Editor's Notes: Participation in CBP's Recordation Program is one of the most effective ways for intellectual property rightsholders to protect their brand at the border. If you took the time to register your trademark or copyright with the USPTO, then consider taking the extra step to record that trademark or copyright with CBP. This article covers: (i) the difference between registration and recordation; (ii) key benefits of recording with CBP; (iii) how to record with CBP; and (iv) how CBP enforces IP infringement at the border.
The Most Effective Way to Protect Your Brand at the Border
For Intellectual property (IP) owners in the United States, obtaining a trademark or copyright registration is a critical step to protect their work. However, registration is only half the battle. IP owners need to have robust monitoring processes in place to find and enforce against infringers. That's where U.S. Customs and Border Protection (CBP) comes in. Through CBP's recordation program, brand owners can enlist tens of thousands of CBP officers as their first line of defense against infringing imports at all 328 U.S. ports of entry. This proactive strategy empowers rightsholders to leverage federal enforcement power at the border—stopping counterfeits before they hit the market.
IP Registration vs. Recordation
The U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office are responsible for granting trademark and copyright registrations in the U.S. When approved, the registration provides nationwide protection for the work, and the IP owner has exclusive rights to use the work. However, enforcement of the registration is up to the rightsholder.
CBP's recordation program enables registered rightsholders to partner with CBP to prevent the importation of goods that bear a protected trademark or copyright. CBP has the authority to detain, seize, forfeit, and ultimately destroy merchandise seeking entry into the United States if it bears an infringing trademark or copyright that has been both registered and recorded with CBP.
Rightsholders may submit an application to CBP to record federally registered trademarks and copyrights. Once a trademark or copyright is recorded with CBP, the owner's information is entered into an electronic database accessible to tens of thousands of U.S. Customs officers in the United States and overseas. CBP uses the information to target shipments and physically examine merchandise, and assist in preventing the importation or exportation of infringing goods. CBP does have seizure authority over imports and exports, and even in transit goods that stop in the U.S.
When a seizure occurs, CBP notifies the rightsholder and provides detailed intelligence, in accordance with 19 C.F.R. §133.21, about the importer, manufacturer, and the infringing goods. This information can be leveraged by the rightsholder to build broader enforcement and litigation strategies.
Currently, CBP maintains tens of thousands of active recordations. The U.S. is not the only country with a recordation program. China, for example, actively enforces intellectual property rights for both importations and exportations. Companies that do business in other countries should seek protection through similar recordation programs as well.
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, per 19 C.F.R. §133.23:
- 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. Currently, Phillip Morris is an example of a company that has been able to meet this stringent burden, and CBP offers its trademarks gray market protection.
Key Benefits of Recording with CBP
Recording with CBP is one of the most cost-effective ways to protect your brand from counterfeiters and bad actors.
Lessens the Monitoring Burden
CBP monitors and seizes infringing merchandise at all 328 ports of entry, vastly assisting trademark or copyright holders in protecting 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.
National, Cost-Effective Protection
CBP's recordation program is in place across the country at all U.S. ports of entry. No matter where counterfeit or infringing goods attempt to enter the country, CBP officers have the authority and tools to intervene. Unlike other enforcement mechanisms that may be limited by geography or jurisdiction, CBP's recordation program provides a uniform layer of protection across the entire United States. Additionally, the recordation filing fees are relatively low compared to the potential costs of litigation or private monitoring.
Access to Enforcement Intelligence
When CBP seizes infringing goods, they notify the rights owner and provide valuable enforcement intelligence, such as:
- The port of entry
- The description of the merchandise and quantity
- Country of origin
- Name and address of the manufacturer, exporter, and importer
- Photos or a physical sample of the seized merchandise
Deterrence
All recorded trademarks and copyrights are publicly listed, so bad actors know what intellectual property CBP is actively monitoring. Financial penalties and losses suffered by infringers due to seized goods can act as a significant deterrent.
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 per 19 U.S.C. §1526(f)) 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 also 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.
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 international class of goods for trademarks and $190 per e-recordation for the copyright 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 copyright recordation every 20 years (note the renewal for CBP coincides with your USPTO renewal date for TM's).
CBP Enforcement
IPR enforcement is one of CBP's Priority Trade Issues, and the agency takes 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.
If CBP finds counterfeit goods at the border, they can detain, seize, and forfeit the goods. They may also impose civil penalties, which are based upon the Manufacturer's Suggested Retail Price (MSRP) of the genuine good. CBP may also pursue criminal charges, especially for repeat offenders or large-scale trafficking.
CBP has an impressive enforcement track record. In 2024, CBP seized over 32 million items with an estimated MSRP of over $5.4 billion.
CBP Training
CBP also accepts industry-led product identification trainings where rights holders have the opportunity to educate CBP officials about their specific products and help them distinguish between authentic and inauthentic products. Rightsholders may submit requests to CBP to conduct an in-person or virtual training.
Originally published by Bloomberg Industry Group, Inc.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
