Anticounterfeiting and Border Enforcement Toolkit

By Casey Scott McKay · 2024-06-20

Counterfeiting is the only corner of trademark practice where five separate enforcement systems can be working the same shipment at once — Customs and Border Protection at the port, the International Trade Commission, a federal district court, a set of private marketplace policies, and a United States Attorney — and none of them will tell the others what it knows. This toolkit maps all five, gives the cost and the deliverable for each, and curates the Marksy documents that execute each step. It starts at the gate that governs everything: whether goods bear a counterfeit mark under 15 U.S.C. § 1116(d)(1)(B), are genuine goods diverted from an authorized channel, or are merely infringing, because that classification decides which remedies exist. From there it runs through CBP recordation under Part 133 of the customs regulations and the § 133.21(e) disclosure that is the cheapest intelligence in the practice, Section 337 investigations and general exclusion orders at the ITC, marketplace registries and the INFORM Consumers Act, John Doe and Schedule A litigation with asset restraints that survive Grupo Mexicano, and criminal referral under § 2320. A reading path, a branching decision tree, a primary-authorities table, and annotated form references close it out.

IP and Technology > Trademarks | Toolkit | Published 20 June 2024 - Updated 9 July 2025 | Casey Scott McKay - marksy.us

Summary. Counterfeiting is the only corner of trademark practice where five enforcement systems — a federal agency at the port, an independent trade tribunal, a district court, a set of private platform policies, and a federal prosecutor — can all be working the same shipment while none of them talks to the others. This toolkit maps all five, gives the cost and the deliverable for each, and curates the Marksy documents that execute each step. It begins at the gate that governs everything: whether the goods bear a counterfeit mark, are genuine goods diverted from an authorized channel, or are merely infringing. From there it runs outward through CBP recordation and the disclosure that is the cheapest intelligence in the practice, Section 337 and general exclusion orders, marketplace registries and the INFORM Consumers Act, John Doe suits and asset freezes, and criminal referral under 18 U.S.C. § 2320. A reading path, a decision tree, an authorities table, and the templates you will actually send close it out.

Keywords: cbp recordation · iprr e-recordation · 19 c.f.r. part 133 · counterfeit seizure · notice of detention · product identification training guide · section 337 · general exclusion order · lever rule · gray market goods · marketplace brand registry · schedule a litigation · john doe suit · asset freeze · ex parte seizure order · 18 u.s.c. 2320 · inform consumers act · criminal referral · statutory damages · contributory trademark infringement

Start Here

You are the only party with a view of all five systems. CBP does not know what your investigator bought last Tuesday. The marketplace does not know a container was seized at Newark. The Assistant U.S. Attorney does not know you already have a chain-of-custody file. Nobody assembles this picture but you, and the craft of anticounterfeiting practice is deciding which of the five to feed, in what order, with what.

It is for the people who own that problem: in-house brand protection counsel building a program from nothing; outside counsel handed a photograph of a fake and a budget; the litigator who inherited a mass-defendant file; and the general counsel of a company where the problem is real and the money is finite.

Three questions it answers:

Is this actually a counterfeiting problem — and which remedies does that answer unlock or foreclose?
What do I file, where, in what order, and what does each step cost?
When is the border enough, when do I need a court, and when do I need a prosecutor?

If you read only one thing, read Stopping Counterfeits at the Border: A Practitioner's Guide to CBP Recordation, Seizures, and Enforcement Programs. It explains the highest-return filing in trademark practice: a recordation that costs $190 per class under 19 C.F.R. § 133.3(b) and buys an enforcement partner with tens of thousands of employees at every port of entry.

One exception. If you have not yet classified the goods — counterfeit, genuine-but-diverted, or merely infringing — spend forty minutes on Trademark Counterfeiting first. Misclassifying is the most expensive mistake here, and the one most often made in writing.

