How Trademark Registration Works With Customs Border Protection (CBF)

Every day, thousands of counterfeit products enter the US and other markets across the world. To a brand owner, this is concerning and would always leave one questioning if their products are among those affected.

Brand protection doesn't stop at the registration of a trademark and serving a cease and desist letter. It extends to the borders.

This guide will walk you through the steps to securing your trademark with Customs and Border Protection (CBP).

But first, what is trademark registration?

Trademark registration is a legal process of securing exclusive rights to use a symbol, design, or phrase that distinguishes your goods or services from those provided by others. 

Registering your trademark provides several key benefits to your brand. It offers protection from counterfeiting by preventing unauthorized use of your mark. It also enhances brand recognition, making it easier for customers to identify your products or services. 

Additionally, registration grants you legal recourse, allowing you to take action in case of infringement. Lastly, a registered trademark increases the overall asset value of your organization, strengthening its market position and credibility.

What is the role of US Customs and Border Protection (CBP)?

The US Customs and Border Protection (CBP) plays a vital role in protecting trademarks at US borders by preventing the importation of counterfeit goods. The CBP enforces intellectual property rights by seizing, detaining, or even destroying imported goods that infringe on registered trademarks. 

Through border control measures, CBP agents inspect incoming shipments to identify and block counterfeit products or those that violate trademark laws. Additionally, the CBP collaborates with trademark owners, allowing them to register their trademarks with the agency and provide key information about their products. 

This may include details such as authorized manufacturers and importers. This helps officers distinguish between genuine and counterfeit goods, strengthening the fight against trademark infringement.

How does the CBP help stop counterfeit goods from entering the US?

Trademark owners can record their registered trademarks with US Customs and Border Protection (CBP), allowing CBP officers to easily identify infringing goods and take appropriate action. CBP officers have the authority to inspect and detain imported goods to detect trademark infringement. If they suspect a shipment contains counterfeit goods, they can hold it for further examination. 

If the CBP confirms that the goods are counterfeit, they can seize and forfeit them, making them the property of the US government. Seized counterfeit goods are typically destroyed to prevent them from entering the market, although in some cases, they may be sent back to the country of origin.

Importers who violate trademark laws face fines and penalties, which serve as a deterrent against bringing counterfeit goods into the US. These fines are paid to the government rather than the trademark owner. 

The CBP also collaborates with agencies such as the US Patent and Trademark Office (USPTO) and law enforcement to combat counterfeiting. Additionally, the CBP engages with trademark owners to raise awareness about existing brands and help them protect their intellectual property.

Through rigorous enforcement of trademark laws at the border, the CBP helps protect brand integrity by preventing counterfeiters from harming the reputation of authentic brands. It also safeguards consumers from purchasing counterfeit products that may be unsafe or of low quality. 

Furthermore, by shielding businesses from unfair competition, the CBP contributes to a fair and competitive market, supporting the overall economy. As the first line of defense against counterfeiting, the CBP plays a crucial role in blocking the entry of infringing goods and upholding the intellectual property rights of trademark owners.

How to register a trademark with the CBP

It's very important to have your trademark registered with the US Customs and Border Protection (CBP). This prevents counterfeit goods from entering the United States. Here's how to do it:  

1. Ensure your trademark is eligible

To be eligible, your trademark must be federally registered on the Principal Register of the United States Patent and Trademark Office (USPTO). Trademarks listed on the Supplemental Register don’t qualify. 

Additionally, the trademark registration must be active, authentic, and still in force. The Supplemental Register is a secondary register for trademarks that are primarily descriptive, used in an ornamental manner, or otherwise lack distinctiveness. 

2. Get all the information and documents you'll need for the application

This includes:

• Trademark registration certificate: You'll require a copy of the trademark registration certificate, which you should have gotten from the USPTO. 
• Owner information: The name of the trademark owner, business address, and citizenship of the trademark owner.
• Manufacturing information: Include the places of manufacture of the goods bearing the recorded trademark. 
• Information of authorized users: The names and addresses of all the foreign persons or entities that are allowed to use the trademark, together with the details of the authorized user. 
• Ownership and control: State whether there are any parent or subsidiary companies or other foreign companies owned or controlled in common and which use the trademark abroad.

3. Apply for recordation

The recommended way is to do it online via CBP's Intellectual Property Rights Recordation (IPRR) tool. You can also apply by mail. You can get the forms you need from the CBP.

4. Pay application fee

There's a fee for each international class of goods you have in your trademark registration that you want to record with the CBP. You can check the fee amount from the CBP as well.  

