Posts Tagged ‘Customs’

Only one trademark question matters for businesses. Most small business owners look into trademark protection and consider whether they can afford the costs of protecting their trademarks? Yet this is not the correct question.

The real question that small business owners should ask is: Can they afford not to protect their trademarks?

Potential Costs Resulting From Unprotected Brands:

  • Greater chance of being copied inadvertently since the trademarks are not listed in the USPTO database
  • Greater chance of being copies intentionally since the ® cannot be used
  • Greater costs (lawyers, court fees, and more) when going after copycats and infringers in general
  • Greater risks and stress when going after copycats and infringers in general
  • More company time drained when going after copycats and infringers in general
  • Failure to show consumers the importance of your brand
  • Less valuable brand assets to monetize in a sale of the business
  • More challenges to license or franchise the brand
  • Reduced brand credibility
  • Potentially missing opportunities for protection by US Customs
  • Missed opportunities to stop cybersquatters
  • Missed opportunities to reclaim social media usernames registered by others

Yes, trademark protection is an expense. But there is nothing you can do for your brand that provides more protection – and insurance – than obtaining a trademark registration from the USPTO.

Effective last week on April 24, 2012, Customs and Border Patrol (CBP) announced a new procedure that benefits those trademark registrants who record their marks with the agency. CBP will now

disclose to an intellectual property right holder information appearing on merchandise or its retail packaging that may comprise information otherwise protected by the Trade Secrets Act, for the purpose of assisting CBP in determining whether the merchandise bears a counterfeit mark. Such information will be provided to the right holder in the form of photographs or a sample of the goods and/or their retail packaging in their condition as presented to CBP for examination and alphanumeric codes appearing on the goods. The information will include, but not be limited to, serial numbers, universal product codes, and stock keeping unit (SKU) numbers appearing on the imported merchandise and its retail packaging, whether in alphanumeric or other formats. These changes provide a pre-seizure procedure for disclosing information about imported merchandise suspected of bearing a counterfeit mark for the limited purpose of obtaining the right holder’s assistance in determining whether the mark is counterfeit or not.

See Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border (Federal Register, 4/24/12). For the full Federal Register notice, see here: (see Sect. 818(g) in particular).

In other words, if Customs has information about a counterfeit, in addition to possibly stopping the shipment, will provide the trademark holder with information regarding the shipment. This is additional trademark monitoring and investigation that could save trademark owners a great amount of time and money to gather details about infringers that could be used to make demands (e.g. ‘cease and desist’ letters) or to use in court, including seeking injunctions.

The new policy is part of the NATIONAL DEFENSE AUTHORIZATION ACT – FOR FISCAL YEAR 2012, but the provision does not appear to be limited to only “defense” related products.

For more details about the “how’s” and “why’s” of recording a trademark registration with Customs and Border Patrol, see:

Update: US Customs will work to protect your trademark

Anatomy of a U.S. Customs Recordation

U.S. department of Customs and Border Patrol (“CBP”) recently issued its Fiscal Year 2011 Seizure Statistics (PDF).

CBP has many duties. One is to deal with counterfeits and intellectual property violations in international trade. Trademark owners can record their registered trademarks with Customs who will then help monitor imports at the border.

I was fortunate to receive a tour in December of the National Intellectual Property Rights Coordination Center in Arlington, Virgina, along with Associate Mark Donahey and intern Dwight Greene.  See photos below. The Center coordinates communications and action between a number of government agencies and departments that have an interest in intellectual property protection, counterfeiting, and securing our borders. And the IPR Center has a great slogan: Protection is Our Trademark.

Here are some of the interesting details from the 2011 report:

The total number of IPR seizures in FY 2011 increased by 24% compared to FY 2010, which is a 325% increase over the past decade.
• The domestic value of all IPR seizures in FY 2011 decreased by 5.2% compared to FY 2010.
• The number of low-value (under $1,000) IPR seizures in FY 2011 increased by 3,872 over FY 2010. This increase in low-value seizures accounts for 80% of the overall increase in seizures for FY 2011.
• The average domestic value for an IPR seizure dropped to $7,193 in FY 2011 from $9,425 in FY 2010.

• In FY 2011, the number of seizures at mail and express courier facilities increased by 16% compared to FY 2010,

 To read the full report, see here.

Related posts:

Update: US Customs will work to protect your trademark

Posted by ipelton on: September 13th, 2011

I wrote on this blog more than 18 moths ago about an under utilized benefit of U.S. trademark registration. Owners of federal trademark registrations for goods can file to record their trademark with U.S. Customs.  Customs agents will then be on the lookout for infringers and knock-offs – policing your trademark for you.  And the cost for Customs recordation is just $190 per International Class of goods.

Here are a few recent articles and press releases demonstrating why this small expense can be well worth the cost – particularly for maker of physical goods that are manufactured, imported or exported abroad:




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