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& UPDATES |
January 2003
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Register Your Trademark with U.S. Customs:
Stop Infringers at the Border
© CHRISTINE Q. MCLEOD,
2003
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So
you have spent the time and effort to register
your trademark with the United States Patent and
Trademark Office (USPTO). Now, who is going to
enforce your rights? For the most part, owners
of registered trademarks must police unauthorized
third-party use and take action themselves in
the form of demand letters or court action. However,
most trademark owners are not aware of the assistance
that U.S. Customs Service provides to help stop
importation of products with infringing trademarks.
Because of its border control responsibilities,
the U.S. Customs Service is uniquely positioned
to prevent these illegal importations before they
reach the public. The following explains some
of the costs and procedures related to this program.
Under
Section 42 of the federal Lanham Act, no article
of imported merchandise shall be admitted entry
at any customs house of the United States if it
bears a trademark that copies or simulates a trademark
registered on the Principal Register of the federal
Lanham Act.
To
implement the prevention of importation of infringing
articles by way of seizure, the trademark owner
must comply with the regulations of the U.S. Customs
Service. Specifically, the owner records its mark
with Customs by completing an application, generally
in the form of a letter since Customs does not provide
application forms, which includes the following
information required by Part 133 of the Customs
Regulations:
(1)
The name, business address and citizenship of
the trademark owner;
(2)
The places of manufacture of goods bearing the
recorded trademark;
(3)
The name and address of each foreign person
or business authorized or licensed to use the
trademark and the identity of any parent or
subsidiary company or other foreign company
under common ownership or control which uses
the trademark abroad;
(4)
A certified status copy of the Patent and Trademark
Office certificate of Registration which shows
title to be in the name of the applicant for
recordation;
(5)
Five copies of the certificate for distribution
to ports of entry;
(6)
A filing fee of $190 for each trademark and
each class of goods for which recordation is
desired.
Registration
is made through the Intellectual Property Rights
Branch of the Office of Regulations and Rulings
of the U.S. Customs Service, 1300 Pennsylvania Avenue,
NW, Washington, DC 20229.
If Customs identifies
an article bearing a confusingly similar trademark
to one registered with its service, a
"Notification of Detention" letter
will be sent to the importer and the trademark holder.
The goods will be detained for 30 days during which
time the importer will be afforded an opportunity
to establish that the goods are legitimate or exempted.
Failure to establish an exception subjects the goods
to seizure.
Keep in mind, there is an exemption that allows
United States residents traveling abroad to bring
back trademarked or even counterfeit merchandise
for personal use -- limited to one item of each
type. The personal use exemption can be used once
every 30 days. Items brought in under this exemption
cannot be sold within one year of entry.
Since the seizure is generally no risk and little
cost to the trademark owner, this service can be
an effective and cost-efficient way to enforce trademark
rights. More information about the services provided
by U.S. Customs can be found online at http://www.customs.ustreas.gov.
This
Intellectual Property Newsletter is a periodic
publication intended to provide information
of general interest in a summary manner
and should not be construed as individual
legal advice. If you have any questions,
please contact:
CHRISTINE Q. MCLEOD
BEUSSE BROWNLEE BOWDOIN & WOLTER, P.A.
390 N. ORANGE AVENUE, SUITE 2500
ORLANDO, FLORIDA 32801
407-926-7723
FAX: 407-926-7720
cqm@patentorlando.com
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