The Whole Machine, in One Pass

1. The port. CBP enforces three distinct trademark rights at the border: counterfeit marks, marks that copy or simulate a recorded mark, and restricted gray market goods. 15 U.S.C. § 1124; 19 U.S.C. § 1526. The counterfeit track is mandatory and needs no recordation — CBP must seize and forfeit merchandise bearing a counterfeit mark whether or not you have filed anything. 19 U.S.C. § 1526(e); 19 C.F.R. § 133.21. The other two tracks are unavailable without recordation, and unrecorded marks are effectively invisible to CBP's targeting. That is the real argument for recording: not the goods you stop, but the fact that anyone is looking.

The clocks are short: five business days from presentation to decide on detention, 19 U.S.C. § 1499(c); deemed exclusion at thirty days; thirty days from detention to seize. Within thirty days of seizure CBP must disclose the name and address of the manufacturer, the exporter, and the importer. 19 C.F.R. § 133.21(e). That is the most undervalued thing in the practice — three facts an investigator would spend $25,000 developing, delivered for the price of a recordation and a one-page declaration.

2. The Commission. A Section 337 investigation produces what CBP's transactional authority cannot: a standing, prospective order. A limited exclusion order reaches only named respondents' articles; a general exclusion order reaches all covered articles regardless of source, available to prevent circumvention or where a pattern of violation makes sources hard to identify. 19 U.S.C. § 1337(d)(2). Counterfeiting is the paradigm GEO case — the sources are numerous, foreign, interchangeable, and anonymous. Jurisdiction is in rem over the articles, so you never litigate personal jurisdiction over a Guangdong factory, and eBay does not apply. Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331, 1358–59 (Fed. Cir. 2010). The price: $1.5 million to $5 million, sixteen to eighteen months, domestic industry proof under § 1337(a)(3), and no damages at all.

3. The court. District court holds the money and the coercive orders: ex parte seizure under 15 U.S.C. § 1116(d), or far more often a Fed. R. Civ. P. 65(b) temporary restraining order; asset restraints served on payment processors; domain transfers; trebled profits with mandatory fees under 15 U.S.C. § 1117(b); or statutory damages up to $2,000,000 per counterfeit mark per type of goods under § 1117(c). It is also under the most pressure, as judges in the districts hosting mass "Schedule A" filings scrutinize joinder, wholesale sealing, and prejudgment freezes.

4. The platform. Private ordering, not law, shaped by one case. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), held that generalized knowledge a service is used to sell counterfeits is not enough for contributory liability, which puts detection permanently on you. Brand registries, self-service takedown, and unit-level authentication are the industry's answer. Congress's one real contribution is the INFORM Consumers Act, 15 U.S.C. § 45f, requiring marketplaces to collect, verify, and disclose identifying information for high-volume third-party sellers — 200 or more discrete sales and $5,000 in gross revenues in a continuous twelve-month period. It is a transparency statute enforced by the FTC and state attorneys general: no private right of action, no duty to screen listings. Its value is that it puts a name and service address on a storefront page, which is a defendant.

5. The prosecutor. Trafficking in counterfeit goods is a felony under 18 U.S.C. § 2320 — up to ten years and $2,000,000 for an individual first offense, far more where military goods, drugs, serious bodily injury, or death are involved. Referrals run through the National Intellectual Property Rights Coordination Center, led by Homeland Security Investigations, to a U.S. Attorney's office. AUSAs triage these against violent crime; the files that clear triage share four features: a health-or-safety dimension, scale quantified the way U.S.S.G. § 2B5.3 quantifies it, provable knowledge, and a victim who will testify for three years.

