Trademark Now – or Turmoil Later

While running your business, you have a million things to think about.  Customers, employees, taxes, transactions – the list is endless.  But what about protecting the company’s very identity, goodwill, and brand?  A company’s name and logo are vital to success from a marketing standpoint, and as such you should be doing everything possible to protect them.  A great place to start is by making a promise to yourself and your business that this year all of your identifiers will be properly trademarked.

Trademarking is actually a fairly simple process, and we are here to help.  The first step to registering your trademark is making sure that no one else already owns it. Using the TESS (hyperlink site) page on the US Patent and Trademark Office you can search both words and designs and be sure no one has an identical or strikingly similar business mark for the same category of goods and services offered by your company.   If you don’t own your mark, then anyone can use it and ride on your goodwill, or even damage it.

After determining your brand’s legal standing, a registration must be submitted with all of the details of your mark and specific limits on how you will use it. Ideally, the USPTO should respond to you with approval within 6 months of filing your application.  But what if you find that your mark – or a similar one – is already being used?  Even if you have been using it for a longer period of time, your registration will likely be contested.  These are tough waters to navigate, but do not fret, we are quite familiar with them. If you find yourself in this situation, give us a call immediately and we will see how we can help you to move forward in getting your business protected.

Registering your mark is not really optional any longer.  Confusingly similar or counterfeit websites, email addresses, and other indicia are rampant.  Surely if you’ve owned “Great Shipping” for 20 years and gained a reputation in your industry, a new business called “Ship Great” can’t open its doors down the road from you in the same exact field? Though that may seem to be common sense, it is not the law. Unfortunately, unless copyrighted or trademarked, a name that is clearly playing off another brand cannot be challenged legally – no matter how similar.  State trademarking, by the way, is generally useless in our opinion.   Only a Federally recognized mark has substantial business protection value.

Be proactive and give us a call today to see how we can help you keep your business, its goodwill, and its identity, safe and uniquely tied to you alone.

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Enhanced Enforcement of Antidumping and Countervailing Duties, New Petitions

This is an old blog we lost during our transfer of site hosting. Update on this topic is forthcoming in a future blog.

  1. Executive Orders

President Trump issued two Executive Orders on March 31, 2017, signaling the new administration’s opposition to unfair trade practices. The first Executive Order (See Original Document Here) directs the Department of Commerce (“DOC”) and the United States Trade Representative (“USTR”) to conduct a broad review of differential tariffs, non-tariff barriers, injurious dumping, injurious government subsidization, intellectual property theft, forced technology transfer, denial of worker rights, and labor standards, etc. The second Executive Order (See Original Document Here) aims at the collection of antidumping and countervailing duties. Both address enforcement of violations of U.S. trade laws.

The U.S. estimates that uncollected AD/CVD duties for 2015 reached $2.3 billion. CBP is directed to develop a plan requiring “covered importers” of subject merchandise who pose a risk to the revenue of the United States to provide security through a bond or other legal measure. “Covered importers” are defined as new importers or importers for which the agency has a record of incomplete or late payment of antidumping or countervailing duties. Those benefiting from low bonds should be careful now to ensure timely and sufficient payment of the AD/CVD duties or otherwise be subject to the increased bond requirements.

CBP must “develop and implement a strategy and plan for combating violations of United States trade and customs laws for goods and for enabling interdiction and disposal, including through methods other than seizure, of inadmissible merchandise entering through any mode of transportation.” What “methods of interdiction and disposal other than seizure” means is unknown.

Regarding the protection of intellectual property rights at the border, now the government will share with right holders, to the extent permitted by law, information necessary to determine whether there has been an IPR infringement and information regarding merchandise that has been abandoned before a seizure. Previously that “commercial proprietary information” was withheld. The change may allow right holders to sue infringers in U.S. courts or to seek exclusion orders from the International Trade Commission.

The Department of Justice (“DOJ”) must “allocate appropriate resources to ensure that Federal prosecutors accord a high priority to prosecuting significant offenses related to violations of trade laws.”  Normally, U.S. trade enforcement attorneys who deal with penalty cases are in the Civil Division at DOJ and are not called “prosecutors.” It seems that the Executive Order refers to a prosecution of criminal violations.  As we know, federal laws impose criminal sanctions on a wide spectrum of illegal activities, such as fraudulent and/or knowing importation (or facilitation of such importation) of counterfeit merchandise or merchandise whose importation is “contrary to law,” false claims for refund of duties, false classification, false statements, smuggling, etc. We may see more prosecutions of individuals for trade-related cases.

