Copyrighting products' packaging is important in protecting a brand from foreign pretenders

In the first half of 2007, U.S. Customs and Border Protection officials seized more than $110 million in counterfeit merchandise. Counterfeiters know that packaging is a critical part of establishing brand identity, and they often copy the packaging as well as the product.

Customs has several powers that allow it to assist U.S. companies in protecting their brands. With respect to packaging, the relevant rights are trademarks, copyrights and patents. A trademark is any symbol, word or other device that indicates to the consumer the origin of a product. The famous Nike swoosh and the McDonald's arches are both trademarks. Related to trademarks is the concept of trade dress, through which distinctive aspects of packaging unrelated to the functioning of the product (such as the shape of glass Coke bottles) can indicate the origin of a product.

Copyrights protect original creative works. For example, packaging elements such as a sculptural stopper in a perfume bottle can be protected.

The customs laws prohibit the importation of merchandise bearing counterfeit or confusingly similar trademarks that infringe a U.S. copyright. In the case of trademarks, to secure assistance from Customs, the mark must first be registered on the principal registry of the Patent and Trademark Office. Once registered, the mark can be recorded with Customs, which has an online recording process. Recordation requires a fee of $190 per mark, per class and lasts up to 20 years. Customs will not accept a recordation for trade dress that is not a registered trademark. Nevertheless, the law permits seizure of imports where a U.S. federal court has found infringement based on trade dress.

In the copyright context, Customs has a limited role in copyrights and may only prohibit importations on copyright grounds where the merchandise is “piratical,” which means copies were made illegally. It is permissible to import copyrighted works as long as the copies are legally made.

It's recommended that companies that have recorded their copyrights and trademarks contact Customs or the Intellectual Property Rights office in Washington with any information relating to illegal imports. Companies also can work through counsel to encourage Customs to begin an enforcement action.

Customs has no independent authority to seize merchandise alleged to infringe a U.S. patent. Patents protect new inventions, including novel packaging designs. Patent owners can seek an order from a federal court or the U.S. International Trade Commission allowing Customs to exclude merchandise that infringes on a patent.

A successful brand is a company's most valuable asset. Working with Customs to prevent unfair competition by imports is an important tool in preserving a company's value.