Why You Should Duly Record Your Trademark With U.S. Customs
|Prepared By: Melissa C. Marsh, Los Angeles Business Attorney
Written: May 2006
On March 1, 2003 the United States Customs Service became the United States Customs and Border Protection ("CBP"). The CBP devotes substantial resources to target, intercept, seize and forfeit shipments of counterfeit and grey market goods. Owners of Trademarks registered on the Principal Register with the United States Patent and Trademark Office ("USPTO") and Copyrights registered with the United States Copyright Office can duly record these rights with the CBP to prevent importation of infringing foreign goods. "Recordation" refers to the process by which CBP collects information from the intellectual property owner about their registered trademarks, copyrights, and/or trade names, and then enters that information into an electronic database accessible at all U.S. ports of entry. The CBP then uses the duly recorded information to actively monitor shipments and prevent the importation or exportation of infringing counterfeit or grey market goods that violate intellectual property rights. Recordation is relatively simple and inexpensive, and every business should take advantage of the benefits afforded by this program which subjects imports of violative items to seizure and forfeiture as prescribed by the Customs Regulations.
You Must First Register Your Intellectual Property Rights With The USPTO Or Copyright Office.
The CPB will only accept recordation requests for federally registered trademarks and copyrights. To participate in the program, CBP requires that a business first secure trademark registration from the USPTO and/or copyright registration from the U.S. Copyright Office. Certified registration certificates from the USPTO and/or Copyright Office must be submitted with all CPB recordation requests.
Filing The Recordation Application With CBP.
The filing of an application begins the administrative recordation process with the CBP. A separate application is required for each recordation sought. In addition to the application, the business owner must also provide the CBP with: (1) a "status copy" (or "certified copy") of the certificate of registration issued by the USPTO showing title to be in the name of the applicant; (2) Five (5) digital images of the protected mark/work in ".jpg" or ".gif" format that accurately depict the right to be protected (each image file must be less than 2MB); (3) an affidavit under "best knowledge and belief"; and (4) an application fee of $190 to cover a copyright recordation and $ 190 to cover each class for which a trademark recordation is sought. The Application can be obtained and filed online via the CBP's Intellectual Property Rights e-Recordation.
After completing the online application, recordants will also need to submit the following additional documents to the CBP via mail: (1) a "status copy" (or "certified copy") of the certificate of registration issued by the USPTO showing title to be in the name of the applicant; (2) five photocopies of the "status copy", and (3) if the $190 application fee was not paid online via credit card, a check for $190 made payable to U.S. Customs and Border Protection to cover each class for which trademark recordation is sought.
All documentation requiring submission via mail should be submitted to:
Department of Homeland Security
U.S. Customs and Border Protection
Office of Regulations & Rulings
Intellectual Property Rights Branch
1300 Pennsylvania Ave., NW
Mint Annex Building M
Washington D.C. 20229
To Search U.S. Trademarks Registered With The CBP, use CBP's intellectual property rights search database.
To Report A Customs-Related Intellectual Property Rights Violation, you can either call CBP at: 1-800-BE ALERT or E-mail: firstname.lastname@example.org.
If you have any questions, or would like the assistance of attorney Melissa C. Marsh, please call 818.849.5206 or Email: email@example.com.
© 2006 Melissa C. Marsh. All Rights Reserved.