Anticounterfeiting Program Checklist: Recordation, Marketplace Takedowns, and Seizure Response

By Casey Scott McKay · 2024-02-22

This checklist turns counterfeiting doctrine and border-enforcement mechanics into a ten-phase program a practitioner can work top to bottom, from the registration gaps that quietly disable every later remedy through to a criminal referral a United States Attorney will actually pick up. Phases 1 and 2 reconcile SKUs to marks to classes, fix what the identification of goods does not cover, record the portfolio with Customs and Border Protection through the IPRR system at $190 per class, and build the Product Identification Training Guide that converts a database entry into a seizure. Phases 3 through 6 cover marketplace brand registry enrollment, unit-level serialization, watch and image monitoring, a test-buy protocol that produces evidence admissible under Evidence Rules 901 and 902(13)–(14), and a takedown sequence that runs Section 512 notices ahead of trademark complaints and converts platforms and landlords into parties with the specific knowledge Tiffany v. eBay requires. Phase 7 is seizure response: the same-day authentication declaration, the consent language of Section 1526(e), the sample bond, and the Customs disclosure of manufacturer, exporter, and importer that is the most valuable thing a recordation produces. Phases 8 and 9 escalate to a Rule 65(b) or Section 1116(d) filing package, an asset restraint that survives Grupo Mexicano, and a referral packaged with the Sentencing Guidelines arithmetic already done. Phase 10 makes the whole thing a calendared, measured, budgeted function instead of a series of emergencies, with deadline tables, fee figures, model language, and one worked example carried throughout.

IP and Technology > Trademarks | Checklist | Published 22 February 2024 - Updated 3 May 2026 | Casey Scott McKay - marksy.us

Summary. Ten phases, worked top to bottom, that build a standing anticounterfeiting program: fix the registration gaps that silently disable every later remedy, record the portfolio with CBP at $190 per class and write a Product Identification Training Guide a port officer can use in ninety seconds, enroll in marketplace brand registries and commit to unit-level serialization, stand up detection, run test buys that survive an evidentiary objection, send takedown notices that create specific knowledge rather than noise, answer a detention within the business day and mine the § 133.21(e) disclosure, escalate to a TRO or seizure-order package that a skeptical judge will sign, refer the criminal file with the guidelines arithmetic already done, and then run all of it on a docket with metrics. Every phase carries the fee, the rule, the clock, and the trap. One worked example — Corvid Helmets, Inc., a Milwaukee helmet maker — runs from the first photograph of a fake to a warehouse seizure in Bensenville.

Keywords: cbp recordation · iprr e-recordation · product identification training guide · counterfeit seizure · notice of detention · 19 c.f.r. 133.21 · marketplace brand registry · unit-level serialization · test buy protocol · chain of custody · dmca takedown notice · specific knowledge letter · ex parte seizure order · schedule a litigation · asset restraint · statutory damages election · criminal referral · ipr center · e-allegations · lever rule

What this checklist is for

The job. Standing up, or auditing, a brand's anticounterfeiting program end to end — registrations, customs recordation, platform enrollment, detection, evidence, takedowns, port response, litigation, and referral. Work it in order the first time. After that, Phases 5 through 9 repeat on every matter and Phase 10 runs annually.

Who should use it. In-house brand protection counsel and outside trademark counsel building a program from nothing; litigators inheriting a matter who need to know what evidence should already exist; and general counsel at companies between $10 million and $500 million in revenue, where the problem is real and the budget is not unlimited.

What you need before you start. A complete SKU list with the marks that appear on each item; copies of every registration certificate and the identification of goods as written, not as remembered; the chain of title for any mark acquired rather than filed; your manufacturing footprint by country and site; your authorized importers of record and their IOR numbers; your GS1 company prefix; whether units carry a serial and in what format; a named human who will answer a phone call from a port; and a budget number.

What this checklist does not do. It does not re-teach doctrine. Whether the thing on the fake is a "counterfeit mark" under 15 U.S.C. § 1116(d)(1)(B) — and why so many obvious knockoffs are not — is worked through in Trademark Counterfeiting: Civil Seizures, Statutory Damages, and Criminal Exposure. The reasoning behind each customs step, with model petitions and cost tables, is in Stopping Counterfeits at the Border. This is the operational distillation of both.

The worked example. Corvid Helmets, Inc. is a Milwaukee bicycle-helmet maker with about $40 million in revenue. It owns Principal Register registrations for the word mark CORVID and a stylized wing device in Class 9 for protective helmets, a Class 9 registration for CORVID VISORCLIP, and a Class 25 registration for a small apparel line. Helmets are made under contract in Dongguan, China and Vinh Phúc, Vietnam; Corvid Europe GmbH, a wholly owned subsidiary, sells in the EU. Genuine MSRP is $189. Corvid's program clock starts in Week 1 and reaches a warehouse in Bensenville, Illinois in Week 41.

