Suzanna M. M. Morales

One of the important benefits of United States trademark and copyright registration is the ability to seek the assistance of Customs and Border Protection (“CBP”) to prevent counterfeits from coming into the U.S. However, these protections are not automatic. This article discusses how intellectual property owners can take advantage of these protections.

Recording a copyright or trademark registration with CBP

Once a trademark or copyright registration certificate is issued by the U.S. Patent and Trademark Office or Copyright Office, the owner may record the registrations with CBP for monitoring and seizure of potentially counterfeit products. At the time of this article, the CBP filing fee is $190 for each class of goods covered by a trademark registration and $190 for each copyright registration. Once the registration is recorded, CBP contacts intellectual property owners or their designated representative for assistance when differentiating between counterfeits and genuine goods.

Recordation of a trademark registration lasts ten years. In contrast, recordation of a copyright registration lasts twenty years, unless the underlying copyright registration expires during that time. Recordation renewal for an unexpired recordation costs $80 for each class of goods covered by a trademark, and $80 for a copyright registration.

Other ways to work with the CBP

Along with recording its registrations, an intellectual property owner can improve the effectiveness of enforcement efforts by educating the CBP on genuine goods. For example, information about where genuine goods are manufactured, the location and identity of any authorized manufacturers/distributors/users of the mark, and the country of manufacture of suspected counterfeits, if known, should be provided to CBP.

  1. Product Guide and Presentation to CBP

In addition to recording its registrations, an intellectual property owner can further educate CBP by submitting a product guide and providing information, sometimes in the form of a presentation to CBP on the owner’s goods. A product guide provides an overview of the company’s products and intellectual property, and is helpful in alerting CBP to the ways in which counterfeit products may be identified. The product guide is entered into CBP’s database and is available at all U.S. ports. An in-person presentation allows a company a further, fuller opportunity to interact with CBP.

  1. e-allegations

Finally, CBP also has an online “e-allegations” form that anyone, including the public and rights holders, can use to submit specific allegations of infringing shipments and other trade violations. This information is provided to the appropriate office of CBP for investigation. Although the e-allegations system may be a convenient channel to address specific infringement, please note that CBP does not communicate with the initiator of an e-allegation in most cases about the status of the matter due to privacy and trade secret laws. This enforcement tactic should be combined with building relationships with appropriate agencies and as an adjunct to the right holder’s own ability to help itself by seeking judicial intervention including injunctive relief.

Please let us know if you would like to discuss these measures to protect your company’s brand.