Selling products on eBay can be a very lucrative income source, in fact, many individuals have built entire businesses based around it. The realities of buying and selling online, however, mean that some individuals or businesses may attempt to sell counterfeit or otherwise falsified products bearing the name or logo or a company, even if that company wasn’t actually the source of the goods. A key tenet of trademark law under the Lanham Act is protecting consumers and trademark owners by allowing only the rightful owners to use their mark to identify them as the source of a product. Online marketplaces like eBay, now that they’ve been around for a while, recognize the difficulties inherent in policing that proper use based only on internet listings, and have developed methods of reporting and acting on intellectual property claims in order to continue to protect consumers and trademark owners.
The claims process means, however, that you may receive a trademark infringement notice on eBay that you don’t necessarily agree with – in other words, you believe that you are not, in fact, infringing on the mark in question. Before we go any further, it’s important to remember that you need to be very cautious in how you respond to such claims – you may damage your case or even your rights to a mark if you make incorrect or improper claims in a response. Before proceeding any further, your first course of action should be to consult with a trademark attorney who is knowledgeable in how to respond to claims of infringement, so that you do not inadvertently put your case at risk.
It’s useful for you to understand the eBay trademark infringement claim process, however, and why you may have received a notice. You’ll also learn, in the following points, what types of recourse you and your attorney can consider in order to continue selling the products that you’re entitled to sell on eBay.
eBay has developed a comprehensive trademark and copyright claims policy
The eBay policy is called VeRO, which stands for the Verified Rights Owner program. It is intended to signify eBay’s commitment to protecting their customers who purchase through the site, as well as rightful trademark owners. The VeRO program combines a reporting process with proactive removal of “suspicious” listings by eBay administrators. As eBay itself states on its site, they aren’t experts in intellectual property rights, so there is always the possibility that you may have a listing removed, or a claim filed against you, even if you do have the rights to sell those products on eBay. Regardless of what you believe to be the legal grounds for your defense, however, you should talk to a trademark attorney before proceeding.
There are several reasons you may receive a claim of infringement or have a listing removed
Most “suspicious listings” likely consist of goods that appear to be counterfeit. Companies may also file a claim against you, however, for reasons such as “likelihood of confusion” – that is, they don’t think that you’re necessarily selling counterfeit products, but they may feel that your mark is too similar to theirs. The best defense against these types of claims is proof that you are reselling goods that you legitimately bought. Under what’s known as the “first sale” doctrine, a company cannot, in most circumstances, stop you from reselling goods you legitimately bought. Another good defense is owning a federal trademark registration used on the goods in question – it indicates that the United States Patent & Trademark Office supports your claim to the mark, and includes your right to ownership in its Principal Register. Remember that anyone – even a non-trademark holder – can file a claim against you based on a “good faith” belief that you are in violation of their trademark rights. eBay does require email addresses and other verifications from the complaining party, but it is unclear exactly what the definition of “good faith” is in their eyes – this leaves a lot of room for claims that you may have to defend yourself against even if you have the right to use a mark.
eBay does not appear to handle appeals or counterclaims themselves
Per VeRO policy, eBay will include the email address of a complainant who makes a trademark infringement claim against you, and they instruct you to contact that party directly in order to pursue a counterclaim. This is a process that, on the other side, is likely to include a lawyer, so it’s important for you to have legal assistance of your own. This way, you can be sure that you’re acting in line with the rights that you do have to a trademark, and not potentially continuing any selling activities that may be considered in infringement. It also helps you ensure that you do not make any statements that may be considered incorrect, misleading, or otherwise improper, should further litigation or other legal action occur.
Potential defenses to a claim of infringement against your eBay store
If eBay proactively removes a listing of yours, or if another entity makes a claim against you, your counter-case is strongly bolstered when you can show that you are reselling goods you legitimately bought or if you can point to a USPTO trademark registration as an indication of your right to use a mark. Remember that with too many claims or “strikes” against you, your eBay account may be suspended, cutting off a major potential source of income. A trademark attorney can help you decided whether you have a defense under the “first sale” doctrine and register your trademark and properly defend it in cases of infringement claims, making it a worthwhile investment in light of the benefits and protections that you gain.