| System | Entry cost | Time to effect | What it delivers | What it requires | |---|---|---|---|---| | CBP Part 133 | $190/class | Days | Interdiction, the § 133.21(e) disclosure, civil fines | Principal Register registration; a usable training guide | | ITC § 337 | $1.5M–$5M | 16–18 months | Prospective category-wide exclusion; no money | Domestic industry proof | | District court | $25k–$150k for a TRO package | Days (ex parte) to months | Money, asset freezes, domains, injunctions | Personal jurisdiction; a defendant with assets | | Platforms | Staff time | Hours to days | Listing removal, seller termination, seller identity | Listing-level specificity, every time | | Criminal referral | Staff time | Months to years | Incarceration, forfeiture, restitution, deterrence | Safety issue, scale, knowledge, a witness |

The throughline. All five key off one asset: a Principal Register registration, in the right class, covering the goods that actually bear the mark, in the correct owner's name. Supplemental Register marks cannot be recorded, 19 C.F.R. § 133.1(a), and most brand registries will not take them. A Class 18 handbag registration does nothing about counterfeit Class 9 phone cases. A registration still standing in a predecessor's name after an asset purchase produces a recordation the port will not honor. An hour of registration hygiene before a problem is worth ten hours of enforcement after one.

The trap in every file. Counterfeiting is a narrow legal category, not a synonym for "bad copy." A mark is counterfeit only if it is spurious and identical with or substantially indistinguishable from a registered mark, 15 U.S.C. § 1127, and the enhanced-remedy definition at § 1116(d)(1)(B) adds that the registration be on the Principal Register, in use, and for those goods. The Second Circuit vacated a $21 million counterfeiting judgment in Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020), because the case was a jury question. Stop writing "counterfeit" in emails until you have run the definition.

1. The Gate: Counterfeit, Genuine-but-Diverted, or Merely Infringing

Three buckets, three different practices. Get this wrong and you spend a year on the wrong remedy — or authenticate a genuine unit as counterfeit and hand the other side a wrongful-detention claim and a Fed. R. Civ. P. 11(b) motion.

Trademark Counterfeiting: Civil Seizures, Statutory Damages, and Criminal Exposure is the doctrinal anchor of this collection. It works the gap between the § 1127 definition and the narrower § 1116(d)(1)(B) "counterfeit mark," traces contributory liability from Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), through Tiffany, Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021), and Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995 (9th Cir. 2023), and sets out the statutory damages arithmetic and the post-Grupo Mexicano asset-freeze fight. Reach for it at intake, before the first letter, and again when you decide whether to plead a counterfeiting count.

Gray Market Goods: The First Sale Doctrine, Material Differences, and Parallel Imports is the other half of the gate. It explains why genuine goods sold outside your distribution system are not counterfeits and how the material-differences test from Societe des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633 (1st Cir. 1992), works. Read it the moment a supposed fake turns out to have a real serial number in your own database.

Fighting or Defending Parallel Imports executes that second bucket, including the Lever-rule application under 19 C.F.R. § 133.2(e) with model language and a candid account of why a grant is a labeling remedy, not an embargo. Use it when you need to price a customs petition against a contract fix. The Gray Market Enforcement Checklist is the working version — eleven phases, including the "all or substantially all" self-audit of your own U.S. sales that decides whether a case exists at all under Bourdeau Bros., Inc. v. Int'l Trade Comm'n, 444 F.3d 1317 (Fed. Cir. 2006). Run it before you accuse anyone. The whole genuine-goods track sits in the Gray Market and Parallel Import Toolkit; if your intake call includes "these are our products, but we did not sell them here," go there instead.

2. The Border File: Recordation, the Training Guide, and the Disclosure

Stopping Counterfeits at the Border runs twelve stages from a portfolio recordability audit to an annual program review, with model authentication and petition language, four cost tables, and a forum decision tree. Work through it once, cover to cover, when you build a program; reopen it at Stage 5 when a port officer calls at 4:50 p.m. on a Friday with photographs and a question. Its central claim bears repeating: a recordation without a Product Identification Training Guide produces almost nothing, because CBP enforces what an officer can see on the box in ninety seconds.

