What every business person should know about border protection for intellectual property; recording with the Customs Service.

• Author: Joffrion, Clayton J.

The saying once was that if you build a better mouse trap the world will beat a path to your door. Today, if you build a better mouse trap, your competition may beat a path to your customers' doors. So, how are customers to identify your better mouse trap? Obviously a patent can offer protection as can a trademark. But what can you do if you are worried that your competitors will be outside the United States?

How will you keep a watch on all of your competitors? What if someone brings mouse traps just like yours into the country and sells them? What if a foreign competitor labels its mouse traps the same as yours and the purchasers think they are buying your product? How much will it cost to keep up with all of this information? Are there companies which can be hired to monitor the problem for you?

The solution to this serious problem is actually much less complicated and expensive than you might expect. Because of its unique position of monitoring imports and exports, the U.S. Customs Service can provide assistance. The procedure is to record your trademark, trade name, copyright, or patent information with the Customs Service. As each is different, each of the procedures and limitations will be reviewed.

Trademarks and Trade Names

If the U.S. Patent and Trademark Office has registered a trademark, a status copy of the certificate of registration and five copies can be recorded with the Intellectual Property Rights Branch of the U.S. Customs Service.(1) The address will appear in the regulations published at 19 C.F.R. [subsections] 133.1 et seq. While no special application form is provided, the regulations do set out the information that must be included. The regulations require that 8 x 10 1/2 inch paper be used for the application. The current cost is $190 per class of goods based upon the classes listed on the certificate. The recordation remains in force concurrently with the 20-year trademark registration period and may be renewed. The regulations also establish rules for change of ownership of a recorded trademark.

There is no federal trade name registration without trademark registration, thus there is no certificate which can be issued for trade names. A trade name or trade style used for at least six months may be recorded to identify a manufacturer or trader.(2) Trade names are different from trademarks although the same mark or symbol may be used for both purposes. If a symbol is also used as a trademark, it cannot be recorded with the Customs Service as a trade name without regard to whether or not the mark has been registered with the Patent and Trademark Office. In other words, the trademark protection is assumed to be adequate.

Because there is no central national registry for trade names registration,(3) after an application to record the registration is filed, the proposed trade name is published in the Federal Register. Interested parties may oppose the recordation but, of course, this requires one to review the Federal Register.

After consideration of opposition, the Customs Service publishes a notice of final approval or disapproval in the Federal Register and the Customs Bulletin. This is very important as a Louisiana company which enjoys a state trade name registration with the secretary of state of Louisiana may lose the right to object to registration by someone from another...