| In today's global economy it is becoming increasingly | | | | copyright must first be registered with the U.S. |
| more important for a business to adequately protect | | | | Copyright Office. The standard information to be listed |
| and enforce its intellectual property (IP). Most | | | | in the application to record a copyright with the CBP |
| businesses are aware of one of the routes to such | | | | includes: |
| protection, namely obtaining patents and trademarks | | | | (a) the name and complete address of the copyright |
| from the U.S. Patent & Trademark Office, and | | | | owner or owners; |
| registering copyrights with the U.S. Copyright Office. | | | | (b) if the applicant is a person claiming actual or |
| While registering IP with these entities is fundamental to | | | | potential injury by reason of actual or contemplated |
| protection and enforcement, another valuable | | | | importations of copies or phonorecords of the eligible |
| protection and enforcement resource exists with the | | | | work, a statement setting forth the circumstances of |
| U.S. Customs and Border Protection (CBP). | | | | such actual or potential injury; |
| As a bureau of the Department of Homeland Security, | | | | (c) the country of manufacture of genuine copies or |
| the CBP is charged with securing our nation's border, | | | | phonorecords of the protected work; |
| which includes protecting U.S. IP rights (primarily | | | | (d) the name and principal address of any foreign |
| trademarks and copyrights) from infringing or | | | | person or business entity authorized or licensed to use |
| counterfeit imports. The CBP maintains a recordation | | | | the protected work, and a statement as to the |
| system for trademarks and copyrights. However, | | | | exclusive rights authorized; |
| owning a trademark registered with the U.S. Patent | | | | (e) the foreign title of the work, if different from the |
| & Trademark Office, or a copyright registered | | | | U.S. title; and |
| with the U.S. Copyright Office, does not automatically | | | | (f) in the case of an application to record a copyright in |
| result in the trademark or copyright being registered | | | | a sound recording, a statement setting forth the |
| with the CBP, but it is the first step. | | | | name(s) of the performing artist(s), and any other |
| The CBP's registration process is relatively simple. | | | | identifying names appearing on the surface of |
| Currently, an electronic application template for | | | | reproduction of the sound recording, or its label or |
| registering a trademark or copyright with the CBP may | | | | container. 19 CFR §133.32 |
| be found online at Alternatively, offers an online | | | | Similar to the application to record a trademark, the |
| application system for registering trademarks and | | | | application to record a copyright must be accompanied |
| copyrights with the CBP. Explained below are some of | | | | with other documents and fees. The main document |
| the documents and information needed to record a | | | | required is a certified certificate of copyright |
| trademark and copyright with the CBP. | | | | registration issued by the U.S. Copyright Office |
| Recording Trademarks | | | | showing title to be presently in the name of the |
| First, it should be noted that only those trademarks | | | | applicant. Also, five (5) copies of the certificate of |
| currently registered on the U.S. Trademark Office's | | | | copyright registration must be attached to the |
| Principal Register are available for recordation with the | | | | application. Furthermore, the application must include a |
| CBP. The standard information to be listed in the | | | | fee in the amount of $190 for each copyright being |
| application to record a trademark with the CBP | | | | recorded. |
| includes: | | | | The applicant's registration with the CBP is effective |
| (a) the name, complete business address, and | | | | on the date an application for recordation is approved, |
| citizenship of the trademark owner or owners (if a | | | | as shown on the recordation notice issued by the |
| partnership, the citizenship of each partner; if an | | | | CBP. The registration remains in force for a term of |
| association or corporation the State, country, or other | | | | twenty (20) years unless the copyright ownership of |
| political jurisdiction within which it was organized, | | | | the recordant expires before that time. |
| incorporated, or created); | | | | Benefits of Recording IP with the CBP |
| (b) the places of manufacture of goods bearing the | | | | By recording IP with the CBP, CBP officers have the |
| recorded trademark; | | | | power to act against counterfeits, infringing knockoffs, |
| (c) the name and principal business address of each | | | | and even imports that are "confusingly similar" to a |
| foreign person or business entity authorized or licensed | | | | recorded trademark or "substantially similar" to a |
| to use the trademark and a statement as to the use | | | | recorded copyright. Such actions may include the |
| authorized; and | | | | seizure and forfeiture of imports that the CBP |
| (d) The identity of any parent or subsidiary company | | | | determines to be infringing or counterfeit. Furthermore, |
| or other foreign company under common ownership | | | | the CBP will contact the trademark or copyright owner |
| or control which uses the trademark abroad." 19 CFR | | | | and provide them with information, if known, regarding |
| §133.2 | | | | the seizure, such as a description of the merchandise, |
| Along with the information contained in the application, | | | | the quantity involved, the name and address of the |
| specific documents and fees are required. One of the | | | | manufacturer, and the name and address of the |
| documents required is an original certificate of | | | | importer. Also, the CBP may provide the owner with a |
| registration certified by the U.S. Patent & | | | | sample of the suspected infringing merchandise in |
| Trademark Office. Furthermore, an applicant is | | | | order to pursue a related private civil remedy for |
| required to submit five (5) copies of the original | | | | trademark infringement. |
| certificate of registration with the application. Finally, a | | | | Conclusion |
| fee in the amount of $190 is required for each | | | | In Fiscal Year 2005, the total domestic value of IP |
| trademark to be recorded. Additionally, if a trademark | | | | commodities seized by the CBP totaled over $93 |
| is registered in more than one International Class, an | | | | million, down from nearly $139 million the previous year. |
| additional $190 is required for each class for which the | | | | Thus, it is apparent that the pirating and counterfeiting |
| applicant desires to record the trademark with the | | | | of IP continues to be a large scale problem that |
| CBP. | | | | affects the rightful and legal owners of IP assets. |
| After all the necessary paperwork and fees have | | | | However, by recording IP with the CBP, U.S. trademark |
| been submitted, the applicant's registration with the | | | | and copyright holders can make the government a |
| CBP is effective on the date an application for | | | | partner in their efforts to protect valuable IP. |
| recordation is approved, as shown on the recordation | | | | DISCLAIMER |
| notice issued by the CBP. The registration will remain in | | | | We hope you understand that a brief article cannot |
| force concurrently with the registration period of the | | | | provide accurate legal advice. Accordingly, nothing in |
| trademark at the U.S. Patent & Trademark Office. | | | | the above is intended as specific legal advice to any |
| Thus, when a trademark is renewed with the U.S. | | | | person. Such legal advice can only be given by a |
| Patent & Trademark Office, it must also be | | | | qualified practitioner after a careful review of all the |
| renewed with the CBP | | | | individual facts. We urge you to consult us, or another |
| Recording Copyrights | | | | licensed professional, before you proceed. |
| In order to record a copyright with the CBP, the | | | | |