They Are From The Government and Are Here To Help You. Really.

Intellectual property owners should not overlook a valuable tool in protecting their assets from infringement from abroad – the U.S. Customs and Border Protection (“Customs and Border Protection”) division of the Department of Homeland Security. This agency offers a very cost effective opportunity for companies to exclude counterfeit, confusingly similar, and/or inferior goods into the U.S.. Depending on the nature of what is being imported, Customs and Border Protection can exclude, detain, seize or cause the forfeiture goods imported, introduced or shipped in or through the United States.

In order to take advantage of the services of Customs and Border Protection, an owner of a registered trademark, trade name or copyright should record its mark or copyright with Customs and Border Protection to prevent the entry, or attempted entry, of infringing products into the U.S.. One should use the electronic recordation program provided by Customs and Border Protection. The cost is $190 per application and it is much less cumbersome than filing a paper form. See, http://www.attts/apps.cdp.gov/e-recordation/.

After registration, the IP owner should open an ongoing dialog with Customs and Border Protection concerning unique characteristics of the protected products as well as guidance on identifying suspected counterfeit or infringing products. Under this “application process,” owners of registered and recorded trademarks may, and should, provide updated information designed to assist U.S. Custom Inspectors in intercepting illegal imports. Ideally, an IP owner should submit sufficient information to support a “Trade Alert,” which will be directed to all ports of entry throughout the country. The more information an IP owner can provide to an inspector to make a decision as to what is real, and what is counterfeit or infringing, the better. Of course, the IP owner should update this information regularly.

In summary, significant protection is available from the federal government for IP owners at a low cost. Surprising? Maybe. Worthwhile? Absolutely.

Steve Dorvee is a partner and member of the Litigation Group and Intellectual Property Team at Arnall Golden Gregory LLP (stephen.dorvee@agg.com). Our firm serves the business needs of growing public and private companies, helping clients turn legal challenges into business opportunities. We don't just tell you if something is possible, we show you how to make it happen. Please visit our website for more information, http://www.agg.com/.