| Phase | What you finish with | Elapsed | Typical spend | |---|---|---|---| | 1. Registration prerequisites | Every enforced mark on the Principal Register, in the right class, in the right name | 2 weeks of work; 8–10 months of prosecution lag | $2,000–$8,000 | | 2. CBP recordation and the port file | Live recordations, an approved PITG, trained ports | 10–14 weeks | $1,200 in fees + $6,000–$12,000 | | 3. Marketplace and platform enrollment | Registry access, self-service takedown, serialization commitment | 3–6 weeks | Staff time | | 4. Monitoring and detection | Watch notices, image hits, a triage rubric | 2 weeks to configure | $3,000–$15,000/yr | | 5. Test buys and evidence | Authenticated units, hashed listing captures, chain of custody | Ongoing | $18,000–$45,000/yr | | 6. Takedown and specific notice | Listings down, seller accounts terminated, platforms on notice | Days per cycle | Staff time | | 7. Seizure response | Authentication filed, goods seized, § 133.21(e) disclosure in hand | Hours to 60 days | Under $2,000 per event | | 8. Litigation escalation | TRO, asset restraint, domain transfers, judgment | 3–9 months | $80,000–$200,000 | | 9. Criminal referral | A file that clears triage | 90 days to decide | Staff time | | 10. Program discipline | Docket, metrics, annual audit | Annual | See Phase 10 |

Phase 1 — Fix the registrations everything else stands on

[ ] Build a five-column reconciliation table: SKU, mark(s) appearing on the product and packaging, international class, the identification of goods as written in the registration, and the registration number. Flag every row where the goods you actually sell are not inside the identification.
- Why. Every enhanced remedy in this checklist keys off a Principal Register registration that is in use and covers those goods. A Class 18 handbag registration does nothing about counterfeit Class 9 phone cases, at the port or in court.
- Authority. 15 U.S.C. § 1116(d)(1)(B)(i); 19 C.F.R. § 133.1(a); TMEP § 1402.01.
[ ] Confirm each mark you intend to enforce is on the Principal Register. Move anything sitting on the Supplemental Register by filing a fresh application with a § 2(f) claim of acquired distinctiveness.
- Authority. 15 U.S.C. § 1052(f); TMEP § 1212; 19 C.F.R. § 133.1(a).
- Trap. Supplemental Register marks cannot be recorded with CBP, full stop, and most marketplace brand registries will not accept them either. A descriptive sub-brand on your best-selling line is an open border until it moves. The evidence you need is in the Secondary Meaning Evidence Checklist and Claiming Acquired Distinctiveness at the USPTO.
[ ] File applications to close every class gap you found. Budget the base application fee of $350 per class under 37 C.F.R. § 2.6, and avoid the free-form identification surcharge by pulling language from the USPTO's Acceptable Identification of Goods and Services Manual.
- Why. Prosecution lag is the binding constraint on the whole program. A registration filed today is enforceable at the border in nine to twelve months, not next week.
- See. The Nice Classification System, Drafting an Identification of Goods and Services, and the Goods and Services Identification Checklist.
[ ] Register the device mark separately from the word mark, in every class where the device appears on goods or packaging.
- Trap. Counterfeiters copy the logo more often than the wordmark, and a port officer scanning a carton is comparing shapes, not reading. A portfolio with the house wordmark registered in six classes and the device in one is a portfolio built for the wrong enforcement.
[ ] Verify that title stands in the name of the operating entity that will sign the CBP recordation, the authentication declaration, and the complaint. Record any outstanding assignment through the USPTO's Electronic Trademark Assignment System.
- Authority. 37 C.F.R. §§ 3.11, 3.25, 3.41; see the Trademark Assignment Recordal Checklist and Trademarks in the Deal.
- Trap. A registration still standing in a predecessor's name produces a recordation the port cannot match to your declarant, and a plaintiff who cannot show it is the registrant or assignee may be denied statutory damages entirely. Run the chain before you record, not after. If the brand was acquired, work the Trademark Due Diligence Checklist.
[ ] Register the copyright in packaging artwork, product photography, hangtag illustration, and the owner's manual — as a group registration where the deposit rules allow.
- Why. Copyright gives you a second, faster, statutory lever on platforms and a third recordable right at CBP. See What Copyright Registration Actually Buys You, Registering a Copyright, and the Copyright Registration Checklist.
- Authority. 17 U.S.C. § 411(a); 19 C.F.R. §§ 133.31–133.37.
[ ] Put ® on the goods, the packaging, the listings, and the catalogue for every registered mark.
- Authority. 15 U.S.C. § 1111. Absent actual notice, a registrant who omits statutory notice may recover no profits or damages at all.
[ ] Decide whether your product configuration is registrable trade dress, and if so start that application now.
- Why. Unregistered trade dress is stranded in 15 U.S.C. § 1125(a) — no seizure, no § 1117(b) trebling, no statutory damages, and at the ITC it triggers an injury requirement a registered mark does not. See Trade Dress and the Functionality Doctrine, Protecting Trade Dress, and the Trade Dress Protection Checklist.
[ ] Docket § 8, § 9, and § 15 for every registration and confirm the marks are in genuine use in every class you plan to enforce.
- Authority. 15 U.S.C. §§ 1058, 1059, 1065; see Filing a Section 8 Declaration, Section 15 Incontestability, and the Section 8 & 9 Renewal Checklist.
- Trap. A registration maintained on paper while the line is dormant is a weak platform for an ex parte application and an invitation to a cancellation counterclaim. See Use It or Lose It.

