opinion

Registering Your Intellectual Property

Gregory A. Piccionelli

Savvy intellectual property owners understand that effective protection and enforcement of their intellectual property requires that they register their copyrights and trademarks. Unfortunately, many of the same owners are not aware that recordation of their copyright and trademark registrations with U.S. Customs and Border Protection (CBP) can provide them with a powerful and often overlooked means of substantially increasing the effectiveness of their efforts to protect and enforce their intellectual property rights.

Under U.S. law, CBP is empowered to monitor shipments of goods into the U.S. and exclude, detain and/or seize suspected counterfeit merchandise and other materials that it suspects infringe a registered copyright or trademark. To assist CBP’s ability to stop counterfeits and infringements from entering the country, it maintains a database for copyrighted works registered with the U.S. Copyright Office (USCO) and trademarks registered with the U.S. Patent and Trademark Office (USPTO).

IP owners that record their copyright and trademark registrations with the CBP also benefit from the wealth of useful rights enforcement information that the CBP provides in association with its interdiction work.

Unfortunately, neither the registration of a copyright with the Copyright Office nor the registration of a trademark with the USPTO will automatically result in recordation with CBP. In order to obtain CBP’s assistance to prevent the importation of infringing or counterfeit goods, owners of registered copyrights and trademarks must proactively record the subject copyright or trademark registration with CBP. This is done by the owner or the owner’s attorney through an online application through CBP’s Intellectual Property Rights e-Recordation (IPRR) system.

There are many benefits to recording copyright and trademark registrations with CBP. First, of course, is that CBP is able to monitor shipments and seize or otherwise stop imported merchandise suspected of infringing the registered copyright or trademark. But as you might imagine, the determination of whether a product constitutes a copyright or trademark infringement often can be challenging for the CBP. Fortunately, recordation with CBP commences a cooperative relationship between the CBP and the IP owner that is often used to better enable CBP officers to make infringement determinations. Once the recordation of the copyright or trademark registration with the CBP has been made, the IP owner has the opportunity to provide product guides and product identification training to CBP to enhance its ability to make infringement determinations at the point of entry.

IP owners that record their copyright and trademark registrations with the CBP also benefit from the wealth of useful rights enforcement information that the CBP provides in association with its interdiction work. For example, once suspected counterfeit or infringing goods are seized, CBP provides the trademark or copyright owner with data regarding the merchandise seized, including the country of origin, the name and address of the importer and manufacturer (if known), a description of the goods, and the quantity seized.

The process of recording copyright and trademark registrations with CBP is fairly simple and relatively inexpensive. First, the copyright and/or trademark associated with the product must be registered before commencing the process of recordation with the CBP. Copyright registrations may be applied for online at Copyright.gov. Many companies and individuals can undertake the registration process on their own without costly assistance from an attorney because the application process is relatively simple and the USCO’s website is very easy to use. The USCO also provides live assistance at numbers posted on the website.

Companies and individuals can also apply for federal registration of their trademarks online at USPTO.gov. It is important to note that the right to record a trademark registration with CBP only applies to marks registered on the Principal Register. Marks registered on the Supplemental Register cannot be recorded with CBP.

It should also be noted that federal registration of a trademark on the Principle Register is a much more complicated matter than the registration of a copyright. A discussion of the reasons why this is the case, unfortunately, exceeds the scope of this article. But in sum, because of the complexities and potential problems that can, and often do, arise in the prosecution of a federal trademark application, in my opinion, federal trademark applications should only be prepared by qualified and experienced trademark attorneys or by a non-attorney under the direct supervision of an experienced trademark attorney.

Once federal registration of the copyright and/or trademark is obtained the owner can file an application for recordation with CBP’s Intellectual Property Rights e-Recordation system any time thereafter. Recordation of copyright and trademark registrations with CBP become effective on the date the subject application is approved by the CBP. The current recordation fee is $190 for each copyright registration. For trademarks, the cost is $190 for each International Class of goods in which the trademark is registered.

The recordation of registered copyrights with CBP remains in effect in the IPRR system for 20 years unless the copyright expires before that time. Recordations of registered trademarks remain in effect concurrent with the USPTO registration and must be renewed with CBP when the USPTO registration of the mark is renewed.

Not surprisingly, the CBP requires the payment of renewal fees to maintain the recordations of copyright and trademark registrations in its database. The current renewal fee for copyrights is $80 per copyright registration. The current renewal fee for trademarks is $80 for each International Class of goods in which the mark is registered.

Conclusion

For owners of federally registered trademarks and copyrights concerned about the importation of counterfeit or infringing products, enlisting the assistance of CBP to prevent the entry of those products into the U.S. makes good sense. From personal experience I can report that the use of CBP services can dramatically enhance an IP owner’s ability to protect and enforce intellectual property rights.

If you have questions or need advice about recording your trademarks and copyrights with CBP, please feel free to contact me.

This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

Gregory A. Piccionelli is an entertainment attorney with over 20 years experience specializing in Internet matters. He can be reached at Piccionelli & Sarno at (818) 201-3955 or greg@piccionellisarno.com.

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