Protect Your Trademarks with U.S. Customs and Border Protection

Pokemon figures

I love fountain pens. Sometimes I buy them in other countries, and often they include ink as a bonus. But I’ve had issues with U.S. Customs and Border Protection (CBP).  Customs holds the shipment and requires extensive paperwork confirming that the liquid ink is not hazardous. It’s aggravating because I’m waiting like a kid for Christmas to get my new pen. But it’s also impressive that CBP is this careful. They will do the same for your trademarks.

On May 15, 2020, (CBP) seized a shipment of Pokémon action figures worth more than $600,000. These figurines, originating from Hong Kong, were falsely declared as plastic furnishing articles. Upon inspection, CBP discovered the Pokémon dolls and immediately contacted Nintendo to verify their authenticity. As expected, the dolls were counterfeit.

Nintendo, the owner of the Pokémon trademark, has numerous registered trademarks with the U.S. Patent and Trademark Office (USPTO). This case highlights the importance of trademark registration and the added benefits of recording trademarks with CBP to protect against counterfeit imports.

In 2023 CBP seized $2.76 billion worth of merchandise. From 2019 to 2023, the total number of goods seized for IPR violations more than doubled, and the value has increased by almost 80%.

Why Should You Register Your Trademark Federally?

  1. Presumed Validity: A federally registered trademark is presumed valid, giving you a significant advantage in legal disputes.
  2. Nationwide Protection: Unlike common law trademarks, which are limited to specific geographic areas, federal registration offers protection across the entire United States.
  3. Incontestability: After five years, your trademark can become incontestable, shielding it from certain challenges.
  4. Symbol of Ownership: You can use the “®” symbol to signify your trademark is federally registered, which is widely recognized and respected.
  5. Federal Jurisdiction: Disputes involving federally registered trademarks fall under the jurisdiction of federal courts.
  6. Deterrence: Your trademark is listed on the USPTO website, making it easier for others to find and avoid using it, thus reducing the likelihood of litigation.

Recording Your Trademark with CBP

One often overlooked advantage of federal registration is the ability to record your trademark with CBP. This enables the CBP to monitor and seize counterfeit goods that violate U.S. trademarks. Here’s how you can leverage this benefit:

  • Add to CBP’s Watch List: Submit your registration and relevant information, such as manufacturing locations and authorized importers.
  • Training Guide: Provide CBP with an Intellectual Property Rights (IPR) training guide, detailing how to identify authentic products. CBP uses this guide to determine the authenticity of suspicious shipments.
  • Webinars: You can further train CBP officers through product ID webinars, ensuring they are well-equipped to recognize and seize counterfeit goods.

CBP maintains a portal of all recorded trademarks at iprs.cbp.gov, where you can also record copyrights. Nintendo, for instance, has recorded 460 trademarks and copyrights with CBP.

Reporting Suspect Shipments

If you suspect a shipment contains counterfeit goods, you can submit information to CBP through their e-Allegations system. When CBP detains a shipment, it is held for 30 days. The importer must provide proof of authenticity within five days, and CBP may contact the trademark owner for assistance. Penalties for counterfeit goods can reach up to twice the genuine product’s suggested retail price, and the detained items are disposed of according to federal regulations.

Global Reach

Similar services are available in other countries, so if you’re concerned about unauthorized imports internationally, consult the relevant authorities in those regions.

The Takeaway

Federal trademark registration and recording with CBP offer a cost-effective way to police your trademarks. Completing the recordation process and providing training materials to CBP can significantly enhance your protection against counterfeit imports.

As a business owner, this is a valuable strategy to consider in safeguarding your brand against unauthorized imports. Give me a call and we can discuss taking this critical step to protect your valuable intellectual property.

Invisible Assets book cover

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business.

To get answers to your questions you can email Bill@IPGuy.com, or call me at 248-433-7381.

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