Corvid, Weeks 1–3. Three gaps. The wing device was registered only in Class 9 while counterfeit jerseys were Class 25; the carton artwork had never been registered with the Copyright Office; and CORVID VISORCLIP had been parked on the Supplemental Register five years earlier. Corvid filed a Class 25 device application, a group copyright registration, and a fresh Principal Register application for VISORCLIP with a § 2(f) claim. About $4,300 all in. Nine months to registration on the trademark filings — nine months during which the Class 25 jerseys were unstoppable at the border.

Phase 2 — Record with CBP and give the port something usable

[ ] File one recordation application per registration, per class, through CBP's Intellectual Property Rights e-Recordation (IPRR) system. Pay $190 per class.
- Authority. 19 C.F.R. §§ 133.2, 133.3(b). Paper filing survives under § 133.2 but there is no reason to use it. Processing typically runs a few business days to a few weeks; there is no substantive examination.
- Why. Seizure of goods bearing a counterfeit mark does not require recordation, 19 U.S.C. § 1526(e), but detention of goods bearing a mark that merely copies or simulates your mark does — and that is the track that catches CORVIO, CORVIDE, and a wing device with one extra feather. 15 U.S.C. § 1124; 19 C.F.R. § 133.22.
[ ] Complete the common-ownership field honestly: identify every parent, subsidiary, or affiliate under common ownership or control that uses the mark abroad.
- Authority. 19 C.F.R. § 133.2; ownership and control defined at 19 C.F.R. § 133.2(d); the exception was sustained in K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988).
- Trap. This disclosure forecloses ordinary gray-market restriction under 19 C.F.R. § 133.23, because that relief exists only where the U.S. and foreign owners are not commonly owned or controlled. Know it going in and plan the contract response. Your remaining route is a Lever-rule petition under 19 C.F.R. § 133.2(e) — see Gray Market Goods, Fighting or Defending Parallel Imports, and the Gray Market Enforcement Checklist.
[ ] Record the trade name and the registered copyrights under the other Part 133 subparts.
- Authority. Trade names used at least six months: 19 C.F.R. §§ 133.11–133.15. Copyrights: 19 C.F.R. §§ 133.31–133.37.
[ ] Search the public Intellectual Property Rights Search (IPRS) database after filing and confirm every field on your own record is correct.
[ ] Draft a Product Identification Training Guide (PITG): ten to twenty image-heavy pages, tied to a recorded mark, submitted by email to the IPR Help Desk at iprhelpdesk@cbp.dhs.gov for review and approval.
- Contents. Rights holder and recordation data with two named contacts and mobile numbers; authorized manufacturing countries and sites; authorized importers of record and IOR numbers; ports through which genuine goods normally enter; binary genuine-product identifiers; packaging and barcode data including your GS1 company prefix; three to five side-by-side genuine/counterfeit images at real resolution; known counterfeit indicators and prior seizure ports; and CBP's required disclaimer.
- Trap. A PITG built on quality tells — "inferior foam," "sloppy logo" — is worse than none. Superfakes defeat quality tells, and subjective criteria cannot be defended in a forfeiture proceeding. Write yes/no tests: serial format, barcode prefix, country of origin, label construction.
[ ] Reproduce CBP's required disclaimer verbatim, including the direction that CBP personnel with questions contact the IPR Branch, Office of Trade, Regulations & Rulings. It is a condition of acceptance.
[ ] Deliver product identification training. Run one recorded national webinar annually and live sessions at the two or three ports generating your hits. Schedule through CBP's IPR policy and programs mailbox.
- Why. CBP states that rights holders who train see heightened identification of counterfeit goods, and training may only be given for recorded marks using a pre-approved PITG.
[ ] Name two humans who will answer a port call within four hours, and put their mobile numbers in the PITG. Ports call at 4:50 p.m. on Fridays.

Corvid, Weeks 1–14. Five class recordations at $190 = $950, live in eight business days. The PITG ran nineteen pages and was approved in Week 11. A Week 14 webinar reached 190 officers at 47 ports. The single most productive line in the document: "No genuine CORVID helmet has ever been manufactured in Bangladesh, Türkiye, or Mexico." Three detentions on country-of-origin mismatch alone within four months.

Phase 3 — Enroll everywhere your goods and your fakes are sold

[ ] Enroll in the brand registry of every marketplace where your goods sell or your fakes appear: the major U.S. marketplace registries, the auction-platform rights-owner programs, the large Chinese platform IP portals where wholesale quantities are offered, the social-commerce and short-video IP centers, and the search-engine trademark complaint channels.
- What enrollment requires. A Principal Register registration number, images of the mark as used on goods and packaging, the product categories, a brand-authorized contact, and in some programs a verification call or code.
[ ] Commit to unit-level serialization and enroll in the authentication tier of every program that offers one.
- Why. This is the highest-leverage item in the entire checklist and the one brands resist most, because it touches the factory. One unique code per unit, applied at manufacture, converts authentication from a judgment call into a database lookup — at the port, on the platform, in the declaration, and in front of a jury.
[ ] Confirm your copyright registrations are issued or pending before you rely on 17 U.S.C. § 512.
[ ] Open the search-advertising and organic-removal channels separately. They are different intake systems with different standards, and both matter.
- See. Running a Keyword and Paid-Search Trademark Program and the Keyword Advertising Compliance and Enforcement Checklist.
[ ] Harvest INFORM Consumers Act disclosures into your target file for every high-volume seller offering your goods.
- Authority. 15 U.S.C. § 45f. Marketplaces must collect, verify, and disclose identifying information for third-party sellers with 200 or more discrete sales and $5,000 or more in gross revenues in a continuous twelve-month period during the prior twenty-four months.
- Trap. INFORM is a transparency statute enforced by the FTC and state attorneys general. It creates no private right of action, no trademark claim, and no duty to screen listings. Its value is a name and a service address on a storefront page — a defendant, not a remedy.
[ ] Set up domain and registrar abuse intake and a UDRP pipeline, because counterfeit operations rarely stop at listings.
- See. Cybersquatting and the ACPA, Filing a UDRP Complaint to Recover a Domain, and the UDRP Complaint Checklist. The whole online layer is gathered in the Online Brand Protection Toolkit.

