By: Eric Perrott, Esq.
AMAZON LISTING HIJACKING. This term has become known to any Amazon seller who has seen an infringer take over one of its branded listings with counterfeit or otherwise non-branded items. Often the infringer is undercutting the genuine seller’s prices and selling subpar versions of the product. This is a widespread and frustrating problem on the Amazon marketplace for many sellers, and, Amazon will not take action until a test purchase has been completed and evidence submitted showing that the product is a counterfeit. Take-down notices and investigations are effective but can take time. With some Amazon Marketplace counterfeiters shipping their products from overseas to the U.S., it can take week or months to even receive the test purchase in the first place. Also, take-down notices and investigations can be impractical as well if you’re dealing with dozens and dozens of sellers and listings.
One alternative is to send an enforcement letter (also known as a cease-and-desist letter) to the seller directly. These types of letters are not without substantial risk and should not be sent without a full legal analysis of the claims being made. However, if effectively and carefully utilized, enforcement letters can often have powerful effects on current and future Amazon listing hijackers.
The Anatomy of an Amazon Listing Hijacking Enforcement Letter
At the very minimum, every enforcement letter should have the following four elements:
1. The enforcement letter should state the rights the trademark owner is claiming with proof of ownership
The letter should clearly lay out the rights that the brand-owner is claiming. I have read hundreds of enforcement notices drafted by individuals who never articulate what trademark or copyright they think they own or the scope of their rights for specific goods and services. A trademark owner needs make sure that the phrase or logo it plans to use actually functions as a trademark for that product. If the phrase merely descriptive of the products being sold, or if it is not used properly on the product or product packaging, then it may be difficult, if not impossible, to enforce any kind of rights in that word, phrase or logo. For example, if someone only uses a phrase or image on the front a t-shirt, it is highly unlikely that he or she has trademark rights in that word or phrase. Further, when selling white-labeled, private-labeled, or custom manufactured goods bearing your trademark on Amazon, a trademark owner must use the trademark to indicate in a way that indicates that it is the source of the products (not another company.) A trademark owner seller branded goods is not a reseller of other companies’ goods and should not expect to simply apply a logo to packaging containing someone else’s branded product and be able to claim that trademark rights in those products.
The best way to show ownership of a trademark is through a trademark registration. A registration serves as strong evidence that a seller’s trademark is protectable and that he or she is the owner of the trademark. Keep in mind that a potential infringer can always challenge the validity of a trademark registration for a variety of reasons, which is one of the risks discussed below. If a seller has not registered its trademark, or if the trademark registration is invalid, a seller would have to rely on “common-law rights,” which are trademark rights limited to the geographic area where the seller’s mark is likely to have penetrated. This requires exhaustive proof and is usually less convincing to an infringer (and, often to Amazon.com.) A trademark registration is a powerful and important tool for all brand-owners and should be one of the first considerations when producing and selling branded products.
2. The enforcement letter should include the claims the trademark owner is making against the potential infringer/counterfeiter
An enforcement letter needs to clearly state the claims made against the infringing listings and products. The letter should provide the infringer with direct links, pictures and any other information that will help identify the infringing uses. One of the biggest perks of a successful enforcement letter is that the infringer can take-down multiple listings all at once. Without clearly identifying the listings, an infringer may ignore the letter or only remove a portion of the infringing listings. A carefully formatted table including the Listing Name, the ASIN number, and a link to the listings can help show the infringer exactly what the trademark owner’s complaints are. Additional information, like pictures, bad reviews attributable to the infringer and evidence of consumer confusion can help persuade an infringer to cooperate, especially when that infringer may be unaware of U.S. trademark laws or otherwise wrongly believes that it can sell its generic products on a branded listing.
3. The enforcement letter needs to include the legal basis for the claims
This, from a legal standpoint, is the most important part of an enforcement letter. If the enforcement letter’s legal analysis of the claim is not done correctly, the brand owner could be subject to a “declaratory judgment” where the alleged infringer could ask a court to declare its use of the alleged trademark non-infringing (while making the brand owner pay the court fees in certain cases.) The trademark owner could be also liable for a variety of tort-law claims such as “intentional interference with business relationships” or unfair competition. This is the point where every brand owner needs to evaluate whether it is able to clearly articulate the legal basis for this letter and consider every possible defense. Question may include:
- Could this be a legitimate product? Did my company ever sell products wholesale to anyone, anywhere in the world that might have provided them to the seller?
