Summer 2004 E-Newsletter

USING U.S. CUSTOMS TO PROTECT YOUR INTELLECTUAL PROPERTY RIGHTS

Michael J. Hoisington, Esq.

1. United States Customs Service ("USCS") is Your Friend
You may not know it, but the USCS wants to help you keep illegal products bearing your trademark or trade name, or making use of your copyrighted material, out of the United States. Although that is part of their job anyway, current USCS policy grants priority to rights holders who register their intellectual property rights with USCS. The cost is nominal and will probably be recouped the very first time USCS denies entry to infringing goods.

2. Record Your Trademarks and Trade Names with USCS
If you have a trademark registered on the Principal Register at the United States Patent and Trademark Office ("USPTO") and/or have been using your trade name for more than six months you can record it with the USCS. By doing so, you can prevent infringing goods from being imported into the United States. The USCS will seize any such goods that are illegally imported.

In order to record your trademark registration you will need to file an application and provide an original and five photocopies of a certified status copy (from the USPTO) of the Certificate of Registration. A fee of $190.00 per class of goods or services must be paid.

The recordal is effective from the date of approval by the USCS and is effective as long as the trademark registration is in effect. The USCS will bar importation of goods bearing the recorded mark unless they are imported with the trademark owner's permission. If the trademark is cancelled or revoked the recordal is no longer effective. Upon renewal of the trademark the recordal must also be renewed.

Recordal of your trade name with the USCS is a little more involved, but again the time and expense may be recovered the first time an infringing shipment is stopped.

In order to record your trade name with the USCS you will need to file an application and provide the following:

• a statement by the owner, partners, or principal corporate officer of the applicant stating that you have been using the trade name for at least six months, that your trade name is not identical or confusingly similar to any other trade name or trademark used with similar goods, and that you have the exclusive right to the use of the trade name with your goods;
• statements by at least two other persons not associated with or related to the applicant, but having actual knowledge of the facts contained in the required statements (above); and
• the required fee of $190.00 for each trade name to be recorded.

If your application is acceptable, the recordal will be published in the Federal Register and Customs Bulletin. After a prescribed period of time for opposition a Notice of Final Approval or Disapproval will be published.

If approved, the recordal remains in effect for the life of your trade name and will bar the importation of goods bearing the same trade name, or simulations thereof. Of course, the owner of the trade name may cancel the recordal at any time. The USCS contacts trade name owners randomly to determine if the trade name is still in use.

3. Record Your Copyrights
Registered copyrights may also be recorded with the USCS. In order to record your copyright with the USCS, you will need to file an application and provide the following:

• either a statement of how the Berne Convention applies to your works, or if relying on a U.S. registration, you will need to enclose an additional Certificate of Copyright Registration;
• five photographs or likenesses of the work; and
• the required fee of $190.00 per copyright to be recorded.

If accepted, the recordal is valid for a period of twenty years and will bar unlawful infringing imports. The recordal can be renewed for successive twenty-year periods.

Recording your intellectual property with the USCS offers important advantages that you may not have considered. By barring imports from entering the United States you may avoid sending cease and desist letters, settlement negotiations that seem to go on and on, and lawsuits that can drain company resources. Importantly, it also shows that you are zealously protecting your intellectual property rights. It could be one of the most important and cost effective tools in your arsenal of intellectual property protection.

LETTER FROM JOHN L. MORRELL, CHAIRMAN AVOIDING THE PYRRHIC VICTORY - IMMEDIATE ACTION STRATEGIES IN CIVIL LITIGATION USING U.S. CUSTOMS TO PROTECT YOUR INTELLECTUAL PROPERTY RIGHTS MARTIN ELIOPULOS: PERSONALLY AND PROFESSIONALLY

619 236-1551

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