If you have encountered customers complaining about suspicious goods bearing your registered trademark (or a confusingly similar mark), or if you suspect importation or exportation of infringing goods is occurring, one of the best actions you can take as a rights holder is to record your trademark with a relevant customs agency. For a minimal fee, this empowers customs officers to halt the shipment of infringing goods with little ongoing effort required by the rights holder. Despite these advantages, trademark recordation remains underutilized. In the U.S., only about 40,000 out of the millions of registered trademarks are currently recorded with U.S. customs.
This article will explain some of the procedures and considerations involved in recording trademarks in the U.S. Although this article will deal exclusively with the procedures associated with enforcement for trademarks, similar enforcement mechanisms are available to patent and copyright holders.
The Office of Customs and Border Protection (CBP) in the U.S. Department of Homeland Security has seizure and forfeiture authority for imported articles that violate trademark or trade name rights. CBP operates an e-Recordation program that populates an IP Rights Search (IPRS) database (available at https://iprs.cbp.gov). The IPRS is accessible at all U.S. ports of entry to assist CBP personnel with infringement determinations, and in 2019, CBP enforced over 18,735 active recordations. Watches and jewelry, apparel, handbags and wallets, and footwear made up approximately 54% of all seizures, with consumer electronics, pharmaceuticals, and consumer products accounting for another approximately 20% of seizures.
To access the online e-Recordation application, a trademark holder must have a trademark on the Principal Register, as trademarks that are registered only on the Supplemental Register cannot be recorded. The registration fee is $190 USD for each class of goods of a trademark registration the applicant wishes to record, and $80 USD per class for subsequent renewals. Recordation is effective for the duration of the trademark registration, and must be renewed when the trademark registration is renewed.
An e-Recordation application requires the following information:
The application also permits upload of digital images of the protected mark(s) to assist in identification of infringing goods. Recordation within the IPRS takes approximately one or two weeks once the application is submitted.
Once the mark has been recorded, the trademark owner is encouraged to create a Product Identification Training Guide to educate CBP personnel, which may include lists of known violators, product descriptions and images of suspect goods, and the ports of entry where suspect products are imported. An example guide is available for review at: https://www.cbp.gov/document/guidance/ipr-product-id-training-guide. Recordation holders are also able to conduct in-person or live online training sessions to CBP personnel to introduce their brand and provide tips for detecting infringers, resulting in greater identification of suspect goods.
Upon identifying imported goods suspected to bear infringing marks, CBP will detain the suspected goods for up to 30 days. Within five business days of the detention, written notice will be provided to the importer of the detention. Prior to issuing the notice of detention, or concurrently with issuance, CBP will provide limited information to the trademark owner to assist with determining whether the goods include or consist of an infringing mark. If required, this information may include a sample of the goods or information from the packaging. The importer is permitted to present information establishing that the detained merchandise does not bear an infringing mark within seven business days of the notice of detention.
If the CBP determines that the imported material does have an infringing mark that is used without the written consent of the trademark owner, the goods will be seized. Depending on the nature of the infringement, CBP may also assess penalties against the importer. It is important to note that even if CBP ultimately declines to take an enforcement action against imported goods, the trademark owner retains the right to bring a trademark infringement action against the importer, and to seek relief from the International Trade Commission (ITC).
In this manner, recording a registered trademark with the Office of Customs and Border Protection may expand upon the protection provided by the trademark registration, and at a low additional cost. Andrus Intellectual Property cares about the intellectual property security of our clients’ brands. We are available to discuss any questions you may have regarding recordation strategies both in the U.S. and around the globe.
Andrus is pleased to announce that earlier this year, Thomas R. Knight was named as a non-equity partner in the firm. The subject matter of Tom's experience has spanned across a wide variety of industries and technologies, integrating business objectives with intellectual property asset protection for long-term strategic planning.
Patent Agent Daniel P. Ochoa joined Andrus in February 2020. Daniel is a registered patent agent at Andrus Intellectual Property Law. Daniel focuses his practice on assisting clients with preparing and prosecuting domestic and international patent applications, as well as conducting patentability searches and assessments.
Attorneys Joseph D. Kuborn and Aaron T. Olejniczak were selected for inclusion in Managing Intellectual Property's 2020 edition of the IP Stars list. Managing IP’s World IP Survey covers over 80 jurisdictions, and the rankings are based on extensive research among IP practitioners carried out over six months. A team of researchers seeks responses from thousands of firms and clients. IP Stars highlights attorneys with a strong understanding of products and industry areas, as well as the requisite legal experience.
Andrus was once again included in the guide entitled IAM Patent 1000 - The World's Leading Patent Practitioners. The IAM Patent 1000 is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Joseph D. Kuborn, Aaron T. Olejniczak, Peter T. Holsen and Benjamin R. Imhoff were featured individually, based on positive feedback from clients and associates.
Andrus was selected as a ranked law firm in Chambers USA 2020, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to the firm-wide ranking, Attorney Aaron T. Olejniczak was included as a Recognised Practitioner. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conducting in-depth telephone interviews, and review submission forms provided by law firms.
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