Phase 4 — Stand up detection before you need it

[ ] Commission a watch that covers USPTO applications, domain registrations, and marketplace listings — not just the trademark register.
- See. Trademark Watch Services: What to Monitor.
[ ] Configure image-based monitoring on the device mark, and text monitoring on common misspellings, transliterations, and the model numbers counterfeiters copy verbatim.
[ ] Write a three-bucket triage rubric and apply it to every hit before anyone drafts anything: (1) counterfeit — identical or substantially indistinguishable mark on the registered goods; (2) infringement — confusingly similar but not counterfeit; (3) genuine goods in an unauthorized channel — gray market, overrun, or lawful resale.
- Why. The three buckets have different remedies, different fora, and different downside risk. Miscategorizing bucket 3 as bucket 1 is how brands lose credibility with a port and pick up a wrongful-seizure counterclaim under 15 U.S.C. § 1116(d)(11).
- Trap. Do not let the marketing team populate bucket 1. Lawful resale, repair, and comparative advertising all use your mark legitimately — see Descriptive and Nominative Fair Use and the Trademark Fair Use Audit Checklist.
[ ] Build an internal reporting channel — one inbox, one named owner — for sales reps, authorized dealers, warranty staff, and customers. Warranty claims on units you never made are the cheapest detection there is.
[ ] Reconcile factory output against purchase orders quarterly: units produced, materials consumed, serial ranges issued, and units received.
- Why. Third-shift overruns are invisible to every external monitoring tool and visible in a materials reconciliation. The contract terms that let you audit are in Drafting a Trademark License That Survives and the Trademark License Quality Control Checklist.

Phase 5 — Test buys and an evidence file that survives objection

[ ] Write the test-buy protocol before the first purchase: who buys, from what identity and payment instrument, how the parcel is received, who opens it, who photographs it, where units are stored, and who signs the log.
[ ] Buy through a neutral identity and a neutral card or account. Ship to a monitored address that is not the client's headquarters.
[ ] Photograph the sealed parcel — all six sides, the shipping label, the carrier barcode, and the declared value — before opening it. Preserve the outer packaging.
- Why. The label carries the origin address, the carrier, and often the importer of record. That is the single most valuable artifact in the box, and it is the one people throw away.
[ ] Capture the listing, the storefront page, the seller identifier, the INFORM-disclosed seller name and address, and the reviews, in a timestamped archive with a logged hash.
- Authority. Fed. R. Evid. 901(b)(1), 902(13), 902(14). A certification of a process producing an accurate result, or of data copied from an electronic device verified by hash, gets your captures in without a live witness.
- Trap. A screenshot pasted into a Word document with no URL, no timestamp, and no hash is worth very little at a contested preliminary injunction hearing and nothing at trial.
[ ] Authenticate each unit against the same objective criteria in your approved PITG, and record the result criterion by criterion.
[ ] Have safety-critical goods tested by an accredited laboratory and keep the report.
- Why. A failed impact-attenuation test converts a commercial dispute into a public-safety file, which changes how a platform escalates, how a Fines, Penalties, and Forfeitures officer treats a fine request, and whether an Assistant U.S. Attorney returns the call.
[ ] Log a chain-of-custody entry for every unit — date, custodian, transfer, storage location — and keep the units. Do not destroy the exemplars.
[ ] Keep counsel and investigators inside the ethical lines. Ordinary undercover test buys are permitted, Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999); Apple Corps Ltd. v. International Collectors Society, 15 F. Supp. 2d 456 (D.N.J. 1998). Pretextual contact with a represented party after suit is filed is not.
- Authority. Model Rules of Prof'l Conduct r. 4.2, 8.4(a), (c); confirm your jurisdiction's private-investigator licensing rules before an unlicensed employee does field work.
[ ] Feed every test buy into CBP's e-Allegations portal in batches, cross-referencing prior case numbers, with the shipper, consignee, port, arrival window, bill of lading or air waybill, container number, likely HTS classification, storefront URL, and the PITG criterion that failed.
- Why. A batched, referenced allegation builds a pattern file at the National Targeting Center. "Company X is importing counterfeit helmets" gets filed and forgotten.
- Trap. A tip that arrives after the container clears is worthless. CBP has five business days from presentation to decide whether to detain. 19 U.S.C. § 1499(c); 19 C.F.R. § 151.16.

