Static Control Seeks Remanufacturer Protection Language for Proposed CBP Counterfeit Trademark Rules

U.S. Customs and Border Protection should make changes to language in a proposed rule that would amend CBP's regulations on importing merchandise bearing recorded trademarks or recorded trade names, said Static Control Components in comments filed at CBP. The company said the new wording is necessary to allow for the legal movement of products for "remanufacturers," which refurbish used products and continue to use the products' trademarks for to ensure compatibility, said Static.

Static supplies toner, parts and components for remanufacturers that sell refurbished printer cartridges. The cartridges only work on a certain set of printers, so some trademarked words are necessary on the labels for identification, said Static. "Because the Static Control labels (which contains symbols and designs which Static Control has trademarked) contain words such as ”Brother”, “HP” or “Lexmark” in indentifying which cartridges the supplies are designed to work in, under the present wording of the Rule these supplies might be “suspected of being a counterfeit version of a mark registered with the US Patent and Trademark office,” the company said.

"Static Control respectfully suggests that the language of the Rule should be amended to exclude goods that are properly trademarked and which only use another trademark in a description of the product," the company said. "There is no interest to be served in seizing such entirely lawful products." Static said CBP should thus add the following line to the rule "“The use of such a mark solely to describe the function of a product is not a counterfeit mark if it appears only on the label or packaging of the product subordinate to a mark registered by the producer of the product with the US Patent and Trademark office.”

The comments are (here). Comments on the proposal are due by June 25.

(FR 04/18/12)

(See ITT's Online Archives 12042320 for summary of the proposed changes.)