Articles

Client Alert - Recordation of Intellectual Property Rights with U.S. Customs

By Sujata Chaudhri

Jul. 16, 2004

Is your business being adversely affected by infringing goods imported into the United States? If so, you should consider recording your intellectual property rights with the U.S. Bureau of Customs and Border Protection (BCBP) (formerly the U.S. Customs Service). The BCBP has an aggressive enforcement program under which it will deny entry to or seize goods that infringe your intellectual property rights.

The advantage of recording your intellectual property rights with the BCBP is that you are ensured of a degree of protection against infringement at minimal cost to you. Although the BCBP enforces unrecorded trademarks and copyrights, their enforcement is not a priority.

Trademarks

The recordation process is simple and inexpensive. Trademarks registered on the Principal Register of the United States Patent and Trademark Office (USPTO) are eligible to be recorded with the BCBP. The record owner of a trademark registration must send a letter to the BCBP requesting recordation. The letter sets forth information required by the applicable regulations, including a list of authorized manufacturers and licensees abroad. The letter must be accompanied by a status copy of the certificate of registration certified by the USPTO showing title to be in the name of the applicant (certified status copy) and an official fee of $190 per class. Typically, the BCBP takes about 6 weeks to issue a recordation notice. The recordation of a trademark remains in force concurrently with the term of the registration. If the trademark registration is cancelled or revoked, the recordation with the BCBP is also cancelled. A trademark recordation can be renewed upon renewal of the registration at the USPTO.

At this time, the recordation process cannot be completed without a certified status copy of a trademark registration. This requirement sometimes creates a problem, particularly during renewal of a recordation, because the USPTO may not timely provide a certified status copy. The BCBP is aware of this anomaly and is working to correct it. A proposal to link the online database of the BCBP and the USPTO is being discussed in this connection. Another important change that is expected is an escalation in the recordation fee from $190 to $1000.

Copyrights

Registered Copyrights are also recordable. The recordation of copyrights is similar to that for trademarks. The term of the recordal is twenty years unless the copyright ownership of the recording party expires before that time.

Trade Names

A trade name can also be recorded with the BCBP if it has been used to identify a manufacturer for at least six months. Generally, the complete business name will be recorded unless it can be established that it is customary to use only a part of the complete name. Protection for a trade name remains in force as long as the trade name is used.

General

The BCBP enters the recordation into the Intellectual Property Rights module database, which is accessible by its field offices. When the BCBP seizes goods which violate intellectual property rights, it issues a seizure notice to the importer. Within 30 days of the seizure notice, it informs the trademark owner about the seizure. Seized goods are routinely destroyed, unless the rights owner gives permission for other disposition, such as charitable donations. The importer has the right to petition for administrative relief or elect to bring suit in federal district court to recover the merchandise. Significant monetary penalties may also be assessed for violations involving the importation of goods bearing counterfeit marks.

The monetary advantages of recording your intellectual property are obvious—for a small fee the federal government will police the borders of the U.S. for you. Of course, you will get better results if you are more proactive by educating customs officers about your marks and how they can spot counterfeit goods, and by specifically alerting offices at particular ports of entry to be on the lookout for shipments from known sources of counterfeit or pirated goods.

We have experience in this area and are available to help you. If you wish to record your intellectual property rights with the BCBP, please contact wmb@cll.com or szc@cll.com.

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