I was honored to present today at the 11th International Litigation and Arbitration Conference at the beautiful Biltmore Hotel in Miami, Florida. We discussed various aspects of international law, with my focus being on trademark issues relating to import/export of goods.
A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: "Mark, my goods were stopped at the port due to a trademark issue. Help!" Often, the problem relates to missing paperwork regarding permission or authorization to use a registered trademark, such as a certification mark, like HDMI. Without the proper paperwork, Customs and Border Protection will assume you have no permission to use the registered trademark and will stop your goods at the port. Today, along with colleagues Robert Becerra, Lenny Feldman and Santigao Cueto, I discussed preventative steps that one can take before importing or exporting goods bearing a registered trademark, steps that can be taken if goods are halted at the port by Customs and Border Patrol and steps that may be taken by an intellectual property rights holder to help enforce his trademark rights in the U.S. A copy of some of the slides I used today can be found here. And here is a photo at lunch showing Robert Becerra on the left and Santiago Cueto on the right.
Some of the preventative steps that can be taken prior to importation of goods bearing a registered trademark include reviewing the product for potential trademarks, including the packaging, any paper inserts, and the product itself. For computer devices, the device should be turned on and the most accessible screens should be scrolled through.
Subsequently, prepare a list of all potential trademarks found on product and perform a search of the trademarks, such as on the U.S. Patent and Trademark Office trademark database (http://tess2.uspto.gov) Trademark Electronic Search System (TESS), and the World Intellectual Property Office trademark database (http://www.wipo.int/madrid/en/romarin/) ROMARIN (International Trademark Information Database)
If no existing trademark registrations are found, then you are in the clear. If a trademark registration is found, then you determine whether the registered mark matches the trademark on your product you are importing and whether the description of goods in the trademark registration matches the product you are importing. If there is a match, the you should contact the owner of the registered mark for permission.
Often, permission to use a certification mark, such as HDMI or Bluetooth, involves obtaining a certificate of compliance froma third party (such as a laboratory), signing a usage agreement, paying a royalty according the amount and type of use and abiding by the usage policy. Here is a link to the HDMI web page that explains its usage policy and provides information on how to obtain permission to use its certification mark.
Like many other areas of life, when dealing with trademark issues relating to the import and export of goods bearing a registered trademark, an ounce of prevention is worth a pound of cure.