Phase 6 — Takedown, and making notice count

[ ] Where the listing uses your product photography, packaging artwork, or copy, send the copyright notice first.
- Authority. 17 U.S.C. § 512(c)(3)(A)(i)–(vi): physical or electronic signature; identification of the work; identification of the infringing material and information reasonably sufficient to locate it; contact information; a good-faith-belief statement; and a statement, under penalty of perjury, of accuracy and of authority to act.
- Why. Platforms process § 512 notices on a defined schedule with defined consequences. Trademark complaints run on private policy. See The DMCA Safe Harbor, Sending and Fighting a DMCA Takedown, and the DMCA Takedown Notice Checklist.
[ ] File the trademark complaint through the platform's registry with listing-level specificity: URL, seller identifier, purchase date, order number, and the authentication basis, one row per listing.
- Why. A service provider needs knowledge of particular listings or particular sellers; generalized knowledge that its service is used to sell counterfeits is not enough. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010); Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995 (9th Cir. 2023).
[ ] Send the specific-knowledge letter, certified with a delivery receipt, to every intermediary in the chain: the platform, the fulfillment provider, the landlord or mall operator, the web host, and where appropriate the payment processor. Calendar a fourteen-day follow-up.
- Why. The letter is what converts a bystander into a defendant with knowledge. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982); Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021); Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019); Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011).
- See. Sending an Effective Cease-and-Desist Letter and the Trademark Cease-and-Desist Letter — Template.
[ ] Ask for three things, not one: removal of the identified listings, termination of the seller accounts under the repeat-infringer policy, and application of the platform's account-linkage tools to related accounts sharing a payment instrument, return address, or device fingerprint.
[ ] Document reappearances. Record the date each terminated storefront returns, the new identifier, and every shared attribute.
- Why. Reappearance history is the proof that removal alone is not an appropriate response, and it is the joinder evidence you will need in Phase 8.
[ ] Handle counter-notices on the statutory clock and decide, per listing, whether to sue.
- Authority. 17 U.S.C. § 512(g)(2)(B)–(C): material goes back up in not less than ten and not more than fourteen business days unless the notifier files an action seeking to restrain the subscriber.
[ ] Screen every notice for lawful resale, repair, refurbishment, and comparative advertising before it goes out.
- Authority. 17 U.S.C. § 512(f) creates liability for knowing material misrepresentation, and a notifier must form a subjective good-faith belief that the use is not authorized by law, including by fair use. Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016).
- Trap. Teams measured on listings removed send sloppy notices, sweep in legitimate sellers, and eventually earn a platform penalty or a § 512(f) claim. Measure seller terminations and ninety-day recidivism instead. Ten accounts permanently gone beats four thousand listings that repost on Tuesday.

Phase 7 — Seizure response: the port has your goods

[ ] Acknowledge the port's contact the same business day. Deliver the written authentication within 48 hours, always.
- Why. Absent clear evidence of infringement CBP will release the goods, and a brand that takes a week trains the port to stop calling.
[ ] Send a one-page authentication declaration signed under penalty of perjury, stating (a) the declarant's qualifications and how many units they have inspected, (b) the registration and recordation numbers, (c) four to six objective grounds drawn from the PITG, (d) that neither the importer of record nor the shipper appears on the authorized-user list in your recordation, and (e) that the owner does not consent to importation.
- Authority. 19 U.S.C. § 1526(e) forfeits seized merchandise "absent the written consent of the trademark owner" — say the words. Pre-seizure disclosures to you are governed by 19 C.F.R. § 133.21(b)–(c) and 19 U.S.C. § 1628a.
- Why (the second reason). You may file a version of this declaration in district court in six months. Write it as though a magistrate judge will read it, because one will.
[ ] Request a sample and be ready to bond it — typically 120% of the sample's cost, insurance, and freight value plus duties and fees, returnable on demand.
- Authority. 19 C.F.R. § 133.21(c), (f).
[ ] Calendar the seizure and the disclosure. CBP must have probable cause and acts within thirty days of detention on the counterfeit track; within thirty days of seizure it must disclose the name and address of the manufacturer, the exporter, and the importer.
- Authority. 19 U.S.C. § 1526(e); 19 C.F.R. §§ 133.21, 133.21(e). If the disclosure is late, email the IPR Help Desk with the seizure number.
- Why. A $190 recordation and a one-page declaration produce the factory, the freight forwarder, and the U.S. buyer — the three facts an investigator would spend $25,000 developing. This is the real return on Phase 2.
[ ] Load the disclosure into a target file keyed by importer of record, and cross-reference it against your storefront linkage data from Phase 6.
[ ] Ask the Fines, Penalties, and Forfeitures officer at the port of seizure for a civil fine, and make it easy: attach a declaration establishing genuine MSRP at the time of seizure and the prior seizure history you have compiled.
- Authority. 19 U.S.C. §§ 1526(f), 1595a(b); 19 C.F.R. § 133.27. First seizure is capped at the domestic value the goods would have had if genuine; later violations at twice that. Knowledge is not an element. You cannot compel assessment, and the money goes to the Treasury — but a repeat importer facing a doubled fine measured by your MSRP stops.
[ ] Give the FP&F officer your written position, same day, if the importer files a petition for relief.
- Authority. 19 C.F.R. Part 171; 19 U.S.C. §§ 1617, 1618. Note that the Civil Asset Forfeiture Reform Act's protections do not apply to Tariff Act forfeitures. 18 U.S.C. § 983(i)(2)(A).
[ ] Refuse consent to mark obliteration, government transfer, or charitable donation for anything with a safety function, in writing, with the reason stated.
- Authority. 19 U.S.C. § 1526(e); 19 C.F.R. § 133.52(c). A counterfeit helmet with the logo sanded off is still a helmet that fails a drop test.
[ ] Never authenticate a gray-market, overrun, or salvage unit as counterfeit.
- Trap. The importer's customs counsel will establish it in a petition, the port will remember, and a knowingly false authentication is the foundation of a wrongful-detention claim and, if you have also filed suit, a Fed. R. Civ. P. 11(b) problem. Say "these are genuine goods Corvid did not authorize for U.S. sale" when that is the truth, and pursue them through a Lever petition or a distribution contract. The whole genuine-goods track is gathered in the Gray Market and Parallel Import Toolkit.

