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>> Welcome and thank you for standing by.
At this time, all participants have been placed
on listen-only mode.
To ask a question at any time during to this conference,
please press star followed by one on your touchtone phone.
Today's conference is being recorded.
If you have any objections, please disconnect at this time.
I would now like to turn the conference over to Janice Wingo,
with the International Trade Administration, you may begin.
>> Thank you and welcome to today's webinar.
This is a part of the China IP Webinar Series
that there's two parts for this webinar.
Today's part will be
with Attorney-Adviser Alaina van Horn.
She works for Customs and Border Protection, and she's going
to explain to us how to record you IP with US Customs
and Border Protection.
Then there will be the complimentary webinar
to this webinar which will be on April 9th,
and then we will have a US-- an Italian Attorney who works
in China and he will dis--
he will explain to you how you pre-record your Chinese IPR
with Chinese customs.
But first, let's go to Alaina.
Just to give you a little bit of a background about Alaina.
She is an Attorney Adviser with Customs
and Border Protection here in Washington DC.
She has her J.D. degree from Catholic University and in LL.M
from George Washington University.
She has a couple of international certificate.
One of which is in International Negotiation and Mediation
from Humboldt University in Berlin.
And she also has another certificate,
International Business
from a Polish University called Jagiellonian [inaudible].
Ms. van Horn has numerous and a lot of experienced
on recordation working with CBP.
She said that she would be happy to receive questions
in the middle of her presentation.
So, just as the operator said, if you have a question, dial in
and she'll be happy to answer them.
There will be questions and answers at the end
and also Ms. van Horn's e-mail address will be at the end
so you can e-mail her directly if you have other questions.
But other than that, Alaina you're on.
>> Okay. Thank you very much.
Good afternoon everyone, thank you for joining us.
Again, my name is Alaina van Horn, within CBP,
I worked in the Office of International Trade
in the Intellectual Copyright branch.
So here, I'm just going to over a brief overview
of our authorities before I get
into specifically how you can record your IP with us.
[ Pause ]
First, oh, this went too fast.
Let me check.
CBP has the legal authority to detain seize, forfeit,
and destroy IPR infringing goods with respect
to trademarks and copyrights.
This is due to customs having access issue authority,
meaning that we are the confident authority
to make infringement determination.
This is very unique compared to other countries
who usually require some sort of judicial order in order
to take action against the merchandise.
Here at CBP, we do not.
It's a great power.
[ Pause ]
So our registration and recordation system,
that we have a two-tier protection system.
As you know, registration relates to the acts
of filing a trademark with the USPTO, or copyright
with the US Copyright Office for a federal registration.
Recordation refers to the act of bringing this registration
to Customs and Border Protection, particularly
to the IPR Branch here at Headquarters where I work
in order to protect against the importation of infringing goods.
The distinction between registration and recordation is
that seizure is not always possible under our US laws
for goods that violate unrecorded rights.
[ Pause ]
More on the importance of recordation, as I said,
the legal authorities for detaining, seizing
and forfeiting merchandise are different depending
on whether the trademark or copyright is recorded with CBP.
Recorded trademarks
and copyrights are afforded more protection
than those that are unrecorded.
Increased CBP enforcement is also another benefit.
It's our policy to focus our resources
on the enforcement of recorded rights.
And recording your mark will also grant you greater scope
of protection against confusingly similar marks
on the use of the related goods doctrine.
Enforcement is in rem and not in personem,
meaning that action is taken against the goods themselves
and not the individual.
Accordingly, for recorded rights, intent does not need
to be established in order to find a violation.
Another benefit is that right holders are then notified
of information regarding the importer, exporter,
and foreign manufacturer of infringing merchandise.
And also penalties may be assessed against importers
as a deterrent to future violations.
We have three electronic databases
and they are all administered by the IPR Branch in Regulations
and Rulings, Office of International Trade.
Again, this is my office where I'm currently calling from.
Our telephone number and fax number is below.
The first e-mail address is
for any general questions you might have, hqiprbranch@dhs.gov
and specifically, if you have any questions
about our recordation system,
the contact that you should use is iprr.questions@dhs.gov.
So here is an outline of our systems.
First, all of the right holders' information is collected
in something called IPRR, that's listed as system one up top,
the Intellectual Copyrights e-Recordation System.
We asked the importer to put in more information
in this application then they have previous--
previously disclosed either the USPTO
or should be US Copyright Office.
We used this extra information only in our internal website
for law enforcement purposes.
This is IPRIS, the Intellectual Property Rights Internal Search.
