The Gray Blog

Lets be honest, its been a slow news week for the gray market so I have to dig up some general material. Here are some practice pointers for recording your trademark or copyright with the U.S. Customs service. Although it may be basic to some of you I hope it will be helpful to others.

U.S. Customs and Border Protection (CBP) allows you to record your registered trademarks and copyrights in order to target, intercept, detain, seize and forfeit shipments of counterfeit goods. In the case of trademarks, depending on whether the registered trademark is now owned by the same trademark owner of a related entity abroad, CBP can also take steps to stop parallel market goods from abroad. Here are 10 practice pointers for recording your trademark or copyright with CBP:

• You can record your mark or copyright electronically on the CBP web site.
• If you choose not to record on-line, use the formal a pplication and not your own form — the Customs person inputting the form wants to see a familiar document.
• When you fill out your application for a trademark, if you want parallel market protection, be sure to select whether you are claiming a restriction or not. A mark is only entitled to a restriction if the trademark owner in the US does not own, directly or through a commonly owned entity, the same mark in another country. Document the ownership difference for foreign registrations in your file.
• If you are claiming a restriction, print it out in bold letters so that the examiner does not miss the request. These are busy people going through a lot of paperwork.
• When identifying the authorized importers, try not to list an entity that may change in name or in affiliation to your client’s company. You can always modify the list later but every change incurs a delay and risks a mistake.
• Do not just rely on the recordation. Select your most suspected ports of entry and send the import specialist group at the port a full packet of supporting papers– the packet should include a letter discussing the product and advising them that the mark is recorded, sample photos, sample products and information identifying probable unauthorized importers or sources of counterfeit goods.
• Send periodic follow-up refresher packets like the one described above to each key port of entry.
• Visit the relevant port and speak to the import team, if possible — the better your rapport with the team and agents, the more they will work to police your client’s marks.
• If you have the resources, prepare a presentation for ports that are particularly affected.
• Immediately contact the relevant port of entry if you identify an entity trying to import counterfeits. However, be careful to avoid claims of tortious interference if you do not have credible evidence.
• Get to know the Intellectual Property Rights Branch at CBP headquarters. They can answer questions and help to solve problems when a local port misconstrues the law.
• Be patient. CPB employees work under very heavy workloads. Loosing your temper and alienating the specialist or agent will not help you or your client.
• Be persistent. A call a week when you have a specific matter pending keeps you on the radar.

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