Registering Your Intellectual Property With Customs & Border Protection|
The U.S. Customs & Border Protection (CBP) agency has a procedure for recording registered trademarks and copyrighted works with CBP. Recordation of your trademark or copyrighted work with the CBP enables the CBP to prevent counterfeit or pirated goods from entering the country. The term "counterfeit goods" refers generally to the unauthorized use of a registered trademark, and the term "pirated goods" means unauthorized copies of a copyrighted work. There is no procedure for recording patents with the CBP because it would require the CBP to determine the scope of patent claims, and that task is left to the courts and, increasingly, the International Trade Commission.
Trademarks that are registered with the U.S. Patent and Trademark Office (USPTO) afford the trademark owner certain benefits that are not available for unregistered marks. (Please click here for an article on the benefits of federal trademark registration.) Unregistered trademarks are protected under the Lanham Act, which is the U.S. federal trademark statute, and court actions may be filed to prevent infringement of unregistered marks. The same is not true for copyrights, however; in order to sue for copyright infringement, a work must be registered with the U.S. Copyright Office (for more, please click here). Recordation with the CBP is separate and apart from registration with either the USPTO or the U.S. Copyright Office and is not legally required.
According to the CBP, its officers monitor imports to prevent the importation of goods bearing infringing marks (and, presumably, the importation of unauthorized copies of copyrighted works), and they have access to the recordation database at each of the 317 ports of entry throughout the country. In practice, however, the level of protection
actually afforded by CBP recordation is highly dependent on the CBP officers' understanding and knowledge of intellectual property issues. On a very basic level, for example, these officers must understand the difference between a trademark and a copyright, and they must be able to make judgments on the spot as to whether a given product is actually infringing.
I testified before the U.S. Senate Finance Committee in March of 2008 on this very issue. Specifically, I testified about need to provide further training for CBP officers on intellectual property issues. I also advocated for: (a) integration of the CBP recordation process with the trademark and copyright registration process; (b) integrating the renewal periods for CBP recordations with trademark registration renewal periods (there are no copyright renewals); (c) allowing CBP recordation applicants to opt out of providing confidential or trade secret information; (d) providing an automated process for reporting violative imports; and (e) updating the Customs Enforcement of Intellectual Property Rights Informed Compliance Publication. To view a complete copy of my written testimony and/or view a video of the hearing, please click here.
The application for recordation of a trademark or copyrighted work with CBP can be found at https://apps.cbp.gov/e-recordations/. The CBP site also provides statistics on intellectual property seizures. For the fiscal year 2011, CBP implemented nearly 25,000 seizures and estimates the total Manufacturer's Suggested Retail Price for all goods seized in 2011 at just over $1 billion. Thus, CBP recordation is an important weapon in our arsenal against intellectual property theft, but it should be part of a comprehensive intellectual property protection and enforcement strategy that includes registration with the appropriate governmental agencies in both the U.S. and abroad.