Under the federal
law, trademarks, trade names and copyrights may be recorded with the United
States Customs Service (Customs) for the purpose of prohibiting the
importation of certain articles. 19 CFR § 133.0, et. seq.
The following is a general summary of the federal Customs recordation
regulations and key benefits of recordation. A number of specific
requirements regarding the composition of applications and renewals and
related requirements and penalties and remedies have been omitted.
Reference to the regulations should be made for the precise requirements and
applicable time periods, as well as a more thorough treatment of the
penalties and remedies.
TRADEMARKS
Trademarks (and service
marks) registered with the United States Patent and Trademark Office (USPTO)
on the Principal Register may be recorded with Customs if the registration
is current. The application must be in writing and addressed to the
Intellectual Property Rights Branch of Customs. Copies of the Registration
Certificate (including a certified copy), along with a recording fee of $190
per class for each trademark, must be submitted. Therefore, if a given
trademark is registered with the USPTO for three different classes, the fee
for recording with Customs will be $570. The recordation and protection
thereunder is effective on the date the application is approved. The
recordation will run concurrently with the registration term in the USPTO.
If the USPTO registration is finally cancelled or revoked, the recordation
with Customs likewise will be cancelled. To maintain uninterrupted Customs
protection, the trademark owner must submit an application to renew no later
than three months after the expiration of the current USPTO trademark
registration term. A fee of $80 per class for each trademark is required
for the renewal.
Articles imported into the United States bearing counterfeit trademarks will
be seized by authorities and forfeited by the owner absent consent by the
trademark owner. With certain exceptions, articles bearing trademarks that,
while not counterfeit marks, are so similar to the owner’s mark as to be
likely to cause the public to associate the mark with the recorded mark or
name shall be denied entry into the U.S. and will be subject to detention.
If the importer has not obtained release of the detained articles within the
detention period, seizure and forfeiture will take place.
“Restricted gray market articles” are foreign-made articles
bearing a genuine trademark or trade name identical with or substantially
indistinguishable from one owned and recorded by a citizen of the U.S. or a
corporation or association created or organized within the U.S., and
imported without the authorization of the U.S. owner (e.g., the mark
might have been applied by a licensee). All restricted gray market goods
imported into the U.S. shall be denied entry and shall be subject to
detention except as otherwise provided by law, and if timely release of the
goods is not obtained, they shall be subject to seizure and forfeiture. In
addition to any other penalty or remedy authorized by law, civil fines may
be imposed against those involved in the importation of merchandise bearing
a counterfeit mark.
TRADE NAMES
The name or trade style
used for at least 6 months to identify a manufacturer or trader may be
recorded with Customs. The application must be in writing and addressed to
the Intellectual Property Rights Branch of Customs. The application must be
accompanied by a statement of the owner, partners, or principal corporate
officer, and by statements from at least two other persons not associated
with or related to the applicant but having actual knowledge of the facts,
stating a belief that the applicant has used the name in connection with the
kind or of merchandise described in the application for at least 6 months
and that the trade name is not identical or confusingly similar to any other
trade name or registered trade mark used in connection with such class or
kind of merchandise, and that the applicant has the sole and exclusive right
to the use of such trade name in connection with the merchandise of that
class or kind. The fee is $190 per trade name. Protection for the recorded
trade name becomes effective upon final approval and shall remain in effect
for as long as the trade name continues to be used. The recordation of the
trade name shall be cancelled upon the request of the recordant or upon
evidence of non-use. See the discussion above relating to trademarks as to
assistance from Customs with respect to confusingly similar trade names and
gray market goods.
Copyrights
Claims to copyright that
have been registered with the U.S. Copyright Office may be recorded with the
Customs Office for import protection. The application must be in writing
and addressed to the Intellectual Property Rights Branch of Customs. An
“additional certificate” of copyright registration issued by the U.S.
Copyright Office is required along with five photographic images or other
likenesses of the work (with some exceptions). The fee is $190 per
copyright to be recorded. Recordation of copyright and protection
thereunder is effective on the date the application for recordation is
approved. The recordation shall remain effective for a term of 20 years,
unless the copyright ownership of the recordant expires before that time (in
which case the recordation also will cease). Recordation of a copyright
registration with Customs shall be cancelled upon request of the recordant,
or if the underlying registration with the U.S. Copyright Office is
cancelled or revoked. If a recorded copyright has a term that exceeds the
original 20 year recordation period, the recordation with Customs may be
renewed for another 20 year period, unless the recordant’s ownership expires
sooner (in which case the recordation expires with the ownership). There is
no limit as to how many times recordation of a subsisting copyright may be
renewed. The renewal fee is $80 per copyright.
The
importation of infringing copies or phonorecords of works copyrighted in the
U.S. is prohibited by Customs. Authorities will seize infringing articles,
and forfeiture proceedings will be instituted. In the case of
counterfeiting, criminal prosecution may be instituted by the Department of
Justice.
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