Such information, we'll go over there in a few slides,
such as licenses, country of manufacture,
any type of law enforcement information
that would help customs protect
that right will be found in IPRIS.
Then third, we have a public system.
IPRS, Intellectual Property Rights Search is a publically
searchable database by which the public can see what rights have
been recorded with CBP.
This only discloses a very, a much smaller set
of information than does IPRIS.
And we'll have-- you'll see a screen shot of that in a second.
So, what happen?
This is the recordation process.
The right holder enters their information
into the electronic form, it's in the IPRR.
Like I said, law enforcement sensitive information is only
made available to CBP personnel.
And we use this information to monitor shipments
and to prevent importation and exportation of infringing goods.
Only some of the information provided
in the IPRR is made available to the public
in the searchable database online, which is IPRS.
Here is the link to how you would start your application
with CBP to record your trademark for copyright.
Here also, if you to the public site cbp.gov, if you click
on trade and then click on protect your IPR
by recording your trademark and copyright with the arrow points,
it will take you to this green which links directly
to the IPRR, the Intellectual Property Rights
e-Recordation System.
Here is the screen shot of the opening.
It will give you a little bit of information about what you're
about to enter into database and also, it will supply with links
to the regulations for your review.
Once you enter this database, you'll be able
to choose either trademark or copyright.
Any number that you out in here is we are going to have
to receive a positive response from either the USPTO
or the US Copyright Office, that a registration
of that number actually excess.
Once an existing registration number is put in here
and in this screen, the top blue arrows pointing
to what was entered.
The rest of this information
that you see has been automatically populated.
And it's been automatically populated
by the informations found on the uspto.gov website
which is publicly available.
So the right holder does not need
to enter this information again.
However, we will ask you additional question here.
Well, ask for a little bit more contact detail regarding the
right holder and the point of contact
or maybe even the attorney of record.
Once more.
We'll ask for the specific class of goods and this--
the class of goods from the USPTO registration does not
transfer over directly to the recordation,
so you need to make sure that however many class of goods
that you want recorded is absolutely stated
in this application.
And I'll tell you a little bit more
about why that's so importance later.
After this, we ask you to upload images.
If it's of your trademark, we would like basically
to see just an enlargement of what appears
on the USPTO registration certificate
and maybe even how your mark appears on good in merchandise.
For a copyright, we asked that you upload at least five images
of that either design, visual work or audio visual work.
And that if it is a sound recording,
that is adequately described.
Here just shows you how you upload your images.
Then payment, at the end, it's 190 dollar per class of goods
to record our customs.
So if you have the trademark and you would like to record it
for two classes then you would have
to pay 190 dollars plus 190 dollar, so 380.
For copyrights, since there is no class of goods,
it just flat fee of 190 dollar.
The benefits of this is that eliminates the paper application
and a copy of the certificate actually issued
by the registering agency is no longer required be produced.
However, you must hold on to this piece
of paper for up to six months.
You can make payment by credit card check or money order.
You're also-- the ability to upload images
of the protected work or trademark.
It helps CBP enforce your mark
by eliminating the need to send us samples.
This also reduces the time from filing in application
to actual enforcement by field personnel.
IPRR is only used for "new" recordation.
If a recordation is has already been recorded in the past
and it needs to be renewed, you should do this via e-mail
and here is the e-mail link.
And as I said earlier, since we do
that require the physical paper of the underlying registration,
we just ask that you retain a certificate and be prepared
to provide it upon request.
Any questions up to this point?
>> Thank you, as a reminder, if you would
like ask a question, please press star 1.
>> Okay, I'm not seeing any questions in the Q&A either
so I'll just proceed with this portion.
So system 2, this is the internal search system
that collects all of the data that was put into IPRR.
It is only searchable by CBP personnel but they need to know
and this also extends countrywide.
Here is the screen shot of what the internal system looks like.
It's similar to the public system except that you see
at the top right in purple, it says product ID manuals.
That is a another enforcement tool that we used
with the online recordation system
and that the right holder can upload it
and identification guide which-- it could explain how to check
for like adequate logos, how to authenticate merchandise
through products numbers or examples I've just,
you know, visual inspection.
This helps the field greatly.
This is-- if I selected one of these recordations in IPRIS.
I have done deleted the information
that could be potentially sensitive here.
But as you can see, the name will be shown, the product,
the class of goods, owner name, contact information,
license the information,
sometimes even the manufacture information will be listed
and the country and manufacture.
And here, you can see Sharpie had uploaded two
of there images of their marks.
