How to Make US Customs Your Ally
Did you know that US Customs and Border Protection (CBP) can serve as your trademark police? An owner of a federally registered trademark or copyright can make US Customs an ally in blocking the importation of infringing goods. Known as the Intellectual Property Rights (IPR) enforcement program of US Customs and Border Protection (CBP), this program enables IP owners to record their U.S. trademark and copyright registrations with Customs.
US Customs does not handle patent claims, which must be brought before the International Trade Commission.
First Get Your USPTO Trademark Registration
Before doing anything else, register your trademark with the USPTO. You cannot approach US Customs with mere allegations of IP rights. Unregistered trademarks will not work. Furthermore, not all registrations are eligible for Customs trademark protection.
US Customs will only record registrations that meet two criteria. First, the registration must be on the Principal Register, as opposed to the Supplemental Register. Second, the registered mark must cover goods.
Ideally, think ahead and anticipate infringement before it occurs. Apply for your trademarks and copyrights as early as possible. For trademarks which have not yet been used in commerce, file an intent-to-use (ITU) trademark application. You can also apply for copyright protection prior to publication.
Registrations on the Supplemental Register cannot be recorded with CBP. If the Supplemental Register is being offered in your pending trademark application, you will have to file a subsequent application for the Principal Register if you want Customs to enforce your trademark.
Of course, registered marks for services only cannot be recorded.
Record Your Trademark Registration with Customs
When applying for recordation with Customs, we can provide detailed information regarding specific manufacturers, importers and consignees of the infringing goods. Practically speaking, recording your registrations without providing such identification may lead to ineffective results. Consider the number of trademark and copyright registrations continually being recorded with Customs. Then factor in the innumerable container loads of merchandise arriving at US ports each day.
Now, take into account the limited number of Customs agents, and the fact that human eyes and hands can only go so far in inspecting the flood of merchandise. You have to make it easy for Customs to recognize the specific parties who bring in the infringing products.
How to Block Imports of Goods with Infringing Trademarks
It helps to know the specific parties who are attempting to import infringing goods. But business folks can get crafty. They may use a different name or entity to import infringing goods. To fly under the radar, Company X might identify Company Y on documentation for importing the goods.
Having US Customs on your side can save you a great deal of time and money by avoiding costly litigation.
How much does it cost to record your trademark with US Customs?
Our cost to record a trademark registration with a single class is $1,090, including our $900 flat rate and $190 government fee.
The government fee of $190 is charged per class of goods you wish to record. If you are recording a multi-class registration, you have the option of choosing which classes of goods to record.
To request flat fee estimates, see our contact information below. Feel free to inquire about fee discounts for recording multiple trademarks or classes.
Do you have to renew your US Customs trademark recordation?
Yes, you have to renew your Customs recordation near each 10-year renewal deadline of your trademark registration. CBP gives you an additional three months following the 10-year renewal deadline, so the deadline is technically 10 years and 3 months from the USPTO registration date.
Keep in mind that USPTO trademark registrations require a post-maintenance filing between the 5th and 6th year anniversary of the registration date. If you neglect this mandatory post-registration “maintenance,” you may end up with a dead registration by the 10-year date.
Need to record your registered trademark with US Customs?
Reach out to patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help record your trademark registration with US Customs.
