Combating Counterfeits Through Strategic Trademark Filings

By Josh Gerben, Esq.

In late 2020, pharmaceutical and biotechnology company Moderna applied to register a simple design used on the packaging for its COVID-19 vaccine with the USPTO.

My first reaction as a trademark attorney: Why would you apply for that? The mark is not highly distinctive and would not add much over existing registrations for MODERNA.

Then I remembered: Counterfeits.

One of the benefits of obtaining a federal trademark registration is the ability to record it with U.S. Customs and Border Protection (CBP), which then authorizes CBP to exclude, detain, and/or seize infringing imports.

So why apply to register this packaging design with the USPTO and not just rely on a registration for the word mark or a stylized version of MODERNA?

How Does Trademark Registration for Package Design Provide Protection Against Counterfeits?

Ensuring your package design is registered with the USPTO and recorded with CBP can prevent counterfeit products from being imported for two main reasons:

1. Ease of identification

Providing CBP with a trademark registration covering a product’s packaging provides CBP with a clear visual presentation of a product that allows for quick identification of potential infringements. Thousands of containers pass through our ports daily, meaning there is minimal time for inspection; quick and accurate identification is crucial.

2. Scope of protection

If all I have registered and recorded is a word mark, then imports not bearing the mark are technically not infringing and CBP should not detain them. Counterfeiters know this and have learned to only apply the counterfeit mark after the product enters U.S. borders.  Hang-tags, hardware, logos, labeling – these can be done at or just before the point-of-sale to minimize chances of detection.

Additionally, recording your rights with CBP facilitates communication when detentions are made allows the rights holder to provide guides on your products to CBP officers, and provides opportunities to train CBP officers to identify your products.

What Are the Requirements to Apply for CBP Recordation?

To be eligible for CBP recordation, the registration must be on the Principal Register and the cost is $190 per International Class.  The recordation remains in force concurrently with the corresponding trademark registration and is renewable on the same intervals.

A proactive plan of recording your trademarks with CBP can help prevent a counterfeit or infringing import problem before it starts.  For example, if you manufacture all of your products in the U.S., you can let CBP know that they shouldn’t see any of your products coming in through its ports.

If you need assistance with developing a plan or you are having issues with counterfeits or infringing imports, please don’t hesitate to reach out by filling out a contact form here.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.