CBP officers in Houston examined a shipment from China manifested as bags, plastic toys and jewellery. Inside were cartons of handbags bearing Prada, Christian Dior and Michael Kors marks, and cartons of plastic building blocks bearing the Lego brand. Roughly 200 handbags and 50 packages of blocks, with a manufacturer’s suggested retail price CBP put above $500,000. The goods were destined for a Houston store and were slated for destruction.
One sentence in CBP’s announcement is worth reading twice. The mark owners, it said, “each confirmed that the imported handbags and building blocks were counterfeit and confusingly similar to the genuine brand.”
Goods cannot be both. Those are two separate categories under two separate regulations, and which one applies changes what happens to the shipment, what it costs, and whether the importer gets anything back.
Two Categories, Not One
A counterfeit mark, under 19 CFR § 133.21, is a spurious mark identical with, or substantially indistinguishable from, a recorded mark. It is the fake that passes for the real thing.
A copying or simulating mark, under 19 CFR § 133.22, is one that so resembles a recorded mark as to be likely to cause the public to associate the two. It is close enough to confuse, but not the same thing.
Those definitions are mutually exclusive by construction. If a mark is substantially indistinguishable from the registered mark, it is counterfeit. If it merely resembles it closely enough to create an association, it is infringing but not counterfeit. A mark owner confirming both has confirmed nothing useful, and the file should not be allowed to proceed on that basis.
The Consequences Are Not Close
| Counterfeit § 133.21 | Copying or simulating § 133.22 | |
|---|---|---|
| First action | Seizure | Denial of entry and detention |
| Remove the mark and enter the goods | Not available | Available |
| Window to act | 30 days from seizure notice, for mark owner consent | 30 days detention from presentation for examination |
| Civil fine at genuine-article MSRP | Yes, doubling on repeat seizures | Does not attach |
| If nothing is established | Forfeiture and destruction | Seizure and forfeiture proceedings |
Obliteration is the whole ballgame
Under § 133.22(c)(1), an importer whose goods bear a copying or simulating mark can obtain release by removing or obliterating the mark as a condition of entry, so that it is illegible and incapable of being reconstituted — grinding off imprinted marks, removing and disposing of marked plates. The goods then enter and are sold. That option is expressly unavailable for articles bearing counterfeit marks at the time of importation. Same shipment, same brands, and the difference between recovering your inventory and watching it destroyed turns entirely on which box CBP ticks.
The fine follows the same line. The civil penalty measured against what the goods would have been worth had the marks been genuine attaches to merchandise bearing a counterfeit mark. A copying or simulating characterisation does not carry it. On a shipment CBP valued above $500,000, that is not a technicality.
Who Decides Which It Is
The sequence in this case is the standard one. Import specialists examined the goods. CBP provided images to the mark owners. The mark owners confirmed the characterisation. CBP acted on it.
It is worth noticing where the incentive sits. A brand asked whether goods are counterfeit or merely confusingly similar has every reason to say counterfeit. The counterfeit route ends in destruction. The copying-or-simulating route can end with the mark ground off and the goods entering U.S. commerce, competing with the brand at a lower price. No trademark owner prefers the second outcome.
Contest the characterisation first, not the penalty
Most importers arrive arguing about the amount. The prior question is which regulation applies, and it is the one with the most leverage in it. A finding of “substantially indistinguishable” is an evidentiary conclusion about specific marks on specific goods, not a self-evident fact, and where the marks are close imitations rather than exact reproductions it is contestable. That argument has to be made during the detention window, while the obliteration remedy is still available.
The Manifest Problem Sitting Underneath
Separately from the trademark question, the shipment here was manifested as “bags, plastic toys and jewelry.” The goods were branded handbags and branded building blocks.
A manifest that materially misdescribes cargo carries its own exposure, independent of anything to do with marks. Merchandise introduced contrary to law is subject to forfeiture, and “contrary to law” reaches the manner of importation as much as the nature of the goods. An importer contesting the trademark characterisation should not be surprised to find a second allegation running alongside it, and our page on importations and exportations contrary to law covers that authority.
What to Do With a Detention Notice
- Read which regulation the notice cites. § 133.21 and § 133.22 are different problems with different remedies and different clocks.
- If it is § 133.22, work out immediately whether the marks can be removed or obliterated in a way that satisfies CBP. That is a commercial question as much as a legal one, and it has to be answered inside the detention window.
- If it is § 133.21, establish whether the marks are genuinely substantially indistinguishable or merely close. Photograph them properly and compare them against the registered mark.
- Do not wait for a seizure notice to engage. Detention is the only stage at which the goods can simply be released.
- Check the manifest description against what actually shipped, because that is likely to come up.
Our page on customs detention of merchandise explains that window, our page on counterfeit import seizures and penalties covers what follows a seizure, and our customs seizure defence page covers contesting a forfeiture. Where a penalty has already issued, the response is a petition for mitigation or remission filed within the deadline on the notice. Outcomes depend heavily on the specific facts, the marks involved and the documentation available.
Shipment Detained Over Trademarks?
Which regulation CBP applies decides whether your goods can be salvaged. Contact us for a confidential case evaluation.
Frequently Asked Questions
What is the difference between a counterfeit mark and a confusingly similar one?
A counterfeit mark is identical with or substantially indistinguishable from a recorded mark. A copying or simulating mark merely resembles it closely enough that the public is likely to associate the two. They are separate categories under separate regulations and goods cannot be both.
Can I remove the mark and import the goods anyway?
Where the mark is copying or simulating, yes. Removal or obliteration as a condition of entry, so the mark is illegible and cannot be reconstituted, is a recognised route to release during the detention period. That option is expressly unavailable for goods bearing counterfeit marks.
Does the civil fine apply either way?
The fine measured against the value the goods would have had if genuine attaches to merchandise bearing a counterfeit mark. A copying or simulating characterisation does not carry it, which is one reason the classification matters so much on a high-value shipment.
The brand confirmed my goods were counterfeit. Is that the end of it?
It is an input, not a determination. Whether marks are substantially indistinguishable from a registered mark is an evidentiary conclusion about specific goods, and mark owners have an obvious interest in the characterisation that leads to destruction rather than to obliteration and entry.
Legal Disclaimer: This article is provided for general informational purposes only and does not constitute legal advice. Reading it, or contacting Great Lakes Customs Law through this website, does not create an attorney-client relationship. Whether particular marks are counterfeit or copying and simulating is a fact-specific determination, and nothing here is an assessment of any particular goods or a prediction that a characterisation can be changed. The matter described is drawn from a public CBP news release describing allegations. Laws, regulations and CBP procedures change, and the outcome of any customs seizure or penalty matter depends heavily on its specific facts and circumstances. No result is guaranteed or implied. You should consult a licensed attorney about your particular situation before taking or refraining from any action.