Summary. The administrative work that makes border enforcement possible.

Phase 1 — Recordation

  • Confirm all trademark registrations on the Principal Register are current.
  • Confirm copyright registrations for packaging, artwork, labels, and software.
  • Record each mark and copyright with Customs under 19 C.F.R. Part 133.
  • Include images of the mark as used and the goods covered.
  • List authorized importers of record.
  • Calendar recordation renewal to match registration renewal.
  • Update the recordation when the mark, the goods, or the authorized importers change.
  • Record marks in other jurisdictions with equivalent programs where volume justifies it.

Failure mode: litigating for years while the cheapest available tool sits unused.

Phase 2 — Document material differences

  • Obtain an authorized unit and a foreign-market unit of each product.
  • Compare and record differences in:
    • Warranty terms and whether the domestic warranty applies
    • Service network and serviceability
    • Formulation, ingredients, or concentrations
    • Calibration or reference standards
    • Labeling language, ingredient disclosure, warnings, units
    • Safety certification marks
    • Regulatory registrations and required disclosures
    • Packaging size, configuration, and contents
    • Included accessories, manuals, and registration materials
    • Shelf-life or dating conventions
    • Presence, location, and format of lot or serial codes
  • Photograph both units side by side; arrow and label every difference.
  • For each difference, write one sentence on why a purchaser would consider it relevant.
  • Have product management confirm the technical accuracy of each entry.
  • Date the package and calendar an annual refresh.

Phase 3 — Lever-rule petition

  • Confirm the mark is recorded.
  • Identify the foreign-manufactured goods precisely.
  • Itemize each material difference with photographs and specifications.
  • Explain purchaser relevance for each.
  • Address the labeling escape valve — is the required notice adequate given these differences?
  • Submit and track the petition to decision.
  • Update the petition when product specifications change.

Phase 4 — Identification materials

  • Product identification guide: authorized versus unauthorized, photographed side by side.
  • Code location, format, and examples of removed or altered codes.
  • Expected packaging and print characteristics.
  • Authorized importers by name, with entry filer information where available.
  • Typical ports, carriers, and shipping patterns for legitimate goods.
  • A named technical contact with a direct telephone number, monitored during business hours.
  • Offer and schedule product identification training with officers.
  • Revise the guide based on actual detention outcomes.

Phase 5 — Serialization and traceability

  • Choose granularity: unit serial, case code, or lot code.
  • Laser-etch or emboss rather than print in removable ink.
  • Place the code where removal requires disassembly.
  • Duplicate the code in a non-obvious second location.
  • Consider a covert marking (ultraviolet or microprinted).
  • Maintain a database resolving code to production date, shipment, consignee, and sale date.
  • Test the chain quarterly: buy an authorized unit and trace it end to end; time it.
  • Make code integrity a specification requirement with a named owner.
  • Require legal sign-off before any change to coding or placement.
  • Document the coding scheme in writing for litigation and Customs use.

Phase 6 — Distribution agreements

  • Territorial and customer restrictions, reviewed by competition counsel in each market.
  • Prohibition on sales to unauthorized resellers and buyers with no end-user business.
  • Flow-down obligations to sub-distributors, directly enforceable.
  • Sell-through reporting identifying customers.
  • Audit rights with defined scope, notice, and cost-shifting on a diversion finding.
  • Code preservation obligation; removal is a material breach.
  • Liquidated damages and termination for cause on diversion.
  • Cooperation obligation in investigations.
  • Confirm compensation is based on verified sell-through, not sell-in.

Phase 7 — Investigation

Test purchases

  • Multiple units, same seller, over time, different names and addresses.
  • Photograph shipments before opening: outer packaging, labels, declarations, invoices.
  • Record seller, platform, price, listing text, shipping origin.
  • Preserve units sealed with documented chain of custody.
  • Retain receipts and payment records.

Forensic examination

  • Determine counterfeit versus genuine at the unit level.
  • Verify build quality, materials, and finish.
  • Verify serial format and check against production records.
  • Verify firmware or software build.
  • Compare packaging print quality and accessories.
  • Examine code areas under ultraviolet light and magnification.
  • Photograph all findings.

Tracing

  • Resolve recovered codes to shipments and consignees.
  • Identify the distributor or reseller in the chain.
  • Check whether the source is an internal affiliate before assuming otherwise.

Phase 8 — Channel audit

  • Confirm the audit clause: scope, notice, auditor, records, cost, confidentiality.
  • Give the minimum notice the agreement permits.
  • Examine: sales ledger by customer; volumes; ship-to addresses; payment terms; pricing; order timing relative to quarter-end; correspondence; inventory reconciliation; sub-distributor agreements.
  • Interview relevant sales personnel where permitted.
  • Document contemporaneously.
  • Decide the outcome: termination, negotiated resolution with liquidated damages and probation, or remediation.
  • Communicate the fact of the outcome to the channel.

Phase 9 — Detention and seizure response

  • Respond to Customs requests within hours, not days.
  • Verify serials against production records before answering.
  • Answer both questions asked: authenticity and material differences, with reference to the recorded documentation.
  • For counterfeit goods, support seizure and forfeiture; note civil penalties under 19 U.S.C. § 1526(f) and 19 U.S.C. § 1595a.
  • Track petitions for mitigation under 19 U.S.C. § 1618.
  • Log every detention outcome and feed it back into targeting and identification materials.
  • Assess wrongful-detention exposure before confirming that goods are unauthorized.

Phase 10 — Marketplace enforcement

  • Enroll in each major platform's brand registry.
  • Submit the material-differences package, not merely the registration, for gray market listings.
  • Report at the seller level, not only listing by listing.
  • Map sellers across platforms; the same operator appears on several.
  • Track appeals and restorations; refine the documentation accordingly.
  • Maintain a defensible file against retaliation claims.

Phase 11 — Litigation triage

  • Confirm the goods are genuine (exhaustion applies) or counterfeit (full remedies available).
  • For genuine goods, confirm the material-differences record is trial-ready.
  • Assess defendant assets before filing.
  • Consider whether contract claims against the diverting distributor are stronger.
  • Anticipate laches, acquiescence, unclean hands, and antitrust counterclaims.
  • Confirm the enforcement action is paired with supply-side work.

Phase 12 — Measurement

  • Baseline established before the program starts.
  • Track monthly: listing counts by platform; lowest observed price versus authorized price; estimated gray volume; authorized dealer sell-through; warranty claims on unauthorized units; codes recovered per investigation; time from detection to source identification; distributors disciplined.
  • Review quarterly with the commercial team, not legal alone.
  • Do not report removals or letters sent as outcomes.
  • Accept a residual; set the objective at a competitive channel, not zero.

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