Iowa Intellectual Property Blog
Customs and Border Patrol – Another Arrow in Your Quiver for IP Protection
Aug. 21, 2013 – Janet E. Phipps Burkhead, Iowa Intellectual Property Blog
Today, international piracy and counterfeiting pose a real threat to a company’s intellectual property (IP) assets. Fortunately, there is another arrow for your quiver to protect your IP assets. Recording your registered trademarks and/or copyrighted works with the Custom and Border Patrol’s (CBP) Intellectual Property Rights e-Recordation (IPPR) system allows CBP agents to assist you in enforcement of your IP assets. Once recorded through IPPR, protected works become accessible to over 40,000 U.S. Customs officers at all 329 ports of entry across the country.
Adding the CBP to your IP-defense arsenal is simple and inexpensive, especially considering the benefits that accompany recordation. Recording your registered works through the IPPR authorizes CBP agents to act against counterfeits, infringing knockoffs, and imports that are “confusingly similar” or “substantially indistinguishable” to a recorded trademark or trade name, or that are “substantially similar” to a recorded copyright.
If a CBP agent detects an unauthorized, imported mark that is “confusingly similar” to a U.S. registered mark recorded with the IPPR, the CBP agent seizes the infringing merchandise and notifies you, the mark owner. If an imported mark is “substantially indistinguishable” from a recorded, registered mark, the offending articles may be seized and forfeited. The offender may also be subject to civil penalties in an amount equal to the value of the seized merchandise.
If a CBP agent has reason to believe that an imported article may infringe upon a registered copyrighted work, the CBP agent may seize the article and institute forfeiture proceedings. The CBP then notifies you, the rights holder.
In recent years the CBP has ramped up its enforcement efforts. In 2009, approximately 14,000 seizures took place; in 2012 that number grew to over 22,000. According to the CBP’s Intellectual Property Rights Fiscal Year 2012 Seizure Statistics, in 2012 the retail price of all goods seized was estimated at just over 1.2 billion dollars.
Before recording your mark or work through the IPPR, you should become familiar with the Customs’ regulations (19 CFR Part 133) and application process. Sample forms for recording your trademark can be found here, and for recording your copyright here.
Recordation with the Customs and Border Patrol may be an additional arrow in your quiver to protect your intellectual property assets.
Thank you to Luke Dawson, summer intern, for his contribution to this article.