs port officials that infringing imports are likely to arrive on their docks and demonstrate how to identify those infringing imports, and otherwise work closely with Customs on IPR border enforcement issues.

Border Enforcement Strategies Against Gray Market Imports

Heller Ehrman advises IPR holders on strategies for combating illegal gray market imports – goods that are not authorized for U.S. importation and sale, but bear a valid trademark from a foreign jurisdiction. With the legal tools offered by Customs, we help companies protect their ability to segregate products with different packaging, labels, prices or warranties into different markets, thereby maximizing brand value and consumer goodwill. In recognition of the fact that there are limits to what Customs can do to help protect against gray market imports based simply on recordation, we can also help trademark owners obtain Section 337 exclusion orders barring imports of gray market imports that would otherwise not be reached by either mere recordation or district court litigation.

Representative Engagements: U.S. Customs Intellectual Property Border Enforcement of Section 337

Heller Ehrman attorneys have represented parties in connection with questions relating to Customs' enforcement of Section 337 enforcement orders, including in the following matters:

• Atmel Corp. v. Winbond Electronics Corp.: Certain Erasable Programmable Read Only Memories and Products Containing Same, USITC Inv. No. 337-TA-395.
• Eaton Corp. v. ArvinMeritor: Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof, USITC Inv. No. 337-TA-503.
• Genesis Microchip Inc. v. MStar Semiconductor: Certain Display Controllers with Upscaling Functionality and Products Containing the Same, USITC Inv. No. 337-TA-481.
• SigmaTel, Inc. v. Actions Semiconductor, Inc.: Certain Audio Processing Integrated Circuits and Products Containing the Same, USITC Inv. No. 337-TA-538.

Heller Ehrman has also advised companies on a wide array of other Customs IP border enforcement matters. Heller Ehrman attorneys have:

• Advised consumer product companies on IPR border enforcement strategies, including the recordation of trademarks, on-the-ground training for Customs port officials, gray market IPR enforcement, and other matters.
• Helped a major beverage company protect its ability to sell genuine trademarked merchandise in the face of a competitor's attempts to exclude it from the U.S. market.
• Represented an apparel importer facing penalties exceeding a quarter million dollars before Customs' IPR Branch, and mitigated the penalties to two percent of the original assessment.