Anticounterfeiting Program Checklist is that program compressed into ten phases of checkboxes with the authority attached to each. Work it top to bottom the first time; afterward Phases 5 through 9 repeat on every matter and Phase 10 runs annually. Hand it to a client's brand-protection manager, and audit against it when you inherit someone else's program.

Three registration problems disable border enforcement more often than anything else.

Class and identification gaps. The Nice Classification System explains why the words in your identification, not the words on your product, bound every remedy you have; read it when the SKU reconciliation shows goods outside the identification. Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist fix them. Fix them first: nine months of prosecution lag is nine months of open border.

Supplemental Register marks. They cannot be recorded, full stop. Moving one up with a § 2(f) claim is a secondary-meaning evidence project, run by Claiming Acquired Distinctiveness at the USPTO and the Secondary Meaning Evidence Checklist. Start it the day you find the gap, not the day the container arrives.

Chain of title. CBP records in the name of the owner of record, and a port will not release a sample to a party whose name does not match. The Trademark Assignment Recordal Checklist is the twenty-minute fix; Trademarks in the Deal explains how the defects arise in acquisitions and which are fatal.

Record the copyrights too. Part 133, Subpart D permits recordation of registered copyrights, and package artwork, hangtag illustration, and product photography are often the easiest thing for a port officer to compare — and the fastest lever on a marketplace. Registering a Copyright and the Copyright Registration Checklist cover the filing, including group registration for a catalogue of product images; What Copyright Registration Actually Buys You is the memo for the CFO who asks why you are registering carton art.

Practice tip. Serialize. One unique code per unit, applied at manufacture, readable with a phone. It turns authentication from a judgment call into a database lookup at the port, on the platform, in the declaration, and in front of the jury. Nothing else improves so many stages at once, and nothing else is resisted so consistently, because it touches the factory.

One note on volume: the de minimis channel under 19 U.S.C. § 1321(a)(2)(C) — low-value parcels going straight to consumers — historically arrived with thin entry data and limited targeting, which is why direct-to-consumer counterfeiting migrated into it. It has been repeatedly restricted by administrative action since 2025; check its current treatment before building a program assumption around it.

3. The Commission: Section 337 and the General Exclusion Order

Stage 8 of the border guide is the full treatment, and it is where most brands should stop reading and start budgeting. Two things decide whether an ITC investigation makes sense: whether you can prove a domestic industry on documents you already have, and whether the problem is category-wide rather than actor-specific. A brand that designs in Portland, manufactures in Vietnam, and spends its money on marketing has a real fight on the economic prong of 19 U.S.C. § 1337(a)(3). A brand with U.S. engineering, testing, compliance, and warranty operations does not.

Two points matter even if you never file. First, a violation based on a registered mark under 19 U.S.C. § 1337(a)(1)(C) requires no injury showing, while an unfair-competition theory under § 1337(a)(1)(A) built on unregistered trade dress does — a difference worth six figures of expert economics, and a reason to register product configuration where you can. Protecting Trade Dress is the how-to; Trade Dress and the Functionality Doctrine is the sobering read on why much copied design is not protectable at all. Read both before promising a client the ITC will solve a knockoff-shape problem. Second, the ITC applies the same substantive infringement law a district court applies, Swagway, LLC v. Int'l Trade Comm'n, 934 F.3d 1332, 1338 (Fed. Cir. 2019), and Trademark Infringement: Proving Likelihood of Confusion is the short orientation to that standard — which is also what CBP's copying-or-simulating track rests on under 19 C.F.R. § 133.22(a).

The afterlife matters. A general exclusion order is administered by CBP through trade alerts and port targeting, 19 C.F.R. § 12.39(b)(1), and importers fight back through Part 177 ruling requests and Part 174 protests. An importer who wins a CBP ruling and resumes shipping still faces ITC penalties of up to $100,000 per day or twice the domestic value of the goods, 19 U.S.C. § 1337(f)(2) — as the $11 million penalty affirmed in Ninestar Technology Co. v. Int'l Trade Comm'n, 667 F.3d 1373 (Fed. Cir. 2012), shows.

