For many experienced e-commerce brand owners, the question is when, not if, they will be the victims of a counterfeit seller. 

Manufacturers overseas are producing knock-offs of American goods at a rapidly increasing rate.  In 2007, the value of counterfeit imports worldwide was $176 billion; in 2013, that number had risen to $461 billion. 

The United States is hit the hardest by these intellectual property rights infringers, as 20% of the total seizures are counterfeit American products.  This alarming trend highlights the importance of not only registering your trademark with the U.S. Patent and Trademark Office, but also of employing every tool available to protect your rights.

One of the most overlooked strategies against e-commerce counterfeiters is Customs Recordation through the United States Customs and Border Protection agency. The CBP is a federal agency whose primary function is securing the integrity of the country’s borders. 

This authority also includes protecting intellectual property rights in the United States against infringement from abroad.  The CBP is authorized by law to intercept counterfeit or infringing goods, seizing 31,560 imports and arresting 451 individuals in 2016 alone.

When you record your trademark with the U.S. Customs and Border Protection, all relevant information (including images of your mark) is input into the CBP database.  As goods are imported through each of the United States’ 317 ports of entry, CBP officers compare the imports to those registered in the database to determine if any have infringing marks on them. 

CBP can then seize and detain any goods that violate intellectual property rights in the United States. 

The CBP encourages registered mark holders to partner with them to help protect your rights.  They have several resources, including information on drafting a Product ID guide to assist officers in understanding and better protecting your mark.  The CBP also invites anyone with information on suspect imports and importers to report them via the e-allegations program.

Any trademark registered on the U.S. Patent and Trademark Office Principal Register (currently, marks on the Supplemental Register are not eligible) qualifies for customs recordation; and the recordation fee is only $190 per International Class of goods. {This post discusses the differences between the Principal and Supplemental Register.}

Before beginning your application, you will need your USPTO Registration number and digital images of your mark.  {Yet another reason it’s super important to register your trademark!} 

The recordation application also offers options for requesting protection against “gray market” articles (i.e., goods sold legally, but outside of normal commerce channels and not as the original manufacturer intended) on the basis of material and physical differences. 

Keep in mind that after recording, you will need to keep Customs and Border Protection updated with any changes in your mark or goods (e.g., change in ownership, the addition of new products, etc.), and you must renew your recordation within three months of the expiration of your 20-year USPTO trademark registration.   

This simple tool can offer your brand a world of protection.  Customs Recordation allows the U.S. government to stop counterfeits at the border, and often to prosecute those responsible. 

The benefits far outweigh the nominal cost and trouble, making recordation with Customs and Border Protection a no-brainer for even the most novice trademark owner. 

Please feel free to contact us if you would like to pursue recordation of your registered trademark with US Customs!  

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