Trademark infringement occurs when 3rd party sellers use unauthorized & improper business names identical/similar to that used by another seller.
If another seller uses your trademark or something similar to your trademark in a way that confuses the buyer, there may be trademark infringement.
The test is known as “likelihood of confusion.” This is when the consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service.”
A trademark is a symbol, phrase, or other device that distinguishes ownership of a product or service. A trademark often stands as a mark of quality. People that buy products from Amazon 3rd party sellers often rely on trademarks when making purchases. When they see a trademark, buyers know they are getting quality goods.
If you have a case involving trademark infringement on Amazon:
Federal law governs trademarks. Trademarks are described in section 32(1) of the Lanham Act.
Section § 1125(a) of the Lanham Act states that merchant sellers shall be liable in a civil action to any person that is likely to be damaged by the Amazon marketplace seller or Amazon marketplace reseller’s trademark infringement. To bring an action under the law, actual damages need not be shown. You do not have to show that you actually lost money. To bring a case for trademark infringement, you must merely show the likelihood of damages. In determining ‘confusion’ under the Lanham Act, the courts use something called the Polaroid test. The Polaroid test was created by a court in a case called Polaroid Corp. v. Polara Electronics Corp.
The 8 factors of the Polaroid test include:
You don’t need to show all eight factors. Courts focus on the potential to confuse consumers.
Strength of plaintiff's mark.
The similarity of uses.
Proximity of the products.
Defendant's reason for using products.
Prior owner expands into domain of other.
Quality of junior user's product.
Sophistication of consumers.
Trademark Complaints on Amazon
If you receive a trademark complaint, you may be a little bit confused.. What’s different about these is that you don’t receive a rights owner complaint. This automatically means that a retraction isn’t needed. Many sellers aren’t sure what this notification means, so they’ll just ignore it.
We do not suggest you ignore these.
What you need to do:
If you’re the creator of the listing and you’re using a trademarked term incorrectly, revise the language.
If you’re joining a pre-existing listing, vet the listings before joining them. Say that you’re about to join the Victoria’s Secret listing for Victoria’s Secret bags and the listing was created by another seller, we do not suggest you join that duplicate listing because it’s incorrectly using the trademarked term ‘Victoria’s Secret’.
What if I get sued or sue someone else for false advertising based upon use of a trademark?
There are 3 potential remedies that can be ordered in a false advertising case:
Injunctive Relief: When a court orders you to do or to stop doing something. It may be granted when the person suing demonstrates confusion because of false or deceptive advertising or if irreparable harm has been inflicted.
Corrective Advertising: It is virtually impossible to prove that sales will be damaged. The party suing only has to establish that there’s a relationship between a decline in its sales and a competitor’s fake advertising.
Damages: To collect damages, the party suing has to show that consumers were actually deceived. S/he may also have to show that the defendant used false advertising for products not as described and in bad faith.
Amazon & online sellers can see additional information about trademarks, trademark registration, trademark complaints, and trademark suspensions on Amazon.com:
Amazon sellers accused of counterfeit and trademark infringement By: Grace Gillis & CJ Rosenbaum Cartier is one of the world’s leading luxury goods companies. Designing, manufacturing, and selling jewelry, watches, fragrances, pens, lighters, silver, and crystal, Cartier is well known. Amazon and Cartier vs Sellers A case has been
Sellers Are Violating Trademarks Owned by the University of Georgia By: Trey Heller & CJ Rosenbaum The University of Georgia has recently filed a lawsuit regarding the violation of their trademarks by third-party sellers. The case was filed on July 8, 2022, in the Northern District of Georgia with
3 STEPS to REINSTATE Your Amazon Account After Receiving A Trademark Complaint Amazon Account DEACTIVATED? Learn How to Get REACTIVATED Today! How to win the reactivation of your account when you receive a trademark complaint. Amazon sellers, I can’t tell you this is going to work for every case, but
KNOW YOUR RIGHTS When You Receive Threatening Letters From Law Firms Like Vorys I’m going to tell you how we handle Vorys when this law firm sends Amazon sellers a letter claiming that they are violating their client’s intellectual property rights / contracts, and these sellers better stop or the
The PROCESS of How to Obtain Account REACTIVATION After Receiving Trademark Violations Trademark violations on six different ASINs…. In this video, I’m going to be talking to you about how we obtained the account reactivation of an Amazon seller who had six violations. Okay, Amazon sellers. So, whether it’s 1,
Supporting Black-Owned Businesses & Brands When Sellers Receive False Trademark Complaints on Amazon My team at AmazonSellersLawyer.com supports black-owned businesses and black-owned brands. If you are a 3P seller, this information is for you. We’re talking about trademark complaints. If you receive a trademark complaint, first thing you need to
Build Value In Your eCommerce Business With Intellectual Property Law Amazon sellers, this logo is for the Ty Louis Campbell Foundation, which was started by a buddy of mine, Lou Campbell & his awesome wife, Cindy after they lost their son Ty to an aggressive form of brain cancer. Why
Amazon Sellers, DO NOT Re-Apply Trademarks to Certified Refurbished Items Each one of the trademarks that you’re seeing flash on the screen are different marks, different logos that are used on different types of sporting goods, which are often sold as refurbished products. Now, the reason why I’m showing you
Fighting Baseless IP Complaints & Winning Reinstatements – Amazon Sellers Lawyer Success Amazon sellers, we help you get reinstated every day. Literally, seven days a week, 365 days a year, my insanely awesome team focuses on nothing but issues in light of Amazon. So what I’m going to talk to