How to Respond to a Claim of Trademark Infringement on Amazon Marketplace

By Josh Gerben, Esq.

Operating as a seller in Amazon Marketplace, you may one day find yourself in receipt of a notice or claim of trademark infringement. This claim might come from several places – it could be from Amazon itself, from another seller, or from a manufacturer or other merchant – one that may not even operate on Amazon’s Marketplace. And you may be the recipient of one of these notices of trademark infringement whether you create and sell your own products, or whether your Amazon business deals in third-party resale of goods. One thing to remember: the consequences of a notice of trademark infringement can be severe to the health and success of your Amazon Marketplace business, especially if you reply in an incorrect manner. The importance of proper action and response on your part cannot be underestimated – and that fact remains whether or not the claim against you has a solid legal foundation. Regardless of the facts of your case, responding the wrong way can adversely affect not only your outcome, but also your bottom line.

As you read through the following points about the circumstances under which you may receive an infringement notice, and what steps you should take, remember that in trademark claim cases, a trademark attorney can be a major asset in helping to make sure that your response to the claim is one that increases your odds of success.

One other point to keep in mind: a claim of trademark infringement may be made in regards to the name of a product you sell (your own, or third-party), or the name of your business itself (which is likely also the name you use for your Amazon store). Following the trademark best practices and information outlined below will strengthen your defense regardless of which aspect of your business is in question.

You may receive a trademark infringement from an attorney or from Amazon

Often, an attorney for another business will contact you directly, rather than making a claim through Amazon. In other cases, the business, or their agent/attorney will make an infringement claim to Amazon itself. In both situations, you need to take cautious, well-planned steps in your actions and response. Any response needs to have solid legal grounding – not opinion or incorrect statements. If you continue to sell products that are ultimately found to be infringing by a court, you may be subject to monetary damages that can be devastating to your finances. Consulting with a trademark attorney is the best way to help you consider your options and potential defense to ensure that you’re within your rights in your response and actions.

Under the right circumstances, you may be able to make a counter claim through Amazon

If a business files an infringement claim against you through Amazon, you may be able to make a counter claim as to your rights to use the mark. However, it’s important for you to have legal grounds for your defense. A registered federal trademark is the best defense you can have – however, keep in mind that even with a registered mark, you need to make a carefully considered response to a trademark infringement claim.

An infringement claim against you on Amazon may have several different outcomes

The two most likely outcomes are that the item in question is removed, or your entire Amazon Marketplace storefront is removed. The specifics behind each action are not spelled out, but typically, if the trademark infringement claim is against a specific product, that product will be removed. The exception to this is if there happens to be a history of infringement claims against your store. In these cases, Amazon may remove your storefront after a certain number of “strikes.” Another trademark owner may also make an infringement claim against your store itself – for instance, if they feel that your store’s name is too similar to the name of their business, or a product they sell. These are other cases where your entire Amazon storefront may be removed.

 Researching the availability of any trademarks you use can help you use them properly on Amazon

Amazon is one of the biggest and most well-known marketplaces in the world. Millions of businesses, large and small, sell their products through Amazon, so it’s important for you to know if a trademark you intend to use on the platform is actually available. A thorough research process can give you a much better idea of whether your mark is likely to raise claims of infringement from another entity – and your process should go further than a cursory Amazon or search engine query. A trademark attorney can use powerful search software to take a deep dive into the availability of your mark, including tracking down similar names or other factors that may be considered confusing to the consumer. A comprehensive research step is a strong first line of defense against claims of infringement.

Legal support may be your best grounds for reinstatement or trademark defense

If your storefront or products do end up being removed, appealing to Amazon directly can be a confusing and inconsistent option.   A registered trademark gives you the support of trademark law under the Lanham Act, and, is one of the strongest and most viable offenses when working with Amazon.  Therefore, being prepared is your best defense.  If you would like a free consultation with a trademark attorney on how to best protect your trademarks please contact an attorney here at Gerben IP.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.