BORDER CHECK: RECORDING YOUR INTELLECTUAL PROPERTY WITH U.S. CUSTOMS & BORDER PROTECTION

© 2006, Gallagher & Dawsey Co., LPA
October 2006

Introduction
In today’s global economy it is becoming increasingly more important for a business to adequately protect and enforce its intellectual property (IP). Most businesses are aware of one of the routes to such protection, namely obtaining patents and trademarks from the U.S. Patent & Trademark Office, and registering copyrights with the U.S. Copyright Office. While registering IP with these entities is fundamental to protection and enforcement, another valuable protection and enforcement resource exists with the U.S. Customs and Border Protection (CBP).

As a bureau of the Department of Homeland Security, the CBP is charged with securing our nation's border, which includes protecting U.S. IP rights (primarily trademarks and copyrights) from infringing or counterfeit imports. The CBP maintains a recordation system for trademarks and copyrights. However, owning a trademark registered with the U.S. Patent & Trademark Office, or a copyright registered with the U.S. Copyright Office, does not automatically result in the trademark or copyright being registered with the CBP, but it is the first step.

The CBP’s registration process is relatively simple. Currently, an electronic application template for registering a trademark or copyright with the CBP may be found online at www.cbp.gov. Alternatively, www.cbp.gov offers an online application system for registering trademarks and copyrights with the CBP. Explained below are some of the documents and information needed to record a trademark and copyright with the CBP.

Recording Trademarks

First, it should be noted that only those trademarks currently registered on the U.S. Trademark Office’s Principal Register are available for recordation with the CBP. The standard information to be listed in the application to record a trademark with the CBP includes:

(a) the name, complete business address, and citizenship of the trademark owner or owners (if a partnership, the citizenship of each partner; if an association or corporation the State, country, or other political jurisdiction within which it was organized, incorporated, or created);

(b) the places of manufacture of goods bearing the recorded trademark;

(c) the name and principal business address of each foreign person or business entity authorized or licensed to use the trademark and a statement as to the use authorized; and

(d) The identity of any parent or subsidiary company or other foreign company under common ownership or control which uses the trademark abroad." 19 CFR § 133.2

Along with the information contained in the application, specific documents and fees are required. One of the documents required is an original certificate of registration certified by the U.S. Patent & Trademark Office. Furthermore, an applicant is required to submit five (5) copies of the original certificate of registration with the application. Finally, a fee in the amount of $190 is required for each trademark to be recorded. Additionally, if a trademark is registered in more than one International Class, an additional $190 is required for each class for which the applicant desires to record the trademark with the CBP.

After all the necessary paperwork and fees have been submitted, the applicant's registration with the CBP is effective on the date an application for recordation is approved, as shown on the recordation notice issued by the CBP. The registration will remain in force concurrently with the registration period of the trademark at the U.S. Patent & Trademark Office. Thus, when a trademark is renewed with the U.S. Patent & Trademark Office, it must also be renewed with the CBP

Recording Copyrights

In order to record a copyright with the CBP, the copyright must first be registered with the U.S. Copyright Office. The standard information to be listed in the application to record a copyright with the CBP includes:

(a) the name and complete address of the copyright owner or owners;

(b) if the applicant is a person claiming actual or potential injury by reason of actual or contemplated importations of copies or phonorecords of the eligible work, a statement setting forth the circumstances of such actual or potential injury;

(c) the country of manufacture of genuine copies or phonorecords of the protected work;

(d) the name and principal address of any foreign person or business entity authorized or licensed to use the protected work, and a statement as to the exclusive rights authorized;

(e) the foreign title of the work, if different from the U.S. title; and

(f) in the case of an application to record a copyright in a sound recording, a statement setting forth the name(s) of the performing artist(s), and any other identifying names appearing on the surface of reproduction of the sound recording, or its label or container. 19 CFR §133.32

Similar to the application to record a trademark, the application to record a copyright must be accompanied with other documents and fees. The main document required is a certified certificate of copyright registration issued by the U.S. Copyright Office showing title to be presently in the name of the applicant. Also, five (5) copies of the certificate of copyright registration must be attached to the application. Furthermore, the application must include a fee in the amount of $190 for each copyright being recorded.

The applicant’s registration with the CBP is effective on the date an application for recordation is approved, as shown on the recordation notice issued by the CBP. The registration remains in force for a term of twenty (20) years unless the copyright ownership of the recordant expires before that time.

Benefits of Recording IP with the CBP

By recording IP with the CBP, CBP officers have the power to act against counterfeits, infringing knockoffs, and even imports that are "confusingly similar" to a recorded trademark or "substantially similar" to a recorded copyright. Such actions may include the seizure and forfeiture of imports that the CBP determines to be infringing or counterfeit. Furthermore, the CBP will contact the trademark or copyright owner and provide them with information, if known, regarding the seizure, such as a description of the merchandise, the quantity involved, the name and address of the manufacturer, and the name and address of the importer. Also, the CBP may provide the owner with a sample of the suspected infringing merchandise in order to pursue a related private civil remedy for trademark infringement.

Conclusion

In Fiscal Year 2005, the total domestic value of IP commodities seized by the CBP totaled over $93 million, down from nearly $139 million the previous year. Thus, it is apparent that the pirating and counterfeiting of IP continues to be a large scale problem that affects the rightful and legal owners of IP assets. However, by recording IP with the CBP, U.S. trademark and copyright holders can make the government a partner in their efforts to protect valuable IP.