Often, people and businesses can knowingly or unknowingly import counterfeit trademark merchandise into the United States. The majority of these types of importations we encounter for clients are Internet purchases from China, such as purses, videos/DVDs, guitars, clothing, electronics and accessories, but they can really be any type of product and from any country. Sometimes people know the merchandise is counterfeit but other times they do not have any suspicion, or in some circumstances truly know that what they are importing is not counterfeit. Even if ignorant about the merchandise being counterfeit, if it really is counterfeit then the property is still subject to seizure and forfeiture by U.S. Customs and Border Protection.
What is a counterfeit or trademark violation?
Counterfeit merchandise is merchandise that “bears a trade-mark owned by [someone in] the United States, and registered in the . . . [Patent and Trademark Office].” The counterfeit mark can be on the “merchandise, or the label, sign, print, package, wrapper, or receptacle” itself. 19 USC 1526(a). A counterfeit mark is a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark. 19 CFR 133.21(a). If you do not have permission of the trademark owner to import the merchandise, it’s illegal to import it.
Because the counterfeit merchandise is illegal, it is subject to seizure and forfeiture by U.S. Customs & Border Protection under most circumstances (usually it must also be recorded with CBP per 19 CFR 133.21(b)). 19 USC 1526(b) and (e). This means that customs can take the suspected counterfeit merchandise and destroy it, or if they can obliterate the counterfeit marks and get the consent of the trademark owner, then customs can give it to charity, give it to a government agency for its own use, or sell it at public auction.
Is it possible to get the seized merchandise released?
Before customs can destroy the counterfeit/trademark violations, give it away, or sell it, they must first give the importer a chance to respond. Since October 2015, at the time of detention or even after seizure, the importer has a right to request samples of seized merchandise from CBP. After merchandise is seized, Customs through its Fines, Penalties and Forfeitures (FP&F) office, will send a “notice of seizure” of the counterfeit merchandise to the importer of record. The importer then has several options, among those are the ability to file a petition for remission of forfeiture with FP&F. In this petition, the importer has opportunity to demonstrate that there are no counterfeit/trademark violations involved with the import of the merchandise.
Alternatively, the importer could argue in the petition for remission to customs that some exception to seizure and forfeiture applies. If the importer can prove that the goods are not counterfeit, then the seizure would be remitted and the merchandise released to the custody of the importer. A similar result is possible in certain other circumstances, like if they are permitted genuine, gray market goods, or are for personal use and accompanying a traveler entering the U.S., or if the trademark owner consents to the importation and the counterfeit marks are destroyed.
My merchandise was seized and forfeited as counterfeit. Am I in any other trouble?
If you have merchandise seized by customs and either lose your opportunity to get the merchandise back, abandon the merchandise, or ignore the notice of seizure, it may not be the end of trouble for the importer. In general, customs has the authority to fine or penalize anyone who violates the laws enforced by customs. This means that, weeks or months after the property is seized and forfeited, you may get notice of penalty in the mail from customs that demands payment of thousands of dollars in penalties! It could also mean you get a letter from the trademark holder threatening you with further legal action.
In Part 2 of this series, we discuss when and how customs can assess a monetary penalty after the counterfeit property is seized and forfeited.
If you have had money or merchandise seized by customs because they allege it is counterfeit and contains trademark violations, call our office at (734) 855-4999 to speak to a customs lawyer, or e-mail us through our contact page. We are able to assist petitions for customs seizures nationwide.