For $190 U.S. Customs Will Police Your Brand
By Peter Quinter and Jennifer Diaz,[Comprehensive Reports]
How would you like the almost 56,000 U.S. Customs and Border Protection (U.S. Customs) employees to protect your brand at 327 U.S. Ports of Entry? If you own a copyright or trademark, this article will help you understand the significance of taking the extra step to “record” the copyright or trademark with U.S. Customs.
Many companies mistakenly believe that registering a trademark or copyright with the U.S. Government provides sufficient protection and remedies, and, therefore, do not take the extra step to record those trademarks or copyrights with U.S. Customs. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) or copyright with the U.S. Copyright Office gives public notice of one’s ownership of the trademark or copyright. On the other hand, the purpose of recording a trademark or copyright with U.S. Customs is to prevent the unauthorized importation of merchandise that bears a recorded trademark or copyright. U.S. Customs prevents counterfeit and otherwise infringing products from entering or exiting the United States for registered trademark or copyright holders who have also taken the extra step to record their trademarks or copyrights with U.S. Customs.
U.S. Customs officials may detect infringing merchandise at the time of entry into the United States. When a trademark or copyright is recorded with U.S. Customs, the information is entered into an electronic database accessible to U.S. Customs officers around the world. U.S. Customs uses this information to target suspect shipments for the purpose of physically examining merchandise which ultimately prevents the importation into or exportation from the United States of infringing goods.
Advantages to Recording a Trademark or Copyright with U.S. Customs
The first and most obvious advantage to recording a trademark or copyright with U.S. Customs is that the agency will monitor and seize infringing merchandise at the ports of entry. Because U.S. Customs does this, the trademark or copyright holder does not have to locate and prosecute every unauthorized importer, distributor, or retailer illegally using its trademark or copyright.
In 2008, U.S. Customs seized more than $272 million worth of merchandise that infringed intellectual property rights (IPR). Comparatively, in 2007, the total domestic value of merchandise seized by U.S. Customs was almost $100 million less, at $196 million, still a large increase from the 2003 the total value of seized goods of $94 million. In 2008, footwear, handbags, pharmaceuticals, apparel and electronics comprised over 68 percent of the total merchandise seized, worth more than $200 million. In 2008, the top commodity seized was footwear, with a domestic value of $102 million and representing 38 percent of the total value of infringing goods seized. In 2007, although footwear was still the top commodity seized, the total domestic value was $77 million representing 40 percent of the total goods seized.
Second, U.S. Customs has the authority to issue monetary fines against anyone who facilitates the attempted introduction into the United States of seized and forfeited counterfeit merchandise. Typically, that is the U.S. importer, however, it may also be the foreign exporter or freight forwarder.
Third, U.S. Customs may go to the U.S. Attorney’s Office and request that those involved in the illegal activity be criminally prosecuted under the Trademark Counterfeiting Act of 1984. First-time violators of the Act are subject to penalties of up to ten years imprisonment and/or a $2 million fine, while repeat offenders are subject to 20 years imprisonment and/or a fine of up to $5 million.
Finally, U.S. Customs may coordinate and participate in raids on counterfeit production facilities internationally. U.S. Customs officers located at American embassies around the world routinely cooperate with foreign law enforcement agencies and share information for the criminal prosecution of manufacturers and exporters of counterfeit merchandise located overseas.
Customs e-Recordation System
Trademark and copyright recordation may now be filed on-line with U.S. Customs’ new IPR e-Recordation online system. There are highly technical issues in U.S. Customs regulations found in 19 C.F.R. Part 133, and in the specific questions that are asked on the application which is most appropriate for an attorney to answer who is knowledgeable and experienced with recording trademark or copyrights with U.S. Customs..
The following is a checklist of some the information necessary to submit an electronic trademark or copyright application:
·Description of trademark or copyright registered with the USPTO
·USPTO Registration Number
·Country of manufacture of protected goods bearing the trademark or country of manufacture of the protected copyright work
·Names of any parent companies, subsidiaries, or other entities that are under common control with, or share any type of ownership interest or relationship with, the U.S. trademark owner, or names of all parties authorized to use or reproduce the copyrighted work
·Fee of $190 for each trademark or copyright. If the trademark is registered in more than one class of goods, the fee is $190 per class recorded with U.S. Customs.
When filing a trademark through U.S. Customs’ e-recordation website, it is advisable to attempt to obtain “gray market” protection from U.S. Customs. Gray market goods are foreign-made articles bearing either a genuine trademark or a trade name that is identical to or substantially indistinguishable from one owned and recorded by a U.S. citizen or company, which are imported without authorization from the U.S. holder.
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