  1. Recent AD/CVD Development

AD/CVD cases had already increased under the Obama Administration. In Fiscal Year (FY) 2016, $14 billion in imports were subject to AD/CVD, and CBP collected $1.5 billion in AD/CVD cash deposits.  CBP’s collection of AD/CVD cash deposits increased over 25 percent since FY 2015 and by almost 200 percent since FY 2014.  As of the end of FY 2016, $2.8 billion of AD/CVD duties were owed to the U.S. government for imports going back to 2001. With the new emphasis on combating unfair trade practices, we can expect to see continued AD/CVD cases during the Trump Administration.

Below are highlights of recent new AD/CVD petitions:

  • April 19, alleging that cold-drawn mechanical tubing from China, Germany, India, Italy, Korea, and Switzerland is sold at less than fair value in the U.S. market and that such goods from China and India are benefitting from countervailable subsidies. The petition alleges dumping margins of 88.82 percent to 188.88 percent for China, 70.53 percent to 148.32 percent for Germany, 25.48 percent for India, 37.23 percent to 69.13 percent for Italy, 12.14 percent to 48.61 percent for Korea, and 40.53 percent to 115.21 percent for Switzerland. (Scope of Investigation Can Be Seen Here).
  • April 11 alleging that metal tool chests and cabinets with drawers from China and Vietnam are sold at less than fair value in the U.S. market and that such goods from China are benefitting from countervailable subsidies. The petition alleges dumping margins of 167.5 percent for China and 58.2 percent for Vietnam. (Scope of Investigation Can Be Seen Here).
  • March 31 alleging that carton-closing staples from China are sold at less than fair value in the U.S. market. The petition alleges dumping margins ranging from 15.8 percent to 148.8 percent. (Scope of Investigation Can Be Seen Here).
  • March 28 alleging that carbon and alloy steel wire rod from Belarus, Italy, Korea, Russia, South Africa, Spain, Turkey, Ukraine, the United Arab Emirates, and the United Kingdom is sold at less than fair value in the U.S. market and that CASWR from Italy and Turkey is benefitting from countervailable subsidies. The petition alleges dumping margins of 179.07 percent to 304.94 percent for Belarus, 26.36 percent for Italy, 41.72 percent to 53.09 percent for Korea, 216.50 percent to 821.40 percent for Russia, 159.35 percent to 164.08 percent for South Africa, 32.64 percent for Spain, 45.1 percent for Turkey, 21.64 percent to 61.64 percent for Ukraine, 69.57 percent for the UAE, and 88.25 percent for the UK. (Scope of Investigation Can Be Seen Here).
  • March 23 alleging that biodiesel from Argentina and Indonesia is sold at less than fair value in the U.S. market and/or benefitting from countervailable subsidies. The petition alleges numerous subsidy programs in each country as well as dumping margins of 23.3 percent for Argentina and 34.0 percent for Indonesia. (Scope of Investigation Can Be Seen Here).
  • Aluminum Trade Enforcement Working Group filed a petition on March 9, alleging that aluminum foil from China is being sold at less than fair value in the U.S. market and/or benefitting from countervailable subsidies. The alleged dumping margins range from 37.57 percent to 134.33 percent. (Scope of Investigation Can Be Seen Here).
  • March 7 alleging that silicon metal from Australia, Brazil, Kazakhstan, and Norway is sold at less than fair value in the U.S. market and/or benefiting from countervailable subsidies. The alleged dumping margins are as high as 52.81 percent for Australia, 134.92 percent for Brazil, and 45.66 percent for Norway. The petitioners have also identified several programs in Australia, Brazil, and Kazakhstan as providing unfair subsidies. (Scope of Investigation Can Be Seen Here).

Some other trade remedy cases:

  • A Section 201 Petition was filed with USITC for global safeguard relief from imports of crystalline silicon photovoltaic (“CSPV”) cells and modules. Under Section 201 of the Trade Act, domestic industries seriously injured or threatened with serious injury by increased imports may petition the USITC for import relief. The USITC determines whether an article is being imported in such increased quantities that it is a substantial cause of serious injury, or threat thereof, to the U.S. industry producing an article like or directly competitive with the imported article. If the Commission makes an affirmative determination, it recommends to the President relief that would prevent or remedy the injury and facilitate industry adjustment to import competition. The President makes the final decision whether to provide relief and the amount of relief. Section 201 investigations do not require a finding of an unfair trade practice such as under the antidumping and countervailing duty laws. In this case the petitioner is seeking the following.
    • an additional tariff starting at $0.40/watt per CSPV cell and falling incrementally to $0.33/watt in year four
    • a minimum price starting at $0.78/watt per module and falling incrementally to $0.68/watt in year four
    • a new economic investment development program funded with the safeguard tariffs
    • an equitable distribution of AD and CV duties collected in two existing AD/CV cases
    • bilateral and multilateral negotiations to reduce global excess capacity

Some of these measures would likely be in violation of U.S. obligations as a member of the World Trade Organization.

