On My Mind Blog

After you register your trademark in the U.S. Patent and Trademark Office or your copyright with the U.S. Copyright Office, you should consider recording that registration with U.S. Customs and Border Protection (“CBP”).  Protection for your trademark or copyright will remain in force for as long as the term of rights under the underlying registration.

A trade name can also be recorded with CBP if you have used it for at least six months.   Protection for your trade name will remain in force as long as you use it.

Recordation is simple and inexpensive and can provide significant anti-counterfeiting enforcement at government expense.

In many cases, CBP recordation may also deter the importation of gray market products displaying registered trademarks.  These are otherwise authentic goods imported by third parties without authorization of the U.S. owner.  This protection case extend to products that materially differ from the domestic versions.

CBP seizes hundreds of millions of dollars worth of counterfeit and restricted imports each year. These imports vary from luxury items, such as footwear, handbags, apparel, watches and jewelry, to goods such as electronics, CDs and DVDs, pharmaceuticals, toys/electronic games, and cigarettes.

By simply recording your registered trademark or copyright with CBP, the U.S. government effectively becomes your watchdog.  It combs imports for counterfeits and restricted gray market goods, then uses its substantial resources to detain and possibly seize infringing goods at over 300 ports of entry before they even enter United States commerce. 

In addition, CBP has the power to assess substantial fines against importers involved in an unlawful importation. In the case of imported goods bearing “counterfeit” trademarks, the fine for a first offense is the manufacturer’s suggested retail price (MSRP) of the goods as if they were genuine.  Depending upon the product and mark in question, this amount can be substantial providing a strong deterrent.

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 genuine goods and how they can spot counterfeits, 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.

If you do not use this available government resource, counterfeit or gray market goods may more easily enter the U.S. requiring you to expend your own time and money to deal with them.

For further information, contact your CLL attorney, Deborah K. Squiers  or C. J. Erickson 

This ON MY MIND™ Blog post © 2015 by Cowan, Liebowitz & Latman, P.C., New York, NY.  

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