by the law B
Protecting Against Counterfeiting DAVE RESSER, WEGMAN, HESSLER & VANDERBURG, CLEVELAND
during the DHS 2015 fi scal year. An- other 10 million containers crossed land borders via truck, while an additional 3 million containers arrived via train. Add to those another 250 million consigned express packages shipped through the air that entered the U.S. T ese high numbers of imports provide a daunting task for government offi cials to stop imitation and counterfeit goods from crossing international borders. According to U.S. government reports, pirated and counter- feit products cost U.S. companies up to $250 billion annually. Imitation and counterfeit
T
goods attempt to piggy- back upon the customer goodwill that has been built by your company. Counter- feiters can do this in several diff erent ways: copying the structure claimed by a patented casting or casting machine; copying the man- ufacturing method claimed in a patent; or copying a trademark or trade dress to convince customers the counterfeited good is actually your product. Manufacturers can use several
he Department of Home- land Security (DHS) re- ported that more than 11 million maritime containers arrived at American seaports
detain and/or seize goods that bear a counterfeit trademark, goods with a confusingly similar trademark, and certain gray-market products as they are entering the U.S. T e counterfeit goods then can be
seized by authorities such as the CBP, forfeited by the importer, and then disposed. In some cases, the owner of the trademark may permit the goods to be shipped back to the originator or enter the U.S. after the off ending trademarks are removed. Imported goods with a confusingly similar trade- mark also can be detained, and the importer is given 30 days to remove the trademark. If this does not occur, the goods are subject to forfeiture. T e trademark owner also will gain
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strategies to stop potential imitation and counterfeit goods from entering American markets. If you believe your patented casting or process is being infringed by products being imported into the U.S., it is most helpful to have an issued patent covering the particu- lar product or process that is being counterfeited. Similarly, a registered trademark will help you and your com- pany prevent others from copying your logos, company names, brand names, etc. that you use to promote your castings. Taking the case of counter- feited trademarks fi rst, the trademark owner may record the trademark with U.S. Customs and Border Protec- tion (CBP). After recordation of the trademark, CBP has the power to
administrative law judge. If the judge fi nds a violation has been proven, then it may issue an order directing the CBP to exclude the infringing products from entering the U.S. T e exclu- sion order can specify products from specifi c sources or, in appropriate cases, to infringing products from any source anywhere in the world. Additionally, the ITC may issue cease and desist orders prohibiting American fi rms from importing infringing products in the U.S. T e ITC usually completes its investigations within the same one-year period that the case is registered. T is may seem like an extended period of time, but this is often a much shorter time compared to court cases conducted in other American court systems. Another benefi t of the
Manufacturers can use several strategies to stop potential imitation and counterfeit goods from entering American markets.”
the benefi t of detailed information regarding the parties involved in the importation, which can aid the pursuit of legal action against those parties. In the case of imported goods in-
fringing patented goods and processes, a patent owner can target specifi c goods by fi ling a case with the Interna- tional Trade Commission (ITC). ITC cases are meant to serve as protec- tion for U.S. businesses from unfair practices during the importation of goods. Practices such as “dumping” and unlawful subsidies are not within the scope of the ITC, but most other unfair practices are. U.S. statutes require the patent owner to establish (1) that the goods are being imported, sold, or sold for importation that (2) infringe an in-force patent. T e ITC then conducts an adjudicative investigation before an
46 | METAL CASTING DESIGN & PURCHASING | Nov/Dec 2016
described ITC actions is the elimination of a need to establish jurisdiction over the alleged infring- ers. In fact, ITC exclusion orders often reach products imported by foreign fi rms that were never named as parties and never had notice of the ITC investi- gation. It is worthy to note that fi ling a case with the ITC is also a viable option
for the owners of trademarks that are being infringed by imported goods. Legal protection for patents and trademarks is continually harmonized around the world, and as such, many other nations, such as Canada, are implementing laws and regulations similar to those described above. The DHS reports that in FY
2015, $1.3 billion (Manufacturer’s Suggested Retail Price) of goods were seized at American borders, and more than 350 convictions were handed down. During that same fiscal year, the originating countries for these seizures included China, which originated nearly 50% of the seized goods, and Hong Kong, which originated 34% of the seized goods; no other country accounted for more than 5%.
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