  1. Concerns for Your Business

Expanded AD/CVD enforcement can have widespread and varied effects depending on your company’s position in the market.  If you are a domestic manufacturer who suffers from unfair trade competition, going forward you may find it easier to file AD/CVD petitions with increased likelihood of success.  If you are a U.S. importer, you should scrutinize your supply chain, making sure the products you import are not subject to the AD/CVD orders or if they are, paying adequate cash deposits. If you are a foreign manufacturer and/or producer exporting subject products to the United States, you may want to participate in the investigation or reviews, so you may be qualified for a lower rate.  We can help in each case, should you so desire.

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Protecting Your U.S. Trademark Overseas

In addition to 84 other countries, the United States is a party to the two treaties comprising the Madrid System for international registration of trademarks.  This system provides trademark owners a cost-effective, efficient way to protect their trademarks overseas.  While not all business need to take advantage of the Madrid System, those businesses and individuals seeking to do business or market their products internationally should consider the benefits to protecting their trademark since theft of intellectual property can pose a serious threat to businesses domestic and foreign.

In order to start the process of registering a trademark overseas, the trademark owner, either an individual or a business, must first register with the United States Patent and Trademark Office. The USPTO provides information via its website www.uspto.gov/trademarks to help trademark owners understand the process of obtaining a trademark.  Once a trademark owner receives his trademark, he must understand that it is not up to the USPTO to police the trademark for him.  In other words, it is the responsibility of the trademark holder to find ways of stopping theft of his trademark, otherwise known as “infringement.”

To protect the trademark in the U.S., owners should register their mark with as many entities as possible that have the ability to help protect the trademark.  For example, U.S. Customs and Border Protection has a electronic system that allows owners to record their U.S. trademarks.  This electronic system, known as the Intellectual Property Rights e-Recordation (IPRR), is in place to assist CBP in preventing importation of trademark infringing goods.

The Madrid system for international trademarks is another way trademark owners can protect their rights.  Assuming a trademark owner has registered his trademark with the U.S., the owner may then file an international application via the International Bureau through the Office of origin.  Offices of origin are located within a trademark owner’s country if that country is a party to the Madrid System’s treaties.

An international application via the Madrid System must include the following:

  • A reproduction of the mark with a list of services it covers (classified under the International Classification of Goods and Services)
  • Designate the countries in which protection is sought (these countries must be contracting parties)
    • Designation of a contracting party is made under the treaty which is common to the Contracting Party and the trademark owner’s country (i.e. If the designated country is only a party to the Madrid Agreement and not the Protocol and the trademark owner’s country is a party to both, then the designation is made under the Agreement.)
    • This allows for three kinds of international applications:
      • Governed exclusively by the Agreement
      • Governed exclusively by the Protocol
      • Governed by both
      • Be prepared in one of the three languages of the Madrid System:  English, French, or Spanish
      • Pay the required fees through the Office of origin:
        • Basic fee
        • Complementary fee for each designated Contracting Party for which there is no individual fee
        • Supplementary fee for each class of goods and services beyond the third
        • Include certification by the Office of origin of the date the international application was presented

After the application is made and approved by the International Bureau, each designated Contracting Party may examine the trademark and determine whether it will provide or refuse protection of the mark.  Once protection is approved, the rights protected are the same as if the trademark owner had made individual registrations in each designated Contracting Party.

The international registration is dependent on the registration of the mark in trademark owner’s country or where he submits through an Office of origin.  If the trademark ceases to be in effect in the original country during that 5 year time period, then the international trademark ceases to be in effect as well.  However, after the initial 5 year time period, the international registration becomes independent from the basic registration in the country of origin.

It is very important for a trademark owner to either become very familiar with the requirements of owning a trademark in both the United States and via the Madrid System or hire someone who is very familiar with the requirements because there are many specific dates, timelines, and nuanced requirements in order to both register and maintain a trademark.  While it may seem like a lot of work, it is certainly worth the time, money, and energy to ensure your product or service is trademark protected.  You want to ensure that when consumers associate your trademark with a certain product or service that it is YOUR product or service to which they are making the association.

More information can be found by visiting the U.S. Patent and Trademark Office website at www.uspto.gov and by visiting the World Intellectual Property Organization at www.wipo.int/madrid/en.  You may also contact our firm at smorrison@customscourt.com or nmooney@customscourt.com or by calling (850) 893-0670 to get more information on U.S. or international trademarks.

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