- Is this a trademark claim? A copyright claim? Is this infringement or counterfeiting?
- Has this seller’s company been selling products using this brand name before my company started selling its products? Could I actually be an infringer?
- Is my company selling branded products, or are we just a reseller of others branded products?
- Did any authorized officer of my company sign any type of agreement allowing someone else to use the trademark?
If a trademark owner cannot confidently answer any of these questions, then he or she should contact an attorney to discuss and evaluate the matter. Every time anyone sends an enforcement letter, it is a legal action with potential legal (and business) consequences. Approaching the process of writing and sending an enforcement letter to an infringing seller without a strong understanding of trademark law (or the appropriate U.S. intellectual property law) is a recipe for disaster. All legal claims, whether its trademark infringement, false advertising, counterfeiting, copyright infringement, or other claims, need to be supported by clear evidence.
4. All enforcement letters should include a set of demands, a time period to comply with the claims and contact information
Every enforcement letter should include a set of demands and a time period to comply with those demands. These can vary based on the situation. In most cases, the main demand will be that the infringer remove their listings and stop selling the non-genuine products. However, there are other considerations that a seller can consider. He or she may consider, under certain circumstances, to give the infringer a phase-out period to sell its remaining stock in order to increase the chances that the infringer will not sell infringing products in the future. On the other end of the spectrum, if the products actually bear the trademark owner’s trademarks (as opposed to being generic goods sold under branded listings) then the trademark owner may demand that the infringer provide an accounting of its products and to destroy or forfeit the counterfeit products to ensure they do not enter the marketplace. The best approach will vary based on the specific facts of each situation—some infringers may be more willing to cooperate if the demands are more lenient, but, at the same time, if there are dangerous counterfeit products in the marketplace bearing a trademark owner’s mark, then the strongest possible demands may be appropriate (as well as the real chance of trademark litigation to stop the sale of those counterfeit products.)
Also, while this may seem obvious, a trademark owner will need to include contact information for the seller to respond. If an attorney is drafting and sending the letter, then the infringer’s point of contact will be with the attorney directly. While many trademark owners would prefer to remain anonymous to avoid potential backlash from a counterfeiter, a successful cease-and-desist letter will require disclosure of ownership information as well as contact information.
Professionalism When Dealing with Listing Hijackers
A final bit of guidance. Every correspondence between a trademark owner selling on Amazon and an infringing seller should be professional. When I draft enforcement letters for clients, I always write the letter assuming it will be posted on social media by the infringer for the entire world to see. Amazon sellers are often fiercely protective of their business, even when they are (perhaps inadvertently) infringing other company’s intellectual property rights. Some sellers will take this letter as a personal attack and will retaliate in unexpected and frustrating ways. This is why it is always important to consider the professionalism of the letter and any correspondence with the potential infringer.
When I draft letters, I avoid emotional accusations, sarcasm, or personal attacks and let my explanation of the law and my evidence drive the letter. That does not mean that an enforcement letter should not, in some circumstances, be strong condemnations of the actions taken by an infringer. It does, however, mean that even when writing a scathing enforcement letter, it should always be written with professionalism and pose without resorting to name-calling or unfounded accusations or threats. It should also be well-formatted and checked for both spelling and grammar. I always treat enforcement letters with the same attention and care that I give court filings and other official documents.
Many brand owners on Amazon will attempt to enforce their trademarks without the assistance of an attorney and are quickly frustrated by the lack of helpful responses from the infringing sellers and from Amazon’s legal department. I would encourage every brand owner to at least talk with a trademark attorney with experience in Amazon listing hijacking and other Amazon trademark matters to see if the attorney’s services could fit into the company’s budget. Ultimately the legal argument is what will drive infringers and Amazon to take action, and in many cases, only a lawyer with specific knowledge of Amazon will be able to draft the most effective legal argument for each seller. At Gerben Law Firm, we represent Amazon sellers in these matters and offer free consultations. Please give us a call or send us a message through our website to talk about your individual issues and see if our affordable legal services fit into your enforcement budget.
While enforcement letters can have serious legal consequences, they can also be highly effective when used appropriately. There is no silver-bullet in trademark enforcement, but through preventative measures (such as registration and clearance) and effective enforcement, trademark owners selling on Amazon will be able to effectively protect their brand against infringers, hijackers, and counterfeiters.
This blog does not provide legal advice and does not create an attorney-client relationship. You may not rely on any information in this article as legal advice. If you need legal advice, please contact an attorney directly.