Eligibility & Fees
Trademarks that are recorded with CBP are eligible for gray market protection where:
- (1) the U.S. and foreign trademarks are not owned by the same person, and
- (2) the U.S. and foreign trademark owners are not a parent or subsidiary, or otherwise subject to common ownership or control.
The recordation holder must apply for such protection with the Intellectual Property Enforcement (IPE) Branch of Regulations & Rulings at HQIPRBranch@cbp.dhs.gov.
Trademarks that are not eligible for gray market protection because of common ownership or control between the U.S. owner and a foreign owner may request that CBP restrict the importation of gray market goods which are “physically and materially different” from goods intended for sale within the U.S. by requesting Lever-rule protection. See Lever Brothers Co. v. U.S., 981 F.2d 1330 (1993). To qualify for this type of protection the trademark registration must be owned, or jointly owned, by a U.S. citizen. Trademark recordation holders who wish to obtain Lever-rule protection for specific products must make a request to HQIPRBranch@cbp.dhs.gov and (1) state the basis for this claim with particularity; (2) support the claim by competent evidence; and (3) provide CBP with summaries of the alleged physical and material differences that exist between the merchandise authorized for sale in the United States and those intended for other markets. “Physical and material” differences between merchandise authorized for sale in the United States and those intended for other markets may include, but are not limited to:
- The specific composition of both the authorized and gray market product(s) (including chemical composition)
- Formulation, product construction, structure, or composite product components, of both the authorized and gray market product
- Performance and/or operational characteristics of both the authorized and gray market product
- Differences resulting from legal or regulatory requirements, certification, etc.
- Other distinguishing and explicitly defined factors that would likely result in consumer deception or confusion as proscribed under applicable law
CBP will publish a notice listing the trademark(s) and specific product(s) for which Lever-rule protection has been requested and granted in the Customs Bulletin.