From the methods used to make its most boundary-pushing shoe soles to the ornamental design of the knitted uppers that can be found in its Flyknit technology, Nike’s arsenal of utility and design patents is sweeping. In addition to using those legal protections to try to stomp down on competitors if they veer too close to its turf, thereby giving rise to legal battles with the likes of adidas and a budding war with Skechers, Nike wants to use (at least some of) those patents and the power of U.S. Customs and Border Protection (“CBP”) to prevent infringing goods from entering into the U.S.
Joining the likes of consumer products giant 3M and organizations, such as the Intellectual Property Owners Association, Nike is pressing Congress for more power to block imports of infringing products at the U.S. border, by way of the brand new Counterfeit Goods Seizure Act of 2019. Introduced on Thursday but Senators Thom Tillis, Bill Cassidy, Chris Coons and Mazie Hirono, the bill states that “merchandise introduced or attempted to be introduced into the United States contrary to law shall be … seized and forfeited if … it is merchandise or packaging in which copyright, design patent, trademark, or trade name protection violations are involved.”
In short: Nike and co. are backing the newly-proposed legislation that would enable design patent holders – no utility or plant patent-centric pushes here – to register their patents with CBP, which will then have the authority to confiscate goods at the border that they believe to infringe design patent-protected products.
While the standards for infringement for the various styles of intellectual property vary (in some cases quite a bit), the prospect of halting intellectual property infringing imports at U.S. borders is generally not without precedent. Parties that have trademarks registered on the U.S. Patent and Trademark Office (“USPTO”)’s Principal Register currently have the ability to “record these marks with CBP, in order to to assist CBP in its efforts to prevent the importation of goods that infringe registered marks.”
According to the USPTO, “The recordation database includes information regarding all recorded marks, including images of these marks,” which helps “CBP officers to monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.”
Something of a similar system also exists for copyright holders to protect their registered works, including copyright-protected music, movies, photographs and video games, among other creative works, but to date, no such system exists for those with utility or design patents, who “have to [file a complaint with] and go through a trial at the U.S. International Trade Commission (“ITC”) in order to get an import ban,” according to Bloomberg. Beth Ferrill, vice chair of the industrial design committee of the Intellectual Property Owners Association, says that the ITC process “can be slow and expensive, particularly for smaller companies or those involved in the fast-changing fashion industry.”
For a point of reference, the proceedings that Nike-owned footwear brand Converse initiated with the ITC in October 2014 in connection with the rampant infringement of its trade dress-protected Chuck Taylor sneakers by some 20-plus brands and retailers, as well as foreign manufacturers, is still underway. Although, an exclusion order was issued by the ITC in June 2016, banning the import of shoes that infringe two of the company’s registered trademarks.
*This article has been updated to include the name of and language from the proposed bill.
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