Most intellectual property owners understand that registering their trademarks and copyrights is an important component of an effective IP protection and enforcement system. Another valuable but often underutilized tool for protecting these assets is to record them with U.S. Customs.
The U.S. Customs & Border Protection (CBP) maintains an intellectual property rights database for marks registered with the U.S. Patent and Trademark Office (USPTO) and works registered with the U.S. Copyright Office. IP owners can proactively record their registrations with CBP in an effort to prevent the importation of infringing or counterfeit goods.
There are many benefits to filing with CBP. When intellectual property is recorded with Customs, CBP is able to monitor shipments and exclude, detain and/or seize imported merchandise that it suspects is counterfeit or infringing. If Customs has questions about the detained goods, officers work together with IP owners to make infringement determinations. Once goods are seized, CBP provides the trademark or copyright owner with information regarding the seizure, including a description of the merchandise, the quantity seized, the country of origin, and the name and address of the manufacturer and importer. In addition to the standard recordal, IP owners also have the opportunity to provide product guides or product identification training to CBP to assist Customs with its infringement determinations at the port.
Recordal Process
It is important to note that obtaining a federal trademark or copyright registration does not automatically result in the trademark or copyright being registered with CBP. An IP owner or their attorney must file an online application through CBP’s Intellectual Property Rights e-Recordation (IPRR) system to begin the administrative recordation process with CBP.
Recordation with CBP is relatively straightforward and inexpensive. First, the copyright must be registered with the U.S. Copyright Office or the trademark must be registered on the Principal Register of the USPTO. (Marks registered on the Supplemental Register cannot be recorded with Customs.) Once a federal registration is obtained, an IP owner can file its IPRR application at any time. A separate application is required for each recordation sought. The current recordation fee for copyrights is $190. The current recordation fee for trademarks is $190 per International Class of goods.
An IP owner’s recordal with CBP is effective on the date the application is approved. Registered copyrights that are recorded with Customs remain in effect in the IPRR system for 20 years unless the copyright expires before that time.
Registered trademarks that are recorded with Customs will remain in effect concurrent with the USPTO registration and must be renewed with CBP when the USPTO registration is renewed. The current renewal fee for copyrights is $80 per copyright. The current renewal fee for trademarks is $80 per International Class of goods.
Recording intellectual property registrations with CBP can be a quick and cost-effective method of expanding an IP owner’s protection. However, an IPRR application must be constructed carefully to avoid the accidental seizure of the owner’s own goods or the goods of an authorized licensee or distributor.
Conclusion
CBP is a useful partner for maximizing an IP owner’s protection at the border. Owners of federally registered trademarks and copyrights who are concerned about imports of infringing goods should record their intellectual property with CBP. If you have questions or need advice about recording your trademarks and copyrights with CBP, please contact your primary attorney at Owen, Wickersham & Erickson for more information.
Posted by Kathleen LeTourneau