A federal trademark registration gives you rights you can enforce in court. But there is another enforcement channel that does not require litigation, moves faster, and can stop infringing goods before they ever reach U.S. consumers: U.S. Customs and Border Protection.
Recording your trademark with CBP is an important tool in brand protection. This post explains how it works, what it covers, and what you need to do to use it.
What CBP Can Do for Trademark Owners
CBP is part of the Department of Homeland Security and is responsible for securing U.S. borders. Enforcing intellectual property rights is a designated priority trade issue for the agency. CBP has the authority to detain, seize, and forfeit imported shipments of counterfeit goods, goods bearing marks confusingly similar to a registered mark, and restricted gray market goods.
Three internal departments handle IP matters at CBP: the Intellectual Property Rights Branch of the Office of Regulations and Rulings, which develops and implements enforcement policy; the Office of Field Operations, which carries out detention and seizure at ports of entry; and the Office of Strategic Trade, which develops broader enforcement programs.
The Three Categories of Merchandise CBP Targets
Understanding what CBP can and cannot act on requires understanding the three categories of merchandise it targets.
Counterfeit goods are those bearing a mark that is identical with, or substantially indistinguishable from, a registered mark. CBP can detain and seize counterfeit merchandise, but only if the mark is both registered with the USPTO and recorded with CBP. When CBP suspects an imported shipment bears a counterfeit mark, it can detain the merchandise for up to 30 days while it investigates. If CBP confirms the goods are counterfeit, they are seized and forfeited. The trademark owner is notified and the goods are typically destroyed, though CBP may, with the trademark owner's consent, donate them to charitable organizations or sell them at public auction if they are not unsafe. CBP can also impose substantial fines on parties who direct or assist the importation of counterfeit goods, with repeat offenses drawing higher penalties.
Confusingly similar marks are marks so similar to a registered mark that the public would likely associate the infringing mark with the genuine one. CBP uses the Polaroid factors to evaluate similarity, with substantial weight given to how closely the marks resemble each other. As with counterfeits, the mark must be recorded with CBP for this enforcement authority to apply. Detained merchandise in this category can be released within 30 days if the importer either obtains the trademark owner's written consent or removes the infringing mark entirely before importation, in a manner that renders it illegible and impossible to reconstitute. If neither condition is met, the goods are seized and forfeited.
Restricted gray market goods are a more nuanced category. These are foreign-made articles bearing a genuine trademark that is identical or substantially indistinguishable from one owned and recorded by a U.S. party, imported without that U.S. party's permission. The classic scenario involves a foreign licensee's goods, or goods from a foreign affiliate, that the U.S. trademark owner never authorized for the U.S. market. Goods that are physically and materially different from the authorized U.S. product are treated as restricted gray market goods even if they bear a genuine mark applied by the U.S. owner or a related entity. An exception exists: if the goods bear a conspicuous label stating that the product is not authorized by the U.S. trademark owner for importation and is physically and materially different from the authorized product, CBP will not detain them.
How to Record Your Trademark with CBP
Recording a trademark with CBP is a separate process from registering it with the USPTO. A USPTO registration does not automatically trigger CBP protection. You have to take the additional step.
Recording is available for trademarks registered on the Principal Register, not the Supplemental Register. The process is handled online through CBP's e-Recordation portal. You submit a certified copy of the registration certificate along with the trademark owner's name, business address, and citizenship; the place of manufacture of goods using the trademark; the names and addresses of authorized licensees; and the identities of any parent companies, subsidiaries, or related companies that use the trademark abroad.
The current cost is $190 per international class of goods. Protection is effective on the date the application is approved.
One important detail: renewing your USPTO registration does not automatically renew your CBP recordation. They are separate processes with separate deadlines. The CBP recordation is valid for the term of the registration and must be renewed by filing a renewal application within three months of the USPTO renewal deadline. If you miss that window, you need to file a new recordation application entirely.
Getting the Most Out of CBP Protection
Recording your mark is the foundation, but it is not the complete picture. Because CBP has a large volume of recorded trademarks to monitor alongside its other enforcement responsibilities, it cannot catch everything. Brand owners who take active steps to support CBP's enforcement efforts tend to see better results.
The most effective step is developing a product identification guide (PTIG) for CBP. This is a document that helps CBP agents distinguish genuine goods from counterfeits. A good PTIG includes photographs and descriptions of genuine products, information about where genuine products are manufactured and through which ports they are imported, descriptions and images of suspected counterfeit goods, known infringer names and addresses, and examples of genuine versus suspect packaging, labels, serial numbers, and other product identifiers. PTIGs can be submitted electronically and updated as your product line or the counterfeiting landscape evolves.
Trademark owners with recorded registrations can also provide in-person training to CBP field officers at relevant ports of entry, or conduct online webinars that can be broadcast to multiple ports simultaneously and recorded for later viewing. Direct training tends to sharpen CBP's ability to spot infringing goods in the specific product categories that matter to you.
If you have intelligence about a specific suspect shipment or a known infringer, you can submit that information to CBP through the e-Allegations portal. The more specific your submission, the more useful it is: known names and addresses of the manufacturer, importer, and shipper; the type of violation; product descriptions; and any supporting documentation. Suspect violations can also be reported to the National Intellectual Property Rights Coordination Center, a multiagency organization that coordinates the government's IP enforcement response, investigates criminal conduct, and refers cases for prosecution where warranted.
Finally, as your brand evolves, your CBP recordation and training materials should keep pace. New product lines should be covered by new registrations that are then recorded with CBP. Updated product information and newly identified infringers should be reflected in your PTIGs and training materials.
CBP Is One Tool Among Several
CBP enforcement is one part of a broader trademark enforcement strategy. It has practical limits: gray market goods in particular can be difficult for CBP to interdict at scale. Trademark owners dealing with persistent gray market importation may need to pursue importers directly in federal district court.
Another option for serious importation problems is a Section 337 exclusion order from the U.S. International Trade Commission. An exclusion order bars the named respondents from importing the infringing goods entirely and is enforced by CBP at the border. Section 337 covers the unfair trade practice of importing articles that infringe a federally registered trademark. It is a more involved process than CBP recordation, but the enforcement mechanism is correspondingly stronger.
Product authentication measures, such as batch codes, watermarks, holograms, and other anti-counterfeiting features, can also make it harder for counterfeiters to replicate genuine goods convincingly and easier for CBP agents to spot fakes.
Start with the Registration
None of the CBP enforcement mechanisms described here are available without a federal trademark registration on the Principal Register. That registration is the prerequisite for everything else. If your brand is being built for the long term and your supply chain or distribution involves imported goods or potential foreign counterfeiting, the registration is not an optional step.
Once you have the registration, recording it with CBP for $190 per class is one of the lowest-cost, highest-leverage things you can do to protect your brand at the border.
If you have questions about registering your trademark or want to understand how a registration fits into a broader brand protection strategy, book a free consultation with Five Dogs Law.
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