As an intellectual property right owner, you have the right to prevent the unauthorized importation of infringing goods into the U.S.
Registered trademarks, trade names, and copyrights can be recorded with the with the U.S. Customs and Border Protection (CBP) Agency. CBP can help trademark and copyright owners of registered and recorded rights to prevent the unauthorized importation of infringing products. CBP can detain and seize imported goods which violate intellectual property rights in the United States.
Who is eligible?
Trademarks: Trademark owners who have their trademarks registered by the U.S. Patent and Trademark Office (USPTO), except those registered on the supplemental register, may be recorded with the U.S. Customs and Border Protection if the registration is current.
Copyrights: Copyright owners whose claims to copyright which have been registered in accordance with the Copyright Act, may also be recorded with Customs for import protection.
Trade Names*: The name or trade style used for at least 6 months to identify a manufacturer or trader may be recorded.
*A trade name, trading name, or business name is a pseudonym frequently used by companies to operate under a name different from their registered, legal name. The term for this type of alternative name is a “fictitious” business name.
Patents: Not eligible for recordation, however, patents can be enforced through United States International Trade Commission (USITC) Exclusion Orders.
Do I need a Certificate of Registration before submitting my CBP recordation application?
Trademarks: Yes, only trademarks that are registered on the USPTO’s Principal Register are eligible for recordation with CBP.
Copyrights: Not necessarily. If you have already applied for registration of your copyright with the U.S. Copyright Office, you may record it with CBP so that you may receive border enforcement while you are awaiting registration.
Trade Names: No registration required, only use for at least 6 months to identify a manufacturer or trader.
How long CBP registration last?
Trademarks: “The recordation or renewal of an existing recordation of a trademark shall remain in force concurrently with the current registration period or last renewal thereof in the USPTO.”
Copyrights: “The recordation of copyright shall remain in effect for 20 years unless the copyright ownership expires before that time. If the ownership expires in less than 20 years, recordation shall remain in effect until the ownership expires. If the ownership has not expired after 20 years, recordation may be renewed.”
Tradenames: “Protection for a recorded trade name shall remain in force as long as the trade name is used. The recordation shall be canceled upon request of the owner or upon evidence of disuse.
What information is required for the recordation?
(a) Copy of the Trademark Certificate of Registration or copy pending application if you have already applied for copyright registration.
(b) 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);
(c) The places of manufacture of goods bearing the recorded trademark;
(d) 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
What are Gray Market goods?
“Gray market goods are defined as items manufactured abroad and imported into the US without the consent of the trademark holder. Gray market goods are not counterfeits; however, differences may exist between these goods and those goods produced for American sale.”
Can CBP help to prevent the unauthorized importation of Gray Market goods into the U.S?
Yes, under the Lever-rule protection, owners of U.S. trademarks who desire protection against gray market articles on the basis of physical and material differences can submit an application with a description of any physical and material difference between the specific articles authorized for importation or sale in the United States and those not so authorized.
What happens when CBP finds goods being imported with a mark that is identical with, or substantially indistinguishable to a registered mark, that is registered with CBP?
CBP will detain any article of domestic or foreign manufacture imported into the United States that bears a mark suspected by CBP of being a counterfeit version of a registered mark.
The detention will be for a period of up to 30 days from the date on which the merchandise is presented for examination.
Within five business days from the date of a decision to detain suspect merchandise, CBP will notify the importer in writing of the detention. The Importer will then have seven business day to provide information to CBP to determine that the merchandise does not bear a counterfeit mark.
Upon a determination by CBP, made any time after the merchandise has been presented for examination, that an article of domestic or foreign manufacture imported into the United States bears a counterfeit mark, CBP will seize such merchandise and, in the absence of the written consent of the owner of the mark, forfeit the seized merchandise in accordance with the customs laws.
Are there any fines imposed on those involved in the importation of merchandise bearing a counterfeit mark?
CBP may impose a civil fine on any person who directs, assists financially or otherwise, or aids and abets the importation of merchandise for sale or public distribution that bears a counterfeit mark resulting in a seizure of the merchandise as follows:
(a) First violation. For the first seizure of merchandise under this section, the fine imposed will not be more than the value the merchandise would have had if it were genuine, according to the manufacturer’s suggested retail price in the United States at the time of seizure.
(b) Subsequent violations: For the second and each subsequent seizure under this section, the fine imposed will not be more than twice the value the merchandise would have had if it were genuine, according to the manufacturer’s suggested retail price in the United States at the time of seizure.
I have helped countless small to medium size businesses protecting trademarks with U.S. Customs and Border Protection. I’d like to help you too!
Please contact our office if you wish to receive trademark information on how protect your brand.
Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney
Augusto Perera, P.A.
2525 Ponce de Leon Boulevard
Suite #300
Coral Gables, FL 33134
T:305-489-1901
T: 888-581-0816
F 305-721-1532
C: 786-200-8674 (Call, Text or WhatsApp)
E: ap@tmmiami.com
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