[Code of Federal Regulations]

[Title 19, Volume 1]

[Revised as of April 1, 2005]

From the U.S. Government Printing Office via GPO Access

[CITE: 19CFR133.2]



[Page 702]

 

                        TITLE 19--CUSTOMS DUTIES

 

   CHAPTER I--BUREAU OF CUSTOMS AND BORDER PROTECTION, DEPARTMENT OF 

              HOMELAND SECURITY; DEPARTMENT OF THE TREASURY

 

PART 133_TRADEMARKS, TRADE NAMES, AND COPYRIGHTS--Table of Contents

 

                   Subpart A_Recordation of Trademarks

 

Sec.  133.2  Application to record trademark.



    An application to record one or more trademarks shall be in writing, 

addressed to the Intellectual Property Rights Branch, U.S. Customs 

Service, 1300 Pennsylvania Avenue, NW., Washington, DC 20229, and shall 

include the following information:

    (a) The name, complete business address, and citizenship of the 

trademark owner or owners (if a partnership, the citizenship of each 

partner; if an association or corporation the State, country, or other 

political jurisdiction within which it was organized, incorporated, or 

created);

    (b) The places of manufacture of goods bearing the recorded 

trademark;

    (c) The name and principal business address of each foreign person 

or business entity authorized or licensed to use the trademark and a 

statement as to the use authorized; and

    (d) The identity of any parent or subsidiary company or other 

foreign company under common ownership or control which uses the 

trademark abroad. For this purpose:

    (1) Common ownership means individual or aggregate ownership of more 

than 50 percent of the business entity; and

    (2) Common control means effective control in policy and operations 

and is not necessarily synonymous with common ownership.

    (e) Lever-rule protection. For owners of U.S. trademarks who desire 

protection against gray market articles on the basis of physical and 

material differences (see Lever Bros. Co. v. United States, 981 F.2d 

1330 (D.C. Cir. 1993)), a description of any physical and material 

difference between the specific articles authorized for importation or 

sale in the United States and those not so authorized. In each instance, 

owners who assert that physical and material differences exist must 

state the basis for such a claim with particularity, and must support 

such assertions by competent evidence and provide summaries of physical 

and material differences for publication. Customs determination of 

physical and material differences may include, but is not limited to, 

considerations of:

    (1) The specific composition of both the authorized and gray market 

product(s) (including chemical composition);

    (2) Formulation, product construction, structure, or composite 

product components, of both the authorized and gray market product;

    (3) Performance and/or operational characteristics of both the 

authorized and gray market product;

    (4) Differences resulting from legal or regulatory requirements, 

certification, etc.;

    (5) Other distinguishing and explicitly defined factors that would 

likely result in consumer deception or confusion as proscribed under 

applicable law.

    (f) Customs will publish in the Customs Bulletin a notice listing 

any trademark(s) and the specific products for which gray market 

protection for physically and materially different products has been 

requested. Customs will examine the request(s) before issuing a 

determination whether gray market protection is granted. For parties 

requesting protection, the application for trademark protection will not 

take effect until Customs has made and issued this determination. If 

protection is granted, Customs will publish in the Customs Bulletin a 

notice that a trademark will receive Lever-rule protection with regard 

to a specific product.



[T.D. 72-266, 37 FR 20678, Oct. 3, 1972, as amended by T.D. 91-77, 56 FR 

46115, Sept. 10, 1991; T.D. 99-21, 64 FR 9062, Feb. 24, 1999; T.D. 99-

27, 64 FR 13675, Mar. 22, 1999]