US Customs and Border Protection Provides Certain Protections for Business Information and Intellectual Property Assets

Customs and Border Protection includes in its many responsibilities several programs which provide certain protections for business information regarding US importers and exporters and the rights of US intellectual property owners. (The Canadian Border Services Agency has recently adopted its own similar procedures regarding Canadian trademarks and copyrights.)

Registration and Enforcement of Trademarks, Trade Names, and Copyrights

Trademarks and Trade Names

Customs and Border Protection is by law specifically charged with the responsibility for seizing merchandise imported bearing counterfeit trademarks (a spurious trademark which is identical with, or substantially indistinguishable from, a registered trademark). In addition, Customs may seize and forfeit merchandise bearing a legitimate trademark or trade name owned and recorded by a US entity when the trademark or trade name has been properly registered with Customs, and the importation takes place without the permission of the trademark or trade name owner (gray market importations). (Exceptions apply when both the foreign and US trademark are owned by the same person or business, directly or through common ownership, with an exception to the exception available in certain circumstances where the imported merchandise is physically and materially different from products legitimately sold in the US).

Trade names must be in active use for at least 6 months before they can receive Customs protection, and not be identical or confusingly similar to any other trade name or registered trademark used in connection with the class or kind of merchandise involved. The party seeking protection must show that it has the sole and exclusive right to the use of such trade name for the merchandise in question.

The recording of trademarks and trade names allows Customs to apply restrictions on importations which bear the recorded trademark or trade name, or copying or simulating marks or names. Procedures include detention, notification to the trademark or trade name holder, an opportunity to contest infringement, and certain remedies available depending upon the nature of the importer and violation. Articles bearing counterfeit trademarks will be seized and forfeited, in the absence of the written consent of the trademark holder.

Copyrights

Copyright protection is afforded to goods which are registered in accordance with the Copyright Act, as amended. Importation of “infringing copies or phono records”- piratical articles, unlawfully made without authorization of the copyright owner – are subject to seizure and forfeiture. Unlike trademarked items, seizure does not apply to items to which the copyright mark was legitimately applied, even if the copyright owner would like to exclude such articles. Identification of potentially infringing merchandise results in notification to the copyright holder, with samples as appropriate, and specific procedures exist for disputing infringement and dealing with violative articles.

Registration Procedures

US Customs has adopted electronic filing procedures (IPRR) for trademarks and copyrights, where the registered number with the US Patent and Trademark or Copyright office can be cross referenced. This includes initial registrations and renewals (including renewals of expired registrations). Credit card payment can be made (and is considerably faster in securing coverage than payment by check). Separate applications are required for each copyright or trademark action. Change of ownership information can also be filed electronically. Trade name recordations are made by email to the IPR Branch.

e-Recordation applications require the appropriate Registration number, digital images of the protected mark/work in “.jpg” or “.gif” format (2MB max), and, for trademarks, identification of each class of goods covered. Trade name and renewal registrations require the information specified by the regulations. Initial registrations require a fee of $190 for each copyright, trade name, and each class of goods covered by a trademark. Copyright and trademark registrations are valid for 20 years, or the remaining period of the underlying registration at the Trademark or Copyright Office; trade name registration remains in force as long as the name is in continued use. Trademark and copyright renewal fees are $80.

Patent Protection

Customs and Border Protection provides protection to patent holders through the enforcement of exclusion orders issued by the United States International Trade Commission. Patent holders believing imported goods infringe their patents must bring an action before the US ITC, and secure and exclusion order, in order for Customs enforcement activities to apply.

Confidentiality of Certain Business Information

Pursuant to regulation, Customs and Border Protection discloses inward and outward manifest information through authorized press represents to the public. There are several firms which secure this information, manipulate and repackage it, and sell it to the public.

The information from manifests includes the name and address of the shipper, general character of the cargo, number of packages and gross weight, name of the vessel or carrier, port of exit, port of destination, and country of origin. On import manifests, the data includes the name and address of the importer or consignee, unit weight, piece count, container and seal number, Bill of Lading number, and ETA.

Importers and exporters who wish to protect some of the information shown on the inward and outward manifests can file a request with US Customs for confidential treatment. A certification is good for a period of two years, and must be renewed each two years in order to remain in force. The items which will be deleted from the publicly available information for companies filing a proper certification are the shipper name and address, consignee name and address, and notify party name and address.

Filing Service

This office can provide information and assistance in connection with filing trademark, trade name, and copyright registrations. In addition, forms have been prepared for use in filing requests for confidential treatment regarding the manifest data, together with a reminder service regarding renewal requirements.