Because production is offshore, the ITC conversation turns international. After Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), the Lanham Act does not reach purely foreign manufacture and sale, so the answer to a factory problem is a registration and an action in the country of production plus recordation in the transshipment jurisdictions. Sequencing is in the International Trademark Toolkit, the filing route in Filing an International Trademark via the Madrid Protocol. Reach for both the first time a § 133.21(e) disclosure names a factory you can find on a map.

4. The Platform Layer: Registries, Section 512, and INFORM

Because Tiffany put detection on you, this layer is a volume operation, and your chosen metric decides whether it works. Teams measured on listings removed send sloppy notices and eventually earn a platform penalty or a misrepresentation claim. Measure seller accounts permanently terminated and ninety-day recidivism instead.

Copyright is your fastest lever, because platforms process 17 U.S.C. § 512 notices on a defined statutory schedule with defined consequences while trademark complaints run on private policy. If the listing uses your product photography, packaging artwork, or copy — and it almost always does — send the copyright notice first. The DMCA Safe Harbor explains the four safe harbors, red-flag knowledge, and repeat-infringer policies, and tells you what leverage you actually have over a host. Sending and Fighting a DMCA Takedown is the fifteen-stage operating manual, including the ten-to-fourteen business day put-back window under § 512(g)(2) that decides whether a listing stays down. The DMCA Takedown Notice Checklist is what a paralegal running two hundred notices a month should have open. Screen every notice for lawful resale, repair, and refurbishment before it goes: § 512(f) creates liability for knowing material misrepresentation, and Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016), requires a subjective good-faith consideration of fair use. A vendor paid per takedown will not do that for you.

The trademark half of this layer — registries, storefront linkage, domains, search advertising — is curated in the Online Brand Protection Toolkit, the companion collection to this one and the right next stop when the counterfeits never cross a physical border because they ship in single parcels.

Counterfeit operations rarely stop at listings. Cybersquatting and the ACPA covers the federal claim under 15 U.S.C. § 1125(d), including in rem jurisdiction over the domain when the registrant cannot be found — which is most of the time. UDRP vs. Federal Lawsuit is the forum comparison to run before spending anything; when the answer is UDRP, Filing a UDRP Complaint to Recover a Domain and the UDRP Complaint Checklist take it from there. Bundle domain transfers into your proposed order when you have a district court case; run UDRPs when you do not. On paid search, the Keyword Advertising Compliance and Enforcement Checklist covers complaint channels separate from the marketplace channels and separately worth working.

Use INFORM as an investigative tool rather than a claim. The verified name and address a marketplace must display for a high-volume seller is often the only real-world identity in the file, and it converts an anonymous storefront into a served defendant.

5. Court: John Doe Suits, TROs, Asset Freezes, and the Money

Build the record before you file. The Pre-Litigation Enforcement Checklist is the short discipline pass — responsible party and correct legal name, registration and serial numbers, dates, evidence, a stamped copy in the file — and it is exactly what a magistrate judge looks for in an ex parte application. Trademark Watch Services: What to Monitor covers the monitoring layer that feeds it; a watch that catches conflicting filings also surfaces the applications counterfeiters file to legitimize storefronts.

Decide whether a letter helps before sending one. Sending an Effective Cease-and-Desist Letter covers doing it well; against a domestic distributor or a landlord it is the cheapest resolution available, and a certified letter with a delivery receipt is what converts a bystander into a defendant with knowledge under Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), and Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019). Against an anonymous overseas storefront it is worse than useless, because it moves inventory and dissolves entities. The Trademark Cease-and-Desist Letter — Template is the starting draft.

