Overview
Congratulations! You have secured valuable protection by obtaining a copyright or trademark registration in the United States. Perhaps you have wisely decided to institute a trademark watch service to keep an eye out for new applications for similar marks and similar offerings. You’ve got all angles covered…right? Wrong! You haven’t considered recording your registration with U.S. Customs and Border Protection. In this article, we will explain why recording your registration might be one of the most valuable (and cost effective) steps that you can take to protect your brand.
A federal registration for a copyright or trademark comes with a number of benefits, including the ability to record your registration with U.S. Customs and Border Protection (“CBP”). Recording your trademark or copyright registration is beneficial because it gives CBP the legal authority to detain and destroy unauthorized merchandise at all borders and ports. Essentially, it gives you an added layer of protection against infringement by allowing CBP to police shipments of imported goods on your behalf. (Recordation is only available for goods, since services cannot be imported or exported.)
Recording your registration with CBP is especially valuable if your goods are often the subject of counterfeiting or gray market (or “parallel”) imports. Counterfeit goods not only pose significant health and safety risks to consumers but can also damage your brand’s reputation and the goodwill you’ve worked hard to build. This can negatively impact your company’s bottom line through lost revenue, downtime, replacement costs, and the need to manage negative publicity. Recordation can protect your brand from third parties that hope to trade off of the valuable goodwill that you have established. “Gray market” goods are those goods that are manufactured outside of the U.S. with authorization from the trademark owner but are then imported into the U.S. without the trademark owner’s authorization. In certain cases, where the gray market goods are “physically and materially” different from the goods authorized for importation into the U.S., CBP will restrict their importation into the U.S. upon request by the trademark owner.
In order to record your rights with CBP, you will need to submit the following documentation and information:
A valid U.S. registration certificate
Recordation is only available to federally registered trademark or copyright owners. Trademark owners must have a registration issued by the United States Patent and Trademark Office (“USPTO”) on the Principal Register. Copyright owners must have a registration issued by the United States Copyright Office (“USCO”).
Images of the work or mark as used in commerce
You will be required to upload images of the work or mark on a product as it would appear when entering the United States at the border.
A list of the parties authorized to use the work or mark
This can include parent/subsidiary companies, manufacturers, distributors, licensees, and more. You should be especially careful in curating this list as any inaccuracies may result in delays at border processing.
The country (or countries) of manufacture
This is the country (or countries) where the goods are made.
Point of contact information
This is who CBP will communicate with regarding enforcement of the recordation. This can be your intellectual property attorney.
Fee
For trademarks, the fee is $190 per class of goods identified in the trademark registration, and the recordation will remain in effect concurrently with the USPTO registration, if renewed along with the trademark registration. Renewals cost $80 per class.
For copyrights, the fee is $190 per copyright, and the recordation will remain in effect concurrently with the USCO registration, if renewed with CBP every 20 years. Renewals cost $80 per copyright.
In addition to the required submissions, you will have the opportunity to submit a product authentication manual and conduct trainings with CBP. The purpose of the manual is to describe your trademark and/or copyright and to provide clear images of your goods to help CBP identify legitimate goods and to distinguish them from counterfeit merchandise. You can even take it a step further by hosting a live training with CBP to educate them about your goods, which will help them enforce your rights at the border.
Once your registration is recorded, you should be sure to keep up with the required renewals and keep your information (especially as it relates to who is authorized to use the registered rights) up to date. Failing to do so could result in your legitimate products being held up at the border. Having an up-to-date Point of Contact for the recordals is also important as that person will be contacted by CBP regarding any potentially counterfeit or otherwise potentially infringing goods found at the border.
Consult your intellectual property attorney for more information on recording your registration with U.S. Customs and Border Protection.
Professionals
Sara Gruber
Associate
Audrey Trace
Associate
