By: Dana Lucas

This article is the second in a three-part series on IP for Canadian businesses entering the US market. Part 1 covers registration. Part 2 addresses enforcement. Part 3 explores long-term IP strategy.

Intellectual property (IP) protection is only as strong as its enforcement.  While registration establishes ownership, enforcement is what ensures those rights are respected in practice. For Canadian businesses operating in the US market, this distinction is essential. Without enforcement, even properly registered IP can be copied, diluted, or commercially undermined.

IP Enforcement Is Multi-Layered

There are several ways to enforce your rights against unauthorized use of your IP in the US. This includes border enforcement, online takedown systems, platform-based removal tools, administrative investigations, civil litigation, and alternative dispute resolution. Most effective enforcement strategies combine several of these tools rather than relying on one option alone.

US Customs and Border Protection: Stopping Goods at the Border

One of the most practical first-line enforcement mechanisms available to rights holders is recording IP with US Customs and Border Protection (CBP). Once recorded, CBP officers can identify, detain, and seize counterfeit or infringing goods before they enter the US market.

This is particularly valuable in cases involving counterfeit physical products, unauthorized branded imports, overseas manufacturing knockoffs, and grey market goods. CBP enforcement operates proactively, meaning rights holders do not need to monitor individual shipments. Instead, border officials use recorded IP data to flag and intercept suspicious imports during routine inspections.

For Canadian businesses exporting to or manufacturing for the US market, CBP recordation represents a strong first line of defence against large-scale counterfeiting and cross-border infringement.

Online Enforcement and Notice-and-Takedown Systems

A significant amount of IP infringement now occurs online, making digital enforcement a key component of any cross-border protection strategy. In the US, rights holders can rely on notice-and-takedown systems to request the removal of infringing content from websites, hosting providers, search engines, social media platforms, and online marketplaces.

Once a valid complaint is submitted, platforms are generally expected to act quickly to remove or disable access to the infringing material in order to maintain their legal safe-harbour protections. This allows for relatively fast and scalable enforcement without the need for immediate court proceedings.

Beyond formal takedown processes, major e-commerce platforms operate their own internal IP enforcement systems. These allow rights holders to report counterfeit listings, request removal of infringing products, block unauthorized sellers, and suspend repeat infringers. While each platform has its own procedures, these tools are often faster than court proceedings and represent an important ongoing layer of brand protection in online marketplaces.

For Canadian businesses in the US market, online enforcement tools are particularly effective in addressing copied product listings, unauthorized use of brand assets, pirated digital content, and cloned websites or landing pages.

Government and Criminal Enforcement Channels

In more serious cases, enforcement can escalate beyond civil remedies into coordinated government action. In the US, agencies such as the National Intellectual Property Rights Coordination Center investigate large-scale counterfeiting and piracy operations. These enforcement actions typically target organized manufacturing networks, smuggling operations, and repeat commercial-scale infringers.

Outcomes may include seizure of goods, shutdown of operations, financial penalties, and criminal prosecution. This level of enforcement is generally reserved for systemic or large-scale infringement activity.

Cease-and-Desist Letters

Before initiating formal litigation, many disputes begin with a cease-and-desist letter issued by legal counsel. These letters typically identify the IP rights being infringed, outline supporting evidence, demand that infringement stop immediately, and request removal or destruction of infringing materials. They may also open the door to negotiation or settlement discussions.

This step signals legal seriousness without the cost and complexity of court proceedings and is often the most proportionate response to a first instance of infringement.

Litigation in US Federal Courts

If informal and administrative measures do not resolve the issue, IP owners can pursue enforcement through US federal courts. Courts can issue injunctions to stop infringement, award monetary damages, order destruction of infringing goods, and in some cases require payment of legal costs.

Patent holders should also mark their products (marking supports a damages claim and notifies the market of your rights). Willful infringement can result in treble damages, making marking and clear patent notice a low-cost way to strengthen your position.

Litigation is typically expensive and time-intensive, which means it is generally reserved for high-value disputes or persistent infringement. As discussed in Part 1, copyright registration with the US Copyright Office is required before a lawsuit can be filed, which is another reason to register early rather than waiting until enforcement is needed.

Alternative Dispute Resolution

Not all enforcement requires court proceedings. Many IP disputes are resolved through mediation or arbitration, which offer faster timelines, lower costs, and greater confidentiality. These approaches are particularly useful in licensing disputes, distribution agreements, and cross-border commercial relationships where preserving the ongoing business relationship still matters.

A Practical Enforcement Framework

Effective IP enforcement in the US works best as a layered system rather than a single action. A practical approach typically involves:

1. Monitor. Routinely watch the marketplace, online and in physical channels, for unauthorized use of your IP.
2. Respond. Use platform takedowns and cease-and-desist letters as proportionate first responses.
3. Escalate. Move to CBP enforcement for physical counterfeit goods crossing borders.
4. Litigate or Arbitrate. Reserve formal proceedings for serious, persistent, or high-value cases.

The goal of enforcement is not only legal compliance, but also market protection and deterrence. A consistent enforcement posture signals to the market that your IP will be defended.

Read Next in This Series

Registration and enforcement together provide a strong foundation, but long-term success in the US market also depends on how you build and manage your IP strategy over time. In Part 3 of this series, we look at how Canadian businesses can connect protection, enforcement, and commercial growth into a single cohesive IP strategy.

How Procido LLP Can Help

If your organization is facing IP infringement or wants to put an enforcement framework in place before problems arise, Procido LLP would be pleased to assist. We can help you assess your enforcement options, respond to unauthorized use of your IP, and build a layered protection strategy suited to your business. We work closely with colleagues across the US and internationally to make sure that support extends wherever your business operates. Feel free to reach out to Procido LLP’s IP and Technology Practice Group with any inquiries at dana.lucas@procido.com.

Disclaimer

This publication is provided as an information service and may include items reported from other sources. We do not warrant its accuracy. This information is not meant as legal opinion or advice. Contact Procido LLP (www.procido.com) if you require legal advice on the topics discussed in this article.