The motion mechanics are covered end to end. Moving for a TRO or Preliminary Injunction in a Trademark Case runs twelve stages from 48-hour triage to post-order contempt, with model declaration and order language and a decision tree for choosing among an ex parte TRO, an order to show cause, and a noticed motion. The Preliminary Injunction Motion Checklist is the filing-day version, including the Fed. R. Civ. P. 65(c) bond argument from both sides, and Preliminary Injunctions in Trademark Cases supplies the doctrine and the restored presumption of irreparable harm under 15 U.S.C. § 1116(a).

Two counterfeiting-specific overlays sit on that machinery, both in the border guide's Stage 10. First, choose the vehicle deliberately: Rule 65(b) for online and multi-storefront cases, and the statutory ex parte seizure order under § 1116(d) only for a brick-and-mortar target, because the statute brings a bond framework, mandatory law-enforcement service, a seven-day execution window under § 1116(d)(5)(C), and a dedicated wrongful-seizure counterclaim at § 1116(d)(11). Second, attach the CBP file. A seizure gives you a federal agency's probable-cause determination that the goods are counterfeit instead of your own say-so, and a pattern of seizures against the same importer of record is the best available proof of the evidence-destruction finding that conclusory declarations cannot carry. Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 1131–32 (9th Cir. 2006).

Plead the accounting of profits and mean it. 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). A complaint treating the § 1117(c) election as foreordained has no equitable predicate for the freeze it requests, and judges now say so out loud.

Then the money, which has its own three-document cluster. What a Trademark Win Is Worth maps 15 U.S.C. § 1117 — disgorgement after Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), corrective advertising, royalties, enhancement, and exceptional-case fees. Read it before the complaint, so you can tell the client what a win is worth. Proving Trademark Damages and Disgorging Profits After Romag is the fifteen-stage execution manual, and its Stage 10 tree for electing between § 1117(c) statutory damages and trebled profits under § 1117(b) is the most useful page here for a counterfeiting plaintiff. The Trademark Monetary Recovery Checklist is the twelve-phase working sequence, from the § 1111 notice audit through the Rule 54(d)(2) fee deadline and collection under Rule 69 — open it at intake, not at judgment.

For the procedural arc, see the Trademark Litigation Toolkit; for remedies in one place, the Trademark Remedies Toolkit; and when the fight is whether a superfake is fake at all, the Evidence and Expert Witness Toolkit.

One thing practitioners get wrong. A district court injunction is not enforceable by CBP. CBP enforces § 1526 seizures and ITC exclusion orders; it does not police the border for your private judgment. Continuing border effect comes from your recordation or from an exclusion order, never from your win.

6. The Prosecutor, and the Licensee Who Became a Counterfeiter

A criminal referral is a strategic act, not a favor, and it costs you control: your civil case can be stayed, your witnesses become the government's, and settlement timing stops being yours. The criminal section of Trademark Counterfeiting sets out the elements, the penalty tiers under 18 U.S.C. § 2320(b), the § 2320(g) repackaging exception, the overrun carve-out, and the fact that Lanham Act defenses come along for the ride under § 2320(d). Phase 9 of the Anticounterfeiting Program Checklist is the packaging list: a three-page cover memo, the CBP seizure notices, the chain of custody, the authentication declaration, and the U.S.S.G. § 2B5.3 arithmetic already done. Decide within ninety days — a referral made after you have deposed and settled with the defendant hands a prosecutor a compromised file.

Note the obligation running the other way: before applying for a statutory seizure order you must give the U.S. Attorney reasonable notice, 15 U.S.C. § 1116(d)(2), so the government can object if your seizure would blow up an existing investigation. Usually nothing happens. Occasionally you learn your target is under sealed indictment — exactly what you needed before sending a marshal to a warehouse.

