A highly effective—yet often underutilized—tool in the intellectual property enforcement arsenal is recording trademarks and copyrights with U.S. Customs and Border Protection (CBP).
While registration with the U.S. Patent and Trademark Office (USPTO) or the U.S. Copyright Office provides the foundation for protection, recording those rights with CBP empowers the agency to take direct action at the border against infringing goods.
What Is CBP Recordation?
CBP allows owners of federally registered trademarks and copyrights to record those rights with the agency. Once recorded, CBP is authorized to detain, seize, examine, and ultimately forfeit or destroy imported goods that infringe upon the recorded rights.
Seized products may be destroyed if they are found to be:
– Counterfeit versions of a registered trademark,
– Piratical copies of a registered copyright, or
– Imported in violation of exclusive distribution agreements.
Unless the IP rights owner consents to an alternative resolution—such as charitable donation—CBP will typically destroy infringing items.
CBP Seizures by the Numbers
In Fiscal Year 2024, CBP and U.S. Immigration and Customs Enforcement (ICE) seized thousands of shipments, comprising nearly 33 million counterfeit goods. If genuine, the estimated Manufacturer’s Suggested Retail Price (MSRP) of these items would exceed $5.2 billion.
What Information Does CBP Provide After a Seizure?
When CBP seizes infringing goods, the rights owner is notified and provided with valuable enforcement intelligence, including:
1. Date of importation
2. Port of entry
3. Description and quantity of goods
4. Name and address of the manufacturer
5. Country of origin
6. Exporter and importer contact details
Advantages of CBP Recordation
– Border Enforcement: CBP officers monitor imports and can proactively detain infringing shipments before they reach the U.S. market.
– Cost-Effective Deterrence: Preventing counterfeit goods from entering the country reduces enforcement and litigation costs. In addition, the infringer will suffer financial losses and damage to their reputation when the seized goods cannot be timely delivered to their customers.
– Enhanced Surveillance: Rights owners may submit product guides and counterfeit examples to assist CBP training and detection.
– Early Detection: Border-level action can reveal the origin and methods of infringers, facilitating further investigation.
Eligibility and Recordation Process
Eligibility:
– Only federally registered trademarks on the Principal Register and registered copyrights are eligible.
– Trademarks on the Supplemental Register, common law (unregistered) marks, and U.S. patents are not eligible.
Procedure:
1. Obtain Federal Registration
2. Submit Application
3. Submit Product Information
Duration and Renewal
Trademark Recordation: Remains in effect for the life of the federal registration. Renewal must occur within three months of USPTO’s renewal of the trademark registration.
Copyright Recordation: Effective for 20 years or until ownership expires, whichever comes first. Thereafter, the copyright recordation may be renewed.
Reporting Infringement: e-Allegations
CBP accepts anonymous reports of suspected infringing imports through its e-Allegations system. Submissions can include supporting documentation and are routed to the appropriate port for investigation.
Key Takeaways
Recording trademarks and copyrights with CBP is a proactive, cost-effective step that enhances the ability of a business to combat infringements, counterfeiting and piracy. It serves as a powerful complement to domestic and enforcement by intercepting infringing goods at the point of entry—before they reach the market.