Learning trademark infringement: view Amazon cases below.

A trademark is any word, name, symbol, design, or any combination thereof used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.1

Often, a manufacturer will sue both the Amazon seller and Amazon.com for trademark infringement. Usually in cases where a seller is accused of selling items that are inauthentic, counterfeit, or sold by an unauthorized reseller.

In a 2015 decision, the court held that Amazon could not be held liable for a seller’s trademark violation because Amazon itself was not “offering for sale” the infringing items at issue.2

  1. 15 U.S.C § 1127.
  2. Milo & Gabby, LLC v. Amazon.com, 2015 U.S. Dist. LEXIS 149939 (W.D. Wash. Nov. 3, 2015).
  • Amazon.com, Inc. v. Kalaydjian, 2001 U.S. Dist. LEXIS 4924 (W.D. Wash. Feb. 20, 2001).

The court here was determining whether defendant purposefully availed itself to the Washington forum such that a motion to dismiss for lack of personal jurisdiction would not be possible. The court found that defendants’ acts did not amount to purposeful availment because the website at issue only gave guidance on purchasing the tanning products here, and did not offer them for sale via the internet. Thus the court granted defendants motion to dismiss for lack of personal jurisdiction.

  • Apple, Inc. v. Amazon.Com, Inc., 2011 U.S. Dist. LEXIS 72271 (N.D. Cal. July 6, 2011).

This was a trademark infringement case denying Apple’s preliminary injunction motion to keep Amazon from using the mark “App Store”

  • Apple Inc. v. Amazon.Com Inc., 915 F. Supp. 2d 1084 (N.D. Cal. 2013).

This was a trademark infringement case alleging Amazon has improperly used the term “APP STORE” while selling apps for Android devices and Amazon’s tablet computer. The court granted Amazon’s motion for partial summary judgment.

  • Fandino v. Amalgam Entm’t, LLC, 2010 U.S. Dist. LEXIS 14684 (S.D.N.Y. Feb. 18, 2010).

This as a case involving the defendant’s motion to dismiss or to transfer the action in favor of the first filed action. The court granted defendant’s motion to transfer.

  • Free Kick Master LLC v. Apple Inc., 140 F. Supp. 3d 975 (N.D. Cal. 2015).

This was a trademark infringement case determining if the plaintiff had stated a claim against Amazon in order to proceed with litigation. The court granted the defendant’s motion to dismiss for failure to state a claim.

  • Free Kick Master LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 25478 (N.D. Cal. Feb. 29, 2016).

This was a case involving trademark infringement, the defendants filed a motion to dismiss an amended complaint for lack of providing evidence to state a claim. The court granted the motion to dismiss the amended complaint.

  • Lasoff v. Amazon.com, Inc., 2016 U.S. Dist. LEXIS 9878, 2016 WL 355076 (D.N.J. Jan. 28, 2016).

In this case, plaintiff Amazon seller was suing Amazon.com, in New jersey, for trademark infringement, anti-trust violations, and unfair business practices because Amazon allowed other sellers to sell similar products to those of plaintiff. All sellers using the Amazon platform are subject to Amazon’s terms of use, which contains a forum selection clause requiring litigation in a Washington court. The court ordered a venue transfer to Washington because it found that there were no public or local interests weighing strongly against the transfer.

  • Milo & Gabby LLC v. Amazon.com. Case No. C13-1932RSM. United States District Court Western District Of Washington At Seattle, April 2014.

Milo & Gabby sued Amazon.com for multiple infringement claims. Amazon.com motioned to dismiss claiming that the plaintiffs failed to state a claim. The District Court agreed with Amazon and granted to motion to dismiss the III, V, VII claims.

  • Milo & Gabby LLC v. Amazon.com. Case No. C13-1932RSM. United States District Court Western District of Washington At Seattle, October 2015.

Milo & Gabby sued Amazon.com for multiple infringement claims. The defendant, Amazon.com motioned in Limine. The court granted in part and denied in part.

  • Milo & Gabby, LLC v. Amazon.com, 2015 U.S. Dist. LEXIS 149939 (W.D. Wash. Nov. 3, 2015).

Milo & Gabby sued Amazon.com for multiple infringement claims. Amazon.com motioned to dismiss claiming that the plaintiffs failed to state a claim. After a jury hearing, the court adopted the jury’s finding that Amazon.com was not liable for “offering to sell” the alleged infringing products at issue in this matter. A judgment was placed in favor of Amazon.com and all claims against Amazon.com were dismissed.

  • Multi Time Mach., Inc. v. Amazon.com, Inc., 792 F.3d 1070 (9th Cir. 2015).