Corvid, Weeks 19–41. Long Beach detained 640 helmets in Week 19; Corvid authenticated in six hours and CBP seized in Week 23. The Week 26 § 133.21(e) disclosure named a Dongguan factory and a Chicago-area importer of record at a Bensenville address. Newark detained 1,100 helmets from the same IOR in Week 31, and a civil fine was assessed. In Week 38, Savannah released 300 counterfeit jerseys — the Class 25 device recordation was not yet live. Nine months of prosecution lag is nine months of open border.

Phase 8 — Escalate to court

[ ] Decide, in writing, what you want: the goods off the market, money, or a named defendant who will stop. The three push in different procedural directions and very few clients need all three.
[ ] Choose the vehicle. Use Fed. R. Civ. P. 65(b) for online and multi-storefront cases; reserve the statutory ex parte seizure order under 15 U.S.C. § 1116(d) for the brick-and-mortar target — the warehouse, the flea market stall, the pop-up outside the arena.
- Why. Rule 65(b) avoids the § 1116(d) bond framework, mandatory law-enforcement service, the seven-day execution window, and the dedicated wrongful-seizure counterclaim at § 1116(d)(11).
- See. Moving for a TRO or Preliminary Injunction in a Trademark Case, the Preliminary Injunction Motion Checklist for Trademark Cases, and Preliminary Injunctions in Trademark Cases.
[ ] Assemble the filing package: complaint with a sealed defendant schedule; motion to seal; ex parte motion for a TRO, asset restraint, expedited discovery, and alternative service; memorandum of law; investigator declaration; brand authentication declaration; the CBP seizure declaration with the § 133.21(e) disclosures attached; counsel declaration on notice and prior conduct; a narrowly drafted proposed order; and bond papers under Fed. R. Civ. P. 65(c).
- Why the CBP file matters here. It gives you a federal agency's probable-cause determination that the goods are counterfeit, instead of your own say-so.
[ ] Prove the evidence-destruction finding with dated, sourced, third-party facts — prior seizures against the same IOR, dissolved predecessor entities, shared registered agents, surveillance showing no fixed retail presence.
- Authority. 15 U.S.C. § 1116(d)(4)(B)(ii)(VII). Conclusory declarations fail: Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 1131–32 (9th Cir. 2006) ("thin and barebones"). Evidence that similarly situated defendants routinely destroy evidence can carry it, Lorillard Tobacco Co. v. Bisan Food Corp., 377 F.3d 313 (3d Cir. 2004), but evidence about this defendant carries it far better.
[ ] Plead an accounting of profits and keep pursuing it if you want an asset freeze to hold.
- Authority. Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999), bars a prejudgment freeze of assets in which no lien or equitable interest is claimed. An equitable accounting supplies the interest. Gucci America, Inc. v. Weixing Li, 768 F.3d 122, 130–32 (2d Cir. 2014).
- Trap. A complaint that treats the 15 U.S.C. § 1117(c) statutory election as foreordained has no equitable predicate for the freeze it is asking for, and judges in the districts that host most of these filings now say so out loud.
[ ] Justify joinder defendant by defendant. Shared payment instruments, shared return addresses, shared listing templates, sequential seller identifiers, and shared shipping origins are answers. Volume is not.
- Authority. Fed. R. Civ. P. 20(a)(2)(A)–(B).
[ ] Give the U.S. Attorney reasonable notice before any § 1116(d) application, so the government can object if the seizure would compromise an investigation.
- Authority. 15 U.S.C. § 1116(d)(2). Usually nothing happens. Occasionally you learn your target is already under sealed indictment — exactly what you needed before sending a marshal to a warehouse.
[ ] Move for alternative service on foreign sellers under Fed. R. Civ. P. 4(f)(3), by email and platform messaging.
- Authority. Rio Properties, Inc. v. Rio International Interlink, 284 F.3d 1007, 1016–18 (9th Cir. 2002). Service by mail is not available where the destination state has objected to Article 10 of the Hague Service Convention; cf. Water Splash, Inc. v. Menon, 581 U.S. 254 (2017).
[ ] Diary the TRO clock and the statutory hearing dates the day the order issues.
- Authority. Fed. R. Civ. P. 65(b)(2) — 14 days, one like extension for good cause. Statutory seizure order: execution within a period ending not later than seven days after issuance, 15 U.S.C. § 1116(d)(5)(C); hearing not sooner than ten and not later than fifteen days after issuance, § 1116(d)(10)(A).
[ ] Preserve the statutory damages election until you have seen the defendant's records; it runs until final judgment in the trial court.
- Authority. 15 U.S.C. § 1117(c) — $1,000 to $200,000 per counterfeit mark per type of goods, up to $2,000,000 if willful. Trebling and fees under § 1117(b) are mandatory absent extenuating circumstances. See What a Trademark Win Is Worth, Proving Trademark Damages and Disgorging Profits After Romag, and the Trademark Monetary Recovery Checklist.
- Trap. Present a conservative, well-evidenced unit count. Maximalist arithmetic — every mark times every SKU — invites a judge to do rough justice against you.
[ ] Consider a Section 337 investigation only if you want a general exclusion order and can prove a domestic industry on documents you already have.
- Authority. 19 U.S.C. § 1337(a)(1)(C), (a)(2)–(3), (d)(2). Registered marks require no injury showing; unregistered trade dress does. Budget $1.5M–$5M and 16–18 months, and expect no money at all.
[ ] Remember that a district court injunction is not enforceable by CBP. Continuing border effect comes from your recordation or from an ITC exclusion order, never from your judgment.
- See. The litigation sequence in the Trademark Litigation Toolkit, the pre-filing record in the Pre-Litigation Enforcement Checklist, forum framing in Federal Court vs. TTAB, and remedies in the Trademark Remedies Toolkit.