5. Submit your application

Ensure your application is complete and accurate to avoid delays in processing. Additionally, make sure to attach all necessary supporting documents, including the trademark registration certificate, to meet the requirements.

6. Renewal

The purpose of renewal is to maintain recordation. Your trademark recordation with the CBP will be valid as long as your USPTO registration is still valid. When you extend the term of your trademark registration with the USPTO, you will also have to extend it with CBP in order to keep the protection at the border.  

Important considerations after registering a trademark with CBP

After registering a trademark with CBP, there are several important considerations to keep in mind. This includes ensuring timely renewal of your CBP recordation to prevent it from expiring. While the grace period is quite long, missing it means you'll have to reapply and pay the full fees again. 

If you want to prevent gray market goods, you need to apply for gray market protection from CBP. Gray market goods are products intended for sale in another country but imported into the US without your permission.

Additionally, working with an experienced trademark attorney is highly recommended. They can help you complete your application correctly and inform you of any special considerations related to your trademark.

By following these steps, you can efficiently navigate the CBP recordation process and strengthen your defenses against counterfeit goods entering the United States.

Who qualifies for CBP One?

CBP One is a mobile application developed by US Customs and Border Protection (CBP) to assist people who are traveling or engaging in trade. 

CBP One isn't directly related to trademark enforcement. The work of trademark enforcement is for the CBP and not the CBP One app.

It's, however, possible that information submitted through the app, for example, cargo manifests, could, in one way or another, assist CBP officers in identifying potential trademark infringements. However, the primary focus of CBP One isn't trademark enforcement.

How do I get a CBP number?

This is a unique identification number assigned by US Customs and Border Protection (CBP) to businesses that import goods into the US. 

It's automatically assigned to you when you file your first import entry with CBP. This number is essential in order to import goods into the US. It's, however, different from a trademark registration number.

How long does the CBP trademark recordation process take?

The CBP recordation process generally takes several weeks to a few months. To register a trademark with CBP, you need to have already registered it with the USPTO.

The time it takes to complete the CBP trademark recordation process depends on several factors. They include the completeness of your application, the volume of applications CBP is handling, and any unforeseen issues that may arise.

The overall timeline consists of two key stages. First, USPTO trademark registration, which is a prerequisite for CBP recordation, can take anywhere from a few months to over a year, depending on the complexity of the trademark and any opposing claims.

Once your trademark is registered with the USPTO, the CBP recordation process is relatively quick, typically taking a few weeks to a few months.

How do I check my CBP status?

The CBP doesn’t have an online system to track trademark recordation applications like the USPTO. To check your application status, you can contact CBP's Intellectual Property Rights Branch directly. You need to have your application details or trademark registration number ready. 

Their contact information can be found on the CBP website. Alternatively, if you file your application through a customs broker or attorney, they can assist you in checking the status of your application.

Protect your brand with CBP recording

Navigating trademark protection goes beyond the registration process. Securing your brand with US Customs and Border Protection (CBP) is a proactive step to keep counterfeit goods from entering the market. 

You empower border agents to identify and stop infringements before they reach consumers. All you need to do is ensure you register your trademark, then apply to register it with CBP for an extra layer of protection.

Staying vigilant with renewals, collaborating with experts in trademark law, and considering gray market protections can safeguard your brand's integrity and economic value. It's a smart, forward-thinking move for any business that is serious about protecting its intellectual property.

Additional resources 

• Choosing a Trademark-Worthy Brand Name: A 7-Step Guide
• An Entrepreneur's Checklist for Filing Your Own Trademark
• What is a Trademark vs. Copyright vs. Patent?

Glossary of legal terms

• United States Patent and Trademark Office (USPTO): The federal agency responsible for granting patents and registering trademarks in the United States.
• Trademark registration: The legal process of securing exclusive rights to use a brand name, logo, or slogan.
• Counterfeit goods: Fake products made to imitate authentic branded goods, often infringing on trademarks.
• Intellectual property rights: Legal rights that protect creations of the mind, including trademarks, copyrights, and patents.
• Gray market goods: Products legally made but sold through unauthorized channels, often bypassing trademark protections.
• Recordation: Official registration of a trademark with CBP to enable border agents to identify and seize counterfeit imports.
• Principal Register: The primary list of trademarks approved by the USPTO, offering full legal protections.
• Supplemental Register: A secondary USPTO list for marks that don’t yet meet the distinctiveness requirements for the Principal Register.