A sometimes overlooked benefit of federal trademark registration is the ability to record a registration on the Principal Register with U.S. Customs and Border Protection (“CBP”). This is a cost effective method of dealing with infringing products being imported into the U.S. For example, in 2020, CBP seized 26,503 shipments of counterfeit goods, representing more than $1.3 billion, and it arrested 203 individuals, obtained 125 indictments, and received 98 convictions relating to intellectual property crimes. CBP’s fee for recordation of a trademark registration is just $190 per class of goods.
The United States has some 328 ports of entry and CBP processes tens of millions of shipments through those ports each year. The contents of a portion of those incoming shipments are inspected by CBP and, among other things, compared to trademark registrations recorded with CBP. When CBP finds goods bearing the mark in a recorded registration that appear to be counterfeit or unauthorized, it detains the goods and contacts the owner of the recorded trademark registration. The owner can assist CBP by providing information that will assist it in identifying counterfeit goods, including educating CBP about features present on authorized goods that are not present on counterfeit goods or identifying particular sources of counterfeit goods. In some cases, trademark owners can assist CBP and other U.S. law enforcement agencies in building a prosecution against counterfeiters.
Customs recordation is available in many other countries, as well. The availability, fees, and requirements for recordation vary from country to country. Some countries, including China, Singapore, and Thailand, inspect both import and export shipments. This means, for example, that customs inspection in China could catch counterfeit goods before they leave the country.
The recordation of registered marks in foreign customs databases sometimes takes a significant amount of time. For example, recording marks in Russia customs could take up to a year. For this reason, it is important to begin a program of foreign customs recordation promptly after receiving a registration. Additionally, the U.S. government has federal prosecutors stationed abroad to advise and assist local officials, including by liaising with local customs officials or prosecutors to protect the interests of U.S. business abroad. If there are particular markets that are important to your business, or if there are particular countries where counterfeits of your goods originate, you should consider recording your registrations with Customs.
JMBM can help you evaluate your options for customs recordation in the U.S. and abroad. JMBM also has experience in building prosecutions in the U.S. and has contacts with federal officials, at home and abroad, that we can consult to assist our clients to enforce their intellectual property rights.
JMBM’s Intellectual Property Group represents entrepreneurs, family-owned businesses, middle-market companies, startups, universities and the FORTUNE 500, handling patents, trademarks, copyrights, domain names, trade dress, trade secrets, and related licensing and litigation. Our approach is aggressive and efficient, and we keep a keen focus on helping clients achieve their goals.
This update is provided to our clients, business associates and friends for informational purposes only. Legal advice should be based on your specific situation and provided by a qualified attorney.