Register Your Trademarks with U.S. Customs as Part of a Comprehensive Brand Protection Program

By Eric Perrott, Esq.

Trademark registration in the United States is considered the “gold standard” for brand owners and is vital in any effective brand protection program, but did you know that you can also register your trademarks with the U.S. Customs and Border Protection? U.S. Customs has the power to seize and destroy counterfeit or non-genuine items before they ever enter the U.S. marketplace. Counterfeit products irreparably harm brands, and it is often too late to repair your brand’s reputation, once a consumer has a bad experience with a counterfeit product.

Trademarks are not automatically registered with U.S. Customs. Brand owners must take proactive steps to register their trademarks with U.S. Customs, in order to gain this extra layer of protection.

How the U.S. Customs and Border Protection’s e-Recordation Program Protects Trademarks

U.S. Customs has multiple programs to combat counterfeiting, but few are as helpful as the “e-Recordation Program,” which provides U.S. Customs with information about who should (and shouldn’t) be sending branded products into the U.S. Applicants for e-Recordation can submit a “safe list” of approved vendors and manufacturers and provide U.S. Customs with detailed information on spotting a genuine, branded product versus a potential fake. Applicants can also provide photographs of the products.

When can I register with U.S. Customs and how much does it cost?

Brand owners can file with U.S. Customs and Border Protection any time after they obtain a registered trademark in the U.S. For U.S. Customs trademark registration , the government fee is $190 per international class of goods, and the filing lasts for ten years. Trademark owners must renew the e-Recordation within 90 days of the end of the 10-year period. The price to renew e-Recordations is $80 per mark.

The Information Needed to Apply for the U.S. Customs e-Recordation Program

In order to receive the benefits of this underused trademark protection strategy, you must provide U.S. Customs and Border Protection with the following information. It is vitally important that trademark owners fill out the initial application accurately. If an owner does not provide the correct information, genuine products could be held at the border for inspection, delaying customer deliveries.

1. U.S. Trademark Registration Number (must be registered, not pending)
2. Countries where goods bearing the genuine trademarks are manufactured
3. Names of any parent, subsidiaries, or affiliates of the trademark owner, if any.
4. Names and addresses of all authorized manufacturers.
5. Licensees who are authorized to use the trademark.
6. Additional authentication information, to be made available to CBP personnel. This may include anti-counterfeiting measure such as hidden authentication features, conventions for UPC serialization, the format of product numbers, etc. It can be classified as any special information that may help customs identify infringement.

How to Ensure Your e-Recordation Registration Continues to Protect Your Trademarks

Once the application is accepted and recorded in the e-Recordation Program, customs agents will begin including the trademark information when they screen cargo and packaging coming into the U.S. If they flag a potential counterfeit product, the agent will alert the trademark owner and will allow them to review it for authenticity. Trademark owners can also report any violations or suspicions concerning imported goods to help ensure that U.S Customs catches non-genuine goods at the ports of entry.

Create Product Identification (ID) guides for U.S. Customs Agents.

Once registered, brand owners can provide materials to educate U.S. Customs on what constitutes infringement in their respective fields. Trademark owners can create product identification guides, offer training at ports of entry, or record webinars, that U.S. Customs will include in training for future custom agents.

Product ID Guides are comprehensive guides, which include detailed descriptions of the brand’s manufacturers, distributors, and other partners, made solely for U.S. Customs. Product ID Guides are not available to the public. These guides can also identify known or alleged past infringers, descriptions of suspect goods, and lists of U.S. ports of entry where those goods may be entering the U.S. (if known). U.S. Customs provides a sample guide on their website.

Train U.S. Customs Agents to identify counterfeit products.

Registered brand owners can also conduct in-person and online training to U.S. Customs personnel in the field to provide hands-on examples and other training information to the agents examining cargo and packages. Each option provides trademark owners a customizable way to ensure that U.S. Customs agents can spot fakes and non-genuine products. These steps add a level of liability and reassurance for registered intellectual property owners.

Update your application when necessary.

U.S. Customs and intellectual property owners need to be on the same page concerning the mark’s ownership and protection. Be sure to update your application with any pertinent business updates, such as address and website changes, and other relevant information. If the trademark is ever assigned to or purchased by a new company, the assignment must be recorded with not only the USPTO, but also with U.S. Customs.

If you already have a federal trademark registration, make sure you file an application with the U.S. Customs e-Recordation program, which offers invaluable border protection to ensure an owner’s intellectual property is protected on all fronts. If you have any questions on the e-Recordation program, need help filing an application, or would like to discuss more ways to protect your mark, please contact an attorney from Gerben IP today.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.