Plaintiff argued Amazon confused customers – Plaintiff did not sell items on Amazon, but when customers searched for it, Amazon returned results with Plaintiff’s trademark and listings from other sellers.

  • Sanmedica Int’l, LLC v. Amazon.com, Inc., 2015 U.S. Dist. LEXIS 50470 (D. Utah Mar. 27, 2015).

Court refused to grant Amazon’s motion to dismiss where it found the use of Plaintiff’s trademark may cause initial interest confusion and thus was a question for the jury.

  • Sellify Inc. v. Amazon.com, Inc., 2010 U.S. Dist. LEXIS 118173 (S.D.N.Y. Nov. 3, 2010).

The court here was determining whether to grant defendants motion for summary judgment. The court granted the motion. The claims at issue here required direct action by Amazon in order to state a claim and no evidence existed as to this point. Further the court found that the damages requested by the plaintiff were too speculative to survive a motion to dismiss. The court therefore granted the motion.

  • Sen v. Amazon.com, Inc., 2013 U.S. Dist. LEXIS 178447, 2013 WL 6730180 (S.D. Cal. Dec. 19, 2013).

The issue here was whether the court should grant defendant Amazon.Com, Inc.’s Motion to Enforce the Settlement where both defendant and plaintiff, Sen had signed the settlement, but plaintiff was attempting to add additional terms to the agreement. The court granted the motion because it found the agreement to be complete, unambiguous, and intentionally entered into, the agreement contained all material terms and plaintiff’s additional concerns were unfounded, and because the agreement contained valid consideration.

  • TRE Milano, LLC v. Amazon.com, Inc., No. S205747, 2012 Cal. LEXIS 11039 (Nov. 28, 2012).

Plaintiff’s case against Amazon was dismissed because Amazon was not responsible for the infringement of a third-party, and could also not be held contributorily liable since Amazon took immediate action once it was notified of the third-party’s infringement.

  • United Pet Grp., Inc. v. Doe (E.D. Mo., 2013).

The court was determining whether to grant Plaintiff’s motion for expedited discovery which would force Amazon.Com, Inc. (Amazon) to release the identity of sellers accused of trademark violations. The court found that plaintiff had demonstrated good cause because it had shown potential irreparable harm from infringement, no prejudice to defendants, and limited availability of information sought. The court thus granted the motion for expedited discovery and ordered that plaintiff may serve subpoenas on Amazon.com to obtain information necessary to identify the John Doe defendants.

  • Vallavista Corp. v. Amazon.com, Inc., 657 F. Supp. 2d 1132 (N.D. Cal. 2008).

This case involved a defendant’s motion for summary judgment claiming there was no dispute of material facts. The court granted in part and denied in part Target Corporation’s motion for summary judgment.

  • Video Professor, Inc. v. Amazon.com, Inc., Civil Action No. 09-cv-00636-REB-KLM, 2010 U.S. Dist. LEXIS 29414 (D. Colo. Mar. 8, 2010).

The court here was determining whether to grant plaintiff’s motion to modify the discovery schedule. The motion was denied and the court held that plaintiff had not shown good cause for amendment of the deadline for discovery. Plaintiff’s efforts to pursue discovery were less than diligent, and plaintiff had not shown evidence that additional discovery is relevant to claims as they were stated in the complaint.

  • Video Professor, Inc. v. Amazon.com, Inc., 2010 U.S. Dist. LEXIS 39103 (D. Colo. Apr. 21, 2010).

Here the court was determining whether to grant defendant Amazon.Com Inc.’s motion for summary judgment. The court granted the motion because the conduct alleged as wrongful was allowed by the parties Vendor agreement.

  • Wax v. Amazon, Inc., 500 Fed. Appx. 944 (Fed. Cir. 2013).

The Court determined that because Amazon Technologies Inc. was the dominant component for the trademarks utilizing this term, there was a high degree of similarity between Amazon.com and the Plaintiff’s desired mark, Amazon Ventures. This indicated a likelihood of confusion. The Court ruled in favor of Amazon Technologies, Inc. on the grounds that Mr. Wax’s arguments lacked merit.

  • Wreal, LLC v. Amazon.com, Inc., 2014 U.S. Dist. LEXIS 160160 (S.D. Fla. Nov. 14, 2014).

Amazon filed a discovery motion to have Wreal reveal the identities of their non-testifying experts. The court granted this discovery motion, as they determined that Amazon had demonstrated good cause for this type of discovery.

  • Wreal LLC v. Amazon.com, Inc., 2015 U.S. Dist. LEXIS 176382 (S.D. Fla. Feb. 3, 2015). The court here held that expert testimony used by plaintiff solely during the preliminary injunction faze of trial did not entitle Amazon to subpoena that expert, unless the testimony was designated for use at trial.