Do you have a trademark or copyright filed with the United States Patent and Trade Office (USPTO)? While registering your intellectual property (IP) with the U.S. government is necessary to protect against infringers, it is only half the battle. IP owners need to have robust monitoring processes in place to find and enforce against infringers. Fortunately, U.S. Customs and Border Protection (CBP) can help you monitor for infringing merchandise at ports of entry through the CBP recordation program.
What is CBP Recordation?
The purpose of recording a copyright or trademark with CBP is to partner with the agency to prevent the unauthorized import or export of merchandise which bears a recorded trademark or copyright. CBP has the authority to seize, detain, forfeit, and even destroy merchandise entering or leaving the U.S. if it infringes on a valid trademark or copyright that has been subsequently recorded with the agency.
Once a trademark or copyright is recorded with CBP, the owner’s information is entered into an electronic database accessible to over 60,000 U.S. Customs officers in the United States and overseas. CBP uses the information to target shipments and physically examine merchandise which ultimately prevents the importation or exportation of infringing goods. As of 2021, the number of active recordations with CBP is 20,756.
Gray Market Protection
Some IP owners may also be eligible for “gray market” protection, which pertains to genuine products bearing a trademark or brand name approved for use in a country outside the U.S. Gray market goods are different from counterfeit goods markets because counterfeit goods are never genuine.
CBP provides limited protection to rights owners against importations of certain gray market goods. Only trademarks and trade names recorded with CBP are entitled to gray market protection. Gray market protection is only offered when the following two conditions are met:
- The U.S. and foreign marks are not owned by the same person.
- The U.S. and foreign mark owners are not a parent or subsidiary of one another or otherwise subject to common ownership or control.
The bar to qualify for gray market protection is high, be sure to work with a CBP attorney when seeking your gray market recordation.
Advantages of Recording your IP with CBP
There are significant benefits of partnering with CBP to enforce your IP rights.
Lessens the Monitoring Burden
CBP monitors and seizes infringing merchandise at all 328 ports of entry, vastly assisting trademark or copyright holders protect their IP against infringers. CBP’s proactive approach streamlines the monitoring process and makes it easier to identify and prosecute unauthorized distributors, importers, and retailers.
Aids in the Prosecution of Counterfeiters
CBP has the authority to impose monetary fines (for civil penalties the amount of which is the MSRP if the items were legitimate) on individuals facilitating the introduction of counterfeit merchandise into the U.S. The agency can also request the U.S. Attorney’s Office to criminally prosecute those engaged in illegal activities under the Trademark Counterfeiting Act of 1984. Criminal penalties for first-time violators include up to ten years imprisonment and/or a $2 million fine. Repeat offenders face up to 20 years imprisonment and/or up to a $5 million fine.
CBP collaborates with foreign law enforcement agencies and coordinates global raids on counterfeit production facilities. Customs officers stationed at American embassies worldwide regularly share information for the criminal prosecution of exporters and manufacturers of counterfeit goods.
Does CBP Really Care About Infringing Merchandise?
CBP takes Intellectual Property Rights (IPR) enforcement very seriously. CBP even monitors shipments that are not even destined for the U.S. but are merely in transit.
The agency employs a multi-layered, risk-based approach to enforce IPR that includes targeting shipments based on intelligence and engaging in collaborative operations between CBP, industry, and rights holders.
CBP also participates in industry-led product identification trainings where rights holders educate officials about their specific products and help them distinguish between authentic and inauthentic products.
CBP has an impressive enforcement track record. 2021, CBP made over 27,000 seizures with an estimated MSRP of over $3.3 billion, representing an increase of 152% over the previous Fiscal Year. In 2021, CBP, along with ICE-HSI, arrested 388 individuals, obtained 155 indictments, and received 100 convictions related to intellectual property crimes.
How to File with CBP
Trademark and copyright recordations are filed online through the U.S. Customs’ IPR e-Recordation system, adhering to the regulations outlined in 19 C.F.R. Part 133.
Rights holders must submit the following information for recordation:
- Description of copyright or trademark registered with the USPTO
- Country of manufacture of goods bearing the trademark or country of manufacture of phonorecords or genuine copies of the copyright work
- USPTO Registration Number
- Names of any subsidiaries, parent companies, or other entities that are under common control or share any ownership interest or relationship with, the U.S. trademark owner, or the names of all parties authorized to reproduce or use the copyrighted work
CBP charges a flat fee of $190 per class of goods you wish to record. Once your recordation application has been approved, you may view your CBP recordation using the Intellectual Property Rights Search (IPRS) database.
You must also renew your recordation every 10 years (note the renewal for CBP coincides with your USPTO renewal date for TM’s).
Work With a Customs Attorney to Record Your IPR with CBP
CBP can be a company’s greatest and most cost-effective ally when it comes to trademark and copyright enforcement. However, CBP’s enforcement capability is only as good as the information you provide to them. Diaz Trade Law works with you to provide detailed information regarding your IPR so that CBP is in the best position to monitor and enforce against infringers. For help with your recordation, get in touch with us at email@example.com.
Read more about CBP’s recordation program:
- U.S. Customs – Your Personal Policeman at the Border
- What is a Recordation with U.S. Customs and Border Protection?