Nov 16, 2022Science and Technology
IPR and International Trade: Trademarks, Part 2

I. Enforcement Relief and Trademarks
Assuming the gravity of a trademark infringement does not rise to the level of a criminal referral, both remission and mitigation/cancelation relief is, on a case-by-case basis, available. The authority for this relief is found at 19 USC 1618 and 19 CFR 171.

A. Remedies Following Seizure
A trademark-based seizure presents an importer with a choice of procedural pathways for proceeding. These include: (i) requesting administrative forfeiture proceedings; (ii) filing a claim and cost bond and requesting referral of the matter to the U.S. Department of Justice (for subsequent judicial action); (iii) submitting an offer in compromise to the port director (with an eye to reaching a settlement); and (iv) filing a petition for administrative relief with the fines, penalties, and forfeitures officer at the port of seizure. Petitions seeking relief from a seizure typically advance claims regarding the distinctive and non-infringing characteristics of the merchandise, the attainment of right holder consent or authorization, the availability of an exemption, and/or the controlling nature of an importer’s interest in the IPR. The fines, penalties, and forfeitures officer’s relief decision will be taken with reference to the parameters set forth in CBP’s published guidelines and is not subject to administrative protest.

B. Mitigation/Cancelation of Penalties

IPR and International Trade: Trademarks, Part 2 - Harris Bricken Sliwoski LLP
We continue our series on IPR and trade by discussing enforcement relief options and best practices involving marks.
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