That arrow at the fourth and top arrow also points
to something called gray market importations--
it's possible to get gray market protection here with CBP.
If you do so, it would be indicated here
in the IPRIS system.
>> Alaina, could you just stop a little bit and explain
about gray market protection to the listeners?
>> Oh, sure.
So, gray market protection is something
that you can apply for with us.
And I'm keep looking for the applicable regulation right now.
It's 133-23, what the gray market articles are foreign made
articles that they bare a genuine trademark
or trade name that's identical with
or substantially indistinguishable from one owned
and recorded by a citizen in the United States or corporation.
And it's imported without the authorization of the US owner.
So restricted gray market goods, you can apply for this through--
to us through 133-23 and it'll list the information
that is required in that regulation for you
to put forward to CBP.
Any other questions on that?
[ Pause ]
No questions?
Oh wait, I see one in Q&A.
Okay, no nothing rick me up, So, I'll keep going forward.
>> Alaina?
>> Uh-hmm?
>> I can ask the question, someone has e-mailed it.
>> Sure.
>> Is gray market goods
under CBP protection include reimported goods?
>> Do they include reimport--
I believe that would fall that would still--
it's very rare for a trademark
to receive gray market protection because of the--
usually, there are some sort of business relationship
between the two companies.
The two companies have to actually be separate in order
to get gray market protection.
So as long as those four elements that I stated before
that the articles foreign made
that if there's a genuine trademark
and that this trademark is identical
or substantially indistinguishable from one owned
by an owner in United States, and it's imported
without the authorization of that owner,
then it can be eligible for gray market protection.
So let say, a gray market article enters the United States
and you're asking if it's been re-exported.
>> I think that's what the listeners asking.
>> Okay, well if that merchandise there is to mark
that does not have gray market protection, nothing will happen.
If it does have gray market protection,
I believe it's still would be subject to seizure.
[ Pause ]
>> If a listener has any additional questions on that,
Alaina has generously said that she would answers ask questions
on e-mail address and her e-mails at the end
of the presentation, if you like to follow
up on that issue with her.
>> Okay, thank you.
Yes, there's a lot of questions that go along
with gray market protection, how to apply for it,
what is that mean, et cetera.
So, I hope you follow up with me.
So, back to this slide that we're looking at,
this arrow is just pointing
to where you can find the product's ID manuals.
And this is just a list of what we have received so far.
So for example, Adidas had provided us
with the product guide, Adobe, American Eagle,
and I can't show you the content of this guides but basically,
they just contain clues
for authenticating genuine merchandise.
They also offer contact names in order to find updated list
of licensees and any other importers that are authorized
to import their merchandise.
A sample of this product's ID guide is available at this link.
It will show you exactly what we expect in the guide,
and if you're recorded with us, it's not a requirement,
but you can definitely file one with us and I believe
that strongly that it helps enforcement efforts.
So this is the third system, the public database.
IPRS, it's located on cbp.gov, so accessible by anyone.
This is a screen shot of the administrative interface here.
Keyword, I just put in Nike, common mark.
Wherever the word Nike gets a hit,
that recordation will come up.
Here, I pulled up one.
As you can see the difference between the internal system
and this public system is
that there's no images associated here.
There's no images of the mark,
and there would be no images of the copyright.
All that stated in the public system is the trade--
this CBP trademark number, the title, the products for which
that mark is registered and recorded, the owner,
and then briefly just at the contact name
of the representative.
So we have another system in order
to help enforcement effort at the border.
It's called e-Allegation.
This is in system to report illegal import
and export activity.
e-Allegations can be filed by both CBP employees
and any member of the public.
You will get a confirmation e-mail back.
Let me just go ahead and show you the link to that.
[ Pause ]
This slide isn't advancing.
[ Pause ]
>> This is Wendy.
Are you willing to go on?
>> Okay, there-- my computer is having connection problem
so I apologize.
[ Pause ]
Just to get back where we were.
Okay, is everybody with me?
Online?
>> Yes, we're now viewing 538.
>> Okay, thank you.
Oh yeah, I apologize for that.
This computer is extremely slow and was not advancing.
So, this e-Allegation system,
it's used to report illegal trade activity,
anything from quota circumvention
or misclassification,
intellectual property rights infringement
and a health and safety issues.
Here's the link.
It's on cbp.gov.
Once you submitted an e-Allegation, it will be sorted
into the different categories and forwarded
to the appropriate authority.
Here is the submission page report trade violation.
And it will ask the information, your name, contact number,
violation description.
