Making US Customs Your Trademark Ally
An owner of a federally registered trademark or copyright can make US Customs an ally in blocking the importation of infringing goods. Known as the Intellectual Property Rights (IPR) enforcement program of US Customs and Border Protection (CBP), this program enables IP owners to record their U.S. trademark and copyright registrations with Customs. Keep in mind that U.S. Customs does not handle any patent claims, which need to be brought before the International Trade Commission.
First Register Your Trademark with the USPTO
The first step is to register your trademarks with the USPTO. You cannot approach US Customs with simply an assertion of intellectual property your rights. Unregistered trademarks will not work. Since US Customs provides a process to record a registration, you first need to register your trademark before you can record it.
Only Principal Register Trademarks Eligible for US Customs Protection
Your trademark registration must exist on the Principal Register of the U.S. Patent and Trademark Office (PTO), as opposed to the Supplemental Register. Keep this in mind if the option of the Supplemental Register is being considered in your pending trademark application. Ideally, you should be thinking ahead before infringement even occurs. Apply for your trademarks and copyrights as early as possible. For trademarks which have not yet been used in commerce, file an intent-to-use (ITU) trademark application. You can also apply for copyright protection prior to publication.
Record Your Trademark Registration with Customs
When applying for recordation with Customs, make sure you provide detailed information identifying specific manufacturers, importers and consignees of the infringing goods. Practically speaking, recording your registrations without providing such identification may lead to ineffective results. Consider the number of trademark and copyright registrations continually being recorded with Customs, and innumerable container loads of merchandise arriving at U.S. ports each day. Now, take into account the limited number of Customs agents, and the fact that human eyes and hands can only go so far in inspecting the flood of merchandise. You have to make it easy for Customs to recognize the specific parties who bring in the infringing products.
Blocking Imports with Infringing Trademarks
If you have knowledge of a specific party who might attempt to import infringing goods, you should investigate the possibility of that party using a different name or entity to import the goods. If Company X knows you’re watching them, then Company X might use Company Y on documentation for importing the goods.
Having U.S. Customs on your side can save you a great deal of time and money by avoiding costly litigation.