Posts

Why You Need to Record Your Trademark With US Customs and Border Protection (CBP)

At the risk of sounding sensationalist, if you run a business with products that are easily counterfeited, you need to record your registered trademark with the US  Customs and Border Protection (CBP), lest you suddenly find your business is being drowned out by fakes, copies, and products that, while looking similar to yours, do not carry the same quality and pedigree that your company’s goods do. Oh, and you also do not make any money off of them because the counterfeiters are instead.

You’re probably asking yourself why you’ve never heard of the CBP trademark registry. Simply enough, it’s because the CBP registry is not very well known. If you’re a service provider, you probably don’t need to know about it—and you can stop reading this article at around 100 words in—but if you’re in the business of making a product, especially consumer focused products, the CBP database can actually be of incredible import. But first, a few facts about the CBP trademark registry. It was set up as a way for the CBP to record the trademarks and copyrights of intellectual property owners who were concerned about counterfeit goods flowing through America’s borders. When your trademark or copyright is recorded with the CBP, they start looking out for those goods as they come in through Canada and Mexico, as well as across the Pacific and Atlantic. Once they find counterfeit items, they can exercise a number of actions, including seizure, destruction, and monetary sanctions—but more on those later.

So, you’re selling goods, say, high end watches in the $5,000 to $15,000 range. You’ve spent a lot of time and effort developing the movements, the unique design, the branding, and the overall image for the type of lifestyle you’re selling. You’ve partnered with an excellent trademark attorney from the very beginning to help you develop your brand cohesively, and you’ve registered your trademarks for the company name, any of the unique names of the individual watches, any logos, and maybe even the trade dress for your uniquely designed watches themselves. At this point, you’ve already completed the first step in recording your trademark with the CBP—registering your trademark. You see, the CBP has to go through a lot of different products when they cross the border, and while it would be great for them to be able to check all of them for trademark violations, they have to cap it somewhere or the manpower necessary would be prohibitive. As a result, in order to record your trademark or copyright with the CBP, you need to make sure it is validly registered with the United States Patent and Trademark Office (USPTO). That’s your first step: trademark registration. Or, if you’re interested in protecting your copyrights with help from the CBP, you need to make sure that you register your copyrights with the US Copyright Office.

Benefits of Recording with the CBP

Now that you know the first step for recording your trademark with the CBP, let’s discuss some of the perks of doing so. There are four major benefits:

  1. The CBP will be able to monitor and seize any merchandise with any counterfeit marks that are similar or identical to the trademarks you have recorded with them.
  2. The CBP will be able to issue monetary fines/sanctions against anyone or any business who tries to bring counterfeit goods with your trademarks into the United States.
  3. The CBP will be able to contact the US Attorney’s Office in order to initiate criminal prosecution of counterfeiters.
  4. The CBP will be able to raid counterfeit production facilities both nationally and internationally depending on the scale of the counterfeiting operation.

If you’re faced with an influx of counterfeit goods steering sales away from your own products or you are afraid that as your brand grows, you’ll have problems curtailing counterfeiters later on, these are some very powerful weapons the CBP provides trademark and copyright holders. Effectively, by recording your trademark with the CBP, you can not only shut down the local importers and merchants who sell your goods in shady back alleys and low end swap meets, but you can even stop the flow of goods entering the United States or prevent them from being manufactured at all.

What is the Enforcement Process Like?

The enforcement process for trademarks and copyrights registered with the CBP is very simple. Once you have recorded your trademark or copyright with the CBP, they will contact the intellectual property owner (or the law firm you’ve listed as your attorney of record) to provide them with all of the necessary information regarding a seizure. Essentially, they will give you a description of the merchandise, the quantity of the items they’ve seized, who has been manufacturing these items, and who has been importing them into the United States. The CBP may, in some situations, even provide you with with a sample of the infringing counterfeit merchandise so that you can go after the manufacturers and importers with a civil case for trademark or copyright infringement, if you so choose. As you can see, the process is generally very simple with the CBP only contacting you (or your attorney) when they’ve detected a suspected counterfeiter.

How Much Does Recordation Cost?

Recordation with the CBP is very inexpensive—but more than the very low fees charged by the US Copyright Office for registering a copyright. As of this writing, the fee is only $190 per copyright and $190 per mark per international class for a trademark (if you don’t know what that means, please contact me). The form is fairly straightforward and everything can be done online. To be perfectly honest, you don’t even need an attorney to do it. But if you’d like to hire me, I’m always happy to help at a very reasonable flat fee with discounts for clients who have hired my office to register their trademarks.

There is one thing to keep an eye out for, if you’re going to register with the CBP. Around the time you successfully register a trademark, many people are contacted by third party organizations claiming to be working for or related to the CBP or some other governmental organization. They always send letters. These letters look very official, often bearing some kind of official seal or something along those lines—they are not from any official organization. Instead, they are designed to trick new trademark owners into believing they are not taking advantage of all of their registration rights. As such, they charge often exorbitant fees for services that shouldn’t cost more than a few hundred dollars. I’ve seen examples of letters that charge as much as $1,500 to register a trademark on the CBP. Do not fall for these scams, and if you’re going to hire someone to assist you with recording your trademark or copyright with the CBP, use someone you trust.

Ultimately, recording with the CBP is a very valuable tool for trademark and copyright owners who are looking to protect their products from counterfeiters. It is a service offered by the government at a reasonable fee that provides many great perks to intellectual proper rights holders. If you need more information or you’re interested in pursuing a registered trademark, a registered copyright, or a recorded trademark or copyright, please don’t hesitate to contact me. And, if you’ve dealt with counterfeiters before (either with the help of the CBP or on your own in civil court), please leave your story in the comments below.