Even if you know specific information such as
who the violator is, you may put that in.
So, as we realize, both the government
and industry has invested interest
in protecting intellectual property rights.
The government wants to protect revenue health and safety
of its citizens and the industry also would
like their brand protected as well as their market share.
So, we require your participation in order
to have an effective border enforcement program.
You are responsible for notifying us
if there is the change in ownership or a change in name
of the owner on your recordation.
You're also responsible for renewing your recordation.
And recordations are good for 20 years
and there was a link earlier on the slide show
where you can renew your application.
Right holders are responsible
for updating the contact information in their recordation
and they're also responsible for updating the class of goods,
licensees and countries of manufacture in that recordation.
Any questions?
>> As a reminder, to ask in audio question,
please press star followed by 1 on your touchtone phone.
[ Pause ]
I'm currently showing no questions.
>> Okay, let me just click then to my contact information.
Feel free to contact me if you have a question about anything
that I've discussed or anything else regarding the recordation
process with Customs and Border Protection.
>> Thank you, Alaina.
>> Oh, you're welcome.
>> I have a question while we're waiting
for listeners ask a question.
You mentioned that this is only for a trademark and copyrights
that have been registered with the US Copyright Office
or US Patent and Trademark Office
>> Correct.
>> What happens if you have a patent?
>> Well, Customs and Border Protection does not have
independent authority to enforce patent.
What-- the only way we do so is through exclusion orders issued
by the International Trade Commission.
And exclusion orders are issued for violation
of section 337 of the Tariff Act.
So once that-- it once in order, it's handed down from the IPC,
customs will put out a trade advisory and good subject
to that order will be excluded.
>> Okay, just to let the listeners know,
that's the third part of our presentation,
we do have an attorney up in Boston
who will be giving a presentation on how
to apply for a 337 order.
>> Oh great, great.
>> So along with an Alaina talking
about CBP recorded today, we also like I said, on April 9th,
we have a presentation.
It's at 9:30 in the morning in eastern on how to record
with a Chinese custom.
And then, later in the month,
we'll have a presentation on inclusion orders.
>> Oh I see some of the questions now.
Let see. Okay, I have a question
from someone asking what is involved
in updating licensee list, et cetera, is there a fee
or simply a submission of data?
There is not a fee for updating licensee list
or country of manufacturer.
You can do so with any time by using
that e-mail address that starts IPRR.
We have the two members of our staff
that are devoted exclusively to administrating the IPRR system
and keeping it up-to-date.
Another question, is there any alert companies receive
from the PTO when they go there to also go to CBP?
Good question.
We have tried to work with the USPTO to get a link on this--
the page you receive when you successfully register that says
if you would like to increase protection,
here is the link to CBP recordation.
At this point, we do not have such a link available
but we are still working on it.
So the answers to that is no.
Currently, companies are not alerted from the PTO
that they need to record with CBP.
And I think that's all I have here.
>> And I'm currently, showing no audio questions.
>> Okay.
[ Pause ]
Okay, yeah and so there is no more questions
that were submitted via e-mail.
>> However, for anybody who is listening
to other recording of this.
Ms. van Horn said that she would be happy to take questions
and you can reach here at her e-mail address which is
on the slide shown or call her at her office at Customs
and Border Protection on 9th Street.
[ Pause ]
I also like to share on my listeners
that this other reporting will be--
will be closed caption and then later uploaded
to our stopfakes.gov website, the new revised website.
We're revising the website in soon,
all the webinars will be a closed caption
so everyone can view them.
However, I will also post a copy of Ms. van Horn slides
on the website before we get to closed captioning done that way,
anyone can look at her slide and then contact her
if they have additional questions.
[ Pause ]
Well, if there no other questions,
I want to thank Alaina van Horn.
She's the Attorney-Advisor with Customs and Border Protection
and explained to us how we can record our copyrights
and trademark with CBP.
And I look forward to your participation--
oops, there's another question.
>> Okay. I see it.
>> Someone ask will slides
from previous presentations be available on website?
>> Actually that depends on the person who created those slides.
Ms. van Horn that should be happy to for slides up there,
other presenters said that they're not happy
to put their slides up there.
So, and it depends on a presenter by presenter.
You can always contact the presenter and ask that presenter
for a slides then he can choose to put that,
send them to you or not.
With the FTP recording, you can view the slides
and hear the video at the same time.
Alaina again, I want to thank you for taking your time.
>> Oh, no problem--
>> To do this presentation.
>> Sure, I hope everything was clear.
If not, like I said, feel free to contact me.