One fact pattern deserves its own note, because it produces the strongest counterfeiting cases and the sloppiest paperwork: the terminated licensee and the third shift. Production continuing past termination is nearly always treated as counterfeiting, but a licensor with vague termination and sell-off provisions invites the argument that the goods were authorized. The controls are in the Trademark License Quality Control Checklist, the drafting in Drafting a Trademark License That Survives. The consequence of never policing at all is Naked Licensing — a defense a counterfeiting defendant will raise and occasionally win.

7. Running It as a Program

Programs die when the person doing them in their spare time leaves. The cure is a calendar and four metrics.

Once a year, reconcile four lists: every SKU that bears a mark; every registration and its classes; every CBP recordation and its expiry; every marketplace registry enrollment. Anything on the first list and missing from the other three is an open door, visible on paper months before it costs anything. Fold recordation renewals into the same docket as your § 8 and § 9 filings — a lapsed recordation is a silent failure, because nothing breaks, the port just stops looking. The Annual Trademark Portfolio Review Checklist is the sitting to attach this to, the Trademark Portfolio Inventory — Template is where the four lists live, and the Trademark Portfolio Management Toolkit holds the budgeting and docketing machinery around both.

Track seizures per quarter by port and by importer of record; unique seller accounts terminated, not listings removed; ninety-day recidivism of terminated sellers; and cost per terminated seller. The last one gets the budget approved.

For a small brand the arithmetic is friendlier than clients expect. Tallow & Tin, a Providence cast-iron cookware company doing about $6 million a year, records three classes for $570, spends two weekends on a training guide built around its foundry mark and lot-code format, delivers one webinar, and enrolls in four marketplace registries. First-year cash outlay: under $9,000. That will produce more seizures than $150,000 of litigation, and it is the only version of this practice a company that size can sustain. The escalation ladder from watch notice to demand letter to seizure order is in the Brand Enforcement Toolkit, the general-purpose parent of this specialized one.

A Suggested Reading Path

The core sequence, if you are building from nothing:

Trademark Counterfeiting — the gate and the doctrine.
Stopping Counterfeits at the Border — twelve stages, read once, cover to cover.
Anticounterfeiting Program Checklist — work it phase by phase with a docket open.
What a Trademark Win Is Worth — price the endgame before you start.
Annual Trademark Portfolio Review Checklist — calendar it, and the program survives you.

Then branch.

A port just called you. Border guide Stage 5 for the model authentication, Phase 7 of the program checklist for the seizure-response sequence, Stage 6 for the § 133.21(e) disclosure and the civil-fine request. Do not sue before the disclosure arrives — it often shows that six storefronts share one U.S. importer with a bank account, which is a much better case.

The goods are genuine. Gray Market Goods, then the Gray Market Enforcement Checklist for the self-audit, then Fighting or Defending Parallel Imports if a Lever petition survives it. Price the contract fix first.

The problem is a hundred storefronts. The DMCA Safe Harbor and the DMCA Takedown Notice Checklist for the fast lever, Phase 6 of the program checklist for specific-knowledge letters, then Moving for a TRO or Preliminary Injunction and the Preliminary Injunction Motion Checklist once linkage evidence justifies joinder defendant by defendant.

Someone wants you to spend on an ITC action. Stage 8 of the border guide, then Protecting Trade Dress if the asset is a product shape. Two questions decide it: can you prove a domestic industry on documents you already have, and is the problem category-wide? If either answer is no, spend the money on serialization and a takedown team.

You want the money. Proving Trademark Damages and Disgorging Profits After Romag and the Trademark Monetary Recovery Checklist, starting at intake. The § 1111 notice audit and the entity map are worth more than any motion you will file later.

