As part of our standard information package sent with newly issued U.S. trademark registration certificates, RatnerPrestia has long advised trademark owners that their trademark can be recorded with the U.S. Customs & Border Protection (CBP). In addition to recording trademarks, however, the CBP also allows recordation of copyrights and trade names for enforcement purposes.
The CBP maintains an aggressive Intellectual Property (IP) rights enforcement program that devotes substantial resources to target, intercept, detain, seize and forfeit shipments of goods that violate the IP rights of others. In 2004, CBP conducted over 7200 seizures of goods having a total domestic value of over $138 million, with apparel, cigarettes, and handbags/wallets/backpacks comprising over 70% of the seizures.1 Goods from China constituted 63% of the seizures, with Russia and Hong Kong having the next largest contribution, at 5% each.2
Recording a copyright, trademark, or trade name requires incurs an application fee of $190 (per class of goods, for trademarks) and requires transmittal of a certified copy of the trademark or copyright registration certificate. The application lists any licensees or others with authorization to use the mark or work, and information about any parent companies, subsidiaries or the like who may share an ownership interest. The registrant may also provide specific information known about allegedly infringing merchandise that may help in the enforcement efforts. It normally takes about three weeks to record registered trademarks and copyrights, and longer for registration of trade names.
An owner of a trademark recorded with the CBP can stop not only the importation of infringing goods made by third parties, but also, upon special request, certain “gray-market” goods — genuine goods made by a foreign affiliate for consumption outside the United States — if those goods are materially and physically different from those authorized for entry into the United States. The CBP can also assist in combating patent infringement, even in the absence of an International Trade Commission (ITC) order directing exclusion or seizure and forfeiture of infringing goods. A patent survey provides the patent owner with the names and addresses of importers of potentially infringing merchandise. The fee for a patent survey is $1,000 for two months, $1,500 for four months, and $2,000 for six months.
If imports of infringing goods are a threat to your business, please consider the many protections offered by the CBP. RatnerPrestia stands ready to assist you through the recordation process and to answer any questions along the way.
1 “Department of Homeland Security, U.S. Customs and Border Protection and U.S. Immigration and Customs Enforcement FY2004 Top IPR Commodities Seized,” available at http://www.cbp.gov/xp/cgov/import/commercial_enforcement/ipr/seizure/trading/