Phase 9 — Criminal referral

[ ] Score the file against the four features that clear an Assistant U.S. Attorney's triage: a health or safety dimension; quantified scale; provable knowledge; and a cooperative victim who will testify for two or three years.
[ ] Do the sentencing arithmetic for the prosecutor and show your work: retail value of the genuine item times the number of infringing items.
- Authority. U.S.S.G. § 2B5.3(b)(1) ("infringement amount"). Corvid's three seizures — 2,640 units at a $189 genuine MSRP — produce roughly $500,000 before a single undercover buy.
[ ] Package the referral: a three-page cover memo (marks, registrations, recordations, products, safety issue, arithmetic); CBP seizure notices and § 133.21(e) disclosures; test-buy chain of custody; the authentication declaration; corporate records on the target entities; a witness list with contact details; and an offer to deliver the PITG as agent training.
[ ] Route it. The National Intellectual Property Rights Coordination Center is the interagency front door — Homeland Security Investigations leads, with CBP, the FBI, the Postal Inspection Service, FDA's Office of Criminal Investigations, and DOJ's Computer Crime and Intellectual Property Section. Use the "Report IP Theft" intake or the IPR Center line at 1-833-804-2539.
[ ] Identify the charges in play so the memo speaks the prosecutor's language: 18 U.S.C. § 2320 (trafficking in counterfeit goods, labels, packaging, military goods, and drugs), § 371 (conspiracy), § 542 (entry by false statement), § 545 (smuggling), §§ 1341 and 1343 (mail and wire fraud), §§ 1956–1957 (money laundering), and forfeiture under § 2323. The limitations period is five years. 18 U.S.C. § 3282.
[ ] Decide referral timing inside the first ninety days.
- Trap. The worst sequence is a referral made after you have deposed the defendant and settled. The prosecutor inherits a signed release, a witness who feels immunized, and a civil record full of your client's proprietary information. Refer early enough to be useful, late enough to have a file.
[ ] Preserve the client's victim rights and restitution claim, and file a victim impact statement.
- Authority. 18 U.S.C. §§ 2320(e), 3663, 3663A, 3771.
[ ] Check state law. Many states have counterfeiting statutes reaching conduct federal law does not, and a district attorney with a warehouse in her county sometimes moves faster than a U.S. Attorney.
[ ] Brief the client honestly on the cost of referral: your civil case can be stayed, your witnesses become the government's, and your client loses control of timing and settlement.

Phase 10 — Run it as a program

[ ] Docket CBP recordation renewals in the same calendar as the § 8 and § 9 filings, keyed to the underlying registration.
- Authority. 19 C.F.R. §§ 133.4, 133.7 — recordation runs concurrently with the registration term and is renewed after each USPTO renewal at a lower per-class fee.
- Trap. A lapsed recordation is a silent failure. Nothing breaks; the port just stops looking. See Docketing Deadlines.
[ ] Reconcile four lists annually, in one sitting: every SKU bearing a mark; every registration and its classes; every CBP recordation and its expiry; and every marketplace registry enrollment. Every SKU in list one and missing from lists two, three, and four is an open door.
- See. The Annual Trademark Portfolio Review Checklist, the Trademark Portfolio Inventory — Template, and the Trademark Portfolio Management Toolkit.
[ ] Refresh the PITG and re-deliver training every year; port personnel rotate.
[ ] Measure six things: seizures per quarter by port and by importer of record; unique seller accounts terminated; ninety-day recidivism of terminated sellers; test-buy hit rate by channel; hours from CBP contact to authentication; and cost per terminated seller. The last one gets the budget approved.
[ ] Budget the program as a line item. At Corvid's scale a serious program runs roughly $220,000–$540,000 a year — about 0.5% to 1.3% of revenue — across recordations, PITG maintenance, registry administration, test buys, an investigator retainer, one enforcement action, and outside counsel.
[ ] Extend abroad. After Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), the Lanham Act reaches only domestic use in commerce, so purely foreign manufacture and foreign sale is outside the Act. Register and act in the country of production, and record in the transshipment jurisdictions.
- See. The International Trademark Toolkit and Filing an International Trademark via the Madrid Protocol.
[ ] Re-run Phase 1 whenever the product line changes, the company acquires a brand, or a licensee is terminated.

