Many products sold in the United States are imported. Imported goods pass into the stream of commerce in the United States via a port of entry where the goods are subject to inspection by the United States Customs Service (Customs). U.S. businesses constantly face the problem of counterfeit or piratical imports coming into the country being sold at lower prices, which erodes profits and may even damage the reputation of their products in the marketplace. U.S. law protects intellectual property owners from such imports.
Owners of trademarks, trade names, and copyrights are legally entitled to “record” their marks, trade names and copyrights with Customs, provided they first take certain steps. Upon the recordation of a trademark, copyright, or trade name with Customs, Customs will detain, seize, and forfeit counterfeit, piratical, and infringing merchandise as well as notify the owner of record of the detention or seizure. Civil fines may also be imposed on importers of seized and forfeited goods.
‘Reasonable Suspicion’
The test for a Customs detention of suspect violative trademarked goods is only a “reasonable suspicion” that the goods bear a mark that violates a federally registered trademark. These goods may even be detained for a few days to enable Customs to determine if a “reasonable suspicion” exists.
The recordation process is simple and relatively inexpensive. With respect to copyrights, there must be a registered copyright with the United States Copyright Office or a foreign copyright protected under the Berne Convention. With respect to trademarks, there must be a registered trademark on the Principal Register of the United States Patent and Trademark Office (USPTO). Trademarks registered on the USPTO’s Supplemental Register and state trade or service mark registrations may not be recorded with Customs.
To obtain a recordation of a federally registered trademark or service mark with Customs, the owner obtains a certified copy of the trademark registration, writes a letter to Customs setting forth the information required by regulations, including who, if any, are the authorized users of the mark, and encloses a recordation fee for each class of trademarked goods to be recorded. The recordation of a trademark registered on the Principal Register of the USPTO with Customs is effective for 10 years and may be timely renewed for a lower recordation fee.