Primary Authorities

| Authority | One-line holding or rule | |---|---| | 15 U.S.C. § 1127 | A counterfeit is a spurious mark identical with or substantially indistinguishable from a registered mark | | 15 U.S.C. § 1116(d) | Enhanced remedies need Principal Register registration, use, and coverage of those goods; seven findings, U.S. Attorney notice, wrongful-seizure counterclaim | | 15 U.S.C. § 1117(b), (c) | Treble profits plus fees absent extenuating circumstances; statutory damages of $1,000–$200,000, up to $2,000,000 if willful, per mark per type of goods | | 15 U.S.C. § 45f (INFORM) | Marketplaces must collect, verify, and disclose high-volume seller identity; FTC and state AG enforcement only | | 18 U.S.C. § 2320 | Felony trafficking in counterfeit goods, labels, military goods, and drugs; 10 years and $2,000,000 for a first individual offense | | 19 U.S.C. § 1526(e), (f) | CBP seizes and forfeits counterfeit imports absent the owner's written consent; civil fine at genuine domestic value, doubled for repeats | | 19 C.F.R. §§ 133.1(a), 133.3(b), 133.21(e) | Principal Register marks only; $190 per class; manufacturer, exporter, and importer disclosed within thirty days of seizure | | 19 C.F.R. §§ 133.22, 133.23, 133.2(d)–(e) | Copying-or-simulating track; gray market restriction and the common-ownership exception; Lever application procedure | | 19 U.S.C. § 1337 | Registered-mark violations need no injury showing; domestic industry required; GEOs reach unidentified sources; penalties to $100,000/day | | K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988) | Sustained the common-control exception to § 1526 gray market restriction | | Lever Bros. Co. v. United States, 981 F.2d 1330 (D.C. Cir. 1993) | Materially different parallel imports may be excluded even under common ownership | | Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) | Generalized knowledge of platform counterfeiting is not enough; detection stays with the owner | | Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995 (9th Cir. 2023) | Contributory liability needs knowledge of specific infringers; in tension with Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021) | | Grupo Mexicano v. Alliance Bond Fund, 527 U.S. 308 (1999) | No prejudgment freeze of assets in which no lien or equitable interest is claimed | | Gucci Am., Inc. v. Weixing Li, 768 F.3d 122 (2d Cir. 2014) | An equitable accounting supplies the interest that makes a freeze permissible | | Abitron Austria v. Hetronic Int'l, 600 U.S. 412 (2023) | Lanham Act infringement provisions reach only domestic use in commerce | | U.S.S.G. § 2B5.3 | Offense level driven by "infringement amount" — genuine retail value times infringing units |

Forms and Templates

Trademark Cease-and-Desist Letter — Template — the starting draft for the specific-knowledge letter to a platform, fulfillment provider, web host, or landlord. Send it certified; the delivery receipt, not the letter, does the work under Inwood and Omega.
UDRP Complaint — Template — for the lookalike domains attached to nearly every counterfeiting operation, when a court order is out of reach or not worth the wait.
Trademark Portfolio Inventory — Template — where the SKU-to-mark-to-class-to-recordation reconciliation lives. Add two columns: recordation number and recordation expiry.
Trademark Assignment Agreement — Template — for cleaning the chain of title a recordation depends on, especially where marks moved with an asset purchase nobody recorded.
Trademark License Agreement — Template — the quality-control, territory, audit, and termination provisions that decide whether a terminated licensee's production is counterfeiting or contract breach.

Related Toolkits and Checklists

Brand Enforcement Toolkit: Watching, Warning, and Escalating — the general escalation ladder this toolkit specializes. Start there for ordinary infringement; end up here when the copies turn out to be identical.
Online Brand Protection Toolkit — the e-commerce companion, for counterfeits that never cross a physical border.
Gray Market and Parallel Import Toolkit — where to go the moment the fakes turn out to be yours.
Trademark Remedies Toolkit — the full remedies picture § 1117(b) and (c) sit inside.
Trademark Litigation Toolkit — the procedural arc once a Schedule A case survives the TRO stage and becomes a real lawsuit.
The Brand Owner's Master Toolkit — the whole-practice view, for the client starting four steps earlier than this document assumes.
Trademark Due Diligence Checklist — run it when the brand you are enforcing was acquired rather than filed.