Common Mistakes

Recording the wordmark and stopping. Twelve registrations, two recordations, no device mark, no packaging copyright. CBP enforces what an officer can see on the carton.
A class gap nobody priced. The registration covers helmets; the counterfeits are jerseys. Nine months of prosecution lag is nine months of open border, and it is visible on paper long before it costs anything.
Calling infringement "counterfeiting" in writing. A defendant who defeats the counterfeiting characterization has also defeated your mandatory fee entitlement under 15 U.S.C. § 1117(b) and your statutory damages election. Plead it when the mark is identical or substantially indistinguishable on the registered goods; otherwise plead infringement and win that.
A PITG full of adjectives. "Sloppy stitching" cannot be defended in a forfeiture proceeding and is defeated by any competent superfake. Binary tests only.
Answering the port on Monday. Absent clear evidence of infringement CBP releases the goods. Same business day, or 48 hours at the outside, every time.
Throwing away the shipping label. It carries the origin address, the carrier, and often the importer of record — the best lead in the parcel.
Measuring listings removed. Volume targets produce sloppy notices, swept-in legitimate resellers, platform penalties, and eventually a 17 U.S.C. § 512(f) claim. Measure terminations and recidivism.
Consenting to release "just this once." Written consent defeats forfeiture under 19 U.S.C. § 1526(e), documents an instance of authorized importation, and hands the next defendant an argument about your policing.
Asking for an asset freeze while pleading only statutory damages. No equitable claim, no equitable predicate, no freeze after Grupo Mexicano.
Joinder by assertion. "They all sell counterfeits" is not a Rule 20(a)(2) showing. Bring the shared payment instruments and return addresses.
Expecting CBP to enforce your injunction. It will not. Border effect comes from recordation or an ITC exclusion order.
Referring late. After the deposition and the settlement, the criminal file is worth much less than it was in month two.

Deadlines at a Glance

| Clock | Trigger | Length | Authority | |---|---|---|---| | CBP decision to detain | Merchandise presented for examination | 5 business days | 19 U.S.C. § 1499(c); 19 C.F.R. § 151.16 | | Notice of detention to importer | Detention decision | 5 business days | 19 U.S.C. § 1499(c); 19 C.F.R. § 151.16 | | Deemed exclusion (importer may protest) | Presentation, if not released | 30 days | 19 U.S.C. § 1499(c); 19 C.F.R. § 151.16 | | Rights holder authentication response | Port contact | No statutory clock — treat as same day, 48 hours maximum | Practice | | Seizure on the counterfeit track | Detention | 30 days | 19 U.S.C. § 1526(e); 19 C.F.R. § 133.21 | | Cure window, copying/simulating track | Detention | 30 days to remove the mark or obtain consent | 19 C.F.R. § 133.22(b)–(c) | | Disclosure of manufacturer, exporter, importer | Seizure | 30 days | 19 C.F.R. § 133.21(e) | | Importer's petition for relief | Mailing of the seizure notice | 30 days | 19 U.S.C. § 1618; 19 C.F.R. Part 171 | | Public auction of forfeited goods | Forfeiture, if no agency or charity takes them | 90 days | 19 U.S.C. § 1526(e); 19 C.F.R. § 133.52(c) | | Execution of a statutory seizure order | Issuance | Not later than 7 days | 15 U.S.C. § 1116(d)(5)(C) | | Post-seizure hearing | Issuance of the order | Not sooner than 10, not later than 15 days | 15 U.S.C. § 1116(d)(10)(A) | | TRO duration | Entry | 14 days, one like extension for good cause | Fed. R. Civ. P. 65(b)(2) | | DMCA restoration after counter-notice | Receipt of counter-notice | Not less than 10, not more than 14 business days | 17 U.S.C. § 512(g)(2)(B)–(C) | | Statutory damages election | Runs until final judgment in the trial court | — | 15 U.S.C. § 1117(c) | | Criminal limitations period | Offense | 5 years | 18 U.S.C. § 3282 | | ITC institution decision | Complaint filed | 30 days | 19 C.F.R. § 210.10(a) | | ITC target date | Notice of Investigation | 16 months | 19 C.F.R. § 210.51(a)(1) | | Presidential/USTR policy review of an exclusion order | Commission determination | 60 days | 19 U.S.C. § 1337(j) | | § 8 declaration | Registration date | Between the 5th and 6th anniversary, 6-month grace | 15 U.S.C. § 1058 | | § 9 renewal and CBP recordation renewal | End of each 10-year term | 1 year before, 6-month grace | 15 U.S.C. § 1059; 19 